[Title 37 CFR ]
[Code of Federal Regulations (annual edition) - July 1, 2021 Edition]
[From the U.S. Government Publishing Office]
[[Page i]]
Title 37
Patents, Trademarks, and Copyrights
Revised as of July 1, 2021
Containing a codification of documents of general
applicability and future effect
As of July 1, 2021
Published by the Office of the Federal Register
National Archives and Records Administration as a
Special Edition of the Federal Register
[[Page ii]]
U.S. GOVERNMENT OFFICIAL EDITION NOTICE
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Any person using NARA's official seals and logos in a manner
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Use of ISBN Prefix
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[[Page iii]]
Table of Contents
Page
Explanation................................................. v
Title 37:
Chapter I--United States Patent and Trademark
Office, Department of Commerce 3
Chapter II--U.S. Copyright Office, Library of
Congress 561
Chapter III--Copyright Royalty Board, Library of
Congress 817
Chapter IV--National Institute of Standards and
Technology, Department of Commerce 917
Chapter V [Reserved]
Finding Aids:
Table of CFR Titles and Chapters........................ 949
Alphabetical List of Agencies Appearing in the CFR...... 969
List of CFR Sections Affected........................... 979
[[Page iv]]
----------------------------
Cite this Code: CFR
To cite the regulations in
this volume use title,
part and section number.
Thus, 37 CFR 1.1 refers to
title 37, part 1, section
1.
----------------------------
[[Page v]]
EXPLANATION
The Code of Federal Regulations is a codification of the general and
permanent rules published in the Federal Register by the Executive
departments and agencies of the Federal Government. The Code is divided
into 50 titles which represent broad areas subject to Federal
regulation. Each title is divided into chapters which usually bear the
name of the issuing agency. Each chapter is further subdivided into
parts covering specific regulatory areas.
Each volume of the Code is revised at least once each calendar year
and issued on a quarterly basis approximately as follows:
Title 1 through Title 16.................................as of January 1
Title 17 through Title 27..................................as of April 1
Title 28 through Title 41...................................as of July 1
Title 42 through Title 50................................as of October 1
The appropriate revision date is printed on the cover of each
volume.
LEGAL STATUS
The contents of the Federal Register are required to be judicially
noticed (44 U.S.C. 1507). The Code of Federal Regulations is prima facie
evidence of the text of the original documents (44 U.S.C. 1510).
HOW TO USE THE CODE OF FEDERAL REGULATIONS
The Code of Federal Regulations is kept up to date by the individual
issues of the Federal Register. These two publications must be used
together to determine the latest version of any given rule.
To determine whether a Code volume has been amended since its
revision date (in this case, July 1, 2021), consult the ``List of CFR
Sections Affected (LSA),'' which is issued monthly, and the ``Cumulative
List of Parts Affected,'' which appears in the Reader Aids section of
the daily Federal Register. These two lists will identify the Federal
Register page number of the latest amendment of any given rule.
EFFECTIVE AND EXPIRATION DATES
Each volume of the Code contains amendments published in the Federal
Register since the last revision of that volume of the Code. Source
citations for the regulations are referred to by volume number and page
number of the Federal Register and date of publication. Publication
dates and effective dates are usually not the same and care must be
exercised by the user in determining the actual effective date. In
instances where the effective date is beyond the cut-off date for the
Code a note has been inserted to reflect the future effective date. In
those instances where a regulation published in the Federal Register
states a date certain for expiration, an appropriate note will be
inserted following the text.
OMB CONTROL NUMBERS
The Paperwork Reduction Act of 1980 (Pub. L. 96-511) requires
Federal agencies to display an OMB control number with their information
collection request.
[[Page vi]]
Many agencies have begun publishing numerous OMB control numbers as
amendments to existing regulations in the CFR. These OMB numbers are
placed as close as possible to the applicable recordkeeping or reporting
requirements.
PAST PROVISIONS OF THE CODE
Provisions of the Code that are no longer in force and effect as of
the revision date stated on the cover of each volume are not carried.
Code users may find the text of provisions in effect on any given date
in the past by using the appropriate List of CFR Sections Affected
(LSA). For the convenience of the reader, a ``List of CFR Sections
Affected'' is published at the end of each CFR volume. For changes to
the Code prior to the LSA listings at the end of the volume, consult
previous annual editions of the LSA. For changes to the Code prior to
2001, consult the List of CFR Sections Affected compilations, published
for 1949-1963, 1964-1972, 1973-1985, and 1986-2000.
``[RESERVED]'' TERMINOLOGY
The term ``[Reserved]'' is used as a place holder within the Code of
Federal Regulations. An agency may add regulatory information at a
``[Reserved]'' location at any time. Occasionally ``[Reserved]'' is used
editorially to indicate that a portion of the CFR was left vacant and
not dropped in error.
INCORPORATION BY REFERENCE
What is incorporation by reference? Incorporation by reference was
established by statute and allows Federal agencies to meet the
requirement to publish regulations in the Federal Register by referring
to materials already published elsewhere. For an incorporation to be
valid, the Director of the Federal Register must approve it. The legal
effect of incorporation by reference is that the material is treated as
if it were published in full in the Federal Register (5 U.S.C. 552(a)).
This material, like any other properly issued regulation, has the force
of law.
What is a proper incorporation by reference? The Director of the
Federal Register will approve an incorporation by reference only when
the requirements of 1 CFR part 51 are met. Some of the elements on which
approval is based are:
(a) The incorporation will substantially reduce the volume of
material published in the Federal Register.
(b) The matter incorporated is in fact available to the extent
necessary to afford fairness and uniformity in the administrative
process.
(c) The incorporating document is drafted and submitted for
publication in accordance with 1 CFR part 51.
What if the material incorporated by reference cannot be found? If
you have any problem locating or obtaining a copy of material listed as
an approved incorporation by reference, please contact the agency that
issued the regulation containing that incorporation. If, after
contacting the agency, you find the material is not available, please
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or call 202-741-6010.
CFR INDEXES AND TABULAR GUIDES
A subject index to the Code of Federal Regulations is contained in a
separate volume, revised annually as of January 1, entitled CFR Index
and Finding Aids. This volume contains the Parallel Table of Authorities
and Rules. A list of CFR titles, chapters, subchapters, and parts and an
alphabetical list of agencies publishing in the CFR are also included in
this volume.
An index to the text of ``Title 3--The President'' is carried within
that volume.
[[Page vii]]
The Federal Register Index is issued monthly in cumulative form.
This index is based on a consolidation of the ``Contents'' entries in
the daily Federal Register.
A List of CFR Sections Affected (LSA) is published monthly, keyed to
the revision dates of the 50 CFR titles.
REPUBLICATION OF MATERIAL
There are no restrictions on the republication of material appearing
in the Code of Federal Regulations.
INQUIRIES
For a legal interpretation or explanation of any regulation in this
volume, contact the issuing agency. The issuing agency's name appears at
the top of odd-numbered pages.
For inquiries concerning CFR reference assistance, call 202-741-6000
or write to the Director, Office of the Federal Register, National
Archives and Records Administration, 8601 Adelphi Road, College Park, MD
20740-6001 or e-mail [email protected]
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Connect to NARA's website at www.archives.gov/federal-register.
The e-CFR is a regularly updated, unofficial editorial compilation
of CFR material and Federal Register amendments, produced by the Office
of the Federal Register and the Government Publishing Office. It is
available at www.ecfr.gov.
Oliver A. Potts,
Director,
Office of the Federal Register
July 1, 2021.
[[Page ix]]
THIS TITLE
Title 37--Patents, Trademarks and Copyrights is composed of one
volume. The contents of this volume represent all current regulations
codified under this title of the CFR as of July 1, 2021.
The parts in chapter I, subchapter A, are regrouped according to
subject matter. All parts pertaining to patents--parts 1, 3, 4, and 5--
appear sequentially. All parts pertaining to trademarks--parts 2, 6, and
7--follow, also in sequence. Part 3, which pertains to both patents and
trademarks, follows the first part.
Indexes appear after parts 5, 7 and 41, within chapter I. An index
to chapter II appears at the end of the chapter.
For this volume, Susannah C. Hurley was Chief Editor. The Code of
Federal Regulations publication program is under the direction of John
Hyrum Martinez, assisted by Stephen J. Frattini.
[[Page 1]]
TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
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Part
chapter i--United States Patent and Trademark Office,
Department of Commerce.................................... 1
chapter ii--U.S. Copyright Office, Library of Congress...... 201
chapter iii--Copyright Royalty Board, Library of Congress... 301
chapter iv--National Institute of Standards and Technology,
Department of Commerce.................................... 401
chapter v--[Reserved]
[[Page 3]]
CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF
COMMERCE
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Editorial Note: Chapter I--United States Patent and Trademark Office,
Department of Commerce, Subchapter A--General, contains patent and
trademark regulations. Subchapter A has been restructured to allow parts
pertaining to patent regulations and trademark regulations to be grouped
separately. For further explanation see This Title, page ix.
SUBCHAPTER A--GENERAL
PATENTS
Part Page
1 Rules of practice in patent cases........... 5
3 Assignment, recording and rights of assignee 218
4 Complaints regarding invention promoters.... 226
5 Secrecy of certain inventions and licenses
to export and file applications in
foreign countries....................... 228
Index I--Rules relating to patents.......... 237
TRADEMARKS
2 Rules of practice in trademark cases........ 263
6 Classification of goods and services under
the Trademark Act....................... 356
7 Rules of practice in filings pursuant to the
protocol relating to the Madrid
agreement concerning the international
registration of marks................... 359
Index II--Rules relating to trademarks...... 371
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
10 [Reserved]
11 Representation of others before the United
States Patent and Trademark Office...... 393
15-15a [Reserved]
41 Practice before the Patent Trial and Appeal
Board................................... 460
42 Trial practice before the Patent Trial and
Appeal Board............................ 493
90 Judicial review of Patent Trial and Appeal
Board decisions......................... 520
[[Page 4]]
Index III--Rules relating to practice before
the Patent and Trademark Office......... 523
SUBCHAPTER B--ADMINISTRATION
100-101 [Reserved]
102 Disclosure of government information........ 529
104 Legal processes............................. 553
SUBCHAPTER C--PROTECTION OF FOREIGN MASK WORKS
150 Requests for Presidential proclamations
pursuant to 17 U.S.C. 902(a)(2)......... 558
151-199 [Reserved]
[[Page 5]]
SUBCHAPTER A_GENERAL
PATENTS--Table of Contents
PART 1_RULES OF PRACTICE IN PATENT CASES--Table of Contents
Subpart A_General Provisions
General Information and Correspondence
Sec.
1.1 Addresses for non-trademark correspondence with the United States
Patent and Trademark Office.
1.2 Business to be transacted in writing.
1.3 Business to be conducted with decorum and courtesy.
1.4 Nature of correspondence and signature requirements.
1.5 Identification of patent, patent application, or patent-related
proceeding.
1.6 Receipt of correspondence.
1.7 Times for taking action; Expiration on Saturday, Sunday or Federal
holiday.
1.8 Certificate of mailing or transmission.
1.9 Definitions.
1.10 Filing of correspondence by Priority Mail Express[supreg].
Records and Files of the Patent and Trademark Office
1.11 Files open to the public.
1.12 Assignment records open to public inspection.
1.13 Copies and certified copies.
1.14 Patent applications preserved in confidence.
1.15 Requests for identifiable records.
Fees and Payment of Money
1.16 National application filing, search, and examination fees.
1.17 Patent application and reexamination processing fees.
1.18 Patent post allowance (including issue) fees.
1.19 Document supply fees.
1.20 Post issuance fees.
1.21 Miscellaneous fees and charges.
1.22 Fees payable in advance.
1.23 Methods of payment.
1.24 [Reserved]
1.25 Deposit accounts.
1.26 Refunds.
1.27 Definition of small entities and establishing status as a small
entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and
notification of loss of entitlement to small entity status are
required; fraud on the Office.
1.28 Refunds when small entity status is later established; how errors
in small entity status are excused.
1.29 Micro entity status.
Subpart B_National Processing Provisions
Prosecution of Application and Appointment of Attorney or Agent
1.31 Applicant may be represented by one or more patent practitioners or
joint inventors.
1.32 Power of attorney.
1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
1.34 Acting in a representative capacity.
1.36 Revocation of power of attorney; withdrawal of patent attorney or
agent.
Who May Apply for a Patent
1.41 Inventorship.
1.42 Applicant for patent.
1.43 Application for patent by a legal representative of a deceased or
legally incapacitated inventor.
1.44 [Reserved]
1.45 Application for patent by joint inventors.
1.46 Application for patent by an assignee, obligated assignee, or a
person who otherwise shows sufficient proprietary interest in
the matter.
1.47 [Reserved]
1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or correction
of the name or order of names in a patent application, other
than a reissue application.
The Application
1.51 General requisites of an application.
1.52 Language, paper, writing, margins, compact disc specifications.
1.53 Application number, filing date, and completion of application.
1.54 Parts of application to be filed together; filing receipt.
1.55 Claim for foreign priority.
1.56 Duty to disclose information material to patentability.
1.57 Incorporation by reference.
1.58 Chemical and mathematical formulae and tables.
1.59 Expungement of information or copy of papers in application file.
1.60-162 [Reserved]
Oath or Declaration
1.63 Inventor's oath or declaration.
1.64 Substitute statement in lieu of an oath or declaration.
1.66 Statements under oath.
[[Page 6]]
1.67 Supplemental oath or declaration.
1.68 Declaration in lieu of oath.
1.69 Foreign language oaths and declarations.
1.70 [Reserved]
Specification
1.71 Detailed description and specification of the invention.
1.72 Title and abstract.
1.73 Summary of the invention.
1.74 Reference to drawings.
1.75 Claim(s).
1.76 Application data sheet.
1.77 Arrangement of application elements.
1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
1.79 [Reserved]
The Drawings
1.81 Drawings required in patent application.
1.83 Content of drawing.
1.84 Standards for drawings.
1.85 Corrections to drawings.
1.88 [Reserved]
Models, Exhibits, Specimens
1.91 Models or exhibits not generally admitted as part of application or
patent.
1.92 [Reserved]
1.93 Specimens.
1.94 Return of models, exhibits or specimens.
1.95 Copies of exhibits.
1.96 Submission of computer program listings.
Information Disclosure Statement
1.97 Filing information disclosure statement.
1.98 Content of information disclosure statement.
1.99 [Reserved]
Examination of Applications
1.101 [Reserved]
1.102 Advancement of examination.
1.103 Suspension of action by the Office.
1.104 Nature of examination.
1.105 Requirements for information.
1.106-1.109 [Reserved]
1.109 Effective filing date of a claimed invention under the Leahy-Smith
America Invents Act.
1.110 Inventorship and ownership of the subject matter of individual
claims.
Action by Applicant and Further Consideration
1.111 Reply by applicant or patent owner to a non-final Office action.
1.112 Reconsideration before final action.
1.113 Final rejection or action.
1.114 Request for continued examination.
Amendments
1.115 Preliminary amendments.
1.116 Amendments and affidavits or other evidence after final action and
prior to appeal.
1.117-1.119 [Reserved]
1.121 Manner of making amendments in applications.
1.122-1.124 [Reserved]
1.125 Substitute specification.
1.126 Numbering of claims.
1.127 [Reserved]
Transitional Provisions
1.129 Transitional procedures for limited examination after final
rejection and restriction practice.
Affidavits Overcoming Rejections
1.130 Affidavit or declaration of attribution or prior public disclosure
under the Leahy-Smith America Invents Act.
1.131 Affidavit or declaration of prior invention or to disqualify
commonly owned patent or published application as prior art.
1.132 Affidavits or declarations traversing rejections or objections.
Interviews
1.133 Interviews.
Time for Reply by Applicant; Abandonment of Application
1.134 Time period for reply to an Office action.
1.135 Abandonment for failure to reply within time period.
1.136 Extensions of time.
1.137 Revival of abandoned application, or terminated or limited
reexamination prosecution.
1.138 Express abandonment.
1.139 [Reserved]
Joinder of Inventions in One Application; Restriction
1.141 Different inventions in one national application.
1.142 Requirement for restriction.
1.143 Reconsideration of requirement.
1.144 Petition from requirement for restriction.
1.145 Subsequent presentation of claims for different invention.
1.146 Election of species.
Design Patents
1.151 Rules applicable.
1.152 Design drawings.
1.153 Title, description and claim, oath or declaration.
[[Page 7]]
1.154 Arrangement of application elements in a design application.
1.155 Expedited examination of design applications.
Plant Patents
1.161 Rules applicable.
1.162 Applicant, oath or declaration.
1.163 Specification and arrangement of application elements in a plant
application.
1.164 Claim.
1.165 Plant drawings.
1.166 Specimens.
1.167 Examination.
Reissues
1.171 Application for reissue.
1.172 Reissue applicant.
1.173 Reissue specification, drawings, and amendments.
1.174 [Reserved]
1.175 Inventor's oath or declaration for a reissue application.
1.176 Examination of reissue.
1.177 Issuance of multiple reissue patents.
1.178 Original patent; continuing duty of applicant.
1.179 [Reserved]
Petitions and Action by the Director
1.181 Petition to the Director.
1.182 Questions not specifically provided for.
1.183 Suspension of rules.
1.184 [Reserved]
Appeal to the Patent Trial and Appeal Board
1.191 Appeal to Patent Trial and Appeal Board.
1.192-1.196 [Reserved]
1.197 Termination of proceedings.
1.198 Reopening after a final decision of the Patent Trial and Appeal
Board.
Publication of Applications.
1.211 Publication of applications.
1.213 Nonpublication request.
1.215 Patent application publication.
1.217 Publication of a redacted copy of an application.
1.219 Early publication.
1.221 Voluntary publication or republication of patent application
publication.
Miscellaneous Provisions
1.248 Service of papers; manner of service; proof of service in cases
other than interferences and trials.
1.251 Unlocatable file.
Preissuance Submissions and Protests by Third Parties
1.290 Submissions by third parties in applications.
1.291 Protests by the public against pending applications.
1.292 [Reserved]
1.293-1.297 [Reserved]
Review of Patent and Trademark Office Decisions by Court
1.301-1.304 [Reserved]
Allowance and Issue of Patent
1.311 Notice of allowance.
1.312 Amendments after allowance.
1.313 Withdrawal from issue.
1.314 Issuance of patent.
1.315 Delivery of patent.
1.316 Application abandoned for failure to pay issue fee.
1.317-1.318 [Reserved]
Disclaimer
1.321 Statutory disclaimers, including terminal disclaimers.
Correction of Errors in Patent
1.322 Certificate of correction of Office mistake.
1.323 Certificate of correction of applicant's mistake.
1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256.
1.325 Other mistakes not corrected.
Arbitration Awards
1.331-1.334 [Reserved]
1.335 Filing of notice of arbitration awards.
1.351-352 [Reserved]
Maintenance Fees
1.362 Time for payment of maintenance fees.
1.363 Fee address for maintenance fee purposes.
1.366 Submission of maintenance fees.
1.377 Review of decision refusing to accept and record payment of a
maintenance fee filed prior to expiration of patent.
1.378 Acceptance of delayed payment of maintenance fee in expired patent
to reinstate patent.
Subpart C_International Processing Provisions
General Information
1.401 Definitions of terms under the Patent Cooperation Treaty.
1.412 The United States Receiving Office.
1.413 The United States International Searching Authority.
1.414 The United States Patent and Trademark Office as a Designated
Office or Elected Office.
1.415 The International Bureau.
1.416 The United States International Preliminary Examining Authority.
[[Page 8]]
1.417 Submission of translation of international publication.
1.419 Display of currently valid control number under the Paperwork
Reduction Act.
Who May File an International Application
1.421 Applicant for international application.
1.422 Legal representative as applicant in an international application.
1.423 [Reserved]
1.424 Assignee, obligated assignee, or person having sufficient
proprietary interest as applicant in an international
application.
The International Application
1.431 International application requirements.
1.432 Designation of States by filing an international application.
1.433 Physical requirements of international application.
1.434 The request.
1.435 The description.
1.436 The claims.
1.437 The drawings.
1.438 The abstract.
Fees
1.445 International application filing, processing and search fees.
1.446 Refund of international application filing and processing fees.
Priority
1.451 The priority claim and priority document in an international
application.
1.452 Restoration of right of priority.
1.453 Transmittal of documents relating to earlier search or
classification.
Representation
1.455 Representation in international applications.
Transmittal of Record Copy
1.461 Procedures for transmittal of record copy to the International
Bureau.
Timing
1.465 Timing of application processing based on the priority date.
1.468 Delays in meeting time limits.
Amendments
1.471 Corrections and amendments during international processing.
1.472 Changes in person, name, or address of applicants and inventors.
Unity of Invention
1.475 Unity of invention before the International Searching Authority,
the International Preliminary Examining Authority and during
the national stage.
1.476 Determination of unity of invention before the International
Searching Authority.
1.477 Protest to lack of unity of invention before the International
Searching Authority.
International Preliminary Examination
1.480 Demand for international preliminary examination.
1.481 Payment of international preliminary examination fees.
1.482 International preliminary examination and processing fees.
1.484 Conduct of international preliminary examination.
1.485 Amendments by applicant during international preliminary
examination.
1.488 Determination of unity of invention before the International
Preliminary Examining Authority.
1.489 Protest to lack of unity of invention before the International
Preliminary Examining Authority.
National Stage
1.491 National stage commencement, entry, and fulfillment.
1.492 National stage fees.
1.494 Entering the national stage in the United States of America as a
Designated Office.
1.495 Entering the national stage in the United States of America.
1.496 Examination of international applications in the national stage.
1.497 Inventor's oath or declaration under 35 U.S.C. 371(c)(4).
1.499 Unity of invention during the national stage.
Subpart D_Ex Parte Reexamination of Patents
Citation of Prior Art and Written Statements
1.501 Citation of prior art and written statements in patent files.
1.502 Processing of prior art citations during an ex parte reexamination
proceeding.
Request for Ex Parte Reexamination
1.510 Request for ex parte reexamination.
1.515 Determination of the request for ex parte
1.520 Ex parte reexamination at the initiative of the Director.
Ex Parte Reexamination
1.525 Order for ex parte reexamination.
[[Page 9]]
1.530 Statement by patent owner in ex parte reexamination; amendment by
patent owner in ex parte or inter partes reexamination;
inventorship change in ex parte or inter partes reexamination.
1.535 Reply by third party requester in ex parte reexamination.
1.540 Consideration of responses in ex parte reexamination.
1.550 Conduct of ex parte reexamination proceedings.
1.552 Scope of reexamination in ex parte reexamination proceedings.
1.555 Information material to patentability in ex parte reexamination
and inter partes reexamination proceedings.
1.560 Interviews in ex parte reexamination proceedings.
1.565 Concurrent office proceedings which include an ex parte
reexamination proceeding.
Ex Parte Reexamination Certificate
1.570 Issuance of ex parte reexamination certificate after ex parte
reexamination proceedings.
Subpart E_Supplemental Examination of Patents
1.601 Filing of papers in supplemental examination.
1.605 Items of information.
1.610 Content of request for supplemental examination.
1.615 Format of papers filed in a supplemental examination proceeding.
1.620 Conduct of supplemental examination proceeding.
1.625 Conclusion of supplemental examination; publication of
supplemental examination certificate; procedure after
conclusion.
Subpart F_Adjustment and Extension of Patent Term
Adjustment of Patent Term Due to Examination Delay
1.701 Extension of patent term due to examination delay under the
Uruguay Round Agreements Act of 1999 (original applications,
other than designs, filed on or after June 8, 1995, and before
May 29, 2000).
1.702 Grounds for adjustment of patent term due to examination delay
under the Patent Term Guarantee Act of 1999 (original
applications, other than designs, filed on or after May 29,
2000).
1.703 Period of adjustment of patent term due to examination delay.
1.704 Reduction of period of adjustment of patent term.
1.705 Patent term adjustment determination.
Extension of Patent Term Due to Regulatory Review
1.710 Patents subject to extension of the patent term.
1.720 Conditions for extension of patent term.
1.730 Applicant for extension of patent term; signature requirements.
1.740 Formal requirements for application for extension of patent term;
correction of informalities.
1.741 Complete application given a filing date; petition procedure.
1.750 Determination of eligibility for extension of patent term.
1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
1.765 Duty of disclosure in patent term extension proceedings.
1.770 Express withdrawal of application for extension of patent term.
1.775 Calculation of patent term extension for a human drug, antibiotic
drug or human biological product.
1.776 Calculation of patent term extension for a food additive or color
additive.
1.777 Calculation of patent term extension for a medical device.
1.778 Calculation of patent term extension for an animal drug product.
1.779 Calculation of patent term extension for a veterinary biological
product.
1.780 Certificate or order of extension of patent term.
1.785 Multiple applications for extension of term of the same patent or
of different patents for the same regulatory review period for
a product.
1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5).
1.791 Termination of interim extension granted prior to regulatory
approval of a product for commercial marketing or use.
Subpart G_Biotechnology Invention Disclosures
Deposit of Biological Material
1.801 Biological material.
1.802 Need or Opportunity to make a deposit.
1.803 Acceptable depository.
1.804 Time of making an original deposit.
1.805 Replacement or supplement of deposit.
1.806 Term of deposit.
1.807 Viability of deposit.
1.808 Furnishing of samples.
1.809 Examination procedures.
Application Disclosures Containing Nucleotide and/or Amino Acid
Sequences
1.821 Nucleotide and/or amino acid sequence disclosures in patent
applications.
[[Page 10]]
1.822 Symbols and format to be used for nucleotide and/or amino acid
sequence data.
1.823 Requirements for nucleotide and/or amino acid sequences as part of
the application.
1.824 Form and format for nucleotide and/or amino acid sequence
submissions in computer readable form.
1.825 Amendments to or replacement of sequence listing and computer
readable copy thereof.
Appendix A to Subpart G of Part 1--Sample Sequence Listing
Subpart H_Inter Partes Reexamination of Patents That Issued From an
Original Application Filed in the United States on or After November 29,
1999
Prior Art Citations
1.902 Processing of prior art citations during an inter partes
reexamination proceeding.
Requirements for Inter Partes Reexamination Proceedings
1.903 Service of papers on parties in inter partes reexamination.
1.904 Notice of inter partes reexamination in Official Gazette.
1.905 Submission of papers by the public in inter partes reexamination.
1.906 Scope of reexamination in inter partes reexamination proceeding.
1.907 Inter partes reexamination prohibited.
1.913 Persons eligible to file, and time for filing, a request for inter
partes reexamination.
1.915 Content of request for inter partes reexamination.
1.919 Filing date of request for inter partes reexamination.
1.923 Examiner's determination on the request for inter partes
reexamination.
1.925 Partial refund if request for inter partes reexamination is not
ordered.
1.927 Petition to review refusal to order inter partes reexamination.
Inter Partes Reexamination of Patents
1.931 Order for inter partes reexamination.
Information Disclosure in Inter Partes Reexamination
1.933 Patent owner duty of disclosure in inter partes reexamination
proceedings.
Office Actions and Responses (Before the Examiner) in Inter Partes
Reexamination
1.935 Initial Office action usually accompanies order for inter partes
reexamination.
1.937 Conduct of inter partes reexamination.
1.939 Unauthorized papers in inter partes reexamination.
1.941 Amendments by patent owner in inter partes reexamination.
1.943 Requirements of responses, written comments, and briefs in inter
partes reexamination.
1.945 Response to Office action by patent owner in inter partes
reexamination.
1.947 Comments by third party requester to patent owner's response in
inter partes reexamination.
1.948 Limitations on submission of prior art by third party requester
following the order for inter partes reexamination.
1.949 Examiner's Office action closing prosecution in inter partes
reexamination.
1.951 Options after Office action closing prosecution in inter partes
reexamination.
1.953 Examiner's Right of Appeal Notice in inter partes reexamination.
Interviews Prohibited in Inter Partes Reexamination
1.955 Interviews prohibited in inter partes reexamination proceedings.
Extensions of Time, Terminating of Reexamination Prosecution, and
Petitions To Revive in Inter Partes Reexamination
1.956 Patent owner extensions of time in inter partes reexamination.
1.957 Failure to file a timely, appropriate or complete response or
comment in inter partes reexamination.
1.958 Petition to revive inter partes reexamination prosecution
terminated for lack of patent owner response.
Appeal to the Patent Trial and Appeal Board in Inter Partes
Reexamination
1.959 Appeal in inter partes reexamination.
1.961-1.977 [Reserved]
1.979 Return of Jurisdiction from the Patent Trial and Appeal Board;
termination of appeal proceedings.
1.981 Reopening after a final decision of the Patent Trial and Appeal
Board.
Appeal to the United States Court of Appeals for the Federal Circuit in
Inter Partes Reexamination
1.983 Appeal to the United States Court of Appeals for the Federal
Circuit in inter partes reexamination.
Concurrent Proceedings Involving Same Patent in Inter Partes
Reexamination
1.985 Notification of prior or concurrent proceedings in inter partes
reexamination.
1.987 Suspension of inter partes reexamination proceeding due to
litigation.
1.989 Merger of concurrent reexamination proceedings.
[[Page 11]]
1.991 Merger of concurrent reissue application and inter partes
reexamination proceeding.
1.993 Suspension of concurrent interference and inter partes
reexamination proceeding.
1.995 Third party requester's participation rights preserved in merged
proceeding.
Reexamination Certificate in Inter Partes Reexamination
1.997 Issuance and publication of inter partes reexamination certificate
concludes inter partes reexamination proceeding.
Subpart I_International Design Application
General Information
1.1001 Definitions related to international design applications.
1.1002 The United States Patent and Trademark Office as an office of
indirect filing.
1.1003 The United States Patent and Trademark Office as a designated
office.
1.1004 The International Bureau.
1.1005 Display of currently valid control number under the Paperwork
Reduction Act.
Who May File an International Design Application
1.1011 Applicant for international design application.
1.1012 Applicant's Contracting Party.
The International Design Application
1.1021 Contents of the international design application.
1.1022 Form and signature.
1.1023 Filing date of an international design application in the United
States.
1.1024 The description.
1.1025 The claim.
1.1026 Reproductions.
1.1027 Specimens.
1.1028 Deferment of publication.
Fees
1.1031 International design application fees.
Representation
1.1041 Representation in an international design application.
1.1042 Correspondence respecting international design applications filed
with the Office as an office of indirect filing.
Transmittal of the International Design Application to the International
Bureau
1.1045 Procedures for transmittal of international design application to
the International Bureau.
Relief From Prescribed Time Limits; Conversion to a Design Application
Under 35 U.S.C. Chapter 16
1.1051 Relief from prescribed time limits.
1.1052 Conversion to a design application under 35 U.S.C. chapter 16.
National Processing of International Design Applications
1.1061 Rules applicable.
1.1062 Examination.
1.1063 Notification of Refusal.
1.1064 One independent and distinct design.
1.1065 Corrections and other changes in the International Register.
1.1066 Correspondence address for a nonprovisional international design
application.
1.1067 Title, description, and the inventor's oath or declaration.
1.1068 Statement of grant of protection.
1.1070 Notification of Invalidation.
1.1071 Grant of protection for an industrial design only upon issuance
of a patent.
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
Source: 24 FR 10332, Dec. 22, 1959, unless otherwise noted.
Editorial Notes: 1. In Patent and Trademark Office publications and
usage the part number is omitted from the numbers of Sec. Sec.1.1 to
1.352 and the numbers to the right of the decimal point correspond with
the respective rule numbers.
2. For nomenclature changes to part 1, see 68 FR 14335, Mar. 25,
2003.
Subpart A_General Provisions
General Information and Correspondence
Sec.1.1 Addresses for non-trademark correspondence with the
United States Patent and Trademark Office.
(a) In general. Except as provided in paragraphs (a)(3)(i),
(a)(3)(ii), and (d)(1) of this section, all correspondence intended for
the United States Patent and Trademark Office must be addressed to
either ``Director of the United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, Virginia 22313-1450'' or to specific areas within
the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this
section. When appropriate, correspondence should also be marked for the
attention of a particular office or individual.
(1) Patent correspondence--(i) In general. All correspondence
concerning
[[Page 12]]
patent matters processed by organizations reporting to the Commissioner
for Patents should be addressed to: Commissioner for Patents, PO Box
1450, Alexandria, Virginia 22313-1450.
(ii) Patent Trial and Appeal Board. See Sec.41.10 or Sec.42.6 of
this title. Notices of appeal, appeal briefs, reply briefs, requests for
oral hearing, as well as all other correspondence in an application or a
patent involved in an appeal to the Board for which an address is not
otherwise specified, should be addressed as set out in paragraph
(a)(1)(i) of this section.
(2) [Reserved]
(3) Office of General Counsel correspondence--(i) Litigation and
service. Correspondence relating to pending litigation or otherwise
within the scope of part 104 of this title shall be addressed as
provided in Sec.104.2.
(ii) Disciplinary proceedings. Correspondence to counsel for the
Director of the Office of Enrollment and Discipline relating to
disciplinary proceedings pending before a Hearing Officer or the
Director shall be mailed to: Mail Stop 8, Office of the Solicitor,
United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450.
(iii) Solicitor, in general. Correspondence to the Office of the
Solicitor not otherwise provided for shall be addressed to: Mail Stop 8,
Office of the Solicitor, United States Patent and Trademark Office, P.O.
Box 1450, Alexandria, Virginia 22313-1450.
(iv) General Counsel. Correspondence to the Office of the General
Counsel not otherwise provided for, including correspondence to the
General Counsel relating to disciplinary proceedings, shall be addressed
to: General Counsel, United States Patent and Trademark Office, PO Box
1450, Alexandria, Virginia 22313-1450.
(v) Improper correspondence. Correspondence improperly addressed to
a Post Office Box specified in paragraphs (a)(3)(i) and(a)(3)(ii) of
this section will not be filed elsewhere in the United States Patent and
Trademark Office, and may be returned.
(4) Office of Public Records correspondence. (i) Assignments. All
patent-related documents submitted by mail to be recorded by Assignment
Services Division, except for documents filed together with a new
application, should be addressed to: Mail Stop Assignment Recordation
Services, Director of the United States Patent and Trademark Office,
P.O. Box 1450, Alexandria, Virginia 22313-1450. See Sec.3.27.
(5) Office of Enrollment and Discipline correspondence. All
correspondence directed to the Office of Enrollment and Discipline
concerning enrollment, registration, and investigation matters should be
addressed to Mail Stop OED, Director of the United States Patent and
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(ii) Documents. All requests for certified or uncertified copies of
patent documents should be addressed to: Mail Stop Document Services,
Director of the United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia 22313-1450.
(b) Patent Cooperation Treaty. Letters and other communications
relating to international applications during the international stage
and prior to the assignment of a national serial number should be
additionally marked ``Mail Stop PCT.''
(c) For reexamination or supplemental examination proceedings. (1)
All correspondence concerning ex parte reexamination, other than
correspondence to the Office of the General Counsel pursuant to Sec.
1.1(a)(3) and Sec.102.4 of this chapter, should be additionally marked
``Mail Stop Ex Parte Reexam.''
(2) All correspondence concerning inter partes reexamination, other
than correspondence to the Office of the General Counsel pursuant to
Sec.1.1(a)(3) and Sec.102.4 of this chapter, should be additionally
marked ``Mail Stop Inter Partes Reexam.''
(3) Requests for supplemental examination (original and corrected
request papers) and any other paper filed in a supplemental examination
proceeding, should be additionally marked ``Mail Stop Supplemental
Examination.''
(4) All correspondence concerning a reexamination proceeding ordered
as a result of a supplemental reexamination proceeding, other than
correspondence to the Office of the General Counsel pursuant to Sec.
1.1(a)(3) and Sec.102.4 of this chapter should be additionally marked
``Mail Stop Ex Parte Reexam.''
[[Page 13]]
(d) Payments of maintenance fees in patents not submitted
electronically over the Internet, and correspondence related to
maintenance fees may be addressed to: Director of the United States
Patent and Trademark Office, Attn: Maintenance Fee, 2051 Jamieson
Avenue, Suite 300, Alexandria, Virginia 22314.
(e) Patent term extension. All applications for extension of patent
term under 35 U.S.C. 156 and any communications relating thereto
intended for the United States Patent and Trademark Office should be
additionally marked ``Mail Stop Hatch-Waxman PTE.'' When appropriate,
the communication should also be marked to the attention of a particular
individual, as where a decision has been rendered.
(f) [Reserved]
[68 FR 14335, Mar. 25, 2003; 68 FR 19371, Apr. 21, 2003, as amended at
68 FR 48287, Aug. 13, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 29877, May
26, 2004; 69 FR 35451, June 24, 2004; 69 FR 49997, Aug. 12, 2004; 72 FR
18904, Apr. 16, 2007; 73 FR 47540, Aug. 14, 2008; 75 FR 36295, June 25,
2010; 77 FR 46624, Aug. 6, 2012; 77 FR 48811, Aug. 14, 2012; 78 FR
62393, Oct. 21, 2013]
Sec.1.2 Business to be transacted in writing.
All business with the Patent and Trademark Office should be
transacted in writing. The personal attendance of applicants or their
attorneys or agents at the Patent and Trademark Office is unnecessary.
The action of the Patent and Trademark Office will be based exclusively
on the written record in the Office. No attention will be paid to any
alleged oral promise, stipulation, or understanding in relation to which
there is disagreement or doubt.
Sec.1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct
their business with the United States Patent and Trademark Office with
decorum and courtesy. Papers presented in violation of this requirement
will be submitted to the Director and will not be entered. A notice of
the non-entry of the paper will be provided. Complaints against
examiners and other employees must be made in correspondence separate
from other papers.
[68 FR 38624, June 30, 2003]
Sec.1.4 Nature of correspondence and signature requirements.
(a) Correspondence with the Patent and Trademark Office comprises:
(1) Correspondence relating to services and facilities of the
Office, such as general inquiries, requests for publications supplied by
the Office, orders for printed copies of patents, orders for copies of
records, transmission of assignments for recording, and the like, and
(2) Correspondence in and relating to a particular application or
other proceeding in the Office. See particularly the rules relating to
the filing, processing, or other proceedings of national applications in
subpart B of this part; of international applications in subpart C of
this part; of ex parte reexaminations of patents in subpart D of this
part; of supplemental examination of patents in subpart E of this part;
of extension of patent term in subpart F of this part; of inter partes
reexaminations of patents in subpart H of this part; of international
design applications in subpart I of this part; and of the Patent Trial
and Appeal Board in parts 41 and 42 of this chapter.
(b) Since each file must be complete in itself, a separate copy of
every paper to be filed in a patent application, patent file, or other
proceeding must be furnished for each file to which the paper pertains,
even though the contents of the papers filed in two or more files may be
identical. The filing of duplicate copies of correspondence in the file
of an application, patent, or other proceeding should be avoided, except
in situations in which the Office requires the filing of duplicate
copies. The Office may dispose of duplicate copies of correspondence in
the file of an application, patent, or other proceeding.
(c) Since different matters may be considered by different branches
or sections of the Office, each distinct subject, inquiry, or order must
be contained in a separate paper to avoid confusion and delay in
answering papers dealing with different subjects. Subjects provided for
on a single Office or
[[Page 14]]
World Intellectual Property Organization form may be contained in a
single paper.
(d)(1) Handwritten signature. Each piece of correspondence, except
as provided in paragraphs (d)(2), (d)(3), (d)(4), (e), and (f) of this
section, filed in an application, patent file, or other proceeding in
the Office which requires a person's signature, must:
(i) Be an original, that is, have an original handwritten signature
personally signed, in permanent dark ink or its equivalent, by that
person; or
(ii) Be a direct or indirect copy, such as a photocopy or facsimile
transmission (Sec.1.6(d)), of an original. In the event that a copy of
the original is filed, the original should be retained as evidence of
authenticity. If a question of authenticity arises, the Office may
require submission of the original.
(2) S-signature. An S-signature is a signature inserted between
forward slash marks, but not a handwritten signature as defined by
paragraph (d)(1) of this section. An S-signature includes any signature
made by electronic or mechanical means, and any other mode of making or
applying a signature other than a handwritten signature as provided for
in paragraph (d)(1) of this section. Correspondence being filed in the
Office in paper, by facsimile transmission as provided in Sec.1.6(d),
or via the Office electronic filing system as an attachment as provided
in Sec.1.6(a)(4), for a patent application, patent, or a reexamination
or supplemental examination proceeding may be S-signature signed instead
of being personally signed (i.e., with a handwritten signature) as
provided for in paragraph (d)(1) of this section. The requirements for
an S-signature under this paragraph (d)(2) of this section are as
follows.
(i) The S-signature must consist only of letters, or Arabic
numerals, or both, with appropriate spaces and commas, periods,
apostrophes, or hyphens for punctuation, and the person signing the
correspondence must insert his or her own S-signature with a first
single forward slash mark before, and a second single forward slash mark
after, the S-signature (e.g.,/Dr. James T. Jones, Jr./); and
(ii) A patent practitioner (Sec.1.32(a)(1)), signing pursuant to
Sec. Sec.1.33(b)(1) or 1.33(b)(2), must supply his/her registration
number either as part of the S-signature, or immediately below or
adjacent to the S-signature. The number () character may be used only
as part of the S-signature when appearing before a practitioner's
registration number; otherwise the number character may not be used in
an S-signature.
(iii) The signer's name must be:
(A) Presented in printed or typed form preferably immediately below
or adjacent the S-signature, and
(B) Reasonably specific enough so that the identity of the signer
can be readily recognized.
(3) Electronically submitted correspondence. Correspondence
permitted via the Office electronic filing system may be signed by a
graphic representation of a handwritten signature as provided for in
paragraph (d)(1) of this section or a graphic representation of an S-
signature as provided for in paragraph (d)(2) of this section when it is
submitted via the Office electronic filing system.
(4) Certifications--(i) Certification as to the paper presented. The
presentation to the Office (whether by signing, filing, submitting, or
later advocating) of any paper by a party, whether a practitioner or
non-practitioner, constitutes a certification under Sec.11.18(b) of
this subchapter. Violations of Sec.11.18(b)(2) of this subchapter by a
party, whether a practitioner or non-practitioner, may result in the
imposition of sanctions under Sec.11.18(c) of this subchapter. Any
practitioner violating Sec.11.18(b) of this subchapter may also be
subject to disciplinary action. See Sec.11.18(d) of this subchapter.
(ii) Certification as to the signature. The person inserting a
signature under paragraph (d)(2) or (d)(3) of this section in a document
submitted to the Office certifies that the inserted signature appearing
in the document is his or her own signature. A person submitting a
document signed by another under paragraph (d)(2) or (d)(3) of this
section is obligated to have a reasonable basis to believe that the
person whose signature is present on the document was actually inserted
by that person, and should retain evidence of authenticity of the
signature. Violations of the certification as to the signature of
another or a person's own signature as set
[[Page 15]]
forth in this paragraph may result in the imposition of sanctions under
Sec.11.18(c) and (d) of this chapter.
(5) Forms. The Office provides forms for the public to use in
certain situations to assist in the filing of correspondence for a
certain purpose and to meet certain requirements for patent applications
and proceedings. Use of the forms for purposes for which they were not
designed is prohibited. No changes to certification statements on the
Office forms (e.g., oath or declaration forms, terminal disclaimer
forms, petition forms, and nonpublication request forms) may be made.
The existing text of a form, other than a certification statement, may
be modified, deleted, or added to, if all text identifying the form as
an Office form is removed. The presentation to the Office (whether by
signing, filing, submitting, or later advocating) of any Office form
with text identifying the form as an Office form by a party, whether a
practitioner or non-practitioner, constitutes a certification under
Sec.11.18(b) of this chapter that the existing text and any
certification statements on the form have not been altered other than
permitted by EFS-Web customization.
(e) The following correspondence must be submitted with an original
handwritten signature personally signed in permanent dark ink or its
equivalent:
(1) Correspondence requiring a person's signature and relating to
registration to practice before the Patent and Trademark Office in
patent cases, enrollment and disciplinary investigations, or
disciplinary proceedings; and
(2) Payments by credit cards where the payment is not being made via
the Office's electronic filing systems.
(f) When a document that is required by statute to be certified must
be filed, a copy, including a photocopy or facsimile transmission, of
the certification is not acceptable.
(g) An applicant who has not made of record a registered attorney or
agent may be required to state whether assistance was received in the
preparation or prosecution of the patent 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. Assistance 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.
(h) Ratification/confirmation/evidence of authenticity: The Office
may require ratification, confirmation (which includes submission of a
duplicate document but with a proper signature), or evidence of
authenticity of a signature, such as when the Office has reasonable
doubt as to the authenticity (veracity) of the signature, e.g., where
there are variations of a signature, or where the signature and the
typed or printed name, do not clearly identify the person signing.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959]
Editorial Note: For Federal Register citations affecting Sec.1.4,
see the List of CFR Sections Affected, which appears in the Finding Aids
section of the printed volume and at www.govinfo.gov.
Sec.1.5 Identification of patent, patent application, or patent-
related proceeding.
(a) No correspondence relating to an application should be filed
prior to receipt of the assigned application number (i.e., U.S.
application number, international application number, or international
registration number as appropriate). When correspondence directed to the
Patent and Trademark Office concerns a previously filed application for
a patent, it must identify on the top page in a conspicuous location,
the application number (consisting of the series code and the serial
number; e.g., 07/123,456), or the serial number and filing date assigned
to that application by the Patent and Trademark Office, or the
international application number of the international application, or
the international registration
[[Page 16]]
number of an international design application. Any correspondence not
containing such identification will be returned to the sender where a
return address is available. The returned correspondence will be
accompanied with a cover letter, which will indicate to the sender that
if the returned correspondence is resubmitted to the Patent and
Trademark Office within two weeks of the mail date on the cover letter,
the original date of receipt of the correspondence will be considered by
the Patent and Trademark Office as the date of receipt of the
correspondence. Applicants may use either the Certificate of Mailing or
Transmission procedure under Sec.1.8 or the Priority Mail
Express[supreg] procedure under Sec.1.10 for resubmissions of returned
correspondence if they desire to have the benefit of the date of deposit
in the United States Postal Service. If the returned correspondence is
not resubmitted within the two-week period, the date of receipt of the
resubmission will be considered to be the date of receipt of the
correspondence. The two-week period to resubmit the returned
correspondence will not be extended. In addition to the application
number, all correspondence directed to the Patent and Trademark Office
concerning applications for patent should also state the name of the
first listed inventor, the title of the invention, the date of filing
the same, and if known, the group art unit or other unit within the
Patent and Trademark Office responsible for considering the
correspondence and the name of the examiner or other person to which it
has been assigned.
(b) When the letter concerns a patent other than for purposes of
paying a maintenance fee, it should state the number and date of issue
of the patent, the name of the patentee, and the title of the invention.
For letters concerning payment of a maintenance fee in a patent, see the
provisions of Sec.1.366(c).
(c) Correspondence relating to a trial proceeding before the Patent
Trial and Appeal Board (part 42 of this title) are governed by Sec.
42.6 of this title.
(d) A letter relating to a reexamination or supplemental examination
proceeding should identify it as such by the number of the patent
undergoing reexamination or supplemental examination, the request
control number assigned to such proceeding, and, if known, the group art
unit and name of the examiner to which it been assigned.
(e) [Reserved]
(f) When a paper concerns a provisional application, it should
identify the application as such and include the application number.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 46 FR 29181, May 29, 1981; 49
FR 552, Jan. 4, 1984; 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28,
1988; 58 FR 54501, Oct. 22, 1993; 61 FR 42802, Aug. 19, 1996; 61 FR
56446, Nov. 1, 1996; 64 FR 48917, Sept. 8, 1999; 68 FR 48288, Aug. 13,
2003; 69 FR 49997, Aug. 12, 2004; 77 FR 46624, Aug. 6, 2012; 77 FR
48812, Aug. 14, 2012; 78 FR 62394, Oct. 21, 2013; 79 FR 63039, Oct. 22,
2014; 80 FR 17952, Apr. 2, 2015]
Sec.1.6 Receipt of correspondence.
(a) Date of receipt and Priority Mail Express[supreg] date of
deposit. Correspondence received in the Patent and Trademark Office is
stamped with the date of receipt except as follows:
(1) The Patent and Trademark Office is not open for the filing of
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia. Except for correspondence transmitted
by facsimile under paragraph (a)(3) of this section, or filed
electronically under paragraph (a)(4) of this section, no correspondence
is received in the Office on Saturdays, Sundays, or Federal holidays
within the District of Columbia.
(2) Correspondence filed in accordance with Sec.1.10 will be
stamped with the date of deposit as Priority Mail Express[supreg] with
the United States Postal Service.
(3) Correspondence transmitted by facsimile to the Patent and
Trademark Office will be stamped with the date on which the complete
transmission is received in the Patent and Trademark Office unless that
date is a Saturday, Sunday, or Federal holiday within the District of
Columbia, in which case the date stamped will be the next succeeding day
which is not a Saturday, Sunday, or Federal holiday within the District
of Columbia.
[[Page 17]]
(4) Correspondence may be submitted using the Office electronic
filing system only in accordance with the Office electronic filing
system requirements. Correspondence submitted to the Office by way of
the Office electronic filing system will be accorded a receipt date,
which is the date the correspondence is received at the correspondence
address for the Office set forth in Sec.1.1 when it was officially
submitted.
(b) [Reserved]
(c) Correspondence delivered by hand. In addition to being mailed,
correspondence may be delivered by hand during hours the Office is open
to receive correspondence.
(d) Facsimile transmission. Except in the cases enumerated below,
correspondence, including authorizations to charge a deposit account,
may be transmitted by facsimile. The receipt date accorded to the
correspondence will be the date on which the complete transmission is
received in the United States Patent and Trademark Office, unless that
date is a Saturday, Sunday, or Federal holiday within the District of
Columbia. See paragraph (a)(3) of this section. To facilitate proper
processing, each transmission session should be limited to
correspondence to be filed in a single application or other proceeding
before the United States Patent and Trademark Office. The application
number of a patent application, the control number of a reexamination or
supplemental examination proceeding, the interference number of an
interference proceeding, the trial number of a trial proceeding before
the Board, or the patent number of a patent should be entered as a part
of the sender's identification on a facsimile cover sheet. Facsimile
transmissions are not permitted and, if submitted, will not be accorded
a date of receipt in the following situations:
(1) Correspondence as specified in Sec.1.4(e), requiring an
original signature;
(2) Certified documents as specified in Sec.1.4(f);
(3) Correspondence that cannot receive the benefit of the
certificate of mailing or transmission as specified in Sec.
1.8(a)(2)(i)(A) through (D), (F), (I), and (K) and Sec.
1.8(a)(2)(iii)(A), except that a continued prosecution application under
Sec.1.53(d) may be transmitted to the Office by facsimile;
(4) Color drawings submitted under Sec. Sec.1.81, 1.83 through
1.85, 1.152, 1.165, 1.173, 1.437, or 1.1026;
(5) A request for reexamination under Sec.1.510 or Sec.1.913, or
a request for supplemental examination under Sec.1.610;
(6) Correspondence to be filed in an application subject to a
secrecy order under Sec. Sec.5.1 through 5.5 of this chapter and
directly related to the secrecy order content of the application;
(7) In contested cases and trials before the Patent Trial and Appeal
Board, except as the Board may expressly authorize.
(e) [Reserved]
(f) Facsimile transmission of a patent application under Sec.
1.53(d). In the event that the Office has no evidence of receipt of an
application under Sec.1.53(d) (a continued prosecution application)
transmitted to the Office by facsimile transmission, the party who
transmitted the application under Sec.1.53(d) may petition the
Director to accord the application under Sec.1.53(d) a filing date as
of the date the application under Sec.1.53(d) is shown to have been
transmitted to and received in the Office,
(1) Provided that the party who transmitted such application under
Sec.1.53(d):
(i) Informs the Office of the previous transmission of the
application under Sec.1.53(d) promptly after becoming aware that the
Office has no evidence of receipt of the application under Sec.
1.53(d);
(ii) Supplies an additional copy of the previously transmitted
application under Sec.1.53(d); and
(iii) Includes a statement which attests on a personal knowledge
basis or to the satisfaction of the Director to the previous
transmission of the application under Sec.1.53(d) and is accompanied
by a copy of the sending unit's report confirming transmission of the
application under Sec.1.53(d) or evidence that came into being after
the complete transmission and within one business day of the complete
transmission of the application under Sec.1.53(d).
(2) The Office may require additional evidence to determine if the
application under Sec.1.53(d) was transmitted to
[[Page 18]]
and received in the Office on the date in question.
(g) Submission of the national stage correspondence required by
Sec.1.495 via the Office electronic filing system. In the event that
the Office has no evidence of receipt of the national stage
correspondence required by Sec.1.495, which was submitted to the
Office by the Office electronic filing system, the party who submitted
the correspondence may petition the Director to accord the national
stage correspondence a receipt date as of the date the correspondence is
shown to have been officially submitted to the Office.
(1) The petition of this paragraph (g) requires that the party who
submitted such national stage correspondence:
(i) Informs the Office of the previous submission of the
correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence under Sec.1.495;
(ii) Supplies an additional copy of the previously submitted
correspondence;
(iii) Includes a statement that attests on a personal knowledge
basis, or to the satisfaction of the Director, that the correspondence
was previously officially submitted; and
(iv) Supplies a copy of an acknowledgment receipt generated by the
Office electronic filing system, or equivalent evidence, confirming the
submission to support the statement of paragraph (g)(1)(iii) of this
section.
(2) The Office may require additional evidence to determine if the
national stage correspondence was submitted to the Office on the date in
question.
[58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993; 61 FR 56447,
Nov. 1, 1996; 62 FR 53180, Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999; 65
FR 54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000; 68 FR 14336, Mar.
25, 2003; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 77 FR 42173, July 17,
2012; 77 FR 46624, Aug. 6, 2012; 78 FR 62394, Oct. 21, 2013; 79 FR
63039, Oct. 22, 2014; 80 FR 17952, Apr. 2, 2015]
Sec.1.7 Times for taking action; Expiration on Saturday, Sunday
or Federal holiday.
(a) Whenever periods of time are specified in this part in days,
calendar days are intended. When the day, or the last day fixed by
statute or by or under this part for taking any action or paying any fee
in the United States Patent and Trademark Office falls on Saturday,
Sunday, or on a Federal holiday within the District of Columbia, the
action may be taken, or the fee paid, on the next succeeding business
day which is not a Saturday, Sunday, or a Federal holiday. See Sec.
90.3 of this chapter for time for appeal or for commencing civil action.
(b) If the day that is twelve months after the filing date of a
provisional application under 35 U.S.C. 111(b) and Sec.1.53(c) falls
on Saturday, Sunday, or on a Federal holiday within the District of
Columbia, the period of pendency shall be extended to the next
succeeding secular or business day which is not a Saturday, Sunday, or a
Federal holiday.
[65 FR 14871, Mar. 20, 2000, as amended at 78 FR 62395, Oct. 21, 2013]
Sec.1.8 Certificate of mailing or transmission.
(a) Except in the situations enumerated in paragraph (a)(2) of this
section or as otherwise expressly excluded in this chapter,
correspondence required to be filed in the U.S. Patent and Trademark
Office within a set period of time will be considered as being timely
filed if the procedure described in this section is followed. The actual
date of receipt will be used for all other purposes.
(1) Correspondence will be considered as being timely filed if:
(i) The correspondence is mailed or transmitted prior to expiration
of the set period of time by being:
(A) Addressed as set out in Sec.1.1(a) and deposited with the U.S.
Postal Service with sufficient postage as first class mail;
(B) Transmitted by facsimile to the Patent and Trademark Office in
accordance with Sec.1.6(d); or
(C) Transmitted via the Office electronic filing system in
accordance with Sec.1.6(a)(4); and
(ii) The correspondence includes a certificate for each piece of
correspondence stating the date of deposit or transmission. The person
signing the certificate should have reasonable basis to expect that the
correspondence would be mailed or transmitted on or before the date
indicated.
[[Page 19]]
(2) The procedure described in paragraph (a)(1) of this section does
not apply to, and no benefit will be given to a Certificate of Mailing
or Transmission on the following:
(i) Relative to Patents and Patent Applications--
(A) The filing of a national patent application specification and
drawing or other correspondence for the purpose of obtaining an
application filing date, including a request for a continued prosecution
application under Sec.1.53(d);
(B) Papers filed in trials before the Patent Trial and Appeal Board,
which are governed by Sec.42.6(b) of this title;
(C) Papers filed in contested cases before the Patent Trial and
Appeal Board, which are governed by Sec.41.106 (f) of this title;
(D) The filing of an international application for patent;
(E) The filing of correspondence in an international application
before the U.S. Receiving Office, the U.S. International Searching
Authority, or the U.S. International Preliminary Examining Authority;
(F) The filing of a copy of the international application and the
basic national fee necessary to enter the national stage, as specified
in Sec.1.495(b).
(G) The filing of a written declaration of abandonment under Sec.
1.138;
(H) The filing of a submission under Sec.1.217 for publication of
a redacted copy of an application;
(I) The filing of a third-party submission under Sec.1.290;
(J) The calculation of any period of adjustment, as specified in
Sec.1.703(f); and
(K) The filing of an international design application.
(ii) [Reserved]
(iii) Relative to Disciplinary Proceedings--
(A) Correspondence filed in connection with a disciplinary
proceeding under part 11 of this chapter.
(B) [Reserved]
(b) In the event that correspondence is considered timely filed by
being mailed or transmitted in accordance with paragraph (a) of this
section, but not received in the U.S. Patent and Trademark Office after
a reasonable amount of time has elapsed from the time of mailing or
transmitting of the correspondence, or after the application is held to
be abandoned, or after the proceeding is dismissed or decided with
prejudice, or the prosecution of a reexamination proceeding is
terminated pursuant to Sec.1.550(d) or Sec.1.957(b) or limited
pursuant to Sec.1.957(c), or a requester paper is refused
consideration pursuant to Sec.1.957(a), the correspondence will be
considered timely if the party who forwarded such correspondence:
(1) Informs the Office of the previous mailing or transmission of
the correspondence promptly after becoming aware that the Office has no
evidence of receipt of the correspondence;
(2) Supplies an additional copy of the previously mailed or
transmitted correspondence and certificate; and
(3) Includes a statement that attests on a personal knowledge basis
or to the satisfaction of the Director to the previous timely mailing,
transmission or submission. If the correspondence was sent by facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement. If the
correspondence was transmitted via the Office electronic filing system,
a copy of an acknowledgment receipt generated by the Office electronic
filing system confirming submission may be used to support this
statement.
(c) The Office may require additional evidence to determine if the
correspondence was timely filed.
[58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, 1993, as amended at 61
FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 67 FR 523, Jan. 4,
2002; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR
56536, Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 72 FR 18904, Apr. 16,
2007; 73 FR 47684, Aug. 14, 2008; 77 FR 42173, July 17, 2012; 80 FR
17953, Apr. 2, 2015]
Sec.1.9 Definitions.
(a)(1) A national application as used in this chapter means either a
U.S. application for patent which was filed in the Office under 35
U.S.C. 111, an international application filed under the Patent
Cooperation Treaty in which the basic national fee under 35 U.S.C.
41(a)(1)(F) has been paid, or an international design application filed
under
[[Page 20]]
the Hague Agreement in which the Office has received a copy of the
international registration pursuant to Hague Agreement Article 10.
(2) A provisional application as used in this chapter means a U.S.
national application for patent filed in the Office under 35 U.S.C.
111(b).
(3) A nonprovisional application as used in this chapter means
either a U.S. national application for patent which was filed in the
Office under 35 U.S.C. 111(a), an international application filed under
the Patent Cooperation Treaty in which the basic national fee under 35
U.S.C. 41(a)(1)(F) has been paid, or an international design application
filed under the Hague Agreement in which the Office has received a copy
of the international registration pursuant to Hague Agreement Article
10.
(b) An international application as used in this chapter means an
international application for patent filed under the Patent Cooperation
Treaty prior to entering national processing at the Designated Office
stage.
(c) A published application as used in this chapter means an
application for patent which has been published under 35 U.S.C. 122(b).
(d)(1) The term inventor or inventorship as used in this chapter
means the individual or, if a joint invention, the individuals
collectively who invented or discovered the subject matter of the
invention.
(2) The term joint inventor or coinventor as used in this chapter
means any one of the individuals who invented or discovered the subject
matter of a joint invention.
(e) The term joint research agreement as used in this chapter means
a written contract, grant, or cooperative agreement entered into by two
or more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed invention.
(f) The term claimed invention as used in this chapter means the
subject matter defined by a claim in a patent or an application for a
patent.
(g) For definitions in Patent Trial and Appeal Board proceedings,
see parts 41 and 42 of this title.
(h) A Federal holiday within the District of Columbia as used in
this chapter means any day, except Saturdays and Sundays, when the
Patent and Trademark Office is officially closed for business for the
entire day.
(i) National security classified as used in this chapter means
specifically authorized under criteria established by an Act of Congress
or Executive Order to be kept secret in the interest of national defense
or foreign policy and, in fact, properly classified pursuant to such Act
of Congress or Executive Order.
(j) Director as used in this chapter, except for part 11 of this
chapter, means the Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office.
(k) Paper as used in this chapter means a document that may exist in
electronic form, or in physical form, and therefore does not necessarily
imply physical sheets of paper.
(l) Hague Agreement as used in this chapter means the Geneva Act of
the Hague Agreement Concerning the International Registration of
Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and
Hague Agreement Article as used in this chapter means an Article under
the Hague Agreement.
(m) Hague Agreement Regulations as used in this chapter means the
Common Regulations Under the 1999 Act and the 1960 Act of the Hague
Agreement, and Hague Agreement Rule as used in this chapter means one of
the Hague Agreement Regulations.
(n) An international design application as used in this chapter
means an application for international registration of a design filed
under the Hague Agreement. Unless otherwise clear from the wording,
reference to ``design application'' or ``application for a design
patent'' in this chapter includes
[[Page 21]]
an international design application that designates the United States.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C.
1113, 1123)
[43 FR 20461, May 11, 1978, as amended at 47 FR 40139, Sept. 10, 1982;
47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220,
Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR 53181, Oct. 10, 1997; 65
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 14336, Mar.
25, 2003; 68 FR 38624, June 30, 2003; 69 FR 49997, Aug. 12, 2004; 73 FR
47685, Aug. 14, 2008; 77 FR 46624, Aug. 6, 2012; 77 FR 48812, Aug. 14,
2012; 78 FR 11052, Feb. 14, 2013; 80 FR 17953, Apr. 2, 2015]
Sec.1.10 Filing of correspondence by Priority Mail Express[supreg].
(a)(1) Any correspondence received by the U.S. Patent and Trademark
Office (USPTO) that was delivered by the Priority Mail Express[supreg]
Post Office to Addressee service of the United States Postal Service
(USPS) will be considered filed with the USPTO on the date of deposit
with the USPS.
(2) The date of deposit with USPS is shown by the ``date accepted''
on the Priority Mail Express[supreg] label or other official USPS
notation. If the USPS deposit date cannot be determined, the
correspondence will be accorded the USPTO receipt date as the filing
date. See Sec.1.6(a).
(b) Correspondence should be deposited directly with an employee of
the USPS to ensure that the person depositing the correspondence
receives a legible copy of the Priority Mail Express[supreg] mailing
label with the ``date accepted'' clearly marked. Persons dealing
indirectly with the employees of the USPS (such as by deposit in a
Priority Mail Express[supreg] drop box) do so at the risk of not
receiving a copy of the Priority Mail Express[supreg] mailing label with
the desired ``date accepted'' clearly marked. The paper(s) or fee(s)
that constitute the correspondence should also include the Priority Mail
Express[supreg] mailing label number thereon. See paragraphs (c), (d)
and (e) of this section.
(c) Any person filing correspondence under this section that was
received by the Office and delivered by the Priority Mail
Express[supreg] Post Office to Addressee service of the USPS, who can
show that there is a discrepancy between the filing date accorded by the
Office to the correspondence and the date of deposit as shown by the
``date accepted'' on the Priority Mail Express[supreg] mailing label or
other official USPS notation, may petition the Director to accord the
correspondence a filing date as of the ``date accepted'' on the Priority
Mail Express[supreg] mailing label or other official USPS notation,
provided that:
(1) The petition is filed promptly after the person becomes aware
that the Office has accorded, or will accord, a filing date other than
the USPS deposit date;
(2) The number of the Priority Mail Express[supreg] mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express[supreg]; and
(3) The petition includes a true copy of the Priority Mail
Express[supreg] mailing label showing the ``date accepted,'' and of any
other official notation by the USPS relied upon to show the date of
deposit.
(d) Any person filing correspondence under this section that was
received by the Office and delivered by the Priority Mail
Express[supreg] Post Office to Addressee service of the USPS, who can
show that the ``date accepted'' on the Priority Mail Express[supreg]
mailing label or other official notation entered by the USPS was
incorrectly entered or omitted by the USPS, may petition the Director to
accord the correspondence a filing date as of the date the
correspondence is shown to have been deposited with the USPS, provided
that:
(1) The petition is filed promptly after the person becomes aware
that the Office has accorded, or will accord, a filing date based upon
an incorrect entry by the USPS;
(2) The number of the Priority Mail Express[supreg] mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express[supreg]; and
(3) The petition includes a showing which establishes, to the
satisfaction of the Director, that the requested filing date was the
date the correspondence was deposited in the Priority Mail
Express[supreg] Post Office to Addressee service prior to the last
scheduled pickup for that day. Any showing pursuant to
[[Page 22]]
this paragraph must be corroborated by evidence from the USPS or that
came into being after deposit and within one business day of the deposit
of the correspondence in the Priority Mail Express[supreg] Post Office
to Addressee service of the USPS.
(e) Any person mailing correspondence addressed as set out in Sec.
1.1(a) to the Office with sufficient postage utilizing the Priority Mail
Express[supreg] Post Office to Addressee service of the USPS but not
received by the Office, may petition the Director to consider such
correspondence filed in the Office on the USPS deposit date, provided
that:
(1) The petition is filed promptly after the person becomes aware
that the Office has no evidence of receipt of the correspondence;
(2) The number of the Priority Mail Express[supreg] mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express[supreg];
(3) The petition includes a copy of the originally deposited
paper(s) or fee(s) that constitute the correspondence showing the number
of the Priority Mail Express[supreg] mailing label thereon, a copy of
any returned postcard receipt, a copy of the Priority Mail
Express[supreg] mailing label showing the ``date accepted,'' a copy of
any other official notation by the USPS relied upon to show the date of
deposit, and, if the requested filing date is a date other than the
``date accepted'' on the Priority Mail Express[supreg] mailing label or
other official notation entered by the USPS, a showing pursuant to
paragraph (d)(3) of this section that the requested filing date was the
date the correspondence was deposited in the Priority Mail
Express[supreg] Post Office to Addressee service prior to the last
scheduled pickup for that day; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Director, the original deposit of the correspondence
and that the copies of the correspondence, the copy of the Priority Mail
Express[supreg] mailing label, the copy of any returned postcard
receipt, and any official notation entered by the USPS are true copies
of the originally mailed correspondence, original Priority Mail
Express[supreg] mailing label, returned postcard receipt, and official
notation entered by the USPS.
(f) The Office may require additional evidence to determine if the
correspondence was deposited as Priority Mail Express[supreg] with the
USPS on the date in question.
(g) Any person who mails correspondence addressed as set out in
Sec.1.1(a) to the Office with sufficient postage utilizing the
Priority Mail Express[supreg] Post Office to Addressee service of the
USPS, but has the correspondence returned by the USPS due to an
interruption or emergency in Priority Mail Express[supreg] service, may
petition the Director to consider such correspondence as filed on a
particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of
the return of the correspondence;
(2) The number of the Priority Mail Express[supreg] mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the original mailing by Priority Mail Express[supreg];
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the Priority Mail
Express[supreg] mailing label thereon and a copy of the Priority Mail
Express[supreg] mailing label showing the ``date accepted''; and
(4) The petition includes a statement which establishes, to the
satisfaction of the Director, the original deposit of the correspondence
and that the correspondence or copy of the correspondence is the
original correspondence or a true copy of the correspondence originally
deposited with the USPS on the requested filing date. The Office may
require additional evidence to determine if the correspondence was
returned by the USPS due to an interruption or emergency in Priority
Mail Express[supreg] service.
(h) Any person who attempts to mail correspondence addressed as set
out in Sec.1.1(a) to the Office with sufficient postage utilizing the
Priority Mail Express[supreg] Post Office to Addressee service of the
USPS, but has the correspondence refused by an employee of the USPS due
to an interruption or emergency in Priority Mail Express[supreg]
service, may petition the Director to consider such correspondence as
filed on a
[[Page 23]]
particular date in the Office, provided that:
(1) The petition is filed promptly after the person becomes aware of
the refusal of the correspondence;
(2) The number of the Priority Mail Express[supreg] mailing label
was placed on the paper(s) or fee(s) that constitute the correspondence
prior to the attempted mailing by Priority Mail Express[supreg];
(3) The petition includes the original correspondence or a copy of
the original correspondence showing the number of the Priority Mail
Express[supreg] mailing label thereon; and
(4) The petition includes a statement by the person who originally
attempted to deposit the correspondence with the USPS which establishes,
to the satisfaction of the Director, the original attempt to deposit the
correspondence and that the correspondence or copy of the correspondence
is the original correspondence or a true copy of the correspondence
originally attempted to be deposited with the USPS on the requested
filing date. The Office may require additional evidence to determine if
the correspondence was refused by an employee of the USPS due to an
interruption or emergency in Priority Mail Express[supreg] service.
(i) Any person attempting to file correspondence under this section
that was unable to be deposited with the USPS due to an interruption or
emergency in Priority Mail Express[supreg] service which has been so
designated by the Director, may petition the Director to consider such
correspondence as filed on a particular date in the Office, provided
that:
(1) The petition is filed in a manner designated by the Director
promptly after the person becomes aware of the designated interruption
or emergency in Priority Mail Express[supreg] service;
(2) The petition includes the original correspondence or a copy of
the original correspondence; and
(3) The petition includes a statement which establishes, to the
satisfaction of the Director, that the correspondence would have been
deposited with the USPS but for the designated interruption or emergency
in Priority Mail Express[supreg] service, and that the correspondence or
copy of the correspondence is the original correspondence or a true copy
of the correspondence originally attempted to be deposited with the USPS
on the requested filing date.
[79 FR 63039, Oct. 22, 2014]
Records and Files of the Patent and Trademark Office
Sec.1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file
of: A published application; a patent; or a statutory invention
registration are open to inspection by the public, and copies may be
obtained upon the payment of the fee set forth in Sec.1.19(b)(2). If
an application was published in redacted form pursuant to Sec.1.217,
the complete file wrapper and contents of the patent application will
not be available if: The requirements of paragraphs (d)(1), (d)(2), and
(d)(3) of Sec.1.217 have been met in the application; and the
application is still pending. See Sec.2.27 of this title for trademark
files.
(b) All reissue applications, all applications in which the Office
has accepted a request to open the complete application to inspection by
the public, and related papers in the application file, are open to
inspection by the public, and copies may be furnished upon paying the
fee therefor. The filing of reissue applications, other than continued
prosecution applications under Sec.1.53(d) of reissue applications,
will be announced in the Official Gazette. The announcement shall
include at least the filing date, reissue application and original
patent numbers, title, class and subclass, name of the inventor, name of
the owner of record, name of the attorney or agent of record, and
examining group to which the reissue application is assigned.
(c) All requests for reexamination for which all the requirements of
Sec.1.510 or Sec.1.915 have been satisfied will be announced in the
Official Gazette. Any reexaminations at the initiative of the Director
pursuant to Sec.1.520 will also be announced in the Official Gazette.
The announcement shall include at least the date of the request, if any,
the reexamination request control number or the Director initiated order
control number, patent number, title, class and subclass, name of the
inventor, name of
[[Page 24]]
the patent owner of record, and the examining group to which the
reexamination is assigned.
(d) All papers or copies thereof relating to a reexamination
proceeding which have been entered of record in the patent or
reexamination file are open to inspection by the general public, and
copies may be furnished upon paying the fee therefor.
(e) Except as prohibited in Sec.41.6(b), Sec.42.14 or Sec.
42.410(b), the file of any interference or trial before the Patent Trial
and Appeal Board is open to public inspection and copies of the file may
be obtained upon payment of the fee therefor.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[46 FR 29181, May 29, 1981, as amended at 47 FR 41272, Sept. 17, 1982;
50 FR 9378, Mar. 7, 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, Oct.
10, 1997; 65 FR 57051, Sept. 20, 2000; 69 FR 49997, Aug. 12, 2004; 70 FR
56126, Sept. 26, 2005; 71 FR 44223, Aug. 4, 2006; 77 FR 46624, Aug. 6,
2012]
Sec.1.12 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the United
States Patent and Trademark Office for patents and trademarks. The
assignment records, relating to original or reissue patents, including
digests and indexes (for assignments recorded on or after May 1, 1957),
and published patent applications, are open to public inspection at the
United States Patent and Trademark Office, and copies of patent
assignment records may be obtained upon request and payment of the fee
set forth in Sec.1.19 of this chapter. See Sec.2.200 of this chapter
regarding trademark assignment records.
(2) All records of assignments of patents recorded before May 1,
1957, are maintained by the National Archives and Records Administration
(NARA). The records are open to public inspection. Certified and
uncertified copies of those assignment records are provided by NARA upon
request and payment of the fees required by NARA.
(b) Assignment records, digests, and indexes relating to any pending
or abandoned patent application, which is open to the public pursuant to
Sec.1.11 or for which copies or access may be supplied pursuant to
Sec.1.14, are available to the public. Copies of any assignment
records, digests, and indexes that are not available to the public shall
be obtainable only upon written authority of an inventor, the applicant,
the assignee or an assignee of an undivided part interest, or a patent
practitioner of record, or upon a showing that the person seeking such
information is a bona fide prospective or actual purchaser, mortgagee,
or licensee of such application, unless it shall be necessary to the
proper conduct of business before the Office or as provided in this
part.
(c) Any request by a member of the public seeking copies of any
assignment records of any pending or abandoned patent application
preserved in confidence under Sec.1.14, or any information with
respect thereto, must:
(1) Be in the form of a petition including the fee set forth in
Sec.1.17(g); or
(2) Include written authority granting access to the member of the
public to the particular assignment records from an inventor, the
applicant, the assignee or an assignee of an undivided part interest, or
a patent practitioner of record.
(d) An order for a copy of an assignment or other document should
identify the reel and frame number where the assignment or document is
recorded. If a document is identified without specifying its correct
reel and frame, an extra charge as set forth in Sec.1.21(j) will be
made for the time consumed in making a search for such assignment.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41272, Sept. 17, 1982, as amended at 54 FR 6900, Feb. 15, 1989;
56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641,
July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR 42802, Aug. 19, 1996; 65
FR 54657, Sept. 8, 2000; 65 FR 57051, Sept. 20, 2000; 68 FR 48288, Aug.
13, 2003; 69 FR 29877, May 26, 2004; 69 FR 56536, Sept. 21, 2004; 77 FR
48812, Aug. 14, 2012]
Sec.1.13 Copies and certified copies.
(a) Non-certified copies of patents, and patent application
publications and of any records, books, papers, or drawings within the
jurisdiction of the United States Patent and Trademark Office and open
to the public, will be furnished by the United States Patent and
Trademark Office to any person,
[[Page 25]]
and copies of other records or papers will be furnished to persons
entitled thereto, upon payment of the appropriate fee. See Sec.2.201
of this chapter regarding copies of trademark records.
(b) Certified copies of patents, patent application publications,
and trademark registrations and of any records, books, papers, or
drawings within the jurisdiction of the United States Patent and
Trademark Office and open to the public or persons entitled thereto will
be authenticated by the seal of the United States Patent and Trademark
Office and certified by the Director, or in his or her name, upon
payment of the fee for the certified copy.
[68 FR 48288, Aug. 13, 2003, as amended at 68 FR 71006, Dec. 22, 2003]
Sec.1.14 Patent applications preserved in confidence.
(a) Confidentiality of patent application information. Patent
applications that have not been published under 35 U.S.C. 122(b) are
generally preserved in confidence pursuant to 35 U.S.C. 122(a).
Information concerning the filing, pendency, or subject matter of an
application for patent, including status information, and access to the
application, will only be given to the public as set forth in Sec.1.11
or in this section.
(1) Records associated with patent applications (see paragraph (g)
of this section for international applications and paragraph (j) of this
section for international design applications) may be available in the
following situations:
(i) Patented applications and statutory invention registrations. The
file of an application that has issued as a patent or published as a
statutory invention registration is available to the public as set forth
in Sec.1.11(a). A copy of the patent application-as-filed, the file
contents of the application, or a specific document in the file of such
an application may be provided upon request and payment of the
appropriate fee set forth in Sec.1.19(b).
(ii) Published abandoned applications. The file of an abandoned
published application is available to the public as set forth in Sec.
1.11(a). A copy of the application-as-filed, the file contents of the
published application, or a specific document in the file of the
published application may be provided to any person upon request and
payment of the appropriate fee set forth in Sec.1.19(b).
(iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in
the file of a pending published application may be provided to any
person upon request and payment of the appropriate fee set forth in
Sec.1.19(b). If a redacted copy of the application was used for the
patent application publication, the copy of the specification, drawings,
and papers may be limited to a redacted copy. The Office will not
provide access to the paper file of a pending application that has been
published, except as provided in paragraph (c) or (i) of this section.
(iv) Unpublished abandoned applications (including provisional
applications) that are identified or relied upon. The file contents of
an unpublished, abandoned application may be made available to the
public if the application is identified in a U.S. patent, a statutory
invention registration, a U.S. patent application publication, an
international publication of an international application under PCT
Article 21(2), or a publication of an international registration under
Hague Agreement Article 10(3) of an international design application
designating the United States. An application is considered to have been
identified in a document, such as a patent, when the application number
or serial number and filing date, first named inventor, title, and
filing date or other application specific information are provided in
the text of the patent, but not when the same identification is made in
a paper in the file contents of the patent and is not included in the
printed patent. Also, the file contents may be made available to the
public, upon a written request, if benefit of the abandoned application
is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an
application that has issued as a U.S. patent, or has published as a
statutory invention registration, a U.S. patent application publication,
an international publication of an international application under PCT
Article 21(2), or a publication of an international registration under
Hague Agreement Article 10(3). A copy of the application-as-filed, the
file
[[Page 26]]
contents of the application, or a specific document in the file of the
application may be provided to any person upon written request and
payment of the appropriate fee (Sec.1.19(b)).
(v) Unpublished pending applications (including provisional
applications) whose benefit is claimed. A copy of the file contents of
an unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (Sec.1.19(b)), if
the benefit of the application is claimed under 35 U.S.C. 119(e), 120,
121, 365(c), or 386(c) in an application that has issued as a U.S.
patent, or in an application that has published as a statutory invention
registration, a U.S. patent application publication, an international
publication of an international application under PCT Article 21(2), or
a publication of an international registration under Hague Agreement
Article 10(3). A copy of the application-as-filed or a specific document
in the file of the pending application may also be provided to any
person upon written request and payment of the appropriate fee (Sec.
1.19(b)). The Office will not provide access to the paper file of a
pending application, except as provided in paragraph (c) or (i) of this
section.
(vi) Unpublished pending applications (including provisional
applications) that are incorporated by reference or otherwise
identified. A copy of the application as originally filed of an
unpublished pending application may be provided to any person, upon
written request and payment of the appropriate fee (Sec.1.19(b)), if
the application is incorporated by reference or otherwise identified in
a U.S. patent, a statutory invention registration, a U.S. patent
application publication, an international publication of an
international application under PCT Article 21(2), or a publication of
an international registration under Hague Agreement Article 10(3) of an
international design application designating the United States. The
Office will not provide access to the paper file of a pending
application, except as provided in paragraph (c) or (i) of this section.
(vii) When a petition for access or a power to inspect is required.
Applications that were not published or patented, that are not the
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or
386(c) in an application that has issued as a U.S. patent, an
application that has published as a statutory invention registration, a
U.S. patent application publication, an international publication of an
international application under PCT Article 21(2), or a publication of
an international registration under Hague Agreement Article 10(3), or
are not identified in a U.S. patent, a statutory invention registration,
a U.S. patent application publication, an international publication of
an international application under PCT Article 21(2), or a publication
of an international registration under Hague Agreement Article 10(3) of
an international design application designating the United States, are
not available to the public. If an application is identified in the file
contents of another application, but not the published patent
application or patent itself, a granted petition for access (see
paragraph (i)) or a power to inspect (see paragraph (c) of this section)
is necessary to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be communicated
to the public if the patent application is identified in a published
patent document or in an application as set forth in paragraphs
(a)(1)(i) through (a)(1)(vi) of this section. The information that may
be communicated to the public (i.e., status information) includes:
(i) Whether the application is pending, abandoned, or patented;
(ii) Whether the application has been published under 35 U.S.C.
122(b);
(iii) The application ``numerical identifier'' which may be:
(A) The eight-digit application number (the two-digit series code
plus the six-digit serial number); or
(B) The six-digit serial number plus any one of the filing date of
the national application, the international filing date, or date of
entry into the national stage; and
(iv) Whether another application claims the benefit of the
application (i.e., whether there are any applications that claim the
benefit of the filing date under 35 U.S.C. 119(e), 120, 121, 365, or 386
of the application), and if there are any such applications, the
[[Page 27]]
numerical identifier of the application, the specified relationship
between the applications (e.g., continuation), whether the application
is pending, abandoned or patented, and whether the application has been
published under 35 U.S.C. 122(b).
(b) Electronic access to an application. Where a copy of the
application file or access to the application may be made available
pursuant to this section, the Office may at its discretion provide
access to only an electronic copy of the specification, drawings, and
file contents of the application.
(c) Power to inspect a pending or abandoned application. Access to
an application may be provided to any person if the application file is
available, and the application contains written authority (e.g., a power
to inspect) granting access to such person. The written authority must
be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying
the application papers filed under Sec.1.53 or the national stage
documents filed under Sec.1.495, if a power of attorney has not been
appointed under Sec.1.32.
(d) Applications reported to Department of Energy. Applications for
patents which appear to disclose, purport to disclose or do disclose
inventions or discoveries relating to atomic energy are reported to the
Department of Energy, which Department will be given access to the
applications. Such reporting does not constitute a determination that
the subject matter of each application so reported is in fact useful or
is an invention or discovery, or that such application in fact discloses
subject matter in categories specified by 42 U.S.C. 2181(c) and (d).
(e) Decisions by the Director. Any decision by the Director that
would not otherwise be open to public inspection may be published or
made available for public inspection if:
(1) The Director believes the decision involves an interpretation of
patent laws or regulations that would be of precedential value; and
(2) The applicant is given notice and an opportunity to object in
writing within two months on the ground that the decision discloses a
trade secret or other confidential information. Any objection must
identify the deletions in the text of the decision considered necessary
to protect the information, or explain why the entire decision must be
withheld from the public to protect such information. An applicant or
party will be given time, not less than twenty days, to request
reconsideration and seek court review before any portions of a decision
are made public under this paragraph over his or her objection.
(f) Notice to inventor of the filing of an application. The Office
may publish notice in the Official Gazette as to the filing of an
application on behalf of an inventor by a person who otherwise shows
sufficient proprietary interest in the matter.
(g) International applications. (1) Copies of international
application files for international applications which designate the
U.S. and which have been published in accordance with PCT Article 21(2),
or copies of a document in such application files, will be furnished in
accordance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon
written request including a showing that the publication of the
application has occurred and that the U.S. was designated, and upon
payment of the appropriate fee (see Sec.1.19(b)), if:
(i) With respect to the Home Copy (the copy of the international
application kept by the Office in its capacity as the Receiving Office,
see PCT Article 12(1)), the international application was filed with the
U.S. Receiving Office;
(ii) With respect to the Search Copy (the copy of an international
application kept by the Office in its capacity as the International
Searching Authority, see PCT Article 12(1)), the U.S. acted as the
International Searching Authority, except for the written opinion of the
International Searching Authority which shall not be available until the
expiration of thirty months from the priority date; or
[[Page 28]]
(iii) With respect to the Examination Copy (the copy of an
international application kept by the Office in its capacity as the
International Preliminary Examining Authority), the United States acted
as the International Preliminary Examining Authority, an International
Preliminary Examination Report has issued, and the United States was
elected.
(2) A copy of an English language translation of a publication of an
international application which has been filed in the United States
Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be
furnished upon written request including a showing that the publication
of the application in accordance with PCT Article 21(2) has occurred and
that the U.S. was designated, and upon payment of the appropriate fee
(Sec.1.19(b)(4)).
(3) Access to international application files for international
applications which designate the U.S. and which have been published in
accordance with PCT Article 21(2), or copies of a document in such
application files, will be permitted in accordance with PCT Articles 30
and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request
including a showing that the publication of the application has occurred
and that the U.S. was designated.
(4) In accordance with PCT Article 30, copies of an international
application-as-filed under paragraph (a) of this section will not be
provided prior to the international publication of the application
pursuant to PCT Article 21(2).
(5) Access to international application files under paragraphs
(a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be
permitted with respect to the Examination Copy in accordance with PCT
Article 38.
(h) Access by a Foreign Intellectual Property Office. (1) Access to
an application-as-filed may be provided to any foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (participating foreign
intellectual property office), if the application contains written
authority granting such access. Written authority provided under this
paragraph (h)(1) will be treated as authorizing the Office to provide
the following to all participating foreign intellectual property offices
in accordance with their respective agreements with the Office:
(i) A copy of the application-as-filed and its related bibliographic
data;
(ii) A copy of the application-as-filed of any application the
filing date of which is claimed by the application in which written
authority under this paragraph (h)(1) is filed and its related
bibliographic data; and
(iii) The date of filing of the written authorization under this
paragraph (h)(1).
(2) Access to the file contents of an application may be provided to
a foreign intellectual property office that has imposed a requirement
for information on a counterpart application filed with the foreign
intellectual property office where the foreign intellectual property
office is a party to a bilateral or multilateral agreement with the
Office to provide the required information from the application filed
with the Office and the application contains written authority granting
such access. Written authority provided under this paragraph (h)(2) will
be treated as authorizing the Office to provide the following to all
foreign intellectual property offices in accordance with their
respective agreements with the Office:
(i) Bibliographic data related to the application; and
(ii) Any content of the application file necessary to satisfy the
foreign intellectual property office requirement for information imposed
on the counterpart application as indicated in the respective agreement.
(3) Written authority provided under paragraphs (h)(1) and (h)(2) of
this section must include the title of the invention (Sec.1.72(a)),
comply with the requirements of paragraph (c) of this section, and be
submitted on an application data sheet (Sec.1.76) or on a separate
document (Sec.1.4(c)). The written authority provided under these
paragraphs should be submitted before filing any subsequent foreign
application in which priority is claimed to the application.
(i) Access or copies in other circumstances. The Office, either sua
sponte or on petition, may also provide
[[Page 29]]
access or copies of all or part of an application if necessary to carry
out an Act of Congress or if warranted by other special circumstances.
Any petition by a member of the public seeking access to, or copies of,
all or part of any pending or abandoned application preserved in
confidence pursuant to paragraph (a) of this section, or any related
papers, must include:
(1) The fee set forth in Sec.1.17(g); and
(2) A showing that access to the application is necessary to carry
out an Act of Congress or that special circumstances exist which warrant
petitioner being granted access to all or part of the application.
(j) International design applications. (1) With respect to an
international design application maintained by the Office in its
capacity as a designated office (Sec.1.1003) for national processing,
the records associated with the international design application may be
made available as provided under paragraphs (a) through (i) of this
section.
(2) With respect to an international design application maintained
by the Office in its capacity as an office of indirect filing (Sec.
1.1002), the records of the international design application may be made
available under paragraph (j)(1) of this section where contained in the
file of the international design application maintained by the Office
for national processing. Also, if benefit of the international design
application is claimed under 35 U.S.C. 386(c) in a U.S. patent or
published application, the file contents of the application may be made
available to the public, or the file contents of the application, a copy
of the application-as-filed, or a specific document in the file of the
application may be provided to any person upon written request and
payment of the appropriate fee (Sec.1.19(b)).
[68 FR 38624, June 30, 2003, as amended at 68 FR 59886, Oct. 20, 2003;
68 FR 67805, Dec. 4, 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 49997, Aug.
12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR 1667, Jan. 16, 2007; 77 FR
48812, Aug. 14, 2012; 78 FR 11052, Feb. 14, 2013; 80 FR 17953, Apr. 2,
2015; 80 FR 65655, Oct. 27, 2015]
Sec.1.15 [Reserved]
Fees and Payment of Money
Authority: Sections 1.16 through 1.22 also issued under 35 U.S.C.
41, 111, 119, 120, 132(b), 156, 157, 255, 302, and 311, Public Laws 103-
465, 106-113, and 112-29.
Sec.1.16 National application filing, search, and examination fees.
(a) Basic fee for filing each application under 35 U.S.C. 111 for an
original patent, except design, plant, or provisional applications:
Table 1 to Paragraph (a)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $80.00
By a small entity (Sec. 1.27(a))......................... 160.00
By a small entity (Sec. 1.27(a)) if the application is 80.00
submitted in compliance with the Office electronic filing
system (Sec. 1.27(b)(2))................................
By other than a small or micro entity...................... 320.00
------------------------------------------------------------------------
(b) Basic fee for filing each application under 35 U.S.C. 111 for an
original design patent:
Table 2 to Paragraph (b)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $55.00
By a small entity (Sec. 1.27(a))......................... 110.00
By other than a small or micro entity...................... 220.00
------------------------------------------------------------------------
(c) Basic fee for filing each application for an original plant
patent:
Table 3 to Paragraph (c)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $55.00
By a small entity (Sec. 1.27(a))......................... 110.00
By other than a small or micro entity...................... 220.00
------------------------------------------------------------------------
(d) Basic fee for filing each provisional application:
Table 4 to Paragraph (d)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $75.00
By a small entity (Sec. 1.27(a))......................... 150.00
By other than a small or micro entity...................... 300.00
------------------------------------------------------------------------
(e) Basic fee for filing each application for the reissue of a
patent:
Table 5 to Paragraph (e)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $80.00
By a small entity (Sec. 1.27(a))......................... 160.00
By other than a small or micro entity...................... 320.00
------------------------------------------------------------------------
[[Page 30]]
(f) Surcharge for filing the basic filing fee, search fee,
examination fee, or the inventor's oath or declaration on a date later
than the filing date of the application, an application that does not
contain at least one claim on the filing date of the application, or an
application filed by reference to a previously filed application under
Sec.1.57(a), except provisional applications:
Table 6 to Paragraph (f)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $40.00
By a small entity (Sec. 1.27(a))......................... 80.00
By other than a small or micro entity...................... 160.00
------------------------------------------------------------------------
(g) Surcharge for filing the basic filing fee or cover sheet (Sec.
1.51(c)(1)) on a date later than the filing date of the provisional
application:
Table 7 to Paragraph (g)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29).............................. $15.00
By a small entity (Sec. 1.27(a))........................... 30.00
By other than a small or micro entity........................ 60.00
------------------------------------------------------------------------
(h) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim in independent form in excess of three:
Table 8 to Paragraph (h)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $120.00
By a small entity (Sec. 1.27(a))......................... 240.00
By other than a small or micro entity...................... 480.00
------------------------------------------------------------------------
(i) In addition to the basic filing fee in an application, other
than a provisional application, for filing or later presentation at any
other time of each claim (whether dependent or independent) in excess of
20 (note that Sec.1.75(c) indicates how multiple dependent claims are
considered for fee calculation purposes):
Table 9 to Paragraph (i)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $25.00
By a small entity (Sec. 1.27(a))......................... 50.00
By other than a small or micro entity...................... 100.00
------------------------------------------------------------------------
(j) In addition to the basic filing fee in an application, other
than a provisional application, that contains, or is amended to contain,
a multiple dependent claim, per application:
Table 10 to Paragraph (j)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $215.00
By a small entity (Sec. 1.27(a))......................... 430.00
By other than a small or micro entity...................... 860.00
------------------------------------------------------------------------
(k) Search fee for each application filed under 35 U.S.C. 111 for an
original patent, except design, plant, or provisional applications:
Table 11 to Paragraph (k)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $175.00
By a small entity (Sec. 1.27(a))......................... 350.00
By other than a small or micro entity...................... 700.00
------------------------------------------------------------------------
(l) Search fee for each application under 35 U.S.C. 111 for an
original design patent:
Table 12 to Paragraph (l)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $40.00
By a small entity (Sec. 1.27(a))......................... 80.00
By other than a small or micro entity...................... 160.00
------------------------------------------------------------------------
(m) Search fee for each application for an original plant patent:
Table 13 to Paragraph (m)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $110.00
By a small entity (Sec. 1.27(a))......................... 220.00
By other than a small or micro entity...................... 440.00
------------------------------------------------------------------------
(n) Search fee for each application for the reissue of a patent:
Table 14 to Paragraph (n)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $175.00
By a small entity (Sec. 1.27(a))......................... 350.00
By other than a small or micro entity...................... 700.00
------------------------------------------------------------------------
(o) Examination fee for each application filed under 35 U.S.C. 111
for an original patent, except design, plant, or provisional
applications:
Table 15 to Paragraph (o)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $200.00
By a small entity (Sec. 1.27(a))......................... 400.00
By other than a small or micro entity...................... 800.00
------------------------------------------------------------------------
(p) Examination fee for each application under 35 U.S.C. 111 for an
original design patent:
[[Page 31]]
Table 16 to Paragraph (p)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $160.00
By a small entity (Sec. 1.27(a))......................... 320.00
By other than a small or micro entity...................... 640.00
------------------------------------------------------------------------
(q) Examination fee for each application for an original plant
patent:
Table 17 to Paragraph (q)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $165.00
By a small entity (Sec. 1.27(a))......................... 330.00
By other than a small or micro entit....................... 660.00
------------------------------------------------------------------------
(r) Examination fee for each application for the reissue of a
patent:
Table 18 to Paragraph (r)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $580.00
By a small entity (Sec. 1.27(a))......................... 1,160.00
By other than a small or micro entity...................... 2,320.00
------------------------------------------------------------------------
(s) Application size fee for any application filed under 35
U.S.C.111 for the specification and drawings which exceed 100 sheets of
paper, for each additional 50 sheets or fraction thereof:
Table 19 to Paragraph (s)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $105.00
By a small entity (Sec. 1.27(a))......................... 210.00
By other than a small or micro entity...................... 420.00
------------------------------------------------------------------------
(t) Non-electronic filing fee for any application under 35 U.S.C.
111(a) that is filed on or after November 15, 2011, other than by the
Office electronic filing system, except for a reissue, design, or plant
application:
Table 20 to Paragraph (t)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a small entity (Sec. 1.27(a))........................... $200.00
By other than a small entity................................. $400.00
------------------------------------------------------------------------
Note to Sec.1.16: See Sec. Sec.1.445, 1.482 and 1.492 for
international application filing and processing fees.
[70 FR 3887, Jan. 27, 2005, as amended at 70 FR 30365, May 26, 2005; 72
FR 46901, Aug. 22, 2007; 73 FR 47540, Aug. 14, 2008; 76 FR 70653, Nov.
15, 2011; 77 FR 48812, Aug. 14, 2012; 77 FR 54365, Sept. 5, 2012; 78 FR
4284, Jan. 18, 2013; 78 FR 62395, Oct. 21, 2013; 80 FR 17954, Apr. 2,
2015; 82 FR 52813, Nov. 14, 2017; 85 FR 46985, Aug. 3, 2020]
Effective Date Note: At 85 FR 46985, Aug. 3, 2020, Sec.1.16 was
amended by adding paragraph (u), effective Jan. 1, 2022. For the
convenience of the user, the added text is set forth as follows:
Sec.1.16 National application filing, search, and examination fees.
* * * * *
(u) Additional fee for any application filed on or after January 1,
2022 under 35 U.S.C.111 for an original patent, except design, plant, or
provisional applications, where the specification, claims, and/or
abstract does not conform to the USPTO requirements for submission in
DOCX format:
Table 21 to Paragraph (u)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $100.00
By a small entity (Sec. 1.27(a))......................... 200.00
By a small entity (Sec. 1.27(a)) if the application is 200.00
submitted in compliance with the Office electronic filing
system (Sec. 1.27(b)(2))................................
By other than a small or micro entity...................... 400.00
------------------------------------------------------------------------
Sec.1.17 Patent application and reexamination processing fees.
(a) Extension fees pursuant to Sec.1.136(a):
(1) For reply within first month:
Table 1 to Paragraph (a)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $55.00
By a small entity (Sec. 1.27(a))......................... 110.00
By other than a small or micro entity...................... 220.00
------------------------------------------------------------------------
(2) For reply within second month:
Table 2 to Paragraph (a)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $160.00
By a small entity (Sec. 1.27(a))......................... 320.00
By other than a small or micro entity...................... 640.00
------------------------------------------------------------------------
(3) For reply within third month:
Table 3 to Paragraph (a)(3)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $370.00
By a small entity (Sec. 1.27(a))......................... 740.00
By other than a small or micro entity...................... 1,480.00
------------------------------------------------------------------------
(4) For reply within fourth month:
Table 4 to Paragraph (a)(4)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $580.00
By a small entity (Sec. 1.27(a))......................... 1,160.00
By other than a small or micro entity...................... $2,320.00
------------------------------------------------------------------------
(5) For reply within fifth month:
[[Page 32]]
Table 5 to Paragraph (a)(5)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $790.00
By a small entity (Sec. 1.27(a))......................... 1,580.00
By other than a small or micro entity...................... 3,160.00
------------------------------------------------------------------------
(b) For fees in proceedings before the Patent Trial and Appeal
Board, see Sec.41.20 and Sec.42.15 of this title.
(c) For filing a request for prioritized examination under Sec.
1.102(e):
Table 6 to Paragraph (c)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $1,050.00
By a small entity (Sec. 1.27(a))......................... 2,100.00
By other than a small or micro entity...................... 4,200.00
------------------------------------------------------------------------
(d) For correction of inventorship in an application after the first
action on the merits:
Table 7 to Paragraph (d)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $160.00
By a small entity (Sec. 1.27(a))......................... 320.00
By other than a small or micro entity...................... 640.00
------------------------------------------------------------------------
(e) To request continued examination pursuant to Sec.1.114:
(1) For filing a first request for continued examination pursuant to
Sec.1.114 in an application:
Table 8 to Paragraph (e)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $340.00
By a small entity (Sec. 1.27(a))......................... 680.00
By other than a small or micro entity...................... 1,360.00
------------------------------------------------------------------------
(2) For filing a second or subsequent request for continued
examination pursuant to Sec.1.114 in an application:
Table 9 to Paragraph (e)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $500.00
By a small entity (Sec. 1.27(a))......................... 1,000.00
By other than a small or micro entity...................... 2,000.00
------------------------------------------------------------------------
(f) For filing a petition under one of the following sections that
refers to this paragraph (f):
Table 10 to Paragraph (f)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $105.00
By a small entity (Sec. 1.27(a))......................... 210.00
By other than a small or micro entity...................... 420.00
------------------------------------------------------------------------
Sec.1.36(a)--for revocation of a power of attorney by fewer than all
of the applicants.
Sec.1.53(e)--to accord a filing date.
Sec.1.182--for a decision on a question not specifically provided for
in an application for a patent.
Sec.1.183--to suspend the rules in an application for a patent.
Sec.1.741(b)--to accord a filing date to an application under Sec.
1.740 for an extension of a patent term.
Sec.1.1023--to review the filing date of an international design
application.
(g) For filing a petition under one of the following sections that
refers to this paragraph (g):
Table 11 to Paragraph (g)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $55.00
By a small entity (Sec. 1.27(a))......................... 110.00
By other than a small or micro entity...................... 220.00
------------------------------------------------------------------------
Sec.1.12--for access to an assignment record.
Sec.1.14--for access to an application.
Sec.1.46--for filing an application on behalf of an inventor by a
person who otherwise shows sufficient proprietary interest in
the matter.
Sec.1.55(f)--for filing a belated certified copy of a foreign
application.
Sec.1.55(g)--for filing a belated certified copy of a foreign
application.
Sec.1.57(a)--for filing a belated certified copy of a foreign
application.
Sec.1.59--for expungement of information.
Sec.1.103(a)--to suspend action in an application.
Sec.1.136(b)--for review of a request for an extension of time when
the provisions of Sec.1.136(a) are not available.
Sec.1.377--for review of a decision refusing to accept and record
payment of a maintenance fee filed prior to the expiration of
a patent.
Sec.1.550(c)--for patent owner requests for an extension of time in ex
parte reexamination proceedings.
Sec.1.956--for patent owner requests for an extension of time in inter
partes reexamination proceedings.
Sec.5.12 of this chapter--for expedited handling of a foreign filing
license.
Sec.5.15 of this chapter--for changing the scope of a license.
Sec.5.25 of this chapter--for a retroactive license.
(h) For filing a petition under one of the following sections that
refers to this paragraph (h):
Table 12 to Paragraph (h)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $35.00
By a small entity (Sec. 1.27(a))......................... 70.00
By other than a small or micro entity...................... 140.00
------------------------------------------------------------------------
[[Page 33]]
Sec.1.84--for accepting color drawings or photographs.
Sec.1.91--for entry of a model or exhibit.
Sec.1.102(d)--to make an application special.
Sec.1.138(c)--to expressly abandon an application to avoid
publication.
Sec.1.313--to withdraw an application from issue.
Sec.1.314--to defer issuance of a patent.
(i) Processing fees. (1) For taking action under one of the
following sections that refers to this paragraph (i)(1):
Table 13 to Paragraph (i)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $35.00
By a small entity (Sec. 1.27(a))......................... 70.00
By other than a small or micro entity...................... 140.00
------------------------------------------------------------------------
Sec.1.28(c)(3)--for processing a non-itemized fee deficiency based on
an error in small entity status.
Sec.1.29(k)(3)--for processing a non-itemized fee deficiency based on
an error in micro entity status.
Sec.1.41(b)--for supplying the name or names of the inventor or joint
inventors in an application without either an application data
sheet or the inventor's oath or declaration, except in
provisional applications.
Sec.1.48--for correcting inventorship, except in provisional
applications.
Sec.1.52(d)--for processing a nonprovisional application filed with a
specification in a language other than English.
Sec.1.53(c)(3)--t convert a provisional application filed under Sec.
1.53(c) into a nonprovisional application under Sec.1.53(b).
Sec.1.71(g)(2)--for processing a belated amendment under Sec.
1.71(g).
Sec.1.102(e)--for requesting prioritized examination of an
application.
Sec.1.103(b)--for requesting limited suspension of action, continued
prosecution application for a design patent (Sec.1.53(d)).
Sec.1.103(c)--for requesting limited suspension of action, request for
continued examination (Sec.1.114).
Sec.1.103(d)--for requesting deferred examination of an application.
Sec.1.291(c)(5)--for processing a second or subsequent protest by the
same real party in interest.
Sec.3.81--for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
(2) For taking action under one of the following sections that
refers to this paragraph (i)(2):
Table 14 to Paragraph (i)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $140.00
By a small entity (Sec. 1.27(a))......................... 140.00
By other than a small or micro entity...................... 140.00
------------------------------------------------------------------------
Sec.1.217--for processing a redacted copy of a paper submitted in the
file of an application in which a redacted copy was submitted
for the patent application publication.
Sec.1.221--for requesting voluntary publication or republication of an
application.
(j) [Reserved]
(k) For filing a request for expedited examination under Sec.
1.155(a):
Table 15 to Paragraph (k)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $400.00
By a small entity (Sec. 1.27(a))......................... 800.00
By other than a small or micro entity...................... 1,600.00
------------------------------------------------------------------------
(l) [Reserved]
(m) For filing a petition for the revival of an abandoned
application for a patent, for the delayed payment of the fee for issuing
each patent, for the delayed response by the patent owner in any
reexamination proceeding, for the delayed payment of the fee for
maintaining a patent in force, for the delayed submission of a priority
or benefit claim, for the extension of the 12-month (six-month for
designs) period for filing a subsequent application (Sec. Sec.1.55(c)
and (e); 1.78(b), (c), and (e); 1.137; 1.378; and 1.452), or for filing
a petition to excuse an applicant's failure to act within prescribed
time limits in an international design application (Sec.1.1051):
Table 16 to Paragraph (m)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $525.00
By a small entity (Sec. 1.27(a))......................... 1,050.00
By other than a small or micro entity...................... 2,100.00
------------------------------------------------------------------------
(n) [Reserved]
(o) For every ten items or fraction thereof in a third-party
submission under Sec.1.290:
Table 17 to Paragraph (o)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a small entity (Sec. 1.27(a)) or micro entity (Sec.$90.00
1.29)......................................................
By other than a small entity................................ $180.00
------------------------------------------------------------------------
(p) For an information disclosure statement under Sec.1.97(c) or
(d):
[[Page 34]]
Table 18 to Paragraph (p)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $65.00
By a small entity (Sec. 1.27(a))......................... 130.00
By other than a small or micro entity...................... 260.00
------------------------------------------------------------------------
(q) Processing fee for taking action under one of the following
sections that refers to this paragraph (q): $50.00
Sec.1.41--to supply the name or names of the inventor or inventors
after the filing date without a cover sheet as prescribed by
Sec.1.51(c)(1) in a provisional application.
Sec.1.48--for correction of inventorship in a provisional application.
Sec.1.53(c)(2)--to convert a nonprovisional application filed under
Sec.1.53(b) to a provisional application under Sec.
1.53(c).
(r) For entry of a submission after final rejection under Sec.
1.129(a):
Table 19 to Paragraph (r)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $220.00
By a small entity (Sec. 1.27(a))......................... 440.00
By other than a small or micro entity...................... 880.00
------------------------------------------------------------------------
(s) For each additional invention requested to be examined under
Sec.1.129(b):
Table 20 to Paragraph (s)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $220.00
By a small entity (Sec. 1.27(a))......................... 440.00
By other than a small or micro entity...................... 880.00
------------------------------------------------------------------------
(t) For filing a petition to convert an international design
application to a design application under 35 U.S.C. chapter 16 (Sec.
1.1052):
Table 21 to Paragraph (t)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $45.00
By a small entity (Sec. 1.27(a))......................... 90.00
By other than a small or micro entity...................... 180.00
------------------------------------------------------------------------
[78 FR 17105, Mar. 20, 2013, as amended at 78 FR 62395, Oct. 21, 2013;
78 FR 75252, Dec. 11, 2013; 80 FR 17954, Apr. 2, 2015; 82 FR 52814, Nov.
14, 2017; 85 FR 46986, Aug. 3, 2020; 85 FR 58283, Sept. 18, 2020]
Sec.1.18 Patent post allowance (including issue) fees.
(a) Issue fee for issuing each original patent, except a design or
plant patent, or for issuing each reissue patent:
Table 1 to Paragraph (a)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $300.00
By a small entity (Sec. 1.27(a))......................... 600.00
By other than a small or micro entity...................... 1,200.00
------------------------------------------------------------------------
(b)(1) Issue fee for issuing an original design patent:
Table 2 to Paragraph (b)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $185.00
By a small entity (Sec. 1.27(a))......................... 370.00
By other than a small or micro entity...................... 740.00
------------------------------------------------------------------------
(2) [Reserved]
(3) Issue fee for issuing an international design application
designating the United States, where the issue fee is paid through the
International Bureau (Hague Agreement Rule 12(3)(c)) as an alternative
to paying the issue fee under paragraph (b)(1) of this section: The
amount established in Swiss currency pursuant to Hague Agreement Rule 28
as of the date of mailing of the notice of allowance (Sec.1.311).
(c) Issue fee for issuing an original plant patent:
Table 3 to Paragraph (c)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $210.00
By a small entity (Sec. 1.27(a))......................... 420.00
By other than a small or micro entity...................... 840.00
------------------------------------------------------------------------
(d)(1) Publication fee on or after January 1, 2014.......... $0.00
(2) Publication fee before January 1, 2014.................. 300.00
(3) Republication fee (Sec. 1.221(a))..................... $320.00
(e) For filing an application for patent term adjustment 210.00
under Sec. 1.705.........................................
(f) For filing a request for reinstatement of all or part of 420.00
the term reduced pursuant to Sec. 1.704(b) in an
application for a patent term adjustment under Sec. 1.705
[78 FR 4286, Jan. 18, 2013, as amended at 80 FR 17955, Apr. 2, 2015; 82
FR 52814, Nov. 14, 2017; 85 FR 46988, Aug. 3, 2020; 85 FR 58283, Sept.
18, 2020]
Sec.1.19 Document supply fees.
The United States Patent and Trademark Office will supply copies of
the following patent-related documents
[[Page 35]]
upon payment of the fees indicated. Paper copies will be in black and
white unless the original document is in color, a color copy is
requested and the fee for a color copy is paid.
(a) Uncertified copies of patent application publications and
patents:
(1) Printed copy of the paper portion of a patent application
publication or patent including a design patent, statutory invention
registration, or defensive publication document. Service includes
preparation of copies by the Office within two to three business days
and delivery by United States Postal Service; and preparation of copies
by the Office within one business day of receipt and delivery to an
Office Box or by electronic means (e.g., facsimile, electronic main( �
$3.00.
(2) Printed copy of a plant patent in color: $15.00.
(3) Color copy of a patent (other than a plant patent) or statutory
invention registration containing a color drawing: $25.00.
(b) Copies of Office documents to be provided in paper, or in
electronic form, as determined by the Director (for other patent-related
materials see Sec.1.21(k)):
(1) Copy of a patent application as filed, or a patent-related file
wrapper and contents, stored in paper in a paper file wrapper, in an
image format in an image file wrapper, or if color documents, stored in
paper in an Artifact Folder:
(i) If provided on paper:
(A) Application as filed: $35.00.
(B) Copy Patent File Wrapper, Any Number of Sheets: $290.00
(C) [Reserved]
(D) Individual application documents, other than application as
filed, per document: $25.00.
(ii) If provided on compact disc or other physical electronic medium
in single order or if provided electronically (e.g., by electronic
transmission) other than on a physical electronic medium:
(A) Application as filed: $35.00.
(B) Copy Patent File Wrapper, Electronic, Any Size: $60.00
(C) [Reserved]
(iii) [Reserved]
(iv) If provided to a foreign intellectual property office pursuant
to a bilateral or multilateral agreement (see Sec.1.14(h)): $0.00.
(2) [Reserved]
(3) Copy of Office records, except copies available under paragraph
(b)(1) or (2) of this section: $25.00.
(4) For assignment records, abstract of title and certification, per
patent: $35.00.
(c) Library service (35 U.S.C. 13): For providing to libraries
copies of all patents issued annually, per annum: $50.00.
(d)-(e) [Reserved]
(f) Uncertified copy of a non-United States patent document, per
document: $25.00.
(g) [Reserved]
(h) Copy of Patent Grant Single-Page TIFF Images (52 week
subscription): $10,400.00.
(i) Copy of Patent Grant Full-Text W/Embedded Images, Patent
Application Publication Single-Page TIFF Images, or Patent Application
Publication Full-Text W/Embedded Images (52 week subscription):
$5,200.00.
[78 FR 4287, Jan. 18, 2013, as amended at 80 FR 65655, Oct. 27, 2015; 82
FR 52814, Nov. 14, 2017; 85 FR 46988, Aug. 3, 2020]
Sec.1.20 Post-issuance fees.
(a) For providing a certificate of correction for an applicant's
mistake (Sec.1.323): $160.00
(b) Processing fee for correcting inventorship in a patent (Sec.
1.324): $160.00
(c) In reexamination proceedings:
(1)(i) For filing a request for ex parte reexamination (Sec.
1.510(a)) having:
(A) 40 or fewer pages;
(B) Lines that are double-spaced or one-and-a-half spaced;
(C) Text written in a non-script type font such as Arial, Times New
Roman, or Courier;
(D) A font size no smaller than 12 point;
(E) Margins that conform to the requirements of Sec.
1.52(a)(1)(ii); and
(F) Sufficient clarity and contrast to permit direct reproduction
and electronic capture by use of digital imaging and optical character
recognition.
Table 1 to Paragraph (c)(1)(i)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $1,575.00
By a small entity (Sec. 1.27(a))......................... 3,150.00
By other than a small or micro entity...................... 6,300.00
------------------------------------------------------------------------
[[Page 36]]
(ii) The following parts of an ex parte reexamination request are
excluded from paragraphs (c)(1)(i)(A) through (F) of this section:
(A) The copies of every patent or printed publication relied upon in
the request pursuant to Sec.1.510(b)(3)
(B) The copy of the entire patent for which reexamination is
requested pursuant to Sec.1.510(b)(4); and
(C) The certifications required pursuant to Sec.1.510(b)(5) and
(6).
(2) For filing a request for ex parte reexamination (Sec.1.510(b))
that has sufficient clarity and contrast to permit direct reproduction
and electronic capture by use of digital imaging and optical character
recognition, and which otherwise does not comply with the provisions of
paragraph (c)(1) of this section:
Table 2 to Paragraph (c)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $3,150.00
By a small entity (Sec. 1.27(a))......................... 6,300.00
By other than a small or micro entity...................... 12,600.00
------------------------------------------------------------------------
(3) For filing with a request for reexamination or later
presentation at any other time of each claim in independent form in
excess of three and also in excess of the number of claims in
independent form in the patent under reexamination:
Table 3 to Paragraph (c)(3)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $120.00
By a small entity (Sec. 1.27(a))......................... 240.00
By other than a small or micro entity...................... 480.00
------------------------------------------------------------------------
(4) For filing with a request for reexamination or later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 and also in excess of the number of claims
in the patent under reexamination (note that Sec.1.75(c) indicates how
multiple dependent claims are considered for fee calculation purposes):
Table 4 to Paragraph (c)(4)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $25.00
By a small entity (Sec. 1.27(a))......................... 50.00
By other than a small or micro entity...................... 100.00
------------------------------------------------------------------------
(5) If the excess claims fees required by paragraphs (c)(3) and (4)
of this section are not paid with the request for reexamination or on
later presentation of the claims for which the excess claims fees are
due, the fees required by paragraphs (c)(3) and (4) must be paid or the
claims canceled by amendment prior to the expiration of the time period
set for reply by the Office in any notice of fee deficiency in order to
avoid abandonment.
(6) For filing a petition in a reexamination proceeding, except for
those specifically enumerated in Sec. Sec.1.550(i) and 1.937(d):
Table 5 to Paragraph (c)(6)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $510.00
By a small entity (Sec. 1.27(a))......................... 1,020.00
By other than a small or micro entity...................... 2,040.00
------------------------------------------------------------------------
(7) For a refused request for ex parte reexamination under Sec.
1.510 (included in the request for ex parte reexamination fee at Sec.
1.20(c)(1) or (2)):
Table 6 to Paragraph (c)(7)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)......................... $945.00
By a small entity (Sec. 1.27(a))...................... 1,890.00
By other than a small or micro entity................... 3,780.00
------------------------------------------------------------------------
(d) For filing each statutory disclaimer (Sec.1.321): $170.00
(e) For maintaining an original or any reissue patent, except a
design or plant patent, based on an application filed on or after
December 12, 1980, in force beyond four years, the fee being due by
three years and six months after the original grant:
Table 7 to Paragraph (e)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $500.00
By a small entity (Sec. 1.27(a))......................... 1,000.00
By other than a small or micro entity...................... 2,000.00
------------------------------------------------------------------------
(f) For maintaining an original or any reissue patent, except a
design or plant patent, based on an application filed on or after
December 12, 1980, in force beyond eight years, the fee being due by
seven years and six months after the original grant:
Table 8 to Paragraph (f)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $940.00
By a small entity (Sec. 1.27(a))......................... 1,880.00
[[Page 37]]
By other than a small or micro entity...................... 3,760.00
------------------------------------------------------------------------
(g) For maintaining an original or any reissue patent, except a
design or plant patent, based on an application filed on or after
December 12, 1980, in force beyond twelve years, the fee being due by
eleven years and six months after the original grant:
Table 9 to Paragraph (g)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $1,925.00
By a small entity (Sec. 1.27(a))......................... 3,850.00
By other than a small or micro entity...................... 7,700.00
------------------------------------------------------------------------
(h) Surcharge for paying a maintenance fee during the six-month
grace period following the expiration of three years and six months,
seven years and six months, and eleven years and six months after the
date of the original grant of a patent based on an application filed on
or after December 12, 1980:
Table 10 to Paragraph (h)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $125.00
By a small entity (Sec. 1.27(a))......................... 250.00
By other than a small or micro entity...................... 500.00
------------------------------------------------------------------------
(i) [Reserved]
(j) For filing an application for extension of the term of a patent:
Table 11 to Paragraph (j)
------------------------------------------------------------------------
------------------------------------------------------------------------
(1) Application for extension under Sec. 1.740........... $1,180.00
(2) Initial application for interim extension under Sec.440.00
1.790.....................................................
(3) Subsequent application for interim extension under Sec. 230.00
1.790...................................................
------------------------------------------------------------------------
(k) In supplemental examination proceedings:
(1) For processing and treating a request for supplemental
examination:
Table 12 to Paragraph (k)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $1,155.00
By a small entity (Sec. 1.27(a))......................... 2,310.00
By other than a small or micro entity...................... 4,620.00
------------------------------------------------------------------------
(2) For ex parte reexamination ordered as a result of a supplemental
examination proceeding:
Table 13 to Paragraph (k)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $3,175.00
By a small entity (Sec. 1.27(a))......................... 6,350.00
By other than a small or micro entity...................... 12,700.00
------------------------------------------------------------------------
(3) For processing and treating, in a supplemental examination
proceeding, a non-patent document over 20 sheets in length, per
document:
(i) Between 21 and 50 sheets:
Table 14 to Paragraph (k)(3)(i)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $45.00
By a small entity (Sec. 1.27(a))......................... 90.00
By other than a small or micro entity...................... 180.00
------------------------------------------------------------------------
(ii) For each additional 50 sheets or a fraction thereof:
Table 15 to Paragraph (k)(3)(ii)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $75.00
By a small entity (Sec. 1.27(a))......................... 150.00
By other than a small or micro entity...................... 300.00
------------------------------------------------------------------------
[85 FR 46988, Aug. 3, 2020, as amended at 85 FR 58283, Sept. 18, 2020]
Sec.1.21 Miscellaneous fees and charges.
The Patent and Trademark Office has established the following fees
for the services indicated:
(a) Registration of attorneys and agents:
(1) For admission to examination for registration to practice:
(i) Application fee (non-refundable): $110.00
(ii) Registration examination fee
(A) For test administration by commercial entity: $210.00
(B) [Reserved]
(iii) For USPTO-administered review of registration examination:
$470.00
(iv) Request for extension of time in which to schedule examination
for registration to practice (non-refundable): $115.00.
(2) On registration to practice or grant of limited recognition:
(i) On registration to practice under Sec.11.6 of this chapter:
$210.00
(ii) On grant of limited recognition under Sec.11.9(b) of this
chapter: $210.00
(iii) On change of registration from agent to attorney: $110.00
(3) [Reserved]
[[Page 38]]
(4) For certificate of good standing as an attorney or agent:
(i) Standard: $40.00.
(ii) Suitable for framing: $50.00.
(5) For review of decision:
(i) By the Director of Enrollment and Discipline under Sec.11.2(c)
of this chapter: $420.00
(ii) Of the Director of Enrollment and Discipline under Sec.
11.2(d) of this chapter: $420.00
(6) Recovery/Retrieval of OED Information System Customer Interface
account by USPTO:
(i) [Reserved]
(ii) For USPTO-assisted change of address: $70.00.
(7)-(8) [Reserved]
(9) Administrative reinstatement fees:
(i) Delinquency fee: $50.00.
(ii) Administrative reinstatement fee: $210.00
(10) On application by a person for recognition or registration
after disbarment or suspension on ethical grounds, or resignation
pending disciplinary proceedings in any other jurisdiction; on
application by a person for recognition or registration who is asserting
rehabilitation from prior conduct that resulted in an adverse decision
in the Office regarding the person's moral character; on application by
a person for recognition or registration after being convicted of a
felony or crime involving moral turpitude or breach of fiduciary duty;
and on petition for reinstatement by a person excluded or suspended on
ethical grounds, or excluded on consent from practice before the Office:
$1,680.00
(b) Deposit accounts:
(1) [Reserved]
(2) Service charge for each month when the balance at the end of the
month is below $1,000: $25.00.
(3) Service charge for each month when the balance at the end of the
month is below $300 for restricted subscription deposit accounts used
exclusively for subscription order of patent copies as issued: $25.00.
(c)-(d) [Reserved]
(e) International type search reports: 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: $40.00.
(f)-(g) [Reserved]
(h) For recording each assignment, agreement, or other paper
relating to the property in a patent or application, per property:
(1) If submitted electronically, on or after January 1, 2014: $0.00.
(2) If not submitted electronically: $50.00.
(i) Publication in Official Gazette: For publication in the Official
Gazette of a notice of the availability of an application or a patent
for licensing or sale: Each application or patent: $25.00.
(j) [Reserved]
(k) For items and services that the director finds may be supplied,
for which fees are not specified by statute or by this part, such
charges as may be determined by the director with respect to each such
item or service: Actual cost
(l) [Reserved]
(m) For processing each payment refused (including a check returned
``unpaid'') or charged back by a financial institution: $50.00.
(n) For handling an application in which proceedings are terminated
pursuant to Sec.1.53(e): $140.00
(o) The receipt of a very lengthy sequence listing (mega-sequence
listing) in an application under 35 U.S.C. 111 or 371 is subject to the
following fee:
(1) First receipt by the Office of a sequence listing in electronic
form ranging in size from 300MB to 800MB (without file compression):
Table 1 to Paragraph (o)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $265.00
By a small entity (Sec. 1.27(a))......................... 530.00
By other than a small or micro entity...................... 1,060.00
------------------------------------------------------------------------
(2) First receipt by the Office of a sequence listing in electronic
form exceeding 800MB in size (without file compression):
Table 2 to Paragraph (o)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $2,625.00
By a small entity (Sec. 1.27(a))......................... 5,250.00
By other than a small or micro entity...................... 10,500.00
------------------------------------------------------------------------
(p) Additional Fee for Overnight Delivery: $40.00.
[[Page 39]]
(q) Additional fee for expedited service: $170.00.
[82 FR 52815, Nov. 14, 2017, as amended at 85 FR 46989, Aug. 3, 2020, 85
FR 58283, Sept. 18, 2020; 86 FR 28451, May 26, 2021]
Sec.1.22 Fees payable in advance.
(a) Patent fees and charges payable to the United States Patent and
Trademark Office are required to be paid in advance; that is, at the
time of requesting any action by the Office for which a fee or charge is
payable, with the exception that under Sec.1.53 applications for
patent may be assigned a filing date without payment of the basic filing
fee.
(b) All fees paid to the United States Patent and Trademark Office
must be itemized in each individual application, patent, or other
proceeding in such a manner that it is clear for which purpose the fees
are paid. The Office may return fees that are not itemized as required
by this paragraph. The provisions of Sec.1.5(a) do not apply to the
resubmission of fees returned pursuant to this paragraph.
[68 FR 48288, Aug. 13, 2003]
Sec.1.23 Methods of payment.
(a) All payments of money required for United States Patent and
Trademark Office fees, including fees for the processing of
international applications (Sec.1.445), shall be made in U.S. dollars
and in the form of a cashier's or certified check, Treasury note,
national bank notes, or United States Postal Service money order. If
sent in any other form, the Office may delay or cancel the credit until
collection is made. Checks and money orders must be made payable to the
Director of the United States Patent and Trademark Office. (Checks made
payable to the Commissioner of Patents and Trademarks will continue to
be accepted.) Payments from foreign countries must be payable and
immediately negotiable in the United States for the full amount of the
fee required. Money sent to the Office by mail will be at the risk of
the sender, and letters containing money should be registered with the
United States Postal Service.
(b) Payments of money required for United States Patent and
Trademark Office fees may also be made by credit card, except for
replenishing a deposit account. Payment of a fee by credit card must
specify the amount to be charged to the credit card and such other
information as is necessary to process the charge, and is subject to
collection of the fee. The Office will not accept a general
authorization to charge fees to a credit card. If credit card
information is provided on a form or document other than a form provided
by the Office for the payment of fees by credit card, the Office will
not be liable if the credit card number becomes public knowledge.
(c) A fee transmittal letter may be signed by a juristic applicant
or patent owner.
[65 FR 33455, May 24, 2000, as amended at 69 FR 43752, July 22, 2004; 78
FR 62395, Oct. 21, 2013]
Sec.1.24 [Reserved]
Sec.1.25 Deposit accounts.
(a) For the convenience of attorneys, and the general public in
paying any fees due, in ordering services offered by the Office, copies
of records, etc., deposit accounts may be established in the Patent and
Trademark Office upon payment of the fee for establishing a deposit
account (Sec.1.21(b)(1)). A minimum deposit of $1,000 is required for
paying any fees due or in ordering any services offered by the Office.
However, a minimum deposit of $300 may be paid to establish a restricted
subscription deposit account used exclusively for subscription order of
patent copies as issued. At the end of each month, a deposit account
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. An amount sufficient to cover all fees, services, copies, etc.,
requested must always be on deposit. Charges to accounts with
insufficient funds will not be accepted. A service charge (Sec.
1.21(b)(2)) will be assessed for each month that the balance at the end
of the month is below $1,000. For restricted subscription deposit
accounts,
[[Page 40]]
a service charge (Sec.1.21(b)(3)) will be assessed for each month that
the balance at the end of the month is below $300.
(b) Filing, issue, appeal, international-type search report,
international application processing, international design application
fees, petition, and post-issuance fees may be charged against these
accounts if sufficient funds are on deposit to cover such fees. A
general authorization to charge all fees, or only certain fees, set
forth in Sec. Sec.1.16 through 1.18 to a deposit account containing
sufficient funds may be filed in an individual application, either for
the entire pendency of the application or with a particular paper filed.
A general authorization to charge fees in an international design
application set forth in Sec.1.1031 will only be effective for the
transmittal fee (Sec.1.1031(a)). An authorization to charge fees under
Sec.1.16 in an international application entering the national stage
under 35 U.S.C. 371 will be treated as an authorization to charge fees
under Sec.1.492. An authorization to charge fees set forth in Sec.
1.18 to a deposit account is subject to the provisions of Sec.
1.311(b). An authorization to charge to a deposit account the fee for a
request for reexamination pursuant to Sec.1.510 or 1.913 and any other
fees required in a reexamination proceeding in a patent may also be
filed with the request for reexamination, and an authorization to charge
to a deposit account the fee for a request for supplemental examination
pursuant to Sec.1.610 and any other fees required in a supplemental
examination proceeding in a patent may also be filed with the request
for supplemental examination. An authorization to charge a fee to a
deposit account will not be considered payment of the fee on the date
the authorization to charge the fee is effective unless sufficient funds
are present in the account to cover the fee.
(c) A deposit account holder may replenish the deposit account by
submitting a payment to the United States Patent and Trademark Office. A
payment to replenish a deposit account must be submitted by one of the
methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of
this section.
(1) A payment to replenish a deposit account may be submitted by
electronic funds transfer through the Federal Reserve Fedwire System,
which requires that the following information be provided to the deposit
account holder's bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number with
the Department of the Treasury, which is 13100001; and
(iv) The deposit account holder's company name and deposit account
number.
(2) A payment to replenish a deposit account may be submitted by
electronic funds transfer over the Office's Internet Web site
(www.uspto.gov).
(3) A payment to replenish a deposit account may be addressed to:
Director of the United States Patent and Trademark Office, Attn: Deposit
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
(35 U.S.C. 6, Pub. L. 97-247)
[49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985; 65 FR
76772, Dec. 7, 2000; 67 FR 523, Jan. 4, 2002; 68 FR 14336, Mar. 25,
2003; 69 FR 43752, July 22, 2004; 70 FR 56127, Sept. 26, 2005; 73 FR
47541, Aug. 14, 2008; 78 FR 62395, Oct. 21, 2013; 80 FR 17955, Apr. 2,
2015]
Sec.1.26 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of
that required. A change of purpose after the payment of a fee, such as
when a party desires to withdraw a patent filing for which the fee was
paid, including an application, an appeal, or a request for an oral
hearing, will not entitle a party to a refund of such fee. The Office
will not refund amounts of twenty-five dollars or less unless a refund
is specifically requested, and will not notify the payor of such
amounts. If a party paying a fee or requesting a refund does not provide
the banking information necessary for making refunds by electronic funds
transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office
that refunds are to be credited to a deposit account, the Director may
require such information, or use the banking information on the payment
instrument to make a refund. Any refund of a fee paid by credit card
will be
[[Page 41]]
by a credit to the credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the
date the fee was paid, except as otherwise provided in this paragraph or
in Sec.1.28(a). If the Office charges a deposit account by an amount
other than an amount specifically indicated in an authorization (Sec.
1.25(b)), any request for refund based upon such charge must be filed
within two years from the date of the deposit account statement
indicating such charge, and include a copy of that deposit account
statement. The time periods set forth in this paragraph are not
extendable.
(c) If the Director decides not to institute a reexamination
proceeding in response to a request for reexamination or supplemental
examination, fees paid with the request for reexamination or
supplemental examination will be refunded or returned in accordance with
paragraphs (c)(1) through (c)(3) of this section. The reexamination
requester or the patent owner who requested a supplemental examination
proceeding, as appropriate, should indicate the form in which any refund
should be made (e.g., by check, electronic funds transfer, credit to a
deposit account). Generally, refunds will be issued in the form that the
original payment was provided.
(1) For an ex parte reexamination request, the ex parte
reexamination filing fee paid by the reexamination requester, less the
fee set forth in Sec.1.20(c)(7), will be refunded to the requester if
the Director decides not to institute an ex parte reexamination
proceeding.
(2) For an inter partes reexamination request, a refund of $7,970
will be made to the reexamination requester if the Director decides not
to institute an inter partes reexamination proceeding.
(3) For a supplemental examination request, the fee for
reexamination ordered as a result of supplemental examination, as set
forth in Sec.1.20(k)(2), will be returned to the patent owner who
requested the supplemental examination proceeding if the Director
decides not to institute a reexamination proceeding.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[47 FR 41274, Sept. 17, 1982, as amended at 50 FR 31826, Aug. 6, 1985;
54 FR 6902, Feb. 15, 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug.
21, 1992; 62 FR 53183, Oct. 10, 1997; 65 FR 54659, Sept. 8, 2000; 65 FR
76773, Dec. 7, 2000; 68 FR 48289, Aug. 13, 2003; 72 FR 46836, Aug. 21,
2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48851, Aug. 14, 2012]
Sec.1.27 Definition of small entities and establishing status as
a small entity to permit payment of small entity fees; when a
determination of entitlement to small entity status and notification
of loss of entitlement to small entity status are required;
fraud on the Office.
(a) Definition of small entities. A small entity as used in this
chapter means any party (person, small business concern, or nonprofit
organization) under paragraphs (a)(1) through (a)(3) of this section.
(1) Person. A person, as used in paragraph (c) of this section,
means any inventor or other individual (e.g., an individual to whom an
inventor has transferred some rights in the invention) who has not
assigned, granted, conveyed, or licensed, and is under no obligation
under contract or law to assign, grant, convey, or license, any rights
in the invention. An inventor or other individual who has transferred
some rights in the invention to one or more parties, or is under an
obligation to transfer some rights in the invention to one or more
parties, can also qualify for small entity status if all the parties who
have had rights in the invention transferred to them also qualify for
small entity status either as a person, small business concern, or
nonprofit organization under this section.
(2) Small business concern. A small business concern, as used in
paragraph (c) of this section, means any business concern that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person, concern, or
organization which would not qualify for small entity status as a
person, small business concern, or nonprofit organization; and
[[Page 42]]
(ii) Meets the size standards set forth in 13 CFR 121.801 through
121.805 to be eligible for reduced patent fees. Questions related to
standards for a small business concern may be directed to: Small
Business Administration, Size Standards Staff, 409 Third Street, SW.,
Washington, DC 20416.
(3) Nonprofit organization. A nonprofit organization, as used in
paragraph (c) of this section, means any nonprofit organization that:
(i) Has not assigned, granted, conveyed, or licensed, and is under
no obligation under contract or law to assign, grant, convey, or
license, any rights in the invention to any person, concern, or
organization which would not qualify as a person, small business
concern, or a nonprofit organization; and
(ii) Is either:
(A) A university or other institution of higher education located in
any country;
(B) An organization of the type described in section 501(c)(3) of
the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from
taxation under section 501(a) of the Internal Revenue Code (26 U.S.C.
501(a));
(C) Any nonprofit scientific or educational organization qualified
under a nonprofit organization statute of a state of this country (35
U.S.C. 201(i)); or
(D) Any nonprofit organization located in a foreign country which
would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B)
of this section or (a)(3)(ii)(C) of this section if it were located in
this country.
(4) Federal Government Use License Exceptions. In a patent
application filed, prosecuted, and if patented, maintained at no expense
to the Government, with the exception of any expense taken to deliver
the application and fees to the Office on behalf of the applicant:
(i) For persons under paragraph (a)(1) of this section, claiming
small entity status is not prohibited by:
(A) A use license to the Government resulting from a rights
determination under Executive Order 10096 made in accordance with Sec.
501.6 of this title;
(B) A use license to the Government resulting from Federal agency
action pursuant to 15 U.S.C. 3710d(a) allowing the Federal employee-
inventor to obtain or retain title to the invention; or
(C) A use license to a Federal agency resulting from retention of
rights under 35 U.S.C. 202(d) by an inventor employed by a small
business concern or nonprofit organization contractor, provided the
license is equivalent to the license under 35 U.S.C. 202(c)(4) the
Federal agency would have received had the contractor elected to retain
title, and all the conditions applicable under Sec.401.9 of this title
to an employee/inventor are met.
(ii) For small business concerns and nonprofit organizations under
paragraphs (a)(2) and (3) of this section, a use license to a Federal
agency resulting from a funding agreement with that agency pursuant to
35 U.S.C. 202(c)(4) does not preclude claiming small entity status,
provided that:
(A) The subject invention was made solely by employees of the small
business concern or nonprofit organization; or
(B) In the case of a Federal employee co-inventor, the Federal
agency employing such co-inventor took action pursuant to 35 U.S.C.
202(e)(1) to exclusively license or assign whatever rights currently
held or that it may acquire in the subject invention to the small
business concern or nonprofit organization, subject to the license under
35 U.S.C. 202(c)(4).
(iii) For small business concerns and nonprofit organizations under
paragraphs (a)(2) and (3) of this section that have collaborated with a
Federal agency laboratory pursuant to a cooperative research and
development agreement (CRADA) under 15 U.S.C. 3710a(a)(1), claiming
small entity status is not prohibited by a use license to the Government
pursuant to:
(A) 15 U.S.C. 3710a(b)(2) that results from retaining title to an
invention made solely by the employee of the small business concern or
nonprofit organization; or
(B) 15 U.S.C. 3710a(b)(3)(D), provided the laboratory has waived in
whole any right of ownership the Government may have to the subject
invention made by the small business concern or nonprofit organization,
or has exclusively licensed whatever ownership rights the Government may
acquire in
[[Page 43]]
the subject invention to the small business concern or nonprofit
organization.
(iv) Regardless of whether an exception under this paragraph (a)(4)
applies, no refund under Sec.1.28(a) is available for any patent fee
paid by the Government.
(5) Security Interest. A security interest does not involve an
obligation to transfer rights in the invention for the purposes of
paragraphs (a)(1) through (a)(3) of this section unless the security
interest is defaulted upon.
(b) Establishment of small entity status permits payment of reduced
fees. (1) A small entity, as defined in paragraph (a) of this section,
who has properly asserted entitlement to small entity status pursuant to
paragraph (c) of this section will be accorded small entity status by
the Office in the particular application or patent in which entitlement
to small entity status was asserted. Establishment of small entity
status allows the payment of certain reduced patent fees pursuant to 35
U.S.C. 41(h)(1).
(2) Submission of an original utility application in compliance with
the Office electronic filing system by an applicant who has properly
asserted entitlement to small entity status pursuant to paragraph (c) of
this section in that application allows the payment of a reduced filing
fee pursuant to 35 U.S.C. 41(h)(3).
(c) Assertion of small entity status. Any party (person, small
business concern or nonprofit organization) should make a determination,
pursuant to paragraph (f) of this section, of entitlement to be accorded
small entity status based on the definitions set forth in paragraph (a)
of this section, and must, in order to establish small entity status for
the purpose of paying small entity fees, actually make an assertion of
entitlement to small entity status, in the manner set forth in
paragraphs (c)(1) or (c)(3) of this section, in the application or
patent in which such small entity fees are to be paid.
(1) Assertion by writing. Small entity status may be established by
a written assertion of entitlement to small entity status. A written
assertion must:
(i) Be clearly identifiable;
(ii) Be signed (see paragraph (c)(2) of this section); and
(iii) Convey the concept of entitlement to small entity status, such
as by stating that applicant is a small entity, or that small entity
status is entitled to be asserted for the application or patent. While
no specific words or wording are required to assert small entity status,
the intent to assert small entity status must be clearly indicated in
order to comply with the assertion requirement.
(2) Parties who can sign the written assertion. The written
assertion can be signed by:
(i) The applicant (Sec.1.42 or Sec.1.421);
(ii) A patent practitioner of record or a practitioner acting in a
representative capacity under Sec.1.34;
(iii) The inventor or a joint inventor, if the inventor is the
applicant; or
(iv) The assignee.
(3) Assertion by payment of the small entity basic filing, basic
transmittal, basic national fee, international search fee, or individual
designation fee in an international design application. The payment, by
any party, of the exact amount of one of the small entity basic filing
fees set forth in Sec.1.16(a), (b), (c), (d), or (e), the small entity
transmittal fee set forth in Sec.1.445(a)(1) or Sec.1.1031(a), the
small entity international search fee set forth in Sec.1.445(a)(2) to
a Receiving Office other than the United States Receiving Office in the
exact amount established for that Receiving Office pursuant to PCT Rule
16, or the small entity basic national fee set forth in Sec.1.492(a),
will be treated as a written assertion of entitlement to small entity
status even if the type of basic filing, basic transmittal, or basic
national fee is inadvertently selected in error. The payment, by any
party, of the small entity first part of the individual designation fee
for the United States to the International Bureau (Sec.1.1031) will be
treated as a written assertion of entitlement to small entity status.
(i) If the Office accords small entity status based on payment of a
small entity basic filing or basic national fee under paragraph (c)(3)
of this section that is not applicable to that application, any balance
of the small entity
[[Page 44]]
fee that is applicable to that application will be due along with the
appropriate surcharge set forth in Sec.1.16(f), or Sec.1.16(g).
(ii) The payment of any small entity fee other than those set forth
in paragraph (c)(3) of this section (whether in the exact fee amount or
not) will not be treated as a written assertion of entitlement to small
entity status and will not be sufficient to establish small entity
status in an application or a patent.
(4) Assertion required in related, continuing, and reissue
applications. Status as a small entity must be specifically established
by an assertion in each related, continuing and reissue application in
which status is appropriate and desired. Status as a small entity in one
application or patent does not affect the status of any other
application or patent, regardless of the relationship of the
applications or patents. The refiling of an application under Sec.1.53
as a continuation, divisional, or continuation-in-part application
(including a continued prosecution application under Sec.1.53(d)), or
the filing of a reissue application, requires a new assertion as to
continued entitlement to small entity status for the continuing or
reissue application.
(d) When small entity fees can be paid. Any fee, other than the
small entity basic filing fees and the small entity national fees of
paragraph (c)(3) of this section, can be paid in the small entity amount
only if it is submitted with, or subsequent to, the submission of a
written assertion of entitlement to small entity status, except when
refunds are permitted by Sec.1.28(a).
(e) Only one assertion required. (1) An assertion of small entity
status need only be filed once in an application or patent. Small entity
status, once established, remains in effect until changed pursuant to
paragraph (g)(1) of this section. Where an assignment of rights or an
obligation to assign rights to other parties who are small entities
occurs subsequent to an assertion of small entity status, a second
assertion is not required.
(2) Once small entity status is withdrawn pursuant to paragraph
(g)(2) of this section, a new written assertion is required to again
obtain small entity status.
(f) Assertion requires a determination of entitlement to pay small
entity fees. Prior to submitting an assertion of entitlement to small
entity status in an application, including a related, continuing, or
reissue application, a determination of such entitlement should be made
pursuant to the requirements of paragraph (a) of this section. It should
be determined that all parties holding rights in the invention qualify
for small entity status. The Office will generally not question any
assertion of small entity status that is made in accordance with the
requirements of this section, but note paragraph (h) of this section.
(g)(1) New determination of entitlement to small entity status is
needed when issue and maintenance fees are due. Once status as a small
entity has been established in an application or patent, fees as a small
entity may thereafter be paid in that application or patent without
regard to a change in status until the issue fee is due or any
maintenance fee is due.
(2) Notification of loss of entitlement to small entity status is
required when issue and maintenance fees are due. Notification of a loss
of entitlement to small entity status must be filed in the application
or patent prior to paying, or at the time of paying, the earliest of the
issue fee or any maintenance fee due after the date on which status as a
small entity as defined in paragraph (a) of this section is no longer
appropriate. The notification that small entity status is no longer
appropriate must be signed by a party identified in Sec.1.33(b).
Payment of a fee in other than the small entity amount is not sufficient
notification that small entity status is no longer appropriate.
(h) Fraud attempted or practiced on the Office. (1) Any attempt to
fraudulently establish status as a small entity, or pay fees as a small
entity, shall be considered as a fraud practiced or attempted on the
Office.
(2) Improperly, and with intent to deceive, establishing status as a
small entity, or paying fees as a small entity,
[[Page 45]]
shall be considered as a fraud practiced or attempted on the Office.
[65 FR 54659, Sept. 8, 2000, as amended at 69 FR 56538, Sept. 21, 2004;
70 FR 3889, Jan. 27, 2005; 77 FR 48813, Aug. 14, 2012; 78 FR 4289, Jan.
18, 2013; 80 FR 17955, Apr. 2, 2015; 85 FR 46990, Aug. 3, 2020; 85 FR
82923, Dec. 21, 2020]
Sec.1.28 Refunds when small entity status is later established;
how errors in small entity status are excused.
(a) Refunds based on later establishment of small entity status. A
refund pursuant to Sec.1.26, based on establishment of small entity
status, of a portion of fees timely paid in full prior to establishing
status as a small entity may only be obtained if an assertion under
Sec.1.27(c) and a request for a refund of the excess amount are filed
within three months of the date of the timely payment of the full fee.
The three-month time period is not extendable under Sec.1.136. Status
as a small entity is waived for any fee by the failure to establish the
status prior to paying, at the time of paying, or within three months of
the date of payment of, the full fee.
(b) Date of payment. (1) The three-month period for requesting a
refund, pursuant to paragraph (a) of this section, starts on the date
that a full fee has been paid;
(2) The date when a deficiency payment is paid in full determines
the amount of deficiency that is due, pursuant to paragraph (c) of this
section.
(c) How errors in small entity status are excused. If status as a
small entity is established in good faith, and fees as a small entity
are paid in good faith, in any application or patent, and it is later
discovered that such status as a small entity was established in error,
or that through error the Office was not notified of a loss of
entitlement to small entity status as required by Sec.1.27(g)(2), the
error will be excused upon: compliance with the separate submission and
itemization requirements of paragraphs (c)(1) and (c)(2) of this
section, and the deficiency payment requirement of paragraph (c)(2) of
this section:
(1) Separate submission required for each application or patent. Any
paper submitted under this paragraph must be limited to the deficiency
payment (all fees paid in error), required by paragraph (c)(2) of this
section, for one application or one patent. Where more than one
application or patent is involved, separate submissions of deficiency
payments (e.g., checks) and itemizations are required for each
application or patent. See Sec.1.4(b).
(2) Payment of deficiency owed. The deficiency owed, resulting from
the previous erroneous payment of small entity fees, must be paid.
(i) Calculation of the deficiency owed. The deficiency owed for each
previous fee erroneously paid as a small entity is the difference
between the current fee amount (for other than a small entity) on the
date the deficiency is paid in full and the amount of the previous
erroneous (small entity) fee payment. The total deficiency payment owed
is the sum of the individual deficiency owed amounts for each fee amount
previously erroneously paid as a small entity. Where a fee paid in error
as a small entity was subject to a fee decrease between the time the fee
was paid in error and the time the deficiency is paid in full, the
deficiency owed is equal to the amount (previously) paid in error;
(ii) Itemization of the deficiency payment. An itemization of the
total deficiency payment is required. The itemization must include the
following information:
(A) Each particular type of fee that was erroneously paid as a small
entity, (e.g., basic statutory filing fee, two-month extension of time
fee) along with the current fee amount for a non-small entity;
(B) The small entity fee actually paid, and when. This will permit
the Office to differentiate, for example, between two one-month
extension of time fees erroneously paid as a small entity but on
different dates;
(C) The deficiency owed amount (for each fee erroneously paid); and
(D) The total deficiency payment owed, which is the sum or total of
the individual deficiency owed amounts set forth in paragraph
(c)(2)(ii)(C) of this section.
(3) Failure to comply with requirements. If the requirements of
paragraphs (c)(1) and (c)(2) of this section are not complied with, such
failure will either: be
[[Page 46]]
treated as an authorization for the Office to process the deficiency
payment and charge the processing fee set forth in Sec.1.17(i), or
result in a requirement for compliance within a one-month non-extendable
time period under Sec.1.136(a) to avoid the return of the fee
deficiency paper, at the option of the Office.
(d) Payment of deficiency operates as notification of loss of
status. Any deficiency payment (based on a previous erroneous payment of
a small entity fee) submitted under paragraph (c) of this section will
be treated under Sec.1.27(g)(2) as a notification of a loss of
entitlement to small entity status.
[65 FR 54661, Sept. 8, 2000]
Sec.1.29 Micro entity status.
(a) To establish micro entity status under this paragraph, the
applicant must certify that:
(1) The applicant qualifies as a small entity as defined in Sec.
1.27 without relying on a government use license exception under Sec.
1.27(a)(4);
(2) Neither the applicant nor the inventor nor a joint inventor has
been named as the inventor or a joint inventor on more than four
previously filed patent applications, other than applications filed in
another country, provisional applications under 35 U.S.C. 111(b), or
international applications for which the basic national fee under 35
U.S.C. 41(a) was not paid;
(3) Neither the applicant nor the inventor nor a joint inventor, in
the calendar year preceding the calendar year in which the applicable
fee is being paid, had a gross income, as defined in section 61(a) of
the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three
times the median household income for that preceding calendar year, as
most recently reported by the Bureau of the Census; and
(4) Neither the applicant nor the inventor nor a joint inventor has
assigned, granted, or conveyed, nor is under an obligation by contract
or law to assign, grant, or convey, a license or other ownership
interest in the application concerned to an entity that, in the calendar
year preceding the calendar year in which the applicable fee is being
paid, had a gross income, as defined in section 61(a) of the Internal
Revenue Code of 1986, exceeding three times the median household income
for that preceding calendar year, as most recently reported by the
Bureau of the Census.
(b) An applicant, inventor, or joint inventor is not considered to
be named on a previously filed application for purposes of paragraph
(a)(2) of this section if the applicant, inventor, or joint inventor has
assigned, or is under an obligation by contract or law to assign, all
ownership rights in the application as the result of the applicant's,
inventor's, or joint inventor's previous employment.
(c) If an applicant's, inventor's, joint inventor's, or entity's
gross income in the preceding calendar year is not in United States
dollars, the average currency exchange rate, as reported by the Internal
Revenue Service, during that calendar year shall be used to determine
whether the applicant's, inventor's, joint inventor's, or entity's gross
income exceeds the threshold specified in paragraph (a)(3) or (4) of
this section.
(d) To establish micro entity status under this paragraph, the
applicant must certify that:
(1) The applicant qualifies as a small entity as defined in Sec.
1.27 without relying on a government use license exception under Sec.
1.27(a)(4);
(2)(i) The applicant's employer, from which the applicant obtains
the majority of the applicant's income, is an institution of higher
education as defined in section 101(a) of the Higher Education Act of
1965 (20 U.S.C. 1001(a)); or
(ii) The applicant has assigned, granted, conveyed, or is under an
obligation by contract or law, to assign, grant, or convey, a license or
other ownership interest in the particular application to such an
institution of higher education.
(e) Micro entity status is established in an application by filing a
micro entity certification in writing complying with the requirements of
either paragraph (a) or (d) of this section and signed either in
compliance with Sec.1.33(b), in an international application filed in
a Receiving Office other than the United States Receiving Office by a
[[Page 47]]
person authorized to represent the applicant under Sec.1.455, or in an
international design application by a person authorized to represent the
applicant under Sec.1.1041 before the International Bureau where the
micro entity certification is filed with the International Bureau.
Status as a micro entity must be specifically established in each
related, continuing and reissue application in which status is
appropriate and desired. Status as a micro entity in one application or
patent does not affect the status of any other application or patent,
regardless of the relationship of the applications or patents. The
refiling of an application under Sec.1.53 as a continuation,
divisional, or continuation-in-part application (including a continued
prosecution application under Sec.1.53(d)), or the filing of a reissue
application, requires a new certification of entitlement to micro entity
status for the continuing or reissue application.
(f) A fee may be paid in the micro entity amount only if it is
submitted with, or subsequent to, the submission of a certification of
entitlement to micro entity status.
(g) A certification of entitlement to micro entity status need only
be filed once in an application or patent. Micro entity status, once
established, remains in effect until changed pursuant to paragraph (i)
of this section. However, a fee may be paid in the micro entity amount
only if status as a micro entity as defined in paragraph (a) or (d) of
this section is appropriate on the date the fee is being paid. Where an
assignment of rights or an obligation to assign rights to other parties
who are micro entities occurs subsequent to the filing of a
certification of entitlement to micro entity status, a second
certification of entitlement to micro entity status is not required.
(h) Prior to submitting a certification of entitlement to micro
entity status in an application, including a related, continuing, or
reissue application, a determination of such entitlement should be made
pursuant to the requirements of this section. It should be determined
that each applicant qualifies for micro entity status under paragraph
(a) or (d) of this section, and that any other party holding rights in
the invention qualifies for small entity status under Sec.1.27. The
Office will generally not question certification of entitlement to micro
entity status that is made in accordance with the requirements of this
section.
(i) Notification of a loss of entitlement to micro entity status
must be filed in the application or patent prior to paying, or at the
time of paying, any fee after the date on which status as a micro entity
as defined in paragraph (a) or (d) of this section is no longer
appropriate. The notification that micro entity status is no longer
appropriate must be signed by a party identified in Sec.1.33(b).
Payment of a fee in other than the micro entity amount is not sufficient
notification that micro entity status is no longer appropriate. A
notification that micro entity status is no longer appropriate will not
be treated as a notification that small entity status is also no longer
appropriate unless it also contains a notification of loss of
entitlement to small entity status under Sec.1.27(f)(2). Once a
notification of a loss of entitlement to micro entity status is filed in
the application or patent, a new certification of entitlement to micro
entity status is required to again obtain micro entity status.
(j) Any attempt to fraudulently establish status as a micro entity,
or pay fees as a micro entity, shall be considered as a fraud practiced
or attempted on the Office. Improperly, and with intent to deceive,
establishing status as a micro entity, or paying fees as a micro entity,
shall be considered as a fraud practiced or attempted on the Office.
(k) If status as a micro entity is established in good faith in an
application or patent, and fees as a micro entity are paid in good faith
in the application or patent, and it is later discovered that such micro
entity status either was established in error, or that the Office was
not notified of a loss of entitlement to micro entity status as required
by paragraph (i) of this section through error, the error will be
excused upon compliance with the separate submission and itemization
requirements of paragraph (k)(1) of this section and the deficiency
payment requirement of paragraph (k)(2) of this section.
[[Page 48]]
(1) Any paper submitted under this paragraph must be limited to the
deficiency payment (all fees paid in error) required for a single
application or patent. Where more than one application or patent is
involved, separate submissions of deficiency payments are required for
each application or patent (see Sec.1.4(b)). The paper must contain an
itemization of the total deficiency payment for the single application
or patent and include the following information:
(i) Each particular type of fee that was erroneously paid as a micro
entity, (e.g., basic statutory filing fee, two-month extension of time
fee) along with the current fee amount for a small or non-small entity,
as applicable;
(ii) The micro entity fee actually paid, and the date on which it
was paid;
(iii) The deficiency owed amount (for each fee erroneously paid);
and
(iv) The total deficiency payment owed, which is the sum or total of
the individual deficiency owed amounts as set forth in paragraph (k)(2)
of this section.
(2) The deficiency owed, resulting from the previous erroneous
payment of micro entity fees, must be paid. The deficiency owed for each
previous fee erroneously paid as a micro entity is the difference
between the current fee amount for a small entity or non-small entity,
as applicable, on the date the deficiency is paid in full and the amount
of the previous erroneous micro entity fee payment. The total deficiency
payment owed is the sum of the individual deficiency owed amounts for
each fee amount previously and erroneously paid as a micro entity.
(3) If the requirements of paragraphs (k)(1) and (2) of this section
are not complied with, such failure will either be treated at the option
of the Office as an authorization for the Office to process the
deficiency payment and charge the processing fee set forth in Sec.
1.17(i), or result in a requirement for compliance within a one-month
time period that is not extendable under Sec.1.136(a) to avoid the
return of the fee deficiency payment.
(4) Any deficiency payment (based on a previous erroneous payment of
a micro entity fee) submitted under this paragraph will be treated as a
notification of a loss of entitlement to micro entity status under
paragraph (i) of this section.
[77 FR 75033, Dec. 19, 2012, as amended at 78 FR 62396, Oct. 21, 2013;
80 FR 17955, Apr. 2, 2015; 85 FR 82923, Dec. 21, 2020]
Subpart B_National Processing Provisions
Prosecution of Application and Appointment of Attorney or Agent
Sec.1.31 Applicant may be represented by one or more patent
practitioners or joint inventors.
An applicant for patent may file and prosecute the applicant's own
case, or the applicant may give power of attorney so as to be
represented by one or more patent practitioners or joint inventors,
except that a juristic entity (e.g., organizational assignee) must be
represented by a patent practitioner even if the juristic entity is the
applicant. The Office cannot aid in the selection of a patent
practitioner.
[77 FR 48813, Aug. 14, 2012]
Sec.1.32 Power of attorney.
(a) Definitions. (1) Patent practitioner means a registered patent
attorney or registered patent agent under Sec.11.6.
(2) Power of attorney means a written document by which a principal
authorizes one or more patent practitioners or joint inventors to act on
the principal's behalf.
(3) Principal means the applicant (Sec.1.42) for an application
for patent and the patent owner for a patent, including a patent in a
supplemental examination or reexamination proceeding. The principal
executes a power of attorney designating one or more patent
practitioners or joint inventors to act on the principal's behalf.
(4) Revocation means the cancellation by the principal of the
authority previously given to a patent practitioner or joint inventor to
act on the principal's behalf.
(5) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application or
patent
[[Page 49]]
such that the correspondence address for the patent application, patent
or other patent proceeding would be the address associated with the
Customer Number;
(ii) Designate the fee address (Sec.1.363) of a patent such that
the fee address for the patent would be the address associated with the
Customer Number; and
(iii) Submit a list of patent practitioners such that those patent
practitioners associated with the Customer Number would have power of
attorney.
(6) Patent practitioner of record means a patent practitioner who
has been granted a power of attorney in an application, patent, or other
proceeding in compliance with paragraph (b) of this section. The phrases
practitioner of record and attorney or agent of record also mean a
patent practitioner who has been granted a power of attorney in an
application, patent, or other proceeding in compliance with paragraph
(b) of this section.
(b) A power of attorney must:
(1) Be in writing;
(2) Name one or more representatives in compliance with paragraph
(c) of this section;
(3) Give the representative power to act on behalf of the principal;
and
(4) Be signed by the applicant for patent (Sec.1.42) or the patent
owner. A patent owner who was not the applicant under Sec.1.46 must
appoint any power of attorney in compliance with Sec. Sec.3.71 and
3.73 of this chapter.
(c) A power of attorney may only name as representative:
(1) One or more joint inventors (Sec.1.45);
(2) Those registered patent practitioners associated with a Customer
Number;
(3) Ten or fewer patent practitioners, stating the name and
registration number of each patent practitioner. Except as provided in
paragraph (c)(1) or (c)(2) of this section, the Office will not
recognize more than ten patent practitioners as being of record in an
application or patent. If a power of attorney names more than ten patent
practitioners, such power of attorney must be accompanied by a separate
paper indicating which ten patent practitioners named in the power of
attorney are to be recognized by the Office as being of record in the
application or patent to which the power of attorney is directed.
(d) A power of attorney from a prior national application for which
benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) in a
continuing application may have effect in the continuing application if
a copy of the power of attorney from the prior application is filed in
the continuing application unless:
(1) The power of attorney was granted by the inventor; and
(2) The continuing application names an inventor who was not named
as an inventor in the prior application.
(e) If the power of attorney was granted by the originally named
inventive entity, and an added inventor pursuant to Sec.1.48 does not
provide a power of attorney consistent with the power of attorney
granted by the originally named inventive entity, the addition of the
inventor results in the loss of that power of attorney upon grant of the
Sec.1.48 request. This provision does not preclude a practitioner from
acting pursuant to Sec.1.34, if applicable.
[69 FR 29877, May 26, 2004, as amended at 70 FR 56127, Sept. 26, 2005;
77 FR 48813, Aug. 14, 2012; 80 FR 17956, Apr. 2, 2015]
Sec.1.33 Correspondence respecting patent applications, patent
reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When filing
an application, a correspondence address must be set forth in either an
application data sheet (Sec.1.76), or elsewhere, in a clearly
identifiable manner, in any paper submitted with an application filing.
If no correspondence address is specified, the Office may treat the
mailing address of the first named inventor (if provided, see Sec. Sec.
1.76(b)(1) and 1.63(b)(2)) as the correspondence address. The Office
will direct, or otherwise make available, all notices, official letters,
and other communications relating to the application to the person
associated with the correspondence address. For correspondence submitted
[[Page 50]]
via the Office's electronic filing system, however, an electronic
acknowledgment receipt will be sent to the submitter. The Office will
generally not engage in double correspondence with an applicant and a
patent practitioner, or with more than one patent practitioner except as
deemed necessary by the Director. If more than one correspondence
address is specified, the Office will select one of the specified
addresses for use as the correspondence address and, if given, may
select the address associated with a Customer Number over a typed
correspondence address. For the party to whom correspondence is to be
addressed, a daytime telephone number should be supplied in a clearly
identifiable manner and may be changed by any party who may change the
correspondence address. The correspondence address may be changed by the
parties set forth in paragraph (b)(1) or (b)(3) of this section. Prior
to the appointment of any power of attorney under Sec.1.32(b), the
correspondence address may also be changed by any patent practitioner
named in the application transmittal papers who acts in a representative
capacity under the provisions of Sec.1.34.
(b) Amendments and other papers. Amendments and other papers, except
for written assertions pursuant to Sec.1.27(c)(2)(iii) or (c)(2)(iv),
filed in the application must be signed by:
(1) A patent practitioner of record;
(2) A patent practitioner not of record who acts in a representative
capacity under the provisions of Sec.1.34; or
(3) The applicant (Sec.1.42). Unless otherwise specified, all
papers submitted on behalf of a juristic entity must be signed by a
patent practitioner.
(c) All notices, official letters, and other communications for the
patent owner or owners in a reexamination or supplemental examination
proceeding will be directed to the correspondence address in the patent
file. Amendments filed in a reexamination proceeding, and other papers
filed in a reexamination or supplemental examination proceeding, on
behalf of the patent owner must be signed by the patent owner, or if
there is more than one owner by all the owners, or by an attorney or
agent of record in the patent file, or by a registered attorney or agent
not of record who acts in a representative capacity under the provisions
of Sec.1.34. Double correspondence with the patent owner or owners and
the patent owner's attorney or agent, or with more than one attorney or
agent, will not be undertaken.
(d) A ``correspondence address'' or change thereto may be filed with
the Patent and Trademark Office during the enforceable life of the
patent. The ``correspondence address'' will be used in any
correspondence relating to maintenance fees unless a separate ``fee
address'' has been specified. See Sec.1.363 for ``fee address'' used
solely for maintenance fee purposes.
(e) A change of address filed in a patent application or patent does
not change the address for a patent practitioner in the roster of patent
attorneys and agents. See Sec.11.11 of this title.
(f) Where application papers from a prior application are used in a
continuing application and the correspondence address was changed during
the prosecution of the prior application, an application data sheet or
separate paper identifying the correspondence address to be used for the
continuing application must be submitted. Otherwise, the Office may not
recognize the change of correspondence address effected during the
prosecution of the prior application.
(g) A patent practitioner acting in a representative capacity whose
correspondence address is the correspondence address of record in an
application may change the correspondence address after the patent has
issued, provided that the change of correspondence address is
accompanied by a statement that notice has been given to the patentee or
owner.
[36 FR 12617, July 2, 1971, as amended at 46 FR 29181, May 29, 1981; 49
FR 34724, Aug. 31, 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10,
1997; 65 FR 54661, Sept. 8, 2000; 69 FR 29877, May 26, 2004; 69 FR
35452, June 24, 2004; 70 FR 3889, Jan. 27, 2005; 70 FR 56127, Sept. 26,
2005; 72 FR 2776, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007; 77 FR
48814, Aug. 14, 2012; 78 FR 62396, Oct. 21, 2013]
Sec.1.34 Acting in a representative capacity.
When a patent practitioner acting in a representative capacity
appears in
[[Page 51]]
person or signs a paper in practice before the United States Patent and
Trademark Office in a patent case, his or her personal appearance or
signature shall constitute a representation to the United States Patent
and Trademark Office that under the provisions of this subchapter and
the law, he or she is authorized to represent the particular party on
whose behalf he or she acts. In filing such a paper, the patent
practitioner must set forth his or her registration number, his or her
name and signature. Further proof of authority to act in a
representative capacity may be required.
[70 FR 56127, Sept. 26, 2005]
Sec.1.36 Revocation of power of attorney; withdrawal of patent attorney or agent.
(a) A power of attorney, pursuant to Sec.1.32(b), may be revoked
at any stage in the proceedings of a case by the applicant or patent
owner. A power of attorney to the patent practitioners associated with a
Customer Number will be treated as a request to revoke any powers of
attorney previously given. Fewer than all of the applicants (or fewer
than all patent owners in a supplemental examination or reexamination
proceeding) may revoke the power of attorney only upon a showing of
sufficient cause, and payment of the petition fee set forth in Sec.
1.17(f). A patent practitioner will be notified of the revocation of the
power of attorney. Where power of attorney is given to the patent
practitioners associated with a Customer Number (Sec.1.32(c)(2)), the
practitioners so appointed will also be notified of the revocation of
the power of attorney when the power of attorney to all of the
practitioners associated with the Customer Number is revoked. The notice
of revocation will be mailed to the correspondence address for the
application (Sec.1.33) in effect before the revocation. An assignment
will not of itself operate as a revocation of a power previously given,
but the assignee may become the applicant under Sec.1.46(c) and revoke
any previous power of attorney and grant a power of attorney as provided
in Sec.1.32(b).
(b) A registered patent attorney or patent agent who has been given
a power of attorney pursuant to Sec.1.32(b) may withdraw as attorney
or agent of record upon application to and approval by the Director. The
applicant or patent owner will be notified of the withdrawal of the
registered patent attorney or patent agent. Where power of attorney is
given to the patent practitioners associated with a Customer Number, a
request to delete all of the patent practitioners associated with the
Customer Number may not be granted if an applicant has given power of
attorney to the patent practitioners associated with the Customer Number
in an application that has an Office action to which a reply is due, but
insufficient time remains for the applicant to file a reply. See Sec.
41.5 of this title for withdrawal during proceedings before the Patent
Trial and Appeal Board.
[69 FR 49997, Aug. 12, 2004, as amended at 70 FR 56128, Sept. 26, 2005;
77 FR 46624, Aug. 6, 2012; 77 FR 48814, Aug. 14, 2012]
Who May Apply for a Patent
Sec.1.41 Inventorship.
(a) An application must include, or be amended to include, the name
of the inventor for any invention claimed in the application.
(b) The inventorship of a nonprovisional application under 35 U.S.C.
111(a) is the inventor or joint inventors set forth in the application
data sheet in accordance with Sec.1.76 filed before or concurrently
with the inventor's oath or declaration. If an application data sheet is
not filed before or concurrently with the inventor's oath or
declaration, the inventorship is the inventor or joint inventors set
forth in the inventor's oath or declaration, except as provided for in
Sec. Sec.1.53(d)(4) and 1.63(d). Once an application data sheet or the
inventor's oath or declaration is filed in a nonprovisional application,
any correction of inventorship must be pursuant to Sec.1.48. If
neither an application data sheet nor the inventor's oath or declaration
is filed during the pendency of a nonprovisional application, the
inventorship is the inventor or joint inventors set forth in the
application papers filed pursuant to Sec.1.53(b), unless the applicant
files a paper, including the processing fee set forth in Sec.1.17(i),
supplying the name or names of the inventor or joint inventors.
[[Page 52]]
(c) The inventorship of a provisional application is the inventor or
joint inventors set forth in the cover sheet as prescribed by Sec.
1.51(c)(1). Once a cover sheet as prescribed by Sec.1.51(c)(1) is
filed in a provisional application, any correction of inventorship must
be pursuant to Sec.1.48. If a cover sheet as prescribed by Sec.
1.51(c)(1) is not filed during the pendency of a provisional
application, the inventorship is the inventor or joint inventors set
forth in the application papers filed pursuant to Sec.1.53(c), unless
applicant files a paper including the processing fee set forth in Sec.
1.17(q), supplying the name or names of the inventor or joint inventors.
(d) In a nonprovisional application under 35 U.S.C. 111(a) filed
without an application data sheet or the inventor's oath or declaration,
or in a provisional application filed without a cover sheet as
prescribed by Sec.1.51(c)(1), the name and residence of each person
believed to be an actual inventor should be provided when the
application papers pursuant to Sec.1.53(b) or Sec.1.53(c) are filed.
(e) The inventorship of an international application entering the
national stage under 35 U.S.C. 371 is the inventor or joint inventors
set forth in the application data sheet in accordance with Sec.1.76
filed with the initial submission under 35 U.S.C. 371. Unless the
initial submission under 35 U.S.C. 371 is accompanied by an application
data sheet in accordance with Sec.1.76 setting forth the inventor or
joint inventors, the inventorship is the inventor or joint inventors set
forth in the international application, which includes any change
effected under PCT Rule 92 bis.
(f) The inventorship of an international design application
designating the United States is the creator or creators set forth in
the publication of the international registration under Hague Agreement
Article 10(3). Any correction of inventorship must be pursuant to Sec.
1.48.
[77 FR 48814, Aug. 14, 2012, as amended at 80 FR 17956, Apr. 2, 2015]
Sec.1.42 Applicant for patent.
(a) The word ``applicant'' when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a
patent as provided in Sec. Sec.1.43, 1.45, or 1.46.
(b) If a person is applying for a patent as provided in Sec.1.46,
the word ``applicant'' refers to the assignee, the person to whom the
inventor is under an obligation to assign the invention, or the person
who otherwise shows sufficient proprietary interest in the matter, who
is applying for a patent under Sec.1.46 and not the inventor.
(c) If fewer than all joint inventors are applying for a patent as
provided in Sec.1.45, the phrase ``the applicant'' means the joint
inventors who are applying for the patent without the omitted
inventor(s).
(d) Any person having authority may deliver an application and fees
to the Office on behalf of the applicant. However, an oath or
declaration, or substitute statement in lieu of an oath or declaration,
may be executed only in accordance with Sec.1.63 or 1.64, a
correspondence address may be provided only in accordance with Sec.
1.33(a), and amendments and other papers must be signed in accordance
with Sec.1.33(b).
(e) The Office may require additional information where there is a
question concerning ownership or interest in an application, and a
showing may be required from the person filing the application that the
filing was authorized where such authorization comes into question.
[77 FR 48815, Aug. 14, 2012]
Sec.1.43 Application for patent by a legal representative of
a deceased or legally incapacitated inventor.
If an inventor is deceased or under legal incapacity, the legal
representative of the inventor may make an application for patent on
behalf of the inventor. If an inventor dies during the time intervening
between the filing of the application and the granting of a patent
thereon, the letters patent may be issued to the legal representative
upon proper intervention. See Sec.1.64 concerning the execution of a
substitute statement by a legal representative in lieu of an oath or
declaration.
[77 FR 48815, Aug. 14, 2012]
[[Page 53]]
Sec.1.44 [Reserved]
Sec.1.45 Application for patent by joint inventors.
(a) Joint inventors must apply for a patent jointly, and each must
make an inventor's oath or declaration as required by Sec.1.63, except
as provided for in Sec.1.64. If a joint inventor refuses to join in an
application for patent or cannot be found or reached after diligent
effort, the other joint inventor or inventors may make the application
for patent on behalf of themselves and the omitted inventor. See Sec.
1.64 concerning the execution of a substitute statement by the other
joint inventor or inventors in lieu of an oath or declaration.
(b) Inventors may apply for a patent jointly even though:
(1) They did not physically work together or at the same time;
(2) Each inventor did not make the same type or amount of
contribution; or
(3) Each inventor did not make a contribution to the subject matter
of every claim of the application.
(c) If multiple inventors are named in a nonprovisional application,
each named inventor must have made a contribution, individually or
jointly, to the subject matter of at least one claim of the application
and the application will be considered to be a joint application under
35 U.S.C. 116. If multiple inventors are named in a provisional
application, each named inventor must have made a contribution,
individually or jointly, to the subject matter disclosed in the
provisional application and the provisional application will be
considered to be a joint application under 35 U.S.C. 116.
[77 FR 48815, Aug. 14, 2012]
Sec.1.46 Application for patent by an assignee, obligated assignee,
or a person who otherwise shows sufficient proprietary interest in
the matter.
(a) A person to whom the inventor has assigned or is under an
obligation to assign the invention may make an application for patent. A
person who otherwise shows sufficient proprietary interest in the matter
may make an application for patent on behalf of and as agent for the
inventor on proof of the pertinent facts and a showing that such action
is appropriate to preserve the rights of the parties.
(b) If an application under 35 U.S.C. 111 is made by a person other
than the inventor under paragraph (a) of this section, the application
must contain an application data sheet under Sec.1.76 specifying in
the applicant information section (Sec.1.76(b)(7)) the assignee,
person to whom the inventor is under an obligation to assign the
invention, or person who otherwise shows sufficient proprietary interest
in the matter. If an application entering the national stage under 35
U.S.C. 371, or a nonprovisional international design application, is
applied for by a person other than the inventor under paragraph (a) of
this section, the assignee, person to whom the inventor is under an
obligation to assign the invention, or person who otherwise shows
sufficient proprietary interest in the matter must have been identified
as the applicant for the United States in the international stage of the
international application or as the applicant in the publication of the
international registration under Hague Agreement Article 10(3).
(1) If the applicant is the assignee or a person to whom the
inventor is under an obligation to assign the invention, documentary
evidence of ownership (e.g., assignment for an assignee, employment
agreement for a person to whom the inventor is under an obligation to
assign the invention) should be recorded as provided for in part 3 of
this chapter no later than the date the issue fee is paid in the
application.
(2) If the applicant is a person who otherwise shows sufficient
proprietary interest in the matter, such applicant must submit a
petition including:
(i) The fee set forth in Sec.1.17(g);
(ii) A showing that such person has sufficient proprietary interest
in the matter; and
(iii) A statement that making the application for patent by a person
who otherwise shows sufficient proprietary interest in the matter on
behalf of and as agent for the inventor is appropriate to preserve the
rights of the parties.
(c)(1) Correction or update in the name of the applicant. Any
request to correct or update the name of the applicant
[[Page 54]]
under this section must include an application data sheet under Sec.
1.76 specifying the correct or updated name of the applicant in the
applicant information section (Sec.1.76(b)(7)) in accordance with
Sec.1.76(c)(2). A change in the name of the applicant recorded
pursuant to Hague Agreement Article 16(1)(ii) will be effective to
change the name of the applicant in a nonprovisional international
design application.
(2) Change in the applicant. Any request to change the applicant
under this section after an original applicant has been specified must
include an application data sheet under Sec.1.76 specifying the
applicant in the applicant information section (Sec.1.76(b)(7)) in
accordance with Sec.1.76(c)(2) and comply with Sec. Sec.3.71 and
3.73 of this title.
(d) Even if the whole or a part interest in the invention or in the
patent to be issued is assigned or obligated to be assigned, an oath or
declaration must be executed by the actual inventor or each actual joint
inventor, except as provided for in Sec.1.64. See Sec.1.64
concerning the execution of a substitute statement by an assignee,
person to whom the inventor is under an obligation to assign the
invention, or a person who otherwise shows sufficient proprietary
interest in the matter.
(e) If a patent is granted on an application filed under this
section by a person other than the inventor, the patent shall be granted
to the real party in interest. Otherwise, the patent may be issued to
the assignee or jointly to the inventor and the assignee as provided in
Sec.3.81. Where a real party in interest has filed an application
under Sec.1.46, the applicant shall notify the Office of any change in
the real party in interest no later than payment of the issue fee. The
Office will treat the absence of such a notice as an indication that
there has been no change in the real party in interest.
(f) The Office may publish notice of the filing of the application
by a person who otherwise shows sufficient proprietary interest in the
Official Gazette.
[77 FR 48815, Aug. 14, 2012, as amended at 80 FR 17956, Apr. 2, 2015]
Sec.1.47 [Reserved]
Sec.1.48 Correction of inventorship pursuant to 35 U.S.C. 116 or
correction of the name or order of names in a patent application,
other than a reissue application.
(a) Nonprovisional application: Any request to correct or change the
inventorship once the inventorship has been established under Sec.1.41
must include:
(1) An application data sheet in accordance with Sec.1.76 that
identifies each inventor by his or her legal name; and
(2) The processing fee set forth in Sec.1.17(i).
(b) Inventor's oath or declaration for added inventor: An oath or
declaration as required by Sec.1.63, or a substitute statement in
compliance with Sec.1.64, will be required for any actual inventor who
has not yet executed such an oath or declaration.
(c) Any request to correct or change the inventorship under
paragraph (a) of this section filed after the Office action on the
merits has been given or mailed in the application must also be
accompanied by the fee set forth in Sec.1.17(d), unless the request is
accompanied by a statement that the request to correct or change the
inventorship is due solely to the cancelation of claims in the
application.
(d) Provisional application. Once a cover sheet as prescribed by
Sec.1.51(c)(1) is filed in a provisional application, any request to
correct or change the inventorship must include:
(1) A request, signed by a party set forth in Sec.1.33(b), to
correct the inventorship that identifies each inventor by his or her
legal name; and
(2) The processing fee set forth in Sec.1.17(q).
(e) Additional information may be required. The Office may require
such other information as may be deemed appropriate under the particular
circumstances surrounding the correction of inventorship.
(f) Correcting or updating the name of an inventor: Any request to
correct or update the name of the inventor or a joint inventor, or the
order of the names of joint inventors, in a nonprovisional application
must include:
(1) An application data sheet in accordance with Sec.1.76 that
identifies each
[[Page 55]]
inventor by his or her legal name in the desired order; and
(2) The processing fee set forth in Sec.1.17(i).
(g) Reissue applications not covered. The provisions of this section
do not apply to reissue applications. See Sec. Sec.1.171 and 1.175 for
correction of inventorship in a patent via a reissue application.
(h) Correction of inventorship in patent. See Sec.1.324 for
correction of inventorship in a patent.
(i) Correction of inventorship in an interference or contested case
before the Patent Trial and Appeal Board. In an interference under part
41, subpart D, of this title, a request for correction of inventorship
in an application must be in the form of a motion under Sec.
41.121(a)(2) of this title. In a contested case under part 42, subpart
D, of this title, a request for correction of inventorship in an
application must be in the form of a motion under Sec.42.22 of this
title. The motion under Sec.41.121(a)(2) or 42.22 of this title must
comply with the requirements of paragraph (a) of this section.
[77 FR 48816, Aug. 14, 2012, as amended at 78 FR 4289, Jan. 18, 2013]
The Application
Sec.1.51 General requisites of an application.
(a) Applications for patents must be made to the Director of the
United States Patent and Trademark Office. An application transmittal
letter limited to the transmittal of the documents and fees comprising a
patent application under this section may be signed by a juristic
applicant or patent owner.
(b) A complete application filed under Sec.1.53(b) or Sec.
1.53(d) comprises:
(1) A specification as prescribed by 35 U.S.C. 112, including a
claim or claims, see Sec. Sec.1.71 to 1.77;
(2) The inventor's oath or declaration, see Sec. Sec.1.63 and
1.64;
(3) Drawings, when necessary, see Sec. Sec.1.81 to 1.85; and
(4) The prescribed filing fee, search fee, examination fee, and
application size fee, see Sec.1.16.
(c) A complete provisional application filed under Sec.1.53(c)
comprises:
(1) A cover sheet identifying:
(i) The application as a provisional application,
(ii) The name or names of the inventor or inventors, (see Sec.
1.41(a)(2)),
(iii) The residence of each named inventor,
(iv) The title of the invention,
(v) The name and registration number of the attorney or agent (if
applicable),
(vi) The docket number used by the person filing the application to
identify the application (if applicable),
(vii) The correspondence address, and
(viii) The name of the U.S. Government agency and Government
contract number (if the invention was made by an agency of the U.S.
Government or under a contract with an agency of the U.S. Government);
(2) A specification as prescribed by 35 U.S.C. 112(a), see Sec.
1.71;
(3) Drawings, when necessary, see Sec. Sec.1.81 to 1.85; and
(4) The prescribed filing fee and application size fee, see Sec.
1.16.
(d) Applicants are encouraged to file an information disclosure
statement in nonprovisional applications. See Sec.1.97 and Sec.1.98.
No information disclosure statement may be filed in a provisional
application.
[62 FR 53185, Oct. 10, 1997, as amended at 65 FR 54664, Sept. 8, 2000;
68 FR 14336, Mar. 25, 2003; 70 FR 3889, Jan. 27, 2005; 77 FR 46624, Aug.
6, 2012; 77 FR 48816, Aug. 14, 2012; 78 FR 62396, Oct. 21, 2013]
Sec.1.52 Language, paper, writing, margins, compact disc
specifications.
(a) Papers that are to become a part of the permanent United States
Patent and Trademark Office records in the file of a patent application,
or a reexamination or supplemental examination proceeding. (1) All
papers, other than drawings, that are submitted on paper or by facsimile
transmission, and are to become a part of the permanent United States
Patent and Trademark Office records in the file of a patent application
or reexamination or supplemental examination proceeding, must be on
sheets of paper that are the same size, not permanently bound together,
and:
(i) Flexible, strong, smooth, non-shiny, durable, and white;
[[Page 56]]
(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm
(8\1/2\ by 11 inches), with each sheet including a top margin of at
least 2.0 cm (\3/4\ inch), a left side margin of at least 2.5 cm (1
inch), a right side margin of at least 2.0 cm (\3/4\ inch), and a bottom
margin of at least 2.0 cm (\3/4\ inch);
(iii) Written on only one side in portrait orientation;
(iv) Plainly and legibly written either by a typewriter or machine
printer in permanent dark ink or its equivalent; and
(v) Presented in a form having sufficient clarity and contrast
between the paper and the writing thereon to permit the direct
reproduction of readily legible copies in any number by use of
photographic, electrostatic, photo-offset, and microfilming processes
and electronic capture by use of digital imaging and optical character
recognition.
(2) All papers that are submitted on paper or by facsimile
transmission and are to become a part of the permanent records of the
United States Patent and Trademark Office should have no holes in the
sheets as submitted.
(3) The provisions of this paragraph and paragraph (b) of this
section do not apply to the pre-printed information on paper forms
provided by the Office, or to the copy of the patent submitted on paper
in double column format as the specification in a reissue application or
request for reexamination.
(4) See Sec.1.58 for chemical and mathematical formulae and
tables, and Sec.1.84 for drawings.
(5) Papers that are submitted electronically to the Office must be
formatted and transmitted in compliance with the Office's electronic
filing system requirements.
(b) The application (specification, including the claims, drawings,
and the inventor's oath or declaration) or reexamination or supplemental
examination proceeding, any amendments to the application or
reexamination proceeding, or any corrections to the application, or
reexamination or supplemental examination proceeding. (1) The
application or proceeding and any amendments or corrections to the
application (including any translation submitted pursuant to paragraph
(d) of this section) or proceeding, except as provided for in Sec.1.69
and paragraph (d) of this section, must:
(i) Comply with the requirements of paragraph (a) of this section;
and
(ii) Be in the English language or be accompanied by a translation
of the application and a translation of any corrections or amendments
into the English language together with a statement that the translation
is accurate.
(2) The specification (including the abstract and claims) for other
than reissue applications and reexamination or supplemental examination
proceedings, and any amendments for applications (including reissue
applications) and reexamination proceedings to the specification, except
as provided for in Sec. Sec.1.821 through 1.825, must have:
(i) Lines that are 1\1/2\ or double spaced;
(ii) Text written in a nonscript type font (e.g., Arial, Times
Roman, or Courier, preferably a font size of 12) lettering style having
capital letters which should be at least 0.3175 cm. (0.125 inch) high,
but may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size
of 6); and
(iii) Only a single column of text.
(3) The claim or claims must commence on a separate physical sheet
or electronic page (Sec.1.75(h)).
(4) The abstract must commence on a separate physical sheet or
electronic page or be submitted as the first page of the patent in a
reissue application or reexamination or supplemental examination
proceeding (Sec.1.72(b)).
(5) Other than in a reissue application or a reexamination or
supplemental examination proceeding, the pages of the specification
including claims and abstract must be numbered consecutively, starting
with 1, the numbers being centrally located above or preferably, below,
the text.
(6) Other than in a reissue application or reexamination or
supplemental examination proceeding, the paragraphs of the
specification, other than in the claims or abstract, may be numbered at
the time the application is filed, and should be individually and
consecutively numbered using Arabic numerals, so as to unambiguously
identify each paragraph. The number should consist of at least four
numerals
[[Page 57]]
enclosed in square brackets, including leading zeros (e.g., [0001]). The
numbers and enclosing brackets should appear to the right of the left
margin as the first item in each paragraph, before the first word of the
paragraph, and should be highlighted in bold. A gap, equivalent to
approximately four spaces, should follow the number. Nontext elements
(e.g., tables, mathematical or chemical formulae, chemical structures,
and sequence data) are considered part of the numbered paragraph around
or above the elements, and should not be independently numbered. If a
nontext element extends to the left margin, it should not be numbered as
a separate and independent paragraph. A list is also treated as part of
the paragraph around or above the list, and should not be independently
numbered. Paragraph or section headers (titles), whether abutting the
left margin or centered on the page, are not considered paragraphs and
should not be numbered.
(c) Interlineation, erasure, cancellation, or other alteration of
the application papers may be made before or after the signing of the
inventor's oath or declaration referring to those application papers,
provided that the statements in the inventor's oath or declaration
pursuant to Sec.1.63 remain applicable to those application papers. A
substitute specification (Sec.1.125) may be required if the
application papers do not comply with paragraphs (a) and (b) of this
section.
(d) A nonprovisional or provisional application under 35 U.S.C. 111
may be in a language other than English.
(1) Nonprovisional application. If a nonprovisional application
under 35 U.S.C. 111(a) is filed in a language other than English, an
English language translation of the non-English language application, a
statement that the translation is accurate, and the processing fee set
forth in Sec.1.17(i) are required. If these items are not filed with
the application, the applicant will be notified and given a period of
time within which they must be filed in order to avoid abandonment.
(2) Provisional application. If a provisional application under 35
U.S.C. 111(b) is filed in a language other than English, an English
language translation of the non-English language provisional application
will not be required in the provisional application. See Sec.1.78(a)
for the requirements for claiming the benefit of such provisional
application in a nonprovisional application.
(e) Electronic documents that are to become part of the permanent
United States Patent and Trademark Office records in the file of a
patent application, or reexamination or supplemental examination
proceeding. (1) The following documents may be submitted to the Office
on a compact disc in compliance with this paragraph:
(i) A computer program listing (see Sec.1.96);
(ii) A ``Sequence Listing'' (submitted under Sec.1.821(c)); or
(iii) Any individual table (see Sec.1.58) if the table is more
than 50 pages in length, or if the total number of pages of all the
tables in an application exceeds 100 pages in length, where a table page
is a page printed on paper in conformance with paragraph (b) of this
section and Sec.1.58(c).
(2) A compact disc as used in this part means a Compact Disc-Read
Only Memory (CD-ROM) or a Compact Disc-Recordable (CD-R) in compliance
with this paragraph. A CD-ROM is a ``read-only'' medium on which the
data is pressed into the disc so that it cannot be changed or erased. A
CD-R is a ``write once'' medium on which once the data is recorded, it
is permanent and cannot be changed or erased.
(3)(i) Each compact disc must conform to the International
Organization for Standardization (ISO) 9660 standard, and the contents
of each compact disc must be in compliance with the American Standard
Code for Information Interchange (ASCII).
(ii) Each compact disc must be enclosed in a hard compact disc case
within an unsealed padded and protective mailing envelope and
accompanied by a transmittal letter on paper in accordance with
paragraph (a) of this section. The transmittal letter must list for each
compact disc the machine format (e.g., IBM-PC, Macintosh), the operating
system compatibility (e.g., MS-DOS, MS-Windows, Macintosh, Unix), a list
of files contained on the compact disc including their names, sizes in
[[Page 58]]
bytes, and dates of creation, plus any other special information that is
necessary to identify, maintain, and interpret (e.g., tables in
landscape orientation should be identified as landscape orientation or
be identified when inquired about) the information on the compact disc.
Compact discs submitted to the Office will not be returned to the
applicant.
(4) Any compact disc must be submitted in duplicate unless it
contains only the ``Sequence Listing'' in computer readable form
required by Sec.1.821(e). The compact disc and duplicate copy must be
labeled ``Copy 1'' and ``Copy 2,'' respectively. The transmittal letter
which accompanies the compact disc must include a statement that the two
compact discs are identical. In the event that the two compact discs are
not identical, the Office will use the compact disc labeled ``Copy 1''
for further processing. Any amendment to the information on a compact
disc must be by way of a replacement compact disc in compliance with
this paragraph containing the substitute information, and must be
accompanied by a statement that the replacement compact disc contains no
new matter. The compact disc and copy must be labeled ``COPY 1
REPLACEMENT MM/DD/YYYY'' (with the month, day and year of creation
indicated), and ``COPY 2 REPLACEMENT MM/DD/YYYY,'' respectively.
(5) The specification must contain an incorporation-by-reference of
the material on the compact disc in a separate paragraph (Sec.
1.77(b)(5)), identifying each compact disc by the names of the files
contained on each of the compact discs, their date of creation and their
sizes in bytes. The Office may require applicant to amend the
specification to include in the paper portion any part of the
specification previously submitted on compact disc.
(6) A compact disc must also be labeled with the following
information:
(i) The name of each inventor (if known);
(ii) Title of the invention;
(iii) The docket number, or application number if known, used by the
person filing the application to identify the application;
(iv) A creation date of the compact disc;
(v) If multiple compact discs are submitted, the label shall
indicate their order (e.g., ``1 of X''); and
(vi) An indication that the disc is ``Copy 1'' or ``Copy 2'' of the
submission. See paragraph (b)(4) of this section.
(7) If a file is unreadable on both copies of the disc, the
unreadable file will be treated as not having been submitted. A file is
unreadable if, for example, it is of a format that does not comply with
the requirements of paragraph (e)(3) of this section, it is corrupted by
a computer virus, or it is written onto a defective compact disc.
(f)(1) Any sequence listing in an electronic medium in compliance
with Sec. Sec.1.52(e) and 1.821(c) or (e), and any computer program
listing filed in an electronic medium in compliance with Sec. Sec.
1.52(e) and 1.96, will be excluded when determining the application size
fee required by Sec.1.16(s) or Sec.1.492(j). For purposes of
determining the application size fee required by Sec.1.16(s) or Sec.
1.492(j), for an application the specification and drawings of which,
excluding any sequence listing in compliance with Sec.1.821(c) or (e),
and any computer program listing filed in an electronic medium in
compliance with Sec. Sec.1.52(e) and 1.96, are submitted in whole or
in part on an electronic medium other than the Office electronic filing
system, each three kilobytes of content submitted on an electronic
medium shall be counted as a sheet of paper.
(2) Except as otherwise provided in this paragraph, the paper size
equivalent of the specification and drawings of an application submitted
via the Office electronic filing system will be considered to be
seventy-five percent of the number of sheets of paper present in the
specification and drawings of the application when entered into the
Office file wrapper after being rendered by the Office electronic filing
system for purposes of determining the application size fee required by
Sec.1.16(s). Any sequence listing in compliance with Sec.1.821(c) or
(e), and any computer program listing in compliance with Sec.1.96,
[[Page 59]]
submitted via the Office electronic filing system will be excluded when
determining the application size fee required by Sec.1.16(s) if the
listing is submitted in ASCII text as part of an associated file.
(Pub. L. 94-131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97-247; 15 U.S.C.
1113, 1123)
[43 FR 20462, May 11, 1978]
Editorial Note: For Federal Register citations affecting Sec.1.52,
see the List of CFR Sections Affected, which appears in the Finding Aids
section of the printed volume and at www.govinfo.gov.
Sec.1.53 Application number, filing date, and completion of application.
(a) Application number. Any papers received in the Patent and
Trademark Office which purport to be an application for a patent will be
assigned an application number for identification purposes.
(b) Application filing requirements--Nonprovisional application. The
filing date of an application for patent filed under this section, other
than an application for a design patent or a provisional application
under paragraph (c) of this section, is the date on which a
specification, with or without claims, is received in the Office. The
filing date of an application for a design patent filed under this
section, except for a continued prosecution application under paragraph
(d) of this section, is the date on which the specification as
prescribed by 35 U.S.C. 112, including at least one claim, and any
required drawings are received in the Office. No new matter may be
introduced into an application after its filing date. A continuing
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35
U.S.C. 120, 121, 365(c), or 386(c) and Sec.1.78.
(1) A continuation or divisional application that names as inventors
the same or fewer than all of the inventors named in the prior
application may be filed under this paragraph or paragraph (d) of this
section.
(2) A continuation-in-part application (which may disclose and claim
subject matter not disclosed in the prior application) or a continuation
or divisional application naming an inventor not named in the prior
application must be filed under this paragraph.
(c) Application filing requirements--Provisional application. The
filing date of a provisional application is the date on which a
specification, with or without claims, is received in the Office. No
amendment, other than to make the provisional application comply with
the patent statute and all applicable regulations, may be made to the
provisional application after the filing date of the provisional
application.
(1) A provisional application must also include the cover sheet
required by Sec.1.51(c)(1), which may be an application data sheet
(Sec.1.76), or a cover letter identifying the application as a
provisional application. Otherwise, the application will be treated as
an application filed under paragraph (b) of this section.
(2) An application for patent filed under paragraph (b) of this
section may be converted to a provisional application and be accorded
the original filing date of the application filed under paragraph (b) of
this section. The grant of such a request for conversion will not
entitle applicant to a refund of the fees that were properly paid in the
application filed under paragraph (b) of this section. Such a request
for conversion must be accompanied by the processing fee set forth in
Sec.1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this
section;
(ii) Payment of the issue fee on the application filed under
paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the
application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this
section may be converted to a nonprovisional application filed under
paragraph (b) of this section and accorded the original filing date of
the provisional application. The conversion of a provisional application
to a nonprovisional application will not result in either the refund of
any fee properly paid in the provisional application or the application
of any such fee to the filing fee, or any other fee,
[[Page 60]]
for the nonprovisional application. Conversion of a provisional
application to a nonprovisional application under this paragraph will
result in the term of any patent to issue from the application being
measured from at least the filing date of the provisional application
for which conversion is requested. Thus, applicants should consider
avoiding this adverse patent term impact by filing a nonprovisional
application claiming the benefit of the provisional application under 35
U.S.C. 119(e), rather than converting the provisional application into a
nonprovisional application pursuant to this paragraph. A request to
convert a provisional application to a nonprovisional application must
be accompanied by the fee set forth in Sec.1.17(i) and an amendment
including at least one claim as prescribed by 35 U.S.C. 112(b), unless
the provisional application under paragraph (c) of this section
otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b).
The nonprovisional application resulting from conversion of a
provisional application must also include the filing fee, search fee,
and examination fee for a nonprovisional application, and the surcharge
required by Sec.1.16(f) if either the basic filing fee for a
nonprovisional application or the inventor's oath or declaration was not
present on the filing date accorded the resulting nonprovisional
application (i.e., the filing date of the original provisional
application). A request to convert a provisional application to a
nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph
(c) of this section; or
(ii) Expiration of twelve months after the filing date of the
provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119, 365(a), or 386(a) or Sec.1.55, or to the
benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or
386(c) or Sec.1.78 of any other application. No claim for priority
under 35 U.S.C. 119(e) or Sec.1.78(a) may be made in a design
application based on a provisional application. The requirements of
Sec. Sec.1.821 through 1.825 regarding application disclosures
containing nucleotide and/or amino acid sequences are not mandatory for
provisional applications.
(d) Application filing requirements--Continued prosecution
(nonprovisional) application. (1) A continuation or divisional
application (but not a continuation-in-part) of a prior nonprovisional
application may be filed as a continued prosecution application under
this paragraph, provided that:
(i) The application is for a design patent;
(ii) The prior nonprovisional application is a design application,
but not an international design application, that is complete as defined
by Sec.1.51(b), except for the inventor's oath or declaration if the
application is filed on or after September 16, 2012, and the prior
nonprovisional application contains an application data sheet meeting
the conditions specified in Sec.1.53(f)(3)(i); and
(iii) The application under this paragraph is filed before the
earliest of:
(A) Payment of the issue fee on the prior application, unless a
petition under Sec.1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the
date on which a request on a separate paper for an application under
this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior
application;
(iii) Names as inventors the same inventors named in the prior
application on the date the application under this paragraph was filed,
except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph,
will utilize the file jacket and contents of the prior application,
including the specification, drawings and the inventor's
[[Page 61]]
oath or declaration from the prior application, to constitute the new
application, and will be assigned the application number of the prior
application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of
the filing date of the request for an application under this paragraph.
(3) The filing fee, search fee, and examination fee for a continued
prosecution application filed under this paragraph are the basic filing
fee as set forth in Sec.1.16(b), the search fee as set forth in Sec.
1.16(l), and the examination fee as set forth in Sec.1.16(p).
(4) An application filed under this paragraph may be filed by fewer
than all the inventors named in the prior application, provided that the
request for an application under this paragraph when filed is
accompanied by a statement requesting deletion of the name or names of
the person or persons who are not inventors of the invention being
claimed in the new application. No person may be named as an inventor in
an application filed under this paragraph who was not named as an
inventor in the prior application on the date the application under this
paragraph was filed, except by way of correction of inventorship under
Sec.1.48.
(5) Any new change must be made in the form of an amendment to the
prior application as it existed prior to the filing of an application
under this paragraph. No amendment in an application under this
paragraph (a continued prosecution application) may introduce new matter
or matter that would have been new matter in the prior application. Any
new specification filed with the request for an application under this
paragraph will not be considered part of the original application
papers, but will be treated as a substitute specification in accordance
with Sec.1.125.
(6) The filing of a continued prosecution application under this
paragraph will be construed to include a waiver of confidentiality by
the applicant under 35 U.S.C. 122 to the extent that any member of the
public, who is entitled under the provisions of Sec.1.14 to access to,
copies of, or information concerning either the prior application or any
continuing application filed under the provisions of this paragraph, may
be given similar access to, copies of, or similar information concerning
the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the
specific reference required by 35 U.S.C. 120 to every application
assigned the application number identified in such request. No amendment
in an application under this paragraph may delete this specific
reference to any prior application.
(8) In addition to identifying the application number of the prior
application, applicant should furnish in the request for an application
under this paragraph the following information relating to the prior
application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See Sec.1.103(b) for requesting a limited suspension of action
in an application filed under this paragraph.
(e) Failure to meet filing date requirements. (1) If an application
deposited under paragraph (b), (c), or (d) of this section does not meet
the requirements of such paragraph to be entitled to a filing date,
applicant will be so notified, if a correspondence address has been
provided, and given a period of time within which to correct the filing
error. If, however, a request for an application under paragraph (d) of
this section does not meet the requirements of that paragraph because
the application in which the request was filed is not a design
application, and if the application in which the request was filed was
itself filed on or after June 8, 1995, the request for an application
under paragraph (d) of this section will be treated as a request for
continued examination under Sec.1.114.
(2) Any request for review of a notification pursuant to paragraph
(e)(1) of this section, or a notification that the original application
papers lack a portion of the specification or drawing(s), must be by way
of a petition pursuant to this paragraph accompanied by the fee set
forth in Sec.1.17(f). In the absence of a timely (Sec.1.181(f))
petition pursuant to this paragraph, the filing date of an application
in which the applicant was notified of a filing error pursuant to
[[Page 62]]
paragraph (e)(1) of this section will be the date the filing error is
corrected.
(3) If an applicant is notified of a filing error pursuant to
paragraph (e)(1) of this section, but fails to correct the filing error
within the given time period or otherwise timely (Sec.1.181(f)) take
action pursuant to this paragraph, proceedings in the application will
be considered terminated. Where proceedings in an application are
terminated pursuant to this paragraph, the application may be disposed
of, and any filing fees, less the handling fee set forth in Sec.
1.21(n), will be refunded.
(f) Completion of application subsequent to filing--Nonprovisional
(including continued prosecution or reissue) application. (1) If an
application which has been accorded a filing date pursuant to paragraph
(b) or (d) of this section does not include the basic filing fee, search
fee, or examination fee, or if an application which has been accorded a
filing date pursuant to paragraph (b) of this section does not include
at least one claim or the inventor's oath or declaration (Sec. Sec.
1.63, 1.64, 1.162, or 1.175), and the applicant has provided a
correspondence address (Sec.1.33(a)), the applicant will be notified
and given a period of time within which to file a claim or claims, pay
the basic filing fee, search fee, and examination fee, and pay the
surcharge if required by Sec.1.16(f), to avoid abandonment.
(2) If an application which has been accorded a filing date pursuant
to paragraph (b) of this section does not include the basic filing fee,
search fee, examination fee, at least one claim, or the inventor's oath
or declaration, and the applicant has not provided a correspondence
address (Sec.1.33(a)), the applicant has three months from the filing
date of the application within which to file a claim or claims, pay the
basic filing fee, search fee, and examination fee, and pay the surcharge
required by Sec.1.16(f), to avoid abandonment.
(3) The inventor's oath or declaration in an application under Sec.
1.53(b) must also be filed within the period specified in paragraph
(f)(1) or (f)(2) of this section, except that the filing of the
inventor's oath or declaration may be postponed until the application is
otherwise in condition for allowance under the conditions specified in
paragraphs (f)(3)(i) and (f)(3)(ii) of this section.
(i) The application must be an original (non-reissue) application
that contains an application data sheet in accordance with Sec.1.76
identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in
compliance with Sec.1.63, or substitute statement in compliance with
Sec.1.64, no later than the date on which the issue fee for the patent
is paid. If the applicant is notified in a notice of allowability that
an oath or declaration in compliance with Sec.1.63, or substitute
statement in compliance with Sec.1.64, executed by or with respect to
each named inventor has not been filed, the applicant must file each
required oath or declaration in compliance with Sec.1.63, or
substitute statement in compliance with Sec.1.64, no later than the
date on which the issue fee is paid to avoid abandonment. This time
period is not extendable under Sec.1.136 (see Sec.1.136(c)). The
Office may dispense with the notice provided for in paragraph (f)(1) of
this section if each required oath or declaration in compliance with
Sec.1.63, or substitute statement in compliance with Sec.1.64, has
been filed before the application is in condition for allowance.
(4) If the excess claims fees required by Sec.1.16(h) and (i) and
multiple dependent claim fee required by Sec.1.16(j) are not paid on
filing or on later presentation of the claims for which the excess
claims or multiple dependent claim fees are due, the fees required by
Sec.1.16(h), (i), and (j) must be paid or the claims canceled by
amendment prior to the expiration of the time period set for reply by
the Office in any notice of fee deficiency. If the application size fee
required by Sec.1.16(s) (if any) is not paid on filing or on later
presentation of the amendment necessitating a fee or additional fee
under Sec.1.16(s), the fee required by Sec.1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of
[[Page 63]]
fee deficiency in order to avoid abandonment.
(5) This paragraph applies to continuation or divisional
applications under paragraphs (b) or (d) of this section and to
continuation-in-part applications under paragraph (b) of this section.
See Sec.1.63(d) concerning the submission of a copy of the inventor's
oath or declaration from the prior application for a continuing
application under paragraph (b) of this section.
(6) If applicant does not pay the basic filing fee during the
pendency of the application, the Office may dispose of the application.
(g) Completion of application subsequent to filing--Provisional
application. (1) If a provisional application which has been accorded a
filing date pursuant to paragraph (c) of this section does not include
the cover sheet required by Sec.1.51(c)(1) or the basic filing fee
(Sec.1.16(d)), and applicant has provided a correspondence address
(Sec.1.33(a)), applicant will be notified and given a period of time
within which to pay the basic filing fee, file a cover sheet (Sec.
1.51(c)(1)), and pay the surcharge required by Sec.1.16(g) to avoid
abandonment.
(2) If a provisional application which has been accorded a filing
date pursuant to paragraph (c) of this section does not include the
cover sheet required by Sec.1.51(c)(1) or the basic filing fee (Sec.
1.16(d)), and applicant has not provided a correspondence address (Sec.
1.33(a)), applicant has two months from the filing date of the
application within which to pay the basic filing fee, file a cover sheet
(Sec.1.51(c)(1)), and pay the surcharge required by Sec.1.16(g) to
avoid abandonment.
(3) If the application size fee required by Sec.1.16(s) (if any)
is not paid on filing, the fee required by Sec.1.16(s) must be paid
prior to the expiration of the time period set for reply by the Office
in any notice of fee deficiency in order to avoid abandonment.
(4) If applicant does not pay the basic filing fee during the
pendency of the application, the Office may dispose of the application.
(h) Subsequent treatment of application--Nonprovisional (including
continued prosecution) application. An application for a patent filed
under paragraphs (b) or (d) of this section will not be placed on the
files for examination until all its required parts, complying with the
rules relating thereto, are received, except that the inventor's oath or
declaration may be filed when the application is otherwise in condition
for allowance pursuant to paragraph (f)(3) of this section and minor
informalities may be waived subject to subsequent correction whenever
required.
(i) Subsequent treatment of application--Provisional application. A
provisional application for a patent filed under paragraph (c) of this
section will not be placed on the files for examination and will become
abandoned no later than twelve months after its filing date pursuant to
35 U.S.C. 111(b)(1).
[62 FR 53186, Oct. 10, 1997, as amended at 63 FR 5734, Feb. 4, 1998; 65
FR 14871, Mar. 20, 2000; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, Sept.
8, 2000; 65 FR 78960, Dec. 18, 2000; 68 FR 14336, Mar. 25, 2003; 68 FR
32380, May 30, 2003; 69 FR 29878, May 26, 2004; 69 FR 56539, Sept. 21,
2004; 70 FR 3890, Jan. 27, 2005; 70 FR 30365, May 26, 2005; 72 FR 46836,
Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48817, Aug. 14, 2012;
78 FR 11053, Feb. 14, 2013; 78 FR 62398, Oct. 21, 2013; 79 FR 12386,
Mar. 5, 2014; 80 FR 17956, Apr. 2, 2015]
Sec.1.54 Parts of application to be filed together; filing receipt.
(a) It is desirable that all parts of the complete application be
deposited in the Office together; otherwise, a letter must accompany
each part, accurately and clearly connecting it with the other parts of
the application. See Sec.1.53 (f) and (g) with regard to completion of
an application.
(b) Applicant will be informed of the application number and filing
date by a filing receipt, unless the application is an application filed
under Sec.1.53(d). A letter limited to a request for a filing receipt
may be signed by a juristic applicant or patent owner.
[62 FR 53188, Oct. 10, 1997, as amended at 78 FR 62399, Oct. 21, 2013]
Sec.1.55 Claim for foreign priority.
(a) In general. An applicant in a nonprovisional application may
claim priority to one or more prior foreign applications under the
conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172,
365(a) and (b), and 386(a) and (b) and this section.
[[Page 64]]
(b) Time for filing subsequent application. The nonprovisional
application must be:
(1) Filed not later than twelve months (six months in the case of a
design application) after the date on which the foreign application was
filed, subject to paragraph (c) of this section (a subsequent
application); or
(2) Entitled to claim the benefit under 35 U.S.C. 120, 121, 365(c),
or 386(c) of a subsequent application that was filed within the period
set forth in paragraph (b)(1) of this section.
(c) Delayed filing of subsequent application. If the subsequent
application has a filing date which is after the expiration of the
period set forth in paragraph (b)(1) of this section, but within two
months from the expiration of the period set forth in paragraph (b)(1)
of this section, the right of priority in the subsequent application may
be restored under PCT Rule 26bis.3 for an international application, or
upon petition pursuant to this paragraph, if the delay in filing the
subsequent application within the period set forth in paragraph (b)(1)
of this section was unintentional. A petition to restore the right of
priority under this paragraph filed on or after May 13, 2015, must be
filed in the subsequent application, or in the earliest nonprovisional
application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)
to the subsequent application, if such subsequent application is not a
nonprovisional application. Any petition to restore the right of
priority under this paragraph must include:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f),
365(a) or (b), or 386(a) or (b) in an application data sheet (Sec.
1.76(b)(6)), identifying the foreign application to which priority is
claimed, by specifying the application number, country (or intellectual
property authority), day, month, and year of its filing, unless
previously submitted;
(2) The petition fee as set forth in Sec.1.17(m); and
(3) A statement that the delay in filing the subsequent application
within the period set forth in paragraph (b)(1) of this section was
unintentional. The Director may require additional information where
there is a question whether the delay was unintentional.
(d) Time for filing priority claim--(1) Application under 35 U.S.C.
111(a). The claim for priority must be filed within the later of four
months from the actual filing date of the application or sixteen months
from the filing date of the prior foreign application in an original
application filed under 35 U.S.C. 111(a), except as provided in
paragraph (e) of this section. The claim for priority must be presented
in an application data sheet (Sec.1.76(b)(6)) and must identify the
foreign application to which priority is claimed by specifying the
application number, country (or intellectual property authority), day,
month, and year of its filing. The time periods in this paragraph do not
apply if the later-filed application is:
(i) An application for a design patent; or
(ii) An application filed under 35 U.S.C. 111(a) before November 29,
2000.
(2) Application under 35 U.S.C. 371. The claim for priority must be
made within the time limit set forth in the PCT and the Regulations
under the PCT in an international application entering the national
stage under 35 U.S.C. 371, except as provided in paragraph (e) of this
section.
(e) Delayed priority claim. Unless such claim is accepted in
accordance with the provisions of this paragraph, any claim for priority
under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or 386(a) or
386(b) not presented in the manner required by paragraph (d) or (m) of
this section during pendency and within the time period provided by
paragraph (d) of this section (if applicable) is considered to have been
waived. If a claim for priority is considered to have been waived under
this section, the claim may be accepted if the priority claim was
unintentionally delayed. A petition to accept a delayed claim for
priority under 35 U.S.C. 119(a) through (d) or (f), 365(a) or (b), or
386(a) or 386(b) must be accompanied by:
(1) The priority claim under 35 U.S.C. 119(a) through (d) or (f),
365(a) or (b), or 386(a) or 386(b) in an application data sheet (Sec.
1.76(b)(6)), identifying the foreign application to which priority is
claimed, by specifying the application
[[Page 65]]
number, country (or intellectual property authority), day, month, and
year of its filing, unless previously submitted;
(2) A certified copy of the foreign application, unless previously
submitted or an exception in paragraph (h), (i), or (j) of this section
applies;
(3) The petition fee as set forth in Sec.1.17(m); and
(4) A statement that the entire delay between the date the priority
claim was due under this section and the date the priority claim was
filed was unintentional. The Director may require additional information
where there is a question whether the delay was unintentional.
(f) Time for filing certified copy of foreign application--(1)
Application under 35 U.S.C. 111(a). A certified copy of the foreign
application must be filed within the later of four months from the
actual filing date of the application, or sixteen months from the filing
date of the prior foreign application, in an original application under
35 U.S.C. 111(a) filed on or after March 16, 2013, except as provided in
paragraphs (h), (i), and (j) of this section. The time period in this
paragraph does not apply in a design application.
(2) Application under 35 U.S.C. 371. A certified copy of the foreign
application must be filed within the time limit set forth in the PCT and
the Regulations under the PCT in an international application entering
the national stage under 35 U.S.C. 371. If a certified copy of the
foreign application is not filed during the international stage in an
international application in which the national stage commenced on or
after December 18, 2013, a certified copy of the foreign application
must be filed within the later of four months from the date on which the
national stage commenced under 35 U.S.C. 371(b) or (f) (Sec.1.491(a)),
four months from the date of the initial submission under 35 U.S.C. 371
to enter the national stage, or sixteen months from the filing date of
the prior foreign application, except as provided in paragraphs (h),
(i), and (j) of this section.
(3) If a certified copy of the foreign application is not filed
within the time period specified paragraph (f)(1) of this section in an
application under 35 U.S.C. 111(a) or within the period specified in
paragraph (f)(2) of this section in an international application
entering the national stage under 35 U.S.C. 371, and an exception in
paragraph (h), (i), or (j) of this section is not applicable, the
certified copy of the foreign application must be accompanied by a
petition including a showing of good and sufficient cause for the delay
and the petition fee set forth in Sec.1.17(g).
(g) Requirement for filing priority claim, certified copy of foreign
application, and translation in any application. (1) The claim for
priority and the certified copy of the foreign application specified in
35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed within the
pendency of the application, unless filed with a petition under
paragraph (e) or (f) of this section, or with a petition accompanied by
the fee set forth in Sec.1.17(g) which includes a showing of good and
sufficient cause for the delay in filing the certified copy of the
foreign application in a design application. If the claim for priority
or the certified copy of the foreign application is filed after the date
the issue fee is paid, the patent will not include the priority claim
unless corrected by a certificate of correction under 35 U.S.C. 255 and
Sec.1.323.
(2) The Office may require that the claim for priority and the
certified copy of the foreign application be filed earlier than
otherwise provided in this section:
(i) When the application is involved in an interference (see Sec.
41.202 of this chapter) or derivation (see part 42 of this chapter)
proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When deemed necessary by the examiner.
(3) An English language translation of a non-English language
foreign application is not required except:
(i) When the application is involved in an interference (see Sec.
41.202 of this chapter) or derivation (see part 42 of this chapter)
proceeding;
(ii) When necessary to overcome the date of a reference relied upon
by the examiner; or
(iii) When specifically required by the examiner.
[[Page 66]]
(4) If an English language translation of a non-English language
foreign application is required, it must be filed together with a
statement that the translation of the certified copy is accurate.
(h) Certified copy in another U.S. patent or application. The
requirement in paragraphs (f) and (g) of this section for a certified
copy of the foreign application will be considered satisfied in a
reissue application if the patent for which reissue is sought satisfies
the requirement of this section for a certified copy of the foreign
application and such patent is identified as containing a certified copy
of the foreign application. The requirement in paragraphs (f) and (g) of
this section for a certified copy of the foreign application will also
be considered satisfied in an application if a prior-filed
nonprovisional application for which a benefit is claimed under 35
U.S.C. 120, 121, 365(c), or 386(c) contains a certified copy of the
foreign application and such prior-filed nonprovisional application is
identified as containing a certified copy of the foreign application.
(i) Foreign intellectual property office participating in a priority
document exchange agreement. The requirement in paragraphs (f) and (g)
of this section for a certified copy of the foreign application to be
filed within the time limit set forth therein will be considered
satisfied if:
(1) The foreign application was filed in a foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (participating foreign
intellectual property office), or a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office that permits the Office to obtain such a
copy;
(2) The claim for priority is presented in an application data sheet
(Sec.1.76(b)(6)), identifying the foreign application for which
priority is claimed, by specifying the application number, country (or
intellectual property authority), day, month, and year of its filing,
and the applicant provides the information necessary for the
participating foreign intellectual property office to provide the Office
with access to the foreign application;
(3) The copy of the foreign application is received by the Office
from the participating foreign intellectual property office, or a
certified copy of the foreign application is filed, within the period
specified in paragraph (g)(1) of this section; and
(4) The applicant files in a separate document a request that the
Office obtain a copy of the foreign application from a participating
intellectual property office that permits the Office to obtain such a
copy where, although the foreign application was not filed in a
participating foreign intellectual property office, a copy of the
foreign application was filed in an application subsequently filed in a
participating foreign intellectual property office that permits the
Office to obtain such a copy. The request must identify the
participating intellectual property office and the subsequent
application by the application number, day, month, and year of its
filing in which a copy of the foreign application was filed. The request
must be filed within the later of sixteen months from the filing date of
the prior foreign application, four months from the actual filing date
of an application under 35 U.S.C. 111(a), four months from the date on
which the national stage commenced under 35 U.S.C. 371(b) or (f) (Sec.
1.491(a)), or four months from the date of the initial submission under
35 U.S.C. 371 to enter the national stage, or the request must be
accompanied by a petition under paragraph (e) or (f) of this section.
(j) Interim copy. The requirement in paragraph (f) of this section
for a certified copy of the foreign application to be filed within the
time limit set forth therein will be considered satisfied if:
(1) A copy of the original foreign application clearly labeled as
``Interim Copy,'' including the specification, and any drawings or
claims upon which it is based, is filed in the Office together with a
separate cover sheet identifying the foreign application by specifying
the application number, country (or intellectual property authority),
day, month, and year of its filing, and stating that the copy filed in
the Office is a true copy of the original application
[[Page 67]]
as filed in the foreign country (or intellectual property authority);
(2) The copy of the foreign application and separate cover sheet are
filed within the later of sixteen months from the filing date of the
prior foreign application, four months from the actual filing date of an
application under 35 U.S.C. 111(a), four months from the date on which
the national stage commenced under 35 U.S.C. 371(b) or (f) (Sec.
1.491(a)), four months from the date of the initial submission under 35
U.S.C. 371 to enter the national stage, or with a petition under
paragraph (e) or (f) of this section; and
(3) A certified copy of the foreign application is filed within the
period specified in paragraph (g)(1) of this section.
(k) Requirements for certain applications filed on or after March
16, 2013. If a nonprovisional application filed on or after March 16,
2013, other than a nonprovisional international design application,
claims priority to a foreign application filed prior to March 16, 2013,
and also contains, or contained at any time, a claim to a claimed
invention that has an effective filing date as defined in Sec.1.109
that is on or after March 16, 2013, the applicant must provide a
statement to that effect within the later of four months from the actual
filing date of the nonprovisional application, four months from the date
of entry into the national stage as set forth in Sec.1.491 in an
international application, sixteen months from the filing date of the
prior foreign application, or the date that a first claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
is presented in the nonprovisional application. An applicant is not
required to provide such a statement if the applicant reasonably
believes on the basis of information already known to the individuals
designated in Sec.1.56(c) that the nonprovisional application does
not, and did not at any time, contain a claim to a claimed invention
that has an effective filing date on or after March 16, 2013.
(l) Inventor's certificates. An applicant in a nonprovisional
application may under certain circumstances claim priority on the basis
of one or more applications for an inventor's certificate in a country
granting both inventor's certificates and patents. To claim the right of
priority on the basis of an application for an inventor's certificate in
such a country under 35 U.S.C. 119(d), the applicant, when submitting a
claim for such right as specified in this section, must include an
affidavit or declaration. The affidavit or declaration must include a
specific statement that, upon an investigation, he or she is satisfied
that to the best of his or her knowledge, the applicant, when filing the
application for the inventor's certificate, had the option to file an
application for either a patent or an inventor's certificate as to the
subject matter of the identified claim or claims forming the basis for
the claim of priority.
(m) Time for filing priority claim and certified copy of foreign
application in an international design application designating the
United States. In an international design application designating the
United States, the claim for priority may be made in accordance with the
Hague Agreement and the Hague Agreement Regulations. In a nonprovisional
international design application, the priority claim, unless made in
accordance with the Hague Agreement and the Hague Agreement Regulations,
must be presented in an application data sheet (Sec.1.76(b)(6)),
identifying the foreign application for which priority is claimed, by
specifying the application number, country (or intellectual property
authority), day, month, and year of its filing. In a nonprovisional
international design application, the priority claim and certified copy
must be furnished in accordance with the time period and other
conditions set forth in paragraph (g) of this section.
(n) Applications filed before September 16, 2012. Notwithstanding
the requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this section
that any priority claim be presented in an application data sheet (Sec.
1.76), this requirement in paragraphs (d)(1), (e)(1), and (i)(2) of this
section will be satisfied by the presentation of such priority claim in
the oath or declaration under Sec.1.63 in a nonprovisional application
filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting
from an international
[[Page 68]]
application filed under 35 U.S.C. 363 before September 16, 2012. The
provisions of this paragraph do not apply to any priority claim
submitted for a petition under paragraph (c) of this section to restore
the right of priority to a foreign application.
(o) Priority under 35 U.S.C. 386(a) or (b). The right of priority
under 35 U.S.C. 386(a) or (b) with respect to an international design
application is applicable only to nonprovisional applications,
international applications, and international design applications filed
on or after May 13, 2015, and patents issuing thereon.
(p) Time periods in this section. The time periods set forth in this
section are not extendable, but are subject to 35 U.S.C. 21(b) (and
Sec.1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
[80 FR 17956, Apr. 2, 2015]
Sec.1.56 Duty to disclose information material to patentability.
(a) A patent by its very nature is affected with a public interest.
The public interest is best served, and the most effective patent
examination occurs when, at the time an application is being examined,
the Office is aware of and evaluates the teachings of all information
material to patentability. Each individual associated with the filing
and prosecution of a patent application has a duty of candor and good
faith in dealing with the Office, which includes a duty to disclose to
the Office all information known to that individual to be material to
patentability as defined in this section. The duty to disclose
information exists with respect to each pending claim until the claim is
cancelled or withdrawn from consideration, or the application becomes
abandoned. Information material to the patentability of a claim that is
cancelled or withdrawn from consideration need not be submitted if the
information is not material to the patentability of any claim remaining
under consideration in the application. There is no duty to submit
information which is not material to the patentability of any existing
claim. The duty to disclose all information known to be material to
patentability is deemed to be satisfied if all information known to be
material to patentability of any claim issued in a patent was cited by
the Office or submitted to the Office in the manner prescribed by
Sec. Sec.1.97(b)-(d) and 1.98. However, no patent will be granted on
an application in connection with which fraud on the Office was
practiced or attempted or the duty of disclosure was violated through
bad faith or intentional misconduct. The Office encourages applicants to
carefully examine:
(1) Prior art cited in search reports of a foreign patent office in
a counterpart application, and
(2) The closest information over which individuals associated with
the filing or prosecution of a patent application believe any pending
claim patentably defines, to make sure that any material information
contained therein is disclosed to the Office.
(b) Under this section, information is material to patentability
when it is not cumulative to information already of record or being made
of record in the application, and
(1) It establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant
takes in:
(i) Opposing an argument of unpatentability relied on by the Office,
or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability is established when the
information compels a conclusion that a claim is unpatentable under the
preponderance of evidence, burden-of-proof standard, giving each term in
the claim its broadest reasonable construction consistent with the
specification, and before any consideration is given to evidence which
may be submitted in an attempt to establish a contrary conclusion of
patentability.
(c) Individuals associated with the filing or prosecution of a
patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the
application; and
[[Page 69]]
(3) Every other person who is substantively involved in the
preparation or prosecution of the application and who is associated with
the inventor, the applicant, an assignee, or anyone to whom there is an
obligation to assign the application.
(d) Individuals other than the attorney, agent or inventor may
comply with this section by disclosing information to the attorney,
agent, or inventor.
(e) In any continuation-in-part application, the duty under this
section includes the duty to disclose to the Office all information
known to the person to be material to patentability, as defined in
paragraph (b) of this section, which became available between the filing
date of the prior application and the national or PCT international
filing date of the continuation-in-part application.
[57 FR 2034, Jan. 17, 1992, as amended at 65 FR 54666, Sept. 8, 2000; 77
FR 48818, Aug. 14, 2012]
Sec.1.57 Incorporation by reference.
(a) Subject to the conditions and requirements of this paragraph, a
reference made in the English language in an application data sheet in
accordance with Sec.1.76 upon the filing of an application under 35
U.S.C. 111(a) to a previously filed application, indicating that the
specification and any drawings of the application under 35 U.S.C. 111(a)
are replaced by the reference to the previously filed application, and
specifying the previously filed application by application number,
filing date, and the intellectual property authority or country in which
the previously filed application was filed, shall constitute the
specification and any drawings of the application under 35 U.S.C. 111(a)
for purposes of a filing date under Sec.1.53(b).
(1) If the applicant has provided a correspondence address (Sec.
1.33(a)), the applicant will be notified and given a period of time
within which to file a copy of the specification and drawings from the
previously filed application, an English language translation of the
previously filed application, and the fee required by Sec.1.17(i) if
it is in a language other than English, and pay the surcharge required
by Sec.1.16(f), to avoid abandonment. Such a notice may be combined
with a notice under Sec.1.53(f).
(2) If the applicant has not provided a correspondence address
(Sec.1.33(a)), the applicant has three months from the filing date of
the application to file a copy of the specification and drawings from
the previously filed application, an English language translation of the
previously filed application, and the fee required by Sec.1.17(i) if
it is in a language other than English, and pay the surcharge required
by Sec.1.16(f), to avoid abandonment.
(3) An application abandoned under paragraph (a)(1) or (a)(2) of
this section shall be treated as having never been filed, unless:
(i) The application is revived under Sec.1.137; and
(ii) A copy of the specification and any drawings of the previously
filed application are filed in the Office.
(4) A certified copy of the previously filed application must be
filed in the Office, unless the previously filed application is an
application filed under 35 U.S.C. 111 or 363, or the previously filed
application is a foreign priority application and the conditions set
forth in Sec.1.55(i) are satisfied with respect to such foreign
priority application. The certified copy of the previously filed
application, if required by this paragraph, must be filed within the
later of four months from the filing date of the application or sixteen
months from the filing date of the previously filed application, or be
accompanied by a petition including a showing of good and sufficient
cause for the delay and the petition fee set forth in Sec.1.17(g).
(b) Subject to the conditions and requirements of this paragraph, if
all or a portion of the specification or drawing(s) is inadvertently
omitted from an application, but the application contains a claim under
Sec.1.55 for priority of a prior-filed foreign application or a claim
under Sec.1.78 for the benefit of a prior-filed provisional,
nonprovisional, international application, or international design
application, that was present on the filing date of the application, and
the inadvertently omitted portion of the specification or drawing(s) is
completely contained in the prior-filed application, the claim under
[[Page 70]]
Sec.1.55 or 1.78 shall also be considered an incorporation by
reference of the prior-filed application as to the inadvertently omitted
portion of the specification or drawing(s).
(1) The application must be amended to include the inadvertently
omitted portion of the specification or drawing(s) within any time
period set by the Office, but in no case later than the close of
prosecution as defined by Sec.1.114(b), or abandonment of the
application, whichever occurs earlier. The applicant is also required
to:
(i) Supply a copy of the prior-filed application, except where the
prior-filed application is an application filed under 35 U.S.C. 111;
(ii) Supply an English language translation of any prior-filed
application that is in a language other than English; and
(iii) Identify where the inadvertently omitted portion of the
specification or drawings can be found in the prior-filed application.
(2) Any amendment to an international application pursuant to
paragraph (b)(1) of this section shall be effective only as to the
United States, and shall have no effect on the international filing date
of the application. In addition, no request under this section to add
the inadvertently omitted portion of the specification or drawings in an
international application designating the United States will be acted
upon by the Office prior to the entry and commencement of the national
stage (Sec.1.491) or the filing of an application under 35 U.S.C.
111(a) which claims benefit of the international application. Any
omitted portion of the international application which applicant desires
to be effective as to all designated States, subject to PCT Rule
20.8(b), must be submitted in accordance with PCT Rule 20.
(3) If an application is not otherwise entitled to a filing date
under Sec.1.53(b), the amendment must be by way of a petition pursuant
to Sec.1.53(e) accompanied by the fee set forth in Sec.1.17(f).
(4) Any amendment to an international design application pursuant to
paragraph (b)(1) of this section shall be effective only as to the
United States and shall have no effect on the filing date of the
application. In addition, no request under this section to add the
inadvertently omitted portion of the specification or drawings in an
international design application will be acted upon by the Office prior
to the international design application becoming a nonprovisional
application.
(c) Except as provided in paragraph (a) or (b) of this section, an
incorporation by reference must be set forth in the specification and
must:
(1) Express a clear intent to incorporate by reference by using the
root words ``incorporat(e)'' and ``reference'' (e.g., ``incorporate by
reference''); and
(2) Clearly identify the referenced patent, application, or
publication.
(d) ``Essential material'' may be incorporated by reference, but
only by way of an incorporation by reference to a U.S. patent or U.S.
patent application publication, which patent or patent application
publication does not itself incorporate such essential material by
reference. ``Essential material'' is material that is necessary to:
(1) Provide a written description of the claimed invention, and of
the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make
and use the same, and set forth the best mode contemplated by the
inventor of carrying out the invention as required by 35 U.S.C. 112(a);
(2) Describe the claimed invention in terms that particularly point
out and distinctly claim the invention as required by 35 U.S.C. 112(b);
or
(3) Describe the structure, material, or acts that correspond to a
claimed means or step for performing a specified function as required by
35 U.S.C. 112(f).
(e) Other material (``Nonessential material'') may be incorporated
by reference to U.S. patents, U.S. patent application publications,
foreign patents, foreign published applications, prior and concurrently
filed commonly owned U.S. applications, or non-patent publications. An
incorporation by reference by hyperlink or other form of browser
executable code is not permitted.
[[Page 71]]
(f) The examiner may require the applicant to supply a copy of the
material incorporated by reference. If the Office requires the applicant
to supply a copy of material incorporated by reference, the material
must be accompanied by a statement that the copy supplied consists of
the same material incorporated by reference in the referencing
application.
(g) Any insertion of material incorporated by reference into the
specification or drawings of an application must be by way of an
amendment to the specification or drawings. Such an amendment must be
accompanied by a statement that the material being inserted is the
material previously incorporated by reference and that the amendment
contains no new matter.
(h) An incorporation of material by reference that does not comply
with paragraphs (c), (d), or (e) of this section is not effective to
incorporate such material unless corrected within any time period set by
the Office, but in no case later than the close of prosecution as
defined by Sec.1.114(b), or abandonment of the application, whichever
occurs earlier. In addition:
(1) A correction to comply with paragraph (c)(1) of this section is
permitted only if the application as filed clearly conveys an intent to
incorporate the material by reference. A mere reference to material does
not convey an intent to incorporate the material by reference.
(2) A correction to comply with paragraph (c)(2) of this section is
only permitted for material that was sufficiently described to uniquely
identify the document.
(i) An application transmittal letter limited to the transmittal of
a copy of the specification and drawings from a previously filed
application submitted under paragraph (a) or (b) of this section may be
signed by a juristic applicant or patent owner.
[78 FR 62401, Oct. 21, 2013, as amended at 80 FR 17959, Apr. 2, 2015]
Sec.1.58 Chemical and mathematical formulae and tables.
(a) The specification, including the claims, may contain chemical
and mathematical formulae, but shall not contain drawings or flow
diagrams. The description portion of the specification may contain
tables, but the same tables should not be included in both the drawings
and description portion of the specification. Claims may contain tables
either if necessary to conform to 35 U.S.C. 112 or if otherwise found to
be desirable.
(b) Tables that are submitted in electronic form (Sec. Sec.1.96(c)
and 1.821(c)) must maintain the spatial relationships (e.g., alignment
of columns and rows) of the table elements when displayed so as to
visually preserve the relational information they convey. Chemical and
mathematical formulae must be encoded to maintain the proper positioning
of their characters when displayed in order to preserve their intended
meaning.
(c) Chemical and mathematical formulae and tables must be presented
in compliance with Sec.1.52(a) and (b), except that chemical and
mathematical formulae or tables may be placed in a landscape orientation
if they cannot be presented satisfactorily in a portrait orientation.
Typewritten characters used in such formulae and tables must be chosen
from a block (nonscript) type font or lettering style having capital
letters which should be at least 0.422 cm. (0.166 inch) high (e.g.,
preferably Arial, Times Roman, or Courier with a font size of 12), but
may be no smaller than 0.21 cm. (0.08 inch) high (e.g., a font size of
6). A space at least 0.64 cm. (1/4 inch) high should be provided between
complex formulae and tables and the text. Tables should have the lines
and columns of data closely spaced to conserve space, consistent with a
high degree of legibility.
[69 FR 56540, Sept. 21, 2004, as amended at 78 FR 62401, Oct. 21, 2013]
Sec.1.59 Expungement of information or copy of papers in application
file.
(a) (1) Information in an application will not be expunged, except
as provided in paragraph (b) of this section or Sec.41.7(a) or Sec.
42.7(a) of this title.
(2) Information forming part of the original disclosure (i.e.,
written specification including the claims, drawings, and any
preliminary amendment present on the filing date of the application)
will not be expunged from the application file.
[[Page 72]]
(b) An applicant may request that the Office expunge information,
other than what is excluded by paragraph (a)(2) of this section, by
filing a petition under this paragraph. Any petition to expunge
information from an application must include the fee set forth in Sec.
1.17(g) and establish to the satisfaction of the Director that the
expungement of the information is appropriate in which case a notice
granting the petition for expungement will be provided.
(c) Upon request by an applicant and payment of the fee specified in
Sec.1.19(b), the Office will furnish copies of an application, unless
the application has been disposed of (see Sec. Sec.1.53(e), (f) and
(g)). The Office cannot provide or certify copies of an application that
has been disposed of.
[68 FR 38628, June 30, 2003, as amended at 69 FR 49999, Aug. 12, 2004;
69 FR 56540, Sept. 21, 2004; 77 FR 46624, Aug. 6, 2012; 77 FR 48818,
Aug. 14, 2012]
Sec. Sec.1.60-1.62 [Reserved]
Oath or Declaration
Sec.1.63 Inventor's oath or declaration.
(a) The inventor, or each individual who is a joint inventor of a
claimed invention, in an application for patent must execute an oath or
declaration directed to the application, except as provided for in Sec.
1.64. An oath or declaration under this section must:
(1) Identify the inventor or joint inventor executing the oath or
declaration by his or her legal name;
(2) Identify the application to which it is directed;
(3) Include a statement that the person executing the oath or
declaration believes the named inventor or joint inventor to be the
original inventor or an original joint inventor of a claimed invention
in the application for which the oath or declaration is being submitted;
and
(4) State that the application was made or was authorized to be made
by the person executing the oath or declaration.
(b) Unless the following information is supplied in an application
data sheet in accordance with Sec.1.76, the oath or declaration must
also identify:
(1) Each inventor by his or her legal name; and
(2) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(c) A person may not execute an oath or declaration for an
application unless that person has reviewed and understands the contents
of the application, including the claims, and is aware of the duty to
disclose to the Office all information known to the person to be
material to patentability as defined in Sec.1.56. There is no minimum
age for a person to be qualified to execute an oath or declaration, but
the person must be competent to execute, i.e., understand, the document
that the person is executing.
(d)(1) A newly executed oath or declaration under Sec.1.63, or
substitute statement under Sec.1.64, is not required under Sec. Sec.
1.51(b)(2) and 1.53(f), or under Sec. Sec.1.497 and 1.1021(d), for an
inventor in a continuing application that claims the benefit under 35
U.S.C. 120, 121, 365(c), or 386(c) in compliance with Sec.1.78 of an
earlier-filed application, provided that an oath or declaration in
compliance with this section, or substitute statement under Sec.1.64,
was executed by or with respect to such inventor and was filed in the
earlier-filed application, and a copy of such oath, declaration, or
substitute statement showing the signature or an indication thereon that
it was executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35
U.S.C. 111(a) is the inventor or joint inventors specified in the
application data sheet filed before or concurrently with the copy of the
inventor's oath or declaration from the earlier-filed application. If an
application data sheet is not filed before or concurrently with the copy
of the inventor's oath or declaration from the earlier-filed
application, the inventorship is the inventorship set forth in the copy
of the inventor's oath or declaration from the earlier-filed
application, unless it is accompanied by a statement signed pursuant to
Sec.1.33(b) stating the name of each inventor in the continuing
application.
[[Page 73]]
(3) Any new joint inventor named in the continuing application must
provide an oath or declaration in compliance with this section, except
as provided for in Sec.1.64.
(e)(1) An assignment may also serve as an oath or declaration
required by this section if the assignment as executed:
(i) Includes the information and statements required under
paragraphs (a) and (b) of this section; and
(ii) A copy of the assignment is recorded as provided for in part 3
of this chapter.
(2) Any reference to an oath or declaration under this section
includes an assignment as provided for in this paragraph.
(f) With respect to an application naming only one inventor, any
reference to the inventor's oath or declaration in this chapter includes
a substitute statement executed under Sec.1.64. With respect to an
application naming more than one inventor, any reference to the
inventor's oath or declaration in this chapter means the oaths,
declarations, or substitute statements that have been collectively
executed by or with respect to all of the joint inventors, unless
otherwise clear from the context.
(g) An oath or declaration under this section, including the
statement provided for in paragraph (e) of this section, must be
executed (i.e., signed) in accordance either with Sec.1.66 or with an
acknowledgment that any willful false statement made in such declaration
or statement is punishable under 18 U.S.C. 1001 by fine or imprisonment
of not more than five (5) years, or both.
(h) An oath or declaration filed at any time pursuant to 35 U.S.C.
115(h)(1) will be placed in the file record of the application or
patent, but may not necessarily be reviewed by the Office. Any request
for correction of the named inventorship must comply with Sec.1.48 in
an application and Sec.1.324 in a patent.
[77 FR 48818, Aug. 14, 2012, as amended at 80 FR 17959, Apr. 2, 2015]
Sec.1.64 Substitute statement in lieu of an oath or declaration.
(a) An applicant under Sec.1.43, 1.45 or 1.46 may execute a
substitute statement in lieu of an oath or declaration under Sec.1.63
if the inventor is deceased, is under a legal incapacity, has refused to
execute the oath or declaration under Sec.1.63, or cannot be found or
reached after diligent effort.
(b) A substitute statement under this section must:
(1) Comply with the requirements of Sec.1.63(a), identifying the
inventor or joint inventor with respect to whom a substitute statement
in lieu of an oath or declaration is executed, and stating upon
information and belief the facts which such inventor is required to
state;
(2) Identify the person executing the substitute statement and the
relationship of such person to the inventor or joint inventor with
respect to whom the substitute statement is executed, and unless such
information is supplied in an application data sheet in accordance with
Sec.1.76, the residence and mailing address of the person signing the
substitute statement;
(3) Identify the circumstances permitting the person to execute the
substitute statement in lieu of an oath or declaration under Sec.1.63,
namely whether the inventor is deceased, is under a legal incapacity,
cannot be found or reached after a diligent effort was made, or has
refused to execute the oath or declaration under Sec.1.63; and
(4) Unless the following information is supplied in an application
data sheet in accordance with Sec.1.76, also identify:
(i) Each inventor by his or her legal name; and
(ii) The last known mailing address where the inventor customarily
receives mail, and last known residence, if an inventor lives at a
location which is different from where the inventor customarily receives
mail, for each inventor who is not deceased or under a legal incapacity.
(c) A person may not execute a substitute statement provided for in
this section for an application unless that person has reviewed and
understands the contents of the application, including the claims, and
is aware of the duty to disclose to the Office all information known to
the person to be material to patentability as defined in Sec.1.56.
[[Page 74]]
(d) Any reference to an inventor's oath or declaration includes a
substitute statement provided for in this section.
(e) A substitute statement under this section must contain an
acknowledgment that any willful false statement made in such statement
is punishable under section 1001 of title 18 by fine or imprisonment of
not more than 5 years, or both.
(f) A nonsigning inventor or legal representative may subsequently
join in the application by submitting an oath or declaration under Sec.
1.63. The submission of an oath or declaration by a nonsigning inventor
or legal representative in an application filed under Sec.1.43, 1.45
or 1.46 will not permit the nonsigning inventor or legal representative
to revoke or grant a power of attorney.
[77 FR 48819, Aug. 14, 2012]
Sec.1.66 Statements under oath.
An oath or affirmation may be made before any person within the
United States authorized by law to administer oaths. An oath made in a
foreign country may be made before any diplomatic or consular officer of
the United States authorized to administer oaths, or before any officer
having an official seal and authorized to administer oaths in the
foreign country in which the applicant may be, whose authority shall be
proved by a certificate of a diplomatic or consular officer of the
United States, or by an apostille of an official designated by a foreign
country which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States. The oath shall
be attested in all cases in this and other countries, by the proper
official seal of the officer before whom the oath or affirmation is
made. Such oath or affirmation shall be valid as to execution if it
complies with the laws of the State or country where made. When the
person before whom the oath or affirmation is made in this country is
not provided with a seal, his official character shall be established by
competent evidence, as by a certificate from a clerk of a court of
record or other proper officer having a seal.
[77 FR 48819, Aug. 14, 2012]
Sec.1.67 Supplemental oath or declaration.
(a) The applicant may submit an inventor's oath or declaration
meeting the requirements of Sec.1.63, Sec.1.64, or Sec.1.162 to
correct any deficiencies or inaccuracies present in an earlier-filed
inventor's oath or declaration. Deficiencies or inaccuracies due to the
failure to meet the requirements of Sec.1.63(b) in an oath or
declaration may be corrected with an application data sheet in
accordance with Sec.1.76, except that any correction of inventorship
must be pursuant to Sec.1.48.
(b) A supplemental inventor's oath or declaration under this section
must be executed by the person whose inventor's oath or declaration is
being withdrawn, replaced, or otherwise corrected.
(c) The Office will not require a person who has executed an oath or
declaration in compliance with 35 U.S.C. 115 and Sec.1.63 or 1.162 for
an application to provide an additional inventor's oath or declaration
for the application.
(d) No new matter may be introduced into a nonprovisional
application after its filing date even if an inventor's oath or
declaration is filed to correct deficiencies or inaccuracies present in
the earlier-filed inventor's oath or declaration.
[77 FR 48819, Aug. 14, 2012]
Sec.1.68 Declaration in lieu of oath.
Any document to be filed in the Patent and Trademark Office and
which is required by any law, rule, or other regulation to be under oath
may be subscribed to by a written declaration. Such declaration may be
used in lieu of the oath otherwise required, if, and only if, the
declarant is on the same document, warned that willful false statements
and the like are punishable by fine or imprisonment, or both (18 U.S.C.
1001) and may jeopardize the validity of the application or any patent
issuing thereon. The declarant must set forth in the body of the
declaration that all statements made of the declarant's own knowledge
are true and that all statements made on information and belief are
believed to be true.
[49 FR 48452, Dec. 12, 1984]
[[Page 75]]
Sec.1.69 Foreign language oaths and declarations.
(a) Whenever an individual making an oath or declaration cannot
understand English, the oath or declaration must be in a language that
such individual can understand and shall state that such individual
understands the content of any documents to which the oath or
declaration relates.
(b) Unless the text of any oath or declaration in a language other
than English is in a form provided by the Patent and Trademark Office or
in accordance with PCT Rule 4.17(iv), it must be accompanied by an
English translation together with a statement that the translation is
accurate, except that in the case of an oath or declaration filed under
Sec.1.63, the translation may be filed in the Office no later than two
months from the date applicant is notified to file the translation.
(35 U.S.C. 6, Pub. L. 97-247)
[42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62
FR 53189, Oct. 10, 1997; 69 FR 56540, Sept. 21, 2004; 70 FR 3890, Jan.
27, 2005]
Sec.1.70 [Reserved]
Specification
Authority: Secs. 1.71 to 1.79 also issued under 35 U.S.C. 112.
Sec.1.71 Detailed description and specification of the invention.
(a) The specification must include a written description of the
invention or discovery and of the manner and process of making and using
the same, and is required to be in such full, clear, concise, and exact
terms as to enable any person skilled in the art or science to which the
invention or discovery appertains, or with which it is most nearly
connected, to make and use the same.
(b) The specification must set forth the precise invention for which
a patent is solicited, in such manner as to distinguish it from other
inventions and from what is old. It must describe completely a specific
embodiment of the process, machine, manufacture, composition of matter
or improvement invented, and must explain the mode of operation or
principle whenever applicable. The best mode contemplated by the
inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must
particularly point out the part or parts of the process, machine,
manufacture, or composition of matter to which the improvement relates,
and the description should be confined to the specific improvement and
to such parts as necessarily cooperate with it or as may be necessary to
a complete understanding or description of it.
(d) A copyright or mask work notice may be placed in a design or
utility patent application adjacent to copyright and mask work material
contained therein. The notice may appear at any appropriate portion of
the patent application disclosure. For notices in drawings, see Sec.
1.84(s). The content of the notice must be limited to only those
elements provided for by law. For example, ``(copyright) 1983
John Doe'' (17 U.S.C. 401) and `` *M* John Doe'' (17 U.S.C. 909) would
be properly limited and, under current statutes, legally sufficient
notices of copyright and mask work, respectively. Inclusion of a
copyright or mask work notice will be permitted only if the
authorization language set forth in paragraph (e) of this section is
included at the beginning (preferably as the first paragraph) of the
specification.
(e) The authorization shall read as follows:
A portion of the disclosure of this patent document contains
material which is subject to (copyright or mask work) protection. The
(copyright or mask work) owner has no objection to the facsimile
reproduction by anyone of the patent document or the patent disclosure,
as it appears in the Patent and Trademark Office patent file or records,
but otherwise reserves all (copyright or mask work) rights whatsoever.
(f) The specification must commence on a separate sheet. Each sheet
including part of the specification may not include other parts of the
application or other information. The claim(s), abstract and sequence
listing (if any) should not be included on a sheet including any other
part of the application.
(g)(1) The specification may disclose or be amended to disclose the
names of
[[Page 76]]
the parties to a joint research agreement as defined in Sec.1.9(e).
(2) An amendment under paragraph (g)(1) of this section must be
accompanied by the processing fee set forth in Sec.1.17(i) if not
filed within one of the following time periods:
(i) Within three months of the filing date of a national
application;
(ii) Within three months of the date of entry of the national stage
as set forth in Sec.1.491 in an international application;
(iii) Before the mailing of a first Office action on the merits; or
(iv) Before the mailing of a first Office action after the filing of
a request for continued examination under Sec.1.114.
(3) If an amendment under paragraph (g)(1) of this section is filed
after the date the issue fee is paid, the patent as issued may not
necessarily include the names of the parties to the joint research
agreement. If the patent as issued does not include the names of the
parties to the joint research agreement, the patent must be corrected to
include the names of the parties to the joint research agreement by a
certificate of correction under 35 U.S.C. 255 and Sec.1.323 for the
amendment to be effective.
[24 FR 10332, Dec. 22, 1959, as amended at 53 FR 47808, Nov. 28, 1988;
58 FR 38723, July 20, 1993; 68 FR 38628, June 30, 2003; 70 FR 1823, Jan.
11, 2005; 70 FR 54266, Sept. 14, 2005; 78 FR 11055, Feb. 14, 2013]
Sec.1.72 Title and abstract.
(a) The title of the invention may not exceed 500 characters in
length and must be as short and specific as possible. Characters that
cannot be captured and recorded in the Office's automated information
systems may not be reflected in the Office's records in such systems or
in documents created by the Office. Unless the title is supplied in an
application data sheet (Sec.1.76), the title of the invention should
appear as a heading on the first page of the specification.
(b) A brief abstract of the technical disclosure in the
specification must commence on a separate sheet, preferably following
the claims, under the heading ``Abstract'' or ``Abstract of the
Disclosure.'' The sheet or sheets presenting the abstract may not
include other parts of the application or other material. The abstract
must be as concise as the disclosure permits, preferably not exceeding
150 words in length. The purpose of the abstract is to enable the Office
and the public generally to determine quickly from a cursory inspection
the nature and gist of the technical disclosure.
[65 FR 54667, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000;
68 FR 38628, June 30, 2003; 78 FR 62402, Oct. 21, 2013]
Sec.1.73 Summary of the invention.
A brief summary of the invention indicating its nature and
substance, which may include a statement of the object of the invention,
should precede the detailed description. Such summary should, when set
forth, be commensurate with the invention as claimed and any object
recited should be that of the invention as claimed.
Sec.1.74 Reference to drawings.
When there are drawings, there shall be a brief description of the
several views of the drawings and the detailed description of the
invention shall refer to the different views by specifying the numbers
of the figures and to the different parts by use of reference letters or
numerals (preferably the latter).
Sec.1.75 Claim(s).
(a) The specification must conclude with a claim particularly
pointing out and distinctly claiming the subject matter which the
applicant regards as his invention or discovery.
(b) More than one claim may be presented provided they differ
substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form, referring
back to and further limiting another claim or claims in the same
application. Any dependent claim which refers to more than one other
claim (``multiple dependent claim'') shall refer to such other claims in
the alternative only. A multiple dependent claim shall not serve as a
basis for any other multiple dependent claim. For fee calculation
purposes under Sec.1.16, a multiple dependent claim will be considered
to
[[Page 77]]
be that number of claims to which direct reference is made therein. For
fee calculation purposes also, any claim depending from a multiple
dependent claim will be considered to be that number of claims to which
direct reference is made in that multiple dependent claim. In addition
to the other filing fees, any original application which is filed with,
or is amended to include, multiple dependent claims must have paid
therein the fee set forth in Sec.1.16(j). Claims in dependent form
shall be construed to include all the limitations of the claim
incorporated by reference into the dependent claim. A multiple dependent
claim shall be construed to incorporate by reference all the limitations
of each of the particular claims in relation to which it is being
considered.
(d)(1) The claim or claims must conform to the invention as set
forth in the remainder of the specification and the terms and phrases
used in the claims must find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may be
ascertainable by reference to the description. (See Sec.1.58(a).)
(2) See Sec. Sec.1.141 to 1.146 as to claiming different
inventions in one application.
(e) Where the nature of the case admits, as in the case of an
improvement, any independent claim should contain in the following
order:
(1) A preamble comprising a general description of all the elements
or steps of the claimed combination which are conventional or known,
(2) A phrase such as ``wherein the improvement comprises,'' and
(3) Those elements, steps and/or relationships which constitute that
portion of the claimed combination which the applicant considers as the
new or improved portion.
(f) If there are several claims, they shall be numbered
consecutively in Arabic numerals.
(g) The least restrictive claim should be presented as claim number
1, and all dependent claims should be grouped together with the claim or
claims to which they refer to the extent practicable.
(h) The claim or claims must commence on a separate physical sheet
or electronic page. Any sheet including a claim or portion of a claim
may not contain any other parts of the application or other material.
(i) Where a claim sets forth a plurality of elements or steps, each
element or step of the claim should be separated by a line indentation.
(35 U.S.C. 6; 15 U.S.C. 1113, 1126)
[31 FR 12922, Oct. 4, 1966, as amended at 36 FR 12690, July 3, 1971; 37
FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept.
17, 1982; 61 FR 42803, Aug. 19, 1996; 68 FR 38628, June 30, 2003; 70 FR
3891, Jan. 27, 2005; 72 FR 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14,
2009]
Sec.1.76 Application data sheet.
(a) Application data sheet. An application data sheet is a sheet or
sheets that may be submitted in a provisional application under 35
U.S.C. 111(b), a nonprovisional application under 35 U.S.C. 111(a), a
nonprovisional international design application, or a national stage
application under 35 U.S.C. 371 and must be submitted when required by
Sec.1.55 or 1.78 to claim priority to or the benefit of a prior-filed
application under 35 U.S.C. 119, 120, 121, 365, or 386. An application
data sheet must be titled ``Application Data Sheet.'' An application
data sheet must contain all of the section headings listed in paragraph
(b) of this section, except as provided in paragraph (c)(2) of this
section, with any appropriate data for each section heading. If an
application data sheet is provided, the application data sheet is part
of the application for which it has been submitted.
(b) Bibliographic data. Bibliographic data as used in paragraph (a)
of this section includes:
(1) Inventor information. This information includes the legal name,
residence, and mailing address of the inventor or each joint inventor.
(2) Correspondence information. This information includes the
correspondence address, which may be indicated by reference to a
customer number, to which correspondence is to be directed (see Sec.
1.33(a)).
(3) Application information. This information includes the title of
the invention, the total number of drawing sheets, a suggested drawing
figure for publication (in a nonprovisional application), any docket
number assigned to the application, the type of application
[[Page 78]]
(e.g., utility, plant, design, reissue, provisional), whether the
application discloses any significant part of the subject matter of an
application under a secrecy order pursuant to Sec.5.2 of this chapter
(see Sec.5.2(c)), and, for plant applications, the Latin name of the
genus and species of the plant claimed, as well as the variety
denomination. When information concerning the previously filed
application is required under Sec.1.57(a), application information
also includes the reference to the previously filed application,
indicating that the specification and any drawings of the application
are replaced by the reference to the previously filed application, and
specifying the previously filed application by application number,
filing date, and the intellectual property authority or country in which
the previously filed application was filed.
(4) Representative information. This information includes the
registration number of each practitioner having a power of attorney in
the application (preferably by reference to a customer number).
Providing this information in the application data sheet does not
constitute a power of attorney in the application (see Sec.1.32).
(5) Domestic benefit information. This information includes the
application number, the filing date, the status (including patent number
if available), and relationship of each application for which a benefit
is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c).
Providing this information in the application data sheet constitutes the
specific reference required by 35 U.S.C. 119(e) or 120 and Sec.1.78.
(6) Foreign priority information. This information includes the
application number, country (or intellectual property authority), and
filing date of each foreign application for which priority is claimed.
Providing this information in the application data sheet constitutes the
claim for priority as required by 35 U.S.C. 119(b) and Sec.1.55.
(7) Applicant information: This information includes the name
(either natural person or juristic entity) and address of the legal
representative, assignee, person to whom the inventor is under an
obligation to assign the invention, or person who otherwise shows
sufficient proprietary interest in the matter who is the applicant under
Sec.1.43 or Sec.1.46. Providing assignment information in the
application data sheet does not substitute for compliance with any
requirement of part 3 of this chapter to have an assignment recorded by
the Office.
(c) Correcting and updating an application data sheet. (1)
Information in a previously submitted application data sheet, inventor's
oath or declaration under Sec.1.63, Sec.1.64 or Sec.1.67, or
otherwise of record, may be corrected or updated until payment of the
issue fee by a new application data sheet providing corrected or updated
information, except that inventorship changes must comply with the
requirements of Sec.1.48, foreign priority and domestic benefit
information changes must comply with Sec. Sec.1.55 and 1.78, and
correspondence address changes are governed by Sec.1.33(a).
(2) An application data sheet providing corrected or updated
information may include all of the sections listed in paragraph (b) of
this section or only those sections containing changed or updated
information. The application data sheet must include the section
headings listed in paragraph (b) of this section for each section
included in the application data sheet, and must identify the
information that is being changed, with underlining for insertions, and
strike-through or brackets for text removed, except that identification
of information being changed is not required for an application data
sheet included with an initial submission under 35 U.S.C. 371.
(d) Inconsistencies between application data sheet and other
documents. For inconsistencies between information that is supplied by
both an application data sheet under this section and other documents:
(1) The most recent submission will govern with respect to
inconsistencies as between the information provided in an application
data sheet, a designation of a correspondence address, or by the
inventor's oath or declaration, except that:
(i) The most recent application data sheet will govern with respect
to foreign priority (Sec.1.55) or domestic benefit (Sec.1.78)
claims; and
[[Page 79]]
(ii) The naming of the inventorship is governed by Sec.1.41 and
changes to inventorship or the names of the inventors is governed by
Sec.1.48.
(2) The information in the application data sheet will govern when
inconsistent with the information supplied at the same time by a
designation of correspondence address or the inventor's oath or
declaration. The information in the application data sheet will govern
when inconsistent with the information supplied at any time in a Patent
Cooperation Treaty Request Form, Patent Law Treaty Model International
Request Form, Patent Law Treaty Model International Request for
Recordation of Change in Name or Address Form, or Patent Law Treaty
Model International Request for Recordation of Change in Applicant or
Owner Form.
(3) The Office will capture bibliographic information from the
application data sheet. The Office will generally not review the
inventor's oath or declaration to determine if the bibliographic
information contained therein is consistent with the bibliographic
information provided in an application data sheet. Incorrect
bibliographic information contained in an application data sheet may be
corrected as provided in paragraph (c)(1) of this section.
(e) Signature requirement. An application data sheet must be signed
in compliance with Sec.1.33(b). An unsigned application data sheet
will be treated only as a transmittal letter.
(f) Patent Law Treaty Model International Forms. The requirement in
Sec.1.55 or Sec.1.78 for the presentation of a priority or benefit
claim under 35 U.S.C. 119, 120, 121, or 365 in an application data sheet
will be satisfied by the presentation of such priority or benefit claim
in the Patent Law Treaty Model International Request Form, and the
requirement in Sec.1.57(a) for a reference to the previously filed
application in an application data sheet will be satisfied by the
presentation of such reference to the previously filed application in
the Patent Law Treaty Model International Request Form. The requirement
in Sec.1.46 for the presentation of the name of the applicant under 35
U.S.C. 118 in an application data sheet will be satisfied by the
presentation of the name of the applicant in the Patent Law Treaty Model
International Request Form, Patent Law Treaty Model International
Request for Recordation of Change in Name or Address Form, or Patent Law
Treaty Model International Request for Recordation of Change in
Applicant or Owner Form, as applicable.
(g) Patent Cooperation Treaty Request Form. The requirement in Sec.
1.78 for the presentation of a benefit claim under 35 U.S.C. 119, 120,
121, or 365 in an application data sheet will be satisfied in a national
stage application under 35 U.S.C. 371 by the presentation of such
benefit claim in the Patent Cooperation Treaty Request Form contained in
the international application or the presence of such benefit claim on
the front page of the publication of the international application under
PCT Article 21(2). The requirement in Sec.1.55 or Sec.1.78 for the
presentation of a priority or benefit claim under 35 U.S.C. 119, 120,
121, or 365 in an application data sheet and the requirement in Sec.
1.46 for the presentation of the name of the applicant under 35 U.S.C.
118 in an application data sheet will be satisfied in an application
under 35 U.S.C. 111 by the presentation of such priority or benefit
claim and presentation of the name of the applicant in a Patent
Cooperation Treaty Request Form. If a Patent Cooperation Treaty Request
Form is submitted in an application under 35 U.S.C. 111, the Patent
Cooperation Treaty Request Form must be accompanied by a clear
indication that treatment of the application as an application under 35
U.S.C. 111 is desired.
[65 FR 54668, Sept. 8, 2000, as amended at 65 FR 57054, Sept. 20, 2000;
69 FR 56540, Sept. 21, 2004; 70 FR 54266, Sept. 14, 2005;; 72 FR 46837,
Aug. 21, 2007; 74 FR 52689, Oct. 14, 2009; 77 FR 48820, Aug. 14, 2012;
78 FR 11055, Feb. 14, 2013; 78 FR 62402, Oct. 21, 2013; 80 FR 17959,
Apr. 2, 2015]
Sec.1.77 Arrangement of application elements.
(a) The elements of the application, if applicable, should appear in
the following order:
(1) Utility application transmittal form.
(2) Fee transmittal form.
[[Page 80]]
(3) Application data sheet (see Sec.1.76).
(4) Specification.
(5) Drawings.
(6) The inventor's oath or declaration.
(b) The specification should include the following sections in
order:
(1) Title of the invention, which may be accompanied by an
introductory portion stating the name, citizenship, and residence of the
applicant (unless included in the application data sheet).
(2) Cross-reference to related applications.
(3) Statement regarding federally sponsored research or development.
(4) The names of the parties to a joint research agreement.
(5) Reference to a ``Sequence Listing,'' a table, or a computer
program listing appendix submitted on a compact disc and an
incorporation-by-reference of the material on the compact disc (see
Sec.1.52(e)(5)). The total number of compact discs including
duplicates and the files on each compact disc shall be specified.
(6) Statement regarding prior disclosures by the inventor or a joint
inventor.
(7) Background of the invention.
(8) Brief summary of the invention.
(9) Brief description of the several views of the drawing.
(10) Detailed description of the invention.
(11) A claim or claims.
(12) Abstract of the disclosure.
(13) ``Sequence Listing,'' if on paper (see Sec. Sec.1.821 through
1.825).
(c) The text of the specification sections defined in paragraphs
(b)(1) through (b)(12) of this section, if applicable, should be
preceded by a section heading in uppercase and without underlining or
bold type.
[65 FR 54668, Sept. 8, 2000, as amended at 70 FR 1823, Jan. 11, 2005; 77
FR 48820, Aug. 14, 2012; 78 FR 11055, Feb. 14, 2013]
Sec.1.78 Claiming benefit of earlier filing date and cross-references
to other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application. An applicant in a nonprovisional application,
other than for a design patent, or an international application
designating the United States may claim the benefit of one or more
prior-filed provisional applications under the conditions set forth in
35 U.S.C. 119(e) and this section.
(1) The nonprovisional application or international application
designating the United States must be:
(i) Filed not later than twelve months after the date on which the
provisional application was filed, subject to paragraph (b) of this
section (a subsequent application); or
(ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or
365(c) of a subsequent application that was filed within the period set
forth in paragraph (a)(1)(i) of this section.
(2) Each prior-filed provisional application must name the inventor
or a joint inventor named in the later-filed application as the inventor
or a joint inventor. In addition, each prior-filed provisional
application must be entitled to a filing date as set forth in Sec.
1.53(c), and the basic filing fee set forth in Sec.1.16(d) must have
been paid for such provisional application within the time period set
forth in Sec.1.53(g).
(3) Any nonprovisional application or international application
designating the United States that claims the benefit of one or more
prior-filed provisional applications must contain, or be amended to
contain, a reference to each such prior-filed provisional application,
identifying it by the provisional application number (consisting of
series code and serial number). If the later-filed application is a
nonprovisional application, the reference required by this paragraph
must be included in an application data sheet (Sec.1.76(b)(5)).
(4) The reference required by paragraph (a)(3) of this section must
be submitted during the pendency of the later-filed application. If the
later-filed application is an application filed under 35 U.S.C. 111(a),
this reference must also be submitted within the later of four months
from the actual filing date of the later-filed application or sixteen
months from the filing date of the prior-filed provisional application.
If the later-filed application is a nonprovisional application entering
the national stage from an international application under 35 U.S.C.
[[Page 81]]
371, this reference must also be submitted within the later of four
months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f) (Sec.1.491(a)), four months from the date of the
initial submission under 35 U.S.C. 371 to enter the national stage, or
sixteen months from the filing date of the prior-filed provisional
application. Except as provided in paragraph (c) of this section,
failure to timely submit the reference is considered a waiver of any
benefit under 35 U.S.C. 119(e) of the prior-filed provisional
application. The time periods in this paragraph do not apply if the
later-filed application is:
(i) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(ii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
(5) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, the applicant will be notified and given a
period of time within which to file, in the prior-filed provisional
application, the translation and the statement. If the notice is mailed
in a pending nonprovisional application, a timely reply to such a notice
must include the filing in the nonprovisional application of either a
confirmation that the translation and statement were filed in the
provisional application, or an application data sheet (Sec.1.76(b)(5))
eliminating the reference under paragraph (a)(3) of this section to the
prior-filed provisional application, or the nonprovisional application
will be abandoned. The translation and statement may be filed in the
provisional application, even if the provisional application has become
abandoned.
(6) If a nonprovisional application filed on or after March 16,
2013, claims the benefit of the filing date of a provisional application
filed prior to March 16, 2013, and also contains, or contained at any
time, a claim to a claimed invention that has an effective filing date
as defined in Sec.1.109 that is on or after March 16, 2013, the
applicant must provide a statement to that effect within the later of
four months from the actual filing date of the nonprovisional
application, four months from the date of entry into the national stage
as set forth in Sec.1.491 in an international application, sixteen
months from the filing date of the prior-filed provisional application,
or the date that a first claim to a claimed invention that has an
effective filing date on or after March 16, 2013, is presented in the
nonprovisional application. An applicant is not required to provide such
a statement if the applicant reasonably believes on the basis of
information already known to the individuals designated in Sec.1.56(c)
that the nonprovisional application does not, and did not at any time,
contain a claim to a claimed invention that has an effective filing date
on or after March 16, 2013.
(b) Delayed filing of the subsequent nonprovisional application or
international application designating the United States. If the
subsequent nonprovisional application or international application
designating the United States has a filing date which is after the
expiration of the twelve-month period set forth in paragraph (a)(1)(i)
of this section but within two months from the expiration of the period
set forth in paragraph (a)(1)(i) of this section, the benefit of the
provisional application may be restored under PCT Rule 26bis.3 for an
international application, or upon petition pursuant to this paragraph,
if the delay in filing the subsequent nonprovisional application or
international application designating the United States within the
period set forth in paragraph (a)(1)(i) of this section was
unintentional.
(1) A petition to restore the benefit of a provisional application
under this paragraph filed on or after May 13, 2015, must be filed in
the subsequent application, and any petition to restore the benefit of a
provisional application under this paragraph must include:
(i) The reference required by 35 U.S.C. 119(e) to the prior-filed
provisional application in an application data sheet (Sec.1.76(b)(5))
identifying it by
[[Page 82]]
provisional application number (consisting of series code and serial
number), unless previously submitted;
(ii) The petition fee as set forth in Sec.1.17(m); and
(iii) A statement that the delay in filing the subsequent
nonprovisional application or international application designating the
United States within the twelve-month period set forth in paragraph
(a)(1)(i) of this section was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(2) The restoration of the right of priority under PCT Rule 26bis.3
to a provisional application does not affect the requirement to include
the reference required by paragraph (a)(3) of this section to the
provisional application in a national stage application under 35 U.S.C.
371 within the time period provided by paragraph (a)(4) of this section
to avoid the benefit claim being considered waived.
(c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application. If the reference required by 35
U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an
application after the time period provided by paragraph (a)(4) of this
section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-
filed provisional application may be accepted if the reference
identifying the prior-filed application by provisional application
number was unintentionally delayed. A petition to accept an
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application must be accompanied by:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3)
of this section to the prior-filed provisional application, unless
previously submitted;
(2) The petition fee as set forth in Sec.1.17(m); and
(3) A statement that the entire delay between the date the benefit
claim was due under paragraph (a)(4) of this section and the date the
benefit claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the
benefit of a prior-filed nonprovisional application, international
application, or international design application. An applicant in a
nonprovisional application (including a nonprovisional application
resulting from an international application or international design
application), an international application designating the United
States, or an international design application designating the United
States may claim the benefit of one or more prior-filed copending
nonprovisional applications, international applications designating the
United States, or international design applications designating the
United States under the conditions set forth in 35 U.S.C. 120, 121,
365(c), or 386(c) and this section.
(1) Each prior-filed application must name the inventor or a joint
inventor named in the later-filed application as the inventor or a joint
inventor. In addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States;
(ii) An international design application entitled to a filing date
in accordance with Sec.1.1023 and designating the United States; or
(iii) A nonprovisional application under 35 U.S.C. 111(a) that is
entitled to a filing date as set forth in Sec.1.53(b) or (d) for which
the basic filing fee set forth in Sec.1.16 has been paid within the
pendency of the application.
(2) Except for a continued prosecution application filed under Sec.
1.53(d), any nonprovisional application, international application
designating the United States, or international design application
designating the United States that claims the benefit of one or more
prior-filed nonprovisional applications, international applications
designating the United States, or international design applications
designating the United States must contain or be amended to contain a
reference to each such prior-filed application, identifying it by
application number (consisting of the series code and serial number),
international application number and international filing date,
[[Page 83]]
or international registration number and filing date under Sec.1.1023.
If the later-filed application is a nonprovisional application, the
reference required by this paragraph must be included in an application
data sheet (Sec.1.76(b)(5)). The reference also must identify the
relationship of the applications, namely, whether the later-filed
application is a continuation, divisional, or continuation-in-part of
the prior-filed nonprovisional application, international application,
or international design application.
(3)(i) The reference required by 35 U.S.C. 120 and paragraph (d)(2)
of this section must be submitted during the pendency of the later-filed
application.
(ii) If the later-filed application is an application filed under 35
U.S.C. 111(a), this reference must also be submitted within the later of
four months from the actual filing date of the later-filed application
or sixteen months from the filing date of the prior-filed application.
If the later-filed application is a nonprovisional application entering
the national stage from an international application under 35 U.S.C.
371, this reference must also be submitted within the later of four
months from the date on which the national stage commenced under 35
U.S.C. 371(b) or (f) (Sec.1.491(a)), four months from the date of the
initial submission under 35 U.S.C. 371 to enter the national stage, or
sixteen months from the filing date of the prior-filed application. The
time periods in this paragraph do not apply if the later-filed
application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(C) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
(iii) Except as provided in paragraph (e) of this section, failure
to timely submit the reference required by 35 U.S.C. 120 and paragraph
(d)(2) of this section is considered a waiver of any benefit under 35
U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
(4) The request for a continued prosecution application under Sec.
1.53(d) is the specific reference required by 35 U.S.C. 120 to the
prior-filed application. The identification of an application by
application number under this section is the identification of every
application assigned that application number necessary for a specific
reference required by 35 U.S.C. 120 to every such application assigned
that application number.
(5) Cross-references to other related applications may be made when
appropriate (see Sec.1.14), but cross-references to applications for
which a benefit is not claimed under title 35, United States Code, must
not be included in an application data sheet (Sec.1.76(b)(5)).
(6) If a nonprovisional application filed on or after March 16,
2013, other than a nonprovisional international design application,
claims the benefit of the filing date of a nonprovisional application or
an international application designating the United States filed prior
to March 16, 2013, and also contains, or contained at any time, a claim
to a claimed invention that has an effective filing date as defined in
Sec.1.109 that is on or after March 16, 2013, the applicant must
provide a statement to that effect within the later of four months from
the actual filing date of the later-filed application, four months from
the date of entry into the national stage as set forth in Sec.1.491 in
an international application, sixteen months from the filing date of the
prior-filed application, or the date that a first claim to a claimed
invention that has an effective filing date on or after March 16, 2013,
is presented in the later-filed application. An applicant is not
required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional
application in which a statement under Sec.1.55(k), paragraph (a)(6)
of this section, or this paragraph that the application contains, or
contained at any time, a claim to a claimed invention that has an
effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information
already known to the individuals designated in Sec.1.56(c) that the
later filed application does not, and did not at any time, contain a
claim to a claimed invention that has an effective filing date on or
after March 16, 2013.
[[Page 84]]
(7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or
386(c) to an international application or an international design
application which designates but did not originate in the United States,
the Office may require a certified copy of such application together
with an English translation thereof if filed in another language.
(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for
the benefit of a prior-filed nonprovisional application, international
application, or international design application. If the reference
required by 35 U.S.C. 120 and paragraph (d)(2) of this section is
presented after the time period provided by paragraph (d)(3) of this
section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the
benefit of a prior-filed copending nonprovisional application,
international application designating the United States, or
international design application designating the United States may be
accepted if the reference required by paragraph (d)(2) of this section
was unintentionally delayed. A petition to accept an unintentionally
delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the
benefit of a prior-filed application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of
this section to the prior-filed application, unless previously
submitted;
(2) The petition fee as set forth in Sec.1.17(m); and
(3) A statement that the entire delay between the date the benefit
claim was due under paragraph (d)(3) of this section and the date the
benefit claim was filed was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(f) Applications containing patentably indistinct claims. Where two
or more applications filed by the same applicant or assignee contain
patentably indistinct claims, elimination of such claims from all but
one application may be required in the absence of good and sufficient
reason for their retention during pendency in more than one application.
(g) Applications or patents under reexamination naming different
inventors and containing patentably indistinct claims. If an application
or a patent under reexamination and at least one other application
naming different inventors are owned by the same person and contain
patentably indistinct claims, and there is no statement of record
indicating that the claimed inventions were commonly owned or subject to
an obligation of assignment to the same person on the effective filing
date (as defined in Sec.1.109), or on the date of the invention, as
applicable, of the later claimed invention, the Office may require the
applicant or assignee to state whether the claimed inventions were
commonly owned or subject to an obligation of assignment to the same
person on such date, and if not, indicate which named inventor is the
prior inventor, as applicable. Even if the claimed inventions were
commonly owned, or subject to an obligation of assignment to the same
person on the effective filing date (as defined in Sec.1.109), or on
the date of the invention, as applicable, of the later claimed
invention, the patentably indistinct claims may be rejected under the
doctrine of double patenting in view of such commonly owned or assigned
applications or patents under reexamination.
(h) Applications filed before September 16, 2012. Notwithstanding
the requirement in paragraphs (a)(3) and (d)(2) of this section that any
specific reference to a prior-filed application be presented in an
application data sheet (Sec.1.76), this requirement in paragraph
(a)(3) and (d)(2) of this section will be satisfied by the presentation
of such specific reference in the first sentence(s) of the specification
following the title in a nonprovisional application filed under 35
U.S.C. 111(a) before September 16, 2012, or resulting from an
international application filed under 35 U.S.C. 363 before September 16,
2012. The provisions of this paragraph do not apply to any specific
reference submitted for a petition under paragraph (b) of this section
to restore the benefit of a provisional application.
(i) Petitions required in international applications. If a petition
under paragraph (b), (c), or (e) of this section is required in an
international application that was not filed with the United States
Receiving Office and is not a nonprovisional application, then such
petition may be filed in the earliest
[[Page 85]]
nonprovisional application that claims benefit under 35 U.S.C. 120, 121,
365(c), or 386(c) to the international application and will be treated
as having been filed in the international application.
(j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c)
with respect to an international design application is applicable only
to nonprovisional applications, international applications, and
international design applications filed on or after May 13, 2015, and
patents issuing thereon.
(k) Time periods in this section. The time periods set forth in this
section are not extendable, but are subject to 35 U.S.C. 21(b) (and
Sec.1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
[80 FR 17959, Apr. 2, 2015]
Sec.1.79 [Reserved]
The Drawings
Authority: Secs. 1.81 to 1.88 also issued under 35 U.S.C. 113.
Sec.1.81 Drawings required in patent application.
(a) The applicant for a patent is required to furnish a drawing of
the invention where necessary for the understanding of the subject
matter sought to be patented. Since corrections are the responsibility
of the applicant, the original drawing(s) should be retained by the
applicant for any necessary future correction.
(b) Drawings may include illustrations which facilitate an
understanding of the invention (for example, flow sheets in cases of
processes, and diagrammatic views).
(c) Whenever the nature of the subject matter sought to be patented
admits of illustration by a drawing without its being necessary for the
understanding of the subject matter and the applicant has not furnished
such a drawing, the examiner will require its submission within a time
period of not less than two months from the date of the sending of a
notice thereof.
(d) Drawings submitted after the filing date of the application may
not be used to overcome any insufficiency of the specification due to
lack of an enabling disclosure or otherwise inadequate disclosure
therein, or to supplement the original disclosure thereof for the
purpose of interpretation of the scope of any claim.
[43 FR 4015, Jan. 31, 1978, as amended at 53 FR 47808, Nov. 28, 1988; 77
FR 48821, Aug. 14, 2012; 78 FR 62404, Oct. 21, 2013]
Sec.1.83 Content of drawing.
(a) The drawing in a nonprovisional application must show every
feature of the invention specified in the claims. However, conventional
features disclosed in the description and claims, where their detailed
illustration is not essential for a proper understanding of the
invention, should be illustrated in the drawing in the form of a
graphical drawing symbol or a labeled representation (e.g., a labeled
rectangular box). In addition, tables that are included in the
specification and sequences that are included in sequence listings
should not be duplicated in the drawings.
(b) When the invention consists of an improvement on an old machine
the drawing must when possible exhibit, in one or more views, the
improved portion itself, disconnected from the old structure, and also
in another view, so much only of the old structure as will suffice to
show the connection of the invention therewith.
(c) Where the drawings in a nonprovisional application do not comply
with the requirements of paragraphs (a) and (b) of this section, the
examiner shall require such additional illustration within a time period
of not less than two months from the date of the sending of a notice
thereof. Such corrections are subject to the requirements of Sec.
1.81(d).
[31 FR 12923, Oct. 4, 1966, as amended at 43 FR 4015, Jan. 31, 1978; 60
FR 20226, Apr. 25, 1995; 69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct.
21, 2013]
Sec.1.84 Standards for drawings.
(a) Drawings. There are two acceptable categories for presenting
drawings in utility and design patent applications.
(1) Black ink. Black and white drawings are normally required. India
ink, or its equivalent that secures solid black lines, must be used for
drawings; or
(2) Color. Color drawings are permitted in design applications.
Where a
[[Page 86]]
design application contains color drawings, the application must include
the number of sets of color drawings required by paragraph (a)(2)(ii) of
this section and the specification must contain the reference required
by paragraph (a)(2)(iii) of this section. On rare occasions, color
drawings may be necessary as the only practical medium by which to
disclose the subject matter sought to be patented in a utility patent
application. The color drawings must be of sufficient quality such that
all details in the drawings are reproducible in black and white in the
printed patent. Color drawings are not permitted in international
applications (see PCT Rule 11.13). The Office will accept color drawings
in utility patent applications only after granting a petition filed
under this paragraph explaining why the color drawings are necessary.
Any such petition must include the following:
(i) The fee set forth in Sec.1.17(h);
(ii) One (1) set of color drawings if submitted via the Office
electronic filing system or three (3) sets of color drawings if not
submitted via the Office electronic filing system; and
(iii) An amendment to the specification to insert (unless the
specification contains or has been previously amended to contain) the
following language as the first paragraph of the brief description of
the drawings:
The patent or application file contains at least one drawing executed in
color. Copies of this patent or patent application publication with
color drawing(s) will be provided by the Office upon request and payment
of the necessary fee.
(b) Photographs--(1) Black and white. Photographs, including
photocopies of photographs, are not ordinarily permitted in utility and
design patent applications. The Office will accept photographs in
utility and design patent applications, however, if photographs are the
only practicable medium for illustrating the claimed invention. For
example, photographs or photomicrographs of: electrophoresis gels, blots
(e.g., immunological, western, Southern, and northern), autoradiographs,
cell cultures (stained and unstained), histological tissue cross
sections (stained and unstained), animals, plants, in vivo imaging, thin
layer chromatography plates, crystalline structures, and, in a design
patent application, ornamental effects, are acceptable. If the subject
matter of the application admits of illustration by a drawing, the
examiner may require a drawing in place of the photograph. The
photographs must be of sufficient quality so that all details in the
photographs are reproducible in the printed patent.
(2) Color photographs. Color photographs will be accepted in utility
and design patent applications if the conditions for accepting color
drawings and black and white photographs have been satisfied. See
paragraphs (a)(2) and (b)(1) of this section.
(c) Identification of drawings. Identifying indicia should be
provided, and if provided, should include the title of the invention,
inventor's name, and application number, or docket number (if any) if an
application number has not been assigned to the application. If this
information is provided, it must be placed on the front of each sheet
within the top margin. Each drawing sheet submitted after the filing
date of an application must be identified as either ``Replacement
Sheet'' or ``New Sheet'' pursuant to Sec.1.121(d). If a marked-up copy
of any amended drawing figure including annotations indicating the
changes made is filed, such marked-up copy must be clearly labeled as
``Annotated Sheet'' pursuant to Sec.1.121(d)(1).
(d) Graphic forms in drawings. Chemical or mathematical formulae,
tables, and waveforms may be submitted as drawings, and are subject to
the same requirements as drawings. Each chemical or mathematical formula
must be labeled as a separate figure, using brackets when necessary, to
show that information is properly integrated. Each group of waveforms
must be presented as a single figure, using a common vertical axis with
time extending along the horizontal axis. Each individual waveform
discussed in the specification must be identified with a separate letter
designation adjacent to the vertical axis.
(e) Type of paper. Drawings submitted to the Office must be made on
paper which is flexible, strong, white, smooth, non-shiny, and durable.
All sheets must be reasonably free from
[[Page 87]]
cracks, creases, and folds. Only one side of the sheet may be used for
the drawing. Each sheet must be reasonably free from erasures and must
be free from alterations, overwritings, and interlineations. Photographs
must be developed on paper meeting the sheet-size requirements of
paragraph (f) of this section and the margin requirements of paragraph
(g) of this section. See paragraph (b) of this section for other
requirements for photographs.
(f) Size of paper. All drawing sheets in an application must be the
same size. One of the shorter sides of the sheet is regarded as its top.
The size of the sheets on which drawings are made must be:
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or
(2) 21.6 cm. by 27.9 cm. (8\1/2\ by 11 inches).
(g) Margins. The sheets must not contain frames around the sight
(i.e., the usable surface), but should have scan target points (i.e.,
cross-hairs) printed on two catercorner margin corners. Each sheet must
include a top margin of at least 2.5 cm. (1 inch), a left side margin of
at least 2.5 cm. (1 inch), a right side margin of at least 1.5 cm. (\5/
8\ inch), and a bottom margin of at least 1.0 cm. (\3/8\ inch), thereby
leaving a sight no greater than 17.0 cm. by 26.2 cm. on 21.0 cm. by 29.7
cm. (DIN size A4) drawing sheets, and a sight no greater than 17.6 cm.
by 24.4 cm. (6\15/16\ by 9\5/8\ inches) on 21.6 cm. by 27.9 cm. (8\1/2\
by 11 inch) drawing sheets.
(h) Views. The drawing must contain as many views as necessary to
show the invention. The views may be plan, elevation, section, or
perspective views. Detail views of portions of elements, on a larger
scale if necessary, may also be used. All views of the drawing must be
grouped together and arranged on the sheet(s) without wasting space,
preferably in an upright position, clearly separated from one another,
and must not be included in the sheets containing the specifications,
claims, or abstract. Views must not be connected by projection lines and
must not contain center lines. Waveforms of electrical signals may be
connected by dashed lines to show the relative timing of the waveforms.
(1) Exploded views. Exploded views, with the separated parts
embraced by a bracket, to show the relationship or order of assembly of
various parts are permissible. When an exploded view is shown in a
figure which is on the same sheet as another figure, the exploded view
should be placed in brackets.
(2) Partial views. When necessary, a view of a large machine or
device in its entirety may be broken into partial views on a single
sheet, or extended over several sheets if there is no loss in facility
of understanding the view. Partial views drawn on separate sheets must
always be capable of being linked edge to edge so that no partial view
contains parts of another partial view. A smaller scale view should be
included showing the whole formed by the partial views and indicating
the positions of the parts shown. When a portion of a view is enlarged
for magnification purposes, the view and the enlarged view must each be
labeled as separate views.
(i) Where views on two or more sheets form, in effect, a single
complete view, the views on the several sheets must be so arranged that
the complete figure can be assembled without concealing any part of any
of the views appearing on the various sheets.
(ii) A very long view may be divided into several parts placed one
above the other on a single sheet. However, the relationship between the
different parts must be clear and unambiguous.
(3) Sectional views. The plane upon which a sectional view is taken
should be indicated on the view from which the section is cut by a
broken line. The ends of the broken line should be designated by Arabic
or Roman numerals corresponding to the view number of the sectional
view, and should have arrows to indicate the direction of sight.
Hatching must be used to indicate section portions of an object, and
must be made by regularly spaced oblique parallel lines spaced
sufficiently apart to enable the lines to be distinguished without
difficulty. Hatching should not impede the clear reading of the
reference characters and lead lines. If it is not possible to place
reference characters outside the hatched area, the hatching may be
broken off wherever reference characters are inserted. Hatching must be
at a substantial
[[Page 88]]
angle to the surrounding axes or principal lines, preferably 45[deg]. A
cross section must be set out and drawn to show all of the materials as
they are shown in the view from which the cross section was taken. The
parts in cross section must show proper material(s) by hatching with
regularly spaced parallel oblique strokes, the space between strokes
being chosen on the basis of the total area to be hatched. The various
parts of a cross section of the same item should be hatched in the same
manner and should accurately and graphically indicate the nature of the
material(s) that is illustrated in cross section. The hatching of
juxtaposed different elements must be angled in a different way. In the
case of large areas, hatching may be confined to an edging drawn around
the entire inside of the outline of the area to be hatched. Different
types of hatching should have different conventional meanings as regards
the nature of a material seen in cross section.
(4) Alternate position. A moved position may be shown by a broken
line superimposed upon a suitable view if this can be done without
crowding; otherwise, a separate view must be used for this purpose.
(5) Modified forms. Modified forms of construction must be shown in
separate views.
(i) Arrangement of views. One view must not be placed upon another
or within the outline of another. All views on the same sheet should
stand in the same direction and, if possible, stand so that they can be
read with the sheet held in an upright position. If views wider than the
width of the sheet are necessary for the clearest illustration of the
invention, the sheet may be turned on its side so that the top of the
sheet, with the appropriate top margin to be used as the heading space,
is on the right-hand side. Words must appear in a horizontal, left-to-
right fashion when the page is either upright or turned so that the top
becomes the right side, except for graphs utilizing standard scientific
convention to denote the axis of abscissas (of X) and the axis of
ordinates (of Y).
(j) Front page view. The drawing must contain as many views as
necessary to show the invention. One of the views should be suitable for
inclusion on the front page of the patent application publication and
patent as the illustration of the invention. Views must not be connected
by projection lines and must not contain center lines. Applicant may
suggest a single view (by figure number) for inclusion on the front page
of the patent application publication and patent.
(k) Scale. The scale to which a drawing is made must be large enough
to show the mechanism without crowding when the drawing is reduced in
size to two-thirds in reproduction. Indications such as ``actual size''
or ``scale \1/2\'' on the drawings are not permitted since these lose
their meaning with reproduction in a different format.
(l) Character of lines, numbers, and letters. All drawings must be
made by a process which will give them satisfactory reproduction
characteristics. Every line, number, and letter must be durable, clean,
black (except for color drawings), sufficiently dense and dark, and
uniformly thick and well-defined. The weight of all lines and letters
must be heavy enough to permit adequate reproduction. This requirement
applies to all lines however fine, to shading, and to lines representing
cut surfaces in sectional views. Lines and strokes of different
thicknesses may be used in the same drawing where different thicknesses
have a different meaning.
(m) Shading. The use of shading in views is encouraged if it aids in
understanding the invention and if it does not reduce legibility.
Shading is used to indicate the surface or shape of spherical,
cylindrical, and conical elements of an object. Flat parts may also be
lightly shaded. Such shading is preferred in the case of parts shown in
perspective, but not for cross sections. See paragraph (h)(3) of this
section. Spaced lines for shading are preferred. These lines must be
thin, as few in number as practicable, and they must contrast with the
rest of the drawings. As a substitute for shading, heavy lines on the
shade side of objects can be used except where they superimpose on each
other or obscure reference characters. Light should come from the upper
left corner at an angle of 45[deg]. Surface delineations should
preferably be shown by proper shading. Solid black shading areas are
[[Page 89]]
not permitted, except when used to represent bar graphs or color.
(n) Symbols. Graphical drawing symbols may be used for conventional
elements when appropriate. The elements for which such symbols and
labeled representations are used must be adequately identified in the
specification. Known devices should be illustrated by symbols which have
a universally recognized conventional meaning and are generally accepted
in the art. Other symbols which are not universally recognized may be
used, subject to approval by the Office, if they are not likely to be
confused with existing conventional symbols, and if they are readily
identifiable.
(o) Legends. Suitable descriptive legends may be used subject to
approval by the Office, or may be required by the examiner where
necessary for understanding of the drawing. They should contain as few
words as possible.
(p) Numbers, letters, and reference characters. (1) Reference
characters (numerals are preferred), sheet numbers, and view numbers
must be plain and legible, and must not be used in association with
brackets or inverted commas, or enclosed within outlines, e.g.,
encircled. They must be oriented in the same direction as the view so as
to avoid having to rotate the sheet. Reference characters should be
arranged to follow the profile of the object depicted.
(2) The English alphabet must be used for letters, except where
another alphabet is customarily used, such as the Greek alphabet to
indicate angles, wavelengths, and mathematical formulas.
(3) Numbers, letters, and reference characters must measure at least
.32 cm. (\1/8\ inch) in height. They should not be placed in the drawing
so as to interfere with its comprehension. Therefore, they should not
cross or mingle with the lines. They should not be placed upon hatched
or shaded surfaces. When necessary, such as indicating a surface or
cross section, a reference character may be underlined and a blank space
may be left in the hatching or shading where the character occurs so
that it appears distinct.
(4) The same part of an invention appearing in more than one view of
the drawing must always be designated by the same reference character,
and the same reference character must never be used to designate
different parts.
(5) Reference characters not mentioned in the description shall not
appear in the drawings. Reference characters mentioned in the
description must appear in the drawings.
(q) Lead lines. Lead lines are those lines between the reference
characters and the details referred to. Such lines may be straight or
curved and should be as short as possible. They must originate in the
immediate proximity of the reference character and extend to the feature
indicated. Lead lines must not cross each other. Lead lines are required
for each reference character except for those which indicate the surface
or cross section on which they are placed. Such a reference character
must be underlined to make it clear that a lead line has not been left
out by mistake. Lead lines must be executed in the same way as lines in
the drawing. See paragraph (l) of this section.
(r) Arrows. Arrows may be used at the ends of the lines, provided
that their meaning is clear, as follows:
(1) On a lead line, a freestanding arrow to indicate the entire
section towards which it points;
(2) On a lead line, an arrow touching a line to indicate the surface
shown by the line looking along the direction of the arrow; or
(3) To show the direction of movement.
(s) Copyright or Mask Work Notice. A copyright or mask work notice
may appear in the drawing, but must be placed within the sight of the
drawing immediately below the figure representing the copyright or mask
work material and be limited to letters having a print size of .32 cm.
to .64 cm. (\1/8\ to \1/4\ inches) high. The content of the notice must
be limited to only those elements provided for by law. For example,
``(copyright) 1983 John Doe'' (17 U.S.C. 401) and ``*M* John
Doe'' (17 U.S.C. 909) would be properly limited and, under current
statutes, legally sufficient notices of copyright and mask work,
respectively. Inclusion of a copyright or mask work
[[Page 90]]
notice will be permitted only if the authorization language set forth in
Sec.1.71(e) is included at the beginning (preferably as the first
paragraph) of the specification.
(t) Numbering of sheets of drawings. The sheets of drawings should
be numbered in consecutive Arabic numerals, starting with 1, within the
sight as defined in paragraph (g) of this section. These numbers, if
present, must be placed in the middle of the top of the sheet, but not
in the margin. The numbers can be placed on the right-hand side if the
drawing extends too close to the middle of the top edge of the usable
surface. The drawing sheet numbering must be clear and larger than the
numbers used as reference characters to avoid confusion. The number of
each sheet should be shown by two Arabic numerals placed on either side
of an oblique line, with the first being the sheet number, and the
second being the total number of sheets of drawings, with no other
marking.
(u) Numbering of views. (1) The different views must be numbered in
consecutive Arabic numerals, starting with 1, independent of the
numbering of the sheets and, if possible, in the order in which they
appear on the drawing sheet(s). Partial views intended to form one
complete view, on one or several sheets, must be identified by the same
number followed by a capital letter. View numbers must be preceded by
the abbreviation ``FIG.'' Where only a single view is used in an
application to illustrate the claimed invention, it must not be numbered
and the abbreviation ``FIG.'' must not appear.
(2) Numbers and letters identifying the views must be simple and
clear and must not be used in association with brackets, circles, or
inverted commas. The view numbers must be larger than the numbers used
for reference characters.
(v) Security markings. Authorized security markings may be placed on
the drawings provided they are outside the sight, preferably centered in
the top margin.
(w) Corrections. Any corrections on drawings submitted to the Office
must be durable and permanent.
(x) Holes. No holes should be made by applicant in the drawing
sheets.
(y) Types of drawings. See Sec.1.152 for design drawings, Sec.
1.1026 for international design reproductions, Sec.1.165 for plant
drawings, and Sec.1.173(a)(2) for reissue drawings.
[58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as
amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR
54669, Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000; 69 FR 56541, Sept.
21, 2004; 70 FR 3891, Jan. 27, 2005; 78 FR 11057, Feb. 14, 2013; 80 FR
17962, Apr. 2, 2015]
Sec.1.85 Corrections to drawings.
(a) A utility or plant application will not be placed on the files
for examination until objections to the drawings have been corrected.
Except as provided in Sec.1.215(c), any patent application publication
will not include drawings filed after the application has been placed on
the files for examination. Unless applicant is otherwise notified in an
Office action, objections to the drawings in a utility or plant
application will not be held in abeyance, and a request to hold
objections to the drawings in abeyance will not be considered a bona
fide attempt to advance the application to final action (Sec.
1.135(c)). If a drawing in a design application meets the requirements
of Sec.1.84(e), (f), and (g) and is suitable for reproduction, but is
not otherwise in compliance with Sec.1.84, the drawing may be admitted
for examination.
(b) The Office will not release drawings for purposes of correction.
If corrections are necessary, new corrected drawings must be submitted
within the time set by the Office.
(c) If a corrected drawing is required or if a drawing does not
comply with Sec.1.84 or an amended drawing submitted under Sec.
1.121(d) in a nonprovisional international design application does not
comply with Sec.1.1026 at the time an application is allowed, the
Office may notify the applicant in a notice of allowability and set a
three-month period of time from the mail date of the notice of
allowability within which the applicant must file a corrected drawing in
compliance with Sec.1.84 or 1.1026, as applicable, to avoid
abandonment. This
[[Page 91]]
time period is not extendable under Sec.1.136 (see Sec.1.136(c)).
[65 FR 54670, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000;
69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct. 21, 2013; 80 FR 17962,
Apr. 2, 2015]
Sec.1.88 [Reserved]
Models, Exhibits, Specimens
Authority: Secs. 1.91 to 1.95 also issued under 35 U.S.C. 114.
Sec.1.91 Models or exhibits not generally admitted as part of
application or patent.
(a) A model or exhibit will not be admitted as part of the record of
an application unless it:
(1) Substantially conforms to the requirements of Sec.1.52 or
Sec.1.84;
(2) Is specifically required by the Office; or
(3) Is filed with a petition under this section including:
(i) The fee set forth in Sec.1.17(h); and
(ii) An explanation of why entry of the model or exhibit in the file
record is necessary to demonstrate patentability.
(b) Notwithstanding the provisions of paragraph (a) of this section,
a model, working model, or other physical exhibit may be required by the
Office if deemed necessary for any purpose in examination of the
application.
(c) Unless the model or exhibit substantially conforms to the
requirements of Sec.1.52 or Sec.1.84 under paragraph (a)(1) of this
section, it must be accompanied by photographs that show multiple views
of the material features of the model or exhibit and that substantially
conform to the requirements of Sec.1.84.
[62 FR 53190, Oct. 10, 1997, as amended at 65 FR 54670, Sept. 8, 2000;
69 FR 56541, Sept. 21, 2004]
Sec.1.92 [Reserved]
Sec.1.93 Specimens.
When the invention relates to a composition of matter, the applicant
may be required to furnish specimens of the composition, or of its
ingredients or intermediates, for the purpose of inspection or
experiment.
Sec.1.94 Return of models, exhibits or specimens.
(a) Models, exhibits, or specimens may be returned to the applicant
if no longer necessary for the conduct of business before the Office.
When applicant is notified that a model, exhibit, or specimen is no
longer necessary for the conduct of business before the Office and will
be returned, applicant must arrange for the return of the model,
exhibit, or specimen at the applicant's expense. The Office will dispose
of perishables without notice to applicant unless applicant notifies the
Office upon submission of the model, exhibit or specimen that a return
is desired and makes arrangements for its return promptly upon
notification by the Office that the model, exhibit or specimen is no
longer necessary for the conduct of business before the Office.
(b) Applicant is responsible for retaining the actual model,
exhibit, or specimen for the enforceable life of any patent resulting
from the application. The provisions of this paragraph do not apply to a
model or exhibit that substantially conforms to the requirements of
Sec.1.52 or Sec.1.84, where the model or exhibit has been described
by photographs that substantially conform to Sec.1.84, or where the
model, exhibit or specimen is perishable.
(c) Where applicant is notified, pursuant to paragraph (a) of this
section, of the need to arrange for return of a model, exhibit or
specimen, applicant must arrange for the return within the period set in
such notice, to avoid disposal of the model, exhibit or specimen by the
Office. Extensions of time are available under Sec.1.136, except in
the case of perishables. Failure to establish that the return of the
item has been arranged for within the period set or failure to have the
item removed from Office storage within a reasonable amount of time
notwithstanding any arrangement for return, will permit the Office to
dispose of the model, exhibit or specimen.
[69 FR 56542, Sept. 21, 2004]
Sec.1.95 Copies of exhibits.
Copies of models or other physical exhibits will not ordinarily be
furnished by the Office, and any model or
[[Page 92]]
exhibit in an application or patent shall not be taken from the Office
except in the custody of an employee of the Office specially authorized
by the Director.
Sec.1.96 Submission of computer program listings.
(a) General. Descriptions of the operation and general content of
computer program listings should appear in the description portion of
the specification. A computer program listing for the purpose of this
section is defined as a printout that lists in appropriate sequence the
instructions, routines, and other contents of a program for a computer.
The program listing may be either in machine or machine-independent
(object or source) language which will cause a computer to perform a
desired procedure or task such as solve a problem, regulate the flow of
work in a computer, or control or monitor events. Computer program
listings may be submitted in patent applications as set forth in
paragraphs (b) and (c) of this section.
(b) Material which will be printed in the patent: If the computer
program listing is contained in 300 lines or fewer, with each line of 72
characters or fewer, it may be submitted either as drawings or as part
of the specification.
(1) Drawings. If the listing is submitted as drawings, it must be
submitted in the manner and complying with the requirements for drawings
as provided in Sec.1.84. At least one figure numeral is required on
each sheet of drawing.
(2) Specification. (i) If the listing is submitted as part of the
specification, it must be submitted in accordance with the provisions of
Sec.1.52.
(ii) Any listing having more than 60 lines of code that is submitted
as part of the specification must be positioned at the end of the
description but before the claims. Any amendment must be made by way of
submission of a substitute sheet.
(c) As an appendix which will not be printed: Any computer program
listing may, and any computer program listing having over 300 lines (up
to 72 characters per line) must, be submitted on a compact disc in
compliance with Sec.1.52(e). A compact disc containing such a computer
program listing is to be referred to as a ``computer program listing
appendix.'' The ``computer program listing appendix'' will not be part
of the printed patent. The specification must include a reference to the
``computer program listing appendix'' at the location indicated in Sec.
1.77(b)(5).
(1) Multiple computer program listings for a single application may
be placed on a single compact disc. Multiple compact discs may be
submitted for a single application if necessary. A separate compact disc
is required for each application containing a computer program listing
that must be submitted on a ``computer program listing appendix.''
(2) The ``computer program listing appendix'' must be submitted on a
compact disc that complies with Sec.1.52(e) and the following
specifications (no other format shall be allowed):
(i) Computer Compatibility: IBM PC/XT/AT, or compatibles, or Apple
Macintosh;
(ii) Operating System Compatibility: MS-DOS, MS-Windows, Unix, or
Macintosh;
(iii) Line Terminator: ASCII Carriage Return plus ASCII Line Feed;
(iv) Control Codes: the data must not be dependent on control
characters or codes which are not defined in the ASCII character set;
and
(v) Compression: uncompressed data.
[61 FR 42804, Aug. 19, 1996, as amended at 65 FR 54670, Sept. 8, 2000;
70 FR 54266, Sept. 14, 2005]
Information Disclosure Statement
Sec.1.97 Filing of information disclosure statement.
(a) In order for an applicant for a patent or for a reissue of a
patent to have an information disclosure statement in compliance with
Sec.1.98 considered by the Office during the pendency of the
application, the information disclosure statement must satisfy one of
paragraphs (b), (c), or (d) of this section.
(b) An information disclosure statement shall be considered by the
Office if filed by the applicant within any one of the following time
periods:
(1) Within three months of the filing date of a national application
other
[[Page 93]]
than a continued prosecution application under Sec.1.53(d);
(2) Within three months of the date of entry of the national stage
as set forth in Sec.1.491 in an international application;
(3) Before the mailing of a first Office action on the merits;
(4) Before the mailing of a first Office action after the filing of
a request for continued examination under Sec.1.114; or
(5) Within three months of the date of publication of the
international registration under Hague Agreement Article 10(3) in an
international design application.
(c) An information disclosure statement shall be considered by the
Office if filed after the period specified in paragraph (b) of this
section, provided that the information disclosure statement is filed
before the mailing date of any of a final action under Sec.1.113, a
notice of allowance under Sec.1.311, or an action that otherwise
closes prosecution in the application, and it is accompanied by one of:
(1) The statement specified in paragraph (e) of this section; or
(2) The fee set forth in Sec.1.17(p).
(d) An information disclosure statement shall be considered by the
Office if filed by the applicant after the period specified in paragraph
(c) of this section, provided that the information disclosure statement
is filed on or before payment of the issue fee and is accompanied by:
(1) The statement specified in paragraph (e) of this section; and
(2) The fee set forth in Sec.1.17(p).
(e) A statement under this section must state either:
(1) That each item of information contained in the information
disclosure statement was first cited in any communication from a foreign
patent office in a counterpart foreign application not more than three
months prior to the filing of the information disclosure statement; or
(2) That no item of information contained in the information
disclosure statement was cited in a communication from a foreign patent
office in a counterpart foreign application, and, to the knowledge of
the person signing the certification after making reasonable inquiry, no
item of information contained in the information disclosure statement
was known to any individual designated in Sec.1.56(c) more than three
months prior to the filing of the information disclosure statement.
(f) No extensions of time for filing an information disclosure
statement are permitted under Sec.1.136. If a bona fide attempt is
made to comply with Sec.1.98, but part of the required content is
inadvertently omitted, additional time may be given to enable full
compliance.
(g) An information disclosure statement filed in accordance with
this section shall not be construed as a representation that a search
has been made.
(h) The filing of an information disclosure statement shall not be
construed to be an admission that the information cited in the statement
is, or is considered to be, material to patentability as defined in
Sec.1.56(b).
(i) If an information disclosure statement does not comply with
either this section or Sec.1.98, it will be placed in the file but
will not be considered by the Office.
[57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60
FR 20226, Apr. 25, 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, Oct.
10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR 54670, Sept. 8, 2000; 80 FR
17963, Apr. 2, 2015]
Sec.1.98 Content of information disclosure statement.
(a) Any information disclosure statement filed under Sec.1.97
shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3)
of this section.
(1) A list of all patents, publications, applications, or other
information submitted for consideration by the Office. U.S. patents and
U.S. patent application publications must be listed in a section
separately from citations of other documents. Each page of the list must
include:
(i) The application number of the application in which the
information disclosure statement is being submitted;
(ii) A column that provides a space, next to each document to be
considered, for the examiner's initials; and
(iii) A heading that clearly indicates that the list is an
information disclosure statement.
(2) A legible copy of:
[[Page 94]]
(i) Each foreign patent;
(ii) Each publication or that portion which caused it to be listed,
other than U.S. patents and U.S. patent application publications unless
required by the Office;
(iii) For each cited pending unpublished U.S. application, the
application specification including the claims, and any drawing of the
application, or that portion of the application which caused it to be
listed including any claims directed to that portion; and
(iv) All other information or that portion which caused it to be
listed.
(3)(i) A concise explanation of the relevance, as it is presently
understood by the individual designated in Sec.1.56(c) most
knowledgeable about the content of the information, of each patent,
publication, or other information listed that is not in the English
language. The concise explanation may be either separate from
applicant's specification or incorporated therein.
(ii) A copy of the translation if a written English-language
translation of a non-English-language document, or portion thereof, is
within the possession, custody, or control of, or is readily available
to any individual designated in Sec.1.56(c).
(b)(1) Each U.S. patent listed in an information disclosure
statement must be identified by inventor, patent number, and issue date.
(2) Each U.S. patent application publication listed in an
information disclosure statement shall be identified by applicant,
patent application publication number, and publication date.
(3) Each U.S. application listed in an information disclosure
statement must be identified by the inventor, application number, and
filing date.
(4) Each foreign patent or published foreign patent application
listed in an information disclosure statement must be identified by the
country or patent office which issued the patent or published the
application, an appropriate document number, and the publication date
indicated on the patent or published application.
(5) Each publication listed in an information disclosure statement
must be identified by publisher, author (if any), title, relevant pages
of the publication, date, and place of publication.
(c) When the disclosures of two or more patents or publications
listed in an information disclosure statement are substantively
cumulative, a copy of one of the patents or publications as specified in
paragraph (a) of this section may be submitted without copies of the
other patents or publications, provided that it is stated that these
other patents or publications are cumulative.
(d) A copy of any patent, publication, pending U.S. application or
other information, as specified in paragraph (a) of this section, listed
in an information disclosure statement is required to be provided, even
if the patent, publication, pending U.S. application or other
information was previously submitted to, or cited by, the Office in an
earlier application, unless:
(1) The earlier application is properly identified in the
information disclosure statement and is relied on for an earlier
effective filing date under 35 U.S.C. 120; and
(2) The information disclosure statement submitted in the earlier
application complies with paragraphs (a) through (c) of this section.
[65 FR 54671, Sept. 8, 2000, as amended at 65 FR 57055, Sept. 20, 2000;
68 FR 38628, June 30, 2003; 69 FR 56542, Sept. 21, 2004]
Sec.1.99 [Reserved]
Examination of Applications
Authority: Secs. 1.101 to 1.108 also issued under 35 U.S.C. 131,
132.
Sec.1.101 [Reserved]
Sec.1.102 Advancement of examination.
(a) Applications will not be advanced out of turn for examination or
for further action except as provided by this part, or upon order of the
Director to expedite the business of the Office, or upon filing of a
request under paragraph (b) or (e) of this section or upon filing a
petition or request under paragraph (c) or (d) of this section with a
showing which, in the opinion of the Director, will justify so advancing
it.
(b) Applications wherein the inventions are deemed of peculiar
importance to some branch of the public
[[Page 95]]
service and the head of some department of the Government requests
immediate action for that reason, may be advanced for examination.
(c) A petition to make an application special may be filed without a
fee if the basis for the petition is:
(1) The applicant's age or health; or
(2) That the invention will materially:
(i) Enhance the quality of the environment;
(ii) Contribute to the development or conservation of energy
resources; or
(iii) Contribute to countering terrorism.
(d) A petition to make an application special on grounds other than
those referred to in paragraph (c) of this section must be accompanied
by the fee set forth in Sec.1.17(h).
(e) A request for prioritized examination under this paragraph (e)
must comply with the requirements of this paragraph (e) and be
accompanied by the prioritized examination fee set forth in Sec.
1.17(c), the processing fee set forth in Sec.1.17(i), and if not
already paid, the publication fee set forth in Sec.1.18(d). An
application for which prioritized examination has been requested may not
contain or be amended to contain more than four independent claims, more
than thirty total claims, or any multiple dependent claim. Prioritized
examination under this paragraph (e) will not be accorded to
international applications that have not entered the national stage
under 35 U.S.C. 371, design applications, reissue applications,
provisional applications, or reexamination proceedings. A request for
prioritized examination must also comply with the requirements of
paragraph (e)(1) or (2) of this section. No more than 12,000 requests
for such prioritized examination will be accepted in any fiscal year.
(1) A request for prioritized examination may be filed with an
original utility or plant nonprovisional application under 35 U.S.C.
111(a). The application must include a specification as prescribed by 35
U.S.C. 112 including at least one claim, a drawing when necessary, and
the inventor's oath or declaration on filing, except that the filing of
an inventor's oath or declaration may be postponed in accordance with
Sec.1.53(f)(3) if an application data sheet meeting the conditions
specified in Sec.1.53(f)(3)(i) is present upon filing. If the
application is a utility application, it must be filed via the Office's
electronic filing system and include the filing fee under Sec.1.16(a),
search fee under Sec.1.16(k), and examination fee under Sec.1.16(o)
upon filing. If the application is a plant application, it must include
the filing fee under Sec.1.16(c), search fee under Sec.1.16(m), and
examination fee under Sec.1.16(q) upon filing. The request for
prioritized examination in compliance with this paragraph must be
present upon filing of the application, except that the applicant may
file an amendment to cancel any independent claims in excess of four,
any total claims in excess of thirty, and any multiple dependent claim
not later than one month from a first decision on the request for
prioritized examination. This one-month time period is not extendable.
(2) A request for prioritized examination may be filed with or after
a request for continued examination in compliance with Sec.1.114. If
the application is a utility application, the request must be filed via
the Office's electronic filing system. The request must be filed before
the mailing of the first Office action after the filing of the request
for continued examination under Sec.1.114. Only a single such request
for prioritized examination under this paragraph may be granted in an
application.
(36 U.S.C. 6; 15 U.S.C. 1113, 1123)
[24 FR 10332, Dec. 22, 1959, as amended at 47 FR 41276, Sept. 17, 1982;
54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, Oct.
10, 1997; 65 FR 54671, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 76 FR
59054, Sept. 23, 2011; 76 FR 78569, Dec. 19, 2011; 79 FR 12390, Mar. 5,
2014; 84 FR 45910, Sept. 3, 2019]
Sec.1.103 Suspension of action by the Office.
(a) Suspension for cause. On request of the applicant, the Office
may grant a suspension of action by the Office under this paragraph for
good and sufficient cause. The Office will not suspend action if a reply
by applicant to an Office action is outstanding. Any petition for
suspension of action under this paragraph must specify a period of
[[Page 96]]
suspension not exceeding six months. Any petition for suspension of
action under this paragraph must also include:
(1) A showing of good and sufficient cause for suspension of action;
and
(2) The fee set forth in Sec.1.17(g), unless such cause is the
fault of the Office.
(b) Limited suspension of action in a continued prosecution
application (CPA) filed under Sec.1.53(d). On request of the
applicant, the Office may grant a suspension of action by the Office
under this paragraph in a continued prosecution application filed under
Sec.1.53(d) for a period not exceeding three months. Any request for
suspension of action under this paragraph must be filed with the request
for an application filed under Sec.1.53(d), specify the period of
suspension, and include the processing fee set forth in Sec.1.17(i).
(c) Limited suspension of action after a request for continued
examination (RCE) under Sec.1.114. On request of the applicant, the
Office may grant a suspension of action by the Office under this
paragraph after the filing of a request for continued examination in
compliance with Sec.1.114 for a period not exceeding three months. Any
request for suspension of action under this paragraph must be filed with
the request for continued examination under Sec.1.114, specify the
period of suspension, and include the processing fee set forth in Sec.
1.17(i).
(d) Deferral of examination. On request of the applicant, the Office
may grant a deferral of examination under the conditions specified in
this paragraph for a period not extending beyond three years from the
earliest filing date for which a benefit is claimed under title 35,
United States Code. A request for deferral of examination under this
paragraph must include the publication fee set forth in Sec.1.18(d)
and the processing fee set forth in Sec.1.17(i). A request for
deferral of examination under this paragraph will not be granted unless:
(1) The application is an original utility or plant application
filed under Sec.1.53(b) or resulting from entry of an international
application into the national stage after compliance with Sec.1.495;
(2) The applicant has not filed a nonpublication request under Sec.
1.213(a), or has filed a request under Sec.1.213(b) to rescind a
previously filed nonpublication request;
(3) The application is in condition for publication as provided in
Sec.1.211(c); and
(4) The Office has not issued either an Office action under 35
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151.
(e) Notice of suspension on initiative of the Office. The Office
will notify applicant if the Office suspends action by the Office on an
application on its own initiative.
(f) Suspension of action for public safety or defense. The Office
may suspend action by the Office by order of the Director if the
following conditions are met:
(1) The application is owned by the United States;
(2) Publication of the invention may be detrimental to the public
safety or defense; and
(3) The appropriate department or agency requests such suspension.
[65 FR 50104, Aug. 16, 2000, as amended at 65 FR 57056, Sept. 20, 2000;
67 FR 523, Jan. 4, 2002; 69 FR 49999, Aug. 12, 2004; 69 FR 56542, Sept.
21, 2004; 78 FR 11057, Feb. 14, 2013]
Sec.1.104 Nature of examination.
(a) Examiner's action. (1) On taking up an application for
examination or a patent in a reexamination proceeding, the examiner
shall make a thorough study thereof and shall make a thorough
investigation of the available prior art relating to the subject matter
of the claimed invention. The examination shall be complete with respect
both to compliance of the application or patent under reexamination with
the applicable statutes and rules and to the patentability of the
invention as claimed, as well as with respect to matters of form, unless
otherwise indicated.
(2) The applicant, or in the case of a reexamination proceeding,
both the patent owner and the requester, will be notified of the
examiner's action. The reasons for any adverse action or any objection
or requirement will be stated in an Office action and such information
or references will be given as may be useful in aiding the applicant, or
in the case of a reexamination proceeding the patent owner, to judge the
propriety of continuing the prosecution.
[[Page 97]]
(3) An international-type search will be made in all national
applications filed on and after June 1, 1978.
(4) Any national application may also have an international-type
search report prepared thereon at the time of the national examination
on the merits, upon specific written request therefor and payment of the
international-type search report fee set forth in Sec.1.21(e). The
Patent and Trademark Office does not require that a formal report of an
international-type search be prepared in order to obtain a search fee
refund in a later filed international application.
(b) Completeness of examiner's action. The examiner's action will be
complete as to all matters, except that in appropriate circumstances,
such as misjoinder of invention, fundamental defects in the application,
and the like, the action of the examiner may be limited to such matters
before further action is made. However, matters of form need not be
raised by the examiner until a claim is found allowable.
(c) Rejection of claims. (1) If the invention is not considered
patentable, or not considered patentable as claimed, the claims, or
those considered unpatentable will be rejected.
(2) In rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.
(3) In rejecting claims the examiner may rely upon admissions by the
applicant, or the patent owner in a reexamination proceeding, as to any
matter affecting patentability and, insofar as rejections in
applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.
(4)(i) Subject matter which would otherwise qualify as prior art
under 35 U.S.C. 102(a)(2) and a claimed invention will be treated as
commonly owned for purposes of 35 U.S.C. 102(b)(2)(C) if the applicant
or patent owner provides a statement to the effect that the subject
matter and the claimed invention, not later than the effective filing
date of the claimed invention, were owned by the same person or subject
to an obligation of assignment to the same person.
(ii) Subject matter which would otherwise qualify as prior art under
35 U.S.C. 102(a)(2) and a claimed invention will be treated as commonly
owned for purposes of 35 U.S.C. 102(b)(2)(C) on the basis of a joint
research agreement under 35 U.S.C. 102(c) if:
(A) The applicant or patent owner provides a statement to the effect
that the subject matter was developed and the claimed invention was made
by or on behalf of one or more parties to a joint research agreement,
within the meaning of 35 U.S.C. 100(h) and Sec.1.9(e), that was in
effect on or before the effective filing date of the claimed invention,
and the claimed invention was made as a result of activities undertaken
within the scope of the joint research agreement; and
(B) The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint research
agreement.
(5)(i) Subject matter which qualifies as prior art under 35 U.S.C.
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed
invention in an application filed on or after November 29, 1999, or any
patent issuing thereon, in an application filed before November 29,
1999, but pending on December 10, 2004, or any patent issuing thereon,
or in any patent granted on or after December 10, 2004, will be treated
as commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to
March 16, 2013, if the applicant or patent owner provides a statement to
the effect that the subject matter and the claimed invention, at the
time the claimed invention was made, were owned by the same person or
subject to an obligation of assignment to the same person.
(ii) Subject matter which qualifies as prior art under 35 U.S.C.
102(e), (f), or (g) in effect prior to March 16, 2013, and a claimed
invention in an application pending on or after December 10, 2004, or in
any patent granted on or after December 10, 2004, will be treated as
[[Page 98]]
commonly owned for purposes of 35 U.S.C. 103(c) in effect prior to March
16, 2013, on the basis of a joint research agreement under 35 U.S.C.
103(c)(2) in effect prior to March 16, 2013, if:
(A) The applicant or patent owner provides a statement to the effect
that the subject matter and the claimed invention were made by or on
behalf of the parties to a joint research agreement, within the meaning
of 35 U.S.C. 100(h) and Sec.1.9(e), which was in effect on or before
the date the claimed invention was made, and that the claimed invention
was made as a result of activities undertaken within the scope of the
joint research agreement; and
(B) The application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint research
agreement.
(6) Patents issued prior to December 10, 2004, from applications
filed prior to November 29, 1999, are subject to 35 U.S.C. 103(c) in
effect on November 28, 1999.
(d) Citation of references. (1) If domestic patents are cited by the
examiner, their numbers and dates, and the names of the patentees will
be stated. If domestic patent application publications are cited by the
examiner, their publication number, publication date, and the names of
the applicants will be stated. If foreign published applications or
patents are cited, their nationality or country, numbers and dates, and
the names of the patentees will be stated, and such other data will be
furnished as may be necessary to enable the applicant, or in the case of
a reexamination proceeding, the patent owner, to identify the published
applications or patents cited. In citing foreign published applications
or patents, in case only a part of the document is involved, the
particular pages and sheets containing the parts relied upon will be
identified. If printed publications are cited, the author (if any),
title, date, pages or plates, and place of publication, or place where a
copy can be found, will be given.
(2) When a rejection in an application is based on facts within the
personal knowledge of an employee of the Office, the data shall be as
specific as possible, and the reference must be supported, when called
for by the applicant, by the affidavit of such employee, and such
affidavit shall be subject to contradiction or explanation by the
affidavits of the applicant and other persons.
(e) Reasons for allowance. If the examiner believes that the record
of the prosecution as a whole does not make clear his or her reasons for
allowing a claim or claims, the examiner may set forth such reasoning.
The reasons shall be incorporated into an Office action rejecting other
claims of the application or patent under reexamination or be the
subject of a separate communication to the applicant or patent owner.
The applicant or patent owner may file a statement commenting on the
reasons for allowance within such time as may be specified by the
examiner. Failure by the examiner to respond to any statement commenting
on reasons for allowance does not give rise to any implication.
[62 FR 53191, Oct. 10, 1997, as amended at 65 FR 14872, Mar. 20, 2000;
65 FR 54671, Sept. 8, 2000; 65 FR 57056, Sept. 20, 2000; 70 FR 1823,
Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 72 FR 46841, Aug. 21, 2007;
74 FR 52690, Oct. 14, 2009; 78 FR 11057, Feb. 14, 2013]
Sec.1.105 Requirements for information.
(a)(1) In the course of examining or treating a matter in a pending
or abandoned application, in a patent, or in a reexamination proceeding,
including a reexamination proceeding ordered as a result of a
supplemental examination proceeding, the examiner or other Office
employee may require the submission, from individuals identified under
Sec.1.56(c), or any assignee, of such information as may be reasonably
necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant
commercial database known to any of the inventors that could be searched
for a particular aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so,
what was searched.
(iii) Related information: A copy of any non-patent literature,
published application, or patent (U.S. or foreign),
[[Page 99]]
by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any non-patent
literature, published application, or patent (U.S. or foreign) that was
used to draft the application.
(v) Information used in invention process: A copy of any non-patent
literature, published application, or patent (U.S. or foreign) that was
used in the invention process, such as by designing around or providing
a solution to accomplish an invention result.
(vi) Improvements: Where the claimed invention is an improvement,
identification of what is being improved.
(vii) In use: Identification of any use of the claimed invention
known to any of the inventors at the time the application was filed
notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical
information known to applicant concerning the related art, the
disclosure, the claimed subject matter, other factual information
pertinent to patentability, or concerning the accuracy of the examiner's
stated interpretation of such items.
(2) Requirements for factual information known to applicant may be
presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking
applicant's factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or
disagree.
(3) Any reply to a requirement for information pursuant to this
section that states either that the information required to be submitted
is unknown to or is not readily available to the party or parties from
which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this
section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information
under this section will be governed by Sec. Sec.1.135 and 1.136.
[65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004;
72 FR 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009; 77 FR 48821,
Aug. 14, 2012; 80 FR 17963, Apr. 2, 2015]
Sec. Sec.1.106-1.108 [Reserved]
Sec.1.109 Effective filing date of a claimed invention under the
Leahy-Smith America Invents Act.
(a) The effective filing date for a claimed invention in a patent or
application for patent, other than in a reissue application or reissued
patent, is the earliest of:
(1) The actual filing date of the patent or the application for the
patent containing a claim to the invention; or
(2) The filing date of the earliest application for which the patent
or application is entitled, as to such invention, to a right of priority
or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121,
365, or 386.
(b) The effective filing date for a claimed invention in a reissue
application or a reissued patent is determined by deeming the claim to
the invention to have been contained in the patent for which reissue was
sought.
[80 FR 17963, Apr. 2, 2015]
Sec.1.110 Inventorship and ownership of the subject matter of
individual claims.
When one or more joint inventors are named in an application or
patent, the Office may require an applicant or patentee to identify the
inventorship and ownership or obligation to assign ownership, of each
claimed invention on its effective filing date (as defined in Sec.
1.109) or on its date of invention, as applicable, when necessary for
purposes of an Office proceeding. The Office may also require an
applicant or patentee to identify the invention dates of the subject
matter of each claim when necessary for purposes of an Office
proceeding.
[78 FR 11058, Feb. 14, 2013]
Action by Applicant and Further Consideration
Authority: Secs. 1.111 to 1.113 also issued under 35 U.S.C. 132.
[[Page 100]]
Sec.1.111 Reply by applicant or patent owner to a non-final Office
action.
(a)(1) If the Office action after the first examination (Sec.
1.104) is adverse in any respect, the applicant or patent owner, if he
or she persists in his or her application for a patent or reexamination
proceeding, must reply and request reconsideration or further
examination, with or without amendment. See Sec. Sec.1.135 and 1.136
for time for reply to avoid abandonment.
(2) Supplemental replies. (i) A reply that is supplemental to a
reply that is in compliance with Sec.1.111(b) will not be entered as a
matter of right except as provided in paragraph (a)(2)(ii) of this
section. The Office may enter a supplemental reply if the supplemental
reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was
filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply
is filed within the period during which action by the Office is
suspended under Sec.1.103(a) or (c).
(b) In order to be entitled to reconsideration or further
examination, the applicant or patent owner must reply to the Office
action. The reply by the applicant or patent owner must be reduced to a
writing which distinctly and specifically points out the supposed errors
in the examiner's action and must reply to every ground of objection and
rejection in the prior Office action. The reply must present arguments
pointing out the specific distinctions believed to render the claims,
including any newly presented claims, patentable over any applied
references. If the reply is with respect to an application, a request
may be made that objections or requirements as to form not necessary to
further consideration of the claims be held in abeyance until allowable
subject matter is indicated. The applicant's or patent owner's reply
must appear throughout to be a bona fide attempt to advance the
application or the reexamination proceeding to final action. A general
allegation that the claims define a patentable invention without
specifically pointing out how the language of the claims patentably
distinguishes them from the references does not comply with the
requirements of this section.
(c) In amending in reply to a rejection of claims in an application
or patent under reexamination, the applicant or patent owner must
clearly point out the patentable novelty which he or she thinks the
claims present in view of the state of the art disclosed by the
references cited or the objections made. The applicant or patent owner
must also show how the amendments avoid such references or objections.
[46 FR 29182, May 29, 1981, as amended at 62 FR 53192, Oct. 10, 1997; 65
FR 54672, Sept. 8, 2000; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, Jan.
27, 2005]
Sec.1.112 Reconsideration before final action.
After reply by applicant or patent owner (Sec.1.111 or Sec.
1.945) to a non-final action and any comments by an inter partes
reexamination requester (Sec.1.947), the application or the patent
under reexamination will be reconsidered and again examined. The
applicant, or in the case of a reexamination proceeding the patent owner
and any third party requester, will be notified if claims are rejected,
objections or requirements made, or decisions favorable to patentability
are made, in the same manner as after the first examination (Sec.
1.104). Applicant or patent owner may reply to such Office action in the
same manner provided in Sec.1.111 or Sec.1.945, with or without
amendment, unless such Office action indicates that it is made final
(Sec.1.113) or an appeal (Sec.41.31 of this title) has been taken
(Sec.1.116), or in an inter partes reexamination, that it is an action
closing prosecution (Sec.1.949) or a right of appeal notice (Sec.
1.953).
[69 FR 49999, Aug. 12, 2004]
Sec.1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicant's, or for ex parte reexaminations
[[Page 101]]
filed under Sec.1.510, patent owner's reply is limited to appeal in
the case of rejection of any claim (Sec.41.31 of this title), or to
amendment as specified in Sec.1.114 or Sec.1.116. Petition may be
taken to the Director in the case of objections or requirements not
involved in the rejection of any claim (Sec.1.181). Reply to a final
rejection or action must comply with Sec.1.114 or paragraph (c) of
this section. For final actions in an inter partes reexamination filed
under Sec.1.913, see Sec.1.953.
(b) In making such final rejection, the examiner shall repeat or
state all grounds of rejection then considered applicable to the claims
in the application, clearly stating the reasons in support thereof.
(c) Reply to a final rejection or action must include cancellation
of, or appeal from the rejection of, each rejected claim. If any claim
stands allowed, the reply to a final rejection or action must comply
with any requirements or objections as to form.
[65 FR 14872, Mar. 20, 2000, as amended at 65 FR 76773, Dec. 7, 2000; 69
FR 49999, Aug. 12, 2004]
Sec.1.114 Request for continued examination.
(a) If prosecution in an application is closed, an applicant may
request continued examination of the application by filing a submission
and the fee set forth in Sec.1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under Sec.1.313 is
granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil
action is terminated.
(b) Prosecution in an application is closed as used in this section
means that the application is under appeal, or that the last Office
action is a final action (Sec.1.113), a notice of allowance (Sec.
1.311), or an action that otherwise closes prosecution in the
application.
(c) A submission as used in this section includes, but is not
limited to, an information disclosure statement, an amendment to the
written description, claims, or drawings, new arguments, or new evidence
in support of patentability. If reply to an Office action under 35
U.S.C. 132 is outstanding, the submission must meet the reply
requirements of Sec.1.111.
(d) If an applicant timely files a submission and fee set forth in
Sec.1.17(e), the Office will withdraw the finality of any Office
action and the submission will be entered and considered. If an
applicant files a request for continued examination under this section
after appeal, but prior to a decision on the appeal, it will be treated
as a request to withdraw the appeal and to reopen prosecution of the
application before the examiner. An appeal brief (Sec.41.37 of this
title) or a reply brief (Sec.41.41 of this title), or related papers,
will not be considered a submission under this section.
(e) The provisions of this section do not apply to:
(1) A provisional application;
(2) An application for a utility or plant patent filed under 35
U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before
June 8, 1995, or an international application that does not comply with
35 U.S.C. 371;
(4) An application for a design patent;
(5) An international design application; or
(6) A patent under reexamination.
[65 FR 50104, Aug. 16, 2000, as amended at 69 FR 49999, Aug. 12, 2004;
72 FR 46841, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 80 FR 17963,
Apr. 2, 2015]
Amendments
Authority: Secs. 1.115 to 1.127 also issued under 35 U.S.C. 132.
Sec.1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the
Office (Sec.1.6) on or before the mail date of the first Office action
under Sec.1.104. The patent application publication may include
preliminary amendments (Sec.1.215(a)).
(1) A preliminary amendment that is present on the filing date of an
application is part of the original disclosure of the application.
[[Page 102]]
(2) A preliminary amendment filed after the filing date of the
application is not part of the original disclosure of the application.
(b) A preliminary amendment in compliance with Sec.1.121 will be
entered unless disapproved by the Director.
(1) A preliminary amendment seeking cancellation of all the claims
without presenting any new or substitute claims will be disapproved.
(2) A preliminary amendment may be disapproved if the preliminary
amendment unduly interferes with the preparation of a first Office
action in an application. Factors that will be considered in
disapproving a preliminary amendment include:
(i) The state of preparation of a first Office action as of the date
of receipt (Sec.1.6) of the preliminary amendment by the Office; and
(ii) The nature of any changes to the specification or claims that
would result from entry of the preliminary amendment.
(3) A preliminary amendment will not be disapproved under (b)(2) of
this section if it is filed no later than:
(i) Three months from the filing date of an application under Sec.
1.53(b);
(ii) The filing date of a continued prosecution application under
Sec.1.53(d); or
(iii) Three months from the date the national stage is entered as
set forth in Sec.1.491 in an international application.
(4) The time periods specified in paragraph (b)(3) of this section
are not extendable.
[69 FR 56543, Sept. 21, 2004]
Sec.1.116 Amendments and affidavits or other evidence after final
action and prior to appeal.
(a) An amendment after final action must comply with Sec.1.114 or
this section.
(b) After a final rejection or other final action (Sec.1.113) in
an application or in an ex parte reexamination filed under Sec.1.510,
or an action closing prosecution (Sec.1.949) in an inter partes
reexamination filed under Sec.1.913, but before or on the same date of
filing an appeal (Sec.41.31 or Sec.41.61 of this title):
(1) An amendment may be made canceling claims or complying with any
requirement of form expressly set forth in a previous Office action;
(2) An amendment presenting rejected claims in better form for
consideration on appeal may be admitted; or
(3) An amendment touching the merits of the application or patent
under reexamination may be admitted upon a showing of good and
sufficient reasons why the amendment is necessary and was not earlier
presented.
(c) The admission of, or refusal to admit, any amendment after a
final rejection, a final action, an action closing prosecution, or any
related proceedings will not operate to relieve the application or
reexamination proceeding from its condition as subject to appeal or to
save the application from abandonment under Sec.1.135, or the
reexamination prosecution from termination under Sec.1.550(d) or Sec.
1.957(b) or limitation of further prosecution under Sec.1.957(c).
(d)(1) Notwithstanding the provisions of paragraph (b) of this
section, no amendment other than canceling claims, where such
cancellation does not affect the scope of any other pending claim in the
proceeding, can be made in an inter partes reexamination proceeding
after the right of appeal notice under Sec.1.953 except as provided in
Sec.1.981 or as permitted by Sec.41.77(b)(1) of this title.
(2) Notwithstanding the provisions of paragraph (b) of this section,
an amendment made after a final rejection or other final action (Sec.
1.113) in an ex parte reexamination filed under Sec.1.510, or an
action closing prosecution (Sec.1.949) in an inter partes
reexamination filed under Sec.1.913 may not cancel claims where such
cancellation affects the scope of any other pending claim in the
reexamination proceeding except as provided in Sec.1.981 or as
permitted by Sec.41.77(b)(1) of this title.
(e) An affidavit or other evidence submitted after a final rejection
or other final action (Sec.1.113) in an application or in an ex parte
reexamination filed under Sec.1.510, or an action closing prosecution
(Sec.1.949) in an inter partes reexamination filed under Sec.1.913
but before or on the same date of filing an appeal (Sec.41.31 or Sec.
41.61 of this title), may be admitted upon a showing of
[[Page 103]]
good and sufficient reasons why the affidavit or other evidence is
necessary and was not earlier presented.
(f) Notwithstanding the provisions of paragraph (e) of this section,
no affidavit or other evidence can be made in an inter partes
reexamination proceeding after the right of appeal notice under Sec.
1.953 except as provided in Sec.1.981 or as permitted by Sec.
41.77(b)(1) of this title.
(g) After decision on appeal, amendments, affidavits and other
evidence can only be made as provided in Sec. Sec.1.198 and 1.981, or
to carry into effect a recommendation under Sec.41.50(c) of this
title.
[69 FR 49999, Aug. 12, 2004]
Sec. Sec.1.117-1.119 [Reserved]
Sec.1.121 Manner of making amendments in applications.
(a) Amendments in applications, other than reissue applications.
Amendments in applications, other than reissue applications, are made by
filing a paper, in compliance with Sec.1.52, directing that specified
amendments be made.
(b) Specification. Amendments to the specification, other than the
claims, computer listings (Sec.1.96) and sequence listings (Sec.
1.825), must be made by adding, deleting or replacing a paragraph, by
replacing a section, or by a substitute specification, in the manner
specified in this section.
(1) Amendment to delete, replace, or add a paragraph. Amendments to
the specification, including amendment to a section heading or the title
of the invention which are considered for amendment purposes to be an
amendment of a paragraph, must be made by submitting:
(i) An instruction, which unambiguously identifies the location, to
delete one or more paragraphs of the specification, replace a paragraph
with one or more replacement paragraphs, or add one or more paragraphs;
(ii) The full text of any replacement paragraph with markings to
show all the changes relative to the previous version of the paragraph.
The text of any added subject matter must be shown by underlining the
added text. The text of any deleted matter must be shown by strike-
through except that double brackets placed before and after the deleted
characters may be used to show deletion of five or fewer consecutive
characters. The text of any deleted subject matter must be shown by
being placed within double brackets if strike-through cannot be easily
perceived;
(iii) The full text of any added paragraphs without any underlining;
and
(iv) The text of a paragraph to be deleted must not be presented
with strike-through or placed within double brackets. The instruction to
delete may identify a paragraph by its paragraph number or include a few
words from the beginning, and end, of the paragraph, if needed for
paragraph identification purposes.
(2) Amendment by replacement section. If the sections of the
specification contain section headings as provided in Sec.1.77(b),
Sec.1.154(b), or Sec.1.163(c), amendments to the specification,
other than the claims, may be made by submitting:
(i) A reference to the section heading along with an instruction,
which unambiguously identifies the location, to delete that section of
the specification and to replace such deleted section with a replacement
section; and
(ii) A replacement section with markings to show all changes
relative to the previous version of the section. The text of any added
subject matter must be shown by underlining the added text. The text of
any deleted matter must be shown by strike-through except that double
brackets placed before and after the deleted characters may be used to
show deletion of five or fewer consecutive characters. The text of any
deleted subject matter must be shown by being placed within double
brackets if strike-through cannot be easily perceived.
(3) Amendment by substitute specification. The specification, other
than the claims, may also be amended by submitting:
(i) An instruction to replace the specification; and
(ii) A substitute specification in compliance with Sec. Sec.
1.125(b) and (c).
[[Page 104]]
(4) Reinstatement of previously deleted paragraph or section. A
previously deleted paragraph or section may be reinstated only by a
subsequent amendment adding the previously deleted paragraph or section.
(5) Presentation in subsequent amendment document. Once a paragraph
or section is amended in a first amendment document, the paragraph or
section shall not be re-presented in a subsequent amendment document
unless it is amended again or a substitute specification is provided.
(c) Claims. Amendments to a claim must be made by rewriting the
entire claim with all changes (e.g., additions and deletions) as
indicated in this subsection, except when the claim is being canceled.
Each amendment document that includes a change to an existing claim,
cancellation of an existing claim or addition of a new claim, must
include a complete listing of all claims ever presented, including the
text of all pending and withdrawn claims, in the application. The claim
listing, including the text of the claims, in the amendment document
will serve to replace all prior versions of the claims, in the
application. In the claim listing, the status of every claim must be
indicated after its claim number by using one of the following
identifiers in a parenthetical expression: (Original), (Currently
amended), (Canceled), (Withdrawn), (Previously presented), (New), and
(Not entered).
(1) Claim listing. All of the claims presented in a claim listing
shall be presented in ascending numerical order. Consecutive claims
having the same status of ``canceled'' or ``not entered'' may be
aggregated into one statement (e.g., Claims 1-5 (canceled)). The claim
listing shall commence on a separate sheet of the amendment document and
the sheet(s) that contain the text of any part of the claims shall not
contain any other part of the amendment.
(2) When claim text with markings is required. All claims being
currently amended in an amendment paper shall be presented in the claim
listing, indicate a status of ``currently amended,'' and be submitted
with markings to indicate the changes that have been made relative to
the immediate prior version of the claims. The text of any added subject
matter must be shown by underlining the added text. The text of any
deleted matter must be shown by strike-through except that double
brackets placed before and after the deleted characters may be used to
show deletion of five or fewer consecutive characters. The text of any
deleted subject matter must be shown by being placed within double
brackets if strike-through cannot be easily perceived. Only claims
having the status of ``currently amended,'' or ``withdrawn'' if also
being amended, shall include markings. If a withdrawn claim is currently
amended, its status in the claim listing may be identified as
``withdrawn--currently amended.''
(3) When claim text in clean version is required. The text of all
pending claims not being currently amended shall be presented in the
claim listing in clean version, i.e., without any markings in the
presentation of text. The presentation of a clean version of any claim
having the status of ``original,'' ``withdrawn'' or ``previously
presented'' will constitute an assertion that it has not been changed
relative to the immediate prior version, except to omit markings that
may have been present in the immediate prior version of the claims of
the status of ``withdrawn'' or ``previously presented.'' Any claim added
by amendment must be indicated with the status of ``new'' and presented
in clean version, i.e., without any underlining.
(4) When claim text shall not be presented; canceling a claim. (i)
No claim text shall be presented for any claim in the claim listing with
the status of ``canceled'' or ``not entered.''
(ii) Cancellation of a claim shall be effected by an instruction to
cancel a particular claim number. Identifying the status of a claim in
the claim listing as ``canceled'' will constitute an instruction to
cancel the claim.
(5) Reinstatement of previously canceled claim. A claim which was
previously canceled may be reinstated only by adding the claim as a
``new'' claim with a new claim number.
(d) Drawings. One or more application drawings shall be amended in
the following manner: Any changes to an application drawing must be in
compliance with Sec.1.84 or, for a nonprovisional
[[Page 105]]
international design application, in compliance with Sec. Sec.1.84(c)
and 1.1026 and must be submitted on a replacement sheet of drawings
which shall be an attachment to the amendment document and, in the top
margin, labeled ``Replacement Sheet.'' Any replacement sheet of drawings
shall include all of the figures appearing on the immediate prior
version of the sheet, even if only one figure is amended. Any new sheet
of drawings containing an additional figure must be labeled in the top
margin as ``New Sheet.'' All changes to the drawings shall be explained,
in detail, in either the drawing amendment or remarks section of the
amendment paper.
(1) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, may be included. The marked-up
copy must be clearly labeled as ``Annotated Sheet'' and must be
presented in the amendment or remarks section that explains the change
to the drawings.
(2) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, must be provided when required
by the examiner.
(e) Disclosure consistency. The disclosure must be amended, when
required by the Office, to correct inaccuracies of description and
definition, and to secure substantial correspondence between the claims,
the remainder of the specification, and the drawings.
(f) No new matter. No amendment may introduce new matter into the
disclosure of an application.
(g) Exception for examiner's amendments. Changes to the
specification, including the claims, of an application made by the
Office in an examiner's amendment may be made by specific instructions
to insert or delete subject matter set forth in the examiner's amendment
by identifying the precise point in the specification or the claim(s)
where the insertion or deletion is to be made. Compliance with
paragraphs (b)(1), (b)(2), or (c) of this section is not required.
(h) Amendment sections. Each section of an amendment document (e.g.,
amendment to the claims, amendment to the specification, replacement
drawings, and remarks) must begin on a separate sheet.
(i) Amendments in reissue applications. Any amendment to the
description and claims in reissue applications must be made in
accordance with Sec.1.173.
(j) Amendments in reexamination proceedings. Any proposed amendment
to the description and claims in patents involved in reexamination
proceedings must be made in accordance with Sec.1.530.
(k) Amendments in provisional applications. Amendments in
provisional applications are not usually made. If an amendment is made
to a provisional application, however, it must comply with the
provisions of this section. Any amendments to a provisional application
shall be placed in the provisional application file but may not be
entered.
[68 FR 38628, June 30, 2003, as amended at 69 FR 56543, Sept. 21, 2004;
80 FR 17963, Apr. 2, 2015]
Sec. Sec.1.122-1.224 [Reserved]
Sec.1.125 Substitute specification.
(a) If the number or nature of the amendments or the legibility of
the application papers renders it difficult to consider the application,
or to arrange the papers for printing or copying, the Office may require
the entire specification, including the claims, or any part thereof, be
rewritten.
(b) Subject to Sec.1.312, a substitute specification, excluding
the claims, may be filed at any point up to payment of the issue fee if
it is accompanied by a statement that the substitute specification
includes no new matter.
(c) A substitute specification submitted under this section must be
submitted with markings showing all the changes relative to the
immediate prior version of the specification of record. The text of any
added subject matter must be shown by underlining the added text. The
text of any deleted matter must be shown by strike-through except that
double brackets placed before and after the deleted characters may be
used to show deletion of five or fewer consecutive characters. The text
of any deleted subject matter must be shown by being placed within
double brackets if strike-through cannot be easily perceived. An
[[Page 106]]
accompanying clean version (without markings) must also be supplied.
Numbering the paragraphs of the specification of record is not
considered a change that must be shown pursuant to this paragraph.
(d) A substitute specification under this section is not permitted
in a reissue application or in a reexamination proceeding.
[62 FR 53193, Oct. 10, 1997, as amended at 65 FR 54673, Sept. 8, 2000;
68 FR 38630, June 30, 2003]
Sec.1.126 Numbering of claims.
The original numbering of the claims must be preserved throughout
the prosecution. When claims are canceled the remaining claims must not
be renumbered. When claims are added, they must be numbered by the
applicant consecutively beginning with the number next following the
highest numbered claim previously presented (whether entered or not).
When the application is ready for allowance, the examiner, if necessary,
will renumber the claims consecutively in the order in which they appear
or in such order as may have been requested by applicant.
[62 FR 53194, Oct. 10, 1997]
Sec.1.127 [Reserved]
Transitional Provisions
Sec.1.129 Transitional procedures for limited examination after final rejection and restriction practice.
(a) An applicant in an application, other than for reissue or a
design patent, that has been pending for at least two years as of June
8, 1995, taking into account any reference made in such application to
any earlier filed application under 35 U.S.C. 120, 121 and 365(c), is
entitled to have a first submission entered and considered on the merits
after final rejection under the following circumstances: The Office will
consider such a submission, if the first submission and the fee set
forth in Sec.1.17(r) are filed prior to the filing of an appeal brief
and prior to abandonment of the application. The finality of the final
rejection is automatically withdrawn upon the timely filing of the
submission and payment of the fee set forth in Sec.1.17(r). If a
subsequent final rejection is made in the application, applicant is
entitled to have a second submission entered and considered on the
merits after the subsequent final rejection under the following
circumstances: The Office will consider such a submission, if the second
submission and a second fee set forth in Sec.1.17(r) are filed prior
to the filing of an appeal brief and prior to abandonment of the
application. The finality of the subsequent final rejection is
automatically withdrawn upon the timely filing of the submission and
payment of the second fee set forth in Sec.1.17(r). Any submission
filed after a final rejection made in an application subsequent to the
fee set forth in Sec.1.17(r) having been twice paid will be treated as
set forth in Sec.1.116. A submission as used in this paragraph
includes, but is not limited to, an information disclosure statement, an
amendment to the written description, claims or drawings and a new
substantive argument or new evidence in support of patentability.
(b)(1) In an application, other than for reissue or a design patent,
that has been pending for at least three years as of June 8, 1995;
taking into account any reference made in the application to any earlier
filed application under 35 U.S.C. 120, 121, and 365(c), no requirement
for restriction or for the filing of divisional applications shall be
made or maintained in the application after June 8, 1995, except where:
(i) The requirement was first made in the application or any earlier
filed application under 35 U.S.C. 120, 121 and 365(c) prior to April 8,
1995;
(ii) The examiner has not made a requirement for restriction in the
present or parent application prior to April 8, 1995, due to actions by
the applicant; or
(iii) The required fee for examination of each additional invention
was not paid.
(2) If the application contains more than one independent and
distinct invention and a requirement for restriction or for the filing
of divisional applications cannot be made or maintained pursuant to this
paragraph, applicant will be so notified and given a time period to:
[[Page 107]]
(i) Elect the invention or inventions to be searched and examined,
if no election has been made prior to the notice, and pay the fee set
forth in Sec.1.17(s) for each independent and distinct invention
claimed in the application in excess of one which applicant elects;
(ii) Confirm an election made prior to the notice and pay the fee
set forth in Sec.1.17(s) for each independent and distinct invention
claimed in the application in addition to the one invention which
applicant previously elected; or
(iii) File a petition under this section traversing the requirement.
If the required petition is filed in a timely manner, the original time
period for electing and paying the fee set forth in Sec.1.17(s) will
be deferred and any decision on the petition affirming or modifying the
requirement will set a new time period to elect the invention or
inventions to be searched and examined and to pay the fee set forth in
Sec.1.17(s) for each independent and distinct invention claimed in the
application in excess of one which applicant elects.
(3) The additional inventions for which the required fee has not
been paid will be withdrawn from consideration under Sec.1.142(b). An
applicant who desires examination of an invention so withdrawn from
consideration can file a divisional application under 35 U.S.C. 121.
(c) The provisions of this section shall not be applicable to any
application filed after June 8, 1995.
[60 FR 20226, Apr. 25, 1995]
Affidavits Overcoming Rejections
Sec.1.130 Affidavit or declaration of attribution or prior public
disclosure under the Leahy-Smith America Invents Act.
(a) Affidavit or declaration of attribution. When any claim of an
application or a patent under reexamination is rejected, the applicant
or patent owner may submit an appropriate affidavit or declaration to
disqualify a disclosure as prior art by establishing that the disclosure
was made by the inventor or a joint inventor, or the subject matter
disclosed was obtained directly or indirectly from the inventor or a
joint inventor.
(b) Affidavit or declaration of prior public disclosure. When any
claim of an application or a patent under reexamination is rejected, the
applicant or patent owner may submit an appropriate affidavit or
declaration to disqualify a disclosure as prior art by establishing that
the subject matter disclosed had, before such disclosure was made or
before such subject matter was effectively filed, been publicly
disclosed by the inventor or a joint inventor or another who obtained
the subject matter disclosed directly or indirectly from the inventor or
a joint inventor. An affidavit or declaration under this paragraph must
identify the subject matter publicly disclosed and provide the date such
subject matter was publicly disclosed by the inventor or a joint
inventor or another who obtained the subject matter disclosed directly
or indirectly from the inventor or a joint inventor.
(1) If the subject matter publicly disclosed on that date was in a
printed publication, the affidavit or declaration must be accompanied by
a copy of the printed publication.
(2) If the subject matter publicly disclosed on that date was not in
a printed publication, the affidavit or declaration must describe the
subject matter with sufficient detail and particularity to determine
what subject matter had been publicly disclosed on that date by the
inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor.
(c) When this section is not available. The provisions of this
section are not available if the rejection is based upon a disclosure
made more than one year before the effective filing date of the claimed
invention. The provisions of this section may not be available if the
rejection is based upon a U.S. patent or U.S. patent application
publication of a patented or pending application naming another
inventor, the patent or pending application claims an invention that is
the same or substantially the same as the applicant's or patent owner's
claimed invention, and the affidavit or declaration contends that an
inventor named in the U.S. patent or
[[Page 108]]
U.S. patent application publication derived the claimed invention from
the inventor or a joint inventor named in the application or patent, in
which case an applicant or a patent owner may file a petition for a
derivation proceeding pursuant to Sec.42.401 et seq. of this title.
(d) Applications and patents to which this section is applicable.
The provisions of this section apply to any application for patent, and
to any patent issuing thereon, that contains, or contained at any time:
(1) A claim to a claimed invention that has an effective filing date
as defined in Sec.1.109 that is on or after March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c)
to any patent or application that contains, or contained at any time, a
claim to a claimed invention that has an effective filing date as
defined in Sec.1.109 that is on or after March 16, 2013.
[78 FR 11058, Feb. 14, 2013, as amended at 80 FR 17963, Apr. 2, 2015]
Sec.1.131 Affidavit or declaration of prior invention or to disqualify
commonly owned patent or published application as prior art.
(a) When any claim of an application or a patent under reexamination
is rejected, the applicant or patent owner may submit an appropriate
oath or declaration to establish invention of the subject matter of the
rejected claim prior to the effective date of the reference or activity
on which the rejection is based. The effective date of a U.S. patent,
U.S. patent application publication, or international application
publication under PCT Article 21(2) is the earlier of its publication
date or the date that it is effective as a reference under 35 U.S.C.
102(e) as in effect on March 15, 2013. Prior invention may not be
established under this section in any country other than the United
States, a NAFTA country, or a WTO member country. Prior invention may
not be established under this section before December 8, 1993, in a
NAFTA country other than the United States, or before January 1, 1996,
in a WTO member country other than a NAFTA country. Prior invention may
not be established under this section if either:
(1) The rejection is based upon a U.S. patent or U.S. patent
application publication of a pending or patented application naming
another inventor which claims interfering subject matter as defined in
Sec.41.203(a) of this chapter, in which case an applicant may suggest
an interference pursuant to Sec.41.202(a) of this chapter; or
(2) The rejection is based upon a statutory bar.
(b) The showing of facts for an oath or declaration under paragraph
(a) of this section shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
Original exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their absence
must be satisfactorily explained.
(c) When any claim of an application or a patent under reexamination
is rejected under 35 U.S.C. 103 as in effect on March 15, 2013, on a
U.S. patent or U.S. patent application publication which is not prior
art under 35 U.S.C. 102(b) as in effect on March 15, 2013, and the
inventions defined by the claims in the application or patent under
reexamination and by the claims in the patent or published application
are not identical but are not patentably distinct, and the inventions
are owned by the same party, the applicant or owner of the patent under
reexamination may disqualify the patent or patent application
publication as prior art. The patent or patent application publication
can be disqualified as prior art by submission of:
(1) A terminal disclaimer in accordance with Sec.1.321(c); and
(2) An oath or declaration stating that the application or patent
under reexamination and patent or published application are currently
owned by the same party, and that the inventor named in the application
or patent
[[Page 109]]
under reexamination is the prior inventor under 35 U.S.C. 104 as in
effect on March 15, 2013.
(d) The provisions of this section apply to any application for
patent and to any patent issuing thereon, that contains, or contained at
any time:
(1) A claim to an invention that has an effective filing date as
defined in Sec.1.109 that is before March 16, 2013; or
(2) A specific reference under 35 U.S.C. 120, 121, 365(c), or 386(c)
to any patent or application that contains, or contained at any time, a
claim to an invention that has an effective filing date as defined in
Sec.1.109 that is before March 16, 2013.
(e) In an application for patent to which the provisions of Sec.
1.130 apply, and to any patent issuing thereon, the provisions of this
section are applicable only with respect to a rejection under 35 U.S.C.
102(g) as in effect on March 15, 2013.
[78 FR 11058, Feb. 14, 2013, as amended at 78 FR 62405, Oct. 21, 2013;
80 FR 17963, Apr. 2, 2015]
Sec.1.132 Affidavits or declarations traversing rejections or
objections.
When any claim of an application or a patent under reexamination is
rejected or objected to, any evidence submitted to traverse the
rejection or objection on a basis not otherwise provided for must be by
way of an oath or declaration under this section.
[65 FR 57057, Sept. 20, 2000]
Interviews
Sec.1.133 Interviews.
(a)(1) Interviews with examiners concerning applications and other
matters pending before the Office must be conducted on Office premises
and 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 Director.
(2) An interview for the discussion of the patentability of a
pending application will not occur before the first Office action,
unless the application is a continuing or substitute application or the
examiner determines that such an interview would advance prosecution of
the application.
(3) The examiner may require that an interview be scheduled in
advance.
(b) In every instance where reconsideration is requested in view 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 applicant. An interview does not remove the necessity
for reply to Office actions as specified in Sec. Sec.1.111 and 1.135.
(35 U.S.C. 132)
[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53194, Oct. 10, 1997;
65 FR 54674, Sept. 8, 2000; 70 FR 56128, Sept. 26, 2005]
Time for Reply by Applicant; Abandonment of Application
Authority: Secs. 1.135 to 1.138 also issued under 35 U.S.C. 133.
Sec.1.134 Time period for reply to an Office action.
An Office action will notify the applicant of any non-statutory or
shortened statutory time period set for reply to an Office action.
Unless the applicant is notified in writing that a reply is required in
less than six months, a maximum period of six months is allowed.
[62 FR 53194, Oct. 10, 1997]
Sec.1.135 Abandonment for failure to reply within time period.
(a) If an applicant of a patent application fails to reply within
the time period provided under Sec.1.134 and Sec.1.136, the
application will become abandoned unless an Office action indicates
otherwise.
(b) Prosecution of an application to save it from abandonment
pursuant to paragraph (a) of this section must include such complete and
proper reply as the condition of the application may require. The
admission of, or refusal to admit, any amendment after final rejection
or any amendment not responsive to the last action, or any related
proceedings, will not operate to save the application from abandonment.
(c) When reply by the applicant is a bona fide attempt to advance
the application to final action, and is substantially a complete reply
to the non-final Office action, but consideration of some matter or
compliance with some requirement has been inadvertently
[[Page 110]]
omitted, applicant may be given a new time period for reply under Sec.
1.134 to supply the omission.
[62 FR 53194, Oct. 10, 1997]
Sec.1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory or
shortened statutory time period, applicant may extend the time period
for reply up to the earlier of the expiration of any maximum period set
by statute or five months after the time period set for reply, if a
petition for an extension of time and the fee set in Sec.1.17(a) are
filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to Sec.41.41 of
this title;
(iii) The reply is a request for an oral hearing submitted pursuant
to Sec.41.47(a) of this title;
(iv) The reply is to a decision by the Patent Trial and Appeal Board
pursuant to Sec.41.50 or Sec.41.52 of this chapter or to Sec.90.3
of this chapter; or
(v) The application is involved in a contested case (Sec.41.101(a)
of this title) or a derivation proceeding (Sec.42.4(b) of this title).
(2) The date on which the petition and the fee have been filed is
the date for purposes of determining the period of extension and the
corresponding amount of the fee. The expiration of the time period is
determined by the amount of the fee paid. A reply must be filed prior to
the expiration of the period of extension to avoid abandonment of the
application (Sec.1.135), but in no situation may an applicant reply
later than the maximum time period set by statute, or be granted an
extension of time under paragraph (b) of this section when the
provisions of paragraph (a) of this section are available.
(3) A written request may be submitted in an application that is an
authorization to treat any concurrent or future reply, requiring a
petition for an extension of time under this paragraph for its timely
submission, as incorporating a petition for extension of time for the
appropriate length of time. An authorization to charge all required
fees, fees under Sec.1.17, or all required extension of time fees will
be treated as a constructive petition for an extension of time in any
concurrent or future reply requiring a petition for an extension of time
under this paragraph for its timely submission. Submission of the fee
set forth in Sec.1.17(a) will also be treated as a constructive
petition for an extension of time in any concurrent reply requiring a
petition for an extension of time under this paragraph for its timely
submission.
(b) When a reply cannot be filed within the time period set for such
reply and the provisions of paragraph (a) of this section are not
available, the period for reply will be extended only for sufficient
cause and for a reasonable time specified. Any request for an extension
of time under this paragraph must be filed on or before the day on which
such reply is due, but the mere filing of such a request will not effect
any extension under this paragraph. In no situation can any extension
carry the date on which reply is due beyond the maximum time period set
by statute. Any request under this paragraph must be accompanied by the
petition fee set forth in Sec.1.17(g).
(c) If an applicant is notified in a ``Notice of Allowability'' that
an application is otherwise in condition for allowance, the following
time periods are not extendable if set in the ``Notice of Allowability''
or in an Office action having a mail date on or after the mail date of
the ``Notice of Allowability'':
(1) The period for submitting the inventor's oath or declaration;
(2) The period for submitting formal drawings set under Sec.
1.85(c); and
(3) The period for making a deposit set under Sec.1.809(c).
(d) See Sec.1.550(c) for extensions of time in ex parte
reexamination proceedings, Sec.1.956 for extensions of time in inter
partes reexamination proceedings; Sec. Sec.41.4(a) and 41.121(a)(3) of
this chapter for extensions of time in contested cases before the Patent
Trial and Appeal Board; Sec.42.5(c) of this chapter for extensions of
time in trials before the Patent Trial and Appeal Board; and Sec.90.3
of this chapter for extensions of time to appeal to the U.S.
[[Page 111]]
Court of Appeals for the Federal Circuit or to commence a civil action.
[62 FR 53194, Oct. 10, 1997, as amended at 65 FR 54674, Sept. 8, 2000;
65 FR 76773, Dec. 7, 2000; 66 FR 21092, Apr. 27, 2001; 69 FR 50000, Aug.
12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 72 FR
46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 77 FR 46625, Aug. 6,
2012; 77 FR 48821, Aug. 14, 2012; 78 FR 62405, Oct. 21, 2013]
Sec.1.137 Revival of abandoned application, or terminated or limited
reexamination prosecution.
(a) Revival on the basis of unintentional delay. If the delay in
reply by applicant or patent owner was unintentional, a petition may be
filed pursuant to this section to revive an abandoned application or a
reexamination prosecution terminated under Sec.1.550(d) or Sec.
1.957(b) or limited under Sec.1.957(c).
(b) Petition requirements. A grantable petition pursuant to this
section must be accompanied by:
(1) The reply required to the outstanding Office action or notice,
unless previously filed;
(2) The petition fee as set forth in Sec.1.17(m);
(3) Any terminal disclaimer (and fee as set forth in Sec.1.20(d))
required pursuant to paragraph (d) of this section; and
(4) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
pursuant to this section was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional.
(c) Reply. In an application abandoned under Sec.1.57(a), the
reply must include a copy of the specification and any drawings of the
previously filed application. In an application or patent abandoned for
failure to pay the issue fee or any portion thereof, the required reply
must include payment of the issue fee or any outstanding balance. In an
application abandoned for failure to pay the publication fee, the
required reply must include payment of the publication fee. In a
nonprovisional application abandoned for failure to prosecute, the
required reply may be met by the filing of a continuing application. In
a nonprovisional utility or plant application filed on or after June 8,
1995, abandoned after the close of prosecution as defined in Sec.
1.114(b), the required reply may also be met by the filing of a request
for continued examination in compliance with Sec.1.114.
(d) Terminal disclaimer. (1) Any petition to revive pursuant to this
section in a design application must be accompanied by a terminal
disclaimer and fee as set forth in Sec.1.321 dedicating to the public
a terminal part of the term of any patent granted thereon equivalent to
the period of abandonment of the application. Any petition to revive
pursuant to this section in either a utility or plant application filed
before June 8, 1995, must be accompanied by a terminal disclaimer and
fee as set forth in Sec.1.321 dedicating to the public a terminal part
of the term of any patent granted thereon equivalent to the lesser of:
(i) The period of abandonment of the application; or
(ii) The period extending beyond twenty years from the date on which
the application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed
application(s) under 35 U.S.C. 120, 121, 365(c), or 386(c) from the date
on which the earliest such application was filed.
(2) Any terminal disclaimer pursuant to paragraph (d)(1) of this
section must also apply to any patent granted on a continuing utility or
plant application filed before June 8, 1995, or a continuing design
application, that contains a specific reference under 35 U.S.C. 120,
121, 365(c), or 386(c) to the application for which revival is sought.
(3) The provisions of paragraph (d)(1) of this section do not apply
to applications for which revival is sought solely for purposes of
copendency with a utility or plant application filed on or after June 8,
1995, to reissue applications, or to reexamination proceedings.
(e) Request for reconsideration. Any request for reconsideration or
review of a decision refusing to revive an abandoned application, or a
terminated or limited reexamination prosecution, upon petition filed
pursuant to this section, to be considered timely, must be filed within
two months of the decision refusing to revive or within such
[[Page 112]]
time as set in the decision. Unless a decision indicates otherwise, this
time period may be extended under:
(1) The provisions of Sec.1.136 for an abandoned application;
(2) The provisions of Sec.1.550(c) for a terminated ex parte
reexamination prosecution, where the ex parte reexamination was filed
under Sec.1.510; or
(3) The provisions of Sec.1.956 for a terminated inter partes
reexamination prosecution or an inter partes reexamination limited as to
further prosecution, where the inter partes reexamination was filed
under Sec.1.913.
(f) Abandonment for failure to notify the Office of a foreign
filing. A nonprovisional application abandoned pursuant to 35 U.S.C.
122(b)(2)(B)(iii) for failure to timely notify the Office of the filing
of an application in a foreign country or under a multinational treaty
that requires publication of applications eighteen months after filing,
may be revived pursuant to this section. The reply requirement of
paragraph (c) of this section is met by the notification of such filing
in a foreign country or under a multinational treaty, but the filing of
a petition under this section will not operate to stay any period for
reply that may be running against the application.
(g) Provisional applications. A provisional application, abandoned
for failure to timely respond to an Office requirement, may be revived
pursuant to this section. Subject to the provisions of 35 U.S.C.
119(e)(3) and Sec.1.7(b), a provisional application will not be
regarded as pending after twelve months from its filing date under any
circumstances.
[78 FR 62405, Oct. 21, 2013, as amended at 80 FR 17963, Apr. 2, 2015]
Sec.1.138 Express abandonment.
(a) An application may be expressly abandoned by filing a written
declaration of abandonment identifying the application in the United
States Patent and Trademark Office. Express abandonment of the
application may not be recognized by the Office before the date of issue
or publication unless it is actually received by appropriate officials
in time to act.
(b) A written declaration of abandonment must be signed by a party
authorized under Sec.1.33(b)(1) or (b)(3) to sign a paper in the
application, except as otherwise provided in this paragraph. A
registered attorney or agent, not of record, who acts in a
representative capacity under the provisions of Sec.1.34 when filing a
continuing application, may expressly abandon the prior application as
of the filing date granted to the continuing application.
(c) An applicant seeking to abandon an application to avoid
publication of the application (see Sec.1.211(a)(1)) must submit a
declaration of express abandonment by way of a petition under this
paragraph including the fee set forth in Sec.1.17(h) in sufficient
time to permit the appropriate officials to recognize the abandonment
and remove the application from the publication process. Applicants
should expect that the petition will not be granted and the application
will be published in regular course unless such declaration of express
abandonment and petition are received by the appropriate officials more
than four weeks prior to the projected date of publication.
(d) An applicant seeking to abandon an application filed under 35
U.S.C. 111(a) and Sec.1.53(b) on or after December 8, 2004, to obtain
a refund of the search fee and excess claims fee paid in the
application, must submit a declaration of express abandonment by way of
a petition under this paragraph before an examination has been made of
the application. The date indicated on any certificate of mailing or
transmission under Sec.1.8 will not be taken into account in
determining whether a petition under Sec.1.138(d) was filed before an
examination has been made of the application. If a request for refund of
the search fee and excess claims fee paid in the application is not
filed with the declaration of express abandonment under this paragraph
or within two months from the date on which the declaration of express
abandonment under this paragraph was filed, the Office may retain the
entire search fee and excess claims fee paid in the application. This
two-month period is not extendable. If a petition and declaration of
express abandonment under this paragraph are not filed before an
examination has been made of the application, the Office will not refund
any
[[Page 113]]
part of the search fee and excess claims fee paid in the application
except as provided in Sec.1.26.
[65 FR 54674, Sept. 8, 2000, as amended at 65 FR 57058, Sept. 20, 2000;
71 FR 12284, Mar. 10, 2006; 78 FR 62406, Oct. 21, 2013]
Sec.1.139 [Reserved]
Joinder of Inventions in One Application; Restriction
Authority: Secs. 1.141 to 1.147 also issued under 35 U.S.C. 121.
Sec.1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be
claimed in one national application, except that more than one species
of an invention, not to exceed a reasonable number, may be specifically
claimed in different claims in one national application, provided the
application also includes an allowable claim generic to all the claimed
species and all the claims to species in excess of one are written in
dependent form (Sec.1.75) or otherwise include all the limitations of
the generic claim.
(b) Where claims to all three categories, product, process of
making, and process of use, are included in a national application, a
three way requirement for restriction can only be made where the process
of making is distinct from the product. If the process of making and the
product are not distinct, the process of using may be joined with the
claims directed to the product and the process of making the product
even though a showing of distinctness between the product and process of
using the product can be made.
[52 FR 20046, May 28, 1987]
Sec.1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed
in a single application, the examiner in an Office action will require
the applicant in the reply to that action to elect an invention to which
the claims will be restricted, this official action being called a
requirement for restriction (also known as a requirement for division).
Such requirement will normally be made before any action on the merits;
however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not
canceled, are nevertheless withdrawn from further consideration by the
examiner by the election, subject however to reinstatement in the event
the requirement for restriction is withdrawn or overruled.
[24 FR 10332, Dec. 22, 1959, as amended at 62 FR 53195, Oct. 10, 1997;
72 FR 46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009]
Sec.1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he
may request reconsideration and withdrawal or modification of the
requirement, giving the reasons therefor. (See Sec.1.111.) In
requesting reconsideration the applicant must indicate a provisional
election of one invention for prosecution, which invention shall be the
one elected in the event the requirement becomes final The requirement
for restriction will be reconsidered on such a request. If the
requirement is repeated and made final the examiner will at the same
time act on the claims to the invention elected.
Sec.1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in
addition to making any reply due on the remainder of the action, may
petition the Director to review the requirement. Petition may be
deferred until after final action on or allowance of claims to the
invention elected, but must be filed not later than appeal. A petition
will not be considered if reconsideration of the requirement was not
requested (see Sec.1.181).
[62 FR 53195, Oct. 10, 1997]
Sec.1.145 Subsequent presentation of claims for different invention.
If, after an Office action on an application, the applicant presents
claims directed to an invention distinct from and independent of the
invention previously claimed, the applicant will be required to restrict
the claims to the invention previously claimed if the
[[Page 114]]
amendment is entered, subject to reconsideration and review as provided
in Sec. Sec.1.143 and 1.144.
[74 FR 52691, Oct. 14, 2009]
Sec.1.146 Election of species.
In the first action on an application containing a generic claim to
a generic invention (genus) and claims to more than one patentably
distinct species embraced thereby, the examiner may require the
applicant in the reply to that action to elect a species of his or her
invention to which his or her claim will be restricted if no claim to
the genus is found to be allowable. However, if such application
contains claims directed to more than a reasonable number of species,
the examiner may require restriction of the claims to not more than a
reasonable number of species before taking further action in the
application.
[62 FR 53195, Oct. 10, 1997]
Design Patents
Sec.1.151 Rules applicable.
The rules relating to applications for patents for other inventions
or discoveries are also applicable to applications for patents for
designs except as otherwise provided.
(35 U.S.C. 171)
Sec.1.152 Design drawings.
The design must be represented by a drawing that complies with the
requirements of Sec.1.84 and must contain a sufficient number of views
to constitute a complete disclosure of the appearance of the design.
Appropriate and adequate surface shading should be used to show the
character or contour of the surfaces represented. Solid black surface
shading is not permitted except when used to represent the color black
as well as color contrast. Broken lines may be used to show visible
environmental structure, but may not be used to show hidden planes and
surfaces that cannot be seen through opaque materials. Alternate
positions of a design component, illustrated by full and broken lines in
the same view are not permitted in a design drawing. Photographs and ink
drawings are not permitted to be combined as formal drawings in one
application. Photographs submitted in lieu of ink drawings in design
patent applications must not disclose environmental structure but must
be limited to the design claimed for the article.
[65 FR 54674, Sept. 8, 2000]
Sec.1.153 Title, description and claim, oath or declaration.
(a) The title of the design must designate the particular article.
No description, other than a reference to the drawing, is ordinarily
required. The claim shall be in formal terms to the ornamental design
for the article (specifying name) as shown, or as shown and described.
More than one claim is neither required nor permitted.
(b) The inventor's oath or declaration must comply with the
requirements of Sec.1.63, or comply with the requirements of Sec.
1.64 for a substitute statement.
(35 U.S.C. 6, Pub. L. 97-247)
[24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964;
48 FR 2712, Jan. 20, 1983; 77 FR 48821, Aug. 14, 2012]
Sec.1.154 Arrangement of application elements in a design application.
(a) The elements of the design application, if applicable, should
appear in the following order:
(1) Design application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see Sec.1.76).
(4) Specification.
(5) Drawings or photographs.
(6) The inventor's oath or declaration (see Sec.1.153(b)).
(b) The specification should include the following sections in
order:
(1) Preamble, stating the name of the applicant, title of the
design, and a brief description of the nature and intended use of the
article in which the design is embodied.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
[[Page 115]]
(c) The text of the specification sections defined in paragraph (b)
of this section, if applicable, should be preceded by a section heading
in uppercase letters without underlining or bold type.
[65 FR 54674, Sept. 8, 2000, as amended at 77 FR 48821, Aug. 14, 2012]
Sec.1.155 Expedited examination of design applications.
(a) The applicant may request that the Office expedite the
examination of a design application. To qualify for expedited
examination:
(1) The application must include drawings in compliance with Sec.
1.84, or for an international design application that designates the
United States, must have been published pursuant to Hague Agreement
Article 10(3);
(2) The applicant must have conducted a preexamination search; and
(3) The applicant must file a request for expedited examination
including:
(i) The fee set forth in Sec.1.17(k); and
(ii) A statement that a preexamination search was conducted. The
statement must also indicate the field of search and include an
information disclosure statement in compliance with Sec.1.98.
(b) The Office will not examine an application that is not in
condition for examination (e.g., missing basic filing fee) even if the
applicant files a request for expedited examination under this section.
[65 FR 54674, Sept. 8, 2000, as amended at 80 FR 17963, Apr. 2, 2015]
Plant Patents
Sec.1.161 Rules applicable.
The rules relating to applications for patent for other inventions
or discoveries are also applicable to applications for patents for
plants except as otherwise provided.
Sec.1.162 Applicant, oath or declaration.
The inventor named for a plant patent application must be the person
who has invented or discovered and asexually reproduced the new and
distinct variety of plant for which a patent is sought. The inventor's
oath or declaration, in addition to the averments required by Sec.1.63
or Sec.1.64, must state that the inventor has asexually reproduced the
plant. Where the plant is a newly found plant, the inventor's oath or
declaration must also state that it was found in a cultivated area.
[77 FR 48821, Aug. 14, 2012]
Sec.1.163 Specification and arrangement of application elements in a plant application.
(a) The specification must contain as full and complete a disclosure
as possible of the plant and the characteristics thereof that
distinguish the same over related known varieties, and its antecedents,
and must particularly point out where and in what manner the variety of
plant has been asexually reproduced. For a newly found plant, the
specification must particularly point out the location and character of
the area where the plant was discovered.
(b) The elements of the plant application, if applicable, should
appear in the following order:
(1) Plant application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see Sec.1.76).
(4) Specification.
(5) Drawings (in duplicate).
(6) The inventor's oath or declaration (Sec.1.162).
(c) The specification should include the following sections in
order:
(1) Title of the invention, which may include an introductory
portion stating the name, citizenship, and residence of the applicant.
(2) Cross-reference to related applications (unless included in the
application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Latin name of the genus and species of the plant claimed.
(5) Variety denomination.
(6) Background of the invention.
(7) Brief summary of the invention.
(8) Brief description of the drawing.
(9) Detailed botanical description.
(10) A single claim.
(11) Abstract of the disclosure.
(d) The text of the specification or sections defined in paragraph
(c) of this
[[Page 116]]
section, if applicable, should be preceded by a section heading in upper
case, without underlining or bold type.
[65 FR 54675, Sept. 8, 2000, as amended at 77 FR 48821, Aug. 14, 2012]
Sec.1.164 Claim.
The claim shall be in formal terms to the new and distinct variety
of the specified plant as described and illustrated, and may also recite
the principal distinguishing characteristics. More than one claim is not
permitted.
(35 U.S.C. 162)
Sec.1.165 Plant drawings.
(a) Plant patent drawings should be artistically and competently
executed and must comply with the requirements of Sec.1.84. View
numbers and reference characters need not be employed unless required by
the examiner. The drawing must disclose all the distinctive
characteristics of the plant capable of visual representation.
(b) The drawings may be in color. The drawing must be in color if
color is a distinguishing characteristic of the new variety. Two copies
of color drawings or photographs must be submitted.
[58 FR 38726, July 20, 1993, as amended at 65 FR 57058, Sept. 20, 2000;
69 FR 56543, Sept. 21, 2004]
Sec.1.166 Specimens.
The applicant may be required to furnish specimens of the plant, or
its flower or fruit, in a quantity and at a time in its stage of growth
as may be designated, for study and inspection. Such specimens, properly
packed, must be forwarded in conformity with instructions furnished to
the applicant. When it is not possible to forward such specimens, plants
must be made available for official inspection where grown.
(35 U.S.C. 114, 161)
Sec.1.167 Examination.
Applications may be submitted by the Patent and Trademark Office to
the Department of Agriculture for study and report.
[62 FR 53196, Oct. 10, 1997]
Reissues
Authority: Secs. 1.171 to 1.179 also issued under 35 U.S.C. 251.
Sec.1.171 Application for reissue.
An application for reissue must contain the same parts required for
an application for an original patent, complying with all the rules
relating thereto except as otherwise provided, and in addition, must
comply with the requirements of the rules relating to reissue
applications.
[62 FR 53196, Oct. 10, 1997]
Sec.1.172 Reissue applicant.
(a) The reissue applicant is the original patentee, or the current
patent owner if there has been an assignment. A reissue application must
be accompanied by the written consent of all assignees, if any,
currently owning an undivided interest in the patent. All assignees
consenting to the reissue must establish their ownership in the patent
by filing in the reissue application a submission in accordance with the
provisions of Sec.3.73(c) of this chapter.
(b) A reissue will be granted to the original patentee, his legal
representatives or assigns as the interest may appear.
[77 FR 48821, Aug. 14, 2012]
Sec.1.173 Reissue specification, drawings, and amendments.
(a) Contents of a reissue application. An application for reissue
must contain the entire specification, including the claims, and the
drawings of the patent. No new matter shall be introduced into the
application. No reissue patent shall be granted enlarging the scope of
the claims of the original patent unless applied for within two years
from the grant of the original patent, pursuant to 35 U.S.C. 251.
(1) Specification, including claims. The entire specification,
including the claims, of the patent for which reissue is requested must
be furnished in the form of a copy of the printed patent, in double
column format, each page on only one side of a single sheet of paper. If
an amendment of the reissue application is to be included, it must be
made
[[Page 117]]
pursuant to paragraph (b) of this section. The formal requirements for
papers making up the reissue application other than those set forth in
this section are set out in Sec.1.52. Additionally, a copy of any
disclaimer (Sec.1.321), certificate of correction (Sec. Sec.1.322
through 1.324), or reexamination certificate (Sec.1.570) issued in the
patent must be included. (See also Sec.1.178).
(2) Drawings. Applicant must submit a clean copy of each drawing
sheet of the printed patent at the time the reissue application is
filed. If such copy complies with Sec.1.84, no further drawings will
be required. Where a drawing of the reissue application is to include
any changes relative to the patent being reissued, the changes to the
drawing must be made in accordance with paragraph (b)(3) of this
section. The Office will not transfer the drawings from the patent file
to the reissue application.
(b) Making amendments in a reissue application. An amendment in a
reissue application is made either by physically incorporating the
changes into the specification when the application is filed, or by a
separate amendment paper. If amendment is made by incorporation,
markings pursuant to paragraph (d) of this section must be used. If
amendment is made by an amendment paper, the paper must direct that
specified changes be made, as follows:
(1) Specification other than the claims. Changes to the
specification, other than to the claims, must be made by submission of
the entire text of an added or rewritten paragraph, including markings
pursuant to paragraph (d) of this section, except that an entire
paragraph may be deleted by a statement deleting the paragraph without
presentation of the text of the paragraph. The precise point in the
specification must be identified where any added or rewritten paragraph
is located. This paragraph applies whether the amendment is submitted on
paper or compact disc (see Sec. Sec.1.52(e)(1) and 1.821(c), but not
for discs submitted under Sec.1.821(e)).
(2) Claims. An amendment paper must include the entire text of each
claim being changed by such amendment paper and of each claim being
added by such amendment paper. For any claim changed by the amendment
paper, a parenthetical expression ``amended,'' ``twice amended,'' etc.,
should follow the claim number. Each changed patent claim and each added
claim must include markings pursuant to paragraph (d) of this section,
except that a patent claim or added claim should be canceled by a
statement canceling the claim without presentation of the text of the
claim.
(3) Drawings. One or more patent drawings shall be amended in the
following manner: Any changes to a patent drawing must be submitted as a
replacement sheet of drawings which shall be an attachment to the
amendment document. Any replacement sheet of drawings must be in
compliance with Sec.1.84 and shall include all of the figures
appearing on the original version of the sheet, even if only one figure
is amended. Amended figures must be identified as ``Amended,'' and any
added figure must be identified as ``New.'' In the event that a figure
is canceled, the figure must be surrounded by brackets and identified as
``Canceled.'' All changes to the drawing(s) shall be explained, in
detail, beginning on a separate sheet accompanying the papers including
the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, may be included. The marked-up
copy must be clearly labeled as ``Annotated Marked-up Drawings'' and
must be presented in the amendment or remarks section that explains the
change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including
annotations indicating the changes made, must be provided when required
by the examiner.
(c) Status of claims and support for claim changes. Whenever there
is an amendment to the claims pursuant to paragraph (b) of this section,
there must also be supplied, on pages separate from the pages containing
the changes, the status (i.e., pending or canceled), as of the date of
the amendment, of all patent claims and of all added claims, and an
explanation of the support in the disclosure of the patent for the
changes made to the claims.
[[Page 118]]
(d) Changes shown by markings. Any changes relative to the patent
being reissued which are made to the specification, including the
claims, upon filing, or by an amendment paper in the reissue
application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in
brackets; and
(2) The matter to be added by reissue must be underlined, except for
amendments submitted on compact discs (Sec. Sec.1.96 and 1.821(c)).
Matter added by reissue on compact discs must be preceded with
``'' and end with ``'' to properly identify
the material being added.
(e) Numbering of patent claims preserved. Patent claims may not be
renumbered. The numbering of any claim added in the reissue application
must follow the number of the highest numbered patent claim.
(f) Amendment of disclosure may be required. The disclosure must be
amended, when required by the Office, to correct inaccuracies of
description and definition, and to secure substantial correspondence
between the claims, the remainder of the specification, and the
drawings.
(g) Amendments made relative to the patent. All amendments must be
made relative to the patent specification, including the claims, and
drawings, which are in effect as of the date of filing of the reissue
application.
[65 FR 54675, Sept. 8, 2000, as amended at 68 FR 38630, June 30, 2003;
69 FR 56543, Sept. 21, 2004]
Sec.1.174 [Reserved]
Sec.1.175 Inventor's oath or declaration for a reissue application.
(a) The inventor's oath or declaration for a reissue application, in
addition to complying with the requirements of Sec.1.63, Sec.1.64,
or Sec.1.67, must also specifically identify at least one error
pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and
state that the applicant believes the original patent to be wholly or
partly inoperative or invalid by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than the
patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the
claims of the patent (a basis for the reissue is the patentee claiming
less than the patentee had the right to claim in the patent), the
inventor's oath or declaration for a reissue application must identify a
claim that the application seeks to broaden. A claim is a broadened
claim if the claim is broadened in any respect.
(c) The inventor, or each individual who is a joint inventor of a
claimed invention, in a reissue application must execute an oath or
declaration for the reissue application, except as provided for in Sec.
1.64, and except that the inventor's oath or declaration for a reissue
application may be signed by the assignee of the entire interest if:
(1) The application does not seek to enlarge the scope of the claims
of the original patent; or
(2) The application for the original patent was filed under Sec.
1.46 by the assignee of the entire interest.
(d) If errors previously identified in the inventor's oath or
declaration for a reissue application pursuant to paragraph (a) of this
section are no longer being relied upon as the basis for reissue, the
applicant must identify an error being relied upon as the basis for
reissue.
(e) The inventor's oath or declaration for a reissue application
required by paragraph (a) of this section may be submitted under the
provisions of Sec.1.53(f), except that the provisions of Sec.
1.53(f)(3) do not apply to a reissue application.
(f)(1) The requirement for the inventor's oath or declaration for a
continuing reissue application that claims the benefit under 35 U.S.C.
120, 121, 365(c), or 386(c) in compliance with Sec.1.78 of an earlier-
filed reissue application may be satisfied by a copy of the inventor's
oath or declaration from the earlier-filed reissue application, provided
that:
(i) The inventor, or each individual who is a joint inventor of a
claimed invention, in the reissue application executed an inventor's
oath or declaration for the earlier-filed reissue application, except as
provided for in Sec.1.64;
[[Page 119]]
(ii) The continuing reissue application does not seek to enlarge the
scope of the claims of the original patent; or
(iii) The application for the original patent was filed under Sec.
1.46 by the assignee of the entire interest.
(2) If all errors identified in the inventor's oath or declaration
from the earlier-filed reissue application are no longer being relied
upon as the basis for reissue, the applicant must identify an error
being relied upon as the basis for reissue.
(g) An oath or declaration filed at any time pursuant to 35 U.S.C.
115(h)(1), will be placed in the file record of the reissue application,
but may not necessarily be reviewed by the Office.
[77 FR 48821, Aug. 14, 2012, as amended at 80 FR 17964, Apr. 2, 2015]
Sec.1.176 Examination of reissue.
(a) A reissue application will be examined in the same manner as a
non-reissue, non-provisional application, and will be subject to all the
requirements of the rules related to non-reissue applications.
Applications for reissue will be acted on by the examiner in advance of
other applications.
(b) Restriction between subject matter of the original patent claims
and previously unclaimed subject matter may be required (restriction
involving only subject matter of the original patent claims will not be
required). If restriction is required, the subject matter of the
original patent claims will be held to be constructively elected unless
a disclaimer of all the patent claims is filed in the reissue
application, which disclaimer cannot be withdrawn by applicant.
[65 FR 54676, Sept. 8, 2000]
Sec.1.177 Issuance of multiple reissue patents.
(a) The Office may reissue a patent as multiple reissue patents. If
applicant files more than one application for the reissue of a single
patent, each such application must contain or be amended to contain in
the first sentence of the specification a notice stating that more than
one reissue application has been filed and identifying each of the
reissue applications by relationship, application number and filing
date. The Office may correct by certificate of correction under Sec.
1.322 any reissue patent resulting from an application to which this
paragraph applies that does not contain the required notice.
(b) If applicant files more than one application for the reissue of
a single patent, each claim of the patent being reissued must be
presented in each of the reissue applications as an amended, unamended,
or canceled (shown in brackets) claim, with each such claim bearing the
same number as in the patent being reissued. The same claim of the
patent being reissued may not be presented in its original unamended
form for examination in more than one of such multiple reissue
applications. The numbering of any added claims in any of the multiple
reissue applications must follow the number of the highest numbered
original patent claim.
(c) If any one of the several reissue applications by itself fails
to correct an error in the original patent as required by 35 U.S.C. 251
but is otherwise in condition for allowance, the Office may suspend
action in the allowable application until all issues are resolved as to
at least one of the remaining reissue applications. The Office may also
merge two or more of the multiple reissue applications into a single
reissue application. No reissue application containing only unamended
patent claims and not correcting an error in the original patent will be
passed to issue by itself.
[65 FR 54676, Sept. 8, 2000]
Sec.1.178 Original patent; continuing duty of applicant.
(a) The application for reissue of a patent shall constitute an
offer to surrender that patent, and the surrender shall take effect upon
reissue of the patent. Until a reissue application is granted, the
original patent shall remain in effect.
(b) In any reissue application before the Office, the applicant must
call to the attention of the Office any prior or concurrent proceedings
in which the patent (for which reissue is requested) is or was involved,
such as interferences or trials before the Patent
[[Page 120]]
Trial and Appeal Board, reissues, reexaminations, or litigations and the
results of such proceedings (see also Sec.1.173(a)(1)).
[65 FR 54676, Sept. 8, 2000, as amended at 69 FR 56544, Sept. 21, 2004;
77 FR 46625, Aug. 6, 2012]
Sec.1.179 [Reserved]
Petitions and Action by the Director
Authority: 35 U.S.C. 6; 15 U.S.C. 1113, 1123.
Sec.1.181 Petition to the Director.
(a) Petition may be taken to the Director:
(1) From any action or requirement of any examiner in the ex parte
prosecution of an application, or in ex parte or inter partes
prosecution of a reexamination proceeding which is not subject to appeal
to the Patent Trial and Appeal Board or to the court;
(2) In cases in which a statute or the rules specify that the matter
is to be determined directly by or reviewed by the Director; and
(3) To invoke the supervisory authority of the Director in
appropriate circumstances. For petitions involving action of the Patent
Trial and Appeal Board, see Sec.41.3 of this title.
(b) Any such petition must contain a statement of the facts involved
and the point or points to be reviewed and the action requested. Briefs
or memoranda, if any, in support thereof should accompany or be embodied
in the petition; and where facts are to be proven, the proof in the form
of affidavits or declarations (and exhibits, if any) must accompany the
petition.
(c) When a petition is taken from an action or requirement of an
examiner in the ex parte prosecution of an application, or in the ex
parte or inter partes prosecution of a reexamination proceeding, it may
be required that there have been a proper request for reconsideration
(Sec.1.111) and a repeated action by the examiner. The examiner may be
directed by the Director to furnish a written statement, within a
specified time, setting forth the reasons for his or her decision upon
the matters averred in the petition, supplying a copy to the petitioner.
(d) Where a fee is required for a petition to the Director the
appropriate section of this part will so indicate. If any required fee
does not accompany the petition, the petition will be dismissed.
(e) Oral hearing will not be granted except when considered
necessary by the Director.
(f) The mere filing of a petition will not stay any period for reply
that may be running against the application, nor act as a stay of other
proceedings. Any petition under this part not filed within two months of
the mailing date of the action or notice from which relief is requested
may be dismissed as untimely, except as otherwise provided. This two-
month period is not extendable.
(g) The Director may delegate to appropriate Patent and Trademark
Office officials the determination of petitions.
[24 FR 10332, Dec. 22, 1959, as amended at 34 FR 18857, Nov. 26, 1969;
47 FR 41278, Sept. 17, 1982; 49 FR 48452, Dec. 12, 1984; 65 FR 54676,
Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000; 69 FR 50000, Aug. 12, 2004; 77
FR 46625, Aug. 6, 2012]
Sec.1.182 Questions not specifically provided for.
All situations not specifically provided for in the regulations of
this part will be decided in accordance with the merits of each
situation by or under the authority of the Director, subject to such
other requirements as may be imposed, and such decision will be
communicated to the interested parties in writing. Any petition seeking
a decision under this section must be accompanied by the petition fee
set forth in Sec.1.17(f).
[69 FR 56544, Sept. 21, 2004]
Sec.1.183 Suspension of rules.
In an extraordinary situation, when justice requires, any
requirement of the regulations in this part which is not a requirement
of the statutes may be suspended or waived by the Director or the
Director's designee, sua sponte, or on petition of the interested party,
subject to such other requirements as may be imposed. Any petition under
[[Page 121]]
this section must be accompanied by the petition fee set forth in Sec.
1.17(f).
[69 FR 56544, Sept. 21, 2004]
Sec.1.184 [Reserved]
Appeal to the Patent Trial and Appeal Board
Authority: Secs. 1.191 to 1.198 also issued under 35 U.S.C. 134.
Sec.1.191 Appeal to Patent Trial and Appeal Board.
Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(a)
and (b) are conducted according to part 41 of this title.
[77 FR 46625, Aug. 6, 2012]
Sec. Sec.1.192-1.196 [Reserved]
Sec.1.197 Termination of proceedings.
(a) Proceedings on an application are considered terminated by the
dismissal of an appeal or the failure to timely file an appeal to the
court or a civil action except:
(1) Where claims stand allowed in an application; or
(2) Where the nature of the decision requires further action by the
examiner.
(b) The date of termination of proceedings on an application is the
date on which the appeal is dismissed or the date on which the time for
appeal to the U.S. Court of Appeals for the Federal Circuit or review by
civil action (Sec.90.3 of this chapter) expires in the absence of
further appeal or review. If an appeal to the U.S. Court of Appeals for
the Federal Circuit or a civil action has been filed, proceedings on an
application are considered terminated when the appeal or civil action is
terminated. A civil action is terminated when the time to appeal the
judgment expires. An appeal to the U.S. Court of Appeals for the Federal
Circuit, whether from a decision of the Board or a judgment in a civil
action, is terminated when the mandate is issued by the Court.
[78 FR 75252, Dec. 11, 2013]
Sec.1.198 Reopening after a final decision of the Patent Trial
and Appeal Board.
When a decision by the Patent Trial and Appeal Board on appeal has
become final for judicial review, prosecution of the proceeding before
the primary examiner will not be reopened or reconsidered by the primary
examiner except under the provisions of Sec.1.114 or Sec.41.50 of
this title without the written authority of the Director, and then only
for the consideration of matters not already adjudicated, sufficient
cause being shown.
[77 FR 46625, Aug. 6, 2012]
Publication of Applications
Source: 65 FR 57058, Sept. 20, 2000, unless otherwise noted.
Sec.1.211 Publication of applications.
(a) Each U.S. national application for patent filed in the Office
under 35 U.S.C. 111(a) and each international application in compliance
with 35 U.S.C. 371 will be published promptly after the expiration of a
period of eighteen months from the earliest filing date for which a
benefit is sought under title 35, United States Code, unless:
(1) The application is recognized by the Office as no longer
pending;
(2) The application is national security classified (see Sec.
5.2(c)), subject to a secrecy order under 35 U.S.C. 181, or under
national security review;
(3) The application has issued as a patent in sufficient time to be
removed from the publication process; or
(4) The application was filed with a nonpublication request in
compliance with Sec.1.213(a).
(b) Provisional applications under 35 U.S.C. 111(b) shall not be
published, and design applications under 35 U.S.C. chapter 16,
international design applications under 35 U.S.C. chapter 38, and
reissue applications under 35 U.S.C. chapter 25 shall not be published
under this section.
(c) An application filed under 35 U.S.C. 111(a) will not be
published until it includes the basic filing fee (Sec.1.16(a) or Sec.
1.16(c)) and any English translation required by Sec.1.52(d). The
Office may delay publishing any application until
[[Page 122]]
it includes any application size fee required by the Office under Sec.
1.16(s) or Sec.1.492(j), a specification having papers in compliance
with Sec.1.52 and an abstract (Sec.1.72(b)), drawings in compliance
with Sec.1.84, a sequence listing in compliance with Sec. Sec.1.821
through 1.825 (if applicable), and the inventor's oath or declaration or
application data sheet containing the information specified in Sec.
1.63(b).
(d) The Office may refuse to publish an application, or to include a
portion of an application in the patent application publication (Sec.
1.215), if publication of the application or portion thereof would
violate Federal or state law, or if the application or portion thereof
contains offensive or disparaging material.
(e) The publication fee set forth in Sec.1.18(d) must be paid in
each application published under this section before the patent will be
granted. If an application is subject to publication under this section,
the sum specified in the notice of allowance under Sec.1.311 will also
include the publication fee which must be paid within three months from
the date of mailing of the notice of allowance to avoid abandonment of
the application. This three-month period is not extendable. If the
application is not published under this section, the publication fee (if
paid) will be refunded.
[65 FR 57058, Sept. 20, 2000, as amended at 70 FR 3891, Jan. 27, 2005;
77 FR 48822, Aug. 14, 2012, as amended at 80 FR 17964, Apr. 2, 2015]
Sec.1.213 Nonpublication request.
(a) If the invention disclosed in an application has not been and
will not be the subject of an application filed in another country, or
under a multilateral international agreement, that requires publication
of applications eighteen months after filing, the application will not
be published under 35 U.S.C. 122(b) and Sec.1.211 provided:
(1) A request (nonpublication request) is submitted with the
application upon filing;
(2) The request states in a conspicuous manner that the application
is not to be published under 35 U.S.C. 122(b);
(3) The request contains a certification that the invention
disclosed in the application has not been and will not be the subject of
an application filed in another country, or under a multilateral
international agreement, that requires publication at eighteen months
after filing; and
(4) The request is signed in compliance with Sec.1.33(b).
(b) The applicant may rescind a nonpublication request at any time.
A request to rescind a nonpublication request under paragraph (a) of
this section must:
(1) Identify the application to which it is directed;
(2) State in a conspicuous manner that the request that the
application is not to be published under 35 U.S.C. 122(b) is rescinded;
and
(3) Be signed in compliance with Sec.1.33(b).
(c) If an applicant who has submitted a nonpublication request under
paragraph (a) of this section subsequently files an application directed
to the invention disclosed in the application in which the
nonpublication request was submitted in another country, or under a
multilateral international agreement, that requires publication of
applications eighteen months after filing, the applicant must notify the
Office of such filing within forty-five days after the date of the
filing of such foreign or international application. The failure to
timely notify the Office of the filing of such foreign or international
application shall result in abandonment of the application in which the
nonpublication request was submitted (35 U.S.C. 122(b)(2)(B)(iii)).
Sec.1.215 Patent application publication.
(a) The publication of an application under 35 U.S.C. 122(b) shall
include a patent application publication. The date of publication shall
be indicated on the patent application publication. The patent
application publication will be based upon the specification and
drawings deposited on the filing date of the application, as well as the
application data sheet and/or the inventor's oath or declaration. The
patent application publication may also be based upon amendments to the
specification (other than the abstract or the claims) that are reflected
in a substitute specification under Sec.1.125(b), amendments to
[[Page 123]]
the abstract under Sec.1.121(b), amendments to the claims that are
reflected in a complete claim listing under Sec.1.121(c), and
amendments to the drawings under Sec.1.121(d), provided that such
substitute specification or amendment is submitted in sufficient time to
be entered into the Office file wrapper of the application before
technical preparations for publication of the application have begun.
Technical preparations for publication of an application generally begin
four months prior to the projected date of publication. The patent
application publication of an application that has entered the national
stage under 35 U.S.C. 371 may also include amendments made during the
international stage. See paragraph (c) of this section for publication
of an application based upon a copy of the application submitted via the
Office electronic filing system.
(b) The patent application publication will include the name of the
assignee, person to whom the inventor is under an obligation to assign
the invention, or person who otherwise shows sufficient proprietary
interest in the matter if that information is provided in the
application data sheet in an application filed under Sec.1.46.
Assignee information may be included on the patent application
publication in other applications if the assignee information is
provided in an application data sheet submitted in sufficient time to be
entered into the Office file wrapper of the application before technical
preparations for publication of the application have begun. Providing
assignee information in the application data sheet does not substitute
for compliance with any requirement of part 3 of this chapter to have an
assignment recorded by the Office.
(c) At applicant's option, the patent application publication will
be based upon the copy of the application (specification, drawings, and
the application data sheet and/or the inventor's oath or declaration) as
amended, provided that applicant supplies such a copy in compliance with
the Office electronic filing system requirements within one month of the
mailing date of the first Office communication that includes a
confirmation number for the application, or fourteen months of the
earliest filing date for which a benefit is sought under title 35,
United States Code, whichever is later.
(d) If the copy of the application submitted pursuant to paragraph
(c) of this section does not comply with the Office electronic filing
system requirements, the Office will publish the application as provided
in paragraph (a) of this section. If, however, the Office has not
started the publication process, the Office may use an untimely filed
copy of the application supplied by the applicant under paragraph (c) of
this section in creating the patent application publication.
[65 FR 57058, Sept. 20, 2000, as amended at 69 FR 56544, Sept. 21, 2004;
77 FR 48822, Aug. 14, 2012]
Sec.1.217 Publication of a redacted copy of an application.
(a) If an applicant has filed applications in one or more foreign
countries, directly or through a multilateral international agreement,
and such foreign-filed applications or the description of the invention
in such foreign-filed applications is less extensive than the
application or description of the invention in the application filed in
the Office, the applicant may submit a redacted copy of the application
filed in the Office for publication, eliminating any part or description
of the invention that is not also contained in any of the corresponding
applications filed in a foreign country. The Office will publish the
application as provided in Sec.1.215(a) unless the applicant files a
redacted copy of the application in compliance with this section within
sixteen months after the earliest filing date for which a benefit is
sought under title 35, United States Code.
(b) The redacted copy of the application must be submitted in
compliance with the Office electronic filing system requirements. The
title of the invention in the redacted copy of the application must
correspond to the title of the application at the time the redacted copy
of the application is submitted to the Office. If the redacted copy of
the application does not comply with the Office electronic filing system
requirements, the Office will publish the application as provided in
Sec.1.215(a).
[[Page 124]]
(c) The applicant must also concurrently submit in paper (Sec.
1.52(a)) to be filed in the application:
(1) A certified copy of each foreign-filed application that
corresponds to the application for which a redacted copy is submitted;
(2) A translation of each such foreign-filed application that is in
a language other than English, and a statement that the translation is
accurate;
(3) A marked-up copy of the application showing the redactions in
brackets; and
(4) A certification that the redacted copy of the application
eliminates only the part or description of the invention that is not
contained in any application filed in a foreign country, directly or
through a multilateral international agreement, that corresponds to the
application filed in the Office.
(d) The Office will provide a copy of the complete file wrapper and
contents of an application for which a redacted copy was submitted under
this section to any person upon written request pursuant to Sec.
1.14(c)(2), unless applicant complies with the requirements of
paragraphs (d)(1), (d)(2), and (d)(3) of this section.
(1) Applicant must accompany the submission required by paragraph
(c) of this section with the following:
(i) A copy of any Office correspondence previously received by
applicant including any desired redactions, and a second copy of all
Office correspondence previously received by applicant showing the
redacted material in brackets; and
(ii) A copy of each submission previously filed by the applicant
including any desired redactions, and a second copy of each submission
previously filed by the applicant showing the redacted material in
brackets.
(2) In addition to providing the submission required by paragraphs
(c) and (d)(1) of this section, applicant must:
(i) Within one month of the date of mailing of any correspondence
from the Office, file a copy of such Office correspondence including any
desired redactions, and a second copy of such Office correspondence
showing the redacted material in brackets; and
(ii) With each submission by the applicant, include a copy of such
submission including any desired redactions, and a second copy of such
submission showing the redacted material in brackets.
(3) Each submission under paragraph (d)(1) or (d)(2) of this
paragraph must also be accompanied by the processing fee set forth in
Sec.1.17(i) and a certification that the redactions are limited to the
elimination of material that is relevant only to the part or description
of the invention that was not contained in the redacted copy of the
application submitted for publication.
(e) The provisions of Sec.1.8 do not apply to the time periods set
forth in this section.
Sec.1.219 Early publication.
Applications that will be published under Sec.1.211 may be
published earlier than as set forth in Sec.1.211(a) at the request of
the applicant. Any request for early publication must be accompanied by
the publication fee set forth in Sec.1.18(d). If the applicant does
not submit a copy of the application in compliance with the Office
electronic filing system requirements pursuant to Sec.1.215(c), the
Office will publish the application as provided in Sec.1.215(a). No
consideration will be given to requests for publication on a certain
date, and such requests will be treated as a request for publication as
soon as possible.
Sec.1.221 Voluntary publication or republication of patent
application publication.
(a) Any request for publication of an application filed before, but
pending on, November 29, 2000, and any request for republication of an
application previously published under Sec.1.211, must include a copy
of the application in compliance with the Office electronic filing
system requirements and be accompanied by the publication fee set forth
in Sec.1.18(d) and the processing fee set forth in Sec.1.17(i). If
the request does not comply with the requirements of this paragraph or
the copy of the application does not comply with the Office electronic
filing system requirements, the Office will not publish the application
and will refund the publication fee.
[[Page 125]]
(b) The Office will grant a request for a corrected or revised
patent application publication other than as provided in paragraph (a)
of this section only when the Office makes a material mistake which is
apparent from Office records. Any request for a corrected or revised
patent application publication other than as provided in paragraph (a)
of this section must be filed within two months from the date of the
patent application publication. This period is not extendable.
Miscellaneous Provisions
Sec.1.248 Service of papers; manner of service; proof of service
in cases other than interferences and trials.
(a) Service of papers must be on the attorney or agent of the party
if there be such or on the party if there is no attorney or agent, and
may be made in any of the following ways:
(1) By delivering a copy of the paper to the person served;
(2) By leaving a copy at the usual place of business of the person
served with someone in his employment;
(3) When the person served has no usual place of business, by
leaving a copy at the person's residence, with some person of suitable
age and discretion who resides there;
(4) Transmission by first class mail. When service is by mail the
date of mailing will be regarded as the date of service;
(5) Whenever it shall be satisfactorily shown to the Director that
none of the above modes of obtaining or serving the paper is
practicable, service may be by notice published in the Official Gazette.
(b) Papers filed in the Patent and Trademark Office which are
required to be served shall contain proof of service. Proof of service
may appear on or be affixed to papers filed. Proof of service shall
include the date and manner of service. In the case of personal service,
proof of service shall also include the name of any person served,
certified by the person who made service. Proof of service may be made
by:
(1) An acknowledgement of service by or on behalf of the person
served or
(2) A statement signed by the attorney or agent containing the
information required by this section.
(c) See Sec.41.106(e) or Sec.42.6(e) of this title for service
of papers in contested cases or trials before the Patent Trial and
Appeal Board.
[46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984; 69
FR 50000, Aug. 12, 2004; 69 FR 58260, Sept. 30, 2004; 77 FR 46626, Aug.
6, 2012]
Sec.1.251 Unlocatable file.
(a) In the event that the Office cannot locate the file of an
application, patent, or other patent-related proceeding after a
reasonable search, the Office will notify the applicant or patentee and
set a time period within which the applicant or patentee must comply
with the notice in accordance with one of paragraphs (a)(1), (a)(2), or
(a)(3) of this section.
(1) Applicant or patentee may comply with a notice under this
section by providing:
(i) A copy of the applicant's or patentee's record (if any) of all
of the correspondence between the Office and the applicant or patentee
for such application, patent, or other proceeding (except for U.S.
patent documents);
(ii) A list of such correspondence; and
(iii) A statement that the copy is a complete and accurate copy of
the applicant's or patentee's record of all of the correspondence
between the Office and the applicant or patentee for such application,
patent, or other proceeding (except for U.S. patent documents), and
whether applicant or patentee is aware of any correspondence between the
Office and the applicant or patentee for such application, patent, or
other proceeding that is not among applicant's or patentee's records.
(2) Applicant or patentee may comply with a notice under this
section by:
(i) Producing the applicant's or patentee's record (if any) of all
of the correspondence between the Office and the applicant or patentee
for such application, patent, or other proceeding for the Office to copy
(except for U.S. patent documents); and
(ii) Providing a statement that the papers produced by applicant or
patentee are applicant's or patentee's complete record of all of the
correspondence between the Office and the
[[Page 126]]
applicant or patentee for such application, patent, or other proceeding
(except for U.S. patent documents), and whether applicant or patentee is
aware of any correspondence between the Office and the applicant or
patentee for such application, patent, or other proceeding that is not
among applicant's or patentee's records.
(3) If applicant or patentee does not possess any record of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding, applicant or patentee must
comply with a notice under this section by providing a statement that
applicant or patentee does not possess any record of the correspondence
between the Office and the applicant or patentee for such application,
patent, or other proceeding.
(b) With regard to a pending application, failure to comply with one
of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time
period set in the notice will result in abandonment of the application.
[65 FR 69451, Nov. 17, 2000]
Preissuance Submissions and Protests by Third Parties
Sec.1.290 Submissions by third parties in applications.
(a) A third party may submit, for consideration and entry in the
record of a patent application, any patents, published patent
applications, or other printed publications of potential relevance to
the examination of the application if the submission is made in
accordance with 35 U.S.C. 122(e) and this section. A third-party
submission may not be entered or considered by the Office if any part of
the submission is not in compliance with 35 U.S.C. 122(e) and this
section.
(b) Any third-party submission under this section must be filed
prior to the earlier of:
(1) The date a notice of allowance under Sec.1.311 is given or
mailed in the application; or
(2) The later of:
(i) Six months after the date on which the application is first
published by the Office under 35 U.S.C. 122(b) and Sec.1.211, or
(ii) The date the first rejection under Sec.1.104 of any claim by
the examiner is given or mailed during the examination of the
application.
(c) Any third-party submission under this section must be made in
writing.
(d) Any third-party submission under this section must include:
(1) A document list identifying the documents, or portions of
documents, being submitted in accordance with paragraph (e) of this
section;
(2) A concise description of the asserted relevance of each item
identified in the document list;
(3) A legible copy of each item identified in the document list,
other than U.S. patents and U.S. patent application publications;
(4) An English language translation of any non-English language item
identified in the document list; and
(5) A statement by the party making the submission that:
(i) The party is not an individual who has a duty to disclose
information with respect to the application under Sec.1.56; and
(ii) The submission complies with the requirements of 35 U.S.C.
122(e) and this section.
(e) The document list required by paragraph (d)(1) of this section
must include a heading that identifies the list as a third-party
submission under Sec.1.290, identify on each page of the list the
application number of the application in which the submission is being
filed, list U.S. patents and U.S. patent application publications in a
separate section from other items, and identify each:
(1) U.S. patent by patent number, first named inventor, and issue
date;
(2) U.S. patent application publication by patent application
publication number, first named inventor, and publication date;
(3) Foreign patent or published foreign patent application by the
country or patent office that issued the patent or published the
application; the applicant, patentee, or first named inventor; an
appropriate document number; and the publication date indicated on the
patent or published application; and
(4) Non-patent publication by author (if any), title, pages being
submitted, publication date, and, where available,
[[Page 127]]
publisher and place of publication. If no publication date is known, the
third party must provide evidence of publication.
(f) Any third-party submission under this section must be
accompanied by the fee set forth in Sec.1.17(o) for every ten items or
fraction thereof identified in the document list.
(g) The fee otherwise required by paragraph (f) of this section is
not required for a submission listing three or fewer total items that is
accompanied by a statement by the party making the submission that, to
the knowledge of the person signing the statement after making
reasonable inquiry, the submission is the first and only submission
under 35 U.S.C. 122(e) filed in the application by the party or a party
in privity with the party.
(h) In the absence of a request by the Office, an applicant need not
reply to a submission under this section.
(i) The provisions of Sec.1.8 do not apply to the time periods set
forth in this section.
[77 FR 42173, July 17, 2012, as amended at 78 FR 62406, Oct. 21, 2013]
Sec.1.291 Protests by the public against pending applications.
(a) A protest may be filed by a member of the public against a
pending application, and it will be matched with the application file if
it adequately identifies the patent application. A protest submitted
within the time frame of paragraph (b) of this section, which is not
matched, or not matched in a timely manner to permit review by the
examiner during prosecution, due to inadequate identification, may not
be entered and may be returned to the protestor where practical, or, if
return is not practical, discarded.
(b) The protest will be entered into the record of the application
if, in addition to complying with paragraph (c) of this section, the
protest has been served upon the applicant in accordance with Sec.
1.248, or filed with the Office in duplicate in the event service is not
possible; and, except for paragraph (b)(1) of this section, the protest
was filed prior to the date the application was published under Sec.
1.211, or the date a notice of allowance under Sec.1.311 was given or
mailed, whichever occurs first:
(1) If a protest is accompanied by the written consent of the
applicant, the protest will be considered if the protest is filed prior
to the date a notice of allowance under Sec.1.311 is given or mailed
in the application.
(2) A statement must accompany a protest that it is the first
protest submitted in the application by the real party in interest who
is submitting the protest; or the protest must comply with paragraph
(c)(5) of this section. This section does not apply to the first protest
filed in an application.
(c) In addition to compliance with paragraphs (a) and (b) of this
section, a protest must include:
(1) An information list of the documents, portions of documents, or
other information being submitted, where each:
(i) U.S. patent is identified by patent number, first named
inventor, and issue date;
(ii) U.S. patent application publication is identified by patent
application publication number, first named inventor, and publication
date;
(iii) Foreign patent or published foreign patent application is
identified by the country or patent office that issued the patent or
published the application; an appropriate document number; the
applicant, patentee, or first named inventor; and the publication date
indicated on the patent or published application;
(iv) Non-patent publication is identified by author (if any), title,
pages being submitted, publication date, and, where available, publisher
and place of publication; and
(v) Item of other information is identified by date, if known.
(2) A concise explanation of the relevance of each item identified
in the information list pursuant to paragraph (c)(1) of this section;
(3) A legible copy of each item identified in the information list,
other than U.S. patents and U.S. patent application publications;
(4) An English language translation of any non-English language item
identified in the information list; and
(5) If it is a second or subsequent protest by the same real party
in interest, an explanation as to why the issue(s)
[[Page 128]]
raised in the second or subsequent protest are significantly different
than those raised earlier and why the significantly different issue(s)
were not presented earlier, and a processing fee under Sec.1.17(i)
must be submitted.
(d) A member of the public filing a protest in an application under
this section will not receive any communication from the Office relating
to the protest, other than the return of a self-addressed postcard which
the member of the public may include with the protest in order to
receive an acknowledgment by the Office that the protest has been
received. The limited involvement of the member of the public filing a
protest pursuant to this section ends with the filing of the protest,
and no further submission on behalf of the protestor will be considered,
unless the submission is made pursuant to paragraph (c)(5) of this
section.
(e) Where a protest raising inequitable conduct issues satisfies the
provisions of this section for entry, it will be entered into the
application file, generally without comment on the inequitable conduct
issues raised in it.
(f) In the absence of a request by the Office, an applicant need not
reply to a protest.
(g) Protests that fail to comply with paragraphs (b) or (c) of this
section may not be entered, and if not entered, will be returned to the
protestor, or discarded, at the option of the Office.
[69 FR 56544, Sept. 21, 2004, as amended at 77 FR 42173, July 17, 2012]
Sec. Sec.1.292-1.297 [Reserved]
Review of Patent and Trademark Office Decisions by Court
Sec. Sec.1.301-1.304 [Reserved]
Allowance and Issue of Patent
Sec.1.311 Notice of allowance.
(a) If, on examination, it appears that the applicant is entitled to
a patent under the law, a notice of allowance will be sent to the
applicant at the correspondence address indicated in Sec.1.33. The
notice of allowance shall specify a sum constituting the issue fee and
any required publication fee (Sec.1.211(e)), which issue fee and any
required publication fee must both be paid within three months from the
date of mailing of the notice of allowance to avoid abandonment of the
application. This three-month period is not extendable.
(b) An authorization to charge the issue fee or other post-allowance
fees set forth in Sec.1.18 to a deposit account may be filed in an
individual application only after mailing of the notice of allowance.
The submission of either of the following after the mailing of a notice
of allowance will operate as a request to charge the correct issue fee
or any publication fee due to any deposit account identified in a
previously filed authorization to charge such fees:
(1) An incorrect issue fee or publication fee; or
(2) A fee transmittal form (or letter) for payment of issue fee or
publication fee.
[65 FR 57060, Sept. 20, 2000, as amended at 66 FR 67096, Dec. 28, 2001;
69 FR 56545, Sept. 21, 2004; 78 FR 62406, Oct. 21, 2013]
Sec.1.312 Amendments after allowance.
No amendment may be made as a matter of right in an application
after the mailing of the notice of allowance. Any amendment filed
pursuant to this section must be filed before or with the payment of the
issue fee, and may be entered on the recommendation of the primary
examiner, approved by the Director, without withdrawing the application
from issue.
[65 FR 14873, Mar. 20, 2000]
Sec.1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at
the initiative of the Office or upon petition by the applicant. To
request that the Office withdraw an application from issue, applicant
must file a petition under this section including the fee set forth in
Sec.1.17(h) and a showing of good and sufficient reasons why
withdrawal of the application from issue is necessary. A petition under
this section is not required if a request for continued examination
under Sec.1.114 is filed prior to payment of the issue fee. If the
Office withdraws the application from issue, the Office will issue a new
notice of allowance if the Office again allows the application.
[[Page 129]]
(b) Once the issue fee has been paid, the Office will not withdraw
the application from issue at its own initiative for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of Sec.1.56 or illegality in the application;
(3) Unpatentability of one or more claims; or
(4) For an interference or derivation proceeding.
(c) Once the issue fee has been paid, the application will not be
withdrawn from issue upon petition by the applicant for any reason
except:
(1) Unpatentability of one of more claims, which petition must be
accompanied by an unequivocal statement that one or more claims are
unpatentable, an amendment to such claim or claims, and an explanation
as to how the amendment causes such claim or claims to be patentable;
(2) Consideration of a request for continued examination in
compliance with Sec.1.114; or
(3) Express abandonment of the application. Such express abandonment
may be in favor of a continuing application.
(d) A petition under this section will not be effective to withdraw
the application from issue unless it is actually received and granted by
the appropriate officials before the date of issue. Withdrawal of an
application from issue after payment of the issue fee may not be
effective to avoid publication of application information.
[65 FR 14873, Mar. 20, 2000, as amended at 65 FR 50105, Aug. 16, 2000;
77 FR 46626, Aug. 6, 2012]
Sec.1.314 Issuance of patent.
If applicant timely pays the issue fee, the Office will issue the
patent in regular course unless the application is withdrawn from issue
(Sec.1.313) or the Office defers issuance of the patent. To request
that the Office defer issuance of a patent, applicant must file a
petition under this section including the fee set forth in Sec.1.17(h)
and a showing of good and sufficient reasons why it is necessary to
defer issuance of the patent.
[65 FR 54677, Sept. 8, 2000]
Sec.1.315 Delivery of patent.
The patent will be delivered or mailed upon issuance to the
correspondence address of record. See Sec.1.33(a).
[61 FR 42807, Aug. 19, 1996]
Sec.1.316 Application abandoned for failure to pay issue fee.
If the issue fee is not paid within three months from the date of
the notice of allowance, the application will be regarded as abandoned.
Such an abandoned application will not be considered as pending before
the Patent and Trademark Office.
[62 FR 53198, Oct. 10, 1997]
Sec. Sec.1.317-1.318 [Reserved]
Disclaimer
Sec.1.321 Statutory disclaimers, including terminal disclaimers.
(a) A patentee owning the whole or any sectional interest in a
patent may disclaim any complete claim or claims in a patent. In like
manner any patentee may disclaim or dedicate to the public the entire
term, or any terminal part of the term, of the patent granted. Such
disclaimer is binding upon the grantee and its successors or assigns. A
notice of the disclaimer is published in the Official Gazette and
attached to the printed copies of the specification. The disclaimer, to
be recorded in the Patent and Trademark Office, must:
(1) Be signed by the patentee, or an attorney or agent of record;
(2) Identify the patent and complete claim or claims, or term being
disclaimed. A disclaimer which is not a disclaimer of a complete claim
or claims, or term will be refused recordation;
(3) State the present extent of patentee's ownership interest in the
patent; and
(4) Be accompanied by the fee set forth in Sec.1.20(d).
(b) An applicant may disclaim or dedicate to the public the entire
term, or any terminal part of the term, of a patent to be granted. Such
terminal disclaimer is binding upon the grantee
[[Page 130]]
and its successors or assigns. The terminal disclaimer, to be recorded
in the Patent and Trademark Office, must:
(1) Be signed by the applicant or an attorney or agent of record;
(2) Specify the portion of the term of the patent being disclaimed;
(3) State the present extent of applicant's ownership interest in
the patent to be granted; and
(4) Be accompanied by the fee set forth in Sec.1.20(d).
(c) A terminal disclaimer, when filed to obviate judicially created
double patenting in a patent application or in a reexamination
proceeding except as provided for in paragraph (d) of this section,
must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4)
of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if
filed in a patent application or in accordance with paragraph (a)(1) of
this section if filed in a reexamination proceeding; and
(3) Include a provision that any patent granted on that application
or any patent subject to the reexamination proceeding shall be
enforceable only for and during such period that said patent is commonly
owned with the application or patent which formed the basis for the
judicially created double patenting.
(d) A terminal disclaimer, when filed in a patent application or in
a reexamination proceeding to obviate double patenting based upon a
patent or application that is not commonly owned but was disqualified as
prior art as set forth in either Sec.1.104(c)(4)(ii) or (c)(5)(ii) as
the result of activities undertaken within the scope of a joint research
agreement, must:
(1) Comply with the provisions of paragraphs (b)(2) through (b)(4)
of this section;
(2) Be signed in accordance with paragraph (b)(1) of this section if
filed in a patent application or be signed in accordance with paragraph
(a)(1) of this section if filed in a reexamination proceeding; and
(3) Include a provision waiving the right to separately enforce any
patent granted on that application or any patent subject to the
reexamination proceeding and the patent or any patent granted on the
application which formed the basis for the double patenting, and that
any patent granted on that application or any patent subject to the
reexamination proceeding shall be enforceable only for and during such
period that said patent and the patent, or any patent granted on the
application, which formed the basis for the double patenting are not
separately enforced.
[58 FR 54510, Oct. 22, 1993, as amended at 61 FR 42807, Aug. 19, 1996;
70 FR 1824, Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 77 FR 48822,
Aug. 14, 2012; 78 FR 11059, Feb. 14, 2013]
Correction of Errors in Patent
Sec.1.322 Certificate of correction of Office mistake.
(a)(1) The Director may issue a certificate of correction pursuant
to 35 U.S.C. 254 to correct a mistake in a patent, incurred through the
fault of the Office, which mistake is clearly disclosed in the records
of the Office:
(i) At the request of the patentee or the patentee's assignee;
(ii) Acting sua sponte for mistakes that the Office discovers; or
(iii) Acting on information about a mistake supplied by a third
party.
(2)(i) There is no obligation on the Office to act on or respond to
a submission of information or request to issue a certificate of
correction by a third party under paragraph (a)(1)(iii) of this section.
(ii) Papers submitted by a third party under this section will not
be made of record in the file that they relate to nor be retained by the
Office.
(3) If the request relates to a patent involved in an interference
or trial before the Patent Trial and Appeal Board, the request must
comply with the requirements of this section and be accompanied by a
motion under Sec.41.121(a)(2), Sec.41.121(a)(3), or Sec.42.20 of
this title.
(4) The Office will not issue a certificate of correction under this
section without first notifying the patentee (including any assignee of
record) at the correspondence address of record as specified in Sec.
1.33(a) and affording the patentee or an assignee an opportunity to be
heard.
[[Page 131]]
(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
Director 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 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984;
65 FR 54677, Sept. 8, 2000; 69 FR 50001, Aug. 12, 2004; 77 FR 46626,
Aug. 6, 2012]
Sec.1.323 Certificate of correction of applicant's mistake.
The Office may issue a certificate of correction under the
conditions specified in 35 U.S.C. 255 at the request of the patentee or
the patentee's assignee, upon payment of the fee set forth in Sec.
1.20(a). If the request relates to a patent involved in an interference
or trial before the Patent Trial and Appeal Board, the request must
comply with the requirements of this section and be accompanied by a
motion under Sec.41.121(a)(2), Sec.41.121(a)(3) or Sec.42.20 of
this title.
[77 FR 46626, Aug. 6, 2012]
Sec.1.324 Correction of inventorship in patent, pursuant
to 35 U.S.C. 256.
(a) Whenever through error a person is named in an issued patent as
the inventor, or an inventor is not named in an issued patent, the
Director, pursuant to 35 U.S.C. 256, may, on application of all the
parties and assignees, or on order of a court before which such matter
is called in question, issue a certificate naming only the actual
inventor or inventors.
(b) Any request to correct inventorship of a patent pursuant to
paragraph (a) of this section must be accompanied by:
(1) A statement from each person who is being added as an inventor
and each person who is currently named as an inventor either agreeing to
the change of inventorship or stating that he or she has no disagreement
in regard to the requested change;
(2) A statement from all assignees of the parties submitting a
statement under paragraph (b)(1) of this section agreeing to the change
of inventorship in the patent, which statement must comply with the
requirements of Sec.3.73(c) of this chapter; and
(3) The fee set forth in Sec.1.20(b).
(c) For correction of inventorship in an application, see Sec.
1.48.
(d) In an interference under part 41, subpart D, of this title, a
request for correction of inventorship in a patent must be in the form
of a motion under Sec.41.121(a)(2) of this title. In a contested case
under part 42, subpart D, of this title, a request for correction of
inventorship in a patent must be in the form of a motion under Sec.
42.22 of this title. The motion under Sec.41.121(a)(2) or Sec.42.22
of this title must comply with the requirements of this section.
[77 FR 48822, Aug. 14, 2012]
Sec.1.325 Other mistakes not corrected.
Mistakes other than those provided for in Sec. Sec.1.322, 1.323,
1.324, and not affording legal grounds for reissue or for reexamination,
will not be corrected after the date of the patent.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2714, Jan. 20, 1983]
Arbitration Awards
Sec. Sec.1.331-1.334 [Reserved]
Sec.1.335 Filing of notice of arbitration awards.
(a) Written notice of any award by an arbitrator pursuant to 35
U.S.C. 294 must be filed in the Patent and Trademark Office by the
patentee, or the patentee's assignee or licensee. If the award involves
more than one patent a separate notice must be filed for placement in
the file of each patent. The notice must set forth the patent number,
the names of the inventor and patent owner, and the names and addresses
of the parties to the arbitration. The notice must also include a copy
of the award.
(b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is
modified by a court, the party requesting the modification must file in
the Patent and Trademark Office, a notice of the modification for
placement in the file of each patent to which the modification applies.
The notice must set forth the patent number, the names of the
[[Page 132]]
inventor and patent owner, and the names and addresses of the parties to
the arbitration. The notice must also include a copy of the court's
order modifying the award.
(c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be
unenforceable until any notices required by paragraph (a) or (b) of this
section are filed in the Patent and Trademark Office. If any required
notice is not filed by the party designated in paragraph (a) or (b) of
this section, any party to the arbitration proceeding may file such a
notice.
(35 U.S.C. 6, Pub. L. 97-247)
[48 FR 2714, Jan. 20, 1983]
Sec. Sec.1.351-1.352 [Reserved]
Maintenance Fees
Sec.1.362 Time for payment of maintenance fees.
(a) Maintenance fees as set forth in Sec. Sec.1.20 (e) through (g)
are required to be paid in all patents based on applications filed on or
after December 12, 1980, except as noted in paragraph (b) of this
section, to maintain a patent in force beyond 4, 8 and 12 years after
the date of grant.
(b) Maintenance fees are not required for any plant patents or for
any design patents.
(c) The application filing dates for purposes of payment of
maintenance fees are as follows:
(1) For an application not claiming benefit of an earlier
application, the actual United States filing date of the application.
(2) For an application claiming benefit of an earlier foreign
application under 35 U.S.C. 119, the United States filing date of the
application.
(3) For a continuing (continuation, division, continuation-in-part)
application claiming the benefit of a prior patent application under 35
U.S.C. 120, the actual United States filing date of the continuing
application.
(4) For a reissue application, including a continuing reissue
application claiming the benefit of a reissue application under 35
U.S.C. 120, United States filing date of the original non-reissue
application on which the patent reissued is based.
(5) For an international application which has entered the United
States as a Designated Office under 35 U.S.C. 371, the international
filing date granted under Article 11(1) of the Patent Cooperation Treaty
which is considered to be the United States filing date under 35 U.S.C.
363.
(d) Maintenance fees may be paid in patents without surcharge during
the periods extending respectively from:
(1) 3 years through 3 years and 6 months after grant for the first
maintenance fee,
(2) 7 years through 7 years and 6 months after grant for the second
maintenance fee, and
(3) 11 years through 11 years and 6 months after grant for the third
maintenance fee.
(e) Maintenance fees may be paid with the surcharge set forth in
Sec.1.20(h) during the respective grace periods after:
(1) 3 years and 6 months and through the day of the 4th anniversary
of the grant for the first maintenance fee.
(2) 7 years and 6 months and through the day of the 8th anniversary
of the grant for the second maintenance fee, and
(3) 11 years and 6 months and through the day of the 12th
anniversary of the grant for the third maintenance fee.
(f) If the last day for paying a maintenance fee without surcharge
set forth in paragraph (d) of this section, or the last day for paying a
maintenance fee with surcharge set forth in paragraph (e) of this
section, falls on a Saturday, Sunday, or a federal holiday within the
District of Columbia, the maintenance fee and any necessary surcharge
may be paid under paragraph (d) or paragraph (e) respectively on the
next succeeding day which is not a Saturday, Sunday, or federal holiday.
(g) Unless the maintenance fee and any applicable surcharge is paid
within the time periods set forth in paragraphs (d), (e) or (f) of this
section, the patent will expire as of the end of the grace period set
forth in paragraph (e) of this section. A patent which expires for the
failure to pay the maintenance fee will expire at the end of the same
date (anniversary date) the patent was granted in the 4th, 8th, or 12th
year after grant.
[[Page 133]]
(h) The periods specified in Sec. Sec.1.362 (d) and (e) with
respect to a reissue application, including a continuing reissue
application thereof, are counted from the date of grant of the original
non-reissue application on which the reissued patent is based.
[49 FR 34724, Aug. 31, 1984, as amended at 56 FR 65154, Dec. 13, 1991;
58 FR 54511, Oct. 22, 1993; 82 FR 52816, Nov. 14, 2017]
Sec.1.363 Fee address for maintenance fee purposes.
(a) All notices, receipts, refunds, and other communications
relating to payment or refund of maintenance fees will be directed to
the correspondence address used during prosecution of the application as
indicated in Sec.1.33(a) unless:
(1) A fee address for purposes of payment of maintenance fees is set
forth when submitting the issue fee, or
(2) A change in the correspondence address for all purposes is filed
after payment of the issue fee, or
(3) A fee address or a change in the ``fee address'' is filed for
purposes of receiving notices, receipts and other correspondence
relating to the payment of maintenance fees after the payment of the
issue fee, in which instance, the latest such address will be used.
(b) An assignment of a patent application or patent does not result
in a change of the ``correspondence address'' or ``fee address'' for
maintenance fee purposes.
(c) A fee address must be an address associated with a Customer
Number.
[49 FR 34725, Aug. 31, 1984, as amended at 69 FR 29878, May 26, 2004]
Sec.1.366 Submission of maintenance fees.
(a) The patentee may pay maintenance fees and any necessary
surcharges, or any person or organization may pay maintenance fees and
any necessary surcharges on behalf of a patentee. A maintenance fee
transmittal letter may be signed by a juristic applicant or patent
owner. A patentee need not file authorization to enable any person or
organization to pay maintenance fees and any necessary surcharges on
behalf of the patentee.
(b) A maintenance fee and any necessary surcharge submitted for a
patent must be submitted in the amount due on the date the maintenance
fee and any necessary surcharge are paid. A maintenance fee or surcharge
may be paid in the manner set forth in Sec.1.23 or by an authorization
to charge a deposit account established pursuant to Sec.1.25. Payment
of a maintenance fee and any necessary surcharge or the authorization to
charge a deposit account must be submitted within the periods set forth
in Sec.1.362 (d), (e), or (f). Any payment or authorization of
maintenance fees and surcharges filed at any other time will not be
accepted and will not serve as a payment of the maintenance fee except
insofar as a delayed payment of the maintenance fee is accepted by the
Director in an expired patent pursuant to a petition filed under Sec.
1.378. Any authorization to charge a deposit account must authorize the
immediate charging of the maintenance fee and any necessary surcharge to
the deposit account. Payment of less than the required amount, payment
in a manner other than that set forth in Sec.1.23, or in the filing of
an authorization to charge a deposit account having insufficient funds
will not constitute payment of a maintenance fee or surcharge on a
patent. The procedures set forth in Sec.1.8 or Sec.1.10 may be
utilized in paying maintenance fees and any necessary surcharges.
(c) In submitting maintenance fees and any necessary surcharges,
identification of the patents for which maintenance fees are being paid
must include the patent number, and the application number of the United
States application for the patent on which the maintenance fee is being
paid. If the payment includes identification of only the patent number
(i.e., does not identify the application number of the United States
application for the patent on which the maintenance fee is being paid),
the Office may apply the payment to the patent identified by patent
number in the payment or may return the payment.
(d) Payment of maintenance fees and any surcharges should identify
the fee being paid for each patent as to whether it is the 3\1/2\-, 7\1/
2\-, or 11\1/2\-year fee, whether small entity status is being changed
or claimed, the amount of the maintenance fee and any surcharge
[[Page 134]]
being paid, and any assigned customer number. If the maintenance fee and
any necessary surcharge is being paid on a reissue patent, the payment
must identify the reissue patent by reissue patent number and reissue
application number as required by paragraph (c) of this section and
should also include the original patent number.
(e) Maintenance fee payments and surcharge payments relating thereto
must be submitted separate from any other payments for fees or charges,
whether submitted in the manner set forth in Sec.1.23 or by an
authorization to charge a deposit account. If maintenance fee and
surcharge payments for more than one patent are submitted together, they
should be submitted on as few sheets as possible with the patent numbers
listed in increasing patent number order. If the payment submitted is
insufficient to cover the maintenance fees and surcharges for all the
listed patents, the payment will be applied in the order the patents are
listed, beginning at the top of the listing.
(f) Notification of any change in status resulting in loss of
entitlement to small entity status must be filed in a patent prior to
paying, or at the time of paying, the earliest maintenance fee due after
the date on which status as a small entity is no longer appropriate. See
Sec.1.27(g).
(g) Maintenance fees and surcharges relating thereto will not be
refunded except in accordance with Sec. Sec.1.26 and 1.28(a).
[49 FR 34725, Aug. 31, 1984, as amended at 58 FR 54503, Oct. 22, 1993;
62 FR 53199, Oct. 10, 1997; 65 FR 54677, Sept. 8, 2000; 65 FR 78960,
Dec. 18, 2000; 78 FR 62406, Oct. 21, 2013]
Sec.1.377 Review of decision refusing to accept and record payment
of a maintenance fee filed prior to expiration of patent.
(a) Any patentee who is dissatisfied with the refusal of the Patent
and Trademark Office to accept and record a maintenance fee which was
filed prior to the expiration of the patent may petition the Director to
accept and record the maintenance fee.
(b) Any petition under this section must be filed within two months
of the action complained of, or within such other time as may be set in
the action complained of, and must be accompanied by the fee set forth
in Sec.1.17(g). The petition may include a request that the petition
fee be refunded if the refusal to accept and record the maintenance fee
is determined to result from an error by the Patent and Trademark
Office.
(c) Any petition filed under this section must comply with the
requirements of Sec.1.181(b) and must be signed by an attorney or
agent registered to practice before the Patent and Trademark Office, or
by the patentee, the assignee, or other party in interest.
[49 FR 34725, Aug. 31, 1984, as amended at 62 FR 53199, Oct. 10, 1997;
69 FR 56545, Sept. 21, 2004]
Sec.1.378 Acceptance of delayed payment of maintenance fee in expired
patent to reinstate patent.
(a) The Director may accept the payment of any maintenance fee due
on a patent after expiration of the patent if, upon petition, the delay
in payment of the maintenance fee is shown to the satisfaction of the
Director to have been unintentional. If the Director accepts payment of
the maintenance fee upon petition, the patent shall be considered as not
having expired, but will be subject to the conditions set forth in 35
U.S.C. 41(c)(2).
(b) Any petition to accept an unintentionally delayed payment of a
maintenance fee must include:
(1) The required maintenance fee set forth in Sec.1.20(e) through
(g);
(2) The petition fee as set forth in Sec.1.17(m); and
(3) A statement that the delay in payment of the maintenance fee was
unintentional. The Director may require additional information where
there is a question whether the delay was unintentional.
(c) Any petition under this section must be signed in compliance
with Sec.1.33(b).
(d) Reconsideration of a decision refusing to accept a delayed
maintenance fee may be obtained by filing a petition for reconsideration
within two months of the decision, or such other time as set in the
decision refusing to accept the delayed payment of the maintenance fee.
[[Page 135]]
(e) If the delayed payment of the maintenance fee is not accepted,
the maintenance fee will be refunded following the decision on the
petition for reconsideration, or after the expiration of the time for
filing such a petition for reconsideration, if none is filed.
[78 FR 62407, Oct. 21, 2013]
Subpart C_International Processing Provisions
Authority: Secs. 1.401 to 1.499 also issued under 35 U.S.C. 41 and
351 through 376.
Source: 43 FR 20466, May 11, 1978, unless otherwise noted.
General Information
Sec.1.401 Definitions of terms under the Patent Cooperation Treaty.
(a) The abbreviation PCT and the term Treaty mean the Patent
Cooperation Treaty.
(b) International Bureau means the World Intellectual Property
Organization located in Geneva, Switzerland.
(c) Administrative Instructions means that body of instructions for
operating under the Patent Cooperation Treaty referred to in PCT Rule
89.
(d) Request, when capitalized, means that element of the
international application described in PCT Rules 3 and 4.
(e) International application, as used in this subchapter is defined
in Sec.1.9(b).
(f) Priority date for the purpose of computing time limits under the
Patent Cooperation Treaty is defined in PCT Art. 2 (xi). Note also Sec.
1.465.
(g) Demand, when capitalized, means that document filed with the
International Preliminary Examining Authority which requests an
international preliminary examination.
(h) Annexes means amendments made to the claims, description or the
drawings before the International Preliminary Examining Authority.
(i) Other terms and expressions in this subpart C not defined in
this section are to be taken in the sense indicated in PCT Art. 2 and 35
U.S.C. 351.
[43 FR 20466, May 11, 1978, as amended at 52 FR 20047, May 28, 1987]
Sec.1.412 The United States Receiving Office.
(a) The United States Patent and Trademark Office is a Receiving
Office only for applicants who are residents or nationals of the United
States of America.
(b) The Patent and Trademark Office, when acting as a Receiving
Office, will be identified by the full title ``United States Receiving
Office'' or by the abbreviation ``RO/US.''
(c) The major functions of the Receiving Office include:
(1) According of international filing dates to international
applications meeting the requirements of PCT Art. 11(1), and PCT Rule
20;
(2) Assuring that international applications meet the standards for
format and content of PCT Art. 14(1), PCT Rule 9, 26, 29.1, 37, 38, 91,
and portions of PCT Rules 3 through 11;
(3) Collecting and, when required, transmitting fees due for
processing international applications (PCT Rule 14, 15, 16);
(4) Transmitting the record and search copies to the International
Bureau and International Searching Authority, respectively (PCT Rules 22
and 23); and
(5) Determining compliance with applicable requirements of part 5 of
this chapter.
(6) Reviewing and, unless prescriptions concerning national security
prevent the application from being so transmitted (PCT Rule 19.4),
transmitting the international application to the International Bureau
for processing in its capacity as a Receiving Office:
(i) Where the United States Receiving Office is not the competent
Receiving Office under PCT Rule 19.1 or 19.2 and Sec.1.421(a); or
(ii) Where the international application is not in English but is in
a language accepted under PCT Rule 12.1(a) by the International Bureau
as a Receiving Office; or
(iii) Where there is agreement and authorization in accordance with
PCT Rule 19.4(a)(iii).
[43 FR 20466, May 11, 1978, as amended at 60 FR 21439, May 2, 1995; 63
FR 29617, June 1, 1998]
[[Page 136]]
Sec.1.413 The United States International Searching Authority.
(a) Pursuant to appointment by the Assembly, the United States
Patent and Trademark Office will act as an International Searching
Authority for international applications filed in the United States
Receiving Office and in other Receiving Offices as may be agreed upon by
the Director, in accordance with the agreement between the Patent and
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
(b) The Patent and Trademark Office, when acting as an International
Searching Authority, will be identified by the full title ``United
States International Searching Authority'' or by the abbreviation ``ISA/
US.''
(c) The major functions of the International Searching Authority
include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type searches and
preparing international and international-type search reports (PCT Art.
15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing
declarations that no international search report will be established
(PCT Article 17(2)(a));
(4) Preparing written opinions of the International Searching
Authority in accordance with PCT Rule 43bis (when necessary); and
(5) Transmitting the international search report and the written
opinion of the International Searching Authority to the applicant and
the International Bureau.
[43 FR 20466, May 11, 1978, as amended at 68 FR 59886, Oct. 20, 2003]
Sec.1.414 The United States Patent and Trademark Office as a
Designated Office or Elected Office.
(a) The United States Patent and Trademark Office will act as a
Designated Office or Elected Office for international applications in
which the United States of America has been designated or elected as a
State in which patent protection is desired.
(b) The United States Patent and Trademark Office, when acting as a
Designated Office or Elected Office during international processing will
be identified by the full title ``United States Designated Office'' or
by the abbreviation ``DO/US'' or by the full title ``United States
Elected Office'' or by the abbreviation ``EO/US''.
(c) The major functions of the United States Designated Office or
Elected Office in respect to international applications in which the
United States of America has been designated or elected, include:
(1) Receiving various notifications throughout the international
stage and
(2) National stage processing for international applications
entering the national stage under 35 U.S.C. 371.
[52 FR 20047, May 28, 1987, as amended at 77 FR 48823, Aug. 14, 2012]
Sec.1.415 The International Bureau.
(a) The International Bureau is the World Intellectual Property
Organization located at Geneva, Switzerland. It is the international
intergovernmental organization which acts as the coordinating body under
the Treaty and the Regulations (PCT Art. 2 (xix) and 35 U.S.C. 351 (h)).
(b) The major functions of the International Bureau include:
(1) Publishing of international applications and the International
Gazette;
(2) Transmitting copies of international applications to Designated
Offices;
(3) Storing and maintaining record copies; and
(4) Transmitting information to authorities pertinent to the
processing of specific international applications.
Sec.1.416 The United States International Preliminary Examining Authority.
(a) Pursuant to appointment by the Assembly, the United States
Patent and Trademark Office will act as an International Preliminary
Examining Authority for international applications filed in the United
States Receiving Office and in other Receiving Offices as may be agreed
upon by the Director, in accordance with agreement between the Patent
and Trademark Office and the International Bureau.
(b) The United States Patent and Trademark Office, when acting as an
International Preliminary Examining Authority, will be identified by the
full
[[Page 137]]
title ``United States International Preliminary Examining Authority'' or
by the abbreviation ``IPEA/US.''
(c) The major functions of the International Preliminary Examining
Authority include:
(1) Receiving and checking for defects in the Demand;
(2) Forwarding Demands in accordance with PCT Rule 59.3;
(3) Collecting the handling fee for the International Bureau and the
preliminary examination fee for the United States International
Preliminary Examining Authority;
(4) Informing applicant of receipt of the Demand;
(5) Considering the matter of unity of invention;
(6) Providing an international preliminary examination report which
is a non-binding opinion on the questions of whether the claimed
invention appears: to be novel, to involve an inventive step (to be
nonobvious), and to be industrially applicable; and
(7) Transmitting the international preliminary examination report to
applicant and the International Bureau.
[52 FR 20047, May 28, 1987, as amended at 63 FR 29617, June 1, 1998]
Sec.1.417 Submission of translation of international publication.
The submission of an English language translation of the publication
of an international application pursuant to 35 U.S.C. 154(d)(4) must
clearly identify the international application to which it pertains
(Sec.1.5(a)) and be clearly identified as a submission pursuant to 35
U.S.C. 154(d)(4). Otherwise, the submission will be treated as a filing
under 35 U.S.C. 111(a). Such submissions should be marked ``Mail Stop
PCT.''
[68 FR 71007, Dec. 22, 2003]
Sec.1.419 Display of currently valid control number under the
Paperwork Reduction Act.
(a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.), the collection of information in this subpart has been
reviewed and approved by the Office of Management and Budget under
control number 0651-0021.
(b) Notwithstanding any other provision of law, no person is
required to respond to nor shall a person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid Office of Management and Budget
control number. This section constitutes the display required by 44
U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of
information under Office of Management and Budget control number 0651-
0021 (see 5 CFR 1320.5(b)(2)(ii)(D)).
[63 FR 29617, June 1, 1998]
Who May File an International Application
Sec.1.421 Applicant for international application.
(a) Only residents or nationals of the United States of America may
file international applications in the United States Receiving Office.
If an international application does not include an applicant who is
indicated as being a resident or national of the United States of
America, and at least one applicant:
(1) Has indicated a residence or nationality in a PCT Contracting
State, or
(2) Has no residence or nationality indicated, applicant will be so
notified and, if the international application includes a fee amount
equivalent to that required by Sec.1.445(a)(4), the international
application will be forwarded for processing to the International Bureau
acting as a Receiving Office (see also Sec.1.412(c)(6)).
(b) Although the United States Receiving Office will accept
international applications filed by any applicant who is a resident or
national of the United States of America for international processing,
for the purposes of the designation of the United States, an
international application will be accepted by the Patent and Trademark
Office for the national stage only if the applicant is the inventor or
other person as provided in Sec.1.422 or Sec.1.424. Joint inventors
must jointly apply for an international application.
[[Page 138]]
(c) A registered attorney or agent of the applicant may sign the
international application Request and file the international application
for the applicant. A separate power of attorney from each applicant may
be required.
(d) Any indication of different applicants for the purpose of
different Designated Offices must be shown on the Request portion of the
international application.
(e) Requests for changes in the indications concerning the
applicant, agent, or common representative of an international
application shall be made in accordance with PCT Rule 92bis and may be
required to be signed by all applicants.
(f) Requests for withdrawals of the international application,
designations, priority claims, the Demand, or elections shall be made in
accordance with PCT Rule 90bis and must be signed by all applicants. A
separate power of attorney from the applicants will be required for the
purposes of any request for a withdrawal in accordance with PCT Rule
90bis which is not signed by all applicants.
[77 FR 48823, Aug. 14, 2012]
Sec.1.422 Legal representative as applicant in an international
application.
If an inventor is deceased or under legal incapacity, the legal
representative of the inventor may be an applicant in an international
application which designates the United States of America.
[77 FR 48823, Aug. 14, 2012]
Sec.1.423 [Reserved]
Sec.1.424 Assignee, obligated assignee, or person having sufficient
proprietary interest as applicant in an international application.
(a) A person to whom the inventor has assigned or is under an
obligation to assign the invention may be an applicant in an
international application which designates the United States of America.
A person who otherwise shows sufficient proprietary interest in the
matter may be an applicant in an international application which
designates the United States of America on proof of the pertinent facts
and a showing that such action is appropriate to preserve the rights of
the parties.
(b) Neither any showing required under paragraph (a) of this section
nor documentary evidence of ownership or proprietary interest will be
required or considered by the Office in the international stage, but
will be required in the national stage in accordance with the conditions
and requirements of Sec.1.46.
[77 FR 48823, Aug. 14, 2012]
The International Application
Sec.1.431 International application requirements.
(a) An international application shall contain, as specified in the
Treaty and the Regulations, a Request, a description, one or more
claims, an abstract, and one or more drawings (where required). (PCT
Art. 3(2) and section 207 of the Administrative Instructions.)
(b) An international filing date will be accorded by the United
States Receiving Office, at the time to receipt of the international
application, provided that:
(1) At least one applicant (Sec.1.421) is a United States resident
or national and the papers filed at the time of receipt of the
international application so indicate (35 U.S.C. 361(a), PCT Art.
11(1)(i)).
(2) The international application is in the English language (35
U.S.C. 361(c), PCT Art. 11(1)(ii)).
(3) The international application contains at least the following
elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international
application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the
International Patent Cooperation Union (Sec.1.432);
(iii) The name of the applicant, as prescribed (note Sec. Sec.
1.421, 1.422, and 1.424);
(iv) A part which on the face of it appears to be a description; and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the
transmittal and search fees (Sec.1.445) may be
[[Page 139]]
made in full at the time the international application papers required
by paragraph (b) of this section are deposited or within one month
thereafter. The international filing, transmittal, and search fee
payable is the international filing, transmittal, and search fee in
effect on the receipt date of the international application. If the
international filing, transmittal, and search fees are not paid within
one month from the date of receipt of the international application and
prior to the sending of a notice of deficiency, which imposes a late
payment fee (Sec.1.445(a)(6)), the applicant will be notified and
given a one-month non-extendable time limit within which to pay the
deficient fees plus the late payment fee.
(d) If the payment needed to cover the transmittal fee, the
international filing fee, the search fee, and the late payment fee
pursuant to paragraph (c) of this section is not timely made in
accordance with PCT Rule 16bis.1(e), the Receiving Office will declare
the international application withdrawn under PCT Article 14(3)(a).
[43 FR 20466, May 11, 1978, as amended at 50 FR 9383, Mar. 7, 1985; 52
FR 20047, May 28, 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, June 1,
1998; 68 FR 59887, Oct. 20, 2003; 68 FR 67805, Dec. 4, 2003; 77 FR
48823, Aug. 14, 2012; 85 FR 46990, Aug. 3, 2020]
Sec.1.432 Designation of States by filing an international application.
The filing of an international application request shall constitute:
(a) The designation of all Contracting States that are bound by the
Treaty on the international filing date;
(b) An indication that the international application is, in respect
of each designated State to which PCT Article 43 or 44 applies, for the
grant of every kind of protection which is available by way of the
designation of that State; and
(c) An indication that the international application is, in respect
of each designated State to which PCT Article 45(1) applies, for the
grant of a regional patent and also, unless PCT Article 45(2) applies, a
national patent.
[68 FR 59887, Oct. 20, 2003]
Sec.1.433 Physical requirements of international application.
(a) The international application and each of the documents that may
be referred to in the check list of the Request (PCT Rule 3.3(a)(ii))
shall be filed in one copy only.
(b) All sheets of the international application must be on A4 size
paper (21.0 x 29.7 cm.).
(c) Other physical requirements for international applications are
set forth in PCT Rule 11 and sections 201-207 of the Administrative
Instructions.
Sec.1.434 The request.
(a) The request shall be made on a standardized form (PCT Rules 3
and 4). Copies of printed Request forms are available from the United
States Patent and Trademark Office. Letters requesting printed forms
should be marked ``Mail Stop PCT.''
(b) The Check List portion of the Request form should indicate each
document accompanying the international application on filing.
(c) All information, for example, addresses, names of States and
dates, shall be indicated in the Request as required by PCT Rule 4 and
Administrative Instructions 110 and 201.
(d) For the purposes of the designation of the United States of
America, an international application shall include:
(1) The name of the inventor; and
(2) A reference to any prior-filed national application or
international application designating the United States of America, if
the benefit of the filing date for the prior-filed application is to be
claimed.
(e) An international application may also include in the Request a
declaration of the inventors as provided for in PCT Rule 4.17(iv).
[43 FR 20466, May 11, 1978, as amended at 58 FR 4345, Jan. 14, 1993; 66
FR 16006, Mar. 22, 2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, Mar.
25, 2003; 68 FR 59887, Oct. 20, 2003]
Sec.1.435 The description.
(a) The application must meet the requirements as to the content and
form of the description set forth in PCT Rules 5, 9, 10, and 11 and
sections 204 and 208 of the Administrative Instructions.
[[Page 140]]
(b) In international applications designating the United States the
description must contain upon filing an indication of the best mode
contemplated by the inventor for carrying out the claimed invention.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29618, June 1, 1998]
Sec.1.436 The claims.
The requirements as to the content and format of claims are set
forth in PCT Art. 6 and PCT Rules 6, 9, 10 and 11 and shall be adhered
to. The number of the claims shall be reasonable, considering the nature
of the invention claimed.
Sec.1.437 The drawings.
(a) Drawings are required when they are necessary for the
understanding of the invention (PCT Art. 7).
(b) The physical requirements for drawings are set forth in PCT Rule
11 and shall be adhered to.
[72 FR 51563, Sept. 10, 2007]
Sec.1.438 The abstract.
(a) Requirements as to the content and form of the abstract are set
forth in PCT Rule 8, and shall be adhered to.
(b) Lack of an abstract upon filing of an international application
will not affect the granting of a filing date. However, failure to
furnish an abstract within one month from the date of the notification
by the Receiving Office will result in the international appplication
being declared withdrawn.
Fees
Sec.1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications
are established by law or by the director under the authority of 35
U.S.C. 376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)
consisting of:
(i) A basic portion:
(A) For an international application having a receipt date that is
on or after October 2, 2020:
Table 1 to Paragraph (a)(1)(i)(A)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $65.00
By a small entity (Sec. 1.27(a))......................... 130.00
By other than a small or micro entity...................... 260.00
------------------------------------------------------------------------
(B) For an international application having a receipt date that is
on or after January 1, 2014, and before October 2, 2020:
Table 2 to Paragraph (a)(1)(i)(B)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $60.00
By a small entity (Sec. 1.27(a))......................... 120.00
By other than a small or micro entity...................... 240.00
------------------------------------------------------------------------
(C) For an international application having a receipt date that is
before January 1, 2014: $240.00.
(ii) A non-electronic filing fee portion for any international
application designating the United States of America that is filed on or
after November 15, 2011, other than by the Office electronic filing
system, except for a plant application:
Table 3 to Paragraph (a)(1)(ii)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a small entity (Sec. 1.27(a))......................... $200.00
By other than a small entity............................... 400.00
------------------------------------------------------------------------
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) For an international application having a receipt date that is
on or after October 2, 2020:
Table 4 to Paragraph (a)(2)(i)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $545.00
By a small entity (Sec. 1.27(a))......................... 1,090.00
By other than a small or micro entity...................... 2,180.00
------------------------------------------------------------------------
(ii) For an international application having a receipt date that is
on or after January 1, 2014, and before October 2, 2020:
Table 5 to Paragraph (a)(2)(ii)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $520.00
By a small entity (Sec. 1.27(a))......................... 1,040.00
By other than a small or micro entity...................... 2,080.00
------------------------------------------------------------------------
(iii) For an international application having a receipt date that is
before January 1, 2014: $2,080.00.
(3) A supplemental search fee when required, per additional
invention:
[[Page 141]]
(i) For an international application having a receipt date that is
on or after October 2, 2020:
Table 6 to Paragraph (a)(3)(i)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $545.00
By a small entity (Sec. 1.27(a))......................... 1,090.00
By other than a small or micro entity...................... 2,180.00
------------------------------------------------------------------------
(ii) For an international application having a receipt date that is
on or after January 1, 2014, and before October 2, 2020:
Table 7 to Paragraph (a)(3)(ii)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $520.00
By a small entity (Sec. 1.27(a))......................... 1,040.00
By other than a small or micro entity...................... 2,080.00
------------------------------------------------------------------------
(iii) For an international application having a receipt date that is
before January 1, 2014: $2,080.00.
(4) A fee equivalent to the transmittal fee in paragraph (a)(1) of
this section that would apply if the USPTO was the Receiving Office for
transmittal of an international application to the International Bureau
for processing in its capacity as a Receiving Office (PCT Rule 19.4).
(5) Late furnishing fee for providing a sequence listing in response
to an invitation under PCT Rule 13ter:
Table 8 to Paragraph (a)(5)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $80.00
By a small entity (Sec. 1.27(a))......................... 160.00
By other than a small or micro entity...................... 320.00
------------------------------------------------------------------------
(6) Late payment fee pursuant to PCT Rule 16bis.2.
(b) The international filing fee shall be as prescribed in PCT Rule
15.
[78 FR 17107, Mar. 20, 2013, as amended at 82 FR 52816, Nov. 14, 2017;
85 FR 46990, Aug. 3, 2020; 85 FR 58283, Sept. 18, 2020]
Sec.1.446 Refund of international application filing and processing
fees.
(a) Money paid for international application fees, where paid by
actual mistake or in excess, such as a payment not required by law or
treaty and its regulations, may be refunded. A mere change of purpose
after the payment of a fee will not entitle a party to a refund of such
fee. The Office will not refund amounts of twenty-five dollars or less
unless a refund is specifically requested and will not notify the payor
of such amounts. If the payor or party requesting a refund does not
provide the banking information necessary for making refunds by
electronic funds transfer, the Office may use the banking information
provided on the payment instrument to make any refund by electronic
funds transfer.
(b) Any request for refund under paragraph (a) of this section must
be filed within two years from the date the fee was paid. If the Office
charges a deposit account by an amount other than an amount specifically
indicated in an authorization under Sec.1.25(b), any request for
refund based upon such charge must be filed within two years from the
date of the deposit account statement indicating such charge and include
a copy of that deposit account statement. The time periods set forth in
this paragraph are not extendable.
(c) Refund of the supplemental search fees will be made if such
refund is determined to be warranted by the Director or the Director's
designee acting under PCT Rule 40.2(c).
(d) The international and search fees will be refunded if no
international filing date is accorded or if the application is withdrawn
before transmittal of the record copy to the International Bureau (PCT
Rules 15.6 and 16.2). The search fee will be refunded if the application
is withdrawn before transmittal of the search copy to the International
Searching Authority. The transmittal fee will not be refunded.
(e) The handling fee (Sec.1.482(b)) will be refunded (PCT Rule
57.6) only if:
(1) The Demand is withdrawn before the Demand has been sent by the
International Preliminary Examining Authority to the International
Bureau, or
(2) The Demand is considered not to have been submitted (PCT Rule
54.4(a)).
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50
FR 31826, Aug. 6, 1985; 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8,
2000]
[[Page 142]]
Priority
Sec.1.451 The priority claim and priority document in an international
application.
(a) The claim for priority must, subject to paragraph (d) of this
section, be made on the Request (PCT Rule 4.10) in a manner complying
with sections 110 and 115 of the Administrative Instructions.
(b) Whenever the priority of an earlier United States national
application or international application filed with the United States
Receiving Office is claimed in an international application, the
applicant may request in the Request or in a letter of transmittal
accompanying the international application upon filing with the United
States Receiving Office or in a separate letter filed in the United
States Receiving Office not later than 16 months after the priority
date, that the United States Patent and Trademark Office prepare a
certified copy of the prior application for transmittal to the
International Bureau (PCT Article 8 and PCT Rule 17). The fee for
preparing a certified copy is set forth in Sec.1.19(b)(1).
(c) If a certified copy of the priority document is not submitted
together with the international application on filing, or, if the
priority application was filed in the United States and a request and
appropriate payment for preparation of such a certified copy do not
accompany the international application on filing or are not filed
within 16 months of the priority date, the certified copy of the
priority document must be furnished by the applicant to the
International Bureau or to the United States Receiving Office within the
time limit specified in PCT Rule 17.1(a).
(d) The applicant may correct or add a priority claim in accordance
with PCT Rule 26bis.1.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 50
FR 11366, Mar. 21, 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14,
1993; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, 2001]
Sec.1.452 Restoration of right of priority.
(a) If the international application has an international filing
date which is later than the expiration of the priority period as
defined by PCT Rule 2.4 but within two months from the expiration of the
priority period, the right of priority in the international application
may be restored upon request if the delay in filing the international
application within the priority period was unintentional.
(b) A request to restore the right of priority in an international
application under paragraph (a) of this section must be filed not later
than two months from the expiration of the priority period and must
include:
(1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if
the priority claim in respect of the earlier application is not
contained in the international application;
(2) The petition fee as set forth in Sec.1.17(m); and
(3) A statement that the delay in filing the international
application within the priority period was unintentional. The Director
may require additional information where there is a question whether the
delay was unintentional.
(c) If the applicant makes a request for early publication under PCT
Article 21(2)(b), any requirement under paragraph (b) of this section
filed after the technical preparations for international publication
have been completed by the International Bureau shall be considered as
not having been submitted in time.
[72 FR 51563, Sept. 10, 2007, as amended at 78 FR 62407, Oct. 21, 2013]
Sec.1.453 Transmittal of documents relating to earlier search
or classification.
(a) Subject to paragraph (c) of this section, where an applicant has
requested in an international application filed with the United States
Receiving Office pursuant to PCT Rule 4.12 that an International
Searching Authority take into account the results of an earlier search,
the United States Receiving Office shall prepare and transmit to the
International Searching Authority, as applicable, a copy of the results
of the earlier search and any earlier classification as provided under
PCT Rule 23bis.1.
[[Page 143]]
(b) Subject to paragraph (c) of this section, where an international
application filed with the United States Receiving Office claims the
priority of an earlier application filed with the USPTO in which the
USPTO has carried out an earlier search or has classified such earlier
application, the United States Receiving Office shall prepare and
transmit to the International Searching Authority a copy of the results
of any such earlier search and earlier classification as provided under
PCT Rule 23bis.2.
(c) The United States Receiving Office will not prepare a copy of
the results of an earlier search or earlier classification referred to
in paragraphs (a) and (b) of this section for transmittal to an
International Searching Authority from an application preserved in
confidence (Sec.1.14) unless the international application contains
written authority granting the International Searching Authority access
to such results. Written authority provided under this paragraph must be
signed by:
(1) An applicant in the international application who is also an
applicant in the application preserved in confidence; or
(2) A person set forth in Sec.1.14(c) permitted to grant access to
the application preserved in confidence.
[82 FR 24252, May 26, 2017]
Representation
Sec.1.455 Representation in international applications.
(a) Applicants of international applications may be represented by
attorneys or agents registered to practice before the United States
Patent and Trademark Office or by an applicant appointed as a common
representative (PCT Art. 49, Rules 4.8 and 90 and Sec.11.9). If
applicants have not appointed an attorney or agent or one of the
applicants to represent them, and there is more than one applicant, the
applicant first named in the request and who is entitled to file in the
U.S. Receiving Office shall be considered to be the common
representative of all the applicants. An attorney or agent having the
right to practice before a national office with which an international
application is filed and for which the United States is an International
Searching Authority or International Preliminary Examining Authority may
be appointed to represent the applicants in the international
application before that authority. An attorney or agent may appoint an
associate attorney or agent who shall also then be of record (PCT Rule
90.1(d)). The appointment of an attorney or agent, or of a common
representative, revokes any earlier appointment unless otherwise
indicated (PCT Rule 90.6 (b) and (c)).
(b) Appointment of an agent, attorney or common representative (PCT
Rule 4.8) must be effected either in the Request form, signed by
applicant, in the Demand form, signed by applicant, or in a separate
power of attorney submitted either to the United States Receiving Office
or to the International Bureau.
(c) Powers of attorney and revocations thereof should be submitted
to the United States Receiving Office until the issuance of the
international search report.
(d) The addressee for correspondence will be as indicated in section
108 of the Administrative Instructions.
[43 FR 20466, May 11, 1978, as amended at 50 FR 5171, Feb. 6, 1985; 58
FR 4345, Jan. 14, 1993; 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June
24, 2004]
Transmittal of Record Copy
Sec.1.461 Procedures for transmittal of record copy to the
International Bureau.
(a) Transmittal of the record copy of the international application
to the International Bureau shall be made by the United States Receiving
Office or as provided by PCT Rule 19.4.
(b) [Reserved]
(c) No copy of an international application may be transmitted to
the International Bureau, a foreign Designated Office, or other foreign
authority by the United States Receiving Office or the applicant, unless
the applicable requirements of part 5 of this chapter have been
satisfied.
[43 FR 20466, May 11, 1978, as amended at 50 FR 9384, Mar. 7, 1985; 63
FR 29619, June 1, 1998]
[[Page 144]]
Timing
Sec.1.465 Timing of application processing based on the priority date.
(a) For the purpose of computing time limits under the Treaty, the
priority date shall be defined as in PCT Art. 2(xi).
(b) When a claimed priority date is corrected under PCT Rule
26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a),
withdrawn under PCT Rule 90bis.3, or considered not to have been made
under PCT Rule 26bis.2, the priority date for the purposes of computing
any non-expired time limits will be the filing date of the earliest
remaining priority claim under PCT Article 8 of the international
application, or if none, the international filing date.
(c) When corrections under PCT Art. 11(2), Art. 14(2) or PCT Rule
20.2(a) (i) or (iii) are timely submitted, and the date of receipt of
such corrections falls later than one year from the claimed priority
date or dates, the Receiving Office shall proceed under PCT Rule
26bis.2.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 72
FR 51564, Sept. 10, 2007]
Sec.1.468 Delays in meeting time limits.
Delays in meeting time limits during international processing of
international applications may only be excused as provided in PCT Rule
82. For delays in meeting time limits in a national application, see
Sec.1.137.
Amendments
Sec.1.471 Corrections and amendments during international processing.
(a) Except as otherwise provided in this paragraph, all corrections
submitted to the United States Receiving Office or United States
International Searching Authority must be in English, in the form of
replacement sheets in compliance with PCT Rules 10 and 11, and
accompanied by a letter that draws attention to the differences between
the replaced sheets and the replacement sheets. Replacement sheets are
not required for the deletion of lines of text, the correction of simple
typographical errors, and one addition or change of not more than five
words per sheet. These changes may be stated in a letter and, if
appropriate, the United States Receiving Office will make the deletion
or transfer the correction to the international application, provided
that such corrections do not adversely affect the clarity and direct
reproducibility of the application (PCT Rule 26.4). Amendments that do
not comply with PCT Rules 10 and 11.1 to 11.13 may not be entered.
(b) Amendments of claims submitted to the International Bureau shall
be as prescribed by PCT Rule 46.
(c) Corrections or additions to the Request of any declarations
under PCT Rule 4.17 should be submitted to the International Bureau as
prescribed by PCT Rule 26ter.
[43 FR 20466, May 11, 1978, as amended at 63 FR 29619, June 1, 1998; 66
FR 16006, Mar. 22, 2001]
Sec.1.472 Changes in person, name, or address of applicants and
inventors.
All requests for a change in person, name or address of applicants
and inventor be sent to the United States Receiving Office until the
time of issuance of the international search report. Thereafter requests
for such changes should be submitted to the International Bureau.
[43 FR 20466, May 11, 1978. Redesignated at 52 FR 20047, May 28, 1987]
Unity of Invention
Sec.1.475 Unity of invention before the International Searching
Authority, the International Preliminary Examining Authority and
during the national stage.
(a) An international and a national stage application shall relate
to one invention only or to a group of inventions so linked as to form a
single general inventive concept (``requirement of unity of
invention''). Where a group of inventions is claimed in an application,
the requirement of unity of invention shall be fulfilled only when there
is a technical relationship among those inventions involving one or more
of the same or corresponding special technical features. The expression
``special technical features'' shall mean those
[[Page 145]]
technical features that define a contribution which each of the claimed
inventions, considered as a whole, makes over the prior art.
(b) An international or a national stage application containing
claims to different categories of invention will be considered to have
unity of invention if the claims are drawn only to one of the following
combinations of categories:
(1) A product and a process specially adapted for the manufacture of
said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of
the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for
carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of
the said product, and an apparatus or means specifically designed for
carrying out the said process.
(c) If an application contains claims to more or less than one of
the combinations of categories of invention set forth in paragraph (b)
of this section, unity of invention might not be present.
(d) If multiple products, processes of manufacture or uses are
claimed, the first invention of the category first mentioned in the
claims of the application and the first recited invention of each of the
other categories related thereto will be considered as the main
invention in the claims, see PCT Article 17(3)(a) and Sec.1.476(c).
(e) The determination whether a group of inventions is so linked as
to form a single general inventive concept shall be made without regard
to whether the inventions are claimed in separate claims or as
alternatives within a single claim.
[58 FR 4345, Jan. 14, 1993]
Sec.1.476 Determination of unity of invention before the International
Searching Authority.
(a) Before establishing the international search report, the
International Searching Authority will determine whether the
international application complies with the requirement of unity of
invention as set forth in Sec.1.475.
(b) If the International Searching Authority considers that the
international application does not comply with the requirement of unity
of invention, it shall inform the applicant accordingly and invite the
payment of additional fees (note Sec.1.445 and PCT Art. 17(3)(a) and
PCT Rule 40). The applicant will be given a time period in accordance
with PCT Rule 40.3 to pay the additional fees due.
(c) In the case of non-compliance with unity of invention and where
no additional fees are paid, the international search will be performed
on the invention first mentioned (``main invention'') in the claims.
(d) Lack of unity of invention may be directly evident before
considering the claims in relation to any prior art, or after taking the
prior art into consideration, as where a document discovered during the
search shows the invention claimed in a generic or linking claim lacks
novelty or is clearly obvious, leaving two or more claims joined thereby
without a common inventive concept. In such a case the International
Searching Authority may raise the objection of lack of unity of
invention.
[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May
28, 1987; 58 FR 4346, Jan. 14, 1993]
Sec.1.477 Protest to lack of unity of invention before the International
Searching Authority.
(a) If the applicant disagrees with the holding of lack of unity of
invention by the International Searching Authority, additional fees may
be paid under protest, accompanied by a request for refund and a
statement setting forth reasons for disagreement or why the required
additional fees are considered excessive, or both (PCT Rule 40.2(c)).
(b) Protest under paragraph (a) of this section will be examined by
the Director or the Director's designee. In the event that the
applicant's protest is determined to be justified, the additional fees
or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the
decision thereon accompany the international
[[Page 146]]
search report when forwarded to the Designated Offices, may notify the
International Searching Authority to that effect any time prior to the
issuance of the international search report. Thereafter, such
notification should be directed to the International Bureau (PCT Rule
40.2(c)).
[43 FR 20466, May 11, 1978. Redesignated and amended at 52 FR 20048, May
28, 1987]
International Preliminary Examination
Sec.1.480 Demand for international preliminary examination.
(a) On the filing of a proper Demand in an application for which the
United States International Preliminary Examining Authority is competent
and for which the fees have been paid, the international application
shall be the subject of an international preliminary examination. The
preliminary examination fee (Sec.1.482(a)(1)) and the handling fee
(Sec.1.482(b)) shall be due within the applicable time limit set forth
in PCT Rule 57.3.
(b) The Demand shall be made on a standardized form (PCT Rule 53).
Copies of the printed Demand forms are available from the United States
Patent and Trademark Office. Letters requesting printed Demand forms
should be marked ``Mail Stop PCT.''
(c) Withdrawal of a proper Demand prior to the start of the
international preliminary examination will entitle applicant to a refund
of the preliminary examination fee minus the amount of the transmittal
fee set forth in Sec.1.445(a)(1).
(d) The filing of a Demand shall constitute the election of all
Contracting States which are designated and are bound by Chapter II of
the Treaty on the international filing date (PCT Rule 53.7).
(e) Any Demand filed after the expiration of the applicable time
limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had
not been submitted (PCT Rule 54bis.1(b)).
[52 FR 20048, May 28, 1987, as amended at 53 FR 47810, Nov. 28, 1988; 58
FR 4346, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 67 FR 523, Jan. 4,
2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888, Oct. 20, 2003]
Sec.1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid
within the time period set in PCT Rule 57.3. The handling fee or
preliminary examination fee payable is the handling fee or preliminary
examination fee in effect on the date of payment.
(1) If the handling and preliminary examination fees are not paid
within the time period set in PCT Rule 57.3, applicant will be notified
and given one month within which to pay the deficient fees plus a late
payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees, but not
exceeding an amount equal to double the handling fee; or
(ii) An amount equal to the handling fee (PCT Rule 58bis.2).
(2) The one-month time limit set in this paragraph to pay deficient
fees may not be extended.
(b) If the payment needed to cover the handling and preliminary
examination fees, pursuant to paragraph (a) of this section, is not
timely made in accordance with PCT Rule 58bis.1(d), the United States
International Preliminary Examination Authority will declare the Demand
to be considered as if it had not been submitted.
[63 FR 29619, June 1, 1998, as amended at 68 FR 59888, Oct. 20, 2003]
Sec.1.482 International preliminary examination and processing fees.
(a) The following fees and charges for international preliminary
examination are established by the director under the authority of 35
U.S.C. 376:
(1) The following preliminary examination fee is due on filing the
demand:
(i) If an international search fee as set forth in Sec.1.445(a)(2)
has been paid on the international application to the United States
Patent and Trademark Office as an International Searching Authority:
Table 1 to Paragraph (a)(1)(i)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $160.00
By a small entity (Sec. 1.27(a))......................... 320.00
By other than a small or micro entity...................... 640.00
------------------------------------------------------------------------
[[Page 147]]
(ii) If the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office:
Table 2 to Paragraph (a)(1)(ii)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $200.00
By a small entity (Sec. 1.27(a))......................... 400.00
By other than a small or micro entity...................... 800.00
------------------------------------------------------------------------
(2) An additional preliminary examination fee when required, per
additional invention:
Table 3 to Paragraph (a)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $160.00
By a small entity (Sec. 1.27(a))......................... 320.00
By other than a small or micro entity...................... 640.00
------------------------------------------------------------------------
(b) The handling fee is due on filing the demand and shall be as
prescribed in PCT Rule 57.
(c) Late furnishing fee for providing a sequence listing in response
to an invitation under PCT Rule 13ter:
Table 4 to Paragraph (c)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $80.00
By a small entity (Sec. 1.27(a))......................... 160.00
By other than a small or micro entity...................... 320.00
------------------------------------------------------------------------
[85 FR 46991, Aug. 3, 2020]
Sec.1.484 Conduct of international preliminary examination.
(a) An international preliminary examination will be conducted to
formulate a non-binding opinion as to whether the claimed invention has
novelty, involves an inventive step (is non-obvious) and is industrially
applicable.
(b) International preliminary examination will begin in accordance
with PCT Rule 69.1.
(c) No international preliminary examination will be conducted on
inventions not previously searched by an International Searching
Authority.
(d) The International Preliminary Examining Authority will establish
a written opinion if any defect exists or if the claimed invention lacks
novelty, inventive step or industrial applicability and will set a non-
extendable time limit in the written opinion for the applicant to reply.
(e) The written opinion established by the International Searching
Authority under PCT Rule 43bis.1 shall be considered to be a written
opinion of the United States International Preliminary Examining
Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority may establish
further written opinions under paragraph (d) of this section.
(g) If no written opinion under paragraph (d) of this section is
necessary, or if no further written opinion under paragraph (f) of this
section is to be established, or after any written opinion and the reply
thereto or the expiration of the time limit for reply to such written
opinion, an international preliminary examination report will be
established by the International Preliminary Examining Authority. One
copy will be submitted to the International Bureau and one copy will be
submitted to the applicant.
(h) An applicant will be permitted a personal or telephone interview
with the examiner, which may be requested after the filing of a Demand,
and must be conducted during the period between the establishment of the
written opinion and the establishment of the international preliminary
examination report. Additional interviews may be conducted where the
examiner determines that such additional interviews may be helpful to
advancing the international preliminary examination procedure. A summary
of any such personal or telephone interview must be filed by the
applicant or, if not filed by applicant be made of record in the file by
the examiner.
(i) If the application whose priority is claimed in the
international application is in a language other than English, the
United States International Preliminary Examining Authority may, where
the validity of the priority claim is relevant for the formulation of
the opinion referred to in Article 33(1), invite the applicant to
furnish an English translation of the priority document within two
months from the date of the invitation. If the translation is not
furnished within
[[Page 148]]
that time limit, the international preliminary report may be established
as if the priority had not been claimed.
[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62
FR 53199, Oct. 10, 1997; 63 FR 29619, June 1, 1998; 66 FR 16006, Mar.
22, 2001; 68 FR 59888, Oct. 20, 2003]
Sec.1.485 Amendments by applicant during international preliminary
examination.
The applicant may make amendments at the time of filing the Demand.
The applicant may also make amendments within the time limit set by the
International Preliminary Examining Authority for reply to any
notification under Sec.1.484(b) or to any written opinion. Any such
amendments must be made in accordance with PCT Rule 66.8.
[74 FR 31373, July 1, 2009]
Sec.1.488 Determination of unity of invention before the International
Preliminary Examining Authority.
(a) Before establishing any written opinion or the international
preliminary examination report, the International Preliminary Examining
Authority will determine whether the international application complies
with the requirement of unity of invention as set forth in Sec.1.475.
(b) If the International Preliminary Examining Authority considers
that the international application does not comply with the requirement
of unity of invention, it may:
(1) Issue a written opinion and/or an international preliminary
examination report, in respect of the entire international application
and indicate that unity of invention is lacking and specify the reasons
therefor without extending an invitation to restrict or pay additional
fees. No international preliminary examination will be conducted on
inventions not previously searched by an International Searching
Authority.
(2) Invite the applicant to restrict the claims or pay additional
fees, pointing out the categories of invention found, within a set time
limit which will not be extended. No international preliminary
examination will be conducted on inventions not previously searched by
an International Searching Authority, or
(3) If applicant fails to restrict the claims or pay additional fees
within the time limit set for reply, the International Preliminary
Examining Authority will issue a written opinion and/or establish an
international preliminary examination report on the main invention and
shall indicate the relevant facts in the said report. In case of any
doubt as to which invention is the main invention, the invention first
mentioned in the claims and previously searched by an International
Searching Authority shall be considered the main invention.
(c) Lack of unity of invention may be directly evident before
considering the claims in relation to any prior art, or after taking the
prior art into consideration, as where a document discovered during the
search shows the invention claimed in a generic or linking claim lacks
novelty or is clearly obvious, leaving two or more claims joined thereby
without a common inventive concept. In such a case the International
Preliminary Examining Authority may raise the objection of lack of unity
of invention.
[52 FR 20049, May 28, 1987, as amended at 58 FR 4346, Jan. 14, 1993; 62
FR 53200, Oct. 10, 1997]
Sec.1.489 Protest to lack of unity of invention before the
International Preliminary Examining Authority.
(a) If the applicant disagrees with the holding of lack of unity of
invention by the International Preliminary Examining Authority,
additional fees may be paid under protest, accompanied by a request for
refund and a statement setting forth reasons for disagreement or why the
required additional fees are considered excessive, or both.
(b) Protest under paragraph (a) of this section will be examined by
the Director or the Director's designee. In the event that the
applicant's protest is determined to be justified, the additional fees
or a portion thereof will be refunded.
(c) An applicant who desires that a copy of the protest and the
decision thereon accompany the international preliminary examination
report when forwarded to the Elected Offices, may notify the
International Preliminary Examining Authority to that effect
[[Page 149]]
any time prior to the issuance of the international preliminary
examination report. Thereafter, such notification should be directed to
the International Bureau.
[52 FR 20050, May 28, 1987]
National Stage
Sec.1.491 National stage commencement, entry, and fulfillment.
(a) Subject to 35 U.S.C. 371(f), the national stage shall commence
with the expiration of the applicable time limit under PCT Article 22
(1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the
applicant has filed the documents and fees required by 35 U.S.C.
371(c)(1) and (c)(2) within the period set in Sec.1.495.
(c) An international application fulfills the requirements of 35
U.S.C. 371 when the national stage has commenced under 35 U.S.C. 371(b)
or (f) and all applicable requirements of 35 U.S.C. 371 have been
satisfied.
[67 FR 523, Jan. 4, 2002, as amended at 77 FR 48823, Aug. 14, 2012]
Sec.1.492 National stage fees.
The following fees and charges are established for international
applications entering the national stage under 35 U.S.C. 371:
(a) The basic national fee for an international application entering
the national stage under 35 U.S.C. 371:
Table 1 to Paragraph (a)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $80.00
By a small entity (Sec. 1.27(a))......................... 160.00
By other than a small or micro entity...................... 320.00
------------------------------------------------------------------------
(b) Search fee for an international application entering the
national stage under 35 U.S.C. 371:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority states that the criteria of novelty, inventive step
(non-obviousness), and industrial applicability, as defined in PCT
Article 33(1) to (4) have been satisfied for all of the claims presented
in the application entering the national stage:
Table 2 to Paragraph (b)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $0.00
By a small entity (Sec. 1.27(a))......................... 0.00
By other than a small or micro entity...................... 0.00
------------------------------------------------------------------------
(2) If the search fee as set forth in Sec.1.445(a)(2) has been
paid on the international application to the United States Patent and
Trademark Office as an International Searching Authority:
Table 3 to Paragraph (b)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $35.00
By a small entity (Sec. 1.27(a))......................... 70.00
By other than a small or micro entity...................... 140.00
------------------------------------------------------------------------
(3) If an international search report on the international
application has been prepared by an International Searching Authority
other than the United States International Searching Authority and is
provided, or has been previously communicated by the International
Bureau, to the Office:
Table 4 to Paragraph (b)(3)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $135.00
By a small entity (Sec. 1.27(a))......................... 270.00
By other than a small or micro entity...................... 540.00
------------------------------------------------------------------------
(4) In all situations not provided for in paragraph (b)(1), (2), or
(3) of this section:
Table 5 to Paragraph (b)(4)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $175.00
By a small entity (Sec. 1.27(a))......................... 350.00
By other than a small or micro entity...................... 700.00
------------------------------------------------------------------------
(c) The examination fee for an international application entering
the national stage under 35 U.S.C. 371:
(1) If an international preliminary examination report on the
international application prepared by the United States International
Preliminary Examining Authority or a written opinion on the
international application prepared by the United States International
Searching Authority
[[Page 150]]
states that the criteria of novelty, inventive step (non-obviousness),
and industrial applicability, as defined in PCT Article 33 (1) to (4)
have been satisfied for all of the claims presented in the application
entering the national stage:
Table 6 to Paragraph (c)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $0.00
By a small entity (Sec. 1.27(a))......................... 0.00
By other than a small or micro entity...................... 0.00
------------------------------------------------------------------------
(2) In all situations not provided for in paragraph (c)(1) of this
section:
Table 7 to Paragraph (c)(2)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $200.00
By a small entity (Sec. 1.27(a))......................... 400.00
By other than a small or micro entity...................... 800.00
------------------------------------------------------------------------
(d) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim in independent form in
excess of three:
Table 8 to Paragraph (d)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $120.00
By a small entity (Sec. 1.27(a))......................... 240.00
By other than a small or micro entity...................... 480.00
------------------------------------------------------------------------
(e) In addition to the basic national fee, for filing or on later
presentation at any other time of each claim (whether dependent or
independent) in excess of 20 (note that Sec.1.75(c) indicates how
multiple dependent claims are considered for fee calculation purposes):
Table 9 to Paragraph (e)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $25.00
By a small entity (Sec. 1.27(a))......................... 50.00
By other than a small or micro entity...................... 100.00
------------------------------------------------------------------------
(f) In addition to the basic national fee, if the application
contains, or is amended to contain, a multiple dependent claim, per
application:
Table 10 to Paragraph (f)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $215.00
By a small entity (Sec. 1.27(a))......................... 430.00
By other than a small or micro entity...................... 860.00
------------------------------------------------------------------------
(g) If the excess claims fees required by paragraphs (d) and (e) of
this section and multiple dependent claim fee required by paragraph (f)
of this section are not paid with the basic national fee or on later
presentation of the claims for which excess claims or multiple dependent
claim fees are due, the fees required by paragraphs (d), (e), and (f) of
this section must be paid or the claims canceled by amendment prior to
the expiration of the time period set for reply by the Office in any
notice of fee deficiency in order to avoid abandonment.
(h) Surcharge for filing the search fee, the examination fee, or the
oath or declaration after the date of the commencement of the national
stage (Sec.1.491(a)) pursuant to Sec.1.495(c):
Table 11 to Paragraph (h)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $40.00
By a small entity (Sec. 1.27(a))......................... 80.00
By other than a small or micro entity...................... 160.00
------------------------------------------------------------------------
(i) For filing an English translation of an international
application or any annexes to an international preliminary examination
report later than thirty months after the priority date (Sec.1.495(c)
and (e)):
Table 12 to Paragraph (i)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $35.00
By a small entity (Sec. 1.27(a))......................... 70.00
By other than a small or micro entity...................... 140.00
------------------------------------------------------------------------
(j) Application size fee for any international application, the
specification and drawings of which exceed 100 sheets of paper, for each
additional 50 sheets or fraction thereof:
Table 13 to Paragraph (j)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $105.00
By a small entity (Sec. 1.27(a))......................... 210.00
By other than a small or micro entity...................... 420.00
------------------------------------------------------------------------
[78 FR 4290, Jan. 18, 2013, as amended at 82 FR 52816, Nov. 14, 2017; 85
FR 46991, Aug. 3, 2020]
Sec.1.495 Entering the national stage in the United States of America.
(a) The applicant in an international application must fulfill the
requirements of 35 U.S.C. 371 within the time periods set forth in
paragraphs (b) and (c) of this section in order to prevent
[[Page 151]]
the abandonment of the international application as to the United States
of America. The thirty-month time period set forth in paragraphs (b),
(c), (d), (e) and (h) of this section may not be extended.
(b) To avoid abandonment of the application, the applicant shall
furnish to the United States Patent and Trademark Office not later than
the expiration of thirty months from the priority date:
(1) A copy of the international application, unless it has been
previously communicated by the International Bureau or unless it was
originally filed in the United States Patent and Trademark Office; and
(2) The basic national fee (see Sec.1.492(a)).
(c)(1) If applicant complies with paragraph (b) of this section
before expiration of thirty months from the priority date, the Office
will notify the applicant if he or she has omitted any of:
(i) A translation of the international application, as filed, into
the English language, if it was originally filed in another language and
if any English language translation of the publication of the
international application previously submitted under 35 U.S.C. 154(d)
(Sec.1.417) is not also a translation of the international application
as filed (35 U.S.C. 371(c)(2));
(ii) The inventor's oath or declaration (35 U.S.C. 371(c)(4) and
Sec.1.497), if a declaration of inventorship in compliance with Sec.
1.63 has not been previously submitted in the international application
under PCT Rule 4.17(iv) within the time limits provided for in PCT Rule
26ter.1;
(iii) The search fee set forth in Sec.1.492(b);
(iv) The examination fee set forth in Sec.1.492(c); and
(v) Any application size fee required by Sec.1.492(j).
(2) A notice under paragraph (c)(1) of this section will set a time
period within which applicant must provide any omitted translation,
search fee set forth in Sec.1.492(b), examination fee set forth in
Sec.1.492(c), and any application size fee required by Sec.1.492(j)
in order to avoid abandonment of the application.
(3) The inventor's oath or declaration must also be filed within the
period specified in paragraph (c)(2) of this section, except that the
filing of the inventor's oath or declaration may be postponed until the
application is otherwise in condition for allowance under the conditions
specified in paragraphs (c)(3)(i) through (c)(3)(iii) of this section.
(i) The application contains an application data sheet in accordance
with Sec.1.76 filed prior to the expiration of the time period set in
any notice under paragraph (c)(1) identifying:
(A) Each inventor by his or her legal name;
(B) A mailing address where the inventor customarily receives mail,
and residence, if an inventor lives at a location which is different
from where the inventor customarily receives mail, for each inventor.
(ii) The applicant must file each required oath or declaration in
compliance with Sec.1.63, or substitute statement in compliance with
Sec.1.64, no later than the date on which the issue fee for the patent
is paid. If the applicant is notified in a notice of allowability that
an oath or declaration in compliance with Sec.1.63, or substitute
statement in compliance with Sec.1.64, executed by or with respect to
each named inventor has not been filed, the applicant must file each
required oath or declaration in compliance with Sec.1.63, or
substitute statement in compliance with Sec.1.64, no later than the
date on which the issue fee is paid to avoid abandonment. This time
period is not extendable under Sec.1.136 (see Sec.1.136(c)). The
Office may dispense with the notice provided for in paragraph (c)(1) of
this section if each required oath or declaration in compliance with
Sec.1.63, or substitute statement in compliance with Sec.1.64, has
been filed before the application is in condition for allowance.
(iii) An international application in which the basic national fee
under 35 U.S.C. 41(a)(1)(F) has been paid and for which an application
data sheet in accordance with Sec.1.76 has been filed may be treated
as complying with 35 U.S.C. 371 for purposes of eighteen-month
publication under 35 U.S.C. 122(b) and Sec.1.211 et seq.
(4) The payment of the processing fee set forth in Sec.1.492(i) is
required for acceptance of an English translation
[[Page 152]]
later than the expiration of thirty months after the priority date. The
payment of the surcharge set forth in Sec.1.492(h) is required for
acceptance of any of the search fee, the examination fee, or the
inventor's oath or declaration after the date of the commencement of the
national stage (Sec.1.491(a)).
(5) A ``Sequence Listing'' need not be translated if the ``Sequence
Listing'' complies with PCT Rule 12.1(d) and the description complies
with PCT Rule 5.2(b).
(d) A copy of any amendments to the claims made under PCT Article
19, and a translation of those amendments into English, if they were
made in another language, must be furnished not later than the
expiration of thirty months from the priority date. Amendments under PCT
Article 19 which are not received by the expiration of thirty months
from the priority date will be considered to be canceled.
(e) A translation into English of any annexes to an international
preliminary examination report (if applicable), if the annexes were made
in another language, must be furnished not later than the expiration of
thirty months from the priority date. Translations of the annexes which
are not received by the expiration of thirty months from the priority
date may be submitted within any period set pursuant to paragraph (c) of
this section accompanied by the processing fee set forth in Sec.
1.492(f). Annexes for which translations are not timely received will be
considered canceled.
(f) Verification of the translation of the international application
or any other document pertaining to an international application may be
required where it is considered necessary, if the international
application or other document was filed in a language other than
English.
(g) The documents and fees submitted under paragraphs (b) and (c) of
this section must be identified as a submission to enter the national
stage under 35 U.S.C. 371. If the documents and fees contain conflicting
indications as between an application under 35 U.S.C. 111 and a
submission to enter the national stage under 35 U.S.C. 371, the
documents and fees will be treated as a submission to enter the national
stage under 35 U.S.C. 371.
(h) An international application becomes abandoned as to the United
States thirty months from the priority date if the requirements of
paragraph (b) of this section have not been complied with within thirty
months from the priority date.
[52 FR 20051, May 28, 1987, as amended at 58 FR 4347, Jan. 14, 1993; 63
FR 29620, June 1, 1998; 65 FR 57060, Sept. 20, 2000; 67 FR 523, Jan. 4,
2002; 68 FR 71007, Dec. 22, 2003; 70 FR 3892, Jan. 27, 2005; 70 FR
30365, May 26, 2005; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14,
2009; 77 FR 48824, Aug. 14, 2012; 78 FR 62407, Oct. 21, 2013]
Sec.1.496 Examination of international applications in the national
stage.
National stage applications having paid therein the search fee as
set forth in Sec.1.492(b)(1) and examination fee as set forth in Sec.
1.492(c)(1) may be amended subsequent to the date of commencement of
national stage processing only to the extent necessary to eliminate
objections as to form or to cancel rejected claims. Such national stage
applications will be advanced out of turn for examination.
[77 FR 48824, Aug. 14, 2012]
Sec.1.497 Inventor's oath or declaration under 35 U.S.C. 371(c)(4).
(a) When an applicant of an international application desires to
enter the national stage under 35 U.S.C. 371 pursuant to Sec.1.495,
and a declaration in compliance with Sec.1.63 has not been previously
submitted in the international application under PCT Rule 4.17(iv)
within the time limits provided for in PCT Rule 26ter.1, the applicant
must file the inventor's oath or declaration. The inventor, or each
individual who is a joint inventor of a claimed invention, in an
application for patent must execute an oath or declaration in accordance
with the conditions and requirements of Sec.1.63, except as provided
for in Sec.1.64.
(b) An oath or declaration under Sec.1.63 will be accepted as
complying with 35 U.S.C. 371(c)(4) if it complies with the requirements
of Sec. Sec.1.63(a), (c) and (g). A substitute statement under Sec.
1.64 will be accepted as complying with 35 U.S.C. 371(c)(4) if it
complies with the
[[Page 153]]
requirements of Sec. Sec.1.64(b)(1), (c) and (e) and identifies the
person executing the substitute statement. If a newly executed
inventor's oath or declaration under Sec.1.63 or substitute statement
under Sec.1.64 is not required pursuant to Sec.1.63(d), submission
of the copy of the previously executed oath, declaration, or substitute
statement under Sec.1.63(d)(1) is required to comply with 35 U.S.C.
371(c)(4).
(c) If an oath or declaration under Sec.1.63, or substitute
statement under Sec.1.64, meeting the requirements of Sec.1.497(b)
does not also meet the requirements of Sec.1.63 or Sec.1.64, an
oath, declaration, substitute statement, or application data sheet in
accordance with Sec.1.76 to comply with Sec.1.63 or Sec.1.64 will
be required.
[77 FR 48824, Aug. 14, 2012]
Sec.1.499 Unity of invention during the national stage.
If the examiner finds that a national stage application lacks unity
of invention under Sec.1.475, the examiner may in an Office action
require the applicant in the response to that action to elect the
invention to which the claims shall be restricted. Such requirement may
be made before any action on the merits but may be made at any time
before the final action at the discretion of the examiner. Review of any
such requirement is provided under Sec. Sec.1.143 and 1.144.
[58 FR 4347, Jan. 14, 1993]
Subpart D_Ex Parte Reexamination of Patents
Source: 46 FR 29185, May 29, 1981, unless otherwise noted.
Citation of Prior Art and Written Statements
Sec.1.501 Citation of prior art and written statements in patent files.
(a) Information content of submission: At any time during the period
of enforceability of a patent, any person may file a written submission
with the Office under this section, which is directed to the following
information:
(1) Prior art consisting of patents or printed publications which
the person making the submission believes to have a bearing on the
patentability of any claim of the patent; or
(2) Statements of the patent owner filed by the patent owner in a
proceeding before a Federal court or the Office in which the patent
owner took a position on the scope of any claim of the patent. Any
statement submitted under this paragraph must be accompanied by any
other documents, pleadings, or evidence from the proceeding in which the
statement was filed that address the written statement, and such
statement and accompanying information under this paragraph must be
submitted in redacted form to exclude information subject to an
applicable protective order.
(3) Submissions under paragraph (a)(2) of this section must
identify:
(i) The forum and proceeding in which patent owner filed each
statement;
(ii) The specific papers and portions of the papers submitted that
contain the statements; and
(iii) How each statement submitted is a statement in which patent
owner took a position on the scope of any claim in the patent.
(b) Explanation: A submission pursuant to paragraph (a) of this
section:
(1) Must include an explanation in writing of the pertinence and
manner of applying any prior art submitted under paragraph (a)(1) of
this section and any written statement and accompanying information
submitted under paragraph (a)(2) of this section to at least one claim
of the patent, in order for the submission to become a part of the
official file of the patent; and
(2) May, if the submission is made by the patent owner, include an
explanation of how the claims differ from any prior art submitted under
paragraph (a)(1) of this section or any written statements and
accompanying information submitted under paragraph (a)(2) of this
section.
(c) Reexamination pending: If a reexamination proceeding has been
requested and is pending for the patent in which the submission is
filed, entry of the submission into the official file of the patent is
subject to the provisions of Sec. Sec.1.502 and 1.902.
[[Page 154]]
(d) Identity: If the person making the submission wishes his or her
identity to be excluded from the patent file and kept confidential, the
submission papers must be submitted anonymously without any
identification of the person making the submission.
(e) Certificate of Service: A submission under this section by a
person other than the patent owner must include a certification that a
copy of the submission was served in its entirety upon patent owner at
the address as provided for in Sec.1.33 (c). A submission by a person
other than the patent owner that fails to include proper proof of
service as required by Sec.1.248(b) will not be entered into the
patent file.
[77 FR 46626, Aug. 6, 2012]
Sec.1.502 Processing of prior art citations during an ex parte
reexamination proceeding.
Citations by the patent owner under Sec.1.555 and by an ex parte
reexamination requester under either Sec.1.510 or Sec.1.535 will be
entered in the reexamination file during a reexamination proceeding. The
entry in the patent file of citations submitted after the date of an
order to reexamine pursuant to Sec.1.525 by persons other than the
patent owner, or an ex parte reexamination requester under either Sec.
1.510 or Sec.1.535, will be delayed until the reexamination proceeding
has been concluded by the issuance and publication of a reexamination
certificate. See Sec.1.902 for processing of prior art citations in
patent and reexamination files during an inter partes reexamination
proceeding filed under Sec.1.913.
[72 FR 18905, Apr. 16, 2007]
Request for Ex Parte Reexamination
Sec.1.510 Request for ex parte reexamination.
(a) Any person may, at any time during the period of enforceability
of a patent, file a request for an ex parte reexamination by the Office
of any claim of the patent on the basis of prior art patents or printed
publications cited under Sec.1.501, unless prohibited by 35 U.S.C.
315(e)(1) or 35 U.S.C. 325(e)(1). The request must be accompanied by the
fee for requesting reexamination set in Sec.1.20(c)(1).
(b) Any request for reexamination must include the following parts:
(1) A statement pointing out each substantial new question of
patentability based on prior patents and printed publications.
(2) An identification of every claim for which reexamination is
requested, and a detailed explanation of the pertinency and manner of
applying the cited prior art to every claim for which reexamination is
requested. For each statement of the patent owner and accompanying
information submitted pursuant to Sec.1.501(a)(2) which is relied upon
in the detailed explanation, the request must explain how that statement
is being used to determine the proper meaning of a patent claim in
connection with the prior art applied to that claim and how each
relevant claim is being interpreted. If appropriate, the party
requesting reexamination may also point out how claims distinguish over
cited prior art.
(3) A copy of every patent or printed publication relied upon or
referred to in paragraph (b) (1) and (2) of this section accompanied by
an English language translation of all the necessary and pertinent parts
of any non-English language patent or printed publication.
(4) A copy of the entire patent including the front face, drawings,
and specification/claims (in double column format) for which
reexamination is requested, and a copy of any disclaimer, certificate of
correction, or reexamination certificate issued in the patent. All
copies must have each page plainly written on only one side of a sheet
of paper.
(5) A certification that a copy of the request filed by a person
other than the patent owner has been served in its entirety on the
patent owner at the address as provided for in Sec.1.33(c). The name
and address of the party served must be indicated. If service was not
possible, a duplicate copy must be supplied to the Office.
(6) A certification by the third party requester that the statutory
estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not
prohibit the requester from filing the ex parte reexamination request.
[[Page 155]]
(c) If the request does not include the fee for requesting ex parte
reexamination required by paragraph (a) of this section and meet all the
requirements by paragraph (b) of this section, then the person
identified as requesting reexamination will be so notified and will
generally be given an opportunity to complete the request within a
specified time. Failure to comply with the notice will result in the ex
parte reexamination request not being granted a filing date, and will
result in placement of the request in the patent file as a citation if
it complies with the requirements of Sec.1.501.
(d) The filing date of the request for ex parte reexamination is the
date on which the request satisfies all the requirements of this
section.
(e) A request filed by the patent owner may include a proposed
amendment in accordance with Sec.1.530.
(f) If a request is filed by an attorney or agent identifying
another party on whose behalf the request is being filed, the attorney
or agent must have a power of attorney from that party or be acting in a
representative capacity pursuant to Sec.1.34.
(35 U.S.C. 6; 15 U.S.C. 1113, 1123)
[46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982;
62 FR 53200, Oct. 10, 1997; 65 FR 54678, Sept. 8, 2000; 65 FR 76775,
Dec. 7, 2000; 71 FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, 2006; 72
FR 18905, Apr. 16, 2007; 77 FR 46626, Aug. 6, 2012]
Sec.1.515 Determination of the request for ex parte reexamination.
(a) Within three months following the filing date of a request for
an ex parte reexamination, an examiner will consider the request and
determine whether or not a substantial new question of patentability
affecting any claim of the patent is raised by the request and the prior
art cited therein, with or without consideration of other patents or
printed publications. A statement and any accompanying information
submitted pursuant to Sec.1.501(a)(2) will not be considered by the
examiner when making a determination on the request. The examiner's
determination will be based on the claims in effect at the time of the
determination, will become a part of the official file of the patent,
and will be given or mailed to the patent owner at the address provided
for in Sec.1.33(c) and to the person requesting reexamination.
(b) Where no substantial new question of patentability has been
found, a refund of a portion of the fee for requesting ex parte
reexamination will be made to the requester in accordance with Sec.
1.26(c).
(c) The requester may seek review by a petition to the Director
under Sec.1.181 within one month of the mailing date of the examiner's
determination refusing ex parte reexamination. Any such petition must
comply with Sec.1.181(b). If no petition is timely filed or if the
decision on petition affirms that no substantial new question of
patentability has been raised, the determination shall be final and
nonappealable.
[65 FR 76775, Dec. 7, 2000, as amended at 77 FR 46626, Aug. 6, 2012]
Sec.1.520 Ex parte reexamination at the initiative of the Director.
The Director, at any time during the period of enforceability of a
patent, may determine whether or not a substantial new question of
patentability is raised by patents or printed publications which have
been discovered by the Director or which have been brought to the
Director's attention, even though no request for reexamination has been
filed in accordance with Sec.1.510 or Sec.1.913. The Director may
initiate ex parte reexamination without a request for reexamination
pursuant to Sec.1.510 or Sec.1.913. Normally requests from outside
the Office that the Director undertake reexamination on his own
initiative will not be considered. Any determination to initiate ex
parte reexamination under this section will become a part of the
official file of the patent and will be mailed to the patent owner at
the address as provided for in Sec.1.33(c).
[65 FR 76775, Dec. 7, 2000]
Ex Parte Reexamination
Sec.1.525 Order for ex parte reexamination.
(a) If a substantial new question of patentability is found pursuant
to Sec.1.515 or Sec.1.520, the determination will
[[Page 156]]
include an order for ex parte reexamination of the patent for resolution
of the question. If the order for ex parte reexamination resulted from a
petition pursuant to Sec.1.515(c), the ex parte reexamination will
ordinarily be conducted by an examiner other than the examiner
responsible for the initial determination under Sec.1.515(a).
(b) The notice published in the Official Gazette under Sec.1.11(c)
will be considered to be constructive notice and ex parte reexamination
will proceed.
[65 FR 76775, Dec. 7, 2000]
Sec.1.530 Statement by patent owner in ex parte reexamination;
amendment by patent owner in ex parte or inter partes reexamination;
inventorship change in exparte or inter partes reexamination.
(a) Except as provided in Sec.1.510(e), no statement or other
response by the patent owner in an ex parte reexamination proceeding
shall be filed prior to the determinations made in accordance with Sec.
1.515 or Sec.1.520. If a premature statement or other response is
filed by the patent owner, it will not be acknowledged or considered in
making the determination, and it will be returned or discarded (at the
Office's option).
(b) The order for ex parte reexamination will set a period of not
less than two months from the date of the order within which the patent
owner may file a statement on the new question of patentability,
including any proposed amendments the patent owner wishes to make.
(c) Any statement filed by the patent owner shall clearly point out
why the subject matter as claimed is not anticipated or rendered obvious
by the prior art patents or printed publications, either alone or in any
reasonable combinations. Where the reexamination request was filed by a
third party requester, any statement filed by the patent owner must be
served upon the ex parte reexamination requester in accordance with
Sec.1.248.
(d) Making amendments in a reexamination proceeding. A proposed
amendment in an ex parte or an inter partes reexamination proceeding is
made by filing a paper directing that proposed specified changes be made
to the patent specification, including the claims, or to the drawings.
An amendment paper directing that proposed specified changes be made in
a reexamination proceeding may be submitted as an accompaniment to a
request filed by the patent owner in accordance with Sec.1.510(e), as
part of a patent owner statement in accordance with paragraph (b) of
this section, or, where permitted, during the prosecution of the
reexamination proceeding pursuant to Sec.1.550(a) or Sec.1.937.
(1) Specification other than the claims. Changes to the
specification, other than to the claims, must be made by submission of
the entire text of an added or rewritten paragraph including markings
pursuant to paragraph (f) of this section, except that an entire
paragraph may be deleted by a statement deleting the paragraph, without
presentation of the text of the paragraph. The precise point in the
specification must be identified where any added or rewritten paragraph
is located. This paragraph applies whether the amendment is submitted on
paper or compact disc (see Sec. Sec.1.96 and 1.825).
(2) Claims. An amendment paper must include the entire text of each
patent claim which is being proposed to be changed by such amendment
paper and of each new claim being proposed to be added by such amendment
paper. For any claim changed by the amendment paper, a parenthetical
expression ``amended,'' ``twice amended,'' etc., should follow the claim
number. Each patent claim proposed to be changed and each proposed added
claim must include markings pursuant to paragraph (f) of this section,
except that a patent claim or proposed added claim should be canceled by
a statement canceling the claim, without presentation of the text of the
claim.
(3) Drawings. Any change to the patent drawings must be submitted as
a sketch on a separate paper showing the proposed changes in red for
approval by the examiner. Upon approval of the changes by the examiner,
only new sheets of drawings including the changes and in compliance with
Sec.1.84 must be filed. Amended figures must be identified as
``Amended,'' and any added figure must be identified as
[[Page 157]]
``New.'' In the event a figure is canceled, the figure must be
surrounded by brackets and identified as ``Canceled.''
(4) The formal requirements for papers making up the reexamination
proceeding other than those set forth in this section are set out in
Sec.1.52.
(e) Status of claims and support for claim changes. Whenever there
is an amendment to the claims pursuant to paragraph (d) of this section,
there must also be supplied, on pages separate from the pages containing
the changes, the status (i.e., pending or canceled), as of the date of
the amendment, of all patent claims and of all added claims, and an
explanation of the support in the disclosure of the patent for the
changes to the claims made by the amendment paper.
(f) Changes shown by markings. Any changes relative to the patent
being reexamined which are made to the specification, including the
claims, must include the following markings:
(1) The matter to be omitted by the reexamination proceeding must be
enclosed in brackets; and
(2) The matter to be added by the reexamination proceeding must be
underlined.
(g) Numbering of patent claims preserved. Patent claims may not be
renumbered. The numbering of any claims added in the reexamination
proceeding must follow the number of the highest numbered patent claim.
(h) Amendment of disclosure may be required. The disclosure must be
amended, when required by the Office, to correct inaccuracies of
description and definition, and to secure substantial correspondence
between the claims, the remainder of the specification, and the
drawings.
(i) Amendments made relative to patent. All amendments must be made
relative to the patent specification, including the claims, and
drawings, which are in effect as of the date of filing the request for
reexamination.
(j) No enlargement of claim scope. No amendment may enlarge the
scope of the claims of the patent or introduce new matter. No amendment
may be proposed for entry in an expired patent. Moreover, no amendment,
other than the cancellation of claims, will be incorporated into the
patent by a certificate issued after the expiration of the patent.
(k) Amendments not effective until certificate. Although the Office
actions will treat proposed amendments as though they have been entered,
the proposed amendments will not be effective until the reexamination
certificate is issued and published.
(l) Correction of inventorship in an ex parte or inter partes
reexamination proceeding. (1) When it appears in a patent being
reexamined that the correct inventor or inventors were not named, the
Director may, on petition of all the parties set forth in Sec.
1.324(b)(1) and (b)(2), including the assignees, and satisfactory proof
of the facts and payment of the fee set forth in Sec.1.20(b), or on
order of a court before which such matter is called in question, include
in the reexamination certificate to be issued under Sec.1.570 or Sec.
1.997 an amendment naming only the actual inventor or inventors. The
petition must be submitted as part of the reexamination proceeding and
must satisfy the requirements of Sec.1.324.
(2) Notwithstanding paragraph (l)(1) of this section, if a petition
to correct inventorship satisfying the requirements of Sec.1.324 is
filed in a reexamination proceeding, and the reexamination proceeding is
concluded other than by a reexamination certificate under Sec.1.570 or
Sec.1.997, a certificate of correction indicating the change of
inventorship stated in the petition will be issued upon request by the
patentee.
[46 FR 29185, May 29, 1981, as amended at 62 FR 53200, Oct. 10, 1997; 65
FR 54678, Sept. 8, 2000; 65 FR 76775, Dec. 7, 2000; 72 FR 18905, Apr.
16, 2007; 77 FR 48825, Aug. 14, 2012]
Sec.1.535 Reply by third party requester in ex parte reexamination.
A reply to the patent owner's statement under Sec.1.530 may be
filed by the ex parte reexamination requester within two months from the
date of service of the patent owner's statement. Any reply by the ex
parte requester must be served upon the patent owner in accordance with
Sec.1.248. If the patent owner does not file a statement under Sec.
1.530, no reply or other submission from the ex parte reexamination
requester will be considered.
[65 FR 76776, Dec. 7, 2000]
[[Page 158]]
Sec.1.540 Consideration of responses in ex parte reexamination.
The failure to timely file or serve the documents set forth in Sec.
1.530 or in Sec.1.535 may result in their being refused consideration.
No submissions other than the statement pursuant to Sec.1.530 and the
reply by the ex parte reexamination requester pursuant to Sec.1.535
will be considered prior to examination.
[65 FR 76776, Dec. 7, 2000]
Sec.1.550 Conduct of ex parte reexamination proceedings.
(a) All ex parte reexamination proceedings, including any appeals to
the Board of Patent Appeals and Interferences, will be conducted with
special dispatch within the Office. After issuance of the ex parte
reexamination order and expiration of the time for submitting any
responses, the examination will be conducted in accordance with
Sec. Sec.1.104 through 1.116 and will result in the issuance of an ex
parte reexamination certificate under Sec.1.570.
(b) The patent owner in an ex parte reexamination proceeding will be
given at least thirty days to respond to any Office action. In response
to any rejection, such response may include further statements and/or
proposed amendments or new claims to place the patent in a condition
where all claims, if amended as proposed, would be patentable.
(c) The time for taking any action by a patent owner in an ex parte
reexamination proceeding may be extended as provided in this paragraph.
(1) Any request for such an extension must specify the requested
period of extension and be accompanied by the petition fee set forth in
Sec.1.17(g).
(2) Any request for an extension in a third party requested ex parte
reexamination must be filed on or before the day on which action by the
patent owner is due, and the mere filing of such a request for extension
will not effect the extension. A request for an extension in a third
party requested ex parte reexamination will not be granted in the
absence of sufficient cause or for more than a reasonable time.
(3) Any request for an extension in a patent owner requested or
Director ordered ex parte reexamination for up to two months from the
time period set in the Office action must be filed no later than two
months from the expiration of the time period set in the Office action.
A request for an extension in a patent owner requested or Director
ordered ex parte reexamination for more than two months from the time
period set in the Office action must be filed on or before the day on
which action by the patent owner is due, and the mere filing of a
request for an extension for more than two months from the time period
set in the Office action will not effect the extension. The time for
taking action in a patent owner requested or Director ordered ex parte
reexamination will not be extended for more than two months from the
time period set in the Office action in the absence of sufficient cause
or for more than a reasonable time.
(4) The reply or other action must in any event be filed prior to
the expiration of the period of extension, but in no situation may a
reply or other action be filed later than the maximum time period set by
statute.
(5) See Sec.90.3(c) of this title for extensions of time for
filing a notice of appeal to the U.S. Court of Appeals for the Federal
Circuit or for commencing a civil action.
(d) If the patent owner fails to file a timely and appropriate
response to any Office action or any written statement of an interview
required under Sec.1.560(b), the prosecution in the ex parte
reexamination proceeding will be a terminated prosecution, and the
Director will proceed to issue and publish a certificate concluding the
reexamination proceeding under Sec.1.570 in accordance with the last
action of the Office.
(e) If a response by the patent owner is not timely filed in the
Office, a petition may be filed pursuant to Sec.1.137 to revive a
reexamination prosecution terminated under paragraph (d) of this section
if the delay in response was unintentional.
(f) The reexamination requester will be sent copies of Office
actions issued during the ex parte reexamination proceeding. After
filing of a request for ex parte reexamination by a third party
requester, any document filed by either
[[Page 159]]
the patent owner or the third party requester must be served on the
other party in the reexamination proceeding in the manner provided by
Sec.1.248. The document must reflect service or the document may be
refused consideration by the Office.
(g) The active participation of the ex parte reexamination requester
ends with the reply pursuant to Sec.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 Sec.1.510 or Sec.1.535; or
(2) entered in the patent file prior to the date of the order for ex
parte reexamination pursuant to Sec.1.525.
(h) Submissions by third parties, filed after the date of the order
for ex parte reexamination pursuant to Sec.1.525, must meet the
requirements of and will be treated in accordance with Sec.1.501(a).
(i) A petition in an ex parte reexamination proceeding must be
accompanied by the fee set forth in Sec.1.20(c)(6), except for
petitions under paragraph (c) of this section to extend the period for
response by a patent owner, petitions under paragraph (e) of this
section to accept a delayed response by a patent owner, petitions under
Sec.1.78 to accept an unintentionally delayed benefit claim, and
petitions under Sec.1.530(l) for correction of inventorship in a
reexamination proceeding.
[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 56545, Sept. 21, 2004;
72 FR 18905, Apr. 16, 2007; 77 FR 48851, Aug. 14, 2012; 78 FR 62407,
Oct. 21, 2013]
Sec.1.552 Scope of reexamination in ex parte reexamination proceedings.
(a) Claims in an ex parte reexamination proceeding will be examined
on the basis of patents or printed publications and, with respect to
subject matter added or deleted in the reexamination proceeding, on the
basis of the requirements of 35 U.S.C. 112.
(b) Claims in an ex parte reexamination proceeding will not be
permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in a reexamination proceeding. If such
issues are raised by the patent owner or third party requester during a
reexamination proceeding, the existence of such issues will be noted by
the examiner in the next Office action, in which case the patent owner
may consider the advisability of filing a reissue application to have
such issues considered and resolved.
(d) Any statement of the patent owner and any accompanying
information submitted pursuant to Sec.1.501(a)(2) which is of record
in the patent being reexamined (which includes any reexamination files
for the patent) may be used after a reexamination proceeding has been
ordered to determine the proper meaning of a patent claim when applying
patents or printed publications.
[65 FR 76776, Dec. 7, 2000, as amended at 77 FR 46627, Aug. 6, 2012]
Sec.1.555 Information material to patentability in ex parte
reexamination and inter partes reexamination proceedings.
(a) A patent by its very nature is affected with a public interest.
The public interest is best served, and the most effective reexamination
occurs when, at the time a reexamination proceeding is being conducted,
the Office is aware of and evaluates the teachings of all information
material to patentability in a reexamination proceeding. Each individual
associated with the patent owner in a reexamination proceeding has a
duty of candor and good faith in dealing with the Office, which includes
a duty to disclose to the Office all information known to that
individual to be material to patentability in a reexamination
proceeding. The individuals who have a duty to disclose to the Office
all information known to them to be material to patentability in a
reexamination proceeding are the patent owner, each attorney or agent
who represents the patent owner, and every other individual who is
substantively involved on behalf of the patent owner in a reexamination
proceeding. The duty to disclose the information exists with respect to
each
[[Page 160]]
claim pending in the reexamination proceeding until the claim is
cancelled. Information material to the patentability of a cancelled
claim need not be submitted if the information is not material to
patentability of any claim remaining under consideration in the
reexamination proceeding. The duty to disclose all information known to
be material to patentability in a reexamination proceeding is deemed to
be satisfied if all information known to be material to patentability of
any claim in the patent after issuance of the reexamination certificate
was cited by the Office or submitted to the Office in an information
disclosure statement. However, the duties of candor, good faith, and
disclosure have not been complied with if any fraud on the Office was
practiced or attempted or the duty of disclosure was violated through
bad faith or intentional misconduct by, or on behalf of, the patent
owner in the reexamination proceeding. Any information disclosure
statement must be filed with the items listed in Sec.1.98(a) as
applied to individuals associated with the patent owner in a
reexamination proceeding, and should be filed within two months of the
date of the order for reexamination, or as soon thereafter as possible.
(b) Under this section, information is material to patentability in
a reexamination proceeding when it is not cumulative to information of
record or being made of record in the reexamination proceeding, and
(1) It is a patent or printed publication that establishes, by
itself or in combination with other patents or printed publications, a
prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the patent owner
takes in:
(i) Opposing an argument of unpatentability relied on by the Office,
or
(ii) Asserting an argument of patentability.
A prima facie case of unpatentability of a claim pending in a
reexamination proceeding is established when the information compels a
conclusion that a claim is unpatentable under the preponderance of
evidence, burden-of-proof standard, giving each term in the claim its
broadest reasonable construction consistent with the specification, and
before any consideration is given to evidence which may be submitted in
an attempt to establish a contrary conclusion of patentability.
(c) The responsibility for compliance with this section rests upon
the individuals designated in paragraph (a) of this section and no
evaluation will be made by the Office in the reexamination proceeding as
to compliance with this section. If questions of compliance with this
section are raised by the patent owner or the third party requester
during a reexamination proceeding, they will be noted as unresolved
questions in accordance with Sec.1.552(c).
[57 FR 2036, Jan. 17, 1992, as amended at 65 FR 76776, Dec. 7, 2000]
Sec.1.560 Interviews in ex parte reexamination proceedings.
(a) Interviews in ex parte reexamination proceedings pending before
the Office between examiners and the owners of such patents or their
attorneys or agents of record must be conducted 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 Director. Interviews for the discussion of the
patentability of claims in patents involved in ex parte reexamination
proceedings will not be conducted prior to the first official action.
Interviews should be arranged 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 in an ex
parte reexamination proceeding, 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 Sec.1.111. Patent
owner's response to an outstanding Office action after the interview
does not remove the necessity for filing the written statement. The
written statement must be filed as a separate part of a response to an
Office action outstanding at the time of the interview, or as a separate
paper within one month from
[[Page 161]]
the date of the interview, whichever is later.
[65 FR 76777, Dec. 7, 2000]
Sec.1.565 Concurrent office proceedings which include an ex parte
reexamination proceeding.
(a) In an ex parte reexamination proceeding before the Office, the
patent owner must inform the Office of any prior or concurrent
proceedings in which the patent is or was involved such as
interferences, reissues, ex parte reexaminations, inter partes
reexaminations, or litigation and the results of such proceedings. See
Sec.1.985 for notification of prior or concurrent proceedings in an
inter partes reexamination proceeding.
(b) If a patent in the process of ex parte reexamination is or
becomes involved in litigation, the Director shall determine whether or
not to suspend the reexamination. See Sec.1.987 for inter partes
reexamination proceedings.
(c) If ex parte reexamination is ordered while a prior ex parte
reexamination proceeding is pending and prosecution in the prior ex
parte reexamination proceeding has not been terminated, the ex parte
reexamination proceedings will usually be merged and result in the
issuance and publication of a single certificate under Sec.1.570. For
merger of inter partes reexamination proceedings, see Sec.1.989(a).
For merger of ex parte reexamination and inter partes reexamination
proceedings, see Sec.1.989(b).
(d) If a reissue application and an ex parte reexamination
proceeding on which an order pursuant to Sec.1.525 has been mailed are
pending concurrently on a patent, a decision will usually be made to
merge the two proceedings or to suspend one of the two proceedings.
Where merger of a reissue application and an ex parte reexamination
proceeding is ordered, the merged examination will be conducted in
accordance with Sec. Sec.1.171 through 1.179, and the patent owner
will be required to place and maintain the same claims in the reissue
application and the ex parte reexamination proceeding during the
pendency of the merged proceeding. The examiner's actions and responses
by the patent owner in a merged proceeding will apply to both the
reissue application and the ex parte reexamination proceeding and will
be physically entered into both files. Any ex parte reexamination
proceeding merged with a reissue application shall be concluded by the
grant of the reissued patent. For merger of a reissue application and an
inter partes reexamination, see Sec.1.991.
(e) If a patent in the process of ex parte reexamination is or
becomes involved in an interference, the Director may suspend the
reexamination or the interference. The Director will not consider a
request to suspend an interference unless a motion (Sec.41.121(a)(3)
of this title) to suspend the interference has been presented to, and
denied by, an administrative patent judge, and the request is filed
within ten (10) days of a decision by an administrative patent judge
denying the motion for suspension or such other time as the
administrative patent judge may set. For concurrent inter partes
reexamination and interference of a patent, see Sec.1.993.
[65 FR 76776, Dec. 7, 2000, as amended at 69 FR 50001, Aug. 12, 2004; 72
FR 18905, Apr. 16, 2007]
Ex Parte Reexamination Certificate
Sec.1.570 Issuance and publication of ex parte reexamination
certificate concludes ex parte reexamination proceeding.
(a) To conclude an ex parte reexamination proceeding, the Director
will issue and publish an ex parte reexamination certificate in
accordance with 35 U.S.C. 307 setting forth the results of the ex parte
reexamination proceeding and the content of the patent following the ex
parte reexamination proceeding.
(b) An ex parte reexamination certificate will be issued and
published in each patent in which an ex parte reexamination proceeding
has been ordered under Sec.1.525 and has not been merged with any
inter partes reexamination proceeding pursuant to Sec.1.989(a). Any
statutory disclaimer filed by the patent owner will be made part of the
ex parte reexamination certificate.
(c) The ex parte reexamination certificate will be mailed on the day
of its date to the patent owner at the address as provided for in Sec.
1.33(c). A copy of the ex parte reexamination certificate will also be
mailed to the requester of the ex parte reexamination proceeding.
[[Page 162]]
(d) If an ex parte reexamination certificate has been issued and
published which cancels all of the claims of the patent, no further
Office proceedings will be conducted with that patent or any reissue
applications or any reexamination requests relating thereto.
(e) If the ex parte reexamination proceeding is terminated by the
grant of a reissued patent as provided in Sec.1.565(d), the reissued
patent will constitute the ex parte reexamination certificate required
by this section and 35 U.S.C. 307.
(f) A notice of the issuance of each ex parte reexamination
certificate under this section will be published in the Official Gazette
on its date of issuance.
[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18905, Apr. 16, 2007]
Subpart E_Supplemental Examination of Patents
Source: 77 FR 48851, Aug. 14, 2012, unless otherwise noted.
Sec.1.601 Filing of papers in supplemental examination.
(a) A request for supplemental examination of a patent must be filed
by the owner(s) of the entire right, title, and interest in the patent.
(b) Any party other than the patent owner (i.e., any third party) is
prohibited from filing papers or otherwise participating in any manner
in a supplemental examination proceeding.
(c) A request for supplemental examination of a patent may be filed
at any time during the period of enforceability of the patent.
Sec.1.605 Items of information.
(a) Each request for supplemental examination may include no more
than twelve items of information believed to be relevant to the patent.
More than one request for supplemental examination of the same patent
may be filed at any time during the period of enforceability of the
patent.
(b) An item of information includes a document submitted as part of
the request that contains information, believed to be relevant to the
patent, that the patent owner requests the Office to consider,
reconsider, or correct. If the information to be considered,
reconsidered, or corrected is not, at least in part, contained within or
based on any document submitted as part of the request, the discussion
within the body of the request relative to the information will be
considered as an item of information.
(c) An item of information must be in writing in accordance with
Sec.1.2. To be considered, any audio or video recording must be
submitted in the form of a written transcript.
(d) If one item of information is combined in the request with one
or more additional items of information, each item of information of the
combination may be separately counted. Exceptions include the
combination of a non-English language document and its translation, and
the combination of a document that is over 50 pages in length and its
summary pursuant to Sec.1.610(b)(8).
Sec.1.610 Content of request for supplemental examination.
(a) A request for supplemental examination must be accompanied by
the fee for filing a request for supplemental examination as set forth
in Sec.1.20(k)(1), the fee for reexamination ordered as a result of a
supplemental examination proceeding as set forth in Sec.1.20(k)(2),
and any applicable document size fees as set forth in Sec.1.20(k)(3).
(b) A request for supplemental examination must include:
(1) An identification of the number of the patent for which
supplemental examination is requested.
(2) A list of the items of information that are requested to be
considered, reconsidered, or corrected. Where appropriate, the list must
meet the requirements of Sec.1.98(b).
(3) A list identifying any other prior or concurrent post-patent
Office proceedings involving the patent for which supplemental
examination is being requested, including an identification of the type
of proceeding, the identifying number of any such proceeding (e.g., a
control number or reissue application number), and the filing date of
any such proceeding.
(4) An identification of each claim of the patent for which
supplemental examination is requested.
[[Page 163]]
(5) A separate, detailed explanation of the relevance and manner of
applying each item of information to each claim of the patent for which
supplemental examination is requested.
(6) A copy of the patent for which supplemental examination is
requested and a copy of any disclaimer or certificate issued for the
patent.
(7) A copy of each item of information listed in paragraph (b)(2) of
this section, accompanied by a written English translation of all of the
necessary and pertinent parts of any non-English language item of
information. The patent owner is not required to submit copies of items
of information that form part of the discussion within the body of the
request as specified in Sec.1.605(b), or copies of U.S. patents and
U.S. patent application publications.
(8) A summary of the relevant portions of any submitted document,
other than the request, that is over 50 pages in length. The summary
must include citations to the particular pages containing the relevant
portions.
(9) An identification of the owner(s) of the entire right, title,
and interest in the patent requested to be examined, and a submission by
the patent owner in compliance with Sec.3.73(c) of this chapter
establishing the entirety of the ownership in the patent requested to be
examined.
(c) The request may also include:
(1) A cover sheet itemizing each component submitted as part of the
request;
(2) A table of contents for the request;
(3) An explanation of how the claims patentably distinguish over the
items of information; and
(4) An explanation of why each item of information submitted with
the request does or does not raise a substantial new question of
patentability.
(d) The filing date of a request for supplemental examination will
not be granted if the request is not in compliance with Sec. Sec.
1.605, 1.615, and this section, subject to the discretion of the Office.
If the Office determines that the request, as originally submitted, is
not entitled to a filing date, the patent owner will be so notified and
will be given an opportunity to complete the request within a specified
time. If the patent owner does not timely comply with the notice, the
request for supplemental examination will not be granted a filing date
and the fee for reexamination as set forth in Sec.1.20(k)(2) will be
refunded. If the patent owner timely files a corrected request in
response to the notice that properly addresses all of the defects set
forth in the notice and that otherwise complies with all of the
requirements of Sec. Sec.1.605, 1.615, and this section, the filing
date of the supplemental examination request will be the receipt date of
the corrected request.
Sec.1.615 Format of papers filed in a supplemental examination
proceeding.
(a) All papers submitted in a supplemental examination proceeding
must be formatted in accordance with Sec.1.52.
(b) Court documents and non-patent literature may be redacted, but
must otherwise be identical both in content and in format to the
original documents, and, if a court document, to the document submitted
in court, and must not otherwise be reduced in size or modified,
particularly in terms of font type, font size, line spacing, and
margins. Patents, patent application publications, and third-party-
generated affidavits or declarations must not be reduced in size or
otherwise modified in the manner described in this paragraph.
Sec.1.620 Conduct of supplemental examination proceeding.
(a) Within three months after the filing date of a request for
supplemental examination, the Office will determine whether a
substantial new question of patentability affecting any claim of the
patent is raised by any of the items of information presented in the
request. The determination will generally be limited to a review of the
item(s) of information identified in the request as applied to the
identified claim(s) of the patent. The determination will be based on
the claims in effect at the time of the determination and will become a
part of the official record of the patent.
(b) The Office may hold in abeyance action on any petition or other
paper filed in a supplemental examination proceeding until after the
proceeding is
[[Page 164]]
concluded by the electronic issuance of the supplemental examination
certificate as set forth in Sec.1.625.
(c) If an unauthorized or otherwise improper paper is filed in a
supplemental examination proceeding, it will not be entered into the
official file or considered, or if inadvertently entered, it will be
expunged.
(d) The patent owner must, as soon as possible upon the discovery of
any other prior or concurrent post-patent Office proceeding involving
the patent for which the current supplemental examination is requested,
file a paper limited to notifying the Office of the post- patent Office
proceeding, if such notice has not been previously provided with the
request. The notice shall be limited to an identification of the post-
patent Office proceeding, including the type of proceeding, the
identifying number of any such proceeding (e.g., a control number or
reissue application number), and the filing date of any such proceeding,
without any discussion of the issues of the current supplemental
examination proceeding or of the identified post-patent Office
proceeding(s).
(e) Interviews are prohibited in a supplemental examination
proceeding.
(f) No amendment may be filed in a supplemental examination
proceeding.
(g) If the Office becomes aware, during the course of supplemental
examination or of any reexamination ordered under 35 U.S.C. 257 as a
result of the supplemental examination proceeding, that a material fraud
on the Office may have been committed in connection with the patent
requested to be examined, the supplemental examination proceeding or any
reexamination proceeding ordered under 35 U.S.C. 257 will continue, and
the matter will be referred to the U.S. Attorney General in accordance
with 35 U.S.C. 257(e).
Sec.1.625 Conclusion of supplemental examination; publication of
supplemental examination certificate; procedure after conclusion.
(a) A supplemental examination proceeding will conclude with the
electronic issuance of a supplemental examination certificate. The
supplemental examination certificate will indicate the result of the
determination whether any of the items of information presented in the
request raised a substantial new question of patentability.
(b) If the supplemental examination certificate states that a
substantial new question of patentability is raised by one or more items
of information in the request, ex parte reexamination of the patent will
be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte
reexamination proceeding, an ex parte reexamination certificate, which
will include a statement specifying that ex parte reexamination was
ordered under 35 U.S.C. 257, will be published. The electronically
issued supplemental examination certificate will remain as part of the
public record of the patent.
(c) If the supplemental examination certificate indicates that no
substantial new question of patentability is raised by any of the items
of information in the request, and ex parte reexamination is not ordered
under 35 U.S.C. 257, the electronically issued supplemental examination
certificate will be published in due course. The fee for reexamination
ordered as a result of supplemental examination, as set forth in Sec.
1.20(k)(2), will be refunded in accordance with Sec.1.26(c).
(d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be
conducted in accordance with Sec. Sec.1.530 through 1.570, which
govern ex parte reexamination, except that:
(1) The patent owner will not have the right to file a statement
pursuant to Sec.1.530, and the order will not set a time period within
which to file such a statement;
(2) Reexamination of any claim of the patent may be conducted on the
basis of any item of information as set forth in Sec.1.605, and is not
limited to patents and printed publications or to subject matter that
has been added or deleted during the reexamination proceeding,
notwithstanding Sec.1.552(a);
(3) Issues in addition to those raised by patents and printed
publications, and by subject matter added or deleted during a
reexamination proceeding, may be considered and resolved,
notwithstanding Sec.1.552(c); and
[[Page 165]]
(4) Information material to patentability will be defined by Sec.
1.56(b), notwithstanding Sec.1.555(b).
Subpart F_Adjustment and Extension of Patent Term
Authority: 35 U.S.C. 2(b)(2), 154, and 156.
Source: 52 FR 9394, Mar. 24, 1987, unless otherwise noted.
Adjustment of Patent Term Due to Examination Delay
Sec.1.701 Extension of patent term due to examination delay under the
Uruguay Round Agreements Act (original applications, other than
designs, filed on or after June 8, 1995, and before May 29, 2000).
(a) A patent, other than for designs, issued on an application filed
on or after June 8, 1995, is entitled to extension of the patent term if
the issuance of the patent was delayed due to:
(1) Interference or derivation proceedings under 35 U.S.C. 135(a);
and/or
(2) The application being placed under a secrecy order under 35
U.S.C. 181; and/or
(3) Appellate review by the Patent Trial and Appeal Board or by a
Federal court under 35 U.S.C. 141 or 145, if the patent was issued
pursuant to a decision in the review reversing an adverse determination
of patentability and if the patent is not subject to a terminal
disclaimer due to the issuance of another patent claiming subject matter
that is not patentably distinct from that under appellate review. If an
application is remanded by a panel of the Patent Trial and Appeal Board
and the remand is the last action by a panel of the Patent Trial and
Appeal Board prior to the mailing of a notice of allowance under 35
U.S.C. 151 in the application, the remand shall be considered a decision
in the review reversing an adverse determination of patentability as
that phrase is used in 35 U.S.C. 154(b)(2) as amended by section 532(a)
of the Uruguay Round Agreements Act, Public Law 103-465, 108 Stat. 4809,
4983-85 (1994), and a final decision in favor of the applicant under
paragraph (c)(3) of this section. A remand by a panel of the Patent
Trial and Appeal Board shall not be considered a decision in the review
reversing an adverse determination of patentability as provided in this
paragraph if there is filed a request for continued examination under 35
U.S.C. 132(b) that was not first preceded by the mailing, after such
remand, of at least one of an action under 35 U.S.C. 132 or a notice of
allowance under 35 U.S.C. 151.
(b) The term of a patent entitled to extension under paragraph (a)
of this section shall be extended for the sum of the periods of delay
calculated under paragraphs (c)(1), (c)(2), (c)(3) and (d) of this
section, to the extent that these periods are not overlapping, up to a
maximum of five years. The extension will run from the expiration date
of the patent.
(c)(1) The period of delay under paragraph (a)(1) of this section
for an application is the sum of the following periods, to the extent
that the periods are not overlapping:
(i) With respect to each interference or derivation proceeding in
which the application was involved, the number of days, if any, in the
period beginning on the date the interference or derivation proceeding
was instituted to involve the application in the interference or
derivation proceeding and ending on the date that the interference or
derivation proceeding was terminated with respect to the application;
and
(ii) The number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Patent and Trademark
Office due to interference or derivation proceedings under 35 U.S.C.
135(a) not involving the application and ending on the date of the
termination of the suspension.
(2) The period of delay under paragraph (a)(2) of this section for
an application is the sum of the following periods, to the extent that
the periods are not overlapping:
(i) The number of days, if any, the application was maintained in a
sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date
of mailing of an examiner's answer under Sec.41.39 of this title in
the application under secrecy order and ending on the date the
[[Page 166]]
secrecy order and any renewal thereof was removed;
(iii) The number of days, if any, in the period beginning on the
date applicant was notified that an interference or derivation
proceeding would be instituted but for the secrecy order and ending on
the date the secrecy order and any renewal thereof was removed; and
(iv) The number of days, if any, in the period beginning on the date
of notification under Sec.5.3(c) and ending on the date of mailing of
the notice of allowance under Sec.1.311.
(3) The period of delay under paragraph (a)(3) of this section is
the sum of the number of days, if any, in the period beginning on the
date on which an appeal to the Patent Trial and Appeal Board was filed
under 35 U.S.C. 134 and ending on the date of a final decision in favor
of the applicant by the Patent Trial and Appeal Board or by a Federal
court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C.
145.
(d) The period of delay set forth in paragraph (c)(3) shall be
reduced by:
(1) Any time during the period of appellate review that occurred
before three years from the filing date of the first national
application for patent presented for examination; and
(2) Any time during the period of appellate review, as determined by
the Director, during which the applicant for patent did not act with due
diligence. In determining the due diligence of an applicant, the
Director may examine the facts and circumstances of the applicant's
actions during the period of appellate review to determine whether the
applicant exhibited that degree of timeliness as may reasonably be
expected from, and which is ordinarily exercised by, a person during a
period of appellate review.
(e) The provisions of this section apply only to original patents,
except for design patents, issued on applications filed on or after June
8, 1995, and before May 29, 2000.
[60 FR 20228, Apr. 25, 1995, as amended at 65 FR 56391, Sept. 18, 2000;
69 FR 21710, Apr. 22, 2004; 69 FR 50001, Aug. 12, 2004; 77 FR 46627,
Aug. 6, 2012]
Sec.1.702 Grounds for adjustment of patent term due to examination
delay under the Patent Term Guarantee Act of 1999 (original
applications, other than designs, filed on or after May 29, 2000).
(a) Failure to take certain actions within specified time frames.
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term
of an original patent shall be adjusted if the issuance of the patent
was delayed due to the failure of the Office to:
(1) Mail at least one of a notification under 35 U.S.C. 132 or a
notice of allowance under 35 U.S.C. 151 not later than fourteen months
after the date on which the application was filed under 35 U.S.C. 111(a)
or the date the national stage commenced under 35 U.S.C. 371(b) or (f)
in an international application;
(2) Respond to a reply under 35 U.S.C. 132 or to an appeal taken
under 35 U.S.C. 134 not later than four months after the date on which
the reply was filed or the appeal was taken;
(3) Act on an application not later than four months after the date
of a decision by the Patent Trial and Appeal Board under 35 U.S.C. 134
or 135 or a decision by a Federal court under 35 U.S.C. 141, 145, or 146
where at least one allowable claim remains in the application; or
(4) Issue a patent not later than four months after the date on
which the issue fee was paid under 35 U.S.C. 151 and all outstanding
requirements were satisfied.
(b) Three-year pendency. Subject to the provisions of 35 U.S.C.
154(b) and this subpart, the term of an original patent shall be
adjusted if the issuance of the patent was delayed due to the failure of
the Office to issue a patent within three years after the date on which
the application was filed under 35 U.S.C. 111(a) or the national stage
commenced under 35 U.S.C. 371(b) or (f) in an international application,
but not including:
(1) Any time consumed by continued examination of the application
under 35 U.S.C. 132(b);
(2) Any time consumed by an interference or derivation proceeding
under 35 U.S.C. 135(a);
[[Page 167]]
(3) Any time consumed by the imposition of a secrecy order under 35
U.S.C. 181;
(4) Any time consumed by review by the Patent Trial and Appeal Board
or a Federal court; or
(5) Any delay in the processing of the application by the Office
that was requested by the applicant.
(c) Delays caused by interference and derivation proceedings.
Subject to the provisions of 35 U.S.C. 154(b) and this subpart, the term
of an original patent shall be adjusted if the issuance of the patent
was delayed due to interference or derivation proceedings under 35
U.S.C. 135(a).
(d) Delays caused by secrecy order. Subject to the provisions of 35
U.S.C. 154(b) and this subpart, the term of an original patent shall be
adjusted if the issuance of the patent was delayed due to the
application being placed under a secrecy order under 35 U.S.C. 181.
(e) Delays caused by successful appellate review. Subject to the
provisions of 35 U.S.C. 154(b) and this subpart, the term of an original
patent shall be adjusted if the issuance of the patent was delayed due
to review by the Patent Trial and Appeal Board under 35 U.S.C. 134 or by
a Federal court under 35 U.S.C. 141 or 145, if the patent was issued
under a decision in the review reversing an adverse determination of
patentability. If an application is remanded by a panel of the Patent
Trial and Appeal Board and the remand is the last action by a panel of
the Patent Trial and Appeal Board prior to the mailing of a notice of
allowance under 35 U.S.C. 151 in the application, the remand shall be
considered a decision by the Patent Trial and Appeal Board as that
phrase is used in 35 U.S.C. 154(b)(1)(A)(iii), a decision in the review
reversing an adverse determination of patentability as that phrase is
used in 35 U.S.C. 154(b)(1)(C)(iii), and a final decision in favor of
the applicant under Sec.1.703(e). A remand by a panel of the Patent
Trial and Appeal Board shall not be considered a decision in the review
reversing an adverse determination of patentability as provided in this
paragraph if there is filed a request for continued examination under 35
U.S.C. 132(b) that was not first preceded by the mailing, after such
remand, of at least one of an action under 35 U.S.C. 132 or a notice of
allowance under 35 U.S.C. 151.
(f) The provisions of this section and Sec. Sec.1.703 through
1.705 apply only to original applications, except applications for a
design patent, filed on or after May 29, 2000, and patents issued on
such applications.
[65 FR 56391, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004;
77 FR 46627, Aug. 6, 2012; 78 FR 19420, Apr. 1, 2013]
Sec.1.703 Period of adjustment of patent term due to examination
delay.
(a) The period of adjustment under Sec.1.702(a) is the sum of the
following periods:
(1) The number of days, if any, in the period beginning on the day
after the date that is fourteen months after the date on which the
application was filed under 35 U.S.C. 111(a) or the date the national
stage commenced under 35 U.S.C. 371(b) or (f) in an international
application and ending on the date of mailing of either an action under
35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever
occurs first;
(2) The number of days, if any, in the period beginning on the day
after the date that is four months after the date a reply under Sec.
1.111 was filed and ending on the date of mailing of either an action
under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151,
whichever occurs first;
(3) The number of days, if any, in the period beginning on the day
after the date that is four months after the date a reply in compliance
with Sec.1.113(c) was filed and ending on the date of mailing of
either an action under 35 U.S.C. 132, or a notice of allowance under 35
U.S.C. 151, whichever occurs first;
(4) The number of days, if any, in the period beginning on the day
after the date that is four months after the date an appeal brief in
compliance with Sec.41.37 of this title was filed and ending on the
date of mailing of any of an examiner's answer under Sec.41.39 of this
title, an action under 35 U.S.C. 132, or a notice of allowance under 35
U.S.C. 151, whichever occurs first;
(5) The number of days, if any, in the period beginning on the day
after the
[[Page 168]]
date that is four months after the date of a final decision by the
Patent Trial and Appeal Board or by a Federal court in an appeal under
35 U.S.C. 141 or a civil action under 35 U.S.C. 145 or 146 where at
least one allowable claim remains in the application and ending on the
date of mailing of either an action under 35 U.S.C. 132 or a notice of
allowance under 35 U.S.C. 151, whichever occurs first; and
(6) The number of days, if any, in the period beginning on the day
after the date that is four months after the date the issue fee was paid
and all outstanding requirements were satisfied and ending on the date a
patent was issued.
(b) The period of adjustment under Sec.1.702(b) is the number of
days, if any, in the period beginning on the day after the date that is
three years after the date on which the application was filed under 35
U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or
(f) in an international application and ending on the date a patent was
issued, but not including the sum of the following periods:
(1) The number of days, if any, in the period beginning on the date
on which any request for continued examination of the application under
35 U.S.C. 132(b) was filed and ending on the date of mailing of the
notice of allowance under 35 U.S.C. 151;
(2)(i) The number of days, if any, in the period beginning on the
date an interference or derivation proceeding was instituted to involve
the application in the interference or derivation proceeding under 35
U.S.C. 135(a) and ending on the date that the interference or derivation
proceeding was terminated with respect to the application; and
(ii) The number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Office due to
interference or derivation proceedings under 35 U.S.C. 135(a) not
involving the application and ending on the date of the termination of
the suspension;
(3)(i) The number of days, if any, the application was maintained in
a sealed condition under 35 U.S.C. 181;
(ii) The number of days, if any, in the period beginning on the date
of mailing of an examiner's answer under Sec.41.39 of this title in
the application under secrecy order and ending on the date the secrecy
order was removed;
(iii) The number of days, if any, in the period beginning on the
date applicant was notified that an interference or derivation
proceeding under 35 U.S.C. 135(a) would be instituted but for the
secrecy order and ending on the date the secrecy order was removed; and
(iv) The number of days, if any, in the period beginning on the date
of notification under Sec.5.3(c) of this chapter and ending on the
date of mailing of the notice of allowance under 35 U.S.C. 151; and,
(4) The number of days, if any, in the period beginning on the date
on which jurisdiction over the application passes to the Patent Trial
and Appeal Board under Sec.41.35(a) of this chapter and ending on the
date that jurisdiction by the Patent Trial and Appeal Board ends under
Sec.41.35(b) of this chapter or the date of the last decision by a
Federal court in an appeal under 35 U.S.C. 141 or a civil action under
35 U.S.C. 145, whichever is later.
(c) The period of adjustment under Sec.1.702(c) is the sum of the
following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, in the period beginning on the date
an interference or derivation proceeding was instituted to involve the
application in the interference or derivation proceeding under 35 U.S.C.
135(a) and ending on the date that the interference or derivation
proceeding was terminated with respect to the application; and
(2) The number of days, if any, in the period beginning on the date
prosecution in the application was suspended by the Office due to
interference or derivation proceedings under 35 U.S.C. 135(a) not
involving the application and ending on the date of the termination of
the suspension.
(d) The period of adjustment under Sec.1.702(d) is the sum of the
following periods, to the extent that the periods are not overlapping:
(1) The number of days, if any, the application was maintained in a
sealed condition under 35 U.S.C. 181;
(2) The number of days, if any, in the period beginning on the date
of mailing
[[Page 169]]
of an examiner's answer under Sec.41.39 of this title in the
application under secrecy order and ending on the date the secrecy order
was removed;
(3) The number of days, if any, in the period beginning on the date
applicant was notified that an interference or derivation proceeding
under 35 U.S.C. 135(a) would be instituted but for the secrecy order and
ending on the date the secrecy order was removed; and
(4) The number of days, if any, in the period beginning on the date
of notification under Sec.5.3(c) of this chapter and ending on the
date of mailing of the notice of allowance under 35 U.S.C. 151.
(e) The period of adjustment under Sec.1.702(e) is the sum of the
number of days, if any, in the period beginning on the date on which
jurisdiction over the application passes to the Patent Trial and Appeal
Board under Sec.41.35(a) of this chapter and ending on the date of a
final decision in favor of the applicant by the Patent Trial and Appeal
Board or by a Federal court in an appeal under 35 U.S.C. 141 or a civil
action under 35 U.S.C. 145.
(f) The adjustment will run from the expiration date of the patent
as set forth in 35 U.S.C. 154(a)(2). To the extent that periods of delay
attributable to the grounds specified in Sec.1.702 overlap, the period
of adjustment granted under this section shall not exceed the actual
number of days the issuance of the patent was delayed. The term of a
patent entitled to adjustment under Sec.1.702 and this section shall
be adjusted for the sum of the periods calculated under paragraphs (a)
through (e) of this section, to the extent that such periods are not
overlapping, less the sum of the periods calculated under Sec.1.704.
The date indicated on any certificate of mailing or transmission under
Sec.1.8 shall not be taken into account in this calculation.
(g) No patent, the term of which has been disclaimed beyond a
specified date, shall be adjusted under Sec.1.702 and this section
beyond the expiration date specified in the disclaimer.
[65 FR 56392, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004;
69 FR 50001, Aug. 12, 2004; 77 FR 46628, Aug. 6, 2012; 77 FR 49360, Aug.
16, 2012; 78 FR 19420, Apr. 1, 2013; 80 FR 1356, Jan. 9, 2015]
Sec.1.704 Reduction of period of adjustment of patent term.
(a) The period of adjustment of the term of a patent under
Sec. Sec.1.703(a) through (e) shall be reduced by a period equal to
the period of time during which the applicant failed to engage in
reasonable efforts to conclude prosecution (processing or examination)
of the application.
(b) With respect to the grounds for adjustment set forth in
Sec. Sec.1.702(a) through (e), and in particular the ground of
adjustment set forth in Sec.1.702(b), an applicant shall be deemed to
have failed to engage in reasonable efforts to conclude processing or
examination of an application for the cumulative total of any periods of
time in excess of three months that are taken to reply to any notice or
action by the Office making any rejection, objection, argument, or other
request, measuring such three-month period from the date the notice or
action was mailed or given to the applicant, in which case the period of
adjustment set forth in Sec.1.703 shall be reduced by the number of
days, if any, beginning on the day after the date that is three months
after the date of mailing or transmission of the Office communication
notifying the applicant of the rejection, objection, argument, or other
request and ending on the date the reply was filed. The period, or
shortened statutory period, for reply that is set in the Office action
or notice has no effect on the three-month period set forth in this
paragraph.
(c) Circumstances that constitute a failure of the applicant to
engage in reasonable efforts to conclude processing or examination of an
application also include the following circumstances, which will result
in the following reduction of the period of adjustment set forth in
Sec.1.703 to the extent that the periods are not overlapping:
(1) Suspension of action under Sec.1.103 at the applicant's
request, in which case the period of adjustment set forth in Sec.1.703
shall be reduced by the number of days, if any, beginning on the date a
request for suspension of action under Sec.1.103 was filed and ending
on the date of the termination of the suspension;
[[Page 170]]
(2) Deferral of issuance of a patent under Sec.1.314, in which
case the period of adjustment set forth in Sec.1.703 shall be reduced
by the number of days, if any, beginning on the date a request for
deferral of issuance of a patent under Sec.1.314 was filed and ending
on the earlier of the date a request to terminate the deferral was filed
or the date the patent was issued;
(3) Abandonment of the application or late payment of the issue fee,
in which case the period of adjustment set forth in Sec.1.703 shall be
reduced by the number of days, if any, beginning on the date of
abandonment or the day after the date the issue fee was due and ending
on the date the grantable petition to revive the application or accept
late payment of the issue fee was filed;
(4) Failure to file a petition to withdraw the holding of
abandonment or to revive an application within two months from the date
of mailing of a notice of abandonment, in which case the period of
adjustment set forth in Sec.1.703 shall be reduced by the number of
days, if any, beginning on the day after the date two months from the
date of mailing of a notice of abandonment and ending on the date a
petition to withdraw the holding of abandonment or to revive the
application was filed;
(5) Conversion of a provisional application under 35 U.S.C. 111(b)
to a nonprovisional application under 35 U.S.C. 111(a) pursuant to 35
U.S.C. 111(b)(5), in which case the period of adjustment set forth in
Sec.1.703 shall be reduced by the number of days, if any, beginning on
the date the application was filed under 35 U.S.C. 111(b) and ending on
the date a request in compliance with Sec.1.53(c)(3) to convert the
provisional application into a nonprovisional application was filed;
(6) Submission of a preliminary amendment or other preliminary paper
less than one month before the mailing of an Office action under 35
U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the
mailing of a supplemental Office action or notice of allowance, in which
case the period of adjustment set forth in Sec.1.703 shall be reduced
by the number of days, if any, beginning on the day after the date that
is eight months from either the date on which the application was filed
under 35 U.S.C. 111(a) or the date of commencement of the national stage
under 35 U.S.C. 371(b) or (f) in an international application and ending
on the date the preliminary amendment or other preliminary paper was
filed;
(7) Submission of a reply having an omission (Sec.1.135(c)), in
which case the period of adjustment set forth in Sec.1.703 shall be
reduced by the number of days, if any, beginning on the day after the
date the reply having an omission was filed and ending on the date that
the reply or other paper correcting the omission was filed;
(8) Submission of a supplemental reply or other paper, other than a
supplemental reply or other paper expressly requested by the examiner,
after a reply has been filed, in which case the period of adjustment set
forth in Sec.1.703 shall be reduced by the number of days, if any,
beginning on the day after the date the initial reply was filed and
ending on the date that the supplemental reply or other such paper was
filed;
(9) Submission of an amendment or other paper after a decision by
the Patent Trial and Appeal Board, other than a decision designated as
containing a new ground of rejection under Sec.41.50(b) of this title
or statement under Sec.41.50(c) of this title, or a decision by a
Federal court, less than one month before the mailing of an Office
action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151
that requires the mailing of a supplemental Office action or
supplemental notice of allowance, in which case the period of adjustment
set forth in Sec.1.703 shall be reduced by the number of days, if any,
beginning on the day after the date of the decision by the Patent Trial
and Appeal Board or by a Federal court and ending on date the amendment
or other paper was filed;
(10) Submission of an amendment under Sec.1.312 or other paper,
other than an amendment under Sec.1.312 or other paper expressly
requested by the Office or a request for continued examination in
compliance with Sec.1.114, after a notice of allowance has been given
or mailed, in which case the period of adjustment set forth in Sec.
1.703 shall be reduced by the number of days, if any,
[[Page 171]]
beginning on the day after the date of mailing of the notice of
allowance under 35 U.S.C. 151 and ending on the date the amendment under
Sec.1.312 or other paper was filed;
(11) Failure to file an appeal brief in compliance with Sec.41.37
of this chapter within three months from the date on which a notice of
appeal to the Patent Trial and Appeal Board was filed under 35 U.S.C.
134 and Sec.41.31 of this chapter, in which case the period of
adjustment set forth in Sec.1.703 shall be reduced by the number of
days, if any, beginning on the day after the date three months from the
date on which a notice of appeal to the Patent Trial and Appeal Board
was filed under 35 U.S.C. 134 and Sec.41.31 of this chapter, and
ending on the date an appeal brief in compliance with Sec.41.37 of
this chapter or a request for continued examination in compliance with
Sec.1.114 was filed;
(12) Submission of a request for continued examination under 35
U.S.C. 132(b) after any notice of allowance under 35 U.S.C. 151 has been
mailed, in which case the period of adjustment set forth in Sec.1.703
shall be reduced by the number of days, if any, beginning on the day
after the date of mailing of the notice of allowance under 35 U.S.C. 151
and ending on the date the request for continued examination under 35
U.S.C. 132(b) was filed;
(13) Failure to provide an application in condition for examination
as defined in paragraph (f) of this section within eight months from
either the date on which the application was filed under 35 U.S.C.
111(a) or the date of commencement of the national stage under 35 U.S.C.
371(b) or (f) in an international application, in which case the period
of adjustment set forth in Sec.1.703 shall be reduced by the number of
days, if any, beginning on the day after the date that is eight months
from either the date on which the application was filed under 35 U.S.C.
111(a) or the date of commencement of the national stage under 35 U.S.C.
371(b) or (f) in an international application and ending on the date the
application is in condition for examination as defined in paragraph (f)
of this section; and
(14) Further prosecution via a continuing application, in which case
the period of adjustment set forth in Sec.1.703 shall not include any
period that is prior to the actual filing date of the application that
resulted in the patent.
(d)(1) A paper containing only an information disclosure statement
in compliance with Sec. Sec.1.97 and 1.98 will not be considered a
failure to engage in reasonable efforts to conclude prosecution
(processing or examination) of the application under paragraphs (c)(6),
(c)(8), (c)(9), or (c)(10) of this section, and a request for continued
examination in compliance with Sec.1.114 with no submission other than
an information disclosure statement in compliance with Sec. Sec.1.97
and 1.98 will not be considered a failure to engage in reasonable
efforts to conclude prosecution (processing or examination) of the
application under paragraph (c)(12) of this section, if the paper or
request for continued examination is accompanied by a statement that
each item of information contained in the information disclosure
statement:
(i) Was first cited in any communication from a patent office in a
counterpart foreign or international application or from the Office, and
this communication was not received by any individual designated in
Sec.1.56(c) more than thirty days prior to the filing of the
information disclosure statement; or
(ii) Is a communication that was issued by a patent office in a
counterpart foreign or international application or by the Office, and
this communication was not received by any individual designated in
Sec.1.56(c) more than thirty days prior to the filing of the
information disclosure statement.
(2) The thirty-day period set forth in paragraph (d)(1) of this
section is not extendable.
(e) The submission of a request under Sec.1.705(c) for
reinstatement of reduced patent term adjustment will not be considered a
failure to engage in reasonable efforts to conclude prosecution
(processing or examination) of the application under paragraph (c)(10)
of this section.
(f) An application filed under 35 U.S.C. 111(a) is in condition for
examination when the application includes a specification, including at
least one claim and an abstract (Sec.1.72(b)), and has papers in
compliance with Sec.1.52,
[[Page 172]]
drawings (if any) in compliance with Sec.1.84, any English translation
required by Sec.1.52(d) or Sec.1.57(a), a sequence listing in
compliance with Sec.1.821 through Sec.1.825 (if applicable), the
inventor's oath or declaration or an application data sheet containing
the information specified in Sec.1.63(b), the basic filing fee (Sec.
1.16(a) or Sec.1.16(c)), the search fee (Sec.1.16(k) or Sec.
1.16(m)), the examination fee (Sec.1.16(o) or Sec.1.16(q)), any
certified copy of the previously filed application required by Sec.
1.57(a), and any application size fee required by the Office under Sec.
1.16(s). An international application is in condition for examination
when the application has entered the national stage as defined in Sec.
1.491(b), and includes a specification, including at least one claim and
an abstract (Sec.1.72(b)), and has papers in compliance with Sec.
1.52, drawings (if any) in compliance with Sec.1.84, a sequence
listing in compliance with Sec.1.821 through Sec.1.825 (if
applicable), the inventor's oath or declaration or an application data
sheet containing the information specified in Sec.1.63(b), the search
fee (Sec.1.492(b)), the examination fee (Sec.1.492(c)), and any
application size fee required by the Office under Sec.1.492(j). An
application shall be considered as having papers in compliance with
Sec.1.52, drawings (if any) in compliance with Sec.1.84, and a
sequence listing in compliance with Sec.1.821 through Sec.1.825 (if
applicable) for purposes of this paragraph on the filing date of the
latest reply (if any) correcting the papers, drawings, or sequence
listing that is prior to the date of mailing of either an action under
35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever
occurs first.
[65 FR 56393, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004;
69 FR 50002, Aug. 12, 2004; 72 FR 46843, Aug. 21, 2007; 74 FR 52691,
Oct. 14, 2009; 76 FR 74702, Dec. 1, 2011; 77 FR 46628, Aug. 6, 2012; 77
FR 49360, Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013; 78 FR 62408, Oct.
21, 2013; 80 FR 1356, Jan. 9, 2015; 85 FR 36341, June 16, 2020]
Sec.1.705 Patent term adjustment determination.
(a) The patent will include notification of any patent term
adjustment under 35 U.S.C. 154(b).
(b) Any request for reconsideration of the patent term adjustment
indicated on the patent must be by way of an application for patent term
adjustment filed no later than two months from the date the patent was
granted. This two-month time period may be extended under the provisions
of Sec.1.136(a). An application for patent term adjustment under this
section must be accompanied by:
(1) The fee set forth in Sec.1.18(e); and
(2) A statement of the facts involved, specifying:
(i) The correct patent term adjustment and the basis or bases under
Sec.1.702 for the adjustment;
(ii) The relevant dates as specified in Sec. Sec.1.703(a) through
(e) for which an adjustment is sought and the adjustment as specified in
Sec.1.703(f) to which the patent is entitled;
(iii) Whether the patent is subject to a terminal disclaimer and any
expiration date specified in the terminal disclaimer; and
(iv)(A) Any circumstances during the prosecution of the application
resulting in the patent that constitute a failure to engage in
reasonable efforts to conclude processing or examination of such
application as set forth in Sec.1.704; or
(B) That there were no circumstances constituting a failure to
engage in reasonable efforts to conclude processing or examination of
such application as set forth in Sec.1.704.
(c) Any request for reinstatement of all or part of the period of
adjustment reduced pursuant to Sec.1.704(b) for failing to reply to a
rejection, objection, argument, or other request within three months of
the date of mailing of the Office communication notifying the applicant
of the rejection, objection, argument, or other request must be filed
prior to the issuance of the patent. This time period is not extendable.
Any request for reinstatement of all or part of the period of adjustment
reduced pursuant to Sec.1.704(b) under this paragraph must also be
accompanied by:
(1) The fee set forth in Sec.1.18(f); and
(2) A showing to the satisfaction of the Director that, in spite of
all due care, the applicant was unable to reply to the rejection,
objection, argument, or other request within three months of the date of
mailing of the Office communication notifying the applicant
[[Page 173]]
of the rejection, objection, argument, or other request. The Office
shall not grant any request for reinstatement for more than three
additional months for each reply beyond three months from the date of
mailing of the Office communication notifying the applicant of the
rejection, objection, argument, or other request.
(d) No submission or petition on behalf of a third party concerning
patent term adjustment under 35 U.S.C. 154(b) will be considered by the
Office. Any such submission or petition will be returned to the third
party, or otherwise disposed of, at the convenience of the Office.
[65 FR 56394, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004;
78 FR 19420, Apr. 1, 2013]
Extension of Patent Term Due to Regulatory Review
Sec.1.710 Patents subject to extension of the patent term.
(a) A patent is eligible for extension of the patent term if the
patent claims a product as defined in paragraph (b) of this section,
either alone or in combination with other ingredients that read on a
composition that received permission for commercial marketing or use, or
a method of using such a product, or a method of manufacturing such a
product, and meets all other conditions and requirements of this
subpart.
(b) The term product referred to in paragraph (a) of this section
means--
(1) The active ingredient of a new human drug, antibiotic drug, or
human biological product (as those terms are used in the Federal Food,
Drug, and Cosmetic Act and the Public Health Service Act) including any
salt or ester of the active ingredient, as a single entity or in
combination with another active ingredient; or
(2) The active ingredient of a new animal drug or veterinary
biological product (as those terms are used in the Federal Food, Drug,
and Cosmetic Act and the Virus-Serum-Toxin Act) that is not primarily
manufactured using recombinant DNA, recombinant RNA, hybridoma
technology, or other processes including site specific genetic
manipulation techniques, including any salt or ester of the active
ingredient, as a single entity or in combination with another active
ingredient; or
(3) Any medical device, food additive, or color additive subject to
regulation under the Federal Food, Drug, and Cosmetic Act.
[54 FR 30379, July 20, 1989]
Sec.1.720 Conditions for extension of patent term.
The term of a patent may be extended if:
(a) The patent claims a product or a method of using or
manufacturing a product as defined in Sec.1.710;
(b) The term of the patent has never been previously extended,
except for extensions issued pursuant to Sec. Sec.1.701, 1.760, or
Sec.1.790;
(c) An application for extension is submitted in compliance with
Sec.1.740;
(d) The product has been subject to a regulatory review period as
defined in 35 U.S.C. 156(g) before its commercial marketing or use;
(e) The product has received permission for commercial marketing or
use and--
(1) The permission for the commercial marketing or use of the
product is the first received permission for commercial marketing or use
under the provision of law under which the applicable regulatory review
occurred, or
(2) In the case of a patent other than one directed to subject
matter within Sec.1.710(b)(2) claiming a method of manufacturing the
product that primarily uses recombinant DNA technology in the
manufacture of the product, the permission for the commercial marketing
or use is the first received permission for the commercial marketing or
use of a product manufactured under the process claimed in the patent,
or
(3) In the case of a patent claiming a new animal drug or a
veterinary biological product that is not covered by the claims in any
other patent that has been extended, and has received permission for the
commercial marketing or use in non-food-producing animals and in food-
producing animals, and was not extended on the basis of the regulatory
review period for use in non-food-producing animals, the permission for
the commercial marketing or use of
[[Page 174]]
the drug or product after the regulatory review period for use in food-
producing animals is the first permitted commercial marketing or use of
the drug or product for administration to a food-producing animal.
(f) The application is submitted within the sixty-day period
beginning on the date the product first received permission for
commercial marketing or use under the provisions of law under which the
applicable regulatory review period occurred; or in the case of a patent
claiming a method of manufacturing the product which primarily uses
recombinant DNA technology in the manufacture of the product, the
application for extension is submitted within the sixty-day period
beginning on the date of the first permitted commercial marketing or use
of a product manufactured under the process claimed in the patent; or in
the case of a patent that claims a new animal drug or a veterinary
biological product that is not covered by the claims in any other patent
that has been extended, and said drug or product has received permission
for the commercial marketing or use in non-food-producing animals, the
application for extension is submitted within the sixty-day period
beginning on the date of the first permitted commercial marketing or use
of the drug or product for administration to a food-producing animal;
(g) The term of the patent, including any interim extension issued
pursuant to Sec.1.790, has not expired before the submission of an
application in compliance with Sec.1.741; and
(h) No other patent term has been extended for the same regulatory
review period for the product.
[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 65
FR 54679, Sept. 8, 2000]
Sec.1.730 Applicant for extension of patent term; signature requirements.
(a) Any application for extension of a patent term must be submitted
by the owner of record of the patent or its agent and must comply with
the requirements of Sec.1.740.
(b) If the application is submitted by the patent owner, the
application must be signed either by:
(1) The patent owner in compliance with Sec.3.73(c) of this
chapter; or
(2) A registered practitioner on behalf of the patent owner.
(c) If the application is submitted on behalf of the patent owner by
an agent of the patent owner (e.g., a licensee of the patent owner), the
application must be signed by a registered practitioner on behalf of the
agent. The Office may require proof that the agent is authorized to act
on behalf of the patent owner.
(d) If the application is signed by a registered practitioner, the
Office may require proof that the practitioner is authorized to act on
behalf of the patent owner or agent of the patent owner.
[65 FR 54679, Sept. 8, 2000, as amended at 77 FR 48825, Aug. 14, 2012]
Sec.1.740 Formal requirements for application for extension of patent
term; correction of informalities.
(a) An application for extension of patent term must be made in
writing to the Director. A formal application for the extension of
patent term must include:
(1) A complete identification of the approved product as by
appropriate chemical and generic name, physical structure or
characteristics;
(2) A complete identification of the Federal statute including the
applicable provision of law under which the regulatory review occurred;
(3) An identification of the date on which the product received
permission for commercial marketing or use under the provision of law
under which the applicable regulatory review period occurred;
(4) In the case of a drug product, an identification of each active
ingredient in the product and as to each active ingredient, a statement
that it has not been previously approved for commercial marketing or use
under the Federal Food, Drug, and Cosmetic Act, the Public Health
Service Act, or the Virus-Serum-Toxin Act, or a statement of when the
active ingredient was approved for commercial marketing or use (either
alone or in combination with other active ingredients), the use
[[Page 175]]
for which it was approved, and the provision of law under which it was
approved.
(5) A statement that the application is being submitted within the
sixty day period permitted for submission pursuant to Sec.1.720(f) and
an identification of the date of the last day on which the application
could be submitted;
(6) A complete identification of the patent for which an extension
is being sought by the name of the inventor, the patent number, the date
of issue, and the date of expiration;
(7) A copy of the patent for which an extension is being sought,
including the entire specification (including claims) and drawings;
(8) A copy of any disclaimer, certificate of correction, receipt of
maintenance fee payment, or reexamination certificate issued in the
patent;
(9) A statement that the patent claims the approved product, or a
method of using or manufacturing the approved product, and a showing
which lists each applicable patent claim and demonstrates the manner in
which at least one such patent claim reads on:
(i) The approved product, if the listed claims include any claim to
the approved product;
(ii) The method of using the approved product, if the listed claims
include any claim to the method of using the approved product; and
(iii) The method of manufacturing the approved product, if the
listed claims include any claim to the method of manufacturing the
approved product;
(10) A statement beginning on a new page of the relevant dates and
information pursuant to 35 U.S.C. 156(g) in order to enable the
Secretary of Health and Human Services or the Secretary of Agriculture,
as appropriate, to determine the applicable regulatory review period as
follows:
(i) For a patent claiming a human drug, antibiotic, or human
biological product:
(A) The effective date of the investigational new drug (IND)
application and the IND number;
(B) The date on which a new drug application (NDA) or a Product
License Application (PLA) was initially submitted and the NDA or PLA
number; and
(C) The date on which the NDA was approved or the Product License
issued;
(ii) For a patent claiming a new animal drug:
(A) The date a major health or environmental effects test on the
drug was initiated, and any available substantiation of that date, or
the date of an exemption under subsection (j) of Section 512 of the
Federal Food, Drug, and Cosmetic Act became effective for such animal
drug;
(B) The date on which a new animal drug application (NADA) was
initially submitted and the NADA number; and
(C) The date on which the NADA was approved;
(iii) For a patent claiming a veterinary biological product:
(A) The date the authority to prepare an experimental biological
product under the Virus-Serum-Toxin Act became effective;
(B) The date an application for a license was submitted under the
Virus-Serum-Toxin Act; and
(C) The date the license issued;
(iv) For a patent claiming a food or color additive:
(A) The date a major health or environmental effects test on the
additive was initiated and any available substantiation of that date;
(B) The date on which a petition for product approval under the
Federal Food, Drug and Cosmetic Act was initially submitted and the
petition number; and
(C) The date on which the FDA published a Federal Register notice
listing the additive for use;
(v) For a patent claiming a medical device:
(A) The effective date of the investigational device exemption (IDE)
and the IDE number, if applicable, or the date on which the applicant
began the first clinical investigation involving the device, if no IDE
was submitted, and any available substantiation of that date;
(B) The date on which the application for product approval or notice
of completion of a product development protocol under Section 515 of the
Federal
[[Page 176]]
Food, Drug and Cosmetic Act was initially submitted and the number of
the application; and
(C) The date on which the application was approved or the protocol
declared to be completed;
(11) A brief description beginning on a new page of the significant
activities undertaken by the marketing applicant during the applicable
regulatory review period with respect to the approved product and the
significant dates applicable to such activities;
(12) A statement beginning on a new page that in the opinion of the
applicant the patent is eligible for the extension and a statement as to
the length of extension claimed, including how the length of extension
was determined;
(13) A statement that applicant acknowledges a duty to disclose to
the Director of the United States Patent and Trademark Office and the
Secretary of Health and Human Services or the Secretary of Agriculture
any information which is material to the determination of entitlement to
the extension sought (see Sec.1.765);
(14) The prescribed fee for receiving and acting upon the
application for extension (see Sec.1.20(j)); and
(15) The name, address, and telephone number of the person to whom
inquiries and correspondence relating to the application for patent term
extension are to be directed.
(b) The application under this section must be accompanied by two
additional copies of such application (for a total of three copies).
(c) If an application for extension of patent term is informal under
this section, the Office will so notify the applicant. The applicant has
two months from the mail date of the notice, or such time as is set in
the notice, within which to correct the informality. Unless the notice
indicates otherwise, this time period may be extended under the
provisions of Sec.1.136.
[54 FR 9394, Mar. 24, 1987, as amended at 54 FR 30380, July 20, 1989; 56
FR 65155, Dec. 13, 1991; 65 FR 54679, Sept. 8, 2000; 68 FR 14337, Mar.
25, 2003]
Sec.1.741 Complete application given a filing date; petition procedure.
(a) The filing date of an application for extension of a patent term
is the date on which a complete application is received in the Office or
filed pursuant to the procedures set forth in Sec.1.8 or Sec.1.10. A
complete application must include:
(1) An identification of the approved product;
(2) An identification of each Federal statute under which regulatory
review occurred;
(3) An identification of the patent for which an extension is being
sought;
(4) An identification of each claim of the patent which claims the
approved product or a method of using or manufacturing the approved
product;
(5) Sufficient information to enable the Director to determine under
subsections (a) and (b) of 35 U.S.C. 156 the eligibility of a patent for
extension, and the rights that will be derived from the extension, and
information to enable the Director and the Secretary of Health and Human
Services or the Secretary of Agriculture to determine the length of the
regulatory review period; and
(6) A brief description of the activities undertaken by the
marketing applicant during the applicable regulatory review period with
respect to the approved product and the significant dates applicable to
such activities.
(b) If an application for extension of patent term is incomplete
under this section, the Office will so notify the applicant. If
applicant requests review of a notice that an application is incomplete,
or review of the filing date accorded an application under this section,
applicant must file a petition pursuant to this paragraph accompanied by
the fee set forth in Sec.1.17(f) within two months of the mail date of
the notice that the application is incomplete, or the notice according
the filing date complained of. Unless the notice indicates otherwise,
this time period may be extended under the provisions of Sec.1.136.
[52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61
FR 64028, Dec. 3, 1996; 65 FR 54680, Sept. 8, 2000; 69 FR 56546, Sept.
21, 2004]
[[Page 177]]
Sec.1.750 Determination of eligibility for extension of patent term.
A determination as to whether a patent is eligible for extension may
be made by the Director solely on the basis of the representations
contained in the application for extension filed in compliance with
Sec.1.740 or Sec.1.790. This determination may be delegated to
appropriate Patent and Trademark Office officials and may be made at any
time before the certificate of extension is issued. The Director or
other appropriate officials may require from applicant further
information or make such independent inquiries as desired before a final
determination is made on whether a patent is eligible for extension. In
an application for extension filed in compliance with Sec.1.740, a
notice will be mailed to applicant containing the determination as to
the eligibility of the patent for extension and the period of time of
the extension, if any. This notice shall constitute the final
determination as to the eligibility and any period of extension of the
patent. A single request for reconsideration of a final determination
may be made if filed by the applicant within such time as may be set in
the notice of final determination or, if no time is set, within one
month from the date of the final determination. The time periods set
forth herein are subject to the provisions of Sec.1.136.
[60 FR 25618, May 12, 1995]
Sec.1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2).
An applicant who has filed a formal application for extension in
compliance with Sec.1.740 may request one or more interim extensions
for periods of up to one year each pending a final determination on the
application pursuant to Sec.1.750. Any such request should be filed at
least three months prior to the expiration date of the patent. The
Director may issue interim extensions, without a request by the
applicant, for periods of up to one year each until a final
determination is made. The patent owner or agent will be notified when
an interim extension is granted and notice of the extension will be
published in the Official Gazette of the United States Patent and
Trademark Office. The notice will be recorded in the official file of
the patent and will be considered as part of the original patent. In no
event will the interim extensions granted under this section be longer
than the maximum period for extension to which the applicant would be
eligible.
[65 FR 54680, Sept. 8, 2000]
Sec.1.765 Duty of disclosure in patent term extension proceedings.
(a) A duty of candor and good faith toward the Patent and Trademark
Office and the Secretary of Health and Human Services or the Secretary
of Agriculture rests on the patent owner or its agent, on each attorney
or agent who represents the patent owner and on every other individual
who is substantively involved on behalf of the patent owner in a patent
term extension proceeding. All such individuals who are aware, or become
aware, of material information adverse to a determination of entitlement
to the extension sought, which has not been previously made of record in
the patent term extension proceeding must bring such information to the
attention of the Office or the Secretary, as appropriate, in accordance
with paragraph (b) of this section, as soon as it is practical to do so
after the individual becomes aware of the information. Information is
material where there is a substantial likelihood that the Office or the
Secretary would consider it important in determinations to be made in
the patent term extension proceeding.
(b) Disclosures pursuant to this section must be accompanied by a
copy of each written document which is being disclosed. The disclosure
must be made to the Office or the Secretary, as appropriate, unless the
disclosure is material to determinations to be made by both the Office
and the Secretary, in which case duplicate copies, certified as such,
must be filed in the Office and with the Secretary. Disclosures pursuant
to this section may be made to the Office or the Secretary, as
appropriate, through an attorney or agent having responsibility on
behalf of the patent owner or its agent for the patent term
[[Page 178]]
extension proceeding or through a patent owner acting on his or her own
behalf. Disclosure to such an attorney, agent or patent owner shall
satisfy the duty of any other individual. Such an attorney, agent or
patent owner has no duty to transmit information which is not material
to the determination of entitlement to the extension sought.
(c) No patent will be determined eligible for extension and no
extension will be issued if it is determined that fraud on the Office or
the Secretary was practiced or attempted or the duty of disclosure was
violated through bad faith or gross negligence in connection with the
patent term extension proceeding. If it is established by clear and
convincing evidence that any fraud was practiced or attempted on the
Office or the Secretary in connection with the patent term extension
proceeding or that there was any violation of the duty of disclosure
through bad faith or gross negligence in connection with the patent term
extension proceeding, a final determination will be made pursuant to
Sec.1.750 that the patent is not eligible for extension.
(d) The duty of disclosure pursuant to this section rests on the
individuals identified in paragraph (a) of this section and no
submission on behalf of third parties, in the form of protests or
otherwise, will be considered by the Office. Any such submissions by
third parties to the Office will be returned to the party making the
submission, or otherwise disposed of, without consideration by the
Office.
[24 FR 10332, Dec. 22, 1959, as amended at 54 FR 30381, July 20, 1989;
60 FR 25618, May 12, 1995]
Sec.1.770 Express withdrawal of application for extension of patent term.
An application for extension of patent term may be expressly
withdrawn before a determination is made pursuant to Sec.1.750 by
filing in the Office, in duplicate, a written declaration of withdrawal
signed by the owner of record of the patent or its agent. An application
may not be expressly withdrawn after the date permitted for reply to the
final determination on the application. An express withdrawal pursuant
to this section is effective when acknowledged in writing by the Office.
The filing of an express withdrawal pursuant to this section and its
acceptance by the Office does not entitle applicant to a refund of the
filing fee (Sec.1.20(j)) or any portion thereof.
[62 FR 53201, Oct. 10, 1997]
Sec.1.775 Calculation of patent term extension for a human drug,
antibiotic drug or human biological product.
(a) If a determination is made pursuant to Sec.1.750 that a patent
for a human drug, antibiotic drug or human biological product is
eligible for extension, the term shall be extended by the time as
calculated in days in the manner indicated by this section. The patent
term extension will run from the original expiration date of the patent
or any earlier date set by terminal disclaimer (Sec.1.321).
(b) The term of the patent for a human drug, antibiotic drug or
human biological product will be extended by the length of the
regulatory review period for the product as determined by the Secretary
of Health and Human Services, reduced as appropriate pursuant to
paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a human drug,
antibiotic drug or human biological product will be determined by the
Secretary of Health and Human Services. Under 35 U.S.C. 156(g)(1)(B), it
is the sum of--
(1) The number of days in the period beginning on the date an
exemption under subsection (i) of section 505 or subsection (d) of
section 507 of the Federal Food, Drug, and Cosmetic Act became effective
for the approved product and ending on the date the application was
initially submitted for such product under those sections or under
section 351 of the Public Health Service Act; and
(2) The number of days in the period beginning on the date the
application was initially submitted for the approved product under
section 351 of the Public Health Service Act, subsection (b) of section
505 or section 507 of the Federal Food, Drug, and Cosmetic Act and
ending on the date such application was approved under such section.
[[Page 179]]
(d) The term of the patent as extended for a human drug, antibiotic
drug or human biological product will be determined by--
(1) Subtracting from the number of days determined by the Secretary
of Health and Human Services to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section which were on and before the date on which the
patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section during which it is determined under 35 U.S.C.
156(d)(2)(B) by the Secretary of Health and Human Services that
applicant did not act with due diligence;
(iii) One-half the number of days remaining in the period defined by
paragraph (c)(1) of this section after that period is reduced in
accordance with paragraphs (d)(1) (i) and (ii) of this section; half
days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of
this section to the original term of the patent as shortened by any
terminal disclaimer;
(3) By adding 14 years to the date of approval of the application
under section 351 of the Public Health Service Act, or subsection (b) of
section 505 or section 507 of the Federal Food, Drug, and Cosmetic Act;
(4) By comparing the dates for the ends of the periods obtained
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other
and selecting the earlier date;
(5) If the original patent was issued after September 24, 1984,
(i) By adding 5 years to the original expiration date of the patent
or any earlier date set by terminal disclaimer; and
(ii) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(5)(i) of this section with each other and selecting the earlier
date;
(6) If the original patent was issued before September 24, 1984, and
(i) If no request was submitted for an exemption under subsection
(i) of section 505 or subsection (d) of section 507 of the Federal Food,
Drug, and Cosmetic Act before September 24, 1984, by--
(A) Adding 5 years to the original expiration date of the patent or
earlier date set by terminal disclaimer; and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(6)(i)(A) of this section with each other and selecting the
earlier date; or
(ii) If a request was submitted for an exemption under subsection
(i) of section 505 or subsection (d) of section 507 of the Federal Food,
Drug, or Cosmetic Act before September 24, 1984 and the commercial
marketing or use of the product was not approved before September 24,
1984, by--
(A) Adding 2 years to the original expiration date of the patent or
earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(6)(ii)(A) of this section with each other and selecting the
earlier date.
[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30381, July 20, 1989]
Sec.1.776 Calculation of patent term extension for a food additive
or color additive.
(a) If a determination is made pursuant to Sec.1.750 that a patent
for a food additive or color additive is eligible for extension, the
term shall be extended by the time as calculated in days in the manner
indicated by this section. The patent term extension will run from the
original expiration date of the patent or earlier date set by terminal
disclaimer (Sec.1.321).
(b) The term of the patent for a food additive or color additive
will be extended by the length of the regulatory review period for the
product as determined by the Secretary of Health and Human Services,
reduced as appropriate pursuant to paragraphs (d)(1) through (d)(6) of
this section.
(c) The length of the regulatory review period for a food additive
or color additive will be determined by the Secretary of Health and
Human Services. Under 35 U.S.C. 156(g)(2)(B), it is the sum of--
(1) The number of days in the period beginning on the date a major
health or environmental effects test on the additive was initiated and
ending on
[[Page 180]]
the date a petition was initially submitted with respect to the approved
product under the Federal Food, Drug, and Cosmetic Act requesting the
issuance of a regulation for use of the product; and
(2) The number of days in the period beginning on the date a
petition was initially submitted with respect to the approved product
under the Federal Food, Drug, and Cosmetic Act requesting the issuance
of a regulation for use of the product, and ending on the date such
regulation became effective or, if objections were filed to such
regulation, ending on the date such objections were resolved and
commercial marketing was permitted or, if commercial marketing was
permitted and later revoked pending further proceedings as a result of
such objections, ending on the date such proceedings were finally
resolved and commercial marketing was permitted.
(d) The term of the patent as extended for a food additive or color
additive will be determined by
(1) Subtracting from the number of days determined by the Secretary
of Health and Human Services to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section which were on and before the date on which the
patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section during which it is determined under 35 U.S.C.
156(d)(2)(B) by the Secretary of Health and Human Services that
applicant did not act with due diligence;
(iii) The number of days equal to one-half the number of days
remaining in the period defined by paragraph (c)(1) of this section
after that period is reduced in accordance with paragraphs (d)(1) (i)
and (ii) of this section; half days will be ignored for purposes of
subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of
this section to the original term of the patent as shortened by any
terminal disclaimer;
(3) By adding 14 years to the date a regulation for use of the
product became effective or, if objections were filed to such
regulation, to the date such objections were resolved and commercial
marketing was permitted or, if commercial marketing was permitted and
later revoked pending further proceedings as a result of such
objections, to the date such proceedings were finally resolved and
commercial marketing was permitted;
(4) By comparing the dates for the ends of the periods obtained
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other
and selecting the earlier date;
(5) If the original patent was issued after September 24, 1984,
(i) By adding 5 years to the original expiration date of the patent
or earlier date set by terminal disclaimer; and
(ii) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(5)(i) of this section with each other and selecting the earlier
date;
(6) If the original patent was issued before September 24, 1984, and
(i) If no major health or environmental effects test was initiated
and no petition for a regulation or application for registration was
submitted before September 24, 1984, by--
(A) Adding 5 years to the original expiration date of the patent or
earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(6)(i)(A) of this section with each other and selecting the
earlier date; or
(ii) If a major health or environmental effects test was initiated
or a petition for a regulation or application for registration was
submitted by September 24, 1984, and the commercial marketing or use of
the product was not approved before September 24, 1984, by--
(A) Adding 2 years to the original expiration date of the patent or
earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(6)(ii)(A) of this section with each other and selecting the
earlier date.
Sec.1.777 Calculation of patent term extension for a medical device.
(a) If a determination is made pursuant to Sec.1.750 that a patent
for a medical device is eligible for extension, the term shall be
extended by the time as
[[Page 181]]
calculated in days in the manner indicated by this section. The patent
term extension will run from the original expiration date of the patent
or earlier date as set by terminal disclaimer (Sec.1.321).
(b) The term of the patent for a medical device will be extended by
the length of the regulatory review period for the product as determined
by the Secretary of Health and Human Services, reduced as appropriate
pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for a medical device
will be determined by the Secretary of Health and Human Services. Under
35 U.S.C. 156(g)(3)(B), it is the sum of
(1) The number of days in the period beginning on the date a
clinical investigation on humans involving the device was begun and
ending on the date an application was initially submitted with respect
to the device under section 515 of the Federal Food, Drug, and Cosmetic
Act; and
(2) The number of days in the period beginning on the date the
application was initially submitted with respect to the device under
section 515 of the Federal Food, Drug, and Cosmetic Act, and ending on
the date such application was approved under such Act or the period
beginning on the date a notice of completion of a product development
protocol was initially submitted under section 515(f)(5) of the Act and
ending on the date the protocol was declared completed under section
515(f)(6) of the Act.
(d) The term of the patent as extended for a medical device will be
determined by--
(1) Substracting from the number of days determined by the Secretary
of Health and Human Services to be in the regulatory review period
pursuant to paragraph (c) of this section:
(i) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section which were on and before the date on which the
patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section during which it is determined under 35 U.S.C.
156(d)(2)(B) by the Secretary of Health and Human Services that
applicant did not act with due diligence;
(iii) One-half the number of days remaining in the period defined by
paragraph (c)(1) of this section after that period is reduced in
accordance with paragraphs (d)(1) (i) and (ii) of this section; half
days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of
this section to the original term of the patent as shortened by any
terminal disclaimer;
(3) By adding 14 years to the date of approval of the application
under section 515 of the Federal Food, Drug, and Cosmetic Act or the
date a product development protocol was declared completed under section
515(f)(6) of the Act;
(4) By comparing the dates for the ends of the periods obtained
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other
and selecting the earlier date;
(5) If the original patent was issued after September 24, 1984,
(i) By adding 5 years to the original expiration date of the patent
or earlier date set by terminal disclaimer; and
(ii) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(5)(i) of this section with each other and selecting the earlier
date;
(6) If the original patent was issued before September 24, 1984, and
(i) If no clinical investigation on humans involving the device was
begun or no product development protocol was submitted under section
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September
24, 1984, by--
(A) Adding 5 years to the original expiration date of the patent or
earlier date set by terminal disclaimer and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(6)(i)(A) of this section with each other and selecting the
earlier date; or
(ii) If a clinical investigation on humans involving the device was
begun or a product development protocol was submitted under section
515(f)(5) of the Federal Food, Drug, and Cosmetic Act before September
24, 1984 and the commercial marketing or use of the product was not
approved before September 24, 1984, by
[[Page 182]]
(A) Adding 2 years to the original expiration date of the patent or
earlier date set by terminal disclaimer, and
(B) By comparing the dates obtained pursuant to paragraphs (d)(4)
and (d)(6)(ii)(A) of this section with each other and selecting the
earlier date.
Sec.1.778 Calculation of patent term extension for an animal drug product.
(a) If a determination is made pursuant to Sec.1.750 that a patent
for an animal drug is eligible for extension, the term shall be extended
by the time as calculated in days in the manner indicated by this
section. The patent term extension will run from the original expiration
date of the patent or any earlier date set by terminal disclaimer (Sec.
1.321).
(b) The term of the patent for an animal drug will be extended by
the length of the regulatory review period for the drug as determined by
the Secretary of Health and Human Services, reduced as appropriate
pursuant to paragraphs (d)(1) through (d)(6) of this section.
(c) The length of the regulatory review period for an animal drug
will be determined by the Secretary of Health and Human Services. Under
35 U.S.C. 156(g)(4)(B), it is the sum of--
(1) The number of days in the period beginning on the earlier of the
date a major health or environmental effects test on the drug was
initiated or the date an exemption under subsection (j) of section 512
of the Federal Food, Drug, and Cosmetic Act became effective for the
approved animal drug and ending on the date an application was initially
submitted for such animal drug under section 512 of the Federal Food,
Drug, and Cosmetic Act; and
(2) The number of days in the period beginning on the date the
application was initially submitted for the approved animal drug under
subsection (b) of section 512 of the Federal Food, Drug, and Cosmetic
Act and ending on the date such application was approved under such
section.
(d) The term of the patent as extended for an animal drug will be
determined by--
(1) Subtracting from the number of days determined by the Secretary
of Health and Human Services to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section that were on and before the date on which the
patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section during which it is determined under 35 U.S.C.
156(d)(2)(B) by the Secretary of Health and Human Services that
applicant did not act with due diligence;
(iii) One-half the number of days remaining in the period defined by
paragraph (c)(1) of this section after that period is reduced in
accordance with paragraphs (d)(1) (i) and (ii) of this section; half
days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of
this section to the original term of the patent as shortened by any
terminal disclaimer;
(3) By adding 14 years to the date of approval of the application
under section 512 of the Federal Food, Drug, and Cosmetic Act;
(4) By comparing the dates for the ends of the periods obtained
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other
and selecting the earlier date;
(5) If the original patent was issued after November 16, 1988, by--
(i) Adding 5 years to the original expiration date of the patent or
any earlier date set by terminal disclaimer; and
(ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(5)(i) of this section with each other and selecting the earlier
date;
(6) If the original patent was issued before November 16, 1988, and
(i) If no major health or environmental effects test on the drug was
initiated and no request was submitted for an exemption under subsection
(j) of section 512 of the Federal Food, Drug, and Cosmetic Act before
November 16, 1988, by--
(A) Adding 5 years to the original expiration date of the patent or
earlier date set by terminal disclaimer; and
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and
[[Page 183]]
(d)(6)(i)(A) of this section with each other and selecting the earlier
date; or
(ii) If a major health or environmental effects test was initiated
or a request for an exemption under subsection (j) of section 512 of the
Federal Food, Drug, and Cosmetic Act was submitted before November 16,
1988, and the application for commercial marketing or use of the animal
drug was not approved before November 16, 1988, by--
(A) Adding 3 years to the original expiration date of the patent or
earlier date set by terminal disclaimer, and
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other and selecting the earlier
date.
[54 FR 30381, July 20, 1989]
Sec.1.779 Calculation of patent term extension for a veterinary
biological product.
(a) If a determination is made pursuant to Sec.1.750 that a patent
for a veterinary biological product is eligible for extension, the term
shall be extended by the time as calculated in days in the manner
indicated by this section. The patent term extension will run from the
original expiration date of the patent or any earlier date set by
terminal disclaimer (Sec.1.321).
(b) The term of the patent for a veterinary biological product will
be extended by the length of the regulatory review period for the
product as determined by the Secretary of Agriculture, reduced as
appropriate pursuant to paragraphs (d)(1) through (d)(6) of this
section.
(c) The length of the regulatory review period for a veterinary
biological product will be determined by the Secretary of Agriculture.
Under 35 U.S.C. 156(g)(5)(B), it is the sum of--
(1) The number of days in the period beginning on the date the
authority to prepare an experimental biological product under the Virus-
Serum-Toxin Act became effective and ending on the date an application
for a license was submitted under the Virus-Serum-Toxin Act; and
(2) The number of days in the period beginning on the date an
application for a license was initially submitted for approval under the
Virus-Serum-Toxin Act and ending on the date such license was issued.
(d) The term of the patent as extended for a veterinary biological
product will be determined by--
(1) Subtracting from the number of days determined by the Secretary
of Agriculture to be in the regulatory review period:
(i) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section that were on and before the date on which the
patent issued;
(ii) The number of days in the periods of paragraphs (c)(1) and
(c)(2) of this section during which it is determined under 35 U.S.C.
156(d)(2)(B) by the Secretary of Agriculture that applicant did not act
with due diligence;
(iii) One-half the number of days remaining in the period defined by
paragraph (c)(1) of this section after that period is reduced in
accordance with paragraphs (d)(1) (i) and (ii) of this section; half
days will be ignored for purposes of subtraction;
(2) By adding the number of days determined in paragraph (d)(1) of
this section to the original term of the patent as shortened by any
terminal disclaimer;
(3) By adding 14 years to the date of the issuance of a license
under the Virus-Serum-Toxin Act;
(4) By comparing the dates for the ends of the periods obtained
pursuant to paragraphs (d)(2) and (d)(3) of this section with each other
and selecting the earlier date;
(5) If the original patent was issued after November 16, 1988, by--
(i) Adding 5 years to the original expiration date of the patent or
any earlier date set by terminal disclaimer; and
(ii) Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(5)(i) of this section with each other and selecting the earlier
date;
(6) If the original patent was issued before November 16, 1988, and
(i) If no request for the authority to prepare an experimental
biological product under the Virus-Serum-Toxin Act was submitted before
November 16, 1988, by--
(A) Adding 5 years to the original expiration date of the patent or
earlier date set by terminal disclaimer; and
[[Page 184]]
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(i)(A) of this section with each other and selecting the earlier
date; or
(ii) If a request for the authority to prepare an experimental
biological product under the Virus-Serum-Toxin Act was submitted before
November 16, 1988, and the commercial marketing or use of the product
was not approved before November 16, 1988, by--
(A) Adding 3 years to the original expiration date of the patent or
earlier date set by terminal disclaimer; and
(B) Comparing the dates obtained pursuant to paragraphs (d)(4) and
(d)(6)(ii)(A) of this section with each other and selecting the earlier
date.
[52 FR 9394, Mar. 24, 1987, as amended at 54 FR 30382, July 20, 1989]
Sec.1.780 Certificate or order of extension of patent term.
If a determination is made pursuant to Sec.1.750 that a patent is
eligible for extension and that the term of the patent is to be
extended, a certificate of extension, under seal, or an order granting
interim extension under 35 U.S.C. 156(d)(5), will be issued to the
applicant for the extension of the patent term. Such certificate or
order will be recorded in the official file of the patent and will be
considered as part of the original patent. Notification of the issuance
of the certificate or order of extension will be published in the
Official Gazette of the United States Patent and Trademark Office.
Notification of the issuance of the order granting an interim extension
under 35 U.S.C. 156(d)(5), including the identity of the product
currently under regulatory review, will be published in the Official
Gazette of the United States Patent and Trademark Office and in the
Federal Register. No certificate of, or order granting, an extension
will be issued if the term of the patent cannot be extended, even though
the patent is otherwise determined to be eligible for extension. In such
situations, the final determination made pursuant to Sec.1.750 will
indicate that no certificate or order will issue.
[65 FR 54680, Sept. 8, 2000]
Sec.1.785 Multiple applications for extension of term of the same
patent or of different patents for the same regulatory review period
for a product.
(a) Only one patent may be extended for a regulatory review period
for any product (Sec.1.720(h)). If more than one application for
extension of the same patent is filed, the certificate of extension of
patent term, if appropriate, will be issued based upon the first filed
application for extension.
(b) If more than one application for extension is filed by a single
applicant which seeks the extension of the term of two or more patents
based upon the same regulatory review period, and the patents are
otherwise eligible for extension pursuant to the requirements of this
subpart, in the absence of an election by the applicant, the certificate
of extension of patent term, if appropriate, will be issued upon the
application for extension of the patent term having the earliest date of
issuance of those patents for which extension is sought.
(c) If an application for extension is filed which seeks the
extension of the term of a patent based upon the same regulatory review
period as that relied upon in one or more applications for extension
pursuant to the requirements of this subpart, the certificate of
extension of patent term will be issued on the application only if the
patent owner or its agent is the holder of the regulatory approval
granted with respect to the regulatory review period.
(d) An application for extension shall be considered complete and
formal regardless of whether it contains the identification of the
holder of the regulatory approval granted with respect to the regulatory
review period. When an application contains such information, or is
amended to contain such information, it will be considered in
determining whether an application is eligible for an extension under
this section. A request may be made of any applicant to supply such
information within a non-extendable period of not less than one month
whenever multiple applications for extension of more than one patent are
received and rely upon the same regulatory review period. Failure to
provide such information
[[Page 185]]
within the period for reply set shall be regarded as conclusively
establishing that the applicant is not the holder of the regulatory
approval.
(e) Determinations made under this section shall be included in the
notice of final determination of eligibility for extension of the patent
term pursuant to Sec.1.750 and shall be regarded as part of that
determination.
[60 FR 25618, May 12, 1995, as amended at 62 FR 53201, Oct. 10, 1997]
Sec.1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5).
(a) An owner of record of a patent or its agent who reasonably
expects that the applicable regulatory review period described in
paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii)
of subsection (g) that began for a product that is the subject of such
patent may extend beyond the expiration of the patent term in effect may
submit one or more applications for interim extensions for periods of up
to one year each. The initial application for interim extension must be
filed during the period beginning 6 months and ending 15 days before the
patent term is due to expire. Each subsequent application for interim
extension must be filed during the period beginning 60 days before and
ending 30 days before the expiration of the preceding interim extension.
In no event will the interim extensions granted under this section be
longer than the maximum period of extension to which the applicant would
be entitled under 35 U.S.C. 156(c).
(b) A complete application for interim extension under this section
shall include all of the information required for a formal application
under Sec.1.740 and a complete application under Sec.1.741. Sections
(a)(1), (a)(2), (a)(4), and (a)(6)-(a)(17) of Sec.1.740 and Sec.
1.741 shall be read in the context of a product currently undergoing
regulatory review. Sections (a)(3) and (a)(5) of Sec.1.740 are not
applicable to an application for interim extension under this section.
(c) The content of each subsequent interim extension application may
be limited to a request for a subsequent interim extension along with a
statement that the regulatory review period has not been completed along
with any materials or information required under Sec. Sec.1.740 and
1.741 that are not present in the preceding interim extension
application.
[60 FR 25619, May 12, 1995]
Sec.1.791 Termination of interim extension granted prior to
regulatory approval of a product for commercial marketing or use.
Any interim extension granted under 35 U.S.C. 156(d)(5) terminates
at the end of the 60-day period beginning on the date on which the
product involved receives permission for commercial marketing or use. If
within that 60-day period the patent owner or its agent files an
application for extension under Sec. Sec.1.740 and 1.741 including any
additional information required under 35 U.S.C. 156(d)(1) not contained
in the application for interim extension, the patent shall be further
extended in accordance with the provisions of 35 U.S.C. 156.
[60 FR 25619, May 12, 1995]
Subpart G_Biotechnology Invention Disclosures
Deposit of Biological Material
Source: 54 FR 34880, Aug. 22, 1989, unless otherwise noted.
Sec.1.801 Biological material.
For the purposes of these regulations pertaining to the deposit of
biological material for purposes of patents for inventions under 35
U.S.C. 101, the term biological material shall include material that is
capable of self-replication either directly or indirectly.
Representative examples include bacteria, fungi including yeast, algae,
protozoa, eukaryotic cells, cell lines, hybridomas, plasmids, viruses,
plant tissue cells, lichens and seeds. Viruses, vectors, cell organelles
and other non-living material existing in and reproducible from a living
cell may be deposited by deposit of the host cell capable of reproducing
the non-living material.
[[Page 186]]
Sec.1.802 Need or opportunity to make a deposit.
(a) Where an invention is, or relies on, a biological material, the
disclosure may include reference to a deposit of such biological
material.
(b) Biological material need not be deposited unless access to such
material is necessary for the satisfaction of the statutory requirements
for patentability under 35 U.S.C. 112. If a deposit is necessary, it
shall be acceptable if made in accordance with these regulations.
Biological material need not be deposited, inter alia, if it is known
and readily avaliable to the public or can be made or isolated without
undue experimentation. Once deposited in a depository complying with
these regulations, a biological material will be considered to be
readily available even though some requirement of law or regulation of
the United States or of the country in which the depository institution
is located permits access to the material only under conditions imposed
for safety, public health or similar reasons.
(c) The reference to a biological material in a specification
disclosure or the actual deposit of such material by an applicant or
patent owner does not create any presumption that such material is
necessary to satisfy 35 U.S.C. 112 or that deposit in accordance with
these regulations is or was required.
Sec.1.803 Acceptable depository.
(a) A deposit shall be recognized for the purposes of these
regulations if made in
(1) Any International Depositary Authority (IDA) as established
under the Budapest Treaty on the International Recognition of the
Deposit of Microorganisms for the Purposes of Patent Procedure, or
(2) Any other depository recognized to be suitable by the Office.
Suitability will be determined by the Director on the basis of the
administrative and technical competence, and agreement of the depository
to comply with the terms and conditions applicable to deposits for
patent purposes. The Director may seek the advice of impartial
consultants on the suitability of a depository. The depository must:
(i) Have a continuous existence;
(ii) Exist independent of the control of the depositor;
(iii) Possess the staff and facilities sufficient to examine the
viability of a deposit and store the deposit in a manner which ensures
that it is kept viable and uncontaminated;
(iv) Provide for sufficient safety measures to minimize the risk of
losing biological material deposited with it;
(v) Be impartial and objective;
(vi) Furnish samples of the deposited material in an expeditious and
proper manner; and
(vii) Promptly notify depositors of its inability to furnish
samples, and the reasons why.
(b) A depository seeking status under paragraph (a)(2) of this
section must direct a communication to the Director which shall:
(1) Indicate the name and address of the depository to which the
communication relates;
(2) Contain detailed information as to the capacity of the
depository to comply with the requirements of paragraph (a)(2) of this
section, including information on its legal status, scientific standing,
staff and facilities;
(3) Indicate that the depository intends to be available, for the
purposes of deposit, to any depositor under these same conditions;
(4) Where the depository intends to accept for deposit only certain
kinds of biological material, specify such kinds;
(5) Indicate the amount of any fees that the depository will, upon
acquiring the status of suitable depository under paragraph (a)(2) of
this section, charge for storage, viability statements and furnishings
of samples of the deposit.
(c) A depository having status under paragraph (a)(2) of this
section limited to certain kinds of biological material may extend such
status to additional kinds of biological material by directing a
communication to the Director in accordance with paragraph (b) of this
section. If a previous communication under paragraph (b) of this section
is of record, items in common with the previous communication may be
incorporated by reference.
[[Page 187]]
(d) Once a depository is recognized to be suitable by the Director
or has defaulted or discontinued its performance under this section,
notice thereof will be published in the Office Gazette of the Patent and
Trademark Office.
Sec.1.804 Time of making an original deposit.
(a) Whenever a biological material is specifically identified in an
application for patent as filed, an original deposit thereof may be made
at any time before filing the application for patent or, subject to
Sec.1.809, during pendency of the application for patent.
(b) When the original deposit is made after the effective filing
date of an application for patent, the applicant must promptly submit a
statement from a person in a position to corroborate the fact, stating
that the biological material which is deposited is a biological material
specifically identified in the application as filed.
[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]
Sec.1.805 Replacement or supplement of deposit.
(a) A depositor, after receiving notice during the pendency of an
application for patent, application for reissue patent or reexamination
proceeding, that the depository possessing a deposit either cannot
furnish samples thereof or can furnish samples thereof but the deposit
has become contaminated or has lost its capability to function as
described in the specification, shall notify the Office in writing, in
each application for patent or patent affected. In such a case, or where
the Office otherwise learns, during the pendency of an application for
patent, application for reissue patent or reexamination proceeding, that
the depository possessing a deposit either cannot furnish samples
thereof or can furnish samples thereof but the deposit has become
contaminated or has lost its capability to function as described in the
specification, the need for making a replacement or supplemental deposit
will be governed by the same considerations governing the need for
making an original deposit under the provisions set forth in Sec.
1.802(b). A replacement or supplemental deposit made during the pendency
of an application for patent shall not be accepted unless it meets the
requirements for making an original deposit under these regulations,
including the requirement set forth under Sec.1.804(b). A replacement
or supplemental deposit made in connection with a patent, whether or not
made during the pendency of an application for reissue patent or a
reexamination proceeding or both, shall not be accepted unless a
certificate of correction under Sec.1.323 is requested by the patent
owner which meets the terms of paragraphs (b) and (c) of this section.
(b) A request for certificate of correction under this section shall
not be granted unless the certificate identifies:
(1) The accession number for the replacement or supplemental
deposit;
(2) The date of the deposit; and
(3) The name and address of the depository.
(c) A request for a certificate of correction under this section
shall not be granted unless the request is made promptly after the
replacement or supplemental deposit has been made and the request:
(1) Includes a statement of the reason for making the replacement or
supplemental deposit;
(2) Includes a statement from a person in a position to corroborate
the fact, and stating that the replacement or supplemental deposit is of
a biological material which is identical to that originally deposited;
(3) Includes a showing that the patent owner acted diligently--
(i) In the case of a replacement deposit, in making the deposit
after receiving notice that samples could no longer be furnished from an
earlier deposit; or
(ii) In the case of a supplemental deposit, in making the deposit
after receiving notice that the earlier deposit had become contaminated
or had lost its capability to function as described in the
specification;
(4) Includes a statement that the term of the replacement or
supplemental deposit expires no earlier than the term of the deposit
being replaced or supplemented; and
(5) Otherwise establishes compliance with these regulations.
[[Page 188]]
(d) A depositor's failure to replace a deposit, or in the case of a
patent, to diligently replace a deposit and promptly thereafter request
a certificate of correction which meets the terms of paragraphs (b) and
(c) of this section, after being notified that the depository possessing
the deposit cannot furnish samples thereof, shall cause the application
or patent involved to be treated in any Office proceeding as if no
deposit were made.
(e) In the event a deposit is replaced according to these
regulations, the Office will apply a rebuttable presumption of identity
between the original and the replacement deposit where a patent making
reference to the deposit is relied upon during any Office proceeeding.
(f) A replacement or supplement deposit made during the pendency of
an application for patent may be made for any reason.
(g) In no case is a replacement or supplemental deposit of a
biological material necessary where the biological material, in
accordance with Sec.1.802(b), need not be deposited.
(h) No replacement deposit of a biological material is necessary
where a depository can furnish samples thereof but the depository for
national security, health or environmental safety reasons is unable to
provide samples to requesters outside of the jurisdiction where the
depository is located.
(i) The Office will not recognize in any Office proceeding a
replacement deposit of a biological material made by a patent owner
where the depository could furnish samples of the deposit being
replaced.
[54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997]
Sec.1.806 Term of deposit.
A deposit made before or during pendency of an application for
patent shall be made for a term of at least thirty (30) years and at
least five (5) years after the most recent request for the furnishing of
a sample of the deposit was received by the depository. In any case,
samples must be stored under agreements that would make them available
beyond the enforceable life of the patent for which the deposit was
made.
Sec.1.807 Viability of deposit.
(a) A deposit of biological material that is capable of self-
replication either directly or indirectly must be viable at the time of
deposit and during the term of deposit. Viability may be tested by the
depository. The test must conclude only that the deposited material is
capable of reproduction. No evidence is necessarily required regarding
the ability of the deposited material to perform any function described
in the patent application.
(b) A viability statement for each deposit of a biological material
defined in paragraph (a) of this section not made under the Budapest
Treaty on the International Recognition of the Deposit of Microorganisms
for the Purposes of Patent Procedure must be filed in the application
and must contain:
(1) The name and address of the depository;
(2) The name and address of the depositor;
(3) The date of deposit;
(4) The identity of the deposit and the accession number given by
the depository;
(5) The date of the viability test;
(6) The procedures used to obtain a sample if the test is not done
by the depository; and
(7) A statement that the deposit is capable of reproduction.
(c) If a viability test indicates that the deposit is not viable
upon receipt, or the examiner cannot, for scientific or other valid
reasons, accept the statement of viability received from the applicant,
the examiner shall proceed as if no deposit has been made. The examiner
will accept the conclusion set forth in a viability statement issued by
a depository recognized under Sec.1.803(a).
Sec.1.808 Furnishing of samples.
(a) A deposit must be made under conditions that assure that:
(1) Access to the deposit will be available during pendency of the
patent application making reference to the deposit to one determined by
the Director to be entitled thereto under Sec.1.14 and 35 U.S.C. 122,
and
(2) Subject to paragraph (b) of this section, all restrictions
imposed by the depositor on the availability to the
[[Page 189]]
public of the deposited material will be irrevocably removed upon the
granting of the patent.
(b) The depositor may contract with the depository to require that
samples of a deposited biological material shall be furnished only if a
request for a sample, during the term of the patent:
(1) Is in writing or other tangible form and dated;
(2) Contains the name and address of the requesting party and the
accession number of the deposit; and
(3) Is communicated in writing by the depository to the depositor
along with the date on which the sample was furnished and the name and
address of the party to whom the sample was furnished.
(c) Upon request made to the Office, the Office will certify whether
a deposit has been stated to have been made under conditions which make
it available to the public as of the issue date of the patent grant
provided the request contains:
(1) The name and address of the depository;
(2) The accession number given to the deposit;
(3) The patent number and issue date of the patent referring to the
deposit; and
(4) The name and address of the requesting party.
Sec.1.809 Examination procedures.
(a) The examiner shall determine pursuant to Sec.1.104 in each
application for patent, application for reissue patent or reexamination
proceeding if a deposit is needed, and if needed, if a deposit actually
made is acceptable for patent purposes. If a deposit is needed and has
not been made or replaced or supplemented in accordance with these
regulations, the examiner, where appropriate, shall reject the affected
claims under the appropriate provision of 35 U.S.C. 112, explaining why
a deposit is needed and/or why a deposit actually made cannot be
accepted.
(b) The applicant for patent or patent owner shall reply to a
rejection under paragraph (a) of this section by--
(1) In the case of an applicant for patent, either making an
acceptable original, replacement, or supplemental deposit, or assuring
the Office in writing that an acceptable deposit will be made; or, in
the case of a patent owner, requesting a certificate of correction of
the patent which meets the terms of paragraphs (b) and (c) of Sec.
1.805, or
(2) Arguing why a deposit is not needed under the circumstances of
the application or patent considered and/or why a deposit actually made
should be accepted. Other replies to the examiner's action shall be
considered nonresponsive. The rejection will be repeated until either
paragraph (b)(1) of this section is satisfied or the examiner is
convinced that a deposit is not needed.
(c) If an application for patent is otherwise in condition for
allowance except for a needed deposit and the Office has received a
written assurance that an acceptable deposit will be made, the Office
may notify the applicant in a notice of allowability and set a three-
month period of time from the mailing date of the notice of allowability
within which the deposit must be made in order to avoid abandonment.
This time period is not extendable under Sec.1.136 (see Sec.
1.136(c)).
(d) For each deposit made pursuant to these regulations, the
specification shall contain:
(1) The accession number for the deposit;
(2) The date of the deposit;
(3) A description of the deposited biological material sufficient to
specifically identify it and to permit examination; and
(4) The name and address of the depository.
(e) Any amendment required by paragraphs (d)(1), (d)(2) or (d)(4) of
this section must be filed before or with the payment of the issue fee
(see Sec.1.312).
[54 FR 34880, Aug. 22, 1989, as amended at 66 FR 21092, Apr. 27, 2001;
78 FR 62408, Oct. 21, 2013]
Application Disclosures Containing Nucleotide and/or Amino Acid
Sequences
Source: Sections 1.821 through 1.825 appear at 55 FR 18245, May 1,
1990, unless otherwise noted.
[[Page 190]]
Sec.1.821 Nucleotide and/or amino acid sequence disclosures in patent
applications.
(a) Nucleotide and/or amino acid sequences as used in Sec. Sec.
1.821 through 1.825 are interpreted to mean an unbranched sequence of
four or more amino acids or an unbranched sequence of ten or more
nucleotides. Branched sequences are specifically excluded from this
definition. Sequences with fewer than four specifically defined
nucleotides or amino acids are specifically excluded from this section.
``Specifically defined'' means those amino acids other than ``Xaa'' and
those nucleotide bases other than ``n''defined in accordance with the
World Intellectual Property Organization (WIPO) Handbook on Industrial
Property Information and Documentation, Standard ST.25: Standard for the
Presentation of Nucleotide and Amino Acid Sequence Listings in Patent
Applications (1998), including Tables 1 through 6 in Appendix 2, herein
incorporated by reference. (Hereinafter ``WIPO Standard ST.25 (1998)'').
This incorporation by reference was approved by the Director of the
Federal Register in accordance with 5 U.S.C. 552(a) and 1 CFR part 51.
Copies of WIPO Standard ST.25 (1998) may be obtained from the World
Intellectual Property Organization; 34 chemin des Colombettes; 1211
Geneva 20 Switzerland. Copies may also be inspected at the National
Archives and Records Administration (NARA). For information on the
availability of this material at NARA, call 202-741-6030, or go to:
http://www.archives.gov /federal __register /code_ _of_ _ federal__
regulations /ibr_ _locations.html. Nucleotides and amino acids are
further defined as follows:
(1) Nucleotides: Nucleotides are intended to embrace only those
nucleotides that can be represented using the symbols set forth in WIPO
Standard ST.25 (1998), Appendix 2, Table 1. Modifications, e.g.,
methylated bases, may be described as set forth in WIPO Standard ST.25
(1998), Appendix 2, Table 2, but shall not be shown explicitly in the
nucleotide sequence.
(2) Amino acids: Amino acids are those L-amino acids commonly found
in naturally occurring proteins and are listed in WIPO Standard ST.25
(1998), Appendix 2, Table 3. Those amino acid sequences containing D-
amino acids are not intended to be embraced by this definition. Any
amino acid sequence that contains post-translationally modified amino
acids may be described as the amino acid sequence that is initially
translated using the symbols shown in WIPO Standard ST.25 (1998),
Appendix 2, Table 3 with the modified positions; e.g., hydroxylations or
glycosylations, being described as set forth in WIPO Standard ST.25
(1998), Appendix 2, Table 4, but these modifications shall not be shown
explicitly in the amino acid sequence. Any peptide or protein that can
be expressed as a sequence using the symbols in WIPO Standard ST.25
(1998), Appendix 2, Table 3 in conjunction with a description in the
Feature section to describe, for example, modified linkages, cross links
and end caps, non-peptidyl bonds, etc., is embraced by this definition.
(b) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences, in accordance with the definition in paragraph
(a) of this section, shall, with regard to the manner in which the
nucleotide and/or amino acid sequences are presented and described,
conform exclusively to the requirements of Sec. Sec.1.821 through
1.825.
(c) Patent applications which contain disclosures of nucleotide and/
or amino acid sequences must contain, as a separate part of the
disclosure, a paper or compact disc copy (see Sec.1.52(e)) disclosing
the nucleotide and/or amino acid sequences and associated information
using the symbols and format in accordance with the requirements of
Sec. Sec.1.822 and 1.823. This paper or compact disc copy is referred
to elsewhere in this subpart as the ``Sequence Listing.'' Each sequence
disclosed must appear separately in the ``Sequence Listing.'' Each
sequence set forth in the ``Sequence Listing'' must be assigned a
separate sequence identifier. The sequence identifiers must begin with 1
and increase sequentially by integers. If no sequence is present for a
sequence identifier, the code ``000'' must be used in place of the
sequence. The response for the numeric identifier <160must
include the total number of SEQ ID NOs, whether followed by a sequence
or by the code ``000.''
[[Page 191]]
(d) Where the description or claims of a patent application discuss
a sequence that is set forth in the ``Sequence Listing'' in accordance
with paragraph (c) of this section, reference must be made to the
sequence by use of the sequence identifier, preceded by ``SEQ ID NO:''
in the text of the description or claims, even if the sequence is also
embedded in the text of the description or claims of the patent
application.
(e) A copy of the ``Sequence Listing'' referred to in paragraph (c)
of this section must also be submitted in computer readable form (CRF)
in accordance with the requirements of Sec.1.824. The computer
readable form must be a copy of the ``Sequence Listing'' and may not be
retained as a part of the patent application file. If the computer
readable form of a new application is to be identical with the computer
readable form of another application of the applicant on file in the
Office, reference may be made to the other application and computer
readable form in lieu of filing a duplicate computer readable form in
the new application if the computer readable form in the other
application was compliant with all of the requirements of this subpart.
The new application must be accompanied by a letter making such
reference to the other application and computer readable form, both of
which shall be completely identified. In the new application, applicant
must also request the use of the compliant computer readable ``Sequence
Listing'' that is already on file for the other application and must
state that the paper or compact disc copy of the ``Sequence Listing'' in
the new application is identical to the computer readable copy filed for
the other application.
(f) In addition to the paper or compact disc copy required by
paragraph (c) of this section and the computer readable form required by
paragraph (e) of this section, a statement that the ``Sequence Listing''
content of the paper or compact disc copy and the computer readable copy
are the same must be submitted with the computer readable form, e.g., a
statement that ``the sequence listing information recorded in computer
readable form is identical to the written (on paper or compact disc)
sequence listing.''
(g) If any of the requirements of paragraphs (b) through (f) of this
section are not satisfied at the time of filing under 35 U.S.C. 111(a)
or at the time of entering the national stage under 35 U.S.C. 371,
applicant will be notified and given a period of time within which to
comply with such requirements in order to prevent abandonment of the
application. Any submission in reply to a requirement under this
paragraph must be accompanied by a statement that the submission
includes no new matter.
(h) If any of the requirements of paragraphs (b) through (f) of this
section are not satisfied at the time of filing an international
application under the Patent Cooperation Treaty (PCT), which application
is to be searched by the United States International Searching Authority
or examined by the United States International Preliminary Examining
Authority, applicant will be sent a notice necessitating compliance with
the requirements within a prescribed time period. Any submission in
reply to a requirement under this paragraph must be accompanied by a
statement that the submission does not include matter which goes beyond
the disclosure in the international application as filed. If applicant
fails to timely provide the required computer readable form, the United
States International Searching Authority shall search only to the extent
that a meaningful search can be performed without the computer readable
form and the United States International Preliminary Examining Authority
shall examine only to the extent that a meaningful examination can be
performed without the computer readable form.
[63 FR 29634, June 1, 1998, as amended at 65 FR 54680, Sept. 8, 2000; 69
FR 18803, Apr. 9, 2004; 70 FR 10489, Mar. 4, 2005]
Sec.1.822 Symbols and format to be used for nucleotide and/or amino
acid sequence data.
(a) The symbols and format to be used for nucleotide and/or amino
acid sequence data shall conform to the requirements of paragraphs (b)
through (e) of this section.
(b) The code for representing the nucleotide and/or amino acid
sequence
[[Page 192]]
characters shall conform to the code set forth in the tables in WIPO
Standard ST.25 (1998), Appendix 2, Tables 1 and 3. This incorporation by
reference was approved by the Director of the Federal Register in
accordance with 5 U.S.C. 552(a) and 1 CFR part 51. Copies of ST.25 may
be obtained from the World Intellectual Property Organization; 34 chemin
des Colombettes; 1211 Geneva 20 Switzerland. Copies may also be
inspected at the National Archives and Records Administration (NARA).
For information on the availability of this material at NARA, call 202-
741-6030, or go to: http://www.archives.gov /federal_ _register /code_
_of_ _federal__ regulations/ibr__locations.html. No code other than that
specified in these sections shall be used in nucleotide and amino acid
sequences. A modified base or modified or unusual amino acid may be
presented in a given sequence as the corresponding unmodified base or
amino acid if the modified base or modified or unusual amino acid is one
of those listed in WIPO Standard ST.25 (1998), Appendix 2, Tables 2 and
4, and the modification is also set forth in the Feature section.
Otherwise, each occurrence of a base or amino acid not appearing in WIPO
Standard ST.25 (1998), Appendix 2, Tables 1 and 3, shall be listed in a
given sequence as ``n'' or ``Xaa,'' respectively, with further
information, as appropriate, given in the Feature section, preferably by
including one or more feature keys listed in WIPO Standard ST.25 (1998),
Appendix 2, Tables 5 and 6.
(c) Format representation of nucleotides. (1) A nucleotide sequence
shall be listed using the lower-case letter for representing the one-
letter code for the nucleotide bases set forth in WIPO Standard ST.25
(1998), Appendix 2, Table 1.
(2) The bases in a nucleotide sequence (including introns) shall be
listed in groups of 10 bases except in the coding parts of the sequence.
Leftover bases, fewer than 10 in number, at the end of noncoding parts
of a sequence shall be grouped together and separated from adjacent
groups of 10 or 3 bases by a space.
(3) The bases in the coding parts of a nucleotide sequence shall be
listed as triplets (codons). The amino acids corresponding to the codons
in the coding parts of a nucleotide sequence shall be typed immediately
below the corresponding codons. Where a codon spans an intron, the amino
acid symbol shall be typed below the portion of the codon containing two
nucleotides.
(4) A nucleotide sequence shall be listed with a maximum of 16
codons or 60 bases per line, with a space provided between each codon or
group of 10 bases.
(5) A nucleotide sequence shall be presented, only by a single
strand, in the 5 to 3 direction, from left to right.
(6) The enumeration of nucleotide bases shall start at the first
base of the sequence with number 1. The enumeration shall be continuous
through the whole sequence in the direction 5 to 3. The enumeration
shall be marked in the right margin, next to the line containing the
one-letter codes for the bases, and giving the number of the last base
of that line.
(7) For those nucleotide sequences that are circular in
configuration, the enumeration method set forth in paragraph (c)(6) of
this section remains applicable with the exception that the designation
of the first base of the nucleotide sequence may be made at the option
of the applicant.
(d) Representation of amino acids. (1) The amino acids in a protein
or peptide sequence shall be listed using the three-letter abbreviation
with the first letter as an upper case character, as in WIPO Standard
ST.25 (1998), Appendix 2, Table 3.
(2) A protein or peptide sequence shall be listed with a maximum of
16 amino acids per line, with a space provided between each amino acid.
(3) An amino acid sequence shall be presented in the amino to
carboxy direction, from left to right, and the amino and carboxy groups
shall not be presented in the sequence.
(4) The enumeration of amino acids may start at the first amino acid
of the first mature protein, with the number 1. When presented, the
amino acids preceding the mature protein, e.g., pre-sequences, pro-
sequences, pre-pro-sequences and signal sequences, shall have negative
numbers, counting backwards starting with the amino acid
[[Page 193]]
next to number 1. Otherwise, the enumeration of amino acids shall start
at the first amino acid at the amino terminal as number 1. It shall be
marked below the sequence every 5 amino acids. The enumeration method
for amino acid sequences that is set forth in this section remains
applicable for amino acid sequences that are circular in configuration,
with the exception that the designation of the first amino acid of the
sequence may be made at the option of the applicant.
(5) An amino acid sequence that contains internal terminator symbols
(e.g., ``Ter'', ``*'', or ``.'', etc.) may not be represented as a
single amino acid sequence, but shall be presented as separate amino
acid sequences.
(e) A sequence with a gap or gaps shall be presented as a plurality
of separate sequences, with separate sequence identifiers, with the
number of separate sequences being equal in number to the number of
continuous strings of sequence data. A sequence that is made up of one
or more noncontiguous segments of a larger sequence or segments from
different sequences shall be presented as a separate sequence.
[63 FR 29635, June 1, 1998, as amended at 69 FR 18803, Apr. 9, 2004; 70
FR 10489, Mar. 4, 2005]
Sec.1.823 Requirements for nucleotide and/or amino acid sequences as
part of the application.
(a)(1) If the ``Sequence Listing'' required by Sec.1.821(c) is
submitted on paper: The ``Sequence Listing,'' setting forth the
nucleotide and/or amino acid sequence and associated information in
accordance with paragraph (b) of this section, must begin on a new page
and must be titled ``Sequence Listing.'' The pages of the ``Sequence
Listing'' preferably should be numbered independently of the numbering
of the remainder of the application. Each page of the ``Sequence
Listing'' shall contain no more than 66 lines and each line shall
contain no more than 72 characters. The sheet or sheets presenting a
sequence listing may not include material other than part of the
sequence listing. A fixed-width font should be used exclusively
throughout the ``Sequence Listing.''
(2) If the ``Sequence Listing'' required by Sec.1.821(c) is
submitted on compact disc: The ``Sequence Listing'' must be submitted on
a compact disc in compliance with Sec.1.52(e). The compact disc may
also contain table information if the application contains table
information that may be submitted on a compact disc (Sec.
1.52(e)(1)(iii)). The specification must contain an incorporation-by-
reference of the Sequence Listing as required by Sec.1.52(e)(5). The
presentation of the ``Sequence Listing'' and other materials on compact
disc under Sec.1.821(c) does not substitute for the Computer Readable
Form that must be submitted on disk, compact disc, or tape in accordance
with Sec.1.824.
(b) The ``Sequence Listing'' shall, except as otherwise indicated,
include the actual nucleotide and/or amino acid sequence, the numeric
identifiers and their accompanying information as shown in the following
table. The numeric identifier shall be used only in the ``Sequence
Listing.'' The order and presentation of the items of information in the
``Sequence Listing'' shall conform to the arrangement given below. Each
item of information shall begin on a new line and shall begin with the
numeric identifier enclosed in angle brackets as shown. The submission
of those items of information designated with an ``M'' is mandatory. The
submission of those items of information designated with an ``O'' is
optional. Numeric identifiers <110through
<170shall only be set forth at the beginning of the
``Sequence Listing.'' The following table illustrates the numeric
identifiers.
----------------------------------------------------------------------------------------------------------------
Mandatory (M) or optional
Numeric identifier Definition Comments and format (O).
----------------------------------------------------------------------------------------------------------------
<110.......... Applicant............... Preferably max. of 10 names; M.
one name per line;
preferable format: Surname,
Other Names and/or Initials.
<120.......... Title of Invention...... ............................. M.
<130.......... File Reference.......... Personal file reference...... M when filed prior to
assignment of appl. number.
[[Page 194]]
<140.......... Current Application Specify as: US 07/999,999 or M, if available.
Number. PCT/US96/99999.
<141.......... Current Filing Date..... Specify as: yyyy-mm-dd....... M, if available.
<150.......... Prior Application Number Specify as: US 07/999,999 or M, if applicable include
PCT/US96/99999. priority documents under 35
USC 119 and 120.
<151.......... Prior Application Filing Specify as: yyyy-mm-dd....... M, if applicable.
Date.
<160.......... Number of SEQ ID NOs.... Count includes total number M.
of SEQ ID NOs.
<170.......... Software................ Name of software used to O.
create the Sequence Listing.
<210.......... SEQ ID NO::............ Response shall be an integer M.
representing the SEQ ID NO
shown.
<211.......... Length.................. Respond with an integer M.
expressing the number of
bases or amino acid residues.
<212.......... Type.................... Whether presented sequence M.
molecule is DNA, RNA, or PRT
(protein). If a nucleotide
sequence contains both DNA
and RNA fragments, the type
shall be ``DNA.'' In
addition, the combined DNA/
RNA molecule shall be
further described in the
<220to <223feature section.
<213.......... Organism................ Scientific name, i.e., Genus/ M
species, Unknown or
Artificial Sequence. In
addition, the ``Unknown'' or
``Artificial Sequence''
organisms shall be further
described in the <220to <223feature
section.
<220.......... Feature................. Leave blank after <220. <221-223provide for a description ``Xaa,'' or a modified or
of points of biological unusual L-amino acid or
significance in the modified base was used in a
sequence.. sequence; if ORGANISM is
``Artificial Sequence'' or
``Unknown''; if molecule is
combined DNA/RNA''
<221.......... Name/Key................ Provide appropriate M, under the following
identifier for feature, conditions: if ``n,''
preferably from WIPO ``Xaa,'' or a modified or
Standard ST.25 (1998), unusual L-amino acid or
Appendix 2, Tables 5 and 6. modified base was used in a
sequence.
<222.......... Location................ Specify location within M, under the following
sequence; where appropriate conditions: if ``n,''
state number of first and ``Xaa,'' or a modified or
last bases/amino acids in unusual L-amino acid or
feature. modified base was used in a
sequence.
<223.......... Other Information....... Other relevant information; M, under the following
four lines maximum. conditions: if ``n,''
``Xaa,'' or a modified or
unusual L-amino acid or
modified base was used in a
sequence; if ORGANISM is
``Artificial Sequence'' or
``Unknown''; if molecule is
combined DNA/RNA.
<300.......... Publication Information. Leave blank after <300.
<301.......... Authors................. Preferably max of ten named O.
authors of publication;
specify one name per line;
preferable format: Surname,
Other Names and/or Initials.
<302.......... Title................... ............................. O.
<303.......... Journal................. ............................. O.
<304.......... Volume.................. ............................. O.
<305.......... Issue................... ............................. O.
<306.......... Pages................... ............................. O.
<307.......... Date.................... Journal date on which data O.
published; specify as yyyy-
mm-dd, MMM-yyyy or Season-
yyyy.
<308.......... Database Accession Accession number assigned by O.
Number. database including database
name.
<309.......... Database Entry Date..... Date of entry in database; O.
specify as yyyy-mm-dd or MMM-
yyyy.
<310.......... Patent Document Number.. Document number; for patent- O.
type citations only. Specify
as, for example, US 07/
999,999.
<311.......... Patent Filing Date...... Document filing date, for O.
patent-type citations only;
specify as yyyy-mm-dd.
[[Page 195]]
<312.......... Publication Date........ Document publication date, O.
for patent-type citations
only; specify as yyyy-mm-dd.
<313.......... Relevant Residues....... FROM (position) TO (position) O.
<400.......... Sequence................ SEQ ID NO should follow the M.
numeric identifier and
should appear on the line
preceding the actual
sequence.
----------------------------------------------------------------------------------------------------------------
[63 FR 29636, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000; 68
FR 38630, June 30, 2003]
Sec.1.824 Form and format for nucleotide and/or amino acid sequence
submissions in computer readable form.
(a) The computer readable form required by Sec.1.821(e) shall meet
the following requirements:
(1) The computer readable form shall contain a single ``Sequence
Listing'' as either a diskette, series of diskettes, or other
permissible media outlined in paragraph (c) of this section.
(2) The ``Sequence Listing'' in paragraph (a)(l) of this section
shall be submitted in American Standard Code for Information Interchange
(ASCII) text. No other formats shall be allowed.
(3) The computer readable form may be created by any means, such as
word processors, nucleotide/amino acid sequence editors' or other custom
computer programs; however, it shall conform to all requirements
detailed in this section.
(4) File compression is acceptable when using diskette media, so
long as the compressed file is in a self-extracting format that will
decompress on one of the systems described in paragraph (b) of this
section.
(5) Page numbering must not appear within the computer readable form
version of the ``Sequence Listing'' file.
(6) All computer readable forms must have a label permanently
affixed thereto on which has been hand-printed or typed: the name of the
applicant, the title of the invention, the date on which the data were
recorded on the computer readable form, the operating system used, a
reference number, and an application number and filing date, if known.
If multiple diskettes are submitted, the diskette labels must indicate
their order (e.g., ``1 of X'').
(b) Computer readable form submissions must meet these format
requirements:
(1) Computer Compatibility: IBM PC/XT/AT or Apple Macintosh;
(2) Operating System Compatibility: MS-DOS, MS-Windows, Unix or
Macintosh;
(3) Line Terminator: ASCII Carriage Return plus ASCII Line Feed; and
(4) Pagination: Continuous file (no ``hard page break'' codes
permitted).
(c) Computer readable form files submitted may be in any of the
following media:
(1) Diskette: 3.50 inch, 1.44 Mb storage; 3.50 inch, 720 Kb storage;
5.25 inch, 1.2 Mb storage; 5.25 inch, 360 Kb storage.
(2) Magnetic tape: 0.5 inch, up to 24000 feet; Density: 1600 or 6250
bits per inch, 9 track; Format: Unix tar command; specify blocking
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus
ASCII Line Feed.
(3) 8mm Data Cartridge: Format: Unix tar command; specify blocking
factor (not ``block size''); Line Terminator: ASCII Carriage Return plus
ASCII Line Feed.
(4) Compact disc: Format: ISO 9660 or High Sierra Format.
(5) Magneto Optical Disk: Size/Storage Specifications: 5.25 inch,
640 Mb.
(d) Computer readable forms that are submitted to the Office will
not be returned to the applicant.
[65 FR 54681, Sept. 8, 2000]
Sec.1.825 Amendments to or replacement of sequence listing and
computer readable copy thereof.
(a) Any amendment to a paper copy of the ``Sequence Listing'' (Sec.
1.821(c)) must be made by the submission of substitute sheets and
include a statement that the substitute sheets include no new matter.
Any amendment to a compact disc copy of the ``Sequence Listing'' (Sec.
1.821(c)) must be made by
[[Page 196]]
the submission of a replacement compact disc (2 copies) in compliance
with Sec.1.52(e). Amendments must also be accompanied by a statement
that indicates support for the amendment in the application, as filed,
and a statement that the replacement compact disc includes no new
matter.
(b) Any amendment to the paper or compact disc copy of the
``Sequence Listing,'' in accordance with paragraph (a) of this section,
must be accompanied by a substitute copy of the computer readable form
(Sec.1.821(e)) including all previously submitted data with the
amendment incorporated therein, accompanied by a statement that the copy
in computer readable form is the same as the substitute copy of the
``Sequence Listing.''
(c) Any appropriate amendments to the ``Sequence Listing'' in a
patent; e.g., by reason of reissue or certificate of correction, must
comply with the requirements of paragraphs (a) and (b) of this section.
(d) If, upon receipt, the computer readable form is found to be
damaged or unreadable, applicant must provide, within such time as set
by the Director, a substitute copy of the data in computer readable form
accompanied by a statement that the substitute data is identical to that
originally filed.
[63 FR 29638, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000]
[[Page 197]]
Sec. Appendix A to Subpart G of Part 1--Sample Sequence Listing
[GRAPHIC] [TIFF OMITTED] TR01JN98.006
[[Page 198]]
[GRAPHIC] [TIFF OMITTED] TR01JN98.007
[[Page 199]]
[GRAPHIC] [TIFF OMITTED] TR01JN98.008
[[Page 200]]
[GRAPHIC] [TIFF OMITTED] TR01JN98.009
[GRAPHIC] [TIFF OMITTED] TR01JN98.010
[63 FR 29639, June 1, 1998]
[[Page 201]]
Subpart H_Inter Partes Reexamination of Patents That Issued From an
Original Application Filed in the United States on or After November 29,
1999
Source: 65 FR 76777, Dec. 7, 2000, unless otherwise noted.
Prior Art Citations
Sec.1.902 Processing of prior art citations during an inter partes
reexamination proceeding.
Citations by the patent owner in accordance with Sec.1.933 and by
an inter partes reexamination third party requester under Sec.1.915 or
Sec.1.948 will be entered in the inter partes reexamination file. The
entry in the patent file of other citations submitted after the date of
an order for reexamination pursuant to Sec.1.931 by persons other than
the patent owner, or the third party requester under either Sec.1.913
or Sec.1.948, will be delayed until the inter partes reexamination
proceeding has been concluded by the issuance and publication of a
reexamination certificate. See Sec.1.502 for processing of prior art
citations in patent and reexamination files during an ex parte
reexamination proceeding filed under Sec.1.510.
[72 FR 18906, Apr. 16, 2007]
Requirements for Inter Partes Reexamination Proceedings
Sec.1.903 Service of papers on parties in inter partes reexamination.
The patent owner and the third party requester will be sent copies
of Office actions issued during the inter partes reexamination
proceeding. After filing of a request for inter partes reexamination by
a third party requester, any document filed by either the patent owner
or the third party requester must be served on every other party in the
reexamination proceeding in the manner provided in Sec.1.248. Any
document must reflect service or the document may be refused
consideration by the Office. The failure of the patent owner or the
third party requester to serve documents may result in their being
refused consideration.
Sec.1.904 Notice of inter partes reexamination in Official Gazette.
A notice of the filing of an inter partes reexamination request will
be published in the Official Gazette. The notice published in the
Official Gazette under Sec.1.11(c) will be considered to be
constructive notice of the inter partes reexamination proceeding and
inter partes reexamination will proceed.
Sec.1.905 Submission of papers by the public in inter partes
reexamination.
Unless specifically provided for, no submissions on behalf of any
third parties other than third party requesters as defined in 35 U.S.C.
100(e) will be considered unless such submissions are in accordance with
Sec.1.915 or entered in the patent file prior to the date of the order
for reexamination pursuant to Sec.1.931. Submissions by third parties,
other than third party requesters, filed after the date of the order for
reexamination pursuant to Sec.1.931, must meet the requirements of
Sec.1.501 and will be treated in accordance with Sec.1.902.
Submissions which do not meet the requirements of Sec.1.501 will be
returned.
Sec.1.906 Scope of reexamination in inter partes reexamination
proceeding.
(a) Claims in an inter partes reexamination proceeding will be
examined on the basis of patents or printed publications and, with
respect to subject matter added or deleted in the reexamination
proceeding, on the basis of the requirements of 35 U.S.C. 112.
(b) Claims in an inter partes reexamination proceeding will not be
permitted to enlarge the scope of the claims of the patent.
(c) Issues other than those indicated in paragraphs (a) and (b) of
this section will not be resolved in an inter partes reexamination
proceeding. If such issues are raised by the patent owner or the third
party requester during a reexamination proceeding, the existence of such
issues will be noted by the examiner in the next Office action, in which
case the patent owner may desire to consider the advisability of filing
a reissue application to have such issues considered and resolved.
[[Page 202]]
Sec.1.907 Inter partes reexamination prohibited.
(a) Once an order to reexamine has been issued under Sec.1.931,
neither the third party requester, nor its privies, may file a
subsequent request for inter partes reexamination of the patent until an
inter partes reexamination certificate is issued under Sec.1.997,
unless authorized by the Director.
(b) Once a final decision has been entered against a party in a
civil action arising in whole or in part under 28 U.S.C. 1338 that the
party has not sustained its burden of proving invalidity of any patent
claim-in-suit, then neither that party nor its privies may thereafter
request inter partes reexamination of any such patent claim on the basis
of issues which that party, or its privies, raised or could have raised
in such civil action, and an inter partes reexamination requested by
that party, or its privies, on the basis of such issues may not
thereafter be maintained by the Office.
(c) If a final decision in an inter partes reexamination proceeding
instituted by a third party requester is favorable to patentability of
any original, proposed amended, or new claims of the patent, then
neither that party nor its privies may thereafter request inter partes
reexamination of any such patent claims on the basis of issues which
that party, or its privies, raised or could have raised in such inter
partes reexamination proceeding.
Sec.1.913 Persons eligible to file, and time for filing, a request
for inter partes reexamination.
(a) Except as provided for in Sec.1.907 and in paragraph (b) of
this section, any person other than the patent owner or its privies may,
at any time during the period of enforceability of a patent which issued
from an original application filed in the United States on or after
November 29, 1999, file a request for inter partes reexamination by the
Office of any claim of the patent on the basis of prior art patents or
printed publications cited under Sec.1.501.
(b) Any request for an inter partes reexamination submitted on or
after September 16, 2012, will not be accorded a filing date, and any
such request will not be granted.
[76 FR 59057, Sept. 23, 2011]
Sec.1.915 Content of request for inter partes reexamination.
(a) The request must be accompanied by the fee for requesting inter
partes reexamination set forth in Sec.1.20(c)(2).
(b) A request for inter partes reexamination must include the
following parts:
(1) An identification of the patent by patent number and every claim
for which reexamination is requested.
(2) A citation of the patents and printed publications which are
presented to provide a showing that there is a reasonable likelihood
that the requester will prevail with respect to at least one of the
claims challenged in the request.
(3) A statement pointing out, based on the cited patents and printed
publications, each showing of a reasonable likelihood that the requester
will prevail with respect to at least one of the claims challenged in
the request, and a detailed explanation of the pertinency and manner of
applying the patents and printed publications to every claim for which
reexamination is requested.
(4) A copy of every patent or printed publication relied upon or
referred to in paragraphs (b)(1) through (3) of this section,
accompanied by an English language translation of all the necessary and
pertinent parts of any non-English language document.
(5) A copy of the entire patent including the front face, drawings,
and specification/claims (in double column format) for which
reexamination is requested, and a copy of any disclaimer, certificate of
correction, or reexamination certificate issued in the patent. All
copies must have each page plainly written on only one side of a sheet
of paper.
(6) A certification by the third party requester that a copy of the
request has been served in its entirety on the patent owner at the
address provided for in Sec.1.33(c). The name and address of the party
served must be indicated. If service was not possible, a duplicate copy
of the request must be supplied to the Office.
[[Page 203]]
(7) A certification by the third party requester that the estoppel
provisions of Sec.1.907 do not prohibit the inter partes
reexamination.
(8) A statement identifying the real party in interest to the extent
necessary for a subsequent person filing an inter partes reexamination
request to determine whether that person is a privy.
(c) If an inter partes request is filed by an attorney or agent
identifying another party on whose behalf the request is being filed,
the attorney or agent must have a power of attorney from that party or
be acting in a representative capacity pursuant to Sec.1.34.
(d) If the inter partes request does not include the fee for
requesting inter partes reexamination required by paragraph (a) of this
section and meet all the requirements of paragraph (b) of this section,
then the person identified as requesting inter partes reexamination will
be so notified and will generally be given an opportunity to complete
the request within a specified time. Failure to comply with the notice
will result in the inter partes reexamination request not being granted
a filing date, and will result in placement of the request in the patent
file as a citation if it complies with the requirements of Sec.1.501.
[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006; 71
FR 44223, Aug. 4, 2006; 72 FR 18906, Apr. 16, 2007; 76 FR 59058, Sept.
23, 2011]
Sec.1.919 Filing date of request for inter partes reexamination.
(a) The filing date of a request for inter partes reexamination is
the date on which the request satisfies all the requirements for the
request set forth in Sec.1.915.
(b) If the request is not granted a filing date, the request will be
placed in the patent file as a citation of prior art if it complies with
the requirements of Sec.1.501.
[65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006]
Sec.1.923 Examiner's determination on the request for inter partes
reexamination.
Within three months following the filing date of a request for inter
partes reexamination under Sec.1.915, the examiner will consider the
request and determine whether or not the request and the prior art
establish a reasonable likelihood that the requester will prevail with
respect to at least one of the claims challenged in the request. The
examiner's determination will be based on the claims in effect at the
time of the determination, will become a part of the official file of
the patent, and will be mailed to the patent owner at the address as
provided for in Sec.1.33(c) and to the third party requester. If the
examiner determines that the request has not established a reasonable
likelihood that the requester will prevail with respect to at least one
of the challenged claims, the examiner shall refuse the request and
shall not order inter partes reexamination.
[76 FR 59058, Sept. 23, 2011]
Sec.1.925 Partial refund if request for inter partes reexamination
is not ordered.
Where inter partes reexamination is not ordered, a refund of a
portion of the fee for requesting inter partes reexamination will be
made to the requester in accordance with Sec.1.26(c).
Sec.1.927 Petition to review refusal to order inter partes
reexamination.
The third party requester may seek review by a petition to the
Director under Sec.1.181 within one month of the mailing date of the
examiner's determination refusing to order inter partes reexamination.
Any such petition must comply with Sec.1.181(b). If no petition is
timely filed or if the decision on petition affirms that a reasonable
likelihood that the requester will prevail with respect to at least one
of the claims challenged in the request has not been established, the
determination shall be final and nonappealable.
[76 FR 59058, Sept. 23, 2011]
Inter Partes Reexamination of Patents
Sec.1.931 Order for inter partes reexamination.
(a) If it is found that there is a reasonable likelihood that the
requester will prevail with respect to at least one of the claims
challenged in the request, the determination will include an order
[[Page 204]]
for inter partes reexamination of the patent for resolution of the
question of whether the requester will prevail.
(b) If the order for inter partes reexamination resulted from a
petition pursuant to Sec.1.927, the inter partes reexamination will
ordinarily be conducted by an examiner other than the examiner
responsible for the initial determination under Sec.1.923.
[65 FR 76777, Dec. 7, 2000, as amended at 76 FR 59058, Sept. 23, 2011]
Information Disclosure in Inter Partes Reexamination
Sec.1.933 Patent owner duty of disclosure in inter partes reexamination proceedings.
(a) Each individual associated with the patent owner in an inter
partes reexamination proceeding has a duty of candor and good faith in
dealing with the Office, which includes a duty to disclose to the Office
all information known to that individual to be material to patentability
in a reexamination proceeding as set forth in Sec.1.555(a) and (b).
The duty to disclose all information known to be material to
patentability in an inter partes reexamination proceeding is deemed to
be satisfied by filing a paper in compliance with the requirements set
forth in Sec.1.555(a) and (b).
(b) The responsibility for compliance with this section rests upon
the individuals designated in paragraph (a) of this section, and no
evaluation will be made by the Office in the reexamination proceeding as
to compliance with this section. If questions of compliance with this
section are raised by the patent owner or the third party requester
during a reexamination proceeding, they will be noted as unresolved
questions in accordance with Sec.1.906(c).
Office Actions and Responses (Before the Examiner) in Inter Partes
Reexamination
Sec.1.935 Initial Office action usually accompanies order for inter
partes reexamination.
The order for inter partes reexamination will usually be accompanied
by the initial Office action on the merits of the reexamination.
Sec.1.937 Conduct of inter partes reexamination.
(a) All inter partes reexamination proceedings, including any
appeals to the Patent Trial and Appeal Board, will be conducted with
special dispatch within the Office, unless the Director makes a
determination that there is good cause for suspending the reexamination
proceeding.
(b) The inter partes reexamination proceeding will be conducted in
accordance with Sec. Sec.1.104 through 1.116, the sections governing
the application examination process, and will result in the issuance of
an inter partes reexamination certificate under Sec.1.997, except as
otherwise provided.
(c) All communications between the Office and the parties to the
inter partes reexamination which are directed to the merits of the
proceeding must be in writing and filed with the Office for entry into
the record of the proceeding.
(d) A petition in an inter partes reexamination proceeding must be
accompanied by the fee set forth in Sec.1.20(c)(6), except for
petitions under Sec.1.956 to extend the period for response by a
patent owner, petitions under Sec.1.958 to accept a delayed response
by a patent owner, petitions under Sec.1.78 to accept an
unintentionally delayed benefit claim, and petitions under Sec.
1.530(l) for correction of inventorship in a reexamination proceeding.
[65 FR 76777, as amended at 77 FR 46628, Aug. 6, 2012; 77 FR 48853, Aug.
14, 2012]
Sec.1.939 Unauthorized papers in inter partes reexamination.
(a) If an unauthorized paper is filed by any party at any time
during the inter partes reexamination proceeding it will not be
considered and may be returned.
(b) Unless otherwise authorized, no paper shall be filed prior to
the initial Office action on the merits of the inter partes
reexamination.
Sec.1.941 Amendments by patent owner in inter partes reexamination.
Amendments by patent owner in inter partes reexamination proceedings
are made by filing a paper in compliance with Sec. Sec.1.530(d)-(k)
and 1.943.
[[Page 205]]
Sec.1.943 Requirements of responses, written comments, and briefs
in inter partes reexamination.
(a) The form of responses, written comments, briefs, appendices, and
other papers must be in accordance with the requirements of Sec.1.52.
(b) Responses by the patent owner and written comments by the third
party requester shall not exceed 50 pages in length, excluding
amendments, appendices of claims, and reference materials such as prior
art references.
(c) Appellant's briefs filed by the patent owner and the third party
requester shall not exceed thirty pages or 14,000 words in length,
excluding appendices of claims and reference materials such as prior art
references. All other briefs filed by any party shall not exceed fifteen
pages in length or 7,000 words. If the page limit for any brief is
exceeded, a certificate is required stating the number of words
contained in the brief.
Sec.1.945 Response to Office action by patent owner in inter partes
reexamination.
(a) The patent owner will be given at least thirty days to file a
response to any Office action on the merits of the inter partes
reexamination.
(b) Any supplemental response to the Office action will be entered
only where the supplemental response is accompanied by a showing of
sufficient cause why the supplemental response should be entered. The
showing of sufficient cause must include:
(1) An explanation of how the requirements of Sec.1.111(a)(2)(i)
are satisfied;
(2) An explanation of why the supplemental response was not
presented together with the original response to the Office action; and
(3) A compelling reason to enter the supplemental response.
[72 FR 18906, Apr. 16, 2007]
Sec.1.947 Comments by third party requester to patent owner's
response in inter partes reexamination.
Each time the patent owner files a response to an Office action on
the merits pursuant to Sec.1.945, a third party requester may once
file written comments within a period of 30 days from the date of
service of the patent owner's response. These comments shall be limited
to issues raised by the Office action or the patent owner's response.
The time for submitting comments by the third party requester may not be
extended. For the purpose of filing the written comments by the third
party requester, the comments will be considered as having been received
in the Office as of the date of deposit specified in the certificate
under Sec.1.8.
Sec.1.948 Limitations on submission of prior art by third party
requester following the order for inter partes reexamination.
(a) After the inter partes reexamination order, the third party
requester may only cite additional prior art as defined under Sec.
1.501 if it is filed as part of a comments submission under Sec.1.947
or Sec.1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
(3) which for the first time became known or available to the third
party requester after the filing of the request for inter partes
reexamination proceeding. Prior art submitted under paragraph (a)(3) of
this section must be accompanied by a statement as to when the prior art
first became known or available to the third party requester and must
include a discussion of the pertinency of each reference to the
patentability of at least one claim.
(b) [Reserved]
Sec.1.949 Examiner's Office action closing prosecution in inter
partes reexamination.
Upon consideration of the issues a second or subsequent time, or
upon a determination of patentability of all claims, the examiner shall
issue an Office action treating all claims present in the inter partes
reexamination, which may be an action closing prosecution. The Office
action shall set forth all rejections and determinations not to make a
proposed rejection, and the grounds therefor. An Office action will not
usually close prosecution if it includes a new ground of rejection which
was not previously addressed by the
[[Page 206]]
patent owner, unless the new ground was necessitated by an amendment.
Sec.1.951 Options after Office action closing prosecution in inter
partes reexamination.
(a) After an Office action closing prosecution in an inter partes
reexamination, the patent owner may once file comments limited to the
issues raised in the Office action closing prosecution. The comments can
include a proposed amendment to the claims, which amendment will be
subject to the criteria of Sec.1.116 as to whether or not it shall be
admitted. The comments must be filed within the time set for response in
the Office action closing prosecution.
(b) When the patent owner does file comments, a third party
requester may once file comments responsive to the patent owner's
comments within 30 days from the date of service of patent owner's
comments on the third party requester.
Sec.1.953 Examiner's Right of Appeal Notice in inter partes
reexamination.
(a) Upon considering the comments of the patent owner and the third
party requester subsequent to the Office action closing prosecution in
an inter partes reexamination, or upon expiration of the time for
submitting such comments, the examiner shall issue a Right of Appeal
Notice, unless the examiner reopens prosecution and issues another
Office action on the merits.
(b) Expedited Right of Appeal Notice: At any time after the patent
owner's response to the initial Office action on the merits in an inter
partes reexamination, the patent owner and all third party requesters
may stipulate that the issues are appropriate for a final action, which
would include a final rejection and/or a final determination favorable
to patentability, and may request the issuance of a Right of Appeal
Notice. The request must have the concurrence of the patent owner and
all third party requesters present in the proceeding and must identify
all of the appealable issues and the positions of the patent owner and
all third party requesters on those issues. If the examiner determines
that no other issues are present or should be raised, a Right of Appeal
Notice limited to the identified issues shall be issued.
(c) The Right of Appeal Notice shall be a final action, which
comprises a final rejection setting forth each ground of rejection and/
or final decision favorable to patentability including each
determination not to make a proposed rejection, an identification of the
status of each claim, and the reasons for decisions favorable to
patentability and/or the grounds of rejection for each claim. No
amendment can be made in response to the Right of Appeal Notice. The
Right of Appeal Notice shall set a one-month time period for either
party to appeal. If no notice of appeal is filed, prosecution in the
inter partes reexamination proceeding will be terminated, and the
Director will proceed to issue and publish a certificate under Sec.
1.997 in accordance with the Right of Appeal Notice.
[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]
Interviews Prohibited in Inter Partes Reexamination
Sec.1.955 Interviews prohibited in inter partes reexamination
proceedings.
There will be no interviews in an inter partes reexamination
proceeding which discuss the merits of the proceeding.
Extensions of Time, Terminating of Reexamination Prosecution, and
Petitions To Revive in Inter Partes Reexamination
Sec.1.956 Patent owner extensions of time in inter partes
reexamination.
The time for taking any action by a patent owner in an inter partes
reexamination proceeding will be extended only for sufficient cause and
for a reasonable time specified. Any request for such extension must be
filed on or before the day on which action by the patent owner is due,
but in no case will the mere filing of a request effect any extension.
Any request for such extension must be accompanied by the petition fee
set forth in Sec.1.17(g). See Sec.1.304(a) for extensions of time
for filing a notice of appeal to the U.S. Court of Appeals for the
Federal Circuit.
[69 FR 56546, Sept. 21, 2004]
[[Page 207]]
Sec.1.957 Failure to file a timely, appropriate or complete response
or comment in inter partes reexamination.
(a) If the third party requester files an untimely or inappropriate
comment, notice of appeal or brief in an inter partes reexamination, the
paper will be refused consideration.
(b) If no claims are found patentable, and the patent owner fails to
file a timely and appropriate response in an inter partes reexamination
proceeding, the prosecution in the reexamination proceeding will be a
terminated prosecution and the Director will proceed to issue and
publish a certificate concluding the reexamination proceeding under
Sec.1.997 in accordance with the last action of the Office.
(c) If claims are found patentable and the patent owner fails to
file a timely and appropriate response to any Office action in an inter
partes reexamination proceeding, further prosecution will be limited to
the claims found patentable at the time of the failure to respond, and
to any claims added thereafter which do not expand the scope of the
claims which were found patentable at that time.
(d) When action by the patent owner is a bona fide attempt to
respond and to advance the prosecution and is substantially a complete
response to the Office action, but consideration of some matter or
compliance with some requirement has been inadvertently omitted, an
opportunity to explain and supply the omission may be given.
[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18906, Apr. 16, 2007]
Sec.1.958 Petition to revive inter partes reexamination prosecution
terminated for lack of patent owner response.
If a response by the patent owner is not timely filed in the Office,
a petition may be filed pursuant to Sec.1.137 to revive a
reexamination prosecution terminated under Sec.1.957(b) or limited
under Sec.1.957(c) if the delay in response was unintentional.
[78 FR 62408, Oct. 21, 2013]
Appeal to the Patent Trial and Appeal Board in Inter Partes
Reexamination
Sec.1.959 Appeal in inter partes reexamination.
Appeals to the Patent Trial and Appeal Board under 35 U.S.C. 134(c)
are conducted according to part 41 of this title.
[77 FR 46628, Aug. 6, 2012]
Sec. Sec.1.961-1.977 [Reserved]
Sec.1.979 Return of Jurisdiction from the Patent Trial and Appeal
Board; termination of appeal proceedings.
(a) Jurisdiction over an inter partes reexamination proceeding
passes to the examiner after a decision by the Patent Trial and Appeal
Board upon transmittal of the file to the examiner, subject to each
appellant's right of appeal or other review, for such further action as
the condition of the inter partes reexamination proceeding may require,
to carry into effect the decision of the Patent Trial and Appeal Board.
(b) Upon judgment in the appeal before the Patent Trial and Appeal
Board, if no further appeal has been taken (Sec.1.983), the
prosecution in the inter partes reexamination proceeding will be
terminated and the Director will issue and publish a certificate under
Sec.1.997 concluding the proceeding. If an appeal to the U.S. Court of
Appeals for the Federal Circuit has been filed, that appeal is
considered terminated when the mandate is issued by the Court.
[77 FR 46628, Aug. 6, 2012]
Sec.1.981 Reopening after a final decision of the Patent Trial
and Appeal Board.
When a decision by the Patent Trial and Appeal Board on appeal has
become final for judicial review, prosecution of the inter partes
reexamination proceeding will not be reopened or reconsidered by the
primary examiner except under the provisions of Sec.41.77 of this
title without the written authority of the Director, and then only for
[[Page 208]]
the consideration of matters not already adjudicated, sufficient cause
being shown.
[77 FR 46628, Aug. 6, 2012]
Appeal to the United States Court of Appeals for the Federal Circuit in
Inter Partes Reexamination
Sec.1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter partes reexamination.
(a) The patent owner or third party requester in an inter partes
reexamination proceeding who is a party to an appeal to the Patent Trial
and Appeal Board and who is dissatisfied with the decision of the Patent
Trial and Appeal Board may, subject to Sec.41.81, appeal to the U.S.
Court of Appeals for the Federal Circuit and may be a party to any
appeal thereto taken from a reexamination decision of the Patent Trial
and Appeal Board.
(b) The appellant must take the following steps in such an appeal:
(1) In the U.S. Patent and Trademark Office, timely file a written
notice of appeal directed to the Director in accordance with Sec. Sec.
1.302 and 1.304;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a
copy of the notice of appeal and pay the fee, as provided for in the
rules of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice of appeal on every other party in the
reexamination proceeding in the manner provided in Sec.1.248.
(c) If the patent owner has filed a notice of appeal to the U.S.
Court of Appeals for the Federal Circuit, the third party requester may
cross appeal to the U.S. Court of Appeals for the Federal Circuit if
also dissatisfied with the decision of the Patent Trial and Appeal
Board.
(d) If the third party requester has filed a notice of appeal to the
U.S. Court of Appeals for the Federal Circuit, the patent owner may
cross appeal to the U.S. Court of Appeals for the Federal Circuit if
also dissatisfied with the decision of the Patent Trial and Appeal
Board.
(e) A party electing to participate in an appellant's appeal must,
within fourteen days of service of the appellant's notice of appeal
under paragraph (b) of this section, or notice of cross appeal under
paragraphs (c) or (d) of this section, take the following steps:
(1) In the U.S. Patent and Trademark Office, timely file a written
notice directed to the Director electing to participate in the
appellant's appeal to the U.S. Court of Appeals for the Federal Circuit
by mail to, or hand service on, the General Counsel as provided in Sec.
104.2;
(2) In the U.S. Court of Appeals for the Federal Circuit, file a
copy of the notice electing to participate in accordance with the rules
of the U.S. Court of Appeals for the Federal Circuit; and
(3) Serve a copy of the notice electing to participate on every
other party in the reexamination proceeding in the manner provided in
Sec.1.248.
(f) Notwithstanding any provision of the rules, in any reexamination
proceeding commenced prior to November 2, 2002, the third party
requester is precluded from appealing and cross appealing any decision
of the Patent Trial and Appeal Board to the U.S. Court of Appeals for
the Federal Circuit, and the third party requester is precluded from
participating in any appeal taken by the patent owner to the U.S. Court
of Appeals for the Federal Circuit.
[68 FR 71008, Dec. 22, 2003, as amended at 72 FR 18907, Apr. 16, 2007;
77 FR 46628, Aug. 6, 2012]
Concurrent Proceedings Involving Same Patent in Inter Partes
Reexamination
Sec.1.985 Notification of prior or concurrent proceedings in inter
partes reexamination.
(a) In any inter partes reexamination proceeding, the patent owner
shall call the attention of the Office to any prior or concurrent
proceedings in which the patent is or was involved, including but not
limited to interference or trial before the Patent Trial and Appeal
Board, reissue, reexamination, or litigation and the results of such
proceedings.
(b) Notwithstanding any provision of the rules, any person at any
time may
[[Page 209]]
file a paper in an inter partes reexamination proceeding notifying the
Office of a prior or concurrent proceeding in which the same patent is
or was involved, including but not limited to interference or trial
before the Patent Trial and Appeal Board, reissue, reexamination, or
litigation and the results of such proceedings. Such paper must be
limited to merely providing notice of the other proceeding without
discussion of issues of the current inter partes reexamination
proceeding.
[77 FR 46629, Aug. 6, 2012]
Sec.1.987 Suspension of inter partes reexamination proceeding due
to litigation.
If a patent in the process of inter partes reexamination is or
becomes involved in litigation, the Director shall determine whether or
not to suspend the inter partes reexamination proceeding.
Sec.1.989 Merger of concurrent reexamination proceedings.
(a) If any reexamination is ordered while a prior inter partes
reexamination proceeding is pending for the same patent and prosecution
in the prior inter partes reexamination proceeding has not been
terminated, a decision may be made to merge the two proceedings or to
suspend one of the two proceedings. Where merger is ordered, the merged
examination will normally result in the issuance and publication of a
single reexamination certificate under Sec.1.997.
(b) An inter partes reexamination proceeding filed under Sec.1.913
which is merged with an ex parte reexamination proceeding filed under
Sec.1.510 will result in the merged proceeding being governed by
Sec. Sec.1.902 through 1.997, except that the rights of any third
party requester of the ex parte reexamination shall be governed by
Sec. Sec.1.510 through 1.560.
[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]
Sec.1.991 Merger of concurrent reissue application and inter partes
reexamination proceeding.
If a reissue application and an inter partes reexamination
proceeding on which an order pursuant to Sec.1.931 has been mailed are
pending concurrently on a patent, a decision may be made to merge the
two proceedings or to suspend one of the two proceedings. Where merger
of a reissue application and an inter partes reexamination proceeding is
ordered, the merged proceeding will be conducted in accordance with
Sec. Sec.1.171 through 1.179, and the patent owner will be required to
place and maintain the same claims in the reissue application and the
inter partes reexamination proceeding during the pendency of the merged
proceeding. In a merged proceeding the third party requester may
participate to the extent provided under Sec. Sec.1.902 through 1.997
and 41.60 through 41.81, except that such participation shall be limited
to issues within the scope of inter partes reexamination. The examiner's
actions and any responses by the patent owner or third party requester
in a merged proceeding will apply to both the reissue application and
the inter partes reexamination proceeding and be physically entered into
both files. Any inter partes reexamination proceeding merged with a
reissue application shall be concluded by the grant of the reissued
patent.
[72 FR 18907, Apr. 16, 2007]
Sec.1.993 Suspension of concurrent interference and inter partes
reexamination proceeding.
If a patent in the process of inter partes reexamination is or
becomes involved in an interference or trial before the Patent Trial and
Appeal Board, the Director may suspend the inter partes reexamination,
interference, or trial. The Director will not consider a request to
suspend an interference or trial unless a motion under Sec.
41.121(a)(3) of this title to suspend the interference or trial has been
presented to, and denied by, an administrative patent judge and the
request is filed within ten (10) days of a decision by an administrative
patent judge denying the motion for suspension or such other time as the
administrative patent judge may set.
[77 FR 46629, Aug. 6, 2012]
Sec.1.995 Third party requester's participation rights preserved
in merged proceeding.
When a third party requester is involved in one or more proceedings,
including an inter partes reexamination
[[Page 210]]
proceeding, the merger of such proceedings will be accomplished so as to
preserve the third party requester's right to participate to the extent
specifically provided for in these regulations. In merged proceedings
involving different requesters, any paper filed by one party in the
merged proceeding shall be served on all other parties of the merged
proceeding.
Reexamination Certificate in Inter Partes Reexamination
Sec.1.997 Issuance and publication of inter partes reexamination
certificate concludes inter partes reexamination proceeding.
(a) To conclude an inter partes reexamination proceeding, the
Director will issue and publish an inter partes reexamination
certificate in accordance with 35 U.S.C. 316 setting forth the results
of the inter partes reexamination proceeding and the content of the
patent following the inter partes reexamination proceeding.
(b) A certificate will be issued and published in each patent in
which an inter partes reexamination proceeding has been ordered under
Sec.1.931. Any statutory disclaimer filed by the patent owner will be
made part of the certificate.
(c) The certificate will be sent to the patent owner at the address
as provided for in Sec.1.33(c). A copy of the certificate will also be
sent to the third party requester of the inter partes reexamination
proceeding.
(d) If a certificate has been issued and published which cancels all
of the claims of the patent, no further Office proceedings will be
conducted with that patent or any reissue applications or any
reexamination requests relating thereto.
(e) If the inter partes reexamination proceeding is terminated by
the grant of a reissued patent as provided in Sec.1.991, the reissued
patent will constitute the reexamination certificate required by this
section and 35 U.S.C. 316.
(f) A notice of the issuance of each certificate under this section
will be published in the Official Gazette.
[65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007]
Subpart I_International Design Application
Source: 80 FR 17964, Apr. 2, 2015, unless otherwise noted.
General Information
Sec.1.1001 Definitions related to international design applications.
(a) Article as used in this subpart means an article of the Hague
Agreement;
(b) Regulations as used in this subpart, when capitalized, means the
``Common Regulations Under the 1999 Act and the 1960 Act of the Hague
Agreement'';
(c) Rule as used in this subpart, when capitalized, means one of the
Regulations;
(d) Administrative Instructions as used in this subpart means the
Administrative Instructions referred to in Rule 34;
(e) 1960 Act as used in this subpart means the Act signed at the
Hague on November 28, 1960, of the Hague Agreement;
(f) Other terms and expressions in subpart I not defined in this
section are as defined in Article 1, Rule 1, and 35 U.S.C. 381.
Sec.1.1002 The United States Patent and Trademark Office as an office
of indirect filing.
(a) The United States Patent and Trademark Office, as an office of
indirect filing, shall accept international design applications where
the applicant's Contracting Party is the United States.
(b) The major functions of the United States Patent and Trademark
Office as an office of indirect filing include:
(1) Receiving and according a receipt date to international design
applications;
(2) Collecting and, when required, transmitting fees due for
processing international design applications;
(3) Determining compliance with applicable requirements of part 5 of
this chapter; and
(4) Transmitting an international design application to the
International Bureau, unless prescriptions concerning national security
prevent the application from being transmitted.
[[Page 211]]
Sec.1.1003 The United States Patent and Trademark Office as a
designated office.
(a) The United States Patent and Trademark Office will act as a
designated office (``United States Designated Office'') for
international design applications in which the United States has been
designated as a Contracting Party in which protection is sought.
(b) The major functions of the United States Designated Office
include:
(1) Accepting for national examination international design
applications which satisfy the requirements of the Hague Agreement, the
Regulations, and the regulations;
(2) Performing an examination of the international design
application in accordance with 35 U.S.C. chapter 16; and
(3) Communicating the results of examination to the International
Bureau.
Sec.1.1004 The International Bureau.
(a) The International Bureau is the World Intellectual Property
Organization located at Geneva, Switzerland. It is the international
intergovernmental organization which acts as the coordinating body under
the Hague Agreement and the Regulations.
(b) The major functions of the International Bureau include:
(1) Receiving international design applications directly from
applicants and indirectly from an office of indirect filing;
(2) Collecting required fees and crediting designation fees to the
accounts of the Contracting Parties concerned;
(3) Reviewing international design applications for compliance with
prescribed formal requirements;
(4) Translating international design applications into the required
languages for recordation and publication;
(5) Registering international designs in the International Register
where the international design application complies with the applicable
requirements;
(6) Publishing international registrations in the International
Designs Bulletin; and
(7) Sending copies of the publication of the international
registration to each designated office.
Sec.1.1005 Display of currently valid control number under the
Paperwork Reduction Act.
(a) Pursuant to the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.), the collection of information in this subpart has been
reviewed and approved by the Office of Management and Budget under
control number 0651-0075.
(b) Notwithstanding any other provision of law, no person is
required to respond to nor shall a person be subject to a penalty for
failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid Office of Management and Budget
control number. This section constitutes the display required by 44
U.S.C. 3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection of
information under Office of Management and Budget control number 0651-
0075 (see 5 CFR 1320.5(b)(2)(ii)(D)).
Who May File an International Design Application
Sec.1.1011 Applicant for international design application.
(a) Only persons who are nationals of the United States or who have
a domicile, a habitual residence, or a real and effective industrial or
commercial establishment in the territory of the United States may file
international design applications through the United States Patent and
Trademark Office.
(b) Although the United States Patent and Trademark Office will
accept international design applications filed by any person referred to
in paragraph (a) of this section, an international design application
designating the United States may be refused by the Office as a
designated office if the applicant is not a person qualified under 35
U.S.C. chapter 11 to be an applicant.
Sec.1.1012 Applicant's Contracting Party.
In order to file an international design application through the
United States Patent and Trademark Office as an office of indirect
filing, the United States must be applicant's Contracting Party
(Articles 4 and 1(xiv)).
[[Page 212]]
The International Design Application
Sec.1.1021 Contents of the international design application.
(a) Mandatory contents. The international design application shall
be in English, French, or Spanish (Rule 6(1)) and shall contain or be
accompanied by:
(1) A request for international registration under the Hague
Agreement (Article 5(1)(i));
(2) The prescribed data concerning the applicant (Article 5(1)(ii)
and Rule 7(3)(i) and (ii));
(3) The prescribed number of copies of a reproduction or, at the
choice of the applicant, of several different reproductions of the
industrial design that is the subject of the international design
application, presented in the prescribed manner; however, where the
industrial design is two-dimensional and a request for deferment of
publication is made in accordance with Article 5(5), the international
design application may, instead of containing reproductions, be
accompanied by the prescribed number of specimens of the industrial
design (Article 5(1)(iii));
(4) An indication of the product or products that constitute the
industrial design or in relation to which the industrial design is to be
used, as prescribed (Article 5(1)(iv) and Rule 7(3)(iv));
(5) An indication of the designated Contracting Parties (Article
5(1)(v));
(6) The prescribed fees (Article 5(1)(vi) and Rule 12(1));
(7) The Contracting Party or Parties in respect of which the
applicant fulfills the conditions to be the holder of an international
registration (Rule 7(3)(iii));
(8) The number of industrial designs included in the international
design application, which may not exceed 100, and the number of
reproductions or specimens of the industrial designs accompanying the
international design application (Rule 7(3)(v));
(9) The amount of the fees being paid and the method of payment, or
instructions to debit the required amount of fees to an account opened
with the International Bureau, and the identification of the party
effecting the payment or giving the instructions (Rule 7(3)(vii)); and
(10) An indication of applicant's Contracting Party as required
under Rule 7(4)(a).
(b) Additional mandatory contents required by certain Contracting
Parties. (1) Where the international design application contains the
designation of a Contracting Party that requires, pursuant to Article
5(2), any of the following elements, then the international design
application shall contain such required element(s):
(i) Indications concerning the identity of the creator of the
industrial design that is the subject of that application (Rule 11(1));
(ii) A brief description of the reproduction or of the
characteristic features of the industrial design that is the subject of
that application (Rule 11(2));
(iii) A claim (Rule 11(3)).
(2) Where the international design application contains the
designation of a Contracting Party that has made a declaration under
Rule 8(1), then the international application shall contain the
statement, document, oath or declaration specified in that declaration
(Rule 7(4)(c)).
(c) Optional contents. The international design application may
contain:
(1) Two or more industrial designs, subject to the prescribed
conditions (Article 5(4) and Rule 7(7));
(2) A request for deferment of publication (Article 5(5) and Rule
7(5)(e)) or a request for immediate publication (Rule 17);
(3) An element referred to in item (i) or (ii) of Article 5(2)(b) of
the Hague Agreement or in Article 8(4)(a) of the 1960 Act even where
that element is not required in consequence of a notification in
accordance with Article 5(2)(a) of the Hague Agreement or in consequence
of a requirement under Article 8(4)(a) of the 1960 Act (Rule 7(5)(a));
(4) The name and address of applicant's representative, as
prescribed (Rule 7(5)(b));
(5) A claim of priority of one or more earlier filed applications in
accordance with Article 6 and Rule 7(5)(c);
(6) A declaration, for purposes of Article 11 of the Paris
Convention, that
[[Page 213]]
the product or products which constitute the industrial design or in
which the industrial design is incorporated have been shown at an
official or officially recognized international exhibition, together
with the place where the exhibition was held and the date on which the
product or products were first exhibited there and, where less than all
the industrial designs contained in the international design application
are concerned, the indication of those industrial designs to which the
declaration relates or does not relate (Rule 7(5)(d));
(7) Any declaration, statement or other relevant indication as may
be specified in the Administrative Instructions (Rule 7(5)(f));
(8) A statement that identifies information known by the applicant
to be material to the eligibility for protection of the industrial
design concerned (Rule 7(5)(g));
(9) A proposed translation of any text matter contained in the
international design application for purposes of recording and
publication (Rule 6(4)).
(d) Required contents where the United States is designated. In
addition to the mandatory requirements set forth in paragraph (a) of
this section, an international design application that designates the
United States shall contain or be accompanied by:
(1) A claim (Sec. Sec.1.1021(b)(1)(iii) and 1.1025);
(2) Indications concerning the identity of the creator (i.e., the
inventor, see Sec.1.9(d)) in accordance with Rule 11(1); and
(3) The inventor's oath or declaration (Sec. Sec.1.63 and 1.64).
The requirements in Sec. Sec.1.63(b) and 1.64(b)(4) to identify each
inventor by his or her legal name, mailing address, and residence, if an
inventor lives at a location which is different from the mailing
address, and the requirement in Sec.1.64(b)(2) to identify the
residence and mailing address of the person signing the substitute
statement will be considered satisfied by the presentation of such
information in the international design application prior to
international registration.
Sec.1.1022 Form and signature.
(a) The international design application shall be presented on the
official form (Rules 7(1) and 1(vi)).
(b) The international design application shall be signed by the
applicant.
Sec.1.1023 Filing date of an international design application in the
United States.
(a) Subject to paragraph (b) of this section, the filing date of an
international design application in the United States is the date of
international registration determined by the International Bureau under
the Hague Agreement (35 U.S.C. 384 and 381(a)(5)).
(b) Where the applicant believes the international design
application is entitled under the Hague Agreement to a filing date in
the United States other than the date of international registration, the
applicant may petition the Director under this paragraph to accord the
international design application a filing date in the United States
other than the date of international registration. Such petition must be
accompanied by the fee set forth in Sec.1.17(f) and include a showing
to the satisfaction of the Director that the international design
application is entitled to such filing date.
Sec.1.1024 The description.
An international design application designating the United States
must include a specification as prescribed by 35 U.S.C. 112 and
preferably include a brief description of the reproduction pursuant to
Rule 7(5)(a) describing the view or views of the reproductions.
Sec.1.1025 The claim.
The specific wording of the claim in an international design
application designating the United States shall be in formal terms to
the ornamental design for the article (specifying name of article) as
shown, or as shown and described. More than one claim is neither
required nor permitted for purposes of the United States.
Sec.1.1026 Reproductions.
Reproductions shall comply with the requirements of Rule 9 and Part
Four of the Administrative Instructions.
[[Page 214]]
Sec.1.1027 Specimens.
Where a request for deferment of publication has been filed in
respect of a two-dimensional industrial design, the international design
application may include specimens of the design in accordance with Rule
10 and Part Four of the Administrative Instructions. Specimens are not
permitted in an international design application that designates the
United States or any other Contracting Party which does not permit
deferment of publication.
Sec.1.1028 Deferment of publication.
The international design application may contain a request for
deferment of publication, provided the application does not designate
the United States or any other Contracting Party which does not permit
deferment of publication.
Fees
Sec.1.1031 International design application fees.
(a) International design applications filed through the Office as an
office of indirect filing are subject to payment of a transmittal fee
(35 U.S.C. 382(b) and Article 4(2)) in the amount of:
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $30.00
By a small entity (Sec. 1.27(a))......................... 60.00
By other than a small or micro entity...................... 120.00
------------------------------------------------------------------------
(b) The Schedule of Fees annexed to the Regulations (Rule 27(1)), a
list of individual designation fee amounts, and a fee calculator may be
viewed on the Web site of the World Intellectual Property Organization,
currently available at http://www.wipo.int/hague.
(c) The following fees required by the International Bureau may be
paid either directly to the International Bureau or through the Office
as an office of indirect filing in the amounts specified on the World
Intellectual Property Organization Web site described in paragraph (b)
of this section:
(1) International application fees (Rule 12(1)); and
(2) Fee for descriptions exceeding 100 words (Rule 11(2)).
(d) The fees referred to in paragraph (c) of this section may be
paid as follows:
(1) Directly to the International Bureau in Swiss currency (see
Administrative Instruction 801); or
(2) Through the Office as an office of indirect filing, provided
such fees are paid no later than the date of payment of the transmittal
fee required under paragraph (a) of this section. Any payment through
the Office must be in U.S. dollars. Applicants paying the fees in
paragraph (c) of this section through the Office may be subject to a
requirement by the International Bureau to pay additional amounts where
the conversion from U.S. dollars to Swiss currency results in the
International Bureau receiving less than the prescribed amounts.
(e) Payment of the fees referred to in Article 17 and Rule 24 for
renewing an international registration (``renewal fees'') is not
required to maintain a U.S. patent issuing on an international design
application in force. Renewal fees, if required, must be submitted
directly to the International Bureau. Any renewal fee submitted to the
Office will not be transmitted to the International Bureau.
(f) The designation fee for the United States shall consist of:
(1) A first part established in Swiss currency pursuant to Hague
Rule 28 based on the combined amounts of the basic filing fee (Sec.
1.16(b)), search fee (Sec.1.16(l)), and examination fee (Sec.
1.16(p)) for a design application. The first part is payable at the time
of filing the international design application; and
(2) A second part (issue fee) as provided in Sec.1.18(b). The
second part is payable within the period specified in a notice of
allowance (Sec.1.311).
[80 FR 17964, Apr. 2, 2015, as amended at 82 FR 52816, Nov. 14, 2017]
Representation
Sec.1.1041 Representation in an international design application.
(a) The applicant may appoint a representative before the
International Bureau in accordance with Rule 3.
(b) Applicants of international design applications may be
represented before the Office as an office of indirect filing
[[Page 215]]
by a practitioner registered (Sec.11.6) or granted limited recognition
(Sec.11.9(a) or (b)) to practice before the Office in patent matters.
Such practitioner may act pursuant to Sec.1.34 or pursuant to
appointment by the applicant. The appointment must be in writing signed
by the applicant, must give the practitioner power to act on behalf of
the applicant, and must specify the name and registration number or
limited recognition number of each practitioner. An appointment of a
representative made in the international design application pursuant to
Rule 3(2) that complies with the requirements of this paragraph will be
effective as an appointment before the Office as an office of indirect
filing.
Sec.1.1042 Correspondence respecting international design
applications filed with the Office as an office of indirect filing.
The applicant may specify a correspondence address for
correspondence sent by the Office as an office of indirect filing. Where
no such address has been specified, the Office will use as the
correspondence address the address of applicant's appointed
representative (Sec.1.1041) or, where no representative is appointed,
the address as specified in Administrative Instruction 302.
Transmittal of International Design Application to the International
Bureau
Sec.1.1045 Procedures for transmittal of international design
application to the International Bureau.
(a) Subject to paragraph (b) of this section and payment of the
transmittal fee set forth in Sec.1.1031(a), transmittal of the
international design application to the International Bureau shall be
made by the Office as provided by Rule 13(1). At the same time as it
transmits the international design application to the International
Bureau, the Office shall notify the International Bureau of the date on
which it received the application. The Office shall also notify the
applicant of the date on which it received the application and of the
transmittal of the international design application to the International
Bureau.
(b) No copy of an international design application may be
transmitted to the International Bureau, a foreign designated office, or
other foreign authority by the Office or the applicant, unless the
applicable requirements of part 5 of this chapter have been satisfied.
(c) Once transmittal of the international design application has
been effected under paragraph (a) of this section, except for matters
properly before the United States Patent and Trademark Office as an
office of indirect filing or as a designated office, all further
correspondence concerning the application should be sent directly to the
International Bureau. The United States Patent and Trademark Office will
generally not forward communications to the International Bureau
received after transmittal of the application to the International
Bureau. Any reply to an invitation sent to the applicant by the
International Bureau must be filed directly with the International
Bureau, and not with the Office, to avoid abandonment or other loss of
rights under Article 8.
Relief From Prescribed Time Limits; Conversion to a Design Application
Under 35 U.S.C. Chapter 16
Sec.1.1051 Relief from prescribed time limits.
(a) If the delay in an applicant's failure to act within prescribed
time limits under the Hague Agreement in connection with requirements
pertaining to an international design application was unintentional, a
petition may be filed pursuant to this section to excuse the failure to
act as to the United States. A grantable petition pursuant to this
section must be accompanied by:
(1) A copy of any invitation sent from the International Bureau
setting a prescribed time limit for which applicant failed to timely
act;
(2) The reply required under paragraph (c) of this section, unless
previously filed;
(3) The fee as set forth in Sec.1.17(m);
(4) A certified copy of the originally filed international design
application,
[[Page 216]]
unless a copy of the international design application was previously
communicated to the Office from the International Bureau or the
international design application was filed with the Office as an office
of indirect filing, and a translation thereof into the English language
if it was filed in another language;
(5) A statement that the entire delay in filing the required reply
from the due date for the reply until the filing of a grantable petition
pursuant to this paragraph was unintentional. The Director may require
additional information where there is a question whether the delay was
unintentional; and
(6) A terminal disclaimer (and fee as set forth in Sec.1.20(d))
required pursuant to paragraph (d) of this section.
(b) Any request for reconsideration or review of a decision refusing
to excuse the applicant's failure to act within prescribed time limits
in connection with requirements pertaining to an international design
application upon petition filed pursuant to this section, to be
considered timely, must be filed within two months of the decision
refusing to excuse or within such time as set in the decision. Unless a
decision indicates otherwise, this time period may be extended under the
provisions of Sec.1.136.
(c) Reply. The reply required may be:
(1) The filing of a continuing application. If the international
design application has not been subject to international registration,
the reply must also include a grantable petition under Sec.1.1023(b)
to accord the international design application a filing date; or
(2) A grantable petition under Sec.1.1052, where the international
design application was filed with the Office as an office of indirect
filing.
(d) Terminal disclaimer. Any petition pursuant to this section must
be accompanied by a terminal disclaimer and fee as set forth in Sec.
1.321 dedicating to the public a terminal part of the term of any patent
granted thereon equivalent to the period beginning on the due date for
the reply for which applicant failed to timely act and ending on the
date of filing of the reply required under paragraph (c) of this section
and must also apply to any patent granted on a continuing design
application that contains a specific reference under 35 U.S.C. 120, 121,
365(c) or 386(c) to the application for which relief under this section
is sought.
Sec.1.1052 Conversion to a design application under 35 U.S.C.
chapter 16.
(a) An international design application designating the United
States filed with the Office as an office of indirect filing and meeting
the requirements under Sec.1.53(b) for a filing date for an
application for a design patent may, on petition under this section, be
converted to an application for a design patent under Sec.1.53(b) and
accorded a filing date as provided therein. A petition under this
section must be accompanied by the fee set forth in Sec.1.17(t) and be
filed prior to publication of the international registration under
Article 10(3). The conversion of an international design application to
an application for a design patent under Sec.1.53(b) will not entitle
applicant to a refund of the transmittal fee or any fee forwarded to the
International Bureau, or the application of any such fee toward the
filing fee, or any other fee, for the application for a design patent
under Sec.1.53(b). The application for a design patent resulting from
conversion of an international design application must also include the
basic filing fee (Sec.1.16(b)), the search fee (Sec.1.16(l)), the
examination fee (Sec.1.16(p)), the inventor's oath or declaration
(Sec.1.63 or 1.64), and a surcharge if required by Sec.1.16(f).
(b) An international design application will be converted to an
application for a design patent under Sec.1.53(b) if a decision on
petition under this section is granted prior to transmittal of the
international design application to the International Bureau pursuant to
Sec.1.1045. Otherwise, a decision granting a petition under this
section will be effective to convert the international design
application to an application for a design patent under Sec.1.53(b)
only for purposes of the designation of the United States.
(c) A petition under this section will not be granted in an
abandoned international design application absent a grantable petition
under Sec.1.1051.
(d) An international design application converted under this section
is subject to the regulations applicable to
[[Page 217]]
a design application filed under 35 U.S.C. chapter 16.
National Processing of International Design Applications
Sec.1.1061 Rules applicable.
(a) The rules relating to applications for patents for other
inventions or discoveries are also applicable to international design
applications designating the United States, except as otherwise provided
in this chapter or required by the Articles or Regulations.
(b) The provisions of Sec.1.74, Sec.1.84, except for Sec.
1.84(c), and Sec. Sec.1.152 through 1.154 shall not apply to
international design applications.
Sec.1.1062 Examination.
(a) Examination. The Office shall make an examination pursuant to
title 35, United States Code, of an international design application
designating the United States.
(b) Timing. For each international design application to be examined
under paragraph (a) of this section, the Office shall, subject to Rule
18(1)(c)(ii), send to the International Bureau within 12 months from the
publication of the international registration under Rule 26(3) a
notification of refusal (Sec.1.1063) where it appears that the
applicant is not entitled to a patent under the law with respect to any
industrial design that is the subject of the international registration.
Sec.1.1063 Notification of refusal.
(a) A notification of refusal shall contain or indicate:
(1) The number of the international registration;
(2) The grounds on which the refusal is based;
(3) A copy of a reproduction of the earlier industrial design and
information concerning the earlier industrial design, where the grounds
of refusal refer to similarity with an industrial design that is the
subject of an earlier application or registration;
(4) Where the refusal does not relate to all the industrial designs
that are the subject of the international registration, those to which
it relates or does not relate; and
(5) A time period for reply under Sec. Sec.1.134 and 1.136, where
a reply to the notification of refusal is required.
(b) Any reply to the notification of refusal must be filed directly
with the Office and not through the International Bureau. The
requirements of Sec.1.111 shall apply to a reply to a notification of
refusal.
Sec.1.1064 One independent and distinct design.
(a) Only one independent and distinct design may be claimed in a
nonprovisional international design application.
(b) If the requirements under paragraph (a) of this section are not
satisfied, the examiner shall in the notification of refusal or other
Office action require the applicant in the reply to that action to elect
one independent and distinct design for which prosecution on the merits
shall be restricted. Such requirement will normally be made before any
action on the merits but may be made at any time before the final
action. Review of any such requirement is provided under Sec. Sec.
1.143 and 1.144.
Sec.1.1065 Corrections and other changes in the International Register.
(a) The effects of any correction in the International Register by
the International Bureau pursuant to Rule 22 in a pending nonprovisional
international design application shall be decided by the Office in
accordance with the merits of each situation, subject to such other
requirements as may be imposed. A patent issuing from an international
design application may only be corrected in accordance with the
provisions of title 35, United States Code, for correcting patents. Any
correction under Rule 22 recorded by the International Bureau with
respect to an abandoned nonprovisional international design application
will generally not be acted upon by the Office and shall not be given
effect unless otherwise indicated by the Office.
(b) A recording of a partial change in ownership in the
International Register pursuant to Rule 21(7) concerning a transfer of
less than all designs shall not have effect in the United States.
[[Page 218]]
Sec.1.1066 Correspondence address for a nonprovisional international
design application.
(a) Unless the correspondence address is changed in accordance with
Sec.1.33(a), the Office will use as the correspondence address in a
nonprovisional international design application the address according to
the following order:
(1) The correspondence address under Sec.1.1042;
(2) The address of applicant's representative identified in the
publication of the international registration; and
(3) The address of the applicant identified in the publication of
the international registration.
(b) Reference in the rules to the correspondence address set forth
in Sec.1.33(a) shall be construed to include a reference to this
section for a nonprovisional international design application.
Sec.1.1067 Title, description, and inventor's oath or declaration.
(a) The title of the design must designate the particular article.
Where a nonprovisional international design application does not contain
a title of the design, the Office may establish a title. No description,
other than a reference to the drawing, is ordinarily required in a
nonprovisional international design application.
(b) An international design application designating the United
States must include the inventor's oath or declaration. See Sec.
1.1021(d). If the applicant is notified in a notice of allowability that
an oath or declaration in compliance with Sec.1.63, or substitute
statement in compliance with Sec.1.64, executed by or with respect to
each named inventor has not been filed, the applicant must file each
required oath or declaration in compliance with Sec.1.63, or
substitute statement in compliance with Sec.1.64, no later than the
date on which the issue fee is paid to avoid abandonment. This time
period is not extendable under Sec.1.136 (see Sec.1.136(c)).
Sec.1.1068 Statement of grant of protection.
Upon issuance of a patent on an international design application
designating the United States, the Office may send to the International
Bureau a statement to the effect that protection is granted in the
United States to those industrial design or designs that are the subject
of the international registration and covered by the patent.
Sec.1.1070 Notification of Invalidation.
(a) Where a design patent that was granted from an international
design application is invalidated in the United States, and the
invalidation is no longer subject to any review or appeal, the patentee
shall inform the Office.
(b) After receiving a notification of invalidation under paragraph
(a) of this section or through other means, the Office will notify the
International Bureau in accordance with Hague Rule 20.
Sec.1.1071 Grant of protection for an industrial design only upon
issuance of a patent.
A grant of protection for an industrial design that is the subject
of an international registration shall only arise in the United States
through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171,
and in accordance with 35 U.S.C. 153.
PART 2_RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents
Editorial Note: Part 2 is placed in the separate grouping of parts
pertaining to trademarks regulations.
PART 3_ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE--Table of Contents
Sec.
3.1 Definitions.
Documents Eligible for Recording
3.11 Documents which will be recorded.
3.16 Assignability of trademarks prior to filing of an allegation of
use.
Requirements for Recording
3.21 Identification of patents and patent applications.
3.24 Requirements for documents and cover sheets relating to patents and
patent applications.
3.25 Recording requirements for trademark applications and
registrations.
3.26 English language requirement.
[[Page 219]]
3.27 Mailing address for submitting documents to be recorded.
3.28 Requests for recording.
Cover Sheet Requirements
3.31 Cover sheet content.
3.34 Correction of cover sheet errors.
Fees
3.41 Recording fees.
Date and Effect of Recording
3.51 Recording date.
3.54 Effect of recording.
3.56 Conditional assignments.
3.58 Governmental registers.
Domestic Representative
3.61 Domestic representative.
Action Taken by Assignee
3.71 Prosecution by assignee.
3.73 Establishing right of assignee to take action.
Issuance to Assignee
3.81 Issue of patent to assignee.
3.85 Issue of registration to assignee.
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
Source: 57 FR 29642, July 6, 1992, unless otherwise noted.
Editorial Note: Nomenclature changes to part 3 appear at 68 FR
14337, Mar. 25, 2003.
Sec.3.1 Definitions.
For purposes of this part, the following definitions shall apply:
Application means a national application for patent, an
international patent application that designates the United States of
America, an international design application that designates the United
States of America, or an application to register a trademark under
section 1 or 44 of the Trademark Act, 15 U.S.C. 1051, or 15 U.S.C. 1126,
unless otherwise indicated.
Assignment means a transfer by a party of all or part of its right,
title and interest in a patent, patent application, registered mark or a
mark for which an application to register has been filed.
Document means a document which a party requests to be recorded in
the Office pursuant to Sec.3.11 and which affects some interest in an
application, patent, or registration.
Office means the United States Patent and Trademark Office.
Recorded document means a document which has been recorded in the
Office pursuant to Sec.3.11.
Registration means a trademark registration issued by the Office.
[69 FR 29878, May 26, 2004, as amended at 80 FR 17969, Apr. 2, 2015]
Documents Eligible for Recording
Sec.3.11 Documents which will be recorded.
(a) Assignments of applications, patents, and registrations, and
other documents relating to interests in patent applications and
patents, accompanied by completed cover sheets as specified in Sec.
3.28 and Sec.3.31, will be recorded in the Office. Other documents,
accompanied by completed cover sheets as specified in Sec.3.28 and
Sec.3.31, affecting title to applications, patents, or registrations,
will be recorded as provided in this part or at the discretion of the
Director.
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR
1943-1948 Comp., p. 303) requires the several departments and other
executive agencies of the Government, including Government-owned or
Government-controlled corporations, to forward promptly to the Director
for recording all licenses, assignments, or other interests of the
Government in or under patents or patent applications. Assignments and
other documents affecting title to patents or patent applications and
documents not affecting title to patents or patent applications required
by Executive Order 9424 to be filed will be recorded as provided in this
part.
(c) A joint research agreement or an excerpt of a joint research
agreement will also be recorded as provided in this part.
[62 FR 53202, Oct. 10, 1997, as amended at 70 FR 1824, Jan. 11, 2005; 70
FR 54267, Sept. 14, 2005; 78 FR 62408, Oct. 21, 2013]
Sec.3.16 Assignability of trademarks prior to filing of an allegation
of use.
Before an allegation of use under either 15 U.S.C. 1051(c) or 15
U.S.C. 1051(d) is filed, an applicant may only assign an application to
register a mark under 15 U.S.C. 1051(b) to a successor to the
applicant's business, or portion of the
[[Page 220]]
business to which the mark pertains, if that business is ongoing and
existing.
[64 FR 48926, Sept. 8, 1999]
Requirements for Recording
Sec.3.21 Identification of patents and patent applications.
An assignment relating to a patent must identify the patent by the
patent number. An assignment relating to a national patent application
must identify the national patent application by the application number
(consisting of the series code and the serial number; e.g., 07/123,456).
An assignment relating to an international patent application which
designates the United States of America must identify the international
application by the international application number; e.g., PCT/US2012/
012345. An assignment relating to an international design application
which designates the United States of America must identify the
international design application by the international registration
number or by the U.S. application number assigned to the international
design application. If an assignment of a patent application filed under
Sec.1.53(b) of this chapter is executed concurrently with, or
subsequent to, the execution of the patent application, but before the
patent application is filed, it must identify the patent application by
the name of each inventor and the title of the invention so that there
can be no mistake as to the patent application intended. If an
assignment of a provisional application under Sec.1.53(c) of this
chapter is executed before the provisional application is filed, it must
identify the provisional application by the name of each inventor and
the title of the invention so that there can be no mistake as to the
provisional application intended.
[80 FR 17969, Apr. 2, 2015]
Sec.3.24 Requirements for documents and cover sheets relating to
patents and patent applications.
(a) For electronic submissions: Either a copy of the original
document or an extract of the original document may be submitted for
recording. All documents must be submitted as digitized images in Tagged
Image File Format (TIFF) or another form as prescribed by the Director.
When printed to a paper size of either 21.6 by 27.9 cm (8\1/2\ by 11
inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible
and a 2.5 cm (one-inch) margin must be present on all sides.
(b) For paper or facsimile submissions: Either a copy of the
original document or an extract of the original document must be
submitted for recording. Only one side of each page may be used. The
paper size must be either 21.6 by 27.9 cm (8\1/2\ by 11 inches) or 21.0
by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin
must be present on all sides. For paper submissions, the paper used
should be flexible, strong white, non-shiny, and durable. The Office
will not return recorded documents, so original documents must not be
submitted for recording.
[69 FR 29879, May 26, 2004]
Sec.3.25 Recording requirements for trademark applications and
registrations.
(a) Documents affecting title. To record documents affecting title
to a trademark application or registration, a legible cover sheet (see
Sec.3.31) and one of the following must be submitted:
(1) A copy of the original document;
(2) A copy of an extract from the document evidencing the effect on
title; or
(3) A statement signed by both the party conveying the interest and
the party receiving the interest explaining how the conveyance affects
title.
(b) Name changes. Only a legible cover sheet is required (See Sec.
3.31).
(c) All documents. (1) For electronic submissions: All documents
must be submitted as digitized images in Tagged Image File Format (TIFF)
or another form as prescribed by the Director. When printed to a paper
size of either 21.6 by 27.9 cm (8\1/2\ by 11 inches) or 21.0 by 29.7 cm
(DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides.
(2) For paper or facsimile submissions: All documents should be
submitted on white and non-shiny paper that is either 8\1/2\ by 11
inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-
inch (2.5 cm) margin on all sides in either case. Only one side of each
page may be used. The Office will not return
[[Page 221]]
recorded documents, so original documents should not be submitted for
recording.
[69 FR 29879, May 26, 2004]
Sec.3.26 English language requirement.
The Office will accept and record non-English language documents
only if accompanied by an English translation signed by the individual
making the translation.
[62 FR 53202, Oct. 10, 1997]
Sec.3.27 Mailing address for submitting documents to be recorded.
Documents and cover sheets submitted by mail for recordation should
be addressed to Mail Stop Assignment Recordation Services, Director of
the United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450, unless they are filed together with new
applications.
[69 FR 29879, May 26, 2004]
Sec.3.28 Requests for recording.
Each document submitted to the Office for recording must include a
single cover sheet (as specified in Sec.3.31) referring either to
those patent applications and patents, or to those trademark
applications and registrations, against which the document is to be
recorded. If a document to be recorded includes interests in, or
transactions involving, both patents and trademarks, then separate
patent and trademark cover sheets, each accompanied by a copy of the
document to be recorded, must be submitted. If a document to be recorded
is not accompanied by a completed cover sheet, the document and the
incomplete cover sheet will be returned pursuant to Sec.3.51 for
proper completion, in which case the document and a completed cover
sheet should be resubmitted.
[70 FR 56128, Sept. 26, 2005]
Cover Sheet Requirements
Sec.3.31 Cover sheet content.
(a) Each patent or trademark cover sheet required by Sec.3.28 must
contain:
(1) The name of the party conveying the interest;
(2) The name and address of the party receiving the interest;
(3) A description of the interest conveyed or transaction to be
recorded;
(4) Identification of the interests involved:
(i) For trademark assignments and trademark name changes: Each
trademark registration number and each trademark application number, if
known, against which the Office is to record the document. If the
trademark application number is not known, a copy of the application or
a reproduction of the trademark must be submitted, along with an
estimate of the date that the Office received the application; or
(ii) For any other document affecting title to a trademark or patent
application, registration or patent: Each trademark or patent
application number or each trademark registration number or patent
against which the document is to be recorded, or an indication that the
document is filed together with a patent application;
(5) The name and address of the party to whom correspondence
concerning the request to record the document should be mailed;
(6) The date the document was executed;
(7) The signature of the party submitting the document. For an
assignment document or name change filed electronically, the person who
signs the cover sheet must either:
(i) Place a symbol comprised of letters, numbers, and/or punctuation
marks between forward slash marks (e.g., /Thomas O'Malley III/) in the
signature block on the electronic submission; or
(ii) Sign the cover sheet using some other form of electronic
signature specified by the Director.
(8) For trademark assignments, the entity and citizenship of the
party receiving the interest. In addition, if the party receiving the
interest is a domestic partnership or domestic joint venture, the cover
sheet must set forth the names, legal entities, and national citizenship
(or the state or country of organization) of all general partners or
active members that compose the partnership or joint venture.
[[Page 222]]
(b) A cover sheet should not refer to both patents and trademarks,
since any information, including information about pending patent
applications, submitted with a request for recordation of a document
against a trademark application or trademark registration will become
public record upon recordation.
(c) Each patent cover sheet required by Sec.3.28 seeking to record
a governmental interest as provided by Sec.3.11(b) must:
(1) Indicate that the document relates to a Government interest; and
(2) Indicate, if applicable, that the document to be recorded is not
a document affecting title (see Sec.3.41(b)).
(d) Each trademark cover sheet required by Sec.3.28 seeking to
record a document against a trademark application or registration should
include, in addition to the serial number or registration number of the
trademark, identification of the trademark or a description of the
trademark, against which the Office is to record the document.
(e) Each patent or trademark cover sheet required by Sec.3.28
should contain the number of applications, patents or registrations
identified in the cover sheet and the total fee.
(f) Each trademark cover sheet should include the citizenship of the
party conveying the interest.
(g) The cover sheet required by Sec.3.28 seeking to record a joint
research agreement or an excerpt of a joint research agreement as
provided by Sec.3.11(c) must:
(1) Identify the document as a ``joint research agreement'' (in the
space provided for the description of the interest conveyed or
transaction to be recorded if using an Office-provided form);
(2) Indicate the name of the owner of the application or patent (in
the space provided for the name and address of the party receiving the
interest if using an Office-provided form);
(3) Indicate the name of each other party to the joint research
agreement party (in the space provided for the name of the party
conveying the interest if using an Office-provided form); and
(4) Indicate the date the joint research agreement was executed.
(h) The assignment cover sheet required by Sec.3.28 for a patent
application or patent will be satisfied by the Patent Law Treaty Model
International Request for Recordation of Change in Applicant or Owner
Form, Patent Law Treaty Model International Request for Recordation of a
License/Cancellation of the Recordation of a License Form, Patent Law
Treaty Model Certificate of Transfer Form or Patent Law Treaty Model
International Request for Recordation of a Security Interest/
Cancellation of the Recordation of a Security Interest Form, as
applicable, except where the assignment is also an oath or declaration
under Sec.1.63 of this chapter. An assignment cover sheet required by
Sec.3.28 must contain a conspicuous indication of an intent to utilize
the assignment as an oath or declaration under Sec.1.63 of this
chapter.
[57 FR 29642, July 6, 1992, as amended at 62 FR 53202, Oct. 10, 1997; 64
FR 48927, Sept. 8, 1999; 67 FR 79523, Dec. 30, 2002; 69 FR 29879, May
26, 2004; 70 FR 1824, Jan. 11, 2005; 70 FR 56128, Sept. 26, 2005; 73 FR
67775, Nov. 17, 2008; 77 FR 48825, Aug. 14, 2012; 78 FR 62408, Oct. 21,
2013]
Sec.3.34 Correction of cover sheet errors.
(a) An error in a cover sheet recorded pursuant to Sec.3.11 will
be corrected only if:
(1) The error is apparent when the cover sheet is compared with the
recorded document to which it pertains, and
(2) A corrected cover sheet is filed for recordation.
(b) The corrected cover sheet must be accompanied by a copy of the
document originally submitted for recording and by the recording fee as
set forth in Sec.3.41.
[69 FR 29879, May 26, 2004]
Fees
Sec.3.41 Recording fees.
(a) All requests to record documents must be accompanied by the
appropriate fee. Except as provided in paragraph (b) of this section, a
fee is required for each application, patent and registration against
which the document is recorded as identified in the cover sheet. The
recording fee is set in Sec.1.21(h) of this chapter for patents and
[[Page 223]]
in Sec.2.6(b)(6) of this chapter for trademarks.
(b) No fee is required for each patent application and patent
against which a document required by Executive Order 9424 is to be filed
if:
(1) The document does not affect title and is so identified in the
cover sheet (see Sec.3.31(c)(2)); and
(2) The document and cover sheet are either: Faxed or electronically
submitted as prescribed by the Director, or mailed to the Office in
compliance with Sec.3.27.
[63 FR 52159, Sept. 30, 1998, as amended at 69 FR 29879, May 26, 2004]
Date and Effect of Recording
Sec.3.51 Recording date.
The date of recording of a document is the date the document meeting
the requirements for recording set forth in this part is filed in the
Office. A document which does not comply with the identification
requirements of Sec.3.21 will not be recorded. Documents not meeting
the other requirements for recording, for example, a document submitted
without a completed cover sheet or without the required fee, will be
returned for correction to the sender where a correspondence address is
available. The returned papers, stamped with the original date of
receipt by the Office, will be accompanied by a letter which will
indicate that if the returned papers are corrected and resubmitted to
the Office within the time specified in the letter, the Office will
consider the original date of filing of the papers as the date of
recording of the document. The procedure set forth in Sec.1.8 or Sec.
1.10 of this chapter may be used for resubmissions of returned papers to
have the benefit of the date of deposit in the United States Postal
Service. If the returned papers are not corrected and resubmitted within
the specified period, the date of filing of the corrected papers will be
considered to be the date of recording of the document. The specified
period to resubmit the returned papers will not be extended.
[62 FR 53203, Oct. 10, 1997]
Sec.3.54 Effect of recording.
The recording of a document pursuant to Sec.3.11 is not a
determination by the Office of the validity of the document or the
effect that document has on the title to an application, a patent, or a
registration. When necessary, the Office will determine what effect a
document has, including whether a party has the authority to take an
action in a matter pending before the Office.
Sec.3.56 Conditional assignments.
Assignments which are made conditional on the performance of certain
acts or events, such 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 all parties or by the decree of a court of competent jurisdiction.
The Office does not determine whether such conditions have been
fulfilled.
Sec.3.58 Governmental registers.
(a) The Office will maintain a Departmental Register to record
governmental interests required to be recorded by Executive Order 9424.
This Departmental Register will not be open to public inspection but
will be available for examination and inspection by duly authorized
representatives of the Government. Governmental interests recorded on
the Departmental Register will be available for public inspection as
provided in Sec.1.12.
(b) The Office will maintain a Secret Register to record
governmental interests required to be recorded by Executive Order 9424.
Any instrument to be recorded will be placed on this Secret Register at
the request of the department or agency submitting the same. No
information will be given concerning any instrument in such record or
register, and no examination or inspection thereof or of the index
thereto will be permitted, except on the written authority of the head
of the department or agency which submitted the instrument and requested
secrecy, and the approval of such authority by the Director. No
instrument or record other than the one specified may be examined, and
the examination must take place in the presence of a designated official
of the Patent and
[[Page 224]]
Trademark Office. When the department or agency which submitted an
instrument no longer requires secrecy with respect to that instrument,
it must be recorded anew in the Departmental Register.
[62 FR 53203, Oct. 10, 1997]
Domestic Representative
Sec.3.61 Domestic representative.
If the assignee of a patent, patent application, trademark
application or trademark registration is not domiciled in the United
States, the assignee may designate a domestic representative in a
document filed in the United States Patent and Trademark Office. The
designation should state the name and address of a person residing
within the United States on whom may be served process or notice of
proceedings affecting the application, patent or registration or rights
thereunder.
[67 FR 79522, Dec. 30, 2002]
Action Taken by Assignee
Sec.3.71 Prosecution by assignee.
(a) Patents--conducting of prosecution. One or more assignees as
defined in paragraph (b) of this section may conduct prosecution of a
national patent application as the applicant under Sec.1.46 of this
title, or conduct prosecution of a supplemental examination or
reexamination proceeding, to the exclusion of the inventor or previous
applicant or patent owner. Conflicts between purported assignees are
handled in accordance with Sec.3.73(c)(3).
(b) Patents--assignee(s) who can prosecute. The assignee(s) who may
conduct either the prosecution of a national application for patent as
the applicant under Sec.1.46 of this title or a supplemental
examination or reexamination proceeding are:
(1) A single assignee. An assignee of the entire right, title and
interest in the application or patent, or
(2) Partial assignee(s) together or with inventor(s). All partial
assignees, or all partial assignees and inventors who have not assigned
their right, title and interest in the application or patent, who
together own the entire right, title and interest in the application or
patent. A partial assignee is any assignee having less than the entire
right, title and interest in the application or patent. The word
``assignee'' as used in this chapter means with respect to patent
matters the single assignee of the entire right, title and interest in
the application or patent if there is such a single assignee, or all of
the partial assignees, or all of the partial assignee and inventors who
have not assigned their interest in the application or patent, who
together own the entire right, title and interest in the application or
patent.
(c) Patents--Becoming of record. An assignee becomes of record as
the applicant in a national patent application under Sec.1.46 of this
title, and in a supplemental examination or reexamination proceeding, by
filing a statement in compliance with Sec.3.73(c) that is signed by a
party who is authorized to act on behalf of the assignee.
(d) Trademarks. The assignee of a trademark application or
registration may prosecute a trademark application, submit documents to
maintain a trademark registration, or file papers against a third party
in reliance on the assignee's trademark application or registration, to
the exclusion of the original applicant or previous assignee. The
assignee must establish ownership in compliance with Sec.3.73(b).
[65 FR 54682, Sept. 8, 2000, as amended at 77 FR 48825, Aug. 14, 2012]
Sec.3.73 Establishing right of assignee to take action.
(a) The original applicant is presumed to be the owner of an
application for an original patent, and any patent that may issue
therefrom, unless there is an assignment. The original applicant is
presumed to be the owner of a trademark application or registration,
unless there is an assignment.
(b) In order to request or take action in a trademark matter, the
assignee must establish its ownership of the trademark property of
paragraph (a) of this section to the satisfaction of the Director. The
establishment of ownership by the assignee may be combined with the
paper that requests or takes the action. Ownership is established by
[[Page 225]]
submitting to the Office a signed statement identifying the assignee,
accompanied by either:
(1) Documentary evidence of a chain of title from the original owner
to the assignee (e.g., copy of an executed assignment). The documents
submitted to establish ownership may be required to be recorded pursuant
to Sec.3.11 in the assignment records of the Office as a condition to
permitting the assignee to take action in a matter pending before the
Office; or
(2) A statement specifying where documentary evidence of a chain of
title from the original owner to the assignee is recorded in the
assignment records of the Office (e.g., reel and frame number).
(c)(1) In order to request or take action in a patent matter, an
assignee who is not the original applicant must establish its ownership
of the patent property of paragraph (a) of this section to the
satisfaction of the Director. The establishment of ownership by the
assignee may be combined with the paper that requests or takes the
action. Ownership is established by submitting to the Office a signed
statement identifying the assignee, accompanied by either:
(i) Documentary evidence of a chain of title from the original owner
to the assignee (e.g., copy of an executed assignment). The submission
of the documentary evidence must be accompanied by a statement affirming
that the documentary evidence of the chain of title from the original
owner to the assignee was or concurrently is being submitted for
recordation pursuant to Sec.3.11; or
(ii) A statement specifying where documentary evidence of a chain of
title from the original owner to the assignee is recorded in the
assignment records of the Office (e.g., reel and frame number).
(2) If the submission is by an assignee of less than the entire
right, title and interest (e.g., more than one assignee exists) the
Office may refuse to accept the submission as an establishment of
ownership unless:
(i) Each assignee establishes the extent (by percentage) of its
ownership interest, so as to account for the entire right, title and
interest in the application or patent by all parties including
inventors; or
(ii) Each assignee submits a statement identifying the parties
including inventors who together own the entire right, title and
interest and stating that all the identified parties own the entire
right, title and interest.
(3) If two or more purported assignees file conflicting statements
under paragraph (c)(1) of this section, the Director will determine
which, if any, purported assignee will be permitted to control
prosecution of the application.
(d) The submission establishing ownership under paragraph (b) or (c)
of this section must show that the person signing the submission is a
person authorized to act on behalf of the assignee by:
(1) Including a statement that the person signing the submission is
authorized to act on behalf of the assignee;
(2) Being signed by a person having apparent authority to sign on
behalf of the assignee; or
(3) For patent matters only, being signed by a practitioner of
record.
[77 FR 48825, Aug. 14, 2012]
Issuance to Assignee
Sec.3.81 Issue of patent to assignee.
(a) With payment of the issue fee: An application may issue in the
name of the assignee consistent with the application's assignment where
a request for such issuance is submitted with payment of the issue fee,
provided the assignment has been previously recorded in the Office. If
the assignment has not been previously recorded, the request must state
that the document has been filed for recordation as set forth in Sec.
3.11.
(b) After payment of the issue fee: Any request for issuance of an
application in the name of the assignee submitted after the date of
payment of the issue fee, and any request for a patent to be corrected
to state the name of the assignee, must state that the assignment was
submitted for recordation as set forth in Sec.3.11 before issuance of
the patent, and must include a request for a certificate of correction
under Sec.1.323 of this chapter (accompanied by the fee
[[Page 226]]
set forth in Sec.1.20(a)) and the processing fee set forth in Sec.
1.17(i) of this chapter.
(c) Partial assignees. (1) If one or more assignee, together with
one or more inventor, holds the entire right, title, and interest in the
application, the patent may issue in the names of the assignee and the
inventor.
(2) If multiple assignees hold the entire right, title, and interest
to the exclusion of all the inventors, the patent may issue in the names
of the multiple assignees.
[69 FR 29879, May 26, 2004]
Sec.3.85 Issue of registration to assignee.
The certificate of registration may be issued to the assignee of the
applicant, or in a new name of the applicant, provided that the party
files a written request in the trademark application by the time the
application is being prepared for issuance of the certificate of
registration, and the appropriate document is recorded in the Office. If
the assignment or name change document has not been recorded in the
Office, then the written request must state that the document has been
filed for recordation. The address of the assignee must be made of
record in the application file.
PART 4_COMPLAINTS REGARDING INVENTION PROMOTERS--Table of Contents
Sec.
4.1 Complaints regarding invention promoters.
4.2 Definitions.
4.3 Submitting complaints.
4.4 Invention promoter reply.
4.5 Notice by publication.
4.6 Attorneys and Agents.
Authority: 35 U.S.C. 2(b)(2) and 297.
Source: 65 FR 3129, Jan. 20, 2000, unless otherwise noted.
Sec.4.1 Complaints regarding invention promoters.
These regulations govern the Patent and Trademark Office's (Office)
responsibilities under the Inventors' Rights Act of 1999, which can be
found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to
provide a forum for the publication of complaints concerning invention
promoters. The Office will not conduct any independent investigation of
the invention promoter. Although the Act provides additional civil
remedies for persons injured by invention promoters, those remedies must
be pursued by the injured party without the involvement of the Office.
Sec.4.2 Definitions.
(a) Invention Promoter means any person, firm, partnership,
corporation, or other entity who offers to perform or performs invention
promotion services for, or on behalf of, a customer, and who holds
itself out through advertising in any mass media as providing such
services, but does not include--
(1) Any department or agency of the Federal Government or of a State
or local government;
(2) Any nonprofit, charitable, scientific, or educational
organization qualified under applicable State law or described under
section 170(b)(1)(A) of the Internal Revenue Code of 1986;
(3) Any person or entity involved in the evaluation to determine
commercial potential of, or offering to license or sell, a utility
patent or a previously filed nonprovisional utility patent application;
(4) Any party participating in a transaction involving the sale of
the stock or assets of a business; or
(5) Any party who directly engages in the business of retail sales
of products or the distribution of products.
(b) Customer means any individual who enters into a contract with an
invention promoter for invention promotion services.
(c) Contract for Invention Promotion Services means a contract by
which an invention promoter undertakes invention promotion services for
a customer.
(d) Invention Promotion Services means the procurement or attempted
procurement for a customer of a firm, corporation, or other entity to
develop and market products or services that include the invention of
the customer.
Sec.4.3 Submitting complaints.
(a) A person may submit a complaint concerning an invention promoter
with
[[Page 227]]
the Office. A person submitting a complaint should understand that the
complaint may be forwarded to the invention promoter and may become
publicly available. The Office will not accept any complaint that
requests that it be kept confidential.
(b) A complaint must be clearly marked, or otherwise identified, as
a complaint under these rules. The complaint must include:
(1) The name and address of the complainant;
(2) The name and address of the invention promoter;
(3) The name of the customer;
(4) The invention promotion services offered or performed by the
invention promoter;
(5) The name of the mass media in which the invention promoter
advertised providing such services;
(6) An explanation of the relationship between the customer and the
invention promoter; and
(7) A signature of the complainant.
(c) The complaint should fairly summarize the action of the
invention promoter about which the person complains. Additionally, the
complaint should include names and addresses of persons believed to be
associated with the invention promoter. Complaints, and any replies,
must be addressed to: Mail Stop 24, Commissioner for Patents, P.O. Box
1450, Alexandria, Virginia 22313-1450.
(d) Complaints that do not provide the information requested in
paragraphs (b) and (c) of this section will be returned. If
complainant's address is not provided, the complaint will be destroyed.
(e) No originals of documents should be included with the complaint.
(f) A complaint can be withdrawn by the complainant or the named
customer at any time prior to its publication.
[65 FR 3129, Jan. 20, 2000, as amended at 68 FR 14338, Mar. 25, 2003]
Sec.4.4 Invention promoter reply.
(a) If a submission appears to meet the requirements of a complaint,
the invention promoter named in the complaint will be notified of the
complaint and given 30 days to respond. The invention promoter's
response will be made available to the public along with the complaint.
If the invention promoter fails to reply within the 30-day time period
set by the Office, the complaint will be made available to the public.
Replies sent after the complaint is made available to the public will
also be published.
(b) A response must be clearly marked, or otherwise identified, as a
response by an invention promoter. The response must contain:
(1) The name and address of the invention promoter;
(2) A reference to a complaint forwarded to the invention promoter
or a complaint previously published;
(3) The name of the individual signing the response; and
(4) The title or authority of the individual signing the response.
Sec.4.5 Notice by publication.
If the copy of the complaint that is mailed to the invention
promoter is returned undelivered, then the USPTO will primarily publish
a Notice of Complaint Received on the USPTO's Internet home page at
http://www.uspto.gov. Only where the USPTO's Web site is unavailable for
publication will the USPTO publish the Notice of Complaint in the
Official Gazette and/or the Federal Register. The invention promoter
will be given 30 days from such notice to submit a reply to the Notice
of Complaint. If the USPTO does not receive a reply from the invention
promoter within 30 days, the complaint alone will become publicly
available.
[68 FR 9553, Feb. 28, 2003]
Sec.4.6 Attorneys and Agents.
Complaints against registered patent attorneys and agents will not
be treated under this section, unless a complaint fairly demonstrates
that invention promotion services are involved. Persons having
complaints about registered patent attorneys or agents should contact
the Office of Enrollment and Discipline at Mail Stop OED, Director of
the United States Patent and Trademark Office, PO Box 1450, Alexandria,
Virginia 22313-1450, and the
[[Page 228]]
attorney discipline section of the attorney's state licensing bar if an
attorney is involved.
[68 FR 14338, Mar. 25, 2003]
PART 5_SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents
Secrecy Orders
Sec.
5.1 Applications and correspondence involving national security.
5.2 Secrecy order.
5.3 Prosecution of application under secrecy orders; withholding patent.
5.4 Petition for rescission of secrecy order.
5.5 Permit to disclose or modification of secrecy order.
5.6-5.8 [Reserved]
Licenses for Foreign Exporting and Filing
5.11 License for filing in, or exporting to, a foreign country an
application on an invention made in the United States or
technical data relating thereto.
5.12 Petition for license.
5.13 Petition for license; no corresponding application.
5.14 Petition for license; corresponding U.S. application.
5.15 Scope of license.
5.16-5.17 [Reserved]
5.18 Arms, ammunition, and implements of war.
5.19 Export of technical data.
5.20 Export of technical data relating to sensitive nuclear technology.
5.25 Petition for retroactive license.
General
5.31-5.33 [Reserved]
Authority: 35 U.S.C. 2(b)(2), 41, 181-188; 22 U.S.C. 2751 et seq.;
42 U.S.C. 2011 et seq.; 22 U.S.C. 3201 et seq.; and the delegations to
the Director in 15 CFR 370.10(j), 22 CFR 125.04, and 10 CFR 810.7.
Source: 24 FR 10381, Dec. 22, 1959, unless otherwise noted.
Editorial Note: Nomenclature changes to part 5 appear at 68 FR
14338, Mar. 25, 2003.
Secrecy Orders
Sec.5.1 Applications and correspondence involving national security.
(a) All correspondence in connection with this part, including
petitions, should be addressed to: Mail Stop L&R, Commissioner for
Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Definitions. (1) Application as used in this part includes
provisional applications (Sec.1.9(a)(2) of this chapter),
nonprovisional applications (Sec.1.9(a)(3)), international
applications (Sec.1.9(b)), or international design applications (Sec.
1.9(n)).
(2) Foreign application as used in this part includes, for filing in
a foreign country or in a foreign or international intellectual property
authority (other than the United States Patent and Trademark Office
acting as a Receiving Office for international applications (35 U.S.C.
361, 37 CFR 1.412) or as an office of indirect filing for international
design applications (35 U.S.C. 382, 37 CFR 1.1002)) any of the
following: An application for patent; international application;
international design application; or application for the registration of
a utility model, industrial design, or model.
(c) Patent applications and documents relating thereto that are
national security classified (see Sec.1.9(i) of this chapter) and
contain authorized national security markings (e.g., ``Confidential,''
``Secret'' or ``Top Secret'') are accepted by the Office. National
security classified documents filed in the Office must be either hand-
carried to Licensing and Review or mailed to the Office in compliance
with paragraph (a) of this section.
(d) The applicant in a national security classified patent
application must obtain a secrecy order pursuant to Sec.5.2(a). If a
national security classified patent application is filed without a
notification pursuant to Sec.5.2(a), the Office will set a time period
within which either the application must be declassified, or the
application must be placed under a secrecy order pursuant to Sec.
5.2(a), or the applicant must submit evidence of a good faith effort to
obtain a secrecy order pursuant to Sec.5.2(a) from the relevant
department or agency in order to prevent abandonment of the application.
If evidence of a good faith effort to obtain a secrecy order pursuant to
Sec.5.2(a) from the relevant department or agency is submitted by the
applicant within the time period set by the Office, but the application
has not been declassified or placed
[[Page 229]]
under a secrecy order pursuant to Sec.5.2(a), the Office will again
set a time period within which either the application must be
declassified, or the application must be placed under a secrecy order
pursuant to Sec.5.2(a), or the applicant must submit evidence of a
good faith effort to again obtain a secrecy order pursuant to Sec.
5.2(a) from the relevant department or agency in order to prevent
abandonment of the application.
(e) An application will not be published under Sec.1.211 of this
chapter or allowed under Sec.1.311 of this chapter if publication or
disclosure of the application would be detrimental to national security.
An application under national security review will not be published at
least until six months from its filing date or three months from the
date the application was referred to a defense agency, whichever is
later. A national security classified patent application will not be
published under Sec.1.211 of this chapter or allowed under Sec.1.311
of this chapter until the application is declassified and any secrecy
order under Sec.5.2(a) has been rescinded.
(f) Applications on inventions made outside the United States and on
inventions in which a U.S. Government defense agency has a property
interest will not be made available to defense agencies.
[65 FR 54682, Sept. 8, 2000, as amended at 65 FR 57060, Sept. 20, 2000;
68 FR 14338, Mar. 25, 2003; 69 FR 29880, May 26, 2004; 80 FR 17969, Apr.
2, 2015; 85 FR 61607, Sept. 30, 2020]
Sec.5.2 Secrecy order.
(a) When notified by the chief officer of a defense agency that
publication or disclosure of the invention by the granting of a patent
would be detrimental to the national security, an order that the
invention be kept secret will be issued by the Commissioner for Patents.
(b) Any request for compensation as provided in 35 U.S.C. 183 must
not be made to the Patent and Trademark Office, but directly to the
department or agency which caused the secrecy order to be issued.
(c) An application disclosing any significant part of the subject
matter of an application under a secrecy order pursuant to paragraph (a)
of this section also falls within the scope of such secrecy order. Any
such application that is pending before the Office must be promptly
brought to the attention of Licensing and Review, unless such
application is itself under a secrecy order pursuant to paragraph (a) of
this section. Any subsequently filed application containing any
significant part of the subject matter of an application under a secrecy
order pursuant to paragraph (a) of this section must either be hand-
carried to Licensing and Review or mailed to the Office in compliance
with Sec.5.1(a).
[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53203, Oct. 10, 1997;
65 FR 54683, Sept. 8, 2000]
Sec.5.3 Prosecution of application under secrecy orders; withholding
patent.
Unless specifically ordered otherwise, action on the application by
the Office and prosecution by the applicant will proceed during the time
an application is under secrecy order to the point indicated in this
section:
(a) National applications under secrecy order which come to a final
rejection must be appealed or otherwise prosecuted to avoid abandonment.
Appeals in such cases must be completed by the applicant but unless
otherwise specifically ordered by the Commissioner for Patents will not
be set for hearing until the secrecy order is removed.
(b) An interference or derivation will not be instituted involving a
national application under secrecy order. An applicant whose application
is under secrecy order may suggest an interference (Sec.41.202(a) of
this title), but the Office will not act on the request while the
application remains under a secrecy order.
(c) When the national application is found to be in condition for
allowance except for the secrecy order the applicant and the agency
which caused the secrecy order to be issued will be notified. This
notice (which is not a notice of allowance under Sec.1.311 of this
chapter) does not require reply by the applicant and places the national
application in a condition of suspension until the secrecy order is
removed. When the secrecy order is removed the Patent
[[Page 230]]
and Trademark Office will issue a notice of allowance under Sec.1.311
of this chapter, or take such other action as may then be warranted.
(d) International applications and international design applications
under secrecy order will not be mailed, delivered, or otherwise
transmitted to the international authorities or the applicant.
International applications under secrecy order will be processed up to
the point where, if it were not for the secrecy order, record and search
copies would be transmitted to the international authorities or the
applicant.
(Pub. L. 94-131, 89 Stat. 685)
[43 FR 20470, May 11, 1978, as amended at 53 FR 23736, June 23, 1988; 62
FR 53203, Oct. 10, 1997; 69 FR 50002, Aug. 12, 2004; 77 FR 46629, Aug.
6, 2012; 80 FR 17969, Apr. 2, 2015]
Sec.5.4 Petition for rescission of secrecy order.
(a) A petition for rescission or removal of a secrecy order may be
filed by, or on behalf of, any principal affected thereby. Such petition
may be in letter form, and it must be in duplicate.
(b) The petition must recite any and all facts that purport to
render the order ineffectual or futile if this is the basis of the
petition. When prior publications or patents are alleged the petition
must give complete data as to such publications or patents and should be
accompanied by copies thereof.
(c) The petition must identify any contract between the Government
and any of the principals, under which the subject matter of the
application or any significant part thereof was developed, or to which
the subject matter is otherwise related. If there is no such contract,
the petition must so state.
(d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C.
181, from a secrecy order cannot be taken until after a petition for
rescission of the secrecy order has been made and denied. Appeal must be
taken within sixty days from the date of the denial, and the party
appealing, as well as the department or agency which caused the order to
be issued, will be notified of the time and place of hearing.
[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204, Oct. 10, 1997]
Sec.5.5 Permit to disclose or modification of secrecy order.
(a) Consent to disclosure, or to the filing of an application
abroad, as provided in 35 U.S.C. 182, shall be made by a ``permit'' or
``modification'' of the secrecy order.
(b) Petitions for a permit or modification must fully recite the
reason or purpose for the proposed disclosure. Where any proposed
disclosee is known to be cleared by a defense agency to receive
classified information, adequate explanation of such clearance should be
made in the petition including the name of the agency or department
granting the clearance and the date and degree thereof. The petition
must be filed in duplicate.
(c) In a petition for modification of a secrecy order to permit
filing abroad, all countries in which it is proposed to file must be
made known, as well as all attorneys, agents and others to whom the
material will be consigned prior to being lodged in the foreign patent
office. The petition should include a statement vouching for the loyalty
and integrity of the proposed disclosees and where their clearance
status in this or the foreign country is known all details should be
given.
(d) Consent to the disclosure of subject matter from one application
under secrecy order may be deemed to be consent to the disclosure of
common subject matter in other applications under secrecy order so long
as not taken out of context in a manner disclosing material beyond the
modification granted in the first application.
(e) Organizations requiring consent for disclosure of applications
under secrecy order to persons or organizations in connection with
repeated routine operation may petition for such consent in the form of
a general permit. To be successful such petitions must ordinarily recite
the security clearance status of the disclosees as sufficient for the
highest classification of material that may be involved.
[24 FR 10381, Dec. 22, 1959, as amended at 62 FR 53204 Oct. 10, 1997]
[[Page 231]]
Sec. Sec.5.6-5.8 [Reserved]
Licenses for Foreign Exporting and Filing
Sec.5.11 License for filing in, or exporting to, a foreign country
an application on an invention made in the United States or technical
data relating thereto.
(a) A license from the Commissioner for Patents under 35 U.S.C. 184
is required before filing any application for patent, including any
modifications, amendments, or supplements thereto or divisions thereof,
or for the registration of a utility model, industrial design, or model,
in a foreign country or in a foreign or international intellectual
property authority (other than the United States Patent and Trademark
Office acting as a Receiving Office for international applications (35
U.S.C. 361, 37 CFR 1.412) or as an office of indirect filing for
international design applications (35 U.S.C. 382, 37 CFR 1.1002)), if
the invention was made in the United States, and:
(1) An application on the invention has been filed in the United
States less than six months prior to the date on which the application
is to be filed; or
(2) No application on the invention has been filed in the United
States.
(b) The license from the Commissioner for Patents referred to in
paragraph (a) of this section would also authorize the export of
technical data abroad for purposes related to:
(1) The preparation, filing or possible filing, and prosecution of a
foreign application; and
(2) The use of a World Intellectual Property Organization online
service for preparing an international application for filing with the
United States Patent and Trademark Office acting as a Receiving Office
(35 U.S.C. 361, 37 CFR 1.412) without separately complying with the
regulations contained in 22 CFR parts 120 through 130 (International
Traffic in Arms Regulations of the Department of State), 15 CFR parts
730 through 774 (Export Administration Regulations of the Bureau of
Industry and Security, Department of Commerce), and 10 CFR part 810
(Assistance to Foreign Atomic Energy Activities Regulations of the
Department of Energy).
(c) Where technical data in the form of a patent application, or in
any form, are being exported for purposes related to the preparation,
filing or possible filing and prosecution of a foreign application,
without the license from the Commissioner for Patents referred to in
paragraphs (a) or (b) of this section, or on an invention not made in
the United States, the export regulations contained in 22 CFR parts 120
through 130 (International Traffic in Arms Regulations of the Department
of State), 15 CFR parts 730 through 774 (Export Administration
Regulations of the Bureau of Industry and Security, Department of
Commerce), and 10 CFR part 810 (Assistance to Foreign Atomic Energy
Activities Regulations of the Department of Energy) must be complied
with unless a license is not required because a United States
application was on file at the time of export for at least six months
without a secrecy order under Sec.5.2 being placed thereon. The term
``exported'' means export as it is defined in 22 CFR part 120, 15 CFR
part 734, and activities covered by 10 CFR part 810.
(d) If a secrecy order has been issued under Sec.5.2, an
application cannot be exported to, or filed in, a foreign country
(including an international agency in a foreign country), except in
accordance with Sec.5.5.
(e) No license pursuant to paragraph (a) of this section is
required:
(1) If the invention was not made in the United States, or
(2) If the corresponding United States application is not subject to
a secrecy order under Sec.5.2, and was filed at least six months prior
to the date on which the application is filed in a foreign country, or
(3) For subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
application if:
(i) A license is not, or was not, required under paragraph (e)(2) of
this section for the foreign application;
(ii) The corresponding United States application was not required to
be made available for inspection under 35 U.S.C. 181; and
(iii) Such modifications, amendments, and supplements do not, or did
not, change the general nature of the
[[Page 232]]
invention in a manner which would require any corresponding United
States application to be or have been available for inspection under 35
U.S.C. 181.
(f) A license pursuant to paragraph (a) of this section can be
revoked at any time upon written notification by the United States
Patent and Trademark Office. An authorization to file a foreign
application resulting from the passage of six months from the date of
filing of a United States patent application may be revoked by the
imposition of a secrecy order.
[49 FR 13461, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62
FR 53204, Oct. 10, 1997; 70 FR 56129, Sept. 26, 2005; 80 FR 17969, Apr.
2, 2015; 85 FR 61607, Sept. 30, 2020]
Sec.5.12 Petition for license.
(a) Filing of an application in the United States Patent and
Trademark Office on an invention made in the United States will be
considered to include a petition for license under 35 U.S.C. 184 for the
subject matter of the application. The filing receipt or other official
notice will indicate if a license is granted. If the initial automatic
petition is not granted, a subsequent petition may be filed under
paragraph (b) of this section.
(b) A petition for license must include the fee set forth in Sec.
1.17(g) of this chapter, the petitioner's address, and full instructions
for delivery of the requested license when it is to be delivered to
other than the petitioner. The petition should be presented in letter
form.
[48 FR 2714, Jan. 20, 1983, as amended at 49 FR 13462, Apr. 4, 1984; 62
FR 53204, Oct. 10, 1997; 65 FR 54683, Sept. 8, 2000; 69 FR 56546, Sept.
21, 2004; 80 FR 17970, Apr. 2, 2015; 85 FR 61607, Sept. 30, 2020]
Sec.5.13 Petition for license; no corresponding application.
If no corresponding national, international design, or international
application has been filed in the United States, the petition for
license under Sec.5.12(b) must also be accompanied by a legible copy
of the material upon which a license is desired. This copy will be
retained as a measure of the license granted.
[80 FR 17970, Apr. 2, 2015]
Sec.5.14 Petition for license; corresponding U.S. application.
(a) When there is a corresponding United States application on file,
a petition for license under Sec.5.12(b) must also identify this
application by application number, filing date, inventor, and title, but
a copy of the material upon which the license is desired is not
required. The subject matter licensed will be measured by the disclosure
of the United States application.
(b) Two or more United States applications should not be referred to
in the same petition for license unless they are to be combined in the
foreign or international application, in which event the petition should
so state and the identification of each United States application should
be in separate paragraphs.
(c) Where the application to be filed or exported abroad contains
matter not disclosed in the United States application or applications,
including the case where the combining of two or more United States
applications introduces subject matter not disclosed in any of them, a
copy of the application as it is to be filed or exported abroad, must be
furnished with the petition. If, however, all new matter in the
application to be filed or exported is readily identifiable, the new
matter may be submitted in detail and the remainder by reference to the
pertinent United States application or applications.
(Pub. L. 94-131, 89 Stat. 685)
[43 FR 20471, May 11, 1978, as amended at 49 FR 13462, Apr. 4, 1984; 62
FR 53204, Oct. 10, 1997; 80 FR 17970, Apr. 2, 2015]
Sec.5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to Sec. Sec.
5.12 through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181, will be eligible for
a license of the scope provided in this paragraph (a). This license
permits subsequent modifications, amendments, and supplements containing
additional subject matter to, or divisions of, a foreign application, if
such changes to the application do not alter the general nature of the
invention in a manner that would require the United States application
to
[[Page 233]]
have been made available for inspection under 35 U.S.C. 181. Grant of
this license authorizes the export of technical data pursuant to Sec.
5.11(b) and the filing of an application in a foreign country or with
any foreign or international intellectual property authority when the
technical data and the subject matter of the foreign application
correspond to that of the application or other materials reviewed
pursuant to Sec. Sec.5.12 through 5.14, upon which the license was
granted. This license includes the authority:
(1) To export and file all duplicate and formal application papers
in foreign countries or with foreign or international intellectual
property authorities;
(2) To make amendments, modifications, and supplements, including
divisions, changes or supporting matter consisting of the illustration,
exemplification, comparison, or explanation of subject matter disclosed
in the application; and
(3) To take any action in the prosecution of the foreign application
provided that the adding of subject matter or taking of any action under
paragraph (a)(1) or (2) of this section does not change the general
nature of the invention disclosed in the application in a manner that
would require such application to have been made available for
inspection under 35 U.S.C. 181 by including technical data pertaining
to:
(i) Defense services or articles designated in the United States
Munitions List applicable at the time of foreign filing, the unlicensed
exportation of which is prohibited pursuant to the Arms Export Control
Act, as amended, and 22 CFR parts 120 through 130; or
(ii) Restricted Data, sensitive nuclear technology or technology
useful in the production or utilization of special nuclear material or
atomic energy, dissemination of which is subject to restrictions of the
Atomic Energy Act of 1954, as amended, and the Nuclear Non-Proliferation
Act of 1978, as implemented by the regulations for Assistance to Foreign
Atomic Energy Activities, 10 CFR part 810, in effect at the time of
foreign filing.
(b) Applications or other materials that were required to be made
available for inspection under 35 U.S.C. 181 will be eligible for a
license of the scope provided in this paragraph (b). Grant of this
license authorizes the export of technical data pursuant to Sec.
5.11(b) and the filing of an application in a foreign country or with
any foreign or international intellectual property authority. Further,
this license includes the authority to export and file all duplicate and
formal papers in foreign countries or with foreign or international
intellectual property authorities and to make amendments, modifications,
and supplements to; file divisions of; and take any action in the
prosecution of the foreign application, provided subject matter
additional to that covered by the license is not involved.
(c) A license granted under Sec.5.12(b) pursuant to Sec.5.13 or
Sec.5.14 shall have the scope indicated in paragraph (a) of this
section, if it is so specified in the license. A petition, accompanied
by the required fee (Sec.1.17(g) of this chapter), may also be filed
to change a license having the scope indicated in paragraph (b) of this
section to a license having the scope indicated in paragraph (a) of this
section. No such petition will be granted if the copy of the material
filed pursuant to Sec.5.13 or any corresponding United States
application was required to be made available for inspection under 35
U.S.C. 181. The change in the scope of a license will be effective as of
the date of the grant of the petition.
(d) In those cases in which no license is required to file or export
the foreign application, no license is required to file papers in
connection with the prosecution of the foreign application not involving
the disclosure of additional subject matter.
(e) Any paper filed abroad or transmitted to a foreign or
international intellectual property authority following the filing of a
foreign application that changes the general nature of the subject
matter disclosed at the time of filing in a manner that would require
such application to have been made available for inspection under 35
U.S.C. 181 or that involves the disclosure of subject matter listed in
paragraph (a)(3)(i) or (ii) of this section must be separately licensed
in the same manner as a foreign application. Further, if no
[[Page 234]]
license has been granted under Sec.5.12(a) after filing the
corresponding United States application, any paper filed abroad or with
a foreign or international intellectual property authority that involves
the disclosure of additional subject matter must be licensed in the same
manner as a foreign application.
(f) Licenses separately granted in connection with two or more
United States applications may be exercised by combining or dividing the
disclosures, as desired, provided:
(1) Subject matter which changes the general nature of the subject
matter disclosed at the time of filing or which involves subject matter
listed in paragraph (a)(3) (i) or (ii) of this section is not
introduced, and
(2) In the case where at least one of the licenses was obtained
under Sec.5.12(b), additional subject matter is not introduced.
(g) A license does not apply to acts done before the license was
granted. See Sec.5.25 for petitions for retroactive licenses.
[49 FR 13462, Apr. 4, 1984, as amended at 56 FR 1928, Jan. 18, 1991; 62
FR 53204, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004; 80 FR 17970, Apr.
2, 2015; 85 FR 61607, Sept. 30, 2020]
Sec. Sec.5.16-5.17 [Reserved]
Sec.5.18 Arms, ammunition, and implements of war.
(a) The exportation of technical data relating to arms, ammunition,
and implements of war generally is subject to the International Traffic
in Arms Regulations of the Department of State (22 CFR parts 120 through
130); the articles designated as arms, ammunitions, and implements of
war are enumerated in the U.S. Munitions List (22 CFR part 121).
However, if a patent applicant complies with regulations issued by the
Commissioner for Patents under 35 U.S.C. 184, no separate approval from
the Department of State is required unless the applicant seeks to export
technical data exceeding that used to support a patent application in a
foreign country. This exemption from Department of State regulations is
applicable regardless of whether a license from the Commissioner for
Patents is required by the provisions of Sec. Sec.5.11 and 5.12 (22
CFR part 125).
(b) When a patent application containing subject matter on the
Munitions List (22 CFR part 121) is subject to a secrecy order under
Sec.5.2 and a petition is made under Sec.5.5 for a modification of
the secrecy order to permit filing abroad, a separate request to the
Department of State for authority to export classified information is
not required (22 CFR part 125).
[62 FR 53205, Oct. 10, 1997]
Sec.5.19 Export of technical data.
(a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the
Department of Commerce, a license is not required in any case to file a
patent application or part thereof in a foreign country if the foreign
filing is in accordance with the regulations (Sec. Sec.5.11 through
5.25) of the U.S. Patent and Trademark Office.
(b) An export license is not required for data contained in a patent
application prepared wholly from foreign-origin technical data where
such application is being sent to the foreign inventor to be executed
and returned to the United States for subsequent filing in the U.S.
Patent and Trademark Office (15 CFR 734.10(a)).
[70 FR 56129, Sept. 26, 2005]
Sec.5.20 Export of technical data relating to sensitive nuclear
technology.
Under regulations (10 CFR 810.7) established by the United States
Department of Energy, an application filed in accordance with the
regulations (Sec. Sec.5.11 through 5.25) of the Patent and Trademark
Office and eligible for foreign filing under 35 U.S.C. 184, is
considered to be information available to the public in published form
and a generally authorized activity for the purposes of the Department
of Energy regulations.
[62 FR 53205, Oct. 10, 1997]
Sec.5.25 Petition for retroactive license.
(a) A petition for a retroactive license under 35 U.S.C. 184 shall
be presented in accordance with Sec.5.13 or Sec.5.14(a), and shall
include:
(1) A listing of each of the foreign countries in which the
unlicensed patent application material was filed,
[[Page 235]]
(2) The dates on which the material was filed in each country,
(3) A verified statement (oath or declaration) containing:
(i) An averment that the subject matter in question was not under a
secrecy order at the time it was filed aboard, and that it is not
currently under a secrecy order,
(ii) A showing that the license has been diligently sought after
discovery of the proscribed foreign filing, and
(iii) An explanation of why the material was filed abroad through
error without the required license under Sec.5.11 first having been
obtained, and
(4) The required fee (Sec.1.17(g) of this chapter).
(b) The explanation in paragraph (a) of this section must include a
showing of facts rather than a mere allegation of action through error.
The showing of facts as to the nature of the error should include
statements by those persons having personal knowledge of the acts
regarding filing in a foreign country and should be accompanied by
copies of any necessary supporting documents such as letters of
transmittal or instructions for filing. The acts which are alleged to
constitute error should cover the period leading up to and including
each of the proscribed foreign filings.
(c) If a petition for a retroactive license is denied, a time period
of not less than thirty days shall be set, during which the petition may
be renewed. Failure to renew the petition within the set time period
will result in a final denial of the petition. A final denial of a
petition stands unless a petition is filed under Sec.1.181 within two
months of the date of the denial. If the petition for a retroactive
license is denied with respect to the invention of a pending application
and no petition under Sec.1.181 has been filed, a final rejection of
the application under 35 U.S.C. 185 will be made.
[49 FR 13463, Apr. 4, 1984, as amended at 56 FR 1929, Jan. 18, 1991; 62
FR 53206, Oct. 10, 1997; 69 FR 56546, Sept. 21, 2004; 77 FR 48826, Aug.
14, 2012]
General
Sec. Sec.5.31-5.33 [Reserved]
PART 6_CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT--
Table of Contents
Editorial Note: Part 6 is placed in the separate grouping of parts
pertaining to trademarks regulations.
PART 7_RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF
MARKS--Table of Contents
Editorial Note: Part 7 is placed in the separate grouping of parts
pertaining to trademarks regulations.
[[Page 237]]
INDEX I_RULES RELATING TO PATENTS
Editorial Note: This listing is provided for information purposes
only. It is compiled and kept up-to-date by the Department of Commerce.
This index is updated as of July 1, 2021.
Section
A
Abandoned applications:
Abandonment by failure to prosecute................................1.135
Abandonment during interference................................41.127(b)
Abandonment for failure to pay issue fee...........................1.316
Express abandonment................................................1.138
To avoid publication............................................1.138(c)
Referred to in issued patents.......................................1.14
Revival of.........................................................1.137
When open for public inspection.....................................1.14
Abandonment of application. (See Abandoned applications)
Abstract of the disclosure.(content, physical requirements)......1.72(b)
Separate sheet required for commencement of..........1.52(b)(4), 1.72(b)
Arrangement in overall application...........................1.77, 1.163
Access to pending applications (limited)............................1.14
Action by applicant.............................1.111-1.116, 1.121-1.138
Address, Correspondence, only one recognized by Office...........1.33(c)
Address for notice to Director of appeal to Fed. Cir................90.2
Address of Solicitor's Office..................................1.1(a)(3)
Address of the Patent and Trademark Office...........................1.1
Mail Stop Assignment Recordation Services................1.1(a)(4), 3.27
Mail Stop Document Services....................................1.1(a)(4)
Mail Stop Ex Parte Reexam...........................1.1(c)(1), 1.1(c)(4)
Mail Stop Inter Partes Reexam..................................1.1(c)(2)
Mail Stop Interference..........................................41.10(b)
Mail Stop OED.............................................1.1(a)(5), 4.6
Mail Stop Patent Ext..............................................1.1(e)
Mail Stop PCT.....................................................1.1(b)
Mail Stop Supplemental Examination.............................1.1(c)(3)
Adjustment of patent term. (See Patent term adjustment)
Administrator, executor, or other legal representative may make
application and receive patent................................1.42, 1.43
In an international application....................................1.422
Oath or declaration.................................................1.64
Admission to practice. (See Attorneys and agents)
Affidavit (see also Oath in patent application):
After appeal....................................................41.33(d)
In support of application for reissue..............................1.175
To disqualify commonly owned patent as prior art................1.131(c)
To overcome cited patent or publication............................1.131
Traversing grounds of rejection....................................1.132
Agents. (See Attorneys and agents)
Allowance and issue of patent:
Amendment after allowance (before or with issue fee)...............1.312
Deferral of issuance...............................................1.314
Delivery of patent.................................................1.315
[[Page 238]]
Failure to pay issue fee.................................1.137(c), 1.316
Issuance of patent.................................................1.314
Notice of allowance................................................1.311
Patent to issue upon payment of issue fee..........................1.314
Reasons for.....................................................1.104(e)
Withdrawal from issue..............................................1.313
Amendment:
Adding or substituting claims...............................1.111, 1.121
After appeal.........................................1.116, 41.33, 41.63
After decision on appeal, based on new rejection of Patent Trial
and Appeal Board................................................41.50(b)
After final action..........................................1.116, 41.33
After final action (transitional procedures).......................1.129
After notice of allowance..........................................1.312
By patent owner....................................................1.530
Copying claim of another application for interference.............41.202
Copying claim of issued patent....................................41.202
Deletions and insertions...........................................1.121
Drawings............................................1.84, 1.85, 1.121(d)
Manner of making...................................................1.121
May be required....................................................1.121
New matter prohibited.................................1.121(f), 1.173(a)
Numbering of claims................................................1.126
Of amendments......................................................1.121
Of claims...................................................1.111, 1.121
Of disclosure......................................................1.121
Of drawing......................................................1.121(d)
Of specification...................................................1.121
Paper and writing...................................................1.52
Preliminary........................................................1.115
Proposed during interference..............................41.121, 41.208
Provisional application................................1.53(c), 1.121(k)
Reexamination proceedings.........................1.121(j), 1.530, 1.941
Reissue...............................................1.121(i), 1.173(b)
Requisites of........................1.33(b), 1.111, 1.116, 1.121, 1.125
Right to amend................................1.111, 1.114, 1.116, 1.121
Signature to.....................................................1.33(b)
Substitute specification...........................................1.125
Time for...........................................................1.134
To applications in interference...........................41.121, 41.208
To correct inaccuracies.........................................1.121(e)
To correspond to original drawing or specification..............1.121(e)
To reissues..............................................1.121(i), 1.173
To save from abandonment...........................................1.135
America Invents Act Post-Grant Proceedings (See Inter partes review,
post-grant review, covered business method review, and derivation
proceeding)
Amino Acid Sequences. (See Nucleotide and/or Amino Acid Sequences)
Appeal to Court of Appeals for the Federal Circuit:
Fee provided by rules of court......................................90.2
From Patent Trial and Appeal Board.............................90.1-90.3
Notice and reasons of appeal........................................90.2
Reexamination, inter partes proceeding.............................1.983
Time for............................................................90.3
Appeal to Patent Trial and Appeal Board:
Action following decision..........................................41.54
Affidavits after appeal.........................................41.33(d)
Brief..............................................................41.37
Decision by Board...............................................41.50(b)
[[Page 239]]
Examiner's answer..................................................41.39
Fees........................................................41.20, 41.45
Hearing of.........................................................41.47
New grounds for rejecting a claim...............................41.50(b)
Notice of appeal...................................................41.31
Reexamination, inter partes proceeding.............................1.959
Rehearing..........................................................41.52
Reopening after decision...........................................1.198
Reply brief........................................................41.41
Statement of grounds for rejecting, by Patent Trial and Appeal
Board..............................................................41.50
Applicant for patent.........................................1.42, 1.421
Change.......................................................1.46, 1.472
Deceased or legally incapacitated inventor...................1.43, 1.422
Executor or administrator...........................................1.43
Informed of application number...................................1.54(b)
Letters for, sent to attorney or agent...........................1.33(a)
May be represented by patent practitioner...........................1.31
Must be represented by patent practitioner if juristic entity.......1.31
Personal attendance unnecessary......................................1.2
Required to conduct business with decorum and courtesy...............1.3
Required to report assistance received............................1.4(g)
Application data sheet..............................................1.76
Application for patent (see also Abandoned applications, Claims,
Drawing, Examination of application Reissues, Provisional applications,
Specification):
Access to...........................................................1.14
Acknowledgement of filing........................................1.54(b)
Alteration after execution.......................................1.52(c)
Alteration before execution......................................1.52(c)
Applicant...........................................................1.42
Application number and filing date..................................1.54
Arrangement...........................................1.77, 1.154, 1.163
Continuation or division, reexecution not required...............1.63(d)
Continued Prosecution Application (CPA), Design..................1.53(d)
Copies of, furnished to applicants...............................1.59(c)
Cross-references to related applications............................1.78
Deceased or legally incapacitated inventor....................1.43, 1.64
International phase................................................1.422
Declaration in lieu of oath.........................................1.68
Duty of disclosure..................................................1.56
Elements of, order and arrangement of.................1.77, 1.154, 1.163
Filed apparently without all figures of drawing:
Petition and filing of missing figures seeking new filing date.....1.182
Petition asserting all figures of drawing were filed.............1.53(e)
Filed apparently without all pages of specification, petition
asserting all pages were filed...................................1.53(e)
Filed apparently without any drawing, petition asserting drawing
was filed, or was not necessary, or adding drawing and seeking new
filing date......................................................1.53(e)
Filed by other than inventor............................1.42, 1.43, 1.46
Filed by reference...............................................1.57(a)
International phase......................................1.421(c), 1.422
Filing and national fees..............................1.16, 1.445, 1.492
Filing date.........................................................1.53
International application.......................................1.431(b)
Foreign language oath or declaration................................1.69
Formulas and tables.................................................1.58
General requisites..................................................1.51
[[Page 240]]
Identification required in letters concerning........................1.5
Incomplete application not forwarded for examination................1.53
Language, paper, writing, margin....................................1.52
Later completion of nonprovisional application...................1.53(f)
Must be made by actual inventor, with exceptions........1.42, 1.46, 1.64
Names of all inventors required...............................1.41, 1.53
Non-English language......................................1.52(b)(1)(ii)
Nonprovisional application forwarded for examination only when
complete............................................................1.53
Nonprovisional filing of petition to convert to a provisional
application...................................................1.53(c)(2)
Owned by Government.............................................1.103(f)
Papers forming part of original disclosure not to be expunged
1.59(a)(2)
Parts filed separately..............................................1.54
Parts of application desirably filed together.......................1.54
Parts of complete application.......................................1.51
Processing fees.....................................................1.17
Provisional application............1.9(a)(2), 1.51(c), 1.53(c), 1.121(k)
Publication. (See Publication of applications)
Relating to atomic energy........................................1.14(d)
Reservation for future application not permitted....................1.79
Secrecy order....................................................5.1-5.5
Tables and formulas.................................................1.58
To be made to Director of the U.S. Patent and Trademark Office......1.51
To claim one independent and distinct invention....................1.141
Two or more by same party with patentably indistinct claims.....1.78(f),
(g)
Application number..............................1.5(a), 1.53(a), 1.54(b)
Application size fee....................................1.16(s), 1.52(f)
Arbitration award filing...........................................1.335
Arbitration in interference.......................................41.126
Assertion of micro entity status....................................1.29
Assertion of small entity status.................................1.27(c)
Assignee:
Correspondence held with assignee of entire interest..........3.71, 3.73
Establishing ownership...........................................3.73(b)
If of entire interest, patent may issue to....................1.46, 3.81
If of undivided part interest, correspondence will be held with
inventor............................................................1.33
If of undivided part interest, must assent to application for
reissue of patent..................................................1.172
If of undivided part interest, patent may issue jointly.......1.46, 3.81
May conduct prosecution of application........................3.71, 3.73
May take action in interference.....................................41.9
Assignments and recording:
Abstracts of title, fee for......................................1.19(b)
Conditional assignments.............................................3.56
Correction of Cover Sheet errors....................................3.34
Cover Sheet required..........................................3.28, 3.31
Date of receipt is date of record...................................3.51
Effect of recording.................................................3.54
Fees.......................................................1.21(h), 3.41
If recorded before payment of issue fee, patent may issue to
assignee............................................................3.81
Impact on entitlement to micro entity status........................1.29
Impact on entitlement to small entity status........................1.27
May serve as inventor's oath or declaration......................1.63(e)
Must be recorded in Patent and Trademark Office to issue patent to
assignee............................................................3.81
[[Page 241]]
Must identify patent or application.................................3.21
Orders for copies of................................................1.12
Patent may issue to assignee........................................3.81
Recording of assignments............................................3.11
Records open to public inspection...................................1.12
Requirements for recording.....................................3.21-3.41
What will be accepted for recording.................................3.11
Atomic energy applications reported to Department of Energy.........1.14
Attorneys and agents:
Acting in a representative capacity...........................1.33, 1.34
Assignment will not operate as a revocation of power................1.36
Certificate of good standing..................................1.21(a)(4)
Office cannot aid in selection of...................................1.31
Personal interviews with examiners.................................1.133
Power of attorney...................................................1.32
Privileged communications..........................................42.57
Registration fees................................................1.21(a)
Representation in international application........................1.455
Representative capacity.......................................1.33, 1.34
Required to conduct business with decorum and courtesy...............1.3
Revocation of power..............................................1.36(a)
Withdrawal of..............................................1.36(b), 41.5
Authorization of agents. (See Attorneys and agents)
Award in arbitration...............................................1.335
B
Balance in deposit account..........................................1.25
Basic filing fee....................................................1.16
Basic national fee.................................................1.492
Benefit of earlier application......................................1.78
Bill in equity. (See Civil action)
Biological material. (See Deposit of Biological material)
Board of Patent Appeals and Interferences (renamed as Patent Trial and
Appeal Board). (See Appeal to Patent Trial and Appeal Board, Patent
Trial and Appeal Board, Inter Partes Review, Post-Grant Review,
Derivation Proceeding, Patent Trial Practice and Procedure, and
Interferences)
Briefs:
In petitions to Director...........................................1.181
On appeal to Patent Trial and Appeal Board.........................41.37
Business to be conducted with decorum and courtesy...................1.3
Business to be transacted in writing.................................1.2
C
Certificate of correction...................................1.322, 1.323
Fee..............................................................1.20(a)
Mistakes not corrected.............................................1.325
Certificate of mailing (as first class mail) or transmission.........1.8
Certificate, reexamination.........................................1.570
Certified copies of records, papers, etc....................1.4(f), 1.13
Chemical and mathematical formulas and tables.......................1.58
Citation of prior art in patent....................................1.501
Citation of references by examiner..............................1.104(d)
Civil action...................................................90.1-90.3
Claims (see also Examination of applications):
Amendment of.......................................................1.121
Dependent...........................................................1.75
Design patent......................................................1.153
[[Page 242]]
International.....................................................1.1025
May be in dependent form............................................1.75
More than one permitted.............................................1.75
Multiple dependent..................................................1.75
Must conform to invention and specification.........................1.75
Notice of rejection of.............................................1.104
Numbering of.......................................................1.126
Part of complete application........................................1.51
Patentably indistinct, same applicant or owner..............1.78(f), (g)
Plant patent.......................................................1.164
Rejection of....................................................1.104(c)
Required............................................................1.75
Separate Sheet required for commencement of claim(s)....1.52(b), 1.75(h)
Twice or finally rejected before appeal.........................41.31(a)
Color drawing.................................................1.84(a)(2)
Color photographs.............................................1.84(b)(2)
Common Ownership, statement by assignee may be required.............1.78
Compact disc submissions:
Computer program listings...........................................1.96
Requirements.....................................................1.52(e)
Sequence listings...............................................1.821(c)
Tables..............................................................1.58
Complaints against examiners, how presented..........................1.3
Composition of matter, specimens of ingredients may be required.....1.93
Computer program listings...........................................1.96
Concurrent office proceedings......................................1.565
Conduct of ex parte reexamination proceedings......................1.550
Continued examination, request for.................................1.114
Continued Prosecution Application (CPA), Design..................1.53(d)
Continuing application for invention disclosed and claimed in
prior application................................................1.53(b)
Copies of patents, published applications, records, etc......1.11, 1.12,
1.13
Copies of records, fees....................................1.19(b), 1.59
Copyright notice in drawings.....................................1.84(s)
Copyright notice in specification................................1.71(d)
Corrected publication of application...............................1.221
Correction, certificate of..................................1.322, 1.323
Correction of inventorship...................................1.48, 1.324
Correspondence:
Address, only one recognized.....................................1.33(c)
Addresses for non-trademark correspondence...........................1.1
Business with the Office to be transacted by.........................1.2
Discourteous communications not entered..............................1.3
Double, with different parties in interest not allowed..............1.33
Facsimile transmissions...........................................1.6(d)
Held with attorney or agent.........................................1.33
Identification of application or patent in letter relating to........1.5
Involving national security..........................................5.1
May be held exclusively with assignee of entire interest............3.71
Nature of............................................................1.4
Patent owners in reexamination...................................1.33(c)
Receipt of letters and papers........................................1.6
Rules for conducting in general..................................1.1-1.8
Separate letter for each subject or inquiry.......................1.4(c)
Signature requirements............................................1.4(d)
When no attorney or agent...........................................1.33
With attorney or agent after power or authorization is filed........1.33
[[Page 243]]
Court of Appeals for the Federal Circuit, appeal to. (See Appeal to
Court of Appeals for the Federal Circuit)
CPA (Continued Prosecution Application), Design..................1.53(d)
Credit card payment.................................................1.23
Covered Business Method Patent Review. (See also Patent Trial Practice
and Procedure; Post-Grant Review):
General....................................................42.300-42.304
Procedure; pendency...............................................42.300
Definitions.......................................................42.301
Content of petition...............................................42.304
Time for filing...................................................42.303
Who may petition..................................................42.302
Customer Number:
Defined.......................................................1.32(a)(5)
Required to establish a Fee Address.............................1.363(c)
D
Date of invention of subject matter of individual claims...........1.110
Day for taking any action or paying any fee falling on Saturday,
Sunday, or Federal holiday...................................1.7, 1.9(h)
Daytime telephone number.........................................1.33(a)
Death or legal incapacitation of inventor...........................1.43
In an international application....................................1.422
Decision on appeal by the Patent Trial and Appeal Board............41.50
Action following decision..........................................41.54
Declaration (See also Oath in patent application).
Foreign language....................................................1.69
In lieu of oath.....................................................1.68
In patent application...............................................1.68
Requirements to enter the U.S. national phase......................1.497
Deferral of examination............................................1.103
Definitions:
Applicant...........................................................1.42
Assignment...........................................................3.1
Customer Number...............................................1.32(a)(5)
Document.............................................................3.1
Effective filing date of a claimed invention.......................1.109
Federal holiday within the District of Columbia...................1.9(h)
Inventorship................................................1.9(d), 1.41
Joint Research Agreement..........................................1.9(e)
Micro entity........................................................1.29
National and international applications..............................1.9
National security classified......................................1.9(i)
Nonprofit organization(for small entity purposes).............1.27(a)(3)
Nonprovisional application.....................................1.9(a)(3)
Paper.............................................................1.9(k)
Person (for small entity purposes)............................1.27(a)(1)
Power of attorney.............................................1.32(a)(2)
Principal.....................................................1.32(a)(3)
Provisional application........................................1.9(a)(2)
Published application.............................................1.9(c)
Recorded document....................................................3.1
Revocation....................................................1.32(a)(4)
Service of process.....................................15 C.F.R. Part 15
Small business concern (for small entity purposes)............1.27(a)(2)
Small entity.....................................................1.27(a)
Terms under Patent Cooperation Treaty..............................1.401
[[Page 244]]
Delivery of patent.................................................1.315
Deposit accounts....................................................1.25
Fees.............................................................1.21(b)
Deposit of computer program listings................................1.96
Deposit of biological material:
Acceptable depository..............................................1.803
Biological material................................................1.801
Examination procedures.............................................1.809
Furnishing of samples..............................................1.808
Need or Opportunity to make a deposit..............................1.802
Replacement or supplemental deposit................................1.805
Term of deposit....................................................1.806
Time of making original deposit....................................1.804
Viability of deposit...............................................1.807
Depositions (See also Testimony in interferences):
Certificate of officer to accompany............................41.157(e)
Formalities to be observed in preparing...........................41.157
Person before whom taken..........................................41.157
Description of invention. (See Specification)
Design Patent Applications:
Arrangement of specification.......................................1.154
Claim...........................................................1.153(a)
Description.....................................................1.153(a)
Drawing............................................................1.152
Expedited Examination..............................................1.155
Filing fee.......................................................1.16(b)
International. (See Hague Agreement)
Issue fee........................................................1.18(b)
Oath............................................................1.153(b)
Rules applicable...................................................1.151
Title...........................................................1.153(a)
Determination of request for ex parte reexamination................1.515
Derivation Proceeding (See also Patent Trial Practice and Procedure)
General....................................................42.400-42.407
Procedure; pendency...............................................42.400
Definitions.......................................................42.401
Who may petition..................................................42.402
Time for filing...................................................42.403
Derivation Fee.............................................42.15, 42.404
Content of petition...............................................42.405
Service of petition...............................................42.406
Filing date.......................................................42.407
Institution of derivation proceeding..............................42.408
After Institution..........................................42.409-42.412
Settlement agreement..............................................42.409
Arbitration.......................................................42.410
Common interests in the invention.................................42.411
Public availability of Board records..............................42.412
Director of the USPTO (See also Petition to the Director):
Address of...........................................................1.1
Availability of decisions by........................................1.14
Cases decided by Board reopened only by............................1.198
Initiates ex parte reexamination...................................1.520
Disclaimer, statutory:
During interference............................................41.127(b)
Fee..............................................................1.20(d)
Requirements of....................................................1.321
Terminal...........................................................1.321
[[Page 245]]
Discovery in interferences........................................41.150
Division. (See Restriction of application)
Division of patent on reissue......................................1.177
Document supply fees................................................1.19
Drawing:
Amendment of....................................................1.121(d)
Annotated drawings..............................................1.121(d)
Arrangement of views.............................................1.84(i)
Arrows...........................................................1.84(r)
Character of lines...............................................1.84(l)
Color.........................................................1.84(a)(2)
Content of drawing..................................................1.83
Conventional features............................................1.83(a)
Copyright notice.................................................1.84(s)
Correction....................................1.84(w), 1.85(c), 1.121(d)
Cost of copies of...................................................1.19
Description, brief and detailed.....................................1.74
Design application.................................................1.152
Figure for front page................................1.76(b)(3), 1.84(j)
Filed with application..............................................1.81
Graphics.........................................................1.84(d)
Hatching and shading.............................................1.84(m)
Holes............................................................1.84(x)
Identification...................................................1.84(c)
If of an improvement, must show connection with old structure....1.83(b)
Incorporation by reference to prior application.....................1.57
In international applications......................................1.437
Ink...........................................................1.84(a)(1)
Lead lines.......................................................1.84(q)
Legends..........................................................1.84(o)
Letters..........................................................1.84(p)
Location of names................................................1.84(c)
Margin...........................................................1.84(g)
Mask work notice.................................................1.84(s)
Must show every feature of the invention.........................1.83(a)
No return or release.............................................1.85(b)
Numbering of sheets..............................................1.84(t)
Numbering of views...............................................1.84(u)
Numbers..........................................................1.84(p)
Original should be retained by applicant.........................1.81(a)
Paper............................................................1.84(e)
Part of application papers.......................................1.52(b)
Photographs......................................................1.84(b)
Plant patent application.....................................1.81, 1.165
Printed and published by the Office when patented...................1.84
Reference letters, numerals, and characters................1.74, 1.84(p)
Reissue......................................................1.173(a)(2)
Release not permitted............................................1.85(b)
Replacement drawings............................................1.121(d)
Required by law when necessary for understanding....................1.81
Scale............................................................1.84(k)
Security markings................................................1.84(v)
Shading..........................................................1.84(m)
Size of sheet....................................................1.84(f)
Standards for drawings..............................................1.84
Symbols..........................................................1.84(n)
Views............................................................1.84(h)
When necessary, part of complete application........................1.51
[[Page 246]]
Duplicate copies..................................................1.4(b)
Duty of disclosure....................................1.56, 1.555, 1.933
Patent term extension..............................................1.765
E
Early publication of application...................................1.219
Eighteen-month publication of applications. (See Publication of
applications)
Election of species................................................1.146
Electronic documents.............................................1.52(e)
Application size fee....................................1.16(s), 1.52(f)
Non-electronic filing fee........................................1.16(t)
Electronic filing of application...................1.6(a)(4), 1.52(a)(5)
Establishing micro entity status....................................1.29
Establishing small entity status..............................1.27, 1.28
Evidence. (See Testimony in interferences)
Ex parte reexamination. (See Reexamination)
Examination of applications:
Advancement of examination.........................................1.102
As to form...................................................1.104(a)(1)
Citation of references..........................................1.104(d)
Completeness of examiner's action...............................1.104(b)
Deferral of........................................................1.103
Examiner's action...............................................1.104(a)
International-type search....................................1.104(a)(3)
Nature of examination...........................................1.104(a)
Prioritized examination.........................................1.102(e)
Reasons for allowance...........................................1.104(e)
Reconsideration after rejection if requested.......................1.111
Reissue............................................................1.176
Rejection of claims.............................................1.104(c)
Request for continued examination(RCE).............................1.114
Requirement for information by examiner............................1.105
Suspension of action by the Office.................................1.103
Examiners:
Answers on appeal..................................................41.39
Complaints against...................................................1.3
Interviews with.............................................1.133, 1.560
Executors..............................................1.42, 1.64, 1.422
Exhibits. (See Models and exhibits)
Expedited examination of design applications.......................1.155
Export of technical data..........................5.11, 5.15, 5.19, 5.20
Express abandonment................................................1.138
To avoid publication............................................1.138(c)
Priority Mail Express[supreg]......................................1.10
Date of receipt of...................................................1.6
Petition in regard to...............................................1.10
Expungement of information..........................................1.59
Extension of patent term. (See also Patent term adjustment):
Due to examination delay under the URAA (35 U.S.C. 154)............1.701
Due to regulatory review period (35 U.S.C. 156):
Applicant for......................................................1.730
Application for....................................................1.740
Calculation of term:
Animal Drug Product................................................1.778
Food or color additive.............................................1.776
Human drug product.................................................1.775
Medical device.....................................................1.777
[[Page 247]]
Veterinary biological product......................................1.779
Certificate........................................................1.780
Conditions for.....................................................1.720
Determination of eligibility.......................................1.750
Duty of disclosure.................................................1.765
Filing date of application.........................................1.741
Formal requirements................................................1.740
Incomplete application.............................................1.741
Interim extension...........................................1.760, 1.790
Multiple applications..............................................1.785
Patents subject to.................................................1.710
Signature requirements for application.............................1.730
Withdrawal of application..........................................1.770
Extension of time..................................................1.136
Fees.............................................................1.17(a)
Interference proceedings............................................41.4
Reexamination proceedings.......................................1.550(c)
F
Facsimile transmissions......................................1.6(d), 1.8
Federal Holiday, time for taking action......................1.7, 1.9(h)
Fees and payment of money:
Credit card......................................................1.23(b)
Deposit account.....................................................1.25
Document supply fees................................................1.19
Extension of time................................................1.17(a)
Fee on appeal to the Court of Appeals for the Federal Circuit
provided by rules of court..........................................90.2
Fees payable in advance..........................................1.22(a)
For international-type search report.............................1.21(e)
Foreign filing license petition..................................1.17(g)
Itemization required.............................................1.22(b)
Method of payment...................................................1.23
Money by mail at risk of sender..................................1.23(a)
Money paid by mistake or in excess..................................1.26
Necessary for application to be complete............................1.51
Petition fees........................1.17(f), 1.17(g), 1.17(h), 41.20(a)
Prioritized examination..........................................1.17(c)
Processing fees..................................................1.17(i)
Publication of application.............................1.18(d), 1.211(e)
Reexamination request............................................1.20(c)
Refunds.......................................................1.26, 1.28
Relating to international applications......................1.445, 1.492
Schedule of fees and charges...................................1.16-1.21
Files open to the public......................................1.11, 1.14
Filing, search and examination fees.................................1.16
Filing date of application..........................................1.53
Filing of interference settlement agreements......................41.205
Final rejection:
Appeal from........................................................41.31
Response to...................................1.113, 1.114, 1.116, 1.129
When and how given.................................................1.113
First Class Mail.....................................................1.8
Foreign application.................................................1.55
License to file................................................5.11-5.25
Foreign country:
Taking oath in......................................................1.66
[[Page 248]]
Taking testimony in.......................................41.156, 41.157
Foreign mask work protection....................................Part 150
Evaluation of request..............................................150.4
Definition.........................................................150.1
Duration of proclamation...........................................150.5
Initiation of evaluation...........................................150.2
Mailing address....................................................150.6
Submission of requests.............................................150.3
Formulas and tables in patent applications..........................1.58
Fraud practiced or attempted on Office.......1.27(h), 1.56, 1.555, 1.765
Freedom of Information Act......................................Part 102
G
Gazette. (See Official Gazette)
General authorization to charge deposit account.....................1.25
General information and correspondence.....................1.1-1.8, 1.10
Government acquisition of foreign patent rights.................Part 501
Government employee invention...................................Part 501
Government interest in patent, recording of.......3.11, 3.31, 3.41, 3.58
Governmental registers..............................................3.58
H
Hague Agreement:
International design applications..........................1.1001-1.1071
Access to........................................................1.14(j)
Applied for by person/entity other than inventor.................1.46(b)
Benefit claim in........................................1.78(d), 1.78(e)
Definition of.....................................................1.9(n)
Deposit account usage in............................................1.25
Drawing corrections in..........................................1.121(d)
Expedited examination of...........................................1.155
Incorporation by reference as to inadvertently omitted portion of
specification or drawing(s)......................................1.57(b)
Inventorship in..................................................1.41(f)
Priority claim in................................................1.55(m)
Hearings:
Before the Patent Trial and Appeal Board...........................41.47
Fee for appeal hearing.............................................41.20
In disciplinary proceedings.......................................11. 44
Of motions in interferences.......................................41.124
Holiday, time for action expiring on............................1.6, 1.7
I
Identification of application, patent or registration................1.5
Incorporation by Reference..........................................1.57
Information disclosure statement:
At time of filing application....................................1.51(d)
Content of..........................................................1.98
Not permitted in provisional applications........................1.51(d)
Reexamination...............................................1.555, 1.902
To comply with duty of disclosure...................................1.97
Information, Public.............................................Part 102
Inter partes reexamination. (See Reexamination)
Interferences. (See also Depositions, Notice, Statement in
interferences, Testimony in interferences):
Abandonment of the contest.....................................41.127(b)
[[Page 249]]
Access to applications............................................41.109
Action by examiner after interference.............................41.127
Addition of new party by judge....................................41.203
Amendment during..........................................41.121, 41.208
Appeal to the Court of Appeals for the Federal Circuit.........90.1-90.3
Applicant requests................................................41.202
Arbitration.......................................................41.126
Burden of proof................................................41.121(b)
Civil action...................................................90.1-90.3
Concession of priority.........................................41.127(b)
Correspondence.....................................................41.10
Decision on motions...............................................41.125
Declaration of interference.......................................41.203
Definition................................................41.100, 41.201
Disclaimer to avoid interference...............................41.127(b)
Discovery.........................................................41.150
Extensions of time..................................................41.4
Identifying claim from patent.....................................41.202
In what cases declared............................................41.203
Inspection of cases of opposing parties...........................41.109
Interference with a patent........................................41.202
Judgment..........................................................41.127
Junior party fails to overcome filing date of senior party........41.204
Jurisdiction of interference......................................41.103
Manner of service of papers.......................................41.106
Motions...........................................41.121, 41.155, 41.208
Notice and access to applications of opposing parties.............41.109
Notice of basis for relief................................41.120, 41.204
Notice of reexamination, reissue, protest or litigation.............41.8
Notice to file civil action.........................................90.2
Oral argument.....................................................41.124
Ownership of applications or patents involved.....................41.206
Petitions...........................................................41.3
Preparation for...................................................41.202
Priority statement................................................41.204
Prosecution by assignee.............................................41.9
Recommendation by Patent Trial and Appeal Board...................41.127
Record and exhibits.......................................41.106, 41.154
Records of, when open to public...............................1.11, 41.6
Reissue filed by patentee during..................................41.203
Request by applicant..............................................41.202
Return of unauthorized papers.....................................41.128
Review of decision by civil action.............................90.1-90.3
Same party........................................................41.206
Sanctions for failure to comply with rules or order...............41.128
Sanctions for taking and maintaining a frivolous position.........41.128
Secrecy order cases...............................................5.3(b)
Service of papers.................................................41.106
Status of claims of defeated applicant after interference.........41.127
Statutory disclaimer by patentee during........................41.127(b)
Suggestion of claims for interference.............................41.202
Suspension of other proceedings...................................41.103
Testimony copies..................................................41.157
Time period for completion........................................41.200
Times for discovery and taking testimony..........41.150, 41.156, 41.157
Translation of document in foreign language.......................41.154
International application. (See Patent Cooperation Treaty)
[[Page 250]]
International Bureau...............................................1.415
International design application. (See Hague Agreement)
International Preliminary Examining Authority, United States as....1.416
International Searching Authority, United States as................1.413
Interview summary..................................................1.133
Interviews with examiner....................................1.133, 1.560
Inter Partes Review. (See also Patent Trial Practice and Procedure):
General....................................................42.100-42.107
Procedure; pendency...............................................42.100
Who may petition..................................................42.101
Time for filing...................................................42.102
Fee........................................................42.15, 42.103
Content of petition...............................................42.104
Service of petition...............................................42.105
Filing date.......................................................42.106
Preliminary response..............................................42.107
Instituting a review..............................................42.108
After Institution..........................................42.120-42.123
Patent owner response.............................................42.120
Motion to amend...................................................42.121
Multiple proceedings; joinder.....................................42.122
Supplemental information..........................................42.123
Invention promoters:
Complaints regarding.............................................4.1-4.6
Publication of.............................................4.1, 4.3, 4.5
Reply to.............................................................4.4
Submission of........................................................4.3
Withdrawal of........................................................4.4
Definition...........................................................4.2
Inventor (see also Oath in patent application):
Death or legal incapacity of........................................1.43
In international application......................................1.422,
May apply for patent................................................1.42
Unavailable or refuses to sign application..........................1.64
Inventor's certificate priority benefit.............................1.55
Inventorship and date of invention of the subject matter of
individual claims..................................................1.110
Issue fee...........................................................1.18
Issue of patent. (See Allowance and issue of patent)
J
Joinder of inventions in one application.....................1.141-1.146
Joint inventors........................1.45, 1.47, 1.48, 1.324, 1.421(b)
Joint patent to inventor and assignee.........................1.46, 3.81
Jurisdiction:
After decision by Patent Trial and Appeal Board.............1.197, 1.198
After notice of allowance...................................1.312, 1.313
Of involved files in contested case...............................41.103
L
Law School Clinic Certification Program......................11.16-11.17
Legal representative of deceased or incapacitated inventor...1.42, 1.43,
1.64
In international application.......................................1.422
Legal Processes.................................................Part 104
Legibility of papers which are to become part of the permanent
Office records...................................................1.52(a)
Letters to the Office. (See Correspondence)
[[Page 251]]
Library service fee..............................................1.19(c)
License and assignment of government interest in patent......3.11, 3.31,
3.41
License for foreign filing.....................................5.11-5.15
Lost files.........................................................1.251
M
Mail Stops
Mail Stop Assignment Recordation Services................1.1(a)(4), 3.27
Mail Stop Document Services....................................1.1(a)(4)
Mail Stop Ex parte Reexam...........................1.1(c)(1), 1.1(c)(4)
Mail Stop Inter partes Reexam..................................1.1(c)(2)
Mail Stop Interference..........................................41.10(b)
Mail Stop OED.............................................1.1(a)(5), 4.6
Mail Stop Patent Ext..............................................1.1(e)
Mail Stop PCT..........................1.1(b), 1.417, 1.434(a), 1.480(b)
Mail Stop Supplemental Examination.............................1.1(c)(3)
Maintenance fees.............................................1.20(e)-(h)
Acceptance of delayed payment of...................................1.378
Address for payments and correspondence...........................1.1(d)
Fee address for....................................................1.363
Review of decision refusing to accept..............................1.377
Submission of......................................................1.366
Time for payment of................................................1.362
Mask work notice in specification................................1.71(d)
Mask work notice on drawing......................................1.84(s)
Mask work protection, foreign...................................Part 150
Microorganisms. (See Deposit of Biological Material)
Minimum balance in deposit accounts.................................1.25
Misjoinder of inventor.............................1.48, 1.324, 1.497(d)
Missing pages when application filed
Petition alleging there were no missing pages....................1.53(e)
Petition with new oath or declaration and later submission of
missing pages seeking new filing date..............................1.182
Mistake in patent, certificate thereof issued...............1.322, 1.323
Models and exhibits:
Copies of...........................................................1.95
Disposal unless return arrangements made............................1.94
In contested cases................................................41.154
May be required if deemed necessary in examination of application
1.91(b)
Model not generally admitted as part of application or patent.......1.91
Not to be taken from the Office except in custody of sworn
employee............................................................1.95
Return of...........................................................1.94
Working model may be required....................................1.91(b)
Money. (See Fees and payment of money)
Motions in interference...........................41.121, 41.155, 41.208
To take testimony in foreign country......................41.156, 41.157
N
Name of applicant...................................................1.41
New matter inadmissible in application.................1.53(b), 1.121(f)
New matter inadmissible in reexamination..............1.530(d), 1.552(b)
New matter inadmissible in reissue.................................1.173
Non-English language specification fee...........................1.17(i)
Nonprofit organization:
Definition (for small entity purposes)........................1.27(a)(3)
[[Page 252]]
Nonpublication request.............................................1.213
Notice:
Of allowance of application........................................1.311
Of appeal to the Court of Appeals for the Federal Circuit......90.1-90.3
Of arbitration award...............................................1.335
Of defective reexamination request..............................1.510(c)
Of interference...........................................41.101, 41.203
Of oral hearings on appeals before Patent Trial and Appeal Board
41.47
Of rejection of an application..................................1.104(a)
Nucleotide and/or Amino Acid Sequences:
Amendments to......................................................1.825
Disclosure in patent application...................................1.821
Fee amounts for submitting very lengthy sequence listings........1.21(o)
Form and format for computer readable form.........................1.824
Format for sequence data...........................................1.822
Replacement of.....................................................1.825
Requirements.......................................................1.823
Submission on compact disc............................1.52, 1.821, 1.823
O
Oath or declaration (inventor's) in patent application:
Assignment may serve as..........................................1.63(e)
Apostilles..........................................................1.66
Before whom taken in foreign countries..............................1.66
Before whom taken in the United States..............................1.66
By administrator or executor..................1.42, 1.63, 1.64, 1.497(b)
Certificate of Officer administering................................1.66
Continuation-in-part.............................................1.63(e)
Declaration in lieu of oath.........................................1.68
Foreign language....................................................1.69
Identification of specification to which it is directed.............1.63
International application, National Stage..........................1.497
Inventor's Certificate..............................................1.63
Made by inventor........................................1.41, 1.63, 1.64
Officers authorized to administer oaths.............................1.66
Part of complete application........................................1.51
Person making.................................................1.63, 1.64
Plant patent application...........................................1.162
Requirements of.....................................................1.63
Sealed..............................................................1.66
Signature to.......................................1.4, 1.63, 1.64, 1.67
Substitute Statement................................................1.64
Supplemental........................................................1.67
To acknowledge duty of disclosure...................................1.63
When taken abroad to seal all papers................................1.66
Oath or declaration in reissue application..................1.172, 1.175
Object of the invention.............................................1.73
Office action time for reply.......................................1.134
Office fees. (See Fees and payment of money)
Official action, based exclusively upon the written record...........1.2
Official business, should be transacted in writing...................1.2
Official Gazette:
Announces request for reexamination................1.11(c), 1.525, 1.904
Notice of filing application to nonsigning inventor.................1.47
Notice of issuance of ex parte reexamination certificate........1.570(f)
Notice of issuance of inter partes reexamination certificate.......1.997
Service of notices in.............................................41.101
[[Page 253]]
Oral statements......................................................1.2
Order to reexamine.................................................1.525
Ownership, statement establishing by assignee....................3.73(b)
P
Paper, definition of..............................................1.9(k)
Papers (requirements to become part of Office permanent records)
1.52
Handwritten, not permitted.......................................1.52(a)
Papers not received on Saturday, Sunday or holidays..................1.6
Patent application. (See Application for patent and Provisional patent
applications)
Patent application publication. (See Published application)
Patent attorneys and agents. (See Attorneys and agents)
Patent Cooperation Treaty:
Amendments and corrections during international processing.........1.471
Amendments during international preliminary examination............1.485
Applicant for international application............................1.421
Changes in person, name and address, where filed.........1.421(f), 1.472
Claim content and format in an international application...........1.436
Commencement of the national stage..............................1.491(a)
Conduct of international preliminary examination...................1.484
Definition of terms................................................1.401
Delays in meeting time limits......................................1.468
Demand for international preliminary examination...................1.480
Designation of States..............................................1.432
Election of States..............................................1.480(d)
Entry into national stage................................1.491(b), 1.495
Examination at national stage......................................1.496
Fees:
Due within one month of filing international application........1.431(c)
Failure to pay results in withdrawal of application......1.431(d), 1.432
Filing and processing fees.........................................1.445
International preliminary examination.......................1.481, 1.482
National stage.....................................................1.492
Refunds............................................1.26, 1.446, 1.480(c)
Filing by other than inventor............................1.421(c), 1.422
International application requirements.............................1.431
Abstract...........................................................1.438
Claims.............................................................1.436
Description........................................................1.435
Drawings...........................................................1.437
Physical requirements..............................................1.433
Request............................................................1.434
International Bureau...............................................1.415
Inventor deceased...........................................1.422, 1.497
Inventor insane or legally incapacitated...........................1.497
Inventors, joint.........................................1.421(b), 1.497
National stage examination.........................................1.496
Oath or declaration at national stage..............................1.497
Priority, claim for.........................................1.451, 1.452
Record copy to International Bureau, Transmittal procedures........1.461
Representation by attorney or agent................................1.455
Time limits for processing applications.....................1.465, 1.468
Translation:
Of international application for U.S. national phase...............1.495
Of publication of international application for provisional rights
1.417
United States as:
[[Page 254]]
Designated or Elected Office.......................................1.414
International Preliminary Examining Authority......................1.416
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unity of invention:
Before International Searching Authority....................1.475, 1.476
Before International Preliminary Examining Authority...............1.488
National stage..............................................1.475, 1.499
Protest to lack of..........................................1.477, 1.489
Withdrawal of international application, designations, priority
claims, demands and elections.........................1.421(g), 1.431(d)
Patent Law Treaty:
Model International Forms..................................1.76, 3.31(h)
Patent term adjustment due to examination delay..............1.702-1.705
Application for....................................................1.705
Determination......................................................1.705
Grounds for........................................................1.702
Period of adjustment...............................................1.703
Reduction of period of adjustment..................................1.704
Patent term extension due to examination delay.....................1.701
Patent term extension due to regulatory review period. (See Extension of
patent term due to regulatory review period (35 U.S.C. 156))
Patentee notified of interference.........................41.101, 41.203
Patents. (see also Allowance and issue of Patent):
Available for license or sale, publication of notice.............1.21(i)
Certified copies of.................................................1.13
Correction of errors in.......................1.171, 1.322, 1.323, 1.324
Delivery of........................................................1.315
Disclaimer.........................................................1.321
Identification required in letters concerning........................1.5
Obtainable by civil action.....................................90.1-90.3
Price of copies.....................................................1.19
Records of, open to public..........................................1.11
Reissuing of, when defective.................................1.171-1.178
Payment of fees.....................................................1.23
Person, definition for small entity purposes..................1.27(a)(1)
Personal attendance unnecessary......................................1.2
Petition for reissue........................................1.171, 1.172
Patent Trial and Appeal Board. (See Appeal to Patent Trial and Appeal
Board, Inter Partes Review, Post-Grant Review, Derivation Proceeding,
Patent Trial Practice and Procedure, and Interferences)
Patent Trial Practice and Procedure (see also inter partes review, post-
grant review, covered business method patent review, and derivation
proceeding)
General.......................................................42.1-42.14
Policy..............................................................42.1
Definitions.........................................................42.2
Jurisdiction........................................................42.3
Notice of trial.....................................................42.4
Conduct of the proceeding...........................................42.5
Filing of documents, including exhibits; service....................42.6
Management of the record............................................42.7
Mandatory notices...................................................42.8
Action by patent owner.............................................42.9
Counsel............................................................42.10
Duty of candor; signing papers; representations to the Board;
sanctions..........................................................42.11
Sanctions.........................................................42.12
Citation of authority.............................................42.13
[[Page 255]]
Public availability...............................................42.14
Fees...............................................................42.15
Petition and Motion Practice.................................42.20-42.25
General............................................................42.20
Notice of basis for relief.........................................42.21
Content of petitions and motions...................................42.22
Oppositions and replies............................................42.23
Type-volume or page and word count limits for petitions, motions,
oppositions and replies............................................42.24
Default filing times...............................................42.25
Testimony and Production.....................................42.51-42.65
Discovery..........................................................42.51
Compelling testimony and production................................42.52
Taking testimony...................................................42.53
Protective order...................................................42.54
Confidential information in a petition.............................42.55
Expungement of confidential information............................42.56
Admissibility......................................................42.61
Applicability of the Federal Rules of Evidence.....................42.62
Form of evidence...................................................42.63
Objection; motion to exclude.......................................42.64
Expert testimony; tests and data...................................42.65
Oral Argument, Decision, and Settlement.........................42.70-74
Oral argument......................................................42.70
Decision on petitions or motions...................................42.71
Termination of trial...............................................42.72
Judgment...........................................................42.73
Settlement.........................................................42.74
Certificate........................................................42.80
Petition to the Director:
Fees................................................................1.17
For delayed payment of issue fee...................................1.137
For license for foreign filing......................................5.12
For the revival of an abandoned application........................1.137
From formal objections or requirements......................1.113, 1.181
From requirement for restriction............................1.129, 1.144
General requirements...............................................1.181
In interferences....................................................41.3
In reexamination................................................1.515(c)
Petition to accept an unintentionally delayed claim for domestic
benefit.............................................................1.78
Petition to accept an unintentionally delayed claim for foreign
priority............................................................1.55
Questions not specifically provided for............................1.182
Suspension of rules................................................1.183
To exercise supervisory authority..................................1.181
To make special....................................................1.102
Plant patent applications:
Applicant....................................................1.42, 1.162
Claim..............................................................1.164
Declaration........................................................1.162
Description........................................................1.162
Drawings...........................................................1.165
Examination........................................................1.167
Fee for copies......................................................1.19
Filing fee.......................................................1.16(c)
Issue fee........................................................1.18(c)
Latin named genus and species....................1.76(b)(3), 1.163(c)(4)
[[Page 256]]
Oath...............................................................1.162
Rules applicable...................................................1.161
Specification......................................................1.163
Specimens..........................................................1.166
Post issuance fees..................................................1.20
Post Office receipt as filing date..................................1.10
Postal emergency or interruption.............................1.10(g)-(i)
Post-Grant Review. (See also Patent Trial Practice and Procedure):
General....................................................42.200-42.207
Procedure; pendency...............................................42.200
Who may petition..................................................42.201
Time for filing...................................................42.202
Fee........................................................42.15, 42.203
Content of petition...............................................42.204
Service of petition...............................................42.205
Filing date.......................................................42.206
Preliminary response..............................................42.207
Instituting a review..............................................42.208
After Institution..........................................42.220-42.224
Patent owner response.............................................42.220
Motion to amend...................................................42.221
Multiple proceedings; joinder.....................................42.222
Supplemental information..........................................42.223
Discovery.........................................................42.224
Power of attorney. (See Attorneys and agents)
Preliminary amendments.............................................1.115
Preserved in confidence, applications.........................1.12, 1.14
Exceptions (status, access or copies available).....................1.14
Prior art citation in patent files.................................1.501
Prior art statement:
Content of..........................................................1.98
In reexamination............................................1.555, 1.933
To comply with duty of disclosure...................................1.97
Prior art submission by third party:
In patent application..............................................1.290
In patent file.....................................................1.501
In protest against pending unpublished application.................1.291
Prior Invention, affidavit or declaration of, to overcome
rejection..........................................................1.131
Prior public disclosure, affidavit or declaration of, to overcome
rejection..........................................................1.130
Prioritized examination.........................................1.102(e)
Priority, international applications...............................1.451
Priority, right of, under treaty or law.............................1.55
Priority statement in interferences:
Contents of.......................................................41.204
Correction of statement on motion.................................41.120
Effect of statement...............................................41.204
Failure to file...................................................41.204
In case of motion to amend interference...........................41.208
May be amended if defective.......................................41.120
Reliance on prior application.....................................41.204
Requirement for...................................................41.204
Service on opposing parties.......................................41.204
When opened to inspection.........................................41.204
Proclamation as to protection of foreign mask works.............Part 150
Protests to grant of patent........................................1.291
Provisional patent applications:
Claiming the benefit of.............................................1.78
[[Page 257]]
Converting a nonprovisional to a provisional..................1.53(c)(2)
Converting a provisional to a nonprovisional..................1.53(c)(3)
Filing date.........................................................1.53
Filing fee.......................................................1.16(d)
General requisites...............................................1.51(c)
Later filing of filing fee and cover sheet.......................1.53(g)
Names of all inventors required............................1.41, 1.53(c)
No right of priority..........................................1.53(c)(4)
No examination...................................................1.53(i)
Papers concerning, must identify provisional applications as such,
and by application number.........................................1.5(f)
Parts of complete provisional application........................1.51(c)
Processing fees..................................................1.17(i)
Revival of.........................................................1.137
When abandoned...................................................1.53(i)
Public information..............................................Part 102
Fee..............................................................1.17(j)
Publication:
Of reexamination certificate..........................1.570(f), 1.997(f)
Publication of application.........................................1.211
Early publication..................................................1.219
Express abandonment to avoid publication........................1.138(c)
Fee.................................................................1.18
Nonpublication request.............................................1.213
Publication of redacted copy.......................................1.217
Republication......................................................1.221
Voluntary publication..............................................1.221
Published application
Access to.....................................................1.11, 1.14
Certified copies....................................................1.13
Contents...........................................................1.215
Definition of published application...............................1.9(c)
Records of, open to public....................................1.11, 1.12
Republication of...................................................1.221
Third party submission in..........................................1.290
R
RCE (Request for continued examination)............................1.114
Reasons for allowance...........................................1.104(e)
Reconsideration of Office action...................................1.112
Reconstruction of lost files.......................................1.251
Recording of assignments. (See Assignments and recording)
Records of the Patent and Trademark Office.....................1.11-1.15
Redacted publication of application................................1.217
Reexamination:
Amendments, manner of making....................................1.121(c)
Announcement in Official Gazette.................................1.11(c)
Correction of inventorship.........................................1.530
Correspondence address...........................................1.33(c)
Ex parte proceedings
Amendments, manner of making.............................1.121(j), 1.530
Appeal to Board....................................................41.31
Appeal to C.A.F.C..............................................90.1-90.3
Civil action under 35 U.S.C. 145...............................90.1-90.3
Concurrent with interference, reissue, other reexamination,
litigation or office proceedings(s)................................1.565
Conduct of.........................................................1.550
[[Page 258]]
Duty of disclosure in..............................................1.555
Examiner's determination to grant or refuse request for............1.515
Extensions of time..............................................1.550(c)
Fees.............................................................1.20(c)
Initiated by the Director..........................................1.520
Interviews in......................................................1.560
Issuance of certificate at conclusion of...........................1.570
Order for reexamination by examiner................................1.525
Patent owner's statement....................................1.530, 1.540
Processing of prior art citations during...........................1.502
Reply to patent owner's statement to third party requester........1.535,
1.540
Request for........................................................1.510
Scope of...........................................................1.552
Service of papers..................................................1.248
Examiner's action..................................................1.104
Fee charged to deposit account......................................1.25
Identification in letter..........................................1.5(d)
Inter partes proceedings.......................................1.902-907
Amendments, manner of making......................1.121(j), 1.530, 1.941
Appeal to Board....................................................41.61
Appeal to C.A.F.C..................................................1.983
Civil action under 35 U.S.C. 145 not available.................90.1-90.3
Concurrent with interference, reissue, other reexamination,
litigation or office proceedings(s).........................1.565, 1.985
Conduct of.........................................................1.937
Duty of disclosure in.......................................1.555, 1.933
Examiner's determination to grant or refuse request for......1.923-1.927
Extensions of time.................................................1.956
Filing date of request for.........................................1.919
Issuance of certificate at conclusion of...........................1.997
Merged with concurrent reexamination proceedings...................1.989
Merged with reissue application....................................1.991
Notice of, in the Official Gazette.................................1.904
Persons eligible to file request for...............................1.903
Processing of prior art citations during...........................1.902
Scope of...........................................................1.906
Service of papers...........................................1.248, 1.903
Submission of papers by the public.................................1.905
Subsequent requests for............................................1.907
Suspension due to concurrent interference..........................1.993
Suspension due to litigation.......................................1.987
Information Disclosure Statements............................1.98, 1.555
Open to public...................................................1.11(d)
Reconsideration before final action................................1.112
Refund of fee.......................................................1.26
Reply to action....................................................1.111
Revival of termination examination.................................1.137
Reference characters in drawings...........................1.74, 1.84(p)
References cited on examination.................................1.104(d)
Refund of international application filing and processing fees.....1.446
Refund of money paid by mistake.....................................1.26
Register of Government interest in patents..........................3.58
Rehearing:
Of appeal decisions by Patent Trial and Appeal Board...............41.52
Request for, time for appeal after action on........................90.3
Reissues:
Amendments.........................................................1.173
Applicants, assignees..............................................1.172
[[Page 259]]
Application for reissue............................................1.171
Application made and sworn to by inventor, if living...............1.172
Declaration........................................................1.175
Drawings........................................1.173(a)(2), 1.173(b)(3)
Examination of reissue.............................................1.176
Filed during interference.................................41.202, 41.203
Filing during reexamination.................................1.565, 1.985
Filing fee..........................................................1.16
Filing of announced in Official Gazette..........................1.11(b)
Grounds for and requirements....................1.171-1.173, 1.175-1.178
Issue fee........................................................1.18(a)
Oath...............................................................1.175
Open to public......................................................1.11
Original claims subject to reexamination...........................1.176
Original patent surrendered........................................1.178
Reissue in divisions...............................................1.177
Restriction........................................................1.176
Specification......................................................1.173
Take precedence in order of examination............................1.176
To contain no new matter........................................1.173(a)
What must accompany application.............................1.171, 1.172
Rejection:
After two rejections appeal may be taken from examiner to Board of
Appeals.....................................................1.191, 41.31
Applicant will be notified of rejection with reasons and
references...................................................1.104(a)(2)
Examiner may rely on admissions by applicant or patent owner, or
facts within examiner's knowledge............................1.104(c)(3)
Final..............................................................1.113
Formal objections..................................................1.104
On account of invention shown by others but not claimed, how
overcome...........................................................1.131
References will be cited........................................1.104(c)
Requisites of notice of............................................1.104
Reply brief........................................................41.41
Reply by applicant or patent owner.................................1.111
Reply by requester..........................................1.535, 1.947
Representative capacity..........................................1.34(a)
Request for continued examination(RCE).............................1.114
Request for reconsideration........................................1.112
Request for ex parte reexamination.................................1.510
Request for inter partes reexamination.......................1.913-1.927
Requirement for information........................................1.105
Response time to Office action.....................................1.134
Restriction of application...................................1.141-1.146
Claims to nonelected invention withdrawn...........................1.142
Constructive election..............................................1.145
Petition from requirements for..............................1.129, 1.144
Provisional election...............................................1.143
Reconsideration of requirement.....................................1.143
Reissue............................................................1.176
Requirement for....................................................1.142
Subsequent presentation of claims for different invention..........1.145
Transitional procedures............................................1.129
Return of correspondence..........................................1.5(a)
Revival of abandoned application or terminated or limited
reexamination proceeding...........................................1.137
Unintentional abandonment fee....................................1.17(m)
Revocation of power of attorney or authorization of agent........1.36(a)
[[Page 260]]
Rules of Practice:
S
Saturday, when last day falls on.............................1.7, 1.9(h)
Scope of reexamination proceedings..........................1.552, 1.906
Secrecy order....................................................5.1-5.5
Serial number of application (see also Application Number)....1.5, 1.53,
1.54(b)
Service of notices:
For taking testimony..............................................41.157
In contested cases................................................41.101
Of appeal to the Court of Appeals for the Federal Circuit......90.1-90.3
Service of papers..................................................1.248
Shortened period for reply.........................................1.134
Signature:
Handwritten....................................................1.4(d)(1)
Implicit certifications....................................1.4(d), 11.18
To a written assertion of small entity status.................1.27(c)(2)
To amendments and other papers...................................1.33(b)
To an application for extension of patent term.....................1.730
To express abandonment.............................................1.138
To oath.............................................................1.63
To reissue oath or declaration.....................................1.172
When copy is acceptable..............................................1.4
S-Signature....................................................1.4(d)(2)
Small business concern:
Definition (for small entity purposes)........................1.27(a)(2)
Small entity:
Definition.......................................................1.27(a)
Federal Government Use License Exceptions.....................1.27(a)(4)
Status establishment..........................................1.27, 1.28
Status update..............................................1.27(g), 1.28
Written assertion................................................1.27(c)
Solicitor's address............................................1.1(a)(3)
Species of invention claimed................................1.141, 1.146
Specification (see also Application for patent, Claims):
Abstract............................................................1.72
Amendments to...............................................1.121, 1.125
Arrangement of........................................1.77, 1.154, 1.163
Best mode...........................................................1.71
Claim...............................................................1.75
Contents of....................................................1.71-1.75
Copyright notice.................................................1.71(d)
Cross-references to other applications..............................1.78
Description of the invention........................................1.71
Filed by reference...............................................1.57(a)
If defective, reissue to correct.............................1.171-1.178
Incorporation by reference of prior filed application............1.57(b)
Mask work notice.................................................1.71(d)
Must conclude with specific and distinct claim......................1.75
Must point out new improvements specifically........................1.71
Must refer by figures to drawings...................................1.74
Must set forth the precise invention................................1.71
Object of the invention.............................................1.73
Order of arrangement in framing.....................................1.77
Paper, writing, margins.............................................1.52
Paragraph numbering...........................................1.52(b)(6)
Part of complete application........................................1.51
[[Page 261]]
Reference to drawings...............................................1.74
Requirements of................................................1.71-1.75
Substitute.........................................................1.125
Summary of the invention............................................1.73
Title of the invention...........................................1.72(a)
To be rewritten, if necessary......................................1.125
Specimens. (See Models and exhibits)
Specimens of composition of matter to be furnished when required
1.93
Specimens of plants................................................1.166
Statutory disclaimer fee.........................................1.20(d)
Sufficient funds in deposit account.................................1.25
Suit in equity. (See Civil action)
Summary of invention................................................1.73
Sunday, when last day falls on...............................1.7. 1.9(h)
Supervisory authority, petition to Director to exercise............1.181
Supplemental oath/declaration.......................................1.67
Supplemental Examination of Patents:
Conclusion of......................................................1.625
Conduct of.........................................................1.620
Content of request.................................................1.610
Filing of papers in supplemental examination.......................1.601
Format of papers filed.............................................1.615
Procedure after conclusion.........................................1.625
Publication of certificate.........................................1.625
Surcharge for completion of nonprovisional application after
filing date.............................................1.16(f), 1.53(f)
Suspension of action by Office.....................................1.103
CPA, Design.....................................................1.103(b)
Deferral of examination.........................................1.103(d)
For cause.......................................................1.103(a)
RCE.............................................................1.103(c)
Suspension of ex parte prosecution during interference............41.103
Suspension of rules................................................1.183
Symbols for drawings.............................................1.84(n)
Symbols for nucleotide and/or amino acid sequence data.............1.822
T
Tables in patent applications.......................................1.58
Technological Invention...........................................42.301
Terminal disclaimer................................................1.321
Testimony by Office employees.........................15 C.F.R. Part 15a
Testimony in interferences:
Additional time for taking..........................................41.4
Assignment of times for taking....................................41.157
Certification and filing by officer...............................41.157
Copies of.........................................................41.157
Depositions must be filed.........................................41.157
Discovery.........................................................41.150
Effect of errors and irregularities in deposition.........41.155, 41.157
Evidence must comply with rules...................................41.152
Examination of witnesses..........................................41.157
Form of deposition................................................41.157
Formal objections to......................................41.155, 41.157
Formalities in preparing depositions..............................41.157
In foreign countries......................................41.156, 41.157
Manner of taking testimony of witnesses...........................41.157
Notice of examination of witnesses................................41.157
[[Page 262]]
Objections noted in depositions...........................41.155, 41.157
Objections to formal matters..............................41.155, 41.157
Officer's certificate.............................................41.157
Persons before whom depositions may be taken......................41.157
Service of notice.................................................41.157
Stipulations or agreements concerning.............................41.157
Taken by depositions..............................................41.157
Time for taking...................................................41.157
Third-party submission in published application....................1.290
Time expiring on Saturday, Sunday, or holiday................1.7, 1.9(h)
Time for payment of issue fee......................................1.311
Time for reply by applicant.................................1.134, 1.136
Time for reply by patent owner..............................1.530, 1.945
Time for reply by requester.................................1.535, 1.947
Time for reply to Office action.............................1.134, 1.136
Time, periods of.....................................................1.7
Timely filing of correspondence................................1.8, 1.10
Title of invention...............................................1.72(a)
Title reports, fee for........................................1.19(b)(4)
Transitional procedures............................................1.129
U
Unintentional abandonment..........................................1.137
Unintentional delay in reexamination.....................1.550(e), 1.958
United States as:
Designated Office..................................................1.414
Elected Office.....................................................1.414
International Preliminary Examining Authority......................1.416
International Searching Authority..................................1.413
Receiving Office...................................................1.412
Unlocatable files..................................................1.251
Unsigned continuation or divisional application...............1.53, 1.63
Use of file of parent application................................1.53(d)
V
Voluntary publication of application...............................1.221
W
Waiver of confidentiality.....................................1.53(d)(6)
Withdrawal from issue..............................................1.313
Withdrawal of attorney or agent.....................................1.36
[[Page 263]]
PART 1_RULES OF PRACTICE IN PATENT CASES--Table of Contents
Editorial Note: Part 1 is placed in the separate grouping of parts
pertaining to patents regulations.
TRADEMARKS--Table of Contents
PART 2_RULES OF PRACTICE IN TRADEMARK CASES--Table of Contents
Sec.
2.1 [Reserved]
2.2 Definitions.
2.6 Trademark fees.
2.7 Fastener recordal fees.
Representation by Attorneys or Other Authorized Persons
2.11 Requirement for representation.
2.12-2.16 [Reserved]
2.17 Recognition for representation.
2.18 Correspondence, with whom held.
2.19 Revocation or withdrawal of attorney.
Declarations
2.20 Declarations in lieu of oaths.
Application for Registration
2.21 Requirements for receiving a filing date.
2.22 Requirements for a TEAS Plus application.
2.23 Requirement to correspond electronically with the Office and duty
to monitor status.
2.24 Designation and revocation of domestic representative by foreign
applicant.
2.25 Documents not returnable.
2.27 Pending trademark application index; access to applications.
The Written Application
2.31 [Reserved]
2.32 Requirements for a complete trademark or service mark application.
2.33 Verified statement for a trademark or service mark.
2.34 Bases for filing a trademark or service mark application.
2.35 Adding, deleting, or substituting bases.
2.36 Identification of prior registrations.
2.37 Description of mark.
2.38 Use by predecessor or by related companies.
2.39 [Reserved]
2.41 Proof of distinctiveness under section 2(f).
2.42 Concurrent use.
2.43 Service mark.
2.44 Requirements for a complete collective mark application.
2.45 Requirements for a complete certification mark application;
restriction on certification mark application.
2.46 Principal Register.
2.47 Supplemental Register.
2.48 Office does not issue duplicate registrations.
Drawing
2.51 Drawing required.
2.52 Types of drawings and format for drawings.
2.53 Requirements for drawings filed through the TEAS.
2.54 Requirements for drawings submitted on paper.
Specimens
2.56 Specimens.
2.57-2.58 [Reserved]
2.59 Filing substitute specimen(s).
Examination of Application and Action by Applicants
2.61 Action by examiner.
2.62 Procedure for submitting response.
2.63 Action after response.
2.64 Reinstatement of applications and registrations abandoned,
cancelled, or expired due to Office error.
2.65 Abandonment.
2.66 Revival of applications abandoned in full or in part due to
unintentional delay.
2.67 Suspension of action by the Patent and Trademark Office.
2.68 Express abandonment (withdrawal) of application.
2.69 Compliance with other laws.
Amendment of Application
2.71 Amendments to correct informalities.
2.72 Amendments to description or drawing of the mark.
2.73 Amendment to recite concurrent use.
2.74 Form and signature of amendment.
2.75 Amendment to change application to different register.
2.76 Amendment to allege use.
2.77 Amendments between notice of allowance and statement of use.
Publication and Post Publication
2.80 Publication for opposition.
2.81 Post publication.
2.82 Marks on Supplemental Register published only upon registration.
2.83 Conflicting marks.
[[Page 264]]
2.84 Jurisdiction over published applications.
Classification
2.85 Classification schedules.
2.86 Multiple-class applications.
2.87 Dividing an application.
Post Notice of Allowance
2.88 Statement of use after notice of allowance.
2.89 Extensions of time for filing a statement of use.
Concurrent use proceedings
2.91-2.98 [Reserved]
2.99 Application to register as concurrent user.
Opposition
2.101 Filing an opposition.
2.102 Extension of time for filing an opposition.
2.103 [Reserved]
2.104 Contents of opposition.
2.105 Notification to parties of opposition proceeding(s).
2.106 Answer.
2.107 Amendment of pleadings in an opposition proceeding.
Cancellation
2.111 Filing petition for cancellation.
2.112 Contents of petition for cancellation.
2.113 Notification of cancellation proceeding.
2.114 Answer.
2.115 Amendment of pleadings in a cancellation proceeding.
Procedure in Inter Partes Proceedings
2.116 Federal Rules of Civil Procedure.
2.117 Suspension of proceedings.
2.118 Undelivered Office notices.
2.119 Service and signing.
2.120 Discovery.
2.121 Assignment of times for taking testimony and presenting evidence.
2.122 Matters in evidence.
2.123 Trial testimony in inter partes cases.
2.124 Depositions upon written questions.
2.125 Filing and service of testimony.
2.126 Form of submissions to the Trademark Trial and Appeal Board.
2.127 Motions.
2.128 Briefs at final hearing.
2.129 Oral argument; reconsideration.
2.130 New matter suggested by the trademark examining attorney.
2.131 Remand after decision in inter partes proceeding.
2.132 Involuntary dismissal for failure to take testimony.
2.133 Amendment of application or registration during proceedings.
2.134 Surrender or voluntary cancellation of registration.
2.135 Abandonment of application or mark.
2.136 Status of application or registration on termination of
proceeding.
Appeals
2.141 Ex parte appeals from action of trademark examining attorney.
2.142 Time and manner of ex parte appeals.
2.143 [Reserved]
2.144 Reconsideration of decision on ex parte appeal.
2.145 Appeal to court and civil action.
Petitions and Action by the Director
2.146 Petitions to the Director.
2.147 Petition to the Director to accept a paper submission.
2.148 Director may suspend certain rules.
2.149 Letters of protest against pending applications.
Certificate
2.151 Certificate.
Publication of Marks Registered Under 1905 Act
2.153 Publication requirements.
2.154 Publication inOfficial Gazette.
2.155 Notice of publication.
2.156 Not subject to opposition; subject to cancellation.
Reregistration of Marks Registered Under Prior Acts
2.158 Reregistration of marks registered under Acts of 1881, 1905, and
1920.
Cancellation for Failure To File Affidavit or Declaration During Sixth
Year
2.160 Affidavit or declaration of continued use or excusable nonuse
required to avoid cancellation of registration.
2.161 Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse; requirement for the submission
of additional information, exhibits, affidavits or
declarations, and specimens; and fee for deletions of goods,
services, and/or classes from a registration.
2.162 Notice to registrant.
2.163 Acknowledgment of receipt of affidavit or declaration.
2.164 Correcting deficiencies in affidavit or declaration.
2.165 Petition to Director to review refusal.
2.166 Affidavit of continued use or excusable nonuse combined with
renewal application.
Affidavit or Declaration Under Section 15
2.167 Affidavit or declaration under section 15.
[[Page 265]]
2.168 Affidavit or declaration under section 15 combined with affidavit
or declaration under sections 8 or 71, or with renewal
application.
Correction, Disclaimer, Surrender, Etc.
2.171 New certificate on change of ownership.
2.172 Surrender for cancellation.
2.173 Amendment of registration.
2.174 Correction of Office mistake.
2.175 Correction of mistake by owner.
2.176 Consideration of above matters.
Term and Renewal
2.181 Term of original registrations and renewals.
2.182 Time for filing renewal application.
2.183 Requirements for a complete renewal application.
2.184 Refusal of renewal.
2.185 Correcting deficiencies in renewal application.
2.186 Petition to Director to review refusal of renewal.
2.187 [Reserved]
General Information and Correspondence in Trademark Cases
2.188 [Reserved]
2.189 Requirement to provide domicile address.
2.190 Addresses for trademark correspondence with the United States
Patent and Trademark Office.
2.191 Action of the Office based on the written record.
2.192 Business to be conducted with decorum and courtesy.
2.193 Trademark correspondence and signature requirements.
2.194 Identification of trademark application or registration.
2.195 Filing date of trademark correspondence.
2.196 Times for taking action: Expiration on Saturday, Sunday or Federal
holiday.
2.197 Certificate of mailing.
2.198 Filing of correspondence by Priority Mail Express[supreg].
Trademark Records and Files of the Patent and Trademark Office
2.200 Assignment records open to public inspection.
2.201 Copies and certified copies.
Fees and Payment of Money in Trademark Cases
2.206 Trademark fees payable in advance.
2.207 Methods of payment.
2.208 Deposit accounts.
2.209 Refunds.
Authority: 15 U.S.C. 1113, 1123; 35 U.S.C. 2; sec. 10, Pub. L. 112-
29, 125 Stat. 284, unless otherwise noted. Sec. 2.99 also issued under
secs. 16, 17, 60 Stat. 434; 15 U.S.C. 1066, 1067.
Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.
Editorial Note: Nomenclature changes to part 2 appear at 68 FR
14337, Mar. 25, 2003.
Sec.2.1 [Reserved]
Sec.2.2 Definitions.
(a) The Act as used in this part means the Trademark Act of 1946, 60
Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.
(b) Entity as used in this part includes both natural and juristic
persons.
(c) Director as used in this chapter, except for part 11, means the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
(d) Federal holiday within the District of Columbia means any day,
except Saturdays and Sundays, when the United States Patent and
Trademark Office is officially closed for business for the entire day.
(e) The term Office or abbreviation USPTO means the United States
Patent and Trademark Office.
(f) The acronym TEAS means the Trademark Electronic Application
System and, as used in this part, includes all related electronic
systems required to complete an electronic submission through TEAS.
(g) The acronym ESTTA means the Electronic System for Trademark
Trials and Appeals and, as used in this part, includes all related
electronic systems required to complete an electronic submission through
ESTTA.
(h) The term international application as used in this part means,
in addition to the definition in section 60 of the Act, an application
seeking an extension of protection of an international registration in
an initial designation filed under the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks.
(i) The term subsequent designation as used in this part means a
request for extension of protection of an international registration
made after the International Bureau registers the mark on the
International Register.
[[Page 266]]
(j) The term holder as used in this part means, in addition to the
definition of a ``holder of an international registration'' in section
60 of the Act, the natural or juristic person in whose name an
international registration seeking an extension of protection to the
United States is recorded on the International Register.
(k) The term use in commerce or use of the mark in commerce as used
in this part means, in addition to the definition of ``use in commerce''
in section 45 of the Act:
(1) For a trademark or service mark, use of the mark in commerce by
an applicant, owner, or holder on or in connection with the goods or
services specified in a U.S. application, amendment to allege use,
statement of use, or affidavit or declaration of use or excusable
nonuse;
(2) For a collective trademark or collective service mark, use of
the mark in commerce by members on or in connection with the goods or
services specified in a U.S. application, amendment to allege use,
statement of use, or affidavit or declaration of use or excusable
nonuse;
(3) For a collective membership mark, use of the mark in commerce by
members to indicate membership in the collective organization as
specified in a U.S. application, amendment to allege use, statement of
use, or affidavit or declaration of use or excusable nonuse; and
(4) For a certification mark, use of the mark in commerce by
authorized users on or in connection with the goods or services
specified in a U.S. application, amendment to allege use, statement of
use, or affidavit or declaration of use or excusable nonuse.
(l) The term bona fide intention to use the mark in commerce as used
in this part means, for a trademark or service mark, that an applicant
or holder has a bona fide intention to use the mark in commerce on or in
connection with the goods or services specified in a U.S. application or
international application/subsequent designation.
(m) The term bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce as used in this
part means:
(1) For a collective trademark or collective service mark, that an
applicant or holder has a bona fide intention, and is entitled, to
exercise legitimate control over the use of the mark in commerce by
members on or in connection with the goods or services specified in a
U.S. application or international application/subsequent designation;
(2) For a collective membership mark, that an applicant or holder
has a bona fide intention, and is entitled, to exercise legitimate
control over the use of the mark in commerce by members to indicate
membership in the collective organization as specified in a U.S.
application or international application/subsequent designation; and
(3) For a certification mark, that an applicant or holder has a bona
fide intention, and is entitled, to exercise legitimate control over the
use of the mark in commerce by authorized users on or in connection with
the goods or services specified in a U.S. application or international
application/subsequent designation.
(n) The term verified statement, and the terms verify, verified, or
verification as used in this part refers to a statement that is sworn
to, made under oath or in an affidavit, or supported by a declaration
under Sec.2.20 or 28 U.S.C. 1746, and signed in accordance with the
requirements of Sec.2.193.
(o) The term domicile as used in this part means the permanent legal
place of residence of a natural person or the principal place of
business of a juristic entity.
(p) The term principal place of business as used in this part means
the location of a juristic entity's headquarters where the entity's
senior executives or officers ordinarily direct and control the entity's
activities and is usually the center from where other locations are
controlled.
(q) The acronym ETAS means the Electronic Trademark Assignment
System and, as used in this part, includes all related electronic
systems required to complete an electronic submission through ETAS.
(r) Eastern Time means Eastern Standard Time or Eastern Daylight
Time, as appropriate.
[[Page 267]]
(s) The term electronic submission as used in this part refers to
any submission made through an electronic filing system available on the
Office's website, but not through email or facsimile transmission.
(t) The abbreviation USPS as used in this part means the U.S. Postal
Service.
[54 FR 37588, Sept. 11, 1989, as amended at 68 FR 48289, Aug. 13, 2003;
68 FR 55762, Sept. 26, 2003; 73 FR 47685, Aug. 14, 2008; 78 FR 20197,
Apr. 3, 2013; 80 FR 33178, June 11, 2015; 84 FR 31510, July 2, 2019; 84
FR 37093, July 31, 2019]
Sec.2.6 Trademark fees.
(a) Trademark process fees.
(1) Application filing fees.
(i) For filing an application on paper, per class................$750.00
(ii) For filing an application under section 66(a) of the Act, per
class--$500.00
(iii) For filing a TEAS Standard application, per class..........$350.00
(iv) For filing a TEAS Plus application under Sec.2.22, per class
$250.00
(v) Additional processing fee under Sec.2.22(c), per class.....$100.00
(2) Amendment to allege use. (i) For filing an amendment to allege use
under section 1(c) of the Act on paper, per class................$200.00
(ii) For filing an amendment to allege use under section 1(c) of the Act
through TEAS, per class..........................................$100.00
(3) Statement of use. (i) For filing a statement of use under section
1(d)(1) of the Act on paper, per class...........................$200.00
(ii) For filing a statement of use under section 1(d)(1) of the Act
through TEAS, per class..........................................$100.00
(4) Extension of time for filing statement of use. (i) For filing a
request under section 1(d)(2) of the Act for a six-month extension of
time for filing a statement of use under section 1(d)(1) of the Act on
paper, per class.................................................$225.00
(ii) For filing a request under section 1(d)(2) of the Act for a six-
month extension of time for filing a statement of use under section
1(d)(1) of the Act through TEAS, per class.......................$125.00
(5) Application for renewal of a registration fees. (i) For filing an
application for renewal of a registration on paper, per class....$500.00
(ii) For filing an application for renewal of a registration through
TEAS, per class..................................................$300.00
(6) Renewal during grace period. (i) Additional fee for filing a renewal
application during the grace period on paper, per class..........$200.00
(ii) Additional fee for filing a renewal application during the grace
period through TEAS, per class...................................$100.00
(7) Publishing mark under section 12(c). (i) For filing to publish a
mark under section 12(c) on paper, per class.....................$200.00
(ii) For filing to publish a mark under section 12(c) through TEAS, per
class............................................................$100.00
(8) New certificate of registration. (i) For issuing a new certificate
of registration upon request of registrant, request filed on paper
$200.00
(ii) For issuing a new certificate of registration upon request of
registrant, request filed through TEAS...........................$100.00
(9) Certificate of correction of registrant's error. (i) For a
certificate of correction of registrant's error, request filed on paper
$200.00
(ii) For a certificate of correction of registrant's error, request
filed through TEAS...............................................$100.00
(10) Disclaimer to a registration. (i) For filing a disclaimer to a
registration, on paper...........................................$200.00
(ii) For filing a disclaimer to a registration, through TEAS or ESTTA
$100.00
(11) Amendment of registration. (i) For filing an amendment to a
registration, on paper...........................................$200.00
(ii) For filing an amendment to a registration, through TEAS or ESTTA
$100.00
(iii) For filing an amendment to a registration prior to submission of
an affidavit under section 8 or section 71 of the Act and consisting
only of the deletion of goods, services, and/or classes............$0.00
(12) Affidavit under section 8. (i) For filing an affidavit under
section 8 of the Act on paper, per class.........................$325.00
(ii) For filing an affidavit under section 8 of the Act through TEAS,
per class........................................................$225.00
(iii) For deleting goods, services, and/or classes after submission and
prior to acceptance of an affidavit under section 8 of the Act on paper,
per class........................................................$350.00
(iv) For deleting goods, services, and/or classes after submission and
prior to acceptance of an affidavit under section 8 of the Act through
TEAS, per class..................................................$250.00
(13) Affidavit under section 15. (i) For filing an affidavit under
section 15 of the Act on paper, per class........................$300.00
(ii) For filing an affidavit under section 15 of the Act through TEAS,
[[Page 268]]
per class........................................................$200.00
(14) Filing section 8 affidavit during grace period. (i) Additional fee
for filing a section 8 affidavit during the grace period on paper, per
class............................................................$200.00
(ii) Additional fee for filing a section 8 affidavit during the grace
period through TEAS, per class...................................$100.00
(15) Petitions to the Director. (i) For filing a petition under Sec.
2.146 or Sec.2.147 on paper....................................$350.00
(ii) For filing a petition under Sec.2.146 or Sec.2.147 through TEAS
$250.00
(iii) For filing a petition under Sec.2.66 on paper............$250.00
(iv) For filing a petition under Sec.2.66 through TEAS.........$150.00
(16) Petition to cancel. (i) For filing a petition to cancel on paper,
per class........................................................$700.00
(ii) For filing a petition to cancel through ESTTA, per class....$600.00
(17) Notice of opposition. (i) For filing a notice of opposition on
paper, per class.................................................$700.00
(ii) For filing a notice of opposition through ESTTA, per class
$600.00
(18) Ex parte appeal. (i) For filing an ex parte appeal to the Trademark
Trial and Appeal Board on paper, per class.......................$325.00
(ii) For filing an ex parte appeal to the Trademark Trial and Appeal
Board through ESTTA, per class...................................$225.00
(iii) For filing a first request for an extension of time to file an
appeal brief, per application.....................................--
$0.00
(iv) For filing a second or subsequent request for an extension of time
to file an appeal brief on paper, per application................$200.00
(v) For filing a second or subsequent request for an extension of time
to file an appeal brief through ESTTA, per application...........$100.00
(vi) For filing an appeal brief on paper, per class..............$300.00
(vii) For filing an appeal brief through ESTTA, per class........$200.00
(19) Dividing an application. (i) Request to divide an application filed
on paper, per new application created............................$200.00
(ii) Request to divide an application filed through TEAS, per new
application created..............................................$100.00
(20) Correcting deficiency in section 8 affidavit. (i) For correcting a
deficiency in a section 8 affidavit via paper filing.............$200.00
(ii) For correcting a deficiency in a section 8 affidavit via TEAS
filing...........................................................$100.00
(21) Correcting deficiency in renewal application. (i) For correcting a
deficiency in a renewal application via paper filing.............$200.00
(ii) For correcting a deficiency in a renewal application via TEAS
filing...........................................................$100.00
(22) Extension of time for filing a notice of opposition under Sec.
2.102(c)(1)(ii) or (c)(2). (i) For filing a request for an extension of
time to file a notice of opposition under Sec.2.102(c)(1)(ii) or
(c)(2) on paper..................................................$400.00
(ii) For filing a request for an extension of time to file a notice of
opposition under Sec.2.102(c)(1)(ii) or (c)(2) through ESTTA...$200.00
(23) Extension of time for filing a notice of opposition under Sec.
2.102(c)(3). (i) For filing a request for an extension of time to file a
notice of opposition under Sec.2.102(c)(3) on paper............$500.00
(ii) For filing a request for an extension of time to file a notice of
opposition under Sec.2.102(c)(3) through ESTTA.................$400.00
(24) Oral hearing. For filing a request for an oral hearing before the
Trademark Trial and Appeal Board, per proceeding.................$500.00
(25) Letter of protest. For filing a letter of protest, per subject
application.......................................................$50.00
(b) Trademark service fees.
(1) For printed copy of registered mark, copy only. Service includes
preparation of copies by the Office within two to three business days
and delivery by United States Postal Service; and preparation of copies
by the Office within one business day of receipt and delivery to an
Office Box or by electronic means (e.g., facsimile, electronic mail)
$3.00
(2) Certified or uncertified copy of trademark application as filed
processed within seven calendar days..............................$15.00
(3) Certified or uncertified copy of a trademark-related official record
$50.00
(4) Certified copy of a registered mark, showing title and/or status:
(i) Regular service...............................................$15.00
(ii) Expedited local service......................................$30.00
(5) Certified or uncertified copy of trademark records, per document
except as otherwise provided in this section......................$25.00
(6) For recording each trademark assignment, agreement or other document
relating to the property in a registration or application
(i) First property in a document..................................$40.00
(ii) For each additional property in
[[Page 269]]
the same document.................................................$25.00
(7) For assignment records, abstract of title and certification, per
registration......................................................$25.00
(8) Additional Fee for Overnight Delivery.........................$40.00
(9) Additional Fee for Expedited Service.........................$160.00
(10) For processing each payment refused (including a check returned
``unpaid'') or charged back by a financial institution............$50.00
(11) Deposit account service charge for each month when the balance at
the end of the month is below $1,000..............................$25.00
[81 FR 72706, Oct. 21, 2016, as amended at 84 FR 37093, July 31, 2019;
85 FR 73215, Nov. 17, 2020; 85 FR 81123, Dec. 15, 2020]
Sec.2.7 Fastener recordal fees.
(a) Application fee for recordal of insignia......................$20.00
(b) Renewal of insignia recordal..................................$20.00
(c) Surcharge for late renewal of insignia recordal...............$20.00
[61 FR 55223, Oct. 25, 1996]
Representation by Attorneys or Other Authorized Persons
Authority: Secs. 2.11 to 2.19 also issued under 35 U.S.C. 31, 32.
Sec.2.11 Requirement for representation.
(a) An applicant, registrant, or party to a proceeding whose
domicile is not located within the United States or its territories must
be represented by an attorney, as defined in Sec.11.1 of this chapter,
who is qualified to practice under Sec.11.14 of this chapter. The
Office cannot aid in the selection of an attorney.
(b) The Office may require an applicant, registrant, or party to a
proceeding to furnish such information or declarations as may be
reasonably necessary to the proper determination of whether the
applicant, registrant, or party is subject to the requirement in
paragraph (a) of this section.
(c) An applicant, registrant, or party to a proceeding may be
required to state whether assistance within the scope of Sec.
11.5(b)(2) of this chapter was received in a trademark matter before the
Office and, if so, to disclose the name(s) of the person(s) providing
such assistance and whether any compensation was given or charged.
(d) Failure to respond to requirements issued pursuant to paragraphs
(a) through (c) of this section is governed by Sec.2.65.
(e) Providing false, fictitious, or fraudulent information in
connection with the requirements of paragraphs (a) through (c) of this
section shall be deemed submitting a paper for an improper purpose, in
violation of Sec.11.18(b) of this chapter, and subject to the
sanctions and actions provided in Sec.11.18(c).
(f) Notwithstanding Sec.2.63(b)(2)(ii), if an Office action
maintains only requirements under paragraphs (a), (b), and/or (c) of
this section, or only requirements under paragraphs (a), (b), and/or (c)
of this section and the requirement for a processing fee under Sec.
2.22(c), the requirements may be reviewed only by filing a petition to
the Director under Sec.2.146.
[84 FR 31510, July 2, 2019]
Sec. Sec.2.12-2.16 [Reserved]
Sec.2.17 Recognition for representation.
(a) Authority to practice in trademark cases. Only an individual
qualified to practice under Sec.11.14 of this chapter may represent an
applicant, registrant, or party to a proceeding before the Office in a
trademark case.
(b)(1) Recognition of practitioner as representative. To be
recognized as a representative in a trademark case, a practitioner
qualified under Sec.11.14 of this chapter may:
(i) File a power of attorney that meets the requirements of
paragraph (c) of this section;
(ii) Sign a document on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by a practitioner
qualified under Sec.11.14 of this chapter from a different firm; or
(iii) Appear by being identified as the representative in a document
submitted to the Office on behalf of an applicant, registrant, or party
to a proceeding who is not already represented by a practitioner
qualified under Sec.11.14 of this chapter from a different firm.
(2) Authorization to represent. When a practitioner qualified under
Sec.11.14 of this chapter signs a document or appears pursuant to
paragraph (b) of this
[[Page 270]]
section, his or her signature or appearance shall constitute a
representation to the Office that he or she is authorized to represent
the person or entity on whose behalf he or she acts. The Office may
require further proof of authority to act in a representative capacity.
(3) Bar information required. A practitioner qualified under Sec.
11.14(a) of this chapter will be required to provide the name of a
State, as defined in Sec.11.1 of this chapter, in which he or she is
an active member in good standing, the date of admission to the bar of
the named State, and the bar license number, if one is issued by the
named State. The practitioner may be required to provide evidence that
he or she is an active member in good standing of the bar of the
specified State.
(c) Requirements for power of attorney. A power of attorney must:
(1) Designate by name at least one practitioner meeting the
requirements of Sec.11.14 of this chapter; and
(2) Be signed by the individual applicant, registrant, or party to a
proceeding pending before the Office, or by someone with legal authority
to bind the applicant, registrant, or party (e.g., a corporate officer
or general partner of a partnership). In the case of joint applicants or
joint registrants, all must sign. Once the applicant, registrant, or
party has designated a practitioner(s) qualified to practice under Sec.
11.14 of this chapter, that practitioner may sign an associate power of
attorney appointing another qualified practitioner(s) as an additional
person(s) authorized to represent the applicant, registrant, or party.
If the applicant, registrant, or party revokes the original power of
attorney (Sec.2.19(a)), the revocation discharges any associate power
signed by the practitioner whose power has been revoked. If the
practitioner who signed an associate power withdraws (Sec.2.19(b)),
the withdrawal discharges any associate power signed by the withdrawing
practitioner upon acceptance of the request for withdrawal by the
Office.
(d) Power of attorney relating to multiple applications or
registrations. The owner of an application or registration may appoint a
practitioner(s) qualified to practice under Sec.11.14 of this chapter
to represent the owner for all existing applications or registrations
that have the identical owner name.
(e) Foreign attorneys and agents. Recognition to practice before the
Office in trademark matters is governed by Sec.11.14(c) of this
chapter.
(f) Non-lawyers. A non-lawyer may not act as a representative except
in the limited circumstances set forth in Sec.11.14(b) of this
chapter. Before any non-lawyer who meets the requirements of Sec.
11.14(b) of this chapter may take action of any kind with respect to an
application, registration or proceeding, a written authorization must be
filed, signed by the applicant, registrant, or party to the proceeding,
or by someone with legal authority to bind the applicant, registrant, or
party (e.g., a corporate officer or general partner of a partnership).
(g) Duration of recognition. (1) The Office considers recognition as
to a pending application to end when the mark registers, when ownership
changes, or when the application is abandoned.
(2) The Office considers recognition obtained after registration to
end when the mark is cancelled or expired, or when ownership changes. If
a practitioner was recognized as the representative in connection with
an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal
application under section 9 of the Act, or request for amendment or
correction under section 7 of the Act, recognition is deemed to end upon
acceptance or final rejection of the filing.
[84 FR 31510, July 2, 2019, as amended at 84 FR 37093, July 31, 2019]
Sec.2.18 Correspondence, with whom held.
(a) Establishing the correspondent. The Office will send
correspondence as follows:
(1) If the applicant, registrant, or party to a proceeding is not
represented by an attorney qualified to practice before the Office under
Sec.11.14(a) of this chapter, the Office will send correspondence to
the applicant, registrant, or party to the proceeding.
(2) If an attorney is recognized as a representative pursuant to
Sec.2.17(b)(1), the Office will correspond only with that attorney. A
request to change the
[[Page 271]]
correspondence address does not revoke a power of attorney. Except for
service of a cancellation petition, the Office will not correspond
directly with the applicant, registrant, or a party to a proceeding, or
with another attorney from a different firm, unless:
(i) The applicant or registrant files a revocation of the power of
attorney under Sec.2.19(a) and/or a new power of attorney that meets
the requirements of Sec.2.17(c);
(ii) The attorney has been suspended or excluded from practicing in
trademark matters before the USPTO; or
(iii) Recognition of the attorney has ended pursuant to Sec.
2.17(g).
(b) Ex parte matters. Only one correspondence address may be
designated in an ex parte matter.
(c) Maintaining and changing the correspondence addresses. The
applicant, registrant, or party to a proceeding must maintain current
and accurate correspondence addresses, as required by Sec.2.23, for
itself and its attorney, if one is designated. If any of these addresses
change, a request to change the address, signed in accordance with Sec.
2.193(e)(9), must be promptly filed.
(d) Post registration filings under sections 7, 8, 9, 12(c), 15, and
71 of the Act. Even if there is no new power of attorney or written
request to change the correspondence address, the Office will change the
correspondence address upon the examination of an affidavit under
section 8, 12(c), 15, or 71 of the Act, renewal application under
section 9 of the Act, or request for amendment or correction under
section 7 of the Act, if a new address is provided, in accordance with
paragraph (a) of this section.
[84 FR 37093, July 31, 2019]
Sec.2.19 Revocation or withdrawal of attorney.
(a) Revocation. (1) Authority to represent an applicant, registrant
or party to a proceeding before the Office may be revoked at any stage
in the proceedings of a trademark case, upon written notification signed
by the applicant, registrant, or party to the proceeding, or by someone
with legal authority to bind the applicant, registrant, or party (e.g.,
a corporate officer or general partner of a partnership). In the case of
joint applicants or joint registrants, all must sign.
(2) When a power of attorney is revoked, the Office will communicate
directly with the applicant, registrant, or party to the proceeding, or
with the new attorney or domestic representative if appropriate.
(3) A request to change the correspondence address does not revoke a
power of attorney.
(4) A new power of attorney that meets the requirements of Sec.
2.17(c) will be treated as a revocation of the previous power.
(b) Withdrawal of attorney. If the requirements of Sec.11.116 of
this chapter are met, a practitioner authorized to represent an
applicant, registrant, or party to a proceeding in a trademark case may
withdraw upon application to and approval by the Director or, when
applicable, upon motion granted by the Trademark Trial and Appeal Board.
The practitioner should file the request to withdraw soon after the
practitioner notifies the client of his/her intent to withdraw. The
request must include the following:
(1) The application serial number, registration number, or
proceeding number;
(2) A statement of the reason(s) for the request to withdraw; and
(3) Either
(i) A statement that the practitioner has given notice to the client
that the practitioner is withdrawing from employment and will be filing
the necessary documents with the Office; that the client was given
notice of the withdrawal at least two months before the expiration of
the response period, if applicable; that the practitioner has delivered
to the client all documents and property in the practitioner's file
concerning the application, registration or proceeding to which the
client is entitled; and that the practitioner has notified the client of
any responses that may be due, and of the deadline for response; or
(ii) If more than one qualified practitioner is of record, a
statement that representation by co-counsel is ongoing.
[74 FR 54907, Oct. 26, 2009, as amended at 80 FR 2310, Jan. 16, 2015]
[[Page 272]]
Declarations
Sec.2.20 Declarations in lieu of oaths.
Instead of an oath, affidavit, or sworn statement, the language of
28 U.S.C. 1746, or the following declaration language, may be used:
The signatory being warned that willful false statements and the like
are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001,
and that such willful false statements and the like may jeopardize the
validity of the application or submission or any registration resulting
therefrom, declares that all statements made of his/her own knowledge
are true and all statements made on information and belief are believed
to be true.
[80 FR 33178, June 11, 2015]
Application for Registration
Authority: Secs. 2.21 to 2.47 also issued under sec. 1, 60 Stat.
427; 15 U.S.C. 1051.
Sec.2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application under
section 1 or section 44 of the Act that is filed through TEAS, is
written in the English language, and contains all of the following:
(1) The name, address, and email address of each applicant;
(2) If the applicant is represented by a practitioner qualified
under Sec.11.14 of this chapter, the practitioner's name, postal
address, and email address;
(3) A clear drawing of the mark;
(4) A listing of the goods or services; and
(5) The filing fee required under Sec.2.6 for at least one class
of goods or services.
(b) If the applicant does not satisfy all the elements required in
paragraph (a) of this section, the Office will deny a filing date to the
application unless the applicant meets the requirements of paragraph (c)
of this section.
(c) If the applicant is a national of a country that has acceded to
the Trademark Law Treaty, but not to the Singapore Treaty on the Law of
Trademarks, the requirements of paragraph (a) of this section to file
through TEAS and provide an email address do not apply.
[84 FR 37093, July 31, 2019, as amended at 84 FR 68046, Dec. 13, 2019]
Sec.2.22 Requirements for a TEAS Plus application.
(a) A trademark/service mark application for registration on the
Principal Register under section 1 and/or section 44 of the Act that
meets the requirements for a filing date under Sec.2.21 will be
entitled to a reduced filing fee under Sec.2.6(a)(1)(iv) if it
includes:
(1) The applicant's name and domicile address;
(2) The applicant's legal entity;
(3) The citizenship of each individual applicant, or the state or
country of incorporation or organization of each juristic applicant;
(4) If the applicant is a domestic partnership, the names and
citizenship of the general partners, or if the applicant is a domestic
joint venture, the names and citizenship of the active members of the
joint venture;
(5) If the applicant is a sole proprietorship, the state of
organization of the sole proprietorship and the name and citizenship of
the sole proprietor;
(6) One or more bases for filing that satisfy all the requirements
of Sec.2.34. If more than one basis is set forth, the applicant must
comply with the requirements of Sec.2.34 for each asserted basis;
(7) Correctly classified goods and/or services, with an
identification of goods and/or services from the Office's Acceptable
Identification of Goods and Services Manual, available through the TEAS
Plus form. In an application based on section 44 of the Act, the scope
of the goods and/or services covered by the section 44 basis may not
exceed the scope of the goods and/or services in the foreign application
or registration;
(8) If the application contains goods and/or services in more than
one class, compliance with Sec.2.86;
(9) A filing fee for each class of goods and/or services, as
required by Sec.2.6(a)(1)(iv);
(10) A verified statement that meets the requirements of Sec.2.33,
dated and signed by a person properly authorized
[[Page 273]]
to sign on behalf of the owner pursuant to Sec.2.193(e)(1);
(11) If the applicant does not claim standard characters, the
applicant must attach a digitized image of the mark. If the mark
includes color, the drawing must show the mark in color;
(12) If the mark is in standard characters, a mark comprised only of
characters in the Office's standard character set, typed in the
appropriate field of the TEAS Plus form;
(13) If the mark includes color, a statement naming the color(s) and
describing where the color(s) appears on the mark, and a claim that the
color(s) is a feature of the mark;
(14) If the mark is not in standard characters, a description of the
mark;
(15) If the mark includes non-English wording, an English
translation of that wording;
(16) If the mark includes non-Latin characters, a transliteration of
those characters;
(17) If the mark includes an individual's name or portrait, either
(i) a statement that identifies the living individual whose name or
likeness the mark comprises and written consent of the individual, or
(ii) a statement that the name or portrait does not identify a living
individual (see section 2(c) of the Act).
(18) If the applicant owns one or more registrations for the same
mark, and the owner(s) last listed in Office records of the prior
registration(s) for the same mark differs from the owner(s) listed in
the application, a claim of ownership of the registration(s) identified
by the registration number(s), pursuant to Sec.2.36;
(19) If the application is a concurrent use application, compliance
with Sec.2.42; and
(20) An applicant whose domicile is not located within the United
States or its territories must designate an attorney as the applicant's
representative, pursuant to Sec.2.11(a), and include the attorney's
name, postal address, email address, and bar information.
(b) In addition to the filing requirements under paragraph (a) of
this section, the applicant must comply with Sec.2.23(a) and (b).
(c) If an application does not fulfill the requirements of paragraph
(a) of this section, the applicant must pay the processing fee required
by Sec.2.6(a)(1)(v).
(d) The following types of applications cannot be filed as TEAS Plus
applications:
(1) Applications for certification marks (see Sec.2.45);
(2) Applications for collective trademarks and service marks (see
Sec.2.44);
(3) Applications for collective membership marks (see Sec.2.44);
and
(4) Applications for registration on the Supplemental Register (see
Sec.2.47).
[84 FR 37093, July 31, 2019, as amended at 84 FR 68046, Dec. 13, 2019]
Sec.2.23 Requirement to correspond electronically with the Office
and duty to monitor status.
(a) Unless stated otherwise in this chapter, all trademark
correspondence must be submitted through TEAS.
(b) Applicants, registrants, and parties to a proceeding must
provide and maintain a valid email address for correspondence.
(c) If the applicant or registrant is a national of a country that
has acceded to the Trademark Law Treaty, but not to the Singapore Treaty
on the Law of Trademarks, the requirements of paragraphs (a) and (b) of
this section do not apply.
(d) Notices issued or actions taken by the USPTO are displayed in
the USPTO's publicly available electronic systems. Applicants and
registrants are responsible for monitoring the status of their
applications and registrations in the USPTO's electronic systems during
the following time periods:
(1) At least every six months between the filing date of the
application and issuance of a registration; and
(2) After filing an affidavit of use or excusable nonuse under
section 8 or section 71 of the Act, or a renewal application under
section 9 of the Act, at least every six months until the registrant
receives notice that the affidavit or renewal application has been
accepted.
[84 FR 37094, July 31, 2019]
[[Page 274]]
Sec.2.24 Designation and revocation of domestic representative by
foreign applicant.
(a) An applicant or registrant that is not domiciled in the United
States may designate a domestic representative (i.e., a person residing
in the United States on whom notices or process in proceedings affecting
the mark may be served).
(b) The designation, or a request to change or revoke a designation,
must set forth the name, email address, and postal address of the
domestic representative and be signed pursuant to Sec.2.193(e)(8).
(c) The mere designation of a domestic representative does not
authorize the person designated to represent the applicant or
registrant.
[84 FR 37094, July 31, 2019]
Sec.2.25 Documents not returnable.
Except as provided in Sec.2.27(e), documents filed in the Office
by the applicant or registrant become part of the official record and
will not be returned or removed.
[73 FR 67768, Nov. 17, 2008]
Sec.2.27 Pending trademark application index; access to applications.
(a) An index of pending applications including the name and address
of the applicant, a reproduction or description of the mark, the goods
or services with which the mark is used, the class number, the dates of
use, and the serial number and filing date of the application will be
available for public inspection as soon as practicable after filing.
(b) Except as provided in paragraph (e) of this section, access to
the file of a particular pending application will be permitted prior to
publication under Sec.2.80 upon written request.
(c) Decisions of the Director and the Trademark Trial and Appeal
Board in applications and proceedings relating thereto are published or
available for inspection or publication.
(d) Except as provided in paragraph (e) of this section, the
official records of applications and all proceedings relating thereto
are available for public inspection and copies of the documents may be
furnished upon payment of the fee required by Sec.2.6.
(e) Anything ordered to be filed under seal pursuant to a protective
order issued or made by any court or by the Trademark Trial and Appeal
Board in any proceeding involving an application or a registration shall
be kept confidential and shall not be made available for public
inspection or copying unless otherwise ordered by the court or the
Board, or unless the party protected by the order voluntarily discloses
the matter subject thereto. When possible, only confidential portions of
filings with the Board shall be filed under seal.
[36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48
FR 27225, June 14, 1983; 73 FR 67768, Nov. 17, 2008]
The Written Application
Sec.2.31 [Reserved]
Sec.2.32 Requirements for a complete trademark or service mark
application.
(a) The application must be in English and include the following:
(1) A request for registration;
(2) The name, domicile address, and email address of each applicant.
If the applicant is a national of a country that has acceded to the
Trademark Law Treaty, but not to the Singapore Treaty on the Law of
Trademarks, the requirement to provide an email address does not apply;
(3)(i) The legal entity type and citizenship of the applicant(s);
and
(ii) If the applicant is a corporation, association, partnership or
other juristic person, the jurisdiction (usually state or nation) under
the laws of which the applicant is organized;
(iii) If the applicant is a domestic partnership, the names and
citizenship of the general partners;
(iv) If the applicant is a domestic joint venture, the names and
citizenship of the active members of the joint venture; or
(v) If the applicant is a sole proprietorship, the state of
organization of the sole proprietorship and the name and citizenship of
the sole proprietor.
(4) When the applicant is, or must be, represented by an attorney,
as defined in Sec.11.1 of this chapter, who is qualified to practice
under Sec.11.14 of this chapter,
[[Page 275]]
the attorney's name, postal address, email address, and bar information;
(5) One or more bases, as required by Sec.2.34(a);
(6) A list of the particular goods or services on or in connection
with which the applicant uses or intends to use the mark. In a U.S.
application filed under section 44 of the Act, the scope of the goods or
services covered by the section 44 basis may not exceed the scope of the
goods or services in the foreign application or registration;
(7) The international class of goods or services, if known. See
Sec.6.1 of this chapter for a list of the international classes of
goods and services.
(8) If the mark is not in standard characters, a description of the
mark;
(9) If the mark includes non-English wording, an English translation
of that wording; and
(10) If the mark includes non-Latin characters, a transliteration of
those characters, and either a translation of the transliterated term in
English, or a statement that the transliterated term has no meaning in
English.
(b) The application must include a verified statement that meets the
requirements of Sec.2.33.
(c) The application must include a drawing that meets the
requirements of Sec.2.51 and Sec.2.52.
(d) The application must include the fee required by Sec.2.6 for
each class of goods or services.
(e) For the requirements of a multiple-class application, see Sec.
2.86.
(f) For the requirements of all collective mark applications, see
Sec.2.44.
(g) For the requirements of a certification mark application, see
Sec.2.45.
[64 FR 48918, Sept. 8, 1999, as amended at 73 FR 13784, Mar. 14, 2008;
73 FR 67768, Nov. 17, 2008; 80 FR 33178, June 11, 2015; 84 FR 31511,
July 2, 2019; 84 FR 37094, July 31, 2019]
Sec.2.33 Verified statement for a trademark or service mark.
(a) The application must include a verified statement.
(b)(1) In an application under section 1(a) of the Act, the verified
statement must allege:
That the applicant believes the applicant is the owner of the mark; that
the mark is in use in commerce; that to the best of the signatory's
knowledge and belief, no other person has the right to use the mark in
commerce, either in the identical form or in such near resemblance as to
be likely, when applied to the goods or services of such other person,
to cause confusion or mistake, or to deceive; that the specimen shows
the mark as used on or in connection with the goods or services; and
that the facts set forth in the application are true.
(2) In an application under section 1(b) or 44 of the Act, the
verified statement must allege:
That the applicant has a bona fide intention to use the mark in
commerce; that the applicant believes the applicant is entitled to use
the mark in commerce on or in connection with the goods or services
specified in the application; that to the best of the signatory's
knowledge and belief, no other person has the right to use the mark in
commerce, either in the identical form or in such near resemblance as to
be likely, when applied to the goods or services of such other person,
to cause confusion or mistake, or to deceive; and that the facts set
forth in the application are true.
(c) If the verified statement in paragraph (b)(1) or (2) of this
section is not filed within a reasonable time after it is signed, the
Office may require the applicant to submit a substitute verified
statement attesting that the mark was in use in commerce as of the
application filing date, or the applicant had a bona fide intention to
use the mark in commerce as of the application filing date.
(d) [Reserved]
(e) In an application under section 66(a) of the Act, the verified
statement, which is part of the international registration on file with
the International Bureau, must allege that:
(1) The applicant/holder has a bona fide intention to use the mark
in commerce that the U.S. Congress can regulate on or in connection with
the goods or services specified in the international application/
subsequent designation;
(2) The signatory is properly authorized to execute the declaration
on behalf of the applicant/holder;
(3) The signatory believes the applicant/holder to be entitled to
use the mark in commerce that the U.S. Congress can regulate on or in
connection with the goods or services specified in the international
application/subsequent designation; and
(4) To the best of his/her knowledge and belief, no other person,
firm, corporation, association, or other legal entity has the right to
use the mark in commerce that the U.S.
[[Page 276]]
Congress can regulate either in the identical form thereof or in such
near resemblance thereto as to be likely, when used on or in connection
with the goods or services of such other person, firm, corporation,
association, or other legal entity, to cause confusion, or to cause
mistake, or to deceive.
(f) In an application for concurrent use under Sec.2.42, the
verified statement in paragraph (b)(1) of this section must be modified
to indicate that no other person except as specified in the application
has the right to use the mark in commerce.
[80 FR 33178, June 11, 2015]
Sec.2.34 Bases for filing a trademark or service mark application.
(a) An application for a trademark or service mark must include one
or more of the following five filing bases:
(1) Use in commerce under section 1(a) of the Act. The requirements
for an application under section 1(a) of the Act are:
(i) The applicant's verified statement that the mark is in use in
commerce. If the verified statement is not filed with the initial
application, the verified statement must also allege that the mark was
in use in commerce as of the application filing date;
(ii) The date of the applicant's first use of the mark anywhere on
or in connection with the goods or services;
(iii) The date of the applicant's first use of the mark in commerce;
(iv) One specimen showing how the applicant uses the mark in
commerce; and
(v) If the application specifies more than one item of goods or
services in a class, the dates of use in paragraphs (a)(1)(ii) and (iii)
of this section are required for only one item of goods or services
specified in that class.
(2) Intent-to-use under section 1(b) of the Act. In an application
under section 1(b) of the Act, the applicant must verify that the
applicant has a bona fide intention to use the mark in commerce. If the
verified statement is not filed with the initial application, the
verified statement must also allege that the applicant had a bona fide
intention to use the mark in commerce as of the application filing date.
(3) Registration of a mark in a foreign applicant's country of
origin under section 44(e) of the Act. The requirements for an
application under section 44(e) of the Act are:
(i) The applicant's verified statement that the applicant has a bona
fide intention to use the mark in commerce. If the verified statement is
not filed with the initial application, the Office will require
submission of the verified statement, which must also allege that the
applicant had a bona fide intention to use the mark in commerce as of
the application filing date.
(ii) A true copy, a photocopy, a certification, or a certified copy
of a registration in the applicant's country of origin showing that the
mark has been registered in that country, and that the registration is
in full force and effect. The certification or copy of the foreign
registration must show the name of the owner, the mark, and the goods or
services for which the mark is registered. If the foreign registration
is not in the English language, the applicant must submit a translation.
(iii) If the record indicates that the foreign registration will
expire before the U.S. registration will issue, the applicant must
submit a true copy, a photocopy, a certification, or a certified copy of
a proof of renewal from the applicant's country of origin to establish
that the foreign registration has been renewed and will be in full force
and effect at the time the U.S. registration will issue. If the proof of
renewal is not in the English language, the applicant must submit a
translation.
(4) Claim of priority, based upon an earlier-filed foreign
application, under section 44(d) of the Act. The requirements for an
application under section 44(d) of the Act are:
(i) A claim of priority, filed within six months of the filing date
of the foreign application. Before publication or registration on the
Supplemental Register, the applicant must either:
(A) Specify the filing date, serial number and country of the first
regularly filed foreign application; or
(B) State that the application is based upon a subsequent regularly
filed application in the same foreign country, and that any prior-filed
application has been withdrawn, abandoned, or otherwise disposed of,
without having been laid open to public inspection
[[Page 277]]
and without having any rights outstanding, and has not served as a basis
for claiming a right of priority.
(ii) The applicant's verified statement that the applicant has a
bona fide intention to use the mark in commerce. If the verified
statement is not filed with the initial application, the Office will
require submission of the verified statement, which must also allege
that the applicant had a bona fide intention to use the mark in commerce
as of the application filing date.
(iii) Before the application can be approved for publication, or for
registration on the Supplemental Register, the applicant must establish
a basis under section 1 or 44 of the Act.
(5) Extension of protection of an international registration under
section 66(a) of the Act. In an application under section 66(a) of the
Act, the international application/subsequent designation must contain a
signed declaration that meets the requirements of Sec.2.33(a), (e).
(b) More than one basis. In an application under section 1 or 44 of
the Act, an applicant may claim more than one basis, provided the
applicant satisfies all requirements for the bases claimed. In such
case, the applicant must specify each basis and the goods or services to
which that basis applies. An applicant must specify the goods or
services covered by more than one basis. Section 1(a) and 1(b) of the
Act may not both be claimed for identical goods or services in the same
application. A basis under section 66(a) of the Act may not be combined
with another basis.
[64 FR 48919, Sept. 8, 1999, as amended at 67 FR 79522, Dec. 30, 2002;
68 FR 55763, Sept. 26, 2003; 73 FR 67768, Nov. 17, 2008; 77 FR 30207,
May 22, 2012; 80 FR 33179, June 11, 2015]
Sec.2.35 Adding, deleting, or substituting bases.
(a) In an application under section 66(a) of the Act, an applicant
may not add, substitute or delete a basis, unless the applicant meets
the requirements for transformation under section 70(c) of the Act and
Sec.7.31 of this chapter.
(b) In an application under section 1 or section 44 of the Act:
(1) Before publication for opposition, an applicant may add or
substitute a basis, if the applicant meets all requirements for the new
basis, as stated in Sec.2.34, Sec.2.44, or Sec.2.45. The applicant
may delete a basis at any time.
(2) After publication, an applicant may add or substitute a basis in
an application that is not the subject of an inter partes proceeding
before the Trademark Trial and Appeal Board, but only with the express
permission of the Director, after consideration on petition.
Republication will be required. The amendment of an application that is
the subject of an inter partes proceeding before the Board is governed
by Sec.2.133(a).
(3) When an applicant substitutes one basis for another, the Office
will presume that there was a continuing valid basis, unless there is
contradictory evidence in the record, and the application will retain
the original filing date, including a priority filing date under section
44(d), if appropriate.
(4) If an applicant properly claims a section 44(d) basis in
addition to another basis, the applicant will retain the priority filing
date under section 44(d) no matter which basis the applicant perfects.
(5) The applicant may add or substitute a section 44(d) basis only
within the six-month priority period following the filing date of the
foreign application.
(6) When the applicant adds or substitutes a basis, the applicant
must list each basis and specify the goods, services, or collective
membership organization to which that basis applies.
(7) When the applicant deletes a basis, the applicant must also
delete any goods, services, or collective membership organization
covered solely by the deleted basis.
(8) Once an applicant claims a section 1(b) basis as to any or all
of the goods or services, or a collective membership organization, the
applicant may not amend the application to seek registration under
section 1(a) of the Act for identical goods or services or the same
collective membership organization, unless the applicant files an
allegation of use under section 1(c) or section 1(d) of the Act.
[68 FR 55763, Sept. 26, 2003, as amended at 80 FR 33180, June 11, 2015]
[[Page 278]]
Sec.2.36 Identification of prior registrations.
Prior registrations of the same or similar marks owned by the
applicant should be identified in the application if the owner(s) last
listed in Office records of the prior registrations differs from the
owner(s) listed in the application.
[80 FR 2310, Jan. 16, 2015]
Sec.2.37 Description of mark.
A description of the mark must be included if the mark is not in
standard characters. In an application where the mark is in standard
characters, a description may be included and must be included if
required by the trademark examining attorney.
[73 FR 13784, Mar. 14, 2008]
Sec.2.38 Use by predecessor or by related companies.
(a) If the first use of the mark was by a predecessor in title or by
a related company (sections 5 and 45 of the Act), and the use inures to
the benefit of the applicant, the dates of first use (Sec. Sec.
2.34(a)(1) (ii) and (iii)) may be asserted with a statement that first
use was by the predecessor in title or by the related company, as
appropriate.
(b) The Office may require such details concerning the nature of the
relationship and such proofs as may be necessary and appropriate for the
purpose of showing that the use by related companies inures to the
benefit of the applicant and does not affect the validity of the mark.
(Sec. 5, 60 Stat. 429; 15 U.S.C. 1055)
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989;
64 FR 48920, Sept. 8, 1999; 80 FR 2310, Jan. 16, 2015]
Sec.2.39 [Reserved]
Sec.2.41 Proof of distinctiveness under section 2(f).
(a) For a trademark or service mark--(1) Ownership of prior
registration(s). In appropriate cases, ownership of one or more active
prior registrations on the Principal Register or under the Trademark Act
of 1905 of the same mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are sufficiently similar to the
goods or services in the application; however, further evidence may be
required.
(2) Five years substantially exclusive and continuous use in
commerce. In appropriate cases, if a trademark or service mark is said
to have become distinctive of the applicant's goods or services by
reason of the applicant's substantially exclusive and continuous use of
the mark in commerce for the five years before the date on which the
claim of distinctiveness is made, a showing by way of verified
statements in the application may be accepted as prima facie evidence of
distinctiveness; however, further evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive in commerce of the applicant's goods
or services, the applicant may, in support of registrability, submit
with the application, or in response to a request for evidence or to a
refusal to register, verified statements, depositions, or other
appropriate evidence showing duration, extent, and nature of the use in
commerce and advertising expenditures in connection therewith
(identifying types of media and attaching typical advertisements), and
verified statements, letters or statements from the trade or public, or
both, or other appropriate evidence of distinctiveness.
(b) For a collective trademark or collective service mark--(1)
Ownership of prior registration(s). See the requirements of paragraph
(a)(1) of this section.
(2) Five years substantially exclusive and continuous use in
commerce. In appropriate cases, if a collective trademark or collective
service mark is said to have become distinctive of the members' goods or
services by reason of the members' substantially exclusive and
continuous use of the mark in commerce for the five years before the
date on which the claim of distinctiveness is made, a showing by way of
verified statements in the application may be accepted as prima facie
evidence of distinctiveness; however, further evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive in commerce of the members' goods or
services, the applicant may, in support of
[[Page 279]]
registrability, submit with the application, or in response to a request
for evidence or to a refusal to register, verified statements,
depositions, or other appropriate evidence showing duration, extent, and
nature of the use in commerce, and advertising expenditures in
connection therewith (identifying types of media and attaching typical
advertisements), and verified statements, letters or statements from the
trade or public, or both, or other appropriate evidence of
distinctiveness.
(c) For a collective membership mark--(1) Ownership of prior
registration(s). In appropriate cases, ownership of one or more active
prior registrations on the Principal Register or under the Act of 1905
of the same mark may be accepted as prima facie evidence of
distinctiveness if the goods, services, or nature of the collective
membership organization are sufficiently similar to the collective
membership organization in the application; however, further evidence
may be required.
(2) Five years substantially exclusive and continuous use in
commerce. In appropriate cases, if a collective membership mark is said
to have become distinctive of indicating membership in the applicant's
collective membership organization by reason of the members'
substantially exclusive and continuous use of the mark in commerce for
the five years before the date on which the claim of distinctiveness is
made, a showing by way of verified statements in the application may be
accepted as prima facie evidence of distinctiveness; however, further
evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive in commerce of indicating membership
in the applicant's collective membership organization, the applicant
may, in support of registrability, submit with the application, or in
response to a request for evidence or to a refusal to register, verified
statements, depositions, or other appropriate evidence showing duration,
extent, and nature of the members' use in commerce, and advertising
expenditures in connection therewith (identifying types of media and
attaching typical advertisements), and verified statements, letters or
statements from the trade or public, or both, or other appropriate
evidence of distinctiveness.
(d) For a certification mark--(1) Ownership of prior certification
mark registration(s). In appropriate cases, ownership of one or more
active prior certification mark registrations on the Principal Register
or under the Act of 1905 of the same mark may be accepted as prima facie
evidence of distinctiveness if the authorized users' goods or services
are sufficiently similar to the goods or services certified in the
application, subject to the limitations of the statement set forth in
Sec.2.45(a)(4)(i)(C); however, further evidence may be required.
(2) Five years substantially exclusive and continuous use in
commerce. In appropriate cases, if a certification mark is said to have
become distinctive of the certified goods or services by reason of the
authorized users' substantially exclusive and continuous use of the mark
in commerce for the five years before the date on which the claim of
distinctiveness is made, a showing by way of verified statements in the
application may be accepted as prima facie evidence of distinctiveness;
however, further evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims
that a mark has become distinctive of the certified goods or services
program, the applicant may, in support of registrability, submit with
the application, or in response to a request for evidence or to a
refusal to register, verified statements, depositions, or other
appropriate evidence showing duration, extent, and nature of the
authorized users' use in commerce and advertising expenditures in
connection therewith (identifying types of media and attaching typical
advertisements), and verified statements, letters or statements from the
trade or public, or both, or other appropriate evidence of
distinctiveness.
(e) Certification marks with geographical matter. Paragraph (d) of
this section does not apply to geographical matter in a certification
mark certifying regional origin because section
[[Page 280]]
2(e)(2) of the Act does not apply to certification marks that are
indications of regional origin.
[80 FR 33180, June 11, 2015]
Sec.2.42 Concurrent use.
(a) Prior to seeking concurrent use, an application for registration
on the Principal Register under the Act must assert use in commerce and
include all the application elements required by the preceding sections,
in addition to Sec.2.44 or Sec.2.45, if applicable.
(b) The applicant must also include a verified statement that
indicates the following, to the extent of the applicant's knowledge:
(1) For a trademark or service mark, the geographic area in which
the applicant is using the mark in commerce; for a collective mark or
certification mark, the geographic area in which the applicant's members
or authorized users are using the mark in commerce;
(2) For a trademark or service mark, the applicant's goods or
services; for a collective trademark, collective service mark, or
certification mark, the applicant's members' or authorized users' goods
or services; for a collective membership mark, the nature of the
applicant's collective membership organization;
(3) The mode of use for which the applicant seeks registration;
(4) The concurrent users' names and addresses;
(5) The registrations issued to or applications filed by such
concurrent users, if any;
(6) For a trademark or service mark, the geographic areas in which
the concurrent user is using the mark in commerce; for a collective mark
or certification mark, the geographic areas in which the concurrent
user's members or authorized users are using the mark in commerce;
(7) For a trademark or service mark, the concurrent user's goods or
services; for a collective trademark, collective service mark, or
certification mark, the concurrent user's members' or authorized users'
goods or services; for a collective membership mark, the nature of the
concurrent user's collective membership organization;
(8) The mode of use by the concurrent users or the concurrent users'
members or authorized users; and
(9) The time periods of such use by the concurrent users or the
concurrent users' members or authorized users.
(c) For the requirements to amend an application to concurrent use,
see Sec.2.73.
(d) For the requirements of a concurrent use proceeding, see Sec.
2.99.
[80 FR 33181, June 11, 2015]
Sec.2.43 Service mark.
In an application to register a service mark, the application shall
specify and contain all the elements required by the preceding sections
for trademarks, but shall be modified to relate to services instead of
to goods wherever necessary.
(Sec. 3, 60 Stat. 429; 15 U.S.C. 1052)
Sec.2.44 Requirements for a complete collective mark application.
(a) A complete application to register a collective trademark,
collective service mark, or collective membership mark must include the
following:
(1) The requirements specified in Sec.2.32(a) introductory text
through (a)(4), (a)(8) through (10), (c), and (d);
(2)(i) For a collective trademark or collective service mark, a list
of the particular goods or services on or in connection with which the
applicant's members use or intend to use the mark; or
(ii) For a collective membership mark, a description of the nature
of the membership organization such as by type, purpose, or area of
activity of the members; and
(iii) In a U.S. application filed under section 44 of the Act, the
scope of the goods or services or the nature of the membership
organization covered by the section 44 basis may not exceed the scope of
the goods or services or nature of the membership organization in the
foreign application or registration.
(3)(i) For a collective trademark or collective service mark
application, the international class of goods or services, if known. See
Sec.6.1 of this chapter for a list of the international classes of
goods and services; or
[[Page 281]]
(ii) For a collective membership mark application filed under
sections 1 or 44 of the Act, classification in U.S. Class 200; and for a
collective membership mark application filed under section 66(a) of the
Act, the international class(es) assigned by the International Bureau in
the corresponding international registration.
(4) One or more of the following five filing bases:
(i) Use in commerce under section 1(a) of the Act. The requirements
for an application under section 1(a) of the Act are:
(A) A statement specifying the nature of the applicant's control
over the use of the mark by the members;
(B) For a collective trademark or collective service mark, the date
of the applicant's member's first use of the mark anywhere on or in
connection with the goods or services and the date of the applicant's
member's first use of the mark in commerce; or for a collective
membership mark, the date of the applicant's member's first use anywhere
to indicate membership in the collective organization and the date of
the applicant's member's first use in commerce. If the application
specifies more than one item of goods or services in a class, the dates
of use are required for only one item of goods or services specified in
that class;
(C) One specimen showing how a member uses the mark in commerce; and
(D) A verified statement alleging:
That the applicant believes the applicant is the owner of the mark;
that the mark is in use in commerce; that the applicant is exercising
legitimate control over the use of the mark in commerce; that to the
best of the signatory's knowledge and belief, no other persons except
members have the right to use the mark in commerce, either in the
identical form or in such near resemblance as to be likely, when used on
or in connection with the goods, services, or collective membership
organization of such other persons to cause confusion or mistake, or to
deceive; that the specimen shows the mark as used in commerce by the
applicant's members; and that the facts set forth in the application are
true.
(ii) Intent-to-use under section 1(b) of the Act. The requirement
for an application based on section 1(b) of the Act is a verified
statement alleging:
That the applicant has a bona fide intention, and is entitled, to
exercise legitimate control over the use of the mark in commerce; that
to the best of the signatory's knowledge and belief, no other persons,
except members, have the right to use the mark in commerce, either in
the identical form or in such near resemblance as to be likely, when
used on or in connection with the goods, services, or collective
membership organization of such other persons, to cause confusion or
mistake, or to deceive; and that the facts set forth in the application
are true.
(iii) Registration of a mark in a foreign applicant's country of
origin under section 44(e) of the Act. The requirements for an
application under section 44(e) of the Act are:
(A) The requirements of Sec.2.34(a)(3)(ii) and (iii); and
(B) A verified statement in accordance with paragraph (a)(4)(ii) of
this section.
(iv) Claim of priority, based upon an earlier-filed foreign
application, under section 44(d) of the Act. The requirements for an
application under section 44(d) of the Act are:
(A) The requirements of Sec.2.34(a)(4)(i) and (iii); and
(B) A verified statement in accordance with paragraph (a)(4)(ii) of
this section.
(v) Extension of protection of an international registration under
section 66(a) of the Act. The requirement for an application under
section 66(a) of the Act is a verified statement alleging that the
applicant/holder has a bona fide intention, and is entitled, to exercise
legitimate control over the use of the mark in commerce that the U.S.
Congress can regulate on or in connection with the goods or services
specified in the international application/subsequent designation; that
the signatory is properly authorized to execute the declaration on
behalf of the applicant/holder; and that to the best of his/her
knowledge and belief, no other person, firm, corporation, association,
or other legal entity, except members, has the right to use the mark in
commerce
[[Page 282]]
that the U.S. Congress can regulate either in the identical form thereof
or in such near resemblance thereto as to be likely, when used on or in
connection with the goods, services, or collective membership
organization of such other person, firm, corporation, association, or
other legal entity, to cause confusion, or to cause mistake, or to
deceive.
(b) Verification not filed within reasonable time or omitted. (1) If
the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii),
(a)(4)(iii)(B), or (a)(4)(iv)(B) of this section is not filed within a
reasonable time after it is signed, the Office may require the applicant
to submit a substitute verified statement attesting that, as of the
application filing date, the mark was in use in commerce and the
applicant was exercising legitimate control over the use of the mark in
commerce; or, as of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control
over the use of the mark in commerce; or
(2) If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii),
(a)(4)(iii)(B), (a)(4)(iv)(B), or (a)(4)(v) of this section is not filed
with the initial application, the verified statement must also allege
that, as of the application filing date, the mark was in use in commerce
and the applicant was exercising legitimate control over the use of the
mark in commerce; or, as of the application filing date, the applicant
had a bona fide intention, and was entitled, to exercise legitimate
control over the use of the mark in commerce.
(c) More than one basis. In an application under section 1 or 44 of
the Act, an applicant may claim more than one basis, provided the
applicant satisfies all requirements for the bases claimed. In such
case, the applicant must specify each basis, followed by the goods,
services, or collective membership organization to which that basis
applies. An applicant must specify the goods, services, or collective
membership organization covered by more than one basis. Section 1(a) and
1(b) of the Act may not both be claimed for identical goods, or
services, or the same collective membership organization in one
application. A basis under section 66(a) of the Act may not be combined
with another basis.
(d) In an application for concurrent use under Sec.2.42, the
verified statement in paragraph (a)(4)(i)(D) of this section must be
modified to indicate that no other persons except members and the
concurrent users as specified in the application have the right to use
the mark in commerce.
(e) Multiple-class applications. For the requirements of a multiple-
class application, see Sec.2.86.
[80 FR 33181, June 11, 2015]
Sec.2.45 Requirements for a complete certification mark application;
restriction on certification mark application.
(a) A complete application to register a certification mark must
include the following:
(1) The requirements specified in Sec.2.32(a) introductory text
through (a)(4), (a)(8) through (10), (c), and (d);
(2) A list of the particular goods or services on or in connection
with which the applicant's authorized users use or intend to use the
mark. In an application filed under section 44 of the Act, the scope of
the goods or services covered by the section 44 basis may not exceed the
scope of the goods or services in the foreign application or
registration;
(3) For applications filed under section 1 or 44 of the Act,
classification in U.S. Class A for an application certifying goods and
U.S. Class B for an application certifying services. For applications
filed under section 66(a) of the Act, the international class(es) of
goods or services assigned by the International Bureau in the
corresponding international registration;
(4) One or more of the following five filing bases:
(i) Use in commerce under section 1(a) of the Act. The requirements
for an application under section 1(a) of the Act are:
(A) A statement specifying what the applicant is certifying about
the goods or services in the application;
(B) A copy of the certification standards governing use of the
certification mark on or in connection with the goods or services
specified in the application;
[[Page 283]]
(C) A statement that the applicant is not engaged in the production
or marketing of the goods or services to which the mark is applied,
except to advertise or promote recognition of the certification program
or of the goods or services that meet the certification standards of the
applicant;
(D) The date of the applicant's authorized user's first use of the
mark anywhere on or in connection with the goods or services and the
date of the applicant's authorized user's first use of the mark in
commerce. If the application specifies more than one item of goods or
services in a class, the dates of use are required for only one item of
goods or services specified in that class;
(E) One specimen showing how an authorized user uses the mark in
commerce; and
(F) A verified statement alleging:
That the applicant believes the applicant is the owner of the mark;
that the mark is in use in commerce; that the applicant is exercising
legitimate control over the use of the mark in commerce; that to the
best of the signatory's knowledge and belief, no other persons except
authorized users have the right to use the mark in commerce, either in
the identical form or in such near resemblance as to be likely, when
used on or in connection with the goods or services of such other
persons, to cause confusion or mistake, or to deceive; that the specimen
shows the mark as used in commerce by the applicant's authorized users;
and that the facts set forth in the application are true.
(ii) Intent-to-use under section 1(b) of the Act. The requirements
for an application based on section 1(b) of the Act are:
(A) A statement specifying what the applicant will be certifying
about the goods or services in the application;
(B) A statement that the applicant will not engage in the production
or marketing of the goods or services to which the mark is applied,
except to advertise or promote recognition of the certification program
or of the goods or services that meet the certification standards of the
applicant; and
(C) A verified statement alleging:
That the applicant has a bona fide intention, and is entitled, to
exercise legitimate control over the use of the mark in commerce; that
to the best of the signatory's knowledge and belief, no other persons,
except authorized users, have the right to use the mark in commerce,
either in the identical form or in such near resemblance as to be
likely, when used on or in connection with the goods or services of such
other persons, to cause confusion or mistake, or to deceive; and that
the facts set forth in the application are true.
(iii) Registration of a mark in a foreign applicant's country of
origin under section 44(e) of the Act. The requirements for an
application under section 44(e) of the Act are:
(A) The requirements of Sec.2.34(a)(3)(ii) and (iii);
(B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this
section; and
(C) A verified statement in accordance with paragraph (a)(4)(ii)(C)
of this section.
(iv) Claim of priority, based upon an earlier-filed foreign
application, under section 44(d) of the Act. The requirements for an
application under section 44(d) of the Act are:
(A) The requirements of Sec.2.34(a)(4)(i) and (iii);
(B) The requirements in paragraphs (a)(4)(ii)(A) and (B) of this
section; and
(C) A verified statement in accordance with paragraph (a)(4)(ii)(C)
of this section.
(v) Extension of protection of an international registration under
section 66(a) of the Act. The requirements for an application under
section 66(a) of the Act are:
(A) The requirements of paragraphs (a)(4)(ii)(A) and (B) of this
section; and
(B) A verified statement alleging that the applicant/holder has a
bona fide intention, and is entitled, to exercise legitimate control
over the use of the mark in commerce that the U.S. Congress can regulate
on or in connection with the goods or services specified in the
international application/subsequent designation; that the signatory is
properly authorized to execute the declaration on behalf of the
applicant/holder; and that to the best of his/
[[Page 284]]
her knowledge and belief, no other person, firm, corporation,
association, or other legal entity, except authorized users, has the
right to use the mark in commerce that the U.S. Congress can regulate
either in the identical form thereof or in such near resemblance thereto
as to be likely, when used on or in connection with the goods or
services of such other person, firm, corporation, association, or other
legal entity, to cause confusion, or to cause mistake, or to deceive.
(b) Verification not filed within reasonable time or omitted. (1) If
the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C),
(a)(4)(iii)(C), or (a)(4)(iv)(C) of this section is not filed within a
reasonable time after it is signed, the Office may require the applicant
to submit a substitute verified statement attesting that, as of the
application filing date, the mark was in use in commerce and the
applicant was exercising legitimate control over the use of the mark in
commerce; or, as of the application filing date, the applicant had a
bona fide intention, and was entitled, to exercise legitimate control
over the use of the mark in commerce; or
(2) If the verified statement in paragraph (a)(4)(i)(F),
(a)(4)(ii)(C), (a)(4)(iii)(C), (a)(4)(iv)(C), or (a)(4)(v)(B) of this
section is not filed with the initial application, the verified
statement must also allege that, as of the application filing date, the
mark was in use in commerce and the applicant was exercising legitimate
control over the use of the mark in commerce; or, as of the application
filing date, the applicant had a bona fide intention, and was entitled,
to exercise legitimate control over the use of the mark in commerce.
(c) More than one basis. In an application under section 1 or 44 of
the Act, an applicant may claim more than one basis, provided the
applicant satisfies all requirements for the bases claimed. In such
case, the applicant must specify each basis, followed by the goods or
services to which that basis applies. An applicant must specify the
goods or services covered by more than one basis. Section 1(a) and 1(b)
of the Act may not both be claimed for identical goods or services in
the same application. A basis under section 66(a) of the Act may not be
combined with another basis.
(d) Concurrent use. In an application for concurrent use under Sec.
2.42, the verified statement in paragraph (a)(4)(i)(F) of this section
must be modified to indicate that no other persons except authorized
users and concurrent users as specified in the application have the
right to use the mark in commerce.
(e) Multiple-class applications. For the requirements of a multiple-
class application, see Sec.2.86.
(f) Restriction on certification mark application. A single
application may not include a certification mark and another type of
mark. The same mark for the same goods or services is not registrable as
both a certification mark and another type of mark. See sections 4 and
14(5)(B) of the Act.
[80 FR 33182, June 11, 2015]
Sec.2.46 Principal Register.
All applications will be treated as seeking registration on the
Principal Register unless otherwise stated in the application. Service
marks, collective marks, and certification marks, registrable in
accordance with the applicable provisions of section 2 of the Act, are
registered on the Principal Register.
Sec.2.47 Supplemental Register.
(a) In an application to register on the Supplemental Register under
section 23 of the Act, the application shall so indicate and shall
specify that the mark has been in use in commerce.
(b) In an application to register on the Supplemental Register under
section 44 of the Act, the application shall so indicate. The statement
of lawful use in commerce may be omitted.
(c) An application under section 66(a) of the Act is not eligible
for registration on the Supplemental Register.
(d) A mark in an application to register on the Principal Register
under section 1(b) of the Act is eligible for registration on the
Supplemental Register only after an acceptable amendment to allege use
under Sec.2.76 or statement of use under Sec.2.88 has been timely
filed.
[[Page 285]]
(e) An application for registration on the Supplemental Register
must conform to the requirements for registration on the Principal
Register under section 1(a) of the Act, so far as applicable.
[54 FR 37590, Sept. 11, 1989, as amended at 68 FR 55763, Sept. 26, 2003;
73 FR 67769, Nov. 17, 2008]
Sec.2.48 Office does not issue duplicate registrations.
If two applications on the same register would result in
registrations that are exact duplicates, the Office will permit only one
application to mature into registration, and will refuse registration in
the other application.
[73 FR 67769, Nov. 17, 2008]
Drawing
Authority: Secs. 2.51 to 2.55 also issued under sec. 1, 60 Stat.
427; 15 U.S.C. 1051.
Sec.2.51 Drawing required.
(a) In an application under section 1(a) of the Act, the drawing of
the mark must be a substantially exact representation of the mark as
used on or in connection with the goods and/or services.
(b) In an application under section 1(b) of the Act, the drawing of
the mark must be a substantially exact representation of the mark as
intended to be used on or in connection with the goods and/or services
specified in the application, and once an amendment to allege use under
Sec.2.76 or a statement of use under Sec.2.88 has been filed, the
drawing of the mark must be a substantially exact representation of the
mark as used on or in connection with the goods and/or services.
(c) In an application under section 44 of the Act, the drawing of
the mark must be a substantially exact representation of the mark as it
appears in the drawing in the registration certificate of a mark duly
registered in the applicant's country of origin.
(d) In an application under section 66(a) of the Act, the drawing of
the mark must be a substantially exact representation of the mark as it
appears in the international registration.
[68 FR 55763, Sept. 26, 2003]
Sec.2.52 Types of drawings and format for drawings.
A drawing depicts the mark sought to be registered. The drawing must
show only one mark. The applicant must include a clear drawing of the
mark when the application is filed. There are two types of drawings:
(a) Standard character (typed) drawing. Applicants who seek to
register words, letters, numbers, or any combination thereof without
claim to any particular font style, size, or color must submit a
standard character drawing that shows the mark in black on a white
background. An applicant may submit a standard character drawing if:
(1) The application includes a statement that the mark is in
standard characters and no claim is made to any particular font style,
size, or color;
(2) The mark does not include a design element;
(3) All letters and words in the mark are depicted in Latin
characters;
(4) All numerals in the mark are depicted in Roman or Arabic
numerals; and
(5) The mark includes only common punctuation or diacritical marks.
(b) Special form drawing. Applicants who seek to register a mark
that includes a two or three-dimensional design; color; and/or words,
letters, or numbers or the combination thereof in a particular font
style or size must submit a special form drawing. The drawing should
show the mark in black on a white background, unless the mark includes
color.
(1) Marks that include color. If the mark includes color, the
drawing must show the mark in color, and the applicant must name the
color(s), describe where the color(s) appear on the mark, and submit a
claim that the color(s) is a feature of the mark.
(2) Three dimensional marks. If the mark has three-dimensional
features, the drawing must depict a single rendition of the mark, and
the applicant must indicate that the mark is three-dimensional.
(3) Motion marks. If the mark has motion, the drawing may depict a
single point in the movement, or the drawing may depict up to five
freeze frames
[[Page 286]]
showing various points in the movement, whichever best depicts the
commercial impression of the mark. The applicant must also describe the
mark.
(4) Broken lines to show placement. If necessary to adequately
depict the commercial impression of the mark, the applicant may be
required to submit a drawing that shows the placement of the mark by
surrounding the mark with a proportionately accurate broken-line
representation of the particular goods, packaging, or advertising on
which the mark appears. The applicant must also use broken lines to show
any other matter not claimed as part of the mark. For any drawing using
broken lines to indicate placement of the mark, or matter not claimed as
part of the mark, the applicant must describe the mark and explain the
purpose of the broken lines.
(5) Description of mark. A description of the mark must be included.
(c) TEAS drawings. A drawing filed through TEAS must meet the
requirements of Sec.2.53.
(d) Paper drawings. A paper drawing must meet the requirements of
Sec.2.54.
(e) Sound, scent, and non-visual marks. An applicant is not required
to submit a drawing if the mark consists only of a sound, a scent, or
other completely non-visual matter. For these types of marks, the
applicant must submit a detailed description of the mark.
[68 FR 55763, Sept. 26, 2003, as amended at 73 FR 13784, Mar. 14, 2008;
73 FR 67769, Nov. 17, 2008]
Sec.2.53 Requirements for drawings filed through the TEAS.
The drawing must meet the requirements of Sec.2.52. In addition,
in a TEAS submission, the drawing must meet the following requirements:
(a) Standard character drawings. If an applicant seeks registration
of a standard character mark, the applicant must enter the mark in the
appropriate field on the TEAS form, and check the box to claim that the
mark consists of standard characters.
(b) Special form drawings: If an applicant is filing a special form
drawing, the applicant must attach a digitized image of the mark to the
TEAS submission that meets the requirements of paragraph (c) of this
section.
(c) Requirements for digitized image: The image must be in .jpg
format and scanned at no less than 300 dots per inch and no more than
350 dots per inch with a length and width of no less than 250 pixels and
no more than 944 pixels. All lines must be clean, sharp and solid, not
fine or crowded, and produce a high quality image when copied.
[68 FR 55764, Sept. 26, 2003, as amended at 70 FR 38774, July 6, 2005;
73 FR 67769, Nov. 17, 2008]
Sec.2.54 Requirements for drawings submitted on paper.
The drawing must meet the requirements of Sec.2.52. In addition,
in a paper submission, the drawing should:
(a) Be on non-shiny white paper that is separate from the
application;
(b) Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and
11 to 11.69 inches (27.9 to 29.7 cm.) long. One of the shorter sides of
the sheet should be regarded as its top edge. The image must be no
larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
(c) Include the caption ``DRAWING PAGE'' at the top of the drawing
beginning one inch (2.5 cm.) from the top edge; and
(d) Depict the mark in black ink, or in color if color is claimed as
a feature of the mark.
(e) Drawings must be typed or made with a pen or by a process that
will provide high definition when copied. A photolithographic, printer's
proof copy, or other high quality reproduction of the mark may be used.
All lines must be clean, sharp and solid, and must not be fine or
crowded.
[68 FR 55764, Sept. 26, 2003]
Sec.2.56 Specimens.
(a) An application under section 1(a) of the Act, an amendment to
allege use under Sec.2.76, a statement of use under Sec.2.88, an
affidavit or declaration of continued use or excusable nonuse under
Sec.2.160, or an affidavit or declaration of use or excusable nonuse
under Sec.7.36 must include one specimen per class showing the mark as
actually used in commerce on or in connection with the goods or services
identified. When requested by the Office as reasonably
[[Page 287]]
necessary to proper examination, additional specimens must be provided.
(b)(1) A trademark specimen must show use of the mark on the goods,
on containers or packaging for the goods, on labels or tags affixed to
the goods, or on a display associated with the goods. To constitute a
display associated with the goods, a specimen must show use of the mark
directly associated with the goods and such use must be of a point-of-
sale nature. The Office may accept another document related to the goods
or the sale of the goods when it is impracticable to place the mark on
the goods, packaging for the goods, or displays associated with the
goods.
(2) A service mark specimen must show the mark as used in the sale
of the services, including use in the performance or rendering of the
services, or in the advertising of the services. The specimen must show
a direct association between the mark and the services.
(3) A collective trademark or collective service mark specimen must
show how a member uses the mark on the member's goods or in the sale of
the services, including use in the performance or rendering of the
services, or advertising of the member's services.
(4) A collective membership mark specimen must show use by members
to indicate membership in the collective organization.
(5) A certification mark specimen must show how a person other than
the owner uses the mark to reflect certification of regional or other
origin, material, mode of manufacture, quality, accuracy, or other
characteristics of that person's goods or services; or that members of a
union or other organization performed the work or labor on the goods or
services.
(c) A clear and legible photocopy, photograph, web page printout, or
other similar type of reproduction of an actual specimen that meets the
requirements of paragraphs (a) and (b) of this section is acceptable.
The reproduction must show the entire specimen or enough of the specimen
that the nature of the specimen, the mark, and the good or service with
which the mark is used are identifiable. A web page must include the URL
and access or print date. An artist's rendering, a printer's proof, a
computer illustration, digital image, or similar mockup of how the mark
may be displayed, or a photocopy of the drawing required by Sec.2.51,
are not proper specimens.
(d) The specimen must be submitted through TEAS in a file format
designated as acceptable by the Office, unless:
(1) The mark consists of a scent, flavor, or similar non-traditional
mark type, in which case the specimen may be mailed to the Office,
pursuant to Sec.2.190(a), without resort to the procedures set forth
in Sec.2.147; or
(2) Submission on paper is permitted under Sec.2.23(c) or is
accepted on petition pursuant to Sec.2.147.
[84 FR 37095, July 31, 2019]
Sec. Sec.2.57-2.58 [Reserved]
Sec.2.59 Filing substitute specimen(s).
(a) In an application under section 1(a) of the Act, the applicant
may submit substitute specimens of the mark as used on or in connection
with the goods or in the sale or advertising of the services, or as used
to indicate membership in the collective organization. The applicant
must submit a verified statement that the substitute specimen was in use
in commerce at least as early as the filing date of the application. The
verified statement is not required if the specimen is a duplicate or
facsimile of a specimen already of record in the application.
(b) In an application under section 1(b) of the Act, after filing
either an amendment to allege use under Sec.2.76 or a statement of use
under Sec.2.88, the applicant may submit substitute specimens of the
mark as used on or in connection with the goods or in the sale or
advertising of the services, or as used to indicate membership in the
collective organization. If the applicant submits substitute
specimen(s), the applicant must:
(1) For an amendment to allege use under Sec.2.76, submit a
verified statement that the substitute specimen(s) was in use in
commerce prior to filing the amendment to allege use.
(2) For a statement of use under Sec.2.88, submit a verified
statement that the substitute specimen(s) was in use
[[Page 288]]
in commerce either prior to filing the statement of use or prior to the
expiration of the deadline for filing the statement of use.
[80 FR 33183, June 11, 2015]
Examination of Application and Action by Applicants
Authority: Secs. 2.61 to 2.69 also issued under sec. 12, 60 Stat.
432; 15 U.S.C. 1062.
Sec.2.61 Action by examiner.
(a) Applications for registration, including amendments to allege
use under section 1(c) of the Act, and statements of use under section
1(d) of the Act, will be examined and, if the applicant is found not
entitled to registration for any reason, applicant will be notified and
advised of the reasons therefor and of any formal requirements or
objections.
(b) The Office may require the applicant to furnish such
information, exhibits, affidavits or declarations, and such additional
specimens as may be reasonably necessary to the proper examination of
the application.
(c) Whenever it shall be found that two or more parties whose
interests are in conflict are represented by the same attorney, each
party and also the attorney shall be notified of this fact.
[30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb. 9, 1972; 54
FR 37592, Sept. 11, 1989; 77 FR 30207, May 22, 2012]
Sec.2.62 Procedure for submitting response.
(a) Deadline. The applicant's response to an Office action must be
received by the USPTO within six months from the issue date.
(b) Signature. The response must be signed by the applicant, someone
with legal authority to bind the applicant (e.g., a corporate officer or
general partner of a partnership), or a practitioner qualified to
practice under Sec.11.14 of this chapter, in accordance with the
requirements of Sec.2.193(e)(2).
(c) Form. Responses must be submitted through TEAS pursuant to Sec.
2.23(a). Responses sent via email or facsimile will not be accorded a
date of receipt.
[84 FR 37095, July 31, 2019]
Sec.2.63 Action after response.
(a) Repeated non-final refusal or requirement. After response by the
applicant, the examining attorney will review all statutory refusals
and/or requirement(s) in light of the response.
(1) If, after review of the applicant's response, the examining
attorney issues a non-final action that maintains any previously issued
substantive refusal(s) to register or repeats any requirement(s), the
applicant may submit a timely response to the action under Sec.
2.62(a).
(2) If, after review of the applicant's response, the examining
attorney issues a non-final action that contains no substantive refusals
to register, but maintains any requirement(s), the applicant may respond
to such repeated requirement(s) by filing a timely petition to the
Director for relief from the repeated requirement(s) if the subject
matter of the repeated requirement(s) is appropriate for petition to the
Director (see Sec.2.146(b)).
(b) Final refusal or requirement. Upon review of a response, the
examining attorney may state that the refusal(s) to register, or the
requirement(s), is final.
(1) If the examining attorney issues a final action that maintains
any substantive refusal(s) to register, the applicant may respond by
timely filing:
(i) A request for reconsideration under paragraph (b)(3) of this
section that seeks to overcome any substantive refusal(s) to register,
and comply with any outstanding requirement(s), maintained in the final
action; or
(ii) An appeal to the Trademark Trial and Appeal Board under
Sec. Sec.2.141 and 2.142.
(2) If the examining attorney issues a final action that contains no
substantive refusals to register, but maintains any requirement(s), the
applicant may respond by timely filing:
(i) A request for reconsideration under paragraph (b)(3) of this
section that seeks to comply with any outstanding requirement(s)
maintained in the final action;
(ii) An appeal of the requirement(s) to the Trademark Trial and
Appeal Board under Sec. Sec.2.141 and 2.142; or
(iii) A petition to the Director under Sec.2.146 to review the
requirement(s), if
[[Page 289]]
the subject matter of the requirement(s) is procedural, and therefore
appropriate for petition.
(3) Prior to the expiration of the time for filing an appeal or a
petition, the applicant may file a request for reconsideration of the
final action that seeks to overcome any substantive refusal(s) and/or
comply with any outstanding requirement(s). Filing a request for
reconsideration does not stay or extend the time for filing an appeal or
petition. The Office will enter amendments accompanying requests for
reconsideration after final action if the amendments comply with the
rules of practice in trademark cases and the Act.
(4) Filing a request for reconsideration that does not result in the
withdrawal of all refusals and requirements, without the filing of a
timely appeal or petition, will result in abandonment of the application
for incomplete response, pursuant to Sec.2.65(a).
(c) If a petition to the Director under Sec.2.146 is denied, the
applicant will have six months from the date of issuance of the Office
action that repeated the requirement(s), or made it final, or thirty
days from the date of the decision on the petition, whichever date is
later, to comply with the requirement(s). A requirement that is the
subject of a petition decided by the Director subsequently may not be
the subject of an appeal to the Trademark Trial and Appeal Board.
(d) If an applicant in an application under section 1(b) of the Act
files an amendment to allege use under Sec.2.76 during the six-month
response period after issuance of a final action, the examining attorney
will examine the amendment. The filing of such an amendment does not
stay or extend the time for filing an appeal or petition.
[80 FR 2310, Jan. 16, 2015]
Sec.2.64 Reinstatement of applications and registrations abandoned,
cancelled, or expired due to Office error.
(a) Request for Reinstatement of an Abandoned Application. The
applicant may file a written request to reinstate an application
abandoned due to Office error. There is no fee for a request for
reinstatement.
(1) Deadline. The applicant must file the request by not later than:
(i) Two months after the issue date of the notice of abandonment; or
(ii) Two months after the date of actual knowledge of the
abandonment and not later than six months after the date the trademark
electronic records system indicates that the application is abandoned,
where the applicant declares under Sec.2.20 or 28 U.S.C. 1746 that it
did not receive the notice of abandonment.
(2) Requirements. A request to reinstate an application abandoned
due to Office error must include:
(i) Proof that a response to an Office action, a statement of use,
or a request for extension of time to file a statement of use was timely
filed and a copy of the relevant document;
(ii) Proof of actual receipt by the Office of a response to an
Office action, a statement of use, or a request for extension of time to
file a statement of use and a copy of the relevant document;
(iii) Proof that the Office processed a fee in connection with the
filing at issue and a copy of the relevant document;
(iv) Proof that the Office sent the Office action or notice of
allowance to an address that is not the designated correspondence
address; or
(v) Other evidence, or factual information supported by a
declaration under Sec.2.20 or 28 U.S.C. 1746, demonstrating Office
error in abandoning the application.
(b) Request for Reinstatement of Cancelled or Expired Registration.
The registrant may file a written request to reinstate a registration
cancelled or expired due to Office error. There is no fee for the
request for reinstatement.
(1) Deadline. The registrant must file the request by not later
than:
(i) Two months after the issue date of the notice of cancellation/
expiration; or
(ii) Where the registrant has timely filed an affidavit of use or
excusable non-use under section 8 or 71 of the Act, or a renewal
application under section 9 of the Act, two months after the date of
actual knowledge of the cancellation/expiration and not later than six
months after the date the
[[Page 290]]
trademark electronic records system indicates that the registration is
cancelled/expired, where the registrant declares under Sec.2.20 or 28
U.S.C. 1746 that it did not receive the notice of cancellation/
expiration or where the Office did not issue a notice.
(2) Requirements. A request to reinstate a registration cancelled/
expired due to Office error must include:
(i) Proof that an affidavit or declaration of use or excusable
nonuse, a renewal application, or a response to an Office action was
timely filed and a copy of the relevant document;
(ii) Proof of actual receipt by the Office of an affidavit or
declaration of use or excusable nonuse, a renewal application, or a
response to an Office action and a copy of the relevant document;
(iii) Proof that the Office processed a fee in connection with the
filing at issue and a copy of the relevant document;
(iv) Proof that the Office sent the Office action to an address that
is not the designated correspondence address; or
(v) Other evidence, or factual information supported by a
declaration under Sec.2.20 or 28 U.S.C. 1746, demonstrating Office
error in cancelling/expiring the registration.
(c) Request for Reinstatement May be Construed as Petition. If an
applicant or registrant is not entitled to reinstatement, a request for
reinstatement may be construed as a petition to the Director under Sec.
2.146 or a petition to revive under Sec.2.66, if appropriate. If the
applicant or registrant is unable to meet the timeliness requirement
under paragraphs (a)(1) or (b)(1) of this section for filing the
request, the applicant or registrant may submit a petition to the
Director under Sec.2.146(a)(5) to request a waiver of the rule.
[82 FR 29407, June 29, 2017]
Sec.2.65 Abandonment.
(a) An application will be abandoned if an applicant fails to
respond to an Office action, or to respond completely, within six months
from the date of issuance. A timely petition to the Director pursuant to
Sec. Sec.2.63(a) and (b) and 2.146 or notice of appeal to the
Trademark Trial and Appeal Board pursuant to Sec.2.142, if
appropriate, is a response that avoids abandonment (see Sec.
2.63(b)(4)).
(1) If all refusals and/or requirements are expressly limited to
certain goods and/or services, the application will be abandoned only as
to those goods and/or services.
(2) When a timely response by the applicant is a bona fide attempt
to advance the examination of the application and is a substantially
complete response to the examining attorney's action, but consideration
of some matter or compliance with a requirement has been omitted, the
examining attorney may grant the applicant thirty days, or to the end of
the response period set forth in the action to which the substantially
complete response was submitted, whichever is longer, to explain and
supply the omission before the examining attorney considers the question
of abandonment.
(b) An application will be abandoned if an applicant expressly
abandons the application pursuant to Sec.2.68.
(c) An application will be abandoned if an applicant in an
application under section 1(b) of the Act fails to timely file either a
statement of use under Sec.2.88 or a request for an extension of time
for filing a statement of use under Sec.2.89.
[80 FR 2311, Jan. 16, 2015]
Sec.2.66 Revival of applications abandoned in full or in part due
to unintentional delay.
(a) Deadline. The applicant may file a petition to revive an
application abandoned in full or in part because the applicant did not
timely respond to an Office action or notice of allowance, if the delay
was unintentional. The applicant must file the petition by not later
than:
(1) Two months after the issue date of the notice of abandonment in
full or in part; or
(2) Two months after the date of actual knowledge of the abandonment
and not later than six months after the date the trademark electronic
records system indicates that the application is abandoned in full or in
part, where the applicant declares under Sec.2.20 or 28 U.S.C. 1746
that it did not receive the notice of abandonment.
[[Page 291]]
(b) Petition To Revive Application Abandoned in Full or in Part for
Failure To Respond to an Office Action. A petition to revive an
application abandoned in full or in part because the applicant did not
timely respond to an Office action must include:
(1) The petition fee required by Sec.2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the response on or before the due date
was unintentional; and
(3) A response to the Office action, signed pursuant to Sec.
2.193(e)(2), or a statement that the applicant did not receive the
Office action or the notification that an Office action issued. If the
applicant asserts that the unintentional delay is based on non-receipt
of an Office action or notification, the applicant may not assert non-
receipt of the same Office action or notification in a subsequent
petition. When the abandonment is after a final Office action, the
response is treated as a request for reconsideration under Sec.
2.63(b)(3) and the applicant must also file:
(i) A notice of appeal to the Trademark Trial and Appeal Board under
Sec.2.141 or a petition to the Director under Sec.2.146, if
permitted by Sec.2.63(b)(2)(iii); or
(ii) A statement that no appeal or petition is being filed from the
final refusal(s) or requirement(s).
(c) Petition To Revive Application Abandoned for Failure To Respond
to a Notice of Allowance. A petition to revive an application abandoned
because the applicant did not timely respond to a notice of allowance
must include:
(1) The petition fee required by Sec.2.6;
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the statement of use (or request for
extension of time to file a statement of use) on or before the due date
was unintentional; and one of the following:
(i) A statement of use under Sec.2.88, signed pursuant to Sec.
2.193(e)(1), and the required fees for the number of requests for
extensions of time to file a statement of use that the applicant should
have filed under Sec.2.89 if the application had never been abandoned;
(ii) A request for an extension of time to file a statement of use
under Sec.2.89, signed pursuant to Sec.2.193(e)(1), and the required
fees for the number of requests for extensions of time to file a
statement of use that the applicant should have filed under Sec.2.89
if the application had never been abandoned;
(iii) A statement that the applicant did not receive the notice of
allowance and a request to cancel said notice and issue a new notice. If
the applicant asserts that the unintentional delay in responding is
based on non-receipt of the notice of allowance, the applicant may not
assert non-receipt of the notice of allowance in a subsequent petition;
or
(iv) In a multiple-basis application, an amendment, signed pursuant
to Sec.2.193(e)(2), deleting the section 1(b) basis and seeking
registration based on section 1(a) and/or section 44(e) of the Act.
(3) The applicant must file any further requests for extensions of
time to file a statement of use under Sec.2.89 that become due while
the petition is pending, or file a statement of use under Sec.2.88.
(d) Statement of Use or Petition To Substitute a Basis May Not Be
Filed More Than 36 Months After Issuance of the Notice of Allowance. In
an application under section 1(b) of the Act, the Director will not
grant a petition under this section if doing so would permit an
applicant to file a statement of use, or a petition under Sec.2.35(b)
to substitute a basis, more than 36 months after the issue date of the
notice of allowance under section 13(b)(2) of the Act.
(e) Request for Reconsideration. If the Director denies a petition
to revive under this section, the applicant may request reconsideration,
if:
(1) The applicant files the request by not later than:
(i) Two months after the issue date of the decision denying the
petition; or
(ii) Two months after the date of actual knowledge of the decision
denying the petition and not later than six months after the issue date
of the decision where the applicant declares under Sec.2.20 or 28
U.S.C. 1746 that it did not receive the decision; and
[[Page 292]]
(2) The applicant pays a second petition fee under Sec.2.6.
[82 FR 29408, June 29, 2017]
Sec.2.67 Suspension of action by the Patent and Trademark Office.
Action by the Patent and Trademark Office may be suspended for a
reasonable time for good and sufficient cause. The fact that a
proceeding is pending before the Patent and Trademark Office or a court
which is relevant to the issue of registrability of the applicant's
mark, or the fact that the basis for registration is, under the
provisions of section 44(e) of the Act, registration of the mark in a
foreign country and the foreign application is still pending, will be
considered prima facie good and sufficient cause. An applicant's request
for a suspension of action under this section filed within the 6-month
response period (see Sec.2.62) may be considered responsive to the
previous Office action. The first suspension is within the discretion of
the Examiner of Trademarks and any subsequent suspension must be
approved by the Director.
[37 FR 3898, Feb. 24, 1972]
Sec.2.68 Express abandonment (withdrawal) of application.
(a) Written document required. An applicant may expressly abandon an
application by filing a written request for abandonment or withdrawal of
the application, signed by the applicant, someone with legal authority
to bind the applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec.11.14
of this chapter, in accordance with the requirements of Sec.
2.193(e)(2). A request for abandonment or withdrawal may not
subsequently be withdrawn.
(b) Rights in the mark not affected. Except as provided in Sec.
2.135, the fact that an application has been expressly abandoned shall
not affect any rights that the applicant may have in the mark set forth
in the abandoned application in any proceeding before the Office.
[80 FR 2311, Jan. 16, 2015]
Sec.2.69 Compliance with other laws.
When the sale or transportation of any product for which
registration of a trademark is sought is regulated under an Act of
Congress, the Patent and Trademark Office may make appropriate inquiry
as to compliance with such Act for the sole purpose of determining
lawfulness of the commerce recited in the application.
[54 FR 37592, Sept. 11, 1989]
Amendment of Application
Sec.2.71 Amendments to correct informalities.
The applicant may amend the application during the course of
examination, when required by the Office or for other reasons.
(a) The applicant may amend the application to clarify or limit, but
not to broaden, the identification of goods and/or services or the
description of the nature of the collective membership organization.
(b)(1) If the verified statement in an application under Sec.2.33
is unsigned or signed by the wrong party, the applicant may submit a
substitute verification.
(2) If the verified statement in a statement of use under Sec.
2.88, or a request for extension of time to file a statement of use
under Sec.2.89, is unsigned or signed by the wrong party, the
applicant must submit a substitute verification before the expiration of
the statutory deadline for filing the statement of use.
(c) The applicant may amend the dates of use, provided that the
amendment is verified, except that the following amendments are not
permitted:
(1) In an application under section 1(a) of the Act, the applicant
may not amend the application to specify a date of use that is
subsequent to the filing date of the application;
(2) In an application under section 1(b) of the Act, after filing a
statement of use under Sec.2.88, the applicant may not amend the
statement of use to specify a date of use that is subsequent to the
expiration of the deadline for filing the statement of use.
(d) The applicant may amend the application to correct the name of
the applicant, if there is a mistake in the
[[Page 293]]
manner in which the name of the applicant is set out in the application.
The amendment must be verified. However, the application cannot be
amended to set forth a different entity as the applicant. An application
filed in the name of an entity that did not own the mark as of the
filing date of the application is void.
(e) An amendment that would materially alter the certification
statement specified in Sec.2.45(a)(4)(i)(A) or (a)(4)(ii)(A) will not
be permitted.
[64 FR 48922, Sept. 8, 1999, as amended at 80 FR 33184, June 11, 2015]
Sec.2.72 Amendments to description or drawing of the mark.
(a) In an application based on use in commerce under section 1(a) of
the Act, the applicant may amend the description or drawing of the mark
only if:
(1) The specimens originally filed, or substitute specimens filed
under Sec.2.59(a), support the proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
(b) In an application based on a bona fide intention to use a mark
in commerce under section 1(b) of the Act, the applicant may amend the
description or drawing of the mark only if:
(1) The specimens filed with an amendment to allege use or statement
of use, or substitute specimens filed under Sec.2.59(b), support the
proposed amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
(c) In an application based on a claim of priority under section
44(d) of the Act, or on a mark duly registered in the country of origin
of the foreign applicant under section 44(e) of the Act, the applicant
may amend the description or drawing of the mark only if:
(1) The description or drawing of the mark in the foreign
registration certificate supports the amendment; and
(2) The proposed amendment does not materially alter the mark. The
Office will determine whether a proposed amendment materially alters a
mark by comparing the proposed amendment with the description or drawing
of the mark filed with the original application.
[64 FR 48922, Sept. 8, 1999]
Sec.2.73 Amendment to recite concurrent use.
An application that includes section 1(a) of the Trademark Act as a
filing basis, or for which an acceptable allegation of use under Sec.
2.76 or Sec.2.88 has been filed, may be amended to an application for
concurrent use registration, provided that the application as amended
meets the requirements of Sec.2.42. The trademark examining attorney
will determine whether the application, as amended, is acceptable.
[73 FR 67770, Nov. 17, 2008]
Sec.2.74 Form and signature of amendment.
(a) Form of Amendment. Amendments should be set forth clearly and
completely. Applicant should either set forth the entire wording,
including the proposed changes, or, if it would be more efficient,
indicate which words should be added and which words should be deleted.
The examining attorney may require the applicant to rewrite the entire
amendment, if necessary for clarification of the record.
(b) Signature. A request for amendment of an application must be
signed by the applicant, someone with legal authority to bind the
applicant (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec.11.14
of this chapter, in accordance with the requirements of Sec.
2.193(e)(2). If the amendment requires verification, see Sec.2.2(n).
[73 FR 67770, Nov. 17, 2008, as amended at 74 FR 54908, Oct. 26, 2009;
80 FR 33184, June 11, 2015]
[[Page 294]]
Sec.2.75 Amendment to change application to different register.
(a) An application for registration on the Principal Register under
section 1(a) or 44 of the Act may be changed to an application for
registration on the Supplemental Register and vice versa by amending the
application to comply with the rules relating to the appropriate
register, as the case may be.
(b) An application under section 1(b) of the Act may be amended to
change the application to a different register only after submission of
an acceptable amendment to allege use under Sec.2.76 or statement of
use under Sec.2.88. When such an application is changed from the
Principal Register to the Supplemental Register, the effective filing
date of the application is the date of the filing of the allegation of
use under section 1(c) or 1(d) of the Act.
(c) In an application under section 66(a) of the Act, the applicant
may not amend the application to the Supplemental Register.
[54 FR 37593, Sept. 11, 1989, as amended at 68 FR 55765, Sept. 26, 2003]
Sec.2.76 Amendment to allege use.
(a) When to file an amendment to allege use. (1) An application
under section 1(b) of the Act may be amended to allege use of the mark
in commerce under section 1(c) of the Act at any time between the filing
of the application and the date the examiner approves the mark for
publication. Thereafter, an allegation of use may be submitted only as a
statement of use under Sec.2.88 after the issuance of a notice of
allowance under section 13(b)(2) of the Act. An amendment to allege use
filed outside the time period specified in this paragraph will not be
reviewed.
(2)(i) For a trademark, service mark, collective trademark,
collective service mark, and certification mark, an amendment to allege
use may be filed only when the mark has been in use in commerce on or in
connection with all the goods or services specified in the application
for which the applicant will seek registration. For a collective
membership mark, an amendment to allege use may be filed only when the
mark has been in use in commerce to indicate membership in the
collective organization specified in the application for which the
applicant will seek registration.
(ii) An amendment to allege use may be accompanied by a request in
accordance with Sec.2.87 to divide out from the application the goods,
services, or classes not yet in use in commerce.
(b) A complete amendment to allege use. A complete amendment to
allege use must include the following:
(1) A verified statement alleging:
(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods or services, and/or to indicate membership in the
collective organization specified in the application, and the date of
first use of the mark in commerce. If the amendment to allege use
specifies more than one item of goods or services in a class, the dates
of use are required for only one item of goods or services specified in
that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the application; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark.
(2) One specimen showing how the applicant, member, or authorized
user uses the mark in commerce. See Sec.2.56 for the requirements for
specimens;
(3) The fee per class required by Sec.2.6;
(4) For a collective mark, the requirements of Sec.
2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of Sec.
2.45(a)(4)(i)(A)-(C); and
(6) The title ``Amendment to Allege Use'' should appear at the top
of the first page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed amendment to
allege use. The Office will review a timely filed amendment to allege
use to determine whether it meets the following minimum requirements:
(1) The fee required by Sec.2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
[[Page 295]]
(3) The verified statement in paragraph (b)(1)(ii) of this section.
(d) Deficiency notification. If the amendment to allege use is filed
within the permitted time period but does not meet the minimum
requirements specified in paragraph (c) of this section, the Office will
notify the applicant of the deficiency. The deficiency may be corrected
provided the mark has not been approved for publication. If an
acceptable amendment to correct the deficiency is not filed prior to
approval of the mark for publication, the amendment will not be
examined, and the applicant must instead file a statement of use after
the notice of allowance issues.
(e) Notification of refusals and requirements. A timely filed
amendment to allege use that meets the minimum requirements specified in
paragraph (c) of this section will be examined in accordance with
Sec. Sec.2.61 through 2.69. If, as a result of the examination of the
amendment to allege use, the applicant is found not entitled to
registration for any reason not previously stated, the applicant will be
notified and advised of the reasons and of any formal requirements or
refusals. The notification shall restate or incorporate by reference all
unresolved refusals or requirements previously stated. The amendment to
allege use may be amended in accordance with Sec. Sec.2.59 and 2.71
through 2.75.
(f) Withdrawal. An amendment to allege use may be withdrawn for any
reason prior to approval of a mark for publication.
(g) Verification not filed within reasonable time. If the verified
statements in paragraphs (b)(1)(ii) and, if applicable, (b)(1)(v) of
this section are not filed within a reasonable time after they are
signed, the Office may require the applicant to submit substitute
verified statements attesting that the mark is in use in commerce, and,
if applicable, the applicant is exercising legitimate control over the
use of the mark in commerce.
(h) An amendment to allege use is not a response but may include
amendments. The filing of an amendment to allege use does not constitute
a response to any outstanding action by the examiner. See Sec.2.62.
The amendment to allege use may include amendments in accordance with
Sec. Sec.2.59 and 2.71 through 2.75.
(i) If the application is amended to concurrent use under Sec.
2.73, the amendment to allege use must include a verified statement
modified in accordance with Sec.2.33(f), Sec.2.44(d), or Sec.
2.45(d).
(j) Multiple-class application. For the requirements of a multiple-
class application, see Sec.2.86.
[80 FR 33184, June 11, 2015]
Sec.2.77 Amendments between notice of allowance and statement of use.
(a) The only amendments that may be entered in an application
between the issuance of the notice of allowance and the submission of a
statement of use are:
(1) The deletion of specified goods or services, or the entire
description of the nature of the collective membership organization,
from the identification;
(2) The deletion of a basis in a multiple-basis application; and
(3) A change of attorney or change of address.
(b) Other amendments may be entered during this period only with the
express permission of the Director, after consideration on petition
under Sec.2.146. If the Director determines that the amendment
requires review by the examining attorney, the petition will be denied
and the amendment may be resubmitted with the statement of use in order
for the applicant to preserve its right to review.
[73 FR 67770, Nov. 17, 2008, as amended at 80 FR 2311, Jan. 16, 2015; 80
FR 33185, June 11, 2015]
Publication and Post Publication
Sec.2.80 Publication for opposition.
If, on examination or reexamination of an application for
registration on the Principal Register, it appears that the applicant is
entitled to have his mark registered, the mark will be published in the
Official Gazette for opposition. The mark will also be published in the
case of an application to be placed in interference or concurrent
[[Page 296]]
use proceedings, if otherwise registrable.
[41 FR 758, Jan. 5, 1976]
Sec.2.81 Post publication.
(a) Except in an application under section 1(b) of the Act for which
no amendment to allege use under Sec.2.76 has been submitted and
accepted, if no opposition is filed within the time permitted or all
oppositions filed are dismissed, and if no interference is declared and
no concurrent use proceeding is instituted, the application will be
prepared for issuance of the certificate of registration as provided in
Sec.2.151.
(b) In an application under section 1(b) of the Act for which no
amendment to allege use under Sec.2.76 has been submitted and
accepted, if no opposition is filed within the time permitted or all
oppositions filed are dismissed, and if no interference is declared, a
notice of allowance will issue. Thereafter, the applicant must submit a
statement of use as provided in Sec.2.88.
[54 FR 37594, Sept. 11, 1989, as amended at 73 FR 67770, Nov. 17, 2008;
80 FR 2311, Jan. 16, 2015]
Sec.2.82 Marks on Supplemental Register published only upon
registration.
In the case of an application for registration on the Supplemental
Register the mark will not be published for opposition but if it
appears, after examination or reexamination, that the applicant is
entitled to have the mark registered, a certificate of registration will
issue as provided in Sec.2.151. The mark will be published in the
Official Gazette when registered.
[54 FR 37594, Sept. 11, 1989]
Sec.2.83 Conflicting marks.
(a) Whenever an application is made for registration of a mark which
so resembles another mark or marks pending registration as to be likely
to cause confusion or mistake or to deceive, the mark with the earliest
effective filing date will be published in the Official Gazette for
opposition if eligible for the Principal Register, or issued a
certificate of registration if eligible for the Supplemental Register.
(b) In situations in which conflicting applications have the same
effective filing date, the application with the earliest date of
execution will be published in the Official Gazette for opposition or
issued on the Supplemental Register.
(c) Action on the conflicting application which is not published in
the Official Gazette for opposition or not issued on the Supplemental
Register will be suspended by the Examiner of Trademarks until the
published or issued application is registered or abandoned.
[37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, Sept. 11, 1989]
Sec.2.84 Jurisdiction over published applications.
(a) The trademark examining attorney may exercise jurisdiction over
an application up to the date the mark is published in the Official
Gazette. After publication of an application under section 1(a), 44 or
66(a) of the Act, the trademark examining attorney may, with the
permission of the Director, exercise jurisdiction over the application.
After publication of an application under section 1(b) of the Act, the
trademark examining attorney may exercise jurisdiction over the
application after the issuance of the notice of allowance under section
13(b)(2) of the Act. After publication, and prior to issuance of a
notice of allowance in an application under section 1(b), the trademark
examining attorney may, with the permission of the Director, exercise
jurisdiction over the application.
(b) After publication, but before the certificate of registration is
issued in an application under section 1(a), 44, or 66(a) of the Act, or
before the notice of allowance is issued in an application under section
1(b) of the Act, an application that is not the subject of an inter
partes proceeding before the Trademark Trial and Appeal Board may be
amended if the amendment meets the requirements of Sec. Sec.2.71,
2.72, and 2.74. Otherwise, an amendment to such an application may be
submitted only upon petition to the Director to restore jurisdiction
over the application to the examining attorney for consideration of the
amendment and further examination. The amendment of an application that
is the subject of an
[[Page 297]]
inter partes proceeding before the Trademark Trial and Appeal Board is
governed by Sec.2.133.
[68 FR 55765, Sept. 26, 2003, as amended at 73 FR 67770, Nov. 17, 2008;
80 FR 2311, Jan. 16, 2015]
Classification
Sec.2.85 Classification schedules.
(a) International classification system. Section 6.1 of this chapter
sets forth the international system of classification for goods and
services, which applies for all statutory purposes to:
(1) Applications filed in the Office on or after September 1, 1973,
and resulting registrations; and
(2) Registrations resulting from applications filed on or before
August 31, 1973, that have been amended to adopt international
classification pursuant to Sec.2.85(e)(3).
(b) Prior United States classification system. Section 6.2 of this
chapter sets forth the prior United States system of classification for
goods and services, which applies for all statutory purposes to
registrations resulting from applications filed on or before August 31,
1973, unless:
(1) The registration has been amended to adopt international
classification pursuant to Sec.2.85(e)(3); or
(2) The registration was issued under a classification system prior
to that set forth in Sec.6.2.
(c) Certification marks and collective membership marks. Sections
6.3 and 6.4 specify the system of classification which applies to
certification marks and collective membership marks in applications
based on sections 1 and 44 of the Act, and to registrations resulting
from applications based on sections 1 and 44. These sections do not
apply to applications under section 66(a) or to registered extensions of
protection.
(d) Section 66(a) applications and registered extensions of
protection. In an application under section 66(a) of the Act or
registered extension of protection, the classification cannot be changed
from the classification assigned by the International Bureau of the
World Intellectual Property Organization, unless the International
Bureau corrects the classification. Classes cannot be added, and goods
or services cannot be transferred from one class to another in a
multiple-class application.
(e) Changes to Nice Agreement. The international classification
system changes periodically, pursuant to the Nice Agreement Concerning
the International Classification of Goods and Services for the Purposes
of the Registration of Marks. These changes are listed in the
International Classification of Goods and Services for the Purposes of
the Registration of Marks, which is published by the World Intellectual
Property Organization.
(1) If international classification changes pursuant to the Nice
Agreement, the new classification applies only to applications filed on
or after the effective date of the change.
(2) In a section 1 or section 44 application filed before the
effective date of a change to the Nice Agreement, the applicant may
amend the application to comply with the requirements of the current
edition. The applicant must comply with the current edition for all
goods or services identified in the application. The applicant must pay
the fees for any added class(es).
(3) In a registration resulting from a section 1 or section 44
application that was filed before the effective date of a change to the
Nice Agreement, the owner may amend the registration to comply with the
requirements of the current edition. The owner must reclassify all goods
or services identified in the registration to the current edition. The
owner must pay the fee required by Sec.2.6 for amendments under
section 7 of the Act. The owner may reclassify registrations from
multiple United States classes (Sec.2.85(b)) into a single
international classification, where appropriate.
(f) Classification schedules shall not limit or extend the
applicant's rights, except that in a section 66(a) application, the
scope of the identification of goods or services for purposes of
permissible amendments (see Sec.2.71(a)) is limited by the class,
pursuant to Sec.2.85(d).
[73 FR 67770, Nov. 17, 2008]
Sec.2.86 Multiple-class applications.
(a) In a single application for a trademark, service mark, and/or
collective
[[Page 298]]
mark, an applicant may apply to register the same mark for goods,
services, and/or a collective membership organization in multiple
classes. In a multiple-class application, the applicant must satisfy the
following, in addition to the application requirements of Sec.2.32 for
a trademark or service mark, and Sec.2.44 for collective marks:
(1) For an application filed under section 1 or 44 of the Act,
identify the goods or services in each international class and/or the
nature of the collective membership organization in U.S. Class 200; for
applications filed under section 66(a) of the Act, identify the goods,
services, and/or the nature of the collective membership organization in
each international class assigned by the International Bureau in the
corresponding international registration;
(2) Submit the application filing fee required by Sec.2.6 for each
class; and
(3) Include either dates of use and one specimen for each class
based on section 1(a) of the Act; or a statement that the applicant has
a bona fide intention to use the mark in commerce, for a trademark or
service mark, or a statement that the applicant has a bona fide
intention, and is entitled, to exercise legitimate control over the use
of the mark in commerce, for collective marks, for each class based on
section 1(b), 44, or 66(a) of the Act. When requested by the Office,
additional specimens must be provided.
(b) In a single application for a certification mark, an applicant
may apply to register the same certification mark for goods and
services. In such case, the applicant must satisfy the following, in
addition to the application requirements of Sec.2.45:
(1) For an application filed under section 1 or 44 of the Act,
identify the goods in U.S. Class A and the services in U.S. Class B; for
applications filed under section 66(a) of the Act, identify the goods
and services in each international class assigned by the International
Bureau in the corresponding international registration;
(2) Submit the application filing fee required by Sec.2.6 for both
classes; and
(3) Include either dates of use and one specimen for each class
based on section 1(a) of the Act; or a statement that the applicant has
a bona fide intention, and is entitled, to exercise legitimate control
over the use of the mark in commerce for each class based on section
1(b), 44, or 66(a) of the Act. When requested by the Office, additional
specimens must be provided.
(c) In a single application, both section 1(a) and 1(b) of the Act
may not be claimed for identical goods or services.
(d) In a single application based on section 1 or 44 of the Act,
goods or services in U.S. Classes A and/or B may not be combined with
either goods or services in any international class or with a collective
membership organization in U.S. Class 200; and in a single application
based on section 66(a) of the Act, a certification mark application may
not be combined with goods, services, or a collective membership
organization in any international class. See Sec.2.45(f).
(e) An amendment to allege use under Sec.2.76 or a statement of
use under Sec.2.88 for multiple classes must include, for each class,
the required fee, dates of use, and one specimen. When requested by the
Office, additional specimens must be provided. The applicant may not
file an amendment to allege use or a statement of use until the
applicant has used the mark on or in connection with all the goods,
services, or classes, unless the applicant also files a request to
divide under Sec.2.87.
(f) The Office will issue a single certificate of registration for
the mark, unless the applicant files a request to divide under Sec.
2.87.
[80 FR 33185, June 11, 2015]
Sec.2.87 Dividing an application.
(a) Application may be divided. An application may be divided into
two or more separate applications upon the payment of a fee for each new
application created and submission by the applicant of a request in
accordance with paragraph (d) of this section.
(b) Fee. In the case of a request to divide out one or more entire
classes from an application, only the fee for dividing an application as
set forth in Sec.2.6(a)(19) will be required. However, in the case of
a request to divide out some, but not all, of the goods or services in a
class, the applicant must submit the application filing fee as set forth
in Sec.2.6(a)(1) for each new separate
[[Page 299]]
application to be created by the division, in addition to the fee for
dividing an application.
(c) Time for filing. (1) A request to divide an application may be
filed at any time between the application filing date and the date on
which the trademark examining attorney approves the mark for
publication; or during an opposition, concurrent use, or interference
proceeding, upon motion granted by the Trademark Trial and Appeal Board.
(2) In an application under section 1(b) of the Act, a request to
divide may also be filed with a statement of use under Sec.2.88 or at
any time between the filing of a statement of use and the date on which
the trademark examining attorney approves the mark for registration.
(3) In a multiple-basis application, a request to divide out goods
or services having a particular basis may also be filed during the
period between the issuance of the notice of allowance under section
13(b)(2) of the Act and the filing of a statement of use under Sec.
2.88.
(d) Form. A request to divide an application should be made in a
separate document from any other amendment or response in the
application. The title ``Request to Divide Application'' should appear
at the top of the first page of the document.
(e) Outstanding time periods apply to newly created applications.
Any time period for action by the applicant which is outstanding in the
original application at the time of the division will apply to each
separate new application created by the division, except as follows:
(1) If an Office action pertaining to less than all the classes in a
multiple-class application is outstanding, and the applicant files a
request to divide out the goods, services, and/or class(es) to which the
Office action does not pertain before the response deadline, a response
to the Office action is not due in the new (child) application(s)
created by the division of the application;
(2) If an Office action pertaining to less than all the bases in a
multiple-basis application is outstanding, and the applicant files a
request to divide out the goods/services having the basis or bases to
which the Office action does not pertain before the response deadline, a
response to the Office action is not due in the new (child)
application(s) created by the division of the application; or
(3) In a multiple-basis application in which a notice of allowance
has issued, if the applicant files a request to divide out the goods/
services having the basis or bases to which the notice of allowance does
not pertain before the deadline for filing the statement of use, the new
(child) applications created by the division are not affected by the
notice of allowance.
(f) Signature. The request to divide must be signed by the
applicant, someone with legal authority to bind the applicant (e.g., a
corporate officer or general partner of a partnership), or a
practitioner who meets the requirements of Sec.11.14, in accordance
with the requirements of Sec.2.193(e)(2).
(g) Section 66(a) applications--change of ownership with respect to
some but not all of the goods or services. (1) When the International
Bureau of the World Intellectual Property Organization notifies the
Office that an international registration has been divided as the result
of a change of ownership with respect to some but not all of the goods
or services, the Office will construe the International Bureau's notice
as a request to divide. The Office will record the partial change of
ownership in the Assignment Services Branch, and divide out the assigned
goods/services from the original (parent) application. The Office will
create a new (child) application serial number, and enter the
information about the new application in its automated records.
(2) To obtain a certificate of registration in the name of the new
owner for the goods/services that have been divided out, the new owner
must pay the fee(s) for the request to divide, as required by Sec.2.6
and paragraph (b) of this section. The examining attorney will issue an
Office action in the child application requiring the new owner to pay
the required fee(s). If the owner of the child application fails to
respond, the child application will be abandoned. It is not necessary
for the new owner to file a separate request to divide.
[[Page 300]]
(3) The Office will not divide a section 66(a) application based
upon a change of ownership unless the International Bureau notifies the
Office that the international registration has been divided.
[73 FR 67771, Nov. 17, 2008, as amended at 74 FR 54908, Oct. 26, 2009]
Post Notice of Allowance
Sec.2.88 Statement of use after notice of allowance.
(a) When to file a statement of use. (1) In an application under
section 1(b) of the Act, a statement of use, required under section 1(d)
of the Act, must be filed within six months after issuance of a notice
of allowance under section 13(b)(2) of the Act, or within an extension
of time granted under Sec.2.89. A statement of use filed prior to
issuance of a notice of allowance is premature and will not be reviewed.
(2)(i) For a trademark, service mark, collective trademark,
collective service mark, and certification mark, a statement of use may
be filed only when the mark has been in use in commerce on or in
connection with all the goods or services specified in the notice of
allowance for which the applicant will seek registration in that
application. For a collective membership mark, a statement of use may be
filed only when the mark has been in use in commerce to indicate
membership in the collective membership organization specified in the
notice of allowance for which the applicant will seek registration in
that application.
(ii) A statement of use may be accompanied by a request in
accordance with Sec.2.87 to divide out from the application the goods,
services, or classes not yet in use in commerce.
(b) A complete statement of use. A complete statement of use must
include the following:
(1) A verified statement alleging:
(i) The applicant believes the applicant is the owner of the mark;
(ii) The mark is in use in commerce;
(iii) The date of first use of the mark anywhere on or in connection
with the goods, services, and/or to indicate membership in the
collective organization specified in the application, and the date of
first use of the mark in commerce. If the statement of use specifies
more than one item of goods or services in a class, the dates of use are
required for only one item of goods or services specified in that class;
(iv) The goods, services, and/or nature of the collective membership
organization specified in the notice of allowance. The goods or services
specified in a statement of use must conform to those goods or services
specified in the notice of allowance for trademark, service mark,
collective trademark, collective service mark, or certification mark
applications. Any goods or services specified in the notice of allowance
that are omitted from the identification of goods or services in the
statement of use will be presumed to be deleted and the deleted goods or
services may not be reinserted in the application. For collective
membership mark applications, the description of the nature of the
collective membership organization in the statement of use must conform
to that specified in the notice of allowance; and
(v) For a collective mark and certification mark, the applicant is
exercising legitimate control over the use in commerce of the mark;
(2) One specimen showing how the applicant, member, or authorized
user uses the mark in commerce. See Sec.2.56 for the requirements for
specimens;
(3) Fee(s). The fee required by Sec.2.6 per class. The applicant
must pay a filing fee sufficient to cover at least one class within the
statutory time for filing the statement of use, or the application will
be abandoned. If the applicant submits a fee insufficient to cover all
the classes in a multiple-class application, the applicant should
specify the classes to be abandoned. If the applicant timely submits a
fee sufficient to pay for at least one class, but insufficient to cover
all the classes, and the applicant has not specified the class(es) to be
abandoned, the Office will issue a notice granting the applicant
additional time to submit the fee(s) for the remaining class(es) or to
specify the class(es) to be abandoned. If the applicant does not submit
the required fee(s) or specify the class(es) to be abandoned within the
set time period, the Office will apply the fees paid, beginning with the
lowest numbered
[[Page 301]]
class, in ascending order. The Office will delete the class(es) not
covered by the fees submitted;
(4) For a collective mark, the requirements of Sec.
2.44(a)(4)(i)(A);
(5) For a certification mark, the requirements of Sec.
2.45(a)(4)(i)(A) through (C); and
(6) The title ``Statement of Use'' should appear at the top of the
first page of the document, if not filed through TEAS.
(c) Minimum filing requirements for a timely filed statement of use.
The Office will review a timely filed statement of use to determine
whether it meets the following minimum requirements:
(1) The fee required by Sec.2.6 for at least one class;
(2) One specimen of the mark as used in commerce; and
(3) The verified statement in paragraph (b)(1)(ii) of this section.
If this verified statement is unsigned or signed by the wrong party, the
applicant must submit a substitute verified statement on or before the
statutory deadline for filing the statement of use.
(d) Deficiency notification. If the statement of use is filed within
the permitted time period but does not meet the minimum requirements
specified in paragraph (c) of this section, the Office will notify the
applicant of the deficiency. If the time permitted for the applicant to
file a statement of use has not expired, the applicant may correct the
deficiency.
(e) Notification of refusals and requirements. A timely filed
statement of use that meets the minimum requirements specified in
paragraph (c) of this section will be examined in accordance with
Sec. Sec.2.61 through 2.69. If, as a result of the examination of the
statement of use, the applicant is found not entitled to registration,
the applicant will be notified and advised of the reasons and of any
formal requirements or refusals. The statement of use may be amended in
accordance with Sec. Sec.2.59 and 2.71 through 2.75.
(f) Statement of use may not be withdrawn. The applicant may not
withdraw a timely filed statement of use to return to the previous
status of awaiting submission of a statement of use, regardless of
whether it is in compliance with paragraph (c) of this section.
(g) Verification not filed within reasonable time. If the verified
statements in paragraphs (b)(1)(ii) and, if applicable, (b)(1)(v) of
this section are not filed within a reasonable time after they are
signed, the Office may require the applicant to submit substitute
verified statements attesting that the mark is in use in commerce, and,
if applicable, the applicant is exercising legitimate control over the
use of the mark in commerce.
(h) Amending the application. The statement of use may include
amendments in accordance with Sec. Sec.2.51, 2.59, and 2.71 through
2.75.
(i) Concurrent use. If the application is amended to concurrent use
under Sec.2.73, the statement of use must include a verified statement
modified in accordance with Sec.2.33(f), Sec.2.44(d), or Sec.
2.45(d).
(j) Multiple-class application. For the requirements of a multiple-
class application, see Sec.2.86.
(k) Abandonment. The failure to timely file a statement of use which
meets the minimum requirements specified in paragraph (c) of this
section shall result in the abandonment of the application.
[80 FR 33185, June 11, 2015]
Sec.2.89 Extensions of time for filing a statement of use.
(a) First extension request after issuance of notice of allowance.
The applicant may request a six-month extension of time to file the
statement of use required by Sec.2.88. The extension request must be
filed within six months of the date of issuance of the notice of
allowance under section 13(b)(2) of the Act and must include the
following:
(1) A written request for an extension of time to file the statement
of use;
(2) The fee required by Sec.2.6 per class. The applicant must pay
a filing fee sufficient to cover at least one class within the statutory
time for filing the extension request, or the request will be denied. If
the applicant submits a fee insufficient to cover all the classes in a
multiple-class application, the applicant should specify the classes to
be abandoned. If the applicant timely submits a fee sufficient to pay
for at least
[[Page 302]]
one class, but insufficient to cover all the classes, and the applicant
has not specified the class(es) to be abandoned, the Office will issue a
notice granting the applicant additional time to submit the fee(s) for
the remaining classes, or specify the class(es) to be abandoned. If the
applicant does not submit the required fee(s) or specify the class(es)
to be abandoned within the set time period, the Office will apply the
fees paid, beginning with the lowest numbered class, in ascending order.
The Office will delete the class(es) not covered by the fees submitted;
and
(3) A verified statement that the applicant has a continued bona
fide intention to use the mark in commerce, specifying the relevant
goods or services, for trademarks or service marks; or that the
applicant has a continued bona fide intention, and is entitled, to
exercise legitimate control over the use of the mark in commerce,
specifying the relevant goods, services, or collective membership
organization, for collective marks or certification marks. If this
verified statement is unsigned or signed by the wrong party, the
applicant must submit a substitute verified statement within six months
of the date of issuance of the notice of allowance.
(b) Subsequent extension requests. Before the expiration of the
previously granted extension of time, the applicant may request further
six-month extensions of time to file the statement of use by submitting
the following:
(1) A written request for an extension of time to file the statement
of use;
(2) The requirements of paragraph (a)(2) of this section for a fee;
(3) A verified statement that the applicant has a continued bona
fide intention to use the mark in commerce, specifying the relevant
goods or services, for trademarks or service marks; or that the
applicant has a continued bona fide intention, and is entitled, to
exercise legitimate control over the use of the mark in commerce,
specifying the relevant goods, services, or collective membership
organization, for collective marks or certification marks. If this
verified statement is unsigned or signed by the wrong party, the
applicant must submit a substitute verified statement before the
expiration of the previously granted extension; and
(4) A showing of good cause, as specified in paragraph (d) of this
section.
(c) Four subsequent extension requests permitted. Extension requests
specified in paragraph (b) of this section will be granted only in six-
month increments and may not aggregate more than 24 months total.
(d) Good cause. A showing of good cause must include:
(1) For a trademark or service mark, a statement of the applicant's
ongoing efforts to make use of the mark in commerce on or in connection
with each of the relevant goods or services. Those efforts may include
product or service research or development, market research,
manufacturing activities, promotional activities, steps to acquire
distributors, steps to obtain governmental approval, or other similar
activities. In the alternative, the applicant must submit a satisfactory
explanation for the failure to make efforts to use the mark in commerce.
(2) For a collective mark, a statement of ongoing efforts to make
use of the mark in commerce by members on or in connection with each of
the relevant goods or services or in connection with the applicant's
collective membership organization. Those efforts may include the
development of standards, the steps taken to acquire members such as
marketing and promotional activities targeted to potential members,
training members regarding the standards, or other similar activities.
In the alternative, the applicant must submit a satisfactory explanation
for the failure to make efforts for applicant's members to use the mark
in commerce.
(3) For a certification mark, a statement of ongoing efforts to make
use of the mark in commerce by authorized users on or in connection with
each of the relevant goods or services. Those efforts may include the
development of certification standards, steps taken to obtain
governmental approval or acquire authorized users, marketing and
promoting the recognition of the certification program or of the goods
or services that meet the certification standards of the applicant,
training authorized users regarding the standards,
[[Page 303]]
or other similar activities. In the alternative, the applicant must
submit a satisfactory explanation for the failure to make efforts for
applicant's authorized users to use the mark in commerce.
(e) Extension request filed in conjunction with or after a statement
of use. (1) An applicant may file one request for a six-month extension
of time for filing a statement of use when filing a statement of use or
after filing a statement of use if time remains in the existing six-
month period in which the statement of use was filed, provided that the
time requested would not extend beyond 36 months from the date of
issuance of the notice of allowance. Thereafter, applicant may not
request any further extensions of time.
(2) A request for an extension of time that is filed under paragraph
(e)(1) of this section, must comply with all the requirements of
paragraph (a) of this section, if it is an applicant's first extension
request, or paragraph (b) of this section, if it is a second or
subsequent extension request. However, in a request under paragraph (b)
of this section, an applicant may satisfy the requirement for a showing
of good cause by asserting the applicant believes the applicant has made
valid use of the mark in commerce, as evidenced by the submitted
statement of use, but that if the statement of use is found by the
Office to be fatally defective, the applicant will need additional time
in which to file a new statement of use.
(f) Goods or services. For trademark, service mark, collective
trademark, collective service mark, or certification mark applications,
the goods or services specified in a request for an extension of time
for filing a statement of use must conform to those goods or services
specified in the notice of allowance. Any goods or services specified in
the notice of allowance that are omitted from the identification of
goods or services in the request for extension of time will be presumed
to be deleted and the deleted goods or services may not thereafter be
reinserted in the application. For collective membership mark
applications, the description of the nature of the collective membership
organization in the request for extension of time must conform to that
set forth in the notice of allowance.
(g) Notice of grant or denial. The applicant will be notified of the
grant or denial of a request for an extension of time, and of the
reasons for a denial. Failure to notify the applicant of the grant or
denial of the request prior to the expiration of the existing period or
requested extension does not relieve the applicant of the responsibility
of timely filing a statement of use under Sec.2.88. If, after denial
of an extension request, there is time remaining in the existing six-
month period for filing a statement of use, applicant may submit a
substitute request for extension of time to correct the defects of the
prior request. Otherwise, the only recourse available after denial of a
request for an extension of time is to file a petition to the Director
in accordance with Sec.2.66 or Sec.2.146. A petition from the denial
of an extension request must be filed within two months of the date of
issuance of the denial of the request. If the petition is granted, the
term of the requested six-month extension that was the subject of the
petition will run from the date of expiration of the previously existing
six-month period for filing a statement of use.
(h) Verification not filed within reasonable time. If the verified
statement in paragraph (a)(3) or (b)(3) of this section is not filed
within a reasonable time after it is signed, the Office may require the
applicant to submit a substitute verified statement attesting that the
applicant has a continued bona fide intention to use the mark in
commerce, for trademarks or service marks; or that the applicant has a
continued bona fide intention, and is entitled, to exercise legitimate
control over the use of the mark in commerce, for collective marks or
certification marks.
[80 FR 33186, June 11, 2015]
[[Page 304]]
Concurrent Use Proceedings
Sec. Sec.2.91-2.98 [Reserved]
Sec.2.99 Application to register as concurrent user.
(a) An application for registration as a lawful concurrent user will
be examined in the same manner as other applications for registration.
(b) If it appears that the applicant is entitled to have the mark
registered, subject to a concurrent use proceeding, the mark will be
published in the Official Gazette as provided by Sec.2.80.
(c) If no opposition is filed, or if all oppositions that are filed
are dismissed or withdrawn, the Trademark Trial and Appeal Board will
send a notice of institution to the applicant for concurrent use
registration (plaintiff) and to each applicant, registrant or user
specified as a concurrent user in the application (defendants). The
notice for each defendant shall state the name and address of the
plaintiff and of the plaintiff's attorney or other authorized
representative, if any, together with the serial number and filing date
of the application. If a party has provided the Office with an email
address, the notice may be transmitted via email.
(d)(1) The Board's notice of institution will include a web link or
web address to access the concurrent use application proceeding
contained in Office records.
(2) An answer to the notice is not required in the case of an
applicant or registrant whose application or registration is
acknowledged by the concurrent use applicant in the concurrent use
application, but a statement, if desired, may be filed within forty days
after the issuance of the notice; in the case of any other party
specified as a concurrent user in the application, an answer must be
filed within forty days after the issuance of the notice.
(3) If an answer, when required, is not filed, judgment will be
entered precluding the defaulting user from claiming any right more
extensive than that acknowledged in the application(s) for concurrent
use registration, but the burden of proving entitlement to
registration(s) will remain with the concurrent use applicant(s).
(e) The applicant for a concurrent use registration has the burden
of proving entitlement thereto. If there are two or more applications
for concurrent use registration involved in a proceeding, the party
whose application has the latest filing date is the junior party. A
party whose application has a filing date between the filing dates of
the earliest involved application and the latest involved application is
a junior party to every party whose involved application has an earlier
filing date. If any applications have the same filing date, the
application with the latest date of execution will be deemed to have the
latest filing date and that applicant will be the junior party. A person
specified as an excepted user in a concurrent use application but who
has not filed an application shall be considered a party senior to every
party that has an application involved in the proceeding.
(f) When a concurrent use registration is sought on the basis that a
court of competent jurisdiction has finally determined that the parties
are entitled to use the same or similar marks in commerce, a concurrent
use registration proceeding will not be instituted if all of the
following conditions are fulfilled:
(1) The applicant is entitled to registration subject only to the
concurrent lawful use of a party to the court proceeding; and
(2) The court decree specifies the rights of the parties; and
(3) A true copy of the court decree is submitted to the examining
attorney; and
(4) The concurrent use application complies fully and exactly with
the court decree; and
(5) The excepted use specified in the concurrent use application
does not involve a registration, or any involved registration has been
restricted by the Director in accordance with the court decree.
If any of the conditions specified in this paragraph is not satisfied, a
concurrent use registration proceeding shall be prepared and instituted
as provided in paragraphs (a) through (e) of this section.
(g) Registrations and applications to register on the Supplemental
Register
[[Page 305]]
and registrations under the Act of 1920 are not subject to concurrent
use registration proceedings. Applications under section 1(b) of the Act
of 1946 are subject to concurrent use registration proceedings only
after the applicant files an acceptable allegation of use under Sec.
2.76 or Sec.2.88. Applications based solely on section 44 or section
66(a) of the Act are not subject to concurrent use registration
proceedings.
(h) The Trademark Trial and Appeal Board will consider and determine
concurrent use rights only in the context of a concurrent use
registration proceeding.
[48 FR 23135, May 23, 1983; 48 FR 27225, 27226, June 14, 1983, as
amended at 54 FR 37596, Sept. 11, 1989; 72 FR 42258, Aug. 1, 2007; 73 FR
67772, Nov. 17, 2008; 81 FR 69971, Oct. 7, 2016]
Opposition
Authority: Secs. 2.101 to 2.106 also issued under secs. 13, 17, 60
Stat. 433, 434; 15 U.S.C. 1063, 1067.
Sec.2.101 Filing an opposition.
(a) An opposition proceeding is commenced by filing in the Office a
timely notice of opposition with the required fee.
(b) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file an
opposition addressed to the Trademark Trial and Appeal Board. The
opposition need not be verified, but must be signed by the opposer or
the opposer's attorney, as specified in Sec.11.1 of this chapter, or
other authorized representative, as specified in Sec.11.14(b) of this
chapter. Electronic signatures pursuant to Sec.2.193(c) are required
for oppositions filed through ESTTA under paragraph (b)(1) or (2) of
this section.
(1) An opposition to an application must be filed by the due date
set forth in paragraph (c) of this section through ESTTA.
(2) In the event that ESTTA is unavailable due to technical
problems, or when extraordinary circumstances are present, an opposition
against an application based on Section 1 or 44 of the Act may be filed
in paper form. A paper opposition to an application based on Section 1
or 44 of the Act must be filed by the due date set forth in paragraph
(c) of this section and be accompanied by a Petition to the Director
under Sec.2.146, with the fees therefor and the showing required under
this paragraph. Timeliness of the paper submission will be determined in
accordance with Sec. Sec.2.195 through 2.198.
(3) An opposition to an application based on Section 66(a) of the
Act must be filed through ESTTA and may not under any circumstances be
filed in paper form.
(c) The opposition must be filed within thirty days after
publication (Sec.2.80) of the application being opposed or within an
extension of time (Sec.2.102) for filing an opposition. The opposition
must be accompanied by the required fee for each party joined as opposer
for each class in the application for which registration is opposed (see
Sec.2.6).
(d) An otherwise timely opposition cannot be filed via ESTTA unless
the opposition is accompanied by a fee that is sufficient to pay in full
for each named party opposer to oppose the registration of a mark in
each class specified in the opposition. A paper opposition that is not
accompanied by the required fee sufficient to pay in full for each named
party opposer for each class in the application for which registration
is opposed may not be instituted. If time remains in the opposition
period as originally set or as extended by the Board, the potential
opposer may resubmit the opposition with the required fee.
(e) The filing date of an opposition is the date of electronic
receipt in the Office of the notice of opposition, and required fee. In
the rare instances that filing by paper is permitted under these rules,
the filing date will be determined in accordance with Sec. Sec.2.195
through 2.198.
[81 FR 69971, Oct. 7, 2016]
Sec.2.102 Extension of time for filing an opposition.
(a) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file a request
with the Trademark Trial and Appeal Board to extend the time for filing
an opposition. The request need not be verified,
[[Page 306]]
but must be signed by the potential opposer or by the potential
opposer's attorney, as specified in Sec.11.1 of this chapter, or
authorized representative, as specified in Sec.11.14(b) of this
chapter. Electronic signatures pursuant to Sec.2.193(c) are required
for electronically filed extension requests.
(1) A request to extend the time for filing an opposition to an
application must be filed through ESTTA by the opposition due date set
forth in Sec.2.101(c). In the event that ESTTA is unavailable due to
technical problems, or when extraordinary circumstances are present, a
request to extend the opposition period for an application based on
Section 1 or 44 of the Act may be filed in paper form by the opposition
due date set forth in Sec.2.101(c). A request to extend the opposition
period for an application based on Section 66(a) of the Act must be
filed through ESTTA and may not under any circumstances be filed in
paper form.
(2) A paper request to extend the opposition period for an
application based on Section 1 or 44 of the Act must be filed by the due
date set forth in Sec.2.101(c) and be accompanied by a Petition to the
Director under Sec.2.146, with the fees therefor and the showing
required under paragraph (a)(1) of this section. Timeliness of the paper
submission will be determined in accordance with Sec. Sec.2.195
through 2.198.
(b) A request to extend the time for filing an opposition must
identify the potential opposer with reasonable certainty. Any opposition
filed during an extension of time must be in the name of the person to
whom the extension was granted, except that an opposition may be
accepted if the person in whose name the extension was requested was
misidentified through mistake or if the opposition is filed in the name
of a person in privity with the person who requested and was granted the
extension of time.
(c) The time for filing an opposition shall not be extended beyond
180 days from the date of publication. Any request to extend the time
for filing an opposition must be filed before thirty days have expired
from the date of publication or before the expiration of a previously
granted extension of time, as appropriate. Requests to extend the time
for filing an opposition must be filed as follows:
(1) A person may file a first request for:
(i) Either a thirty-day extension of time, which will be granted
upon request; or
(ii) A ninety-day extension of time, which will be granted only for
good cause shown. A sixty-day extension is not available as a first
extension of time to oppose.
(2) If a person was granted an initial thirty-day extension of time,
that person may file a request for an additional sixty-day extension of
time, which will be granted only for good cause shown.
(3) After receiving one or two extensions of time totaling ninety
days, a person may file one final request for an extension of time for
an additional sixty days. No other time period will be allowed for a
final extension of the opposition period. The Board will grant this
request only upon written consent or stipulation signed by the applicant
or its authorized representative, or a written request by the potential
opposer or its authorized representative stating that the applicant or
its authorized representative has consented to the request, or a showing
of extraordinary circumstances. No further extensions of time to file an
opposition will be granted under any circumstances.
(d) The filing date of a request to extend the time for filing an
opposition is the date of electronic receipt in the Office of the
request. In the rare instance that filing by paper is permitted under
these rules, the filing date will be determined in accordance with
Sec. Sec.2.195 through 2.198.
(e) [Reserved]
[68 FR 55765, Sept. 26, 2003, as amended at 73 FR 47685, Aug. 14, 2008;
74 FR 54909, Oct. 26, 2009; 81 FR 69972, Oct. 7, 2016]
Sec.2.103 [Reserved]
Sec.2.104 Contents of opposition.
(a) The opposition must set forth a short and plain statement
showing why the opposer believes he, she or it would be damaged by the
registration of the opposed mark and state the grounds for
[[Page 307]]
opposition. ESTTA requires the opposer to select relevant grounds for
opposition. The required accompanying statement supports and explains
the grounds.
(b) Oppositions to different applications owned by the same party
may be joined in a consolidated opposition when appropriate, but the
required fee must be included for each party joined as opposer for each
class in which registration is opposed in each application against which
the opposition is filed.
(c) Oppositions to applications filed under Section 66(a) of the Act
are limited to the goods, services and grounds set forth in the ESTTA
cover sheet.
[54 FR 34897, Aug. 22, 1989, as amended at 68 FR 55766, Sept. 26, 2003;
81 FR 69972, Oct. 7, 2016]
Sec.2.105 Notification to parties of opposition proceeding(s).
(a) When an opposition in proper form (see Sec. Sec.2.101 and
2.104) has been filed with the correct fee(s), and the opposition has
been determined to be timely and complete, the Trademark Trial and
Appeal Board shall prepare a notice of institution, which shall identify
the proceeding as an opposition, number of the proceeding, and the
application(s) involved; and the notice shall designate a time, not less
than thirty days from the mailing date of the notice, within which an
answer must be filed. The notice, which will include a Web link or Web
address to access the electronic proceeding record, constitutes service
of the notice of opposition to the applicant.
(b) The Board shall forward a copy of the notice to opposer, as
follows:
(1) If the opposition is transmitted by an attorney, or a written
power of attorney is filed, the Board will send the notice to the
attorney transmitting the opposition or to the attorney designated in
the power of attorney, provided that the person is an ``attorney'' as
defined in Sec.11.1 of this chapter, at the email or correspondence
address for the attorney.
(2) If opposer is not represented by an attorney in the opposition,
but opposer has appointed a domestic representative, the Board will send
the notice to the domestic representative, at the email or
correspondence address of record for the domestic representative, unless
opposer designates in writing another correspondence address.
(3) If opposer is not represented by an attorney in the opposition,
and no domestic representative has been appointed, the Board will send
the notice directly to opposer at the email or correspondence address of
record for opposer, unless opposer designates in writing another
correspondence address.
(c) The Board shall forward a copy of the notice to applicant, as
follows:
(1) If the opposed application contains a clear indication that the
application is being prosecuted by an attorney, as defined in Sec.11.1
of this chapter, the Board shall send the notice described in this
section to applicant's attorney at the email or correspondence address
of record for the attorney.
(2) If the opposed application is not being prosecuted by an
attorney but a domestic representative has been appointed, the Board
will send the notice described in this section to the domestic
representative, at the email or correspondence address of record for the
domestic representative, unless applicant designates in writing another
correspondence address.
(3) If the opposed application is not being prosecuted by an
attorney, and no domestic representative has been appointed, the Board
will send the notice described in this section directly to applicant, at
the email or correspondence address of record for the applicant, unless
applicant designates in writing another correspondence address.
[81 FR 69972, Oct. 7, 2016]
Sec.2.106 Answer.
(a) If no answer is filed within the time initially set, or as may
later be reset by the Board, the opposition may be decided as in case of
default. The failure to file a timely answer tolls all deadlines,
including the discovery conference, until the issue of default is
resolved.
(b)(1) An answer must be filed through ESTTA. In the event that
ESTTA is unavailable due to technical problems, or when extraordinary
circumstances are present, an answer may be filed in paper form. An
answer filed
[[Page 308]]
in paper form must be accompanied by a Petition to the Director under
Sec.2.146, with the fees therefor and the showing required under this
paragraph (b).
(2) An answer shall state in short and plain terms the applicant's
defenses to each claim asserted and shall admit or deny the averments
upon which the opposer relies. If the applicant is without knowledge or
information sufficient to form a belief as to the truth of an averment,
applicant shall so state and this will have the effect of a denial.
Denials may take any of the forms specified in Rule 8(b) of the Federal
Rules of Civil Procedure. An answer may contain any defense, including
the affirmative defenses of unclean hands, laches, estoppel,
acquiescence, fraud, mistake, prior judgment, or any other matter
constituting an avoidance or affirmative defense. When pleading special
matters, the Federal Rules of Civil Procedure shall be followed. A reply
to an affirmative defense shall not be filed. When a defense attacks the
validity of a registration pleaded in the opposition, paragraph (b)(3)
of this section shall govern. A pleaded registration is a registration
identified by number by the party in the position of plaintiff in an
original notice of opposition or in any amendment thereto made under
Rule 15 of the Federal Rules of Civil Procedure.
(3)(i) A defense attacking the validity of any one or more of the
registrations pleaded in the opposition shall be a compulsory
counterclaim if grounds for such counterclaim exist at the time when the
answer is filed. If grounds for a counterclaim are known to the
applicant when the answer to the opposition is filed, the counterclaim
shall be pleaded with or as part of the answer. If grounds for a
counterclaim are learned during the course of the opposition proceeding,
the counterclaim shall be pleaded promptly after the grounds therefor
are learned. A counterclaim need not be filed if the claim is the
subject of another proceeding between the same parties or anyone in
privity therewith; but the applicant must promptly inform the Board, in
the context of the opposition proceeding, of the filing of the other
proceeding.
(ii) An attack on the validity of a registration pleaded by an
opposer will not be heard unless a counterclaim or separate petition is
filed to seek the cancellation of such registration.
(iii) The provisions of Sec. Sec.2.111 through 2.115, inclusive,
shall be applicable to counterclaims. A time, not less than thirty days,
will be designated by the Board within which an answer to the
counterclaim must be filed.
(iv) The times for pleading, discovery, testimony, briefs or oral
argument may be reset or extended when necessary, upon motion by a
party, or as the Board may deem necessary, to enable a party fully to
present or meet a counterclaim or separate petition for cancellation of
a registration.
(c) The opposition may be withdrawn without prejudice before the
answer is filed. After the answer is filed, the opposition may not be
withdrawn without prejudice except with the written consent of the
applicant or the applicant's attorney or other authorized
representative.
[30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6940, Jan. 22, 1981; 48
FR 23136, May 23, 1983; 54 FR 34897, Aug. 22, 1989; 81 FR 69973, Oct. 7,
2016]
Sec.2.107 Amendment of pleadings in an opposition proceeding.
(a) Pleadings in an opposition proceeding against an application
filed under section 1 or 44 of the Act may be amended in the same manner
and to the same extent as in a civil action in a United States district
court, except that, after the close of the time period for filing an
opposition including any extension of time for filing an opposition, an
opposition may not be amended to add to the goods or services opposed,
or to add a joint opposer.
(b) Pleadings in an opposition proceeding against an application
filed under section 66(a) of the Act may be amended in the same manner
and to the same extent as in a civil action in a United States district
court, except that, once filed, the opposition may not be amended to add
grounds for opposition or goods or services beyond those identified in
the notice of opposition, or to add a joint opposer. The grounds for
opposition, the goods or services opposed, and the named opposers are
limited to those identified in the ESTTA cover sheet regardless of
[[Page 309]]
what is contained in any attached statement.
[81 FR 69973, Oct. 7, 2016]
Cancellation
Authority: Secs. 2.111 to 2.114 also issued under secs. 14, 17, 24,
60 Stat. 433, 434, 436; 15 U.S.C. 1064, 1067, 1092.
Sec.2.111 Filing petition for cancellation.
(a) A cancellation proceeding is commenced by filing in the Office a
timely petition for cancellation with the required fee.
(b) Any person who believes that he, she or it is or will be damaged
by a registration may file a petition, addressed to the Trademark Trial
and Appeal Board, for cancellation of the registration in whole or in
part. The petition for cancellation need not be verified, but must be
signed by the petitioner or the petitioner's attorney, as specified in
Sec.11.1 of this chapter, or other authorized representative, as
specified in Sec.11.14(b) of this chapter. Electronic signatures
pursuant to Sec.2.193(c) are required for petitions submitted
electronically via ESTTA. The petition for cancellation may be filed at
any time in the case of registrations on the Supplemental Register or
under the Act of 1920, or registrations under the Act of 1881 or the Act
of 1905 which have not been published under section 12(c) of the Act, or
on any ground specified in section 14(3) or (5) of the Act. In all other
cases, the petition for cancellation and the required fee must be filed
within five years from the date of registration of the mark under the
Act or from the date of publication under section 12(c) of the Act.
(c)(1) A petition to cancel a registration must be filed through
ESTTA.
(2)(i) In the event that ESTTA is unavailable due to technical
problems, or when extraordinary circumstances are present, a petition to
cancel may be filed in paper form. A paper petition to cancel a
registration must be accompanied by a Petition to the Director under
Sec.2.146, with the fees therefor and the showing required under this
paragraph (c). Timeliness of the paper submission, if relevant to a
ground asserted in the petition to cancel, will be determined in
accordance with Sec. Sec.2.195 through 2.198.
(ii) For a petition to cancel a registration on the fifth year
anniversary of the date of registration of the mark, a petitioner for
cancellation who meets the requirements of Sec.2.147(b) may submit a
petition to the Director to accept a timely filed paper petition to
cancel.
(d) The petition for cancellation must be accompanied by the
required fee for each party joined as petitioner for each class in the
registration(s) for which cancellation is sought (see Sec.2.6). A
petition cannot be filed via ESTTA unless the petition is accompanied by
a fee that is sufficient to pay in full for each named petitioner to
seek cancellation of the registration(s) in each class specified in the
petition. A petition filed in paper form that is not accompanied by a
fee sufficient to pay in full for each named petitioner for each class
in the registration(s) for which cancellation is sought may not be
instituted.
(e) The filing date of a petition for cancellation is the date of
electronic receipt in the Office of the petition and required fee. In
the rare instances that filing by paper is permitted under these rules,
the filing date of a petition for cancellation will be determined in
accordance with Sec. Sec.2.195 through 2.198.
[81 FR 69973, Oct. 7, 2016, as amended at 84 FR 37095, July 31, 2019]
Sec.2.112 Contents of petition for cancellation.
(a) The petition for cancellation must set forth a short and plain
statement showing why the petitioner believes he, she or it is or will
be damaged by the registration, state the ground for cancellation, and
indicate, to the best of petitioner's knowledge, the name and address,
and a current email address(es), of the current owner of the
registration. ESTTA requires the petitioner to select relevant grounds
for petition to cancel. The required accompanying statement supports and
explains the grounds.
(b) When appropriate, petitions for cancellation of different
registrations owned by the same party may be joined in a consolidated
petition for cancellation. The required fee must be included for each
party joined as a petitioner for
[[Page 310]]
each class sought to be cancelled in each registration against which the
petition for cancellation has been filed.
[81 FR 69974, Oct. 7, 2016]
Sec.2.113 Notification of cancellation proceeding.
(a) When a petition for cancellation in proper form (see Sec. Sec.
2.111 and 2.112) has been filed and the correct fee has been submitted,
the Trademark Trial and Appeal Board shall prepare a notice of
institution which shall identify the proceeding as a cancellation,
number of the proceeding and the registration(s) involved; and shall
designate a time, not less than thirty days from the mailing date of the
notice, within which an answer must be filed. The notice, which will
include a Web link or Web address to access the electronic proceeding
record, constitutes service to the registrant of the petition to cancel.
(b) The Board shall forward a copy of the notice to petitioner, as
follows:
(1) If the petition for cancellation is transmitted by an attorney,
or a written power of attorney is filed, the Board will send the notice
to the attorney transmitting the petition for cancellation or to the
attorney designated in the power of attorney, provided that person is an
``attorney'' as defined in Sec.11.1 of this chapter, to the attorney's
email or correspondence address of record for the attorney.
(2) If petitioner is not represented by an attorney in the
cancellation proceeding, but petitioner has appointed a domestic
representative, the Board will send the notice to the domestic
representative, at the email or correspondence address of record for the
domestic representative, unless petitioner designates in writing another
correspondence address.
(3) If petitioner is not represented by an attorney in the
cancellation proceeding, and no domestic representative has been
appointed, the Board will send the notice directly to petitioner, at the
email or correspondence address of record for petitioner, unless
petitioner designates in writing another correspondence address.
(c)(1) The Board shall forward a copy of the notice to the party
shown by the records of the Office to be the current owner of the
registration(s) sought to be cancelled at the email or address of record
for the current owner, except that the Board, in its discretion, may
join or substitute as respondent a party who makes a showing of a
current ownership interest in such registration(s).
(2) If the respondent has appointed a domestic representative, and
such appointment is reflected in the Office's records, the Board will
send the notice only to the domestic representative at the email or
correspondence address of record for the domestic representative.
(d) When the party alleged by the petitioner, pursuant to Sec.
2.112(a), as the current owner of the registration(s) is not the record
owner, a courtesy copy of the notice with a Web link or Web address to
access the electronic proceeding record shall be forwarded to the
alleged current owner. The alleged current owner may file a motion to be
joined or substituted as respondent.
[81 FR 69974, Oct. 7, 2016]
Sec.2.114 Answer.
(a)(1) If no answer is filed within the time initially set, or as
later may be reset by the Board, the petition may be decided as in the
case of default. The failure to file a timely answer tolls all
deadlines, including the discovery conference, until the issue of
default is resolved.
(2) If the cancellation proceeding is based solely on abandonment or
nonuse and default judgment is entered with no appearance by the
defendant, and no filings are made other than the petition to cancel,
$200 per class of the petition to cancel fee may be refunded.
(b)(1) An answer must be filed through ESTTA. In the event that
ESTTA is unavailable due to technical problems, or when extraordinary
circumstances are present, an answer may be filed in paper form. An
answer filed in paper form must be accompanied by a Petition to the
Director under Sec.2.146, with the fees therefor and the showing
required under this paragraph (b).
(2) An answer shall state in short and plain terms the respondent's
defenses to each claim asserted and shall admit or deny the averments
upon which the petitioner relies. If the respondent is
[[Page 311]]
without knowledge or information sufficient to form a belief as to the
truth of an averment, respondent shall so state and this will have the
effect of a denial. Denials may take any of the forms specified in Rule
8(b) of the Federal Rules of Civil Procedure. An answer may contain any
defense, including the affirmative defenses of unclean hands, laches,
estoppel, acquiescence, fraud, mistake, prior judgment, or any other
matter constituting an avoidance or affirmative defense. When pleading
special matters, the Federal Rules of Civil Procedure shall be followed.
A reply to an affirmative defense shall not be filed. When a defense
attacks the validity of a registration pleaded in the petition,
paragraph (b)(3) of this section shall govern. A pleaded registration is
a registration identified by number by the party in position of
plaintiff in an original petition for cancellation, or a counterclaim
petition for cancellation, or in any amendment thereto made under Rule
15 of the Federal Rules of Civil Procedure.
(3)(i) A defense attacking the validity of any one or more of the
registrations pleaded in the petition shall be a compulsory counterclaim
if grounds for such counterclaim exist at the time when the answer is
filed. If grounds for a counterclaim are known to respondent when the
answer to the petition is filed, the counterclaim shall be pleaded with
or as part of the answer. If grounds for a counterclaim are learned
during the course of the cancellation proceeding, the counterclaim shall
be pleaded promptly after the grounds therefor are learned. A
counterclaim need not be filed if the claim is the subject of another
proceeding between the same parties or anyone in privity therewith; but
the party in position of respondent and counterclaim plaintiff must
promptly inform the Board, in the context of the primary cancellation
proceeding, of the filing of the other proceeding.
(ii) An attack on the validity of a registration pleaded by a
petitioner for cancellation will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such
registration.
(iii) The provisions of Sec. Sec.2.111 through 2.115, inclusive,
shall be applicable to counterclaims. A time, not less than thirty days,
will be designated by the Board within which an answer to the
counterclaim must be filed. Such response period may be reset as
necessary by the Board, for a time period to be determined by the Board.
(iv) The times for pleading, discovery, testimony, briefs, or oral
argument may be reset or extended when necessary, upon motion by a
party, or as the Board may deem necessary, to enable a party fully to
present or meet a counterclaim or separate petition for cancellation of
a registration.
(c) The petition for cancellation or counterclaim petition for
cancellation may be withdrawn without prejudice before the answer is
filed. After the answer is filed, such petition or counterclaim petition
may not be withdrawn without prejudice except with the written consent
of the registrant or the registrant's attorney or other authorized
representative.
[81 FR 69974, Oct. 7, 2016, as amended at 85 FR 73215, Nov. 17, 2020]
Sec.2.115 Amendment of pleadings in a cancellation proceeding.
Pleadings in a cancellation proceeding may be amended in the same
manner and to the same extent as in a civil action in a United States
district court.
[48 FR 23136, May 23, 1983]
Procedure in Inter Partes Proceedings
Authority: Secs. 2.116 to 2.136 also issued under sec. 17, 60 Stat.
434; 15 U.S.C. 1067.
Sec.2.116 Federal Rules of Civil Procedure.
(a) Except as otherwise provided, and wherever applicable and
appropriate, procedure and practice in inter partes proceedings shall be
governed by the Federal Rules of Civil Procedure.
(b) The opposer in an opposition proceeding or the petitioner in a
cancellation proceeding shall be in the position of plaintiff, and the
applicant in an opposition proceeding or the respondent in a
cancellation proceeding shall be in the position of defendant. A party
that is a junior party in an interference proceeding or in a concurrent
use registration proceeding shall be in the position
[[Page 312]]
of plaintiff against every party that is senior, and the party that is a
senior party in an interference proceeding or in a concurrent use
registration proceeding shall be a defendant against every party that is
junior.
(c) The notice of opposition or the petition for cancellation and
the answer correspond to the complaint and answer in a court proceeding.
(d) The assignment of testimony periods corresponds to setting a
case for trial in court proceedings.
(e) The submission of notices of reliance, declarations and
affidavits, as well as the taking of depositions, during the assigned
testimony periods correspond to the trial in court proceedings.
(f) Oral hearing, if requested, of arguments on the record and
merits corresponds to oral summation in court proceedings.
(g) The Trademark Trial and Appeal Board's standard protective order
is automatically imposed in all inter partes proceedings unless the
parties, by stipulation approved by the Board, agree to an alternative
order, or a motion by a party to use an alternative order is granted by
the Board. The standard protective order is available at the Office's
Web site. No material disclosed or produced by a party, presented at
trial, or filed with the Board, including motions or briefs which
discuss such material, shall be treated as confidential or shielded from
public view unless designated as protected under the Board's standard
protective order, or under an alternative order stipulated to by the
parties and approved by the Board, or under an order submitted by motion
of a party granted by the Board. The Board may treat as not confidential
that material which cannot reasonably be considered confidential,
notwithstanding a designation as such by a party.
[30 FR 13193, Oct. 16, 1965. Redesignated and amended at 37 FR 7606,
Apr. 18, 1972; 48 FR 23136, May 23, 1983; 72 FR 42259, Aug. 1, 2007; 81
FR 69975, Oct. 7, 2016]
Sec.2.117 Suspension of proceedings.
(a) Whenever it shall come to the attention of the Trademark Trial
and Appeal Board that a party or parties to a pending case are engaged
in a civil action or another Board proceeding which may have a bearing
on the case, proceedings before the Board may be suspended until
termination of the civil action or the other Board proceeding.
(b) Whenever there is pending before the Board both a motion to
suspend and a motion which is potentially dispositive of the case, the
potentially dispositive motion may be decided before the question of
suspension is considered regardless of the order in which the motions
were filed.
(c) Proceedings may also be suspended sua sponte by the Board, or,
for good cause, upon motion or a stipulation of the parties approved by
the Board. Many consented or stipulated motions to suspend are suitable
for automatic approval by ESTTA, but the Board retains discretion to
condition approval on the party or parties providing necessary
information about the status of settlement talks, discovery activities,
or trial activities, as may be appropriate.
[48 FR 23136, May 23, 1983, as amended at 63 FR 48097, Sept. 9, 1998; 81
FR 69975, Oct. 7, 2016]
Sec.2.118 Undelivered Office notices.
When a notice sent by the Office to any registrant or applicant is
returned to the Office undelivered, including notification to the Office
of non-delivery in paper or electronic form, additional notice may be
given by publication in the Official Gazette.
[81 FR 69975, Oct. 7, 2016]
Sec.2.119 Service and signing.
(a) Except for the notice of opposition or the petition to cancel,
every submission filed in the Office in inter partes cases, including
notices of appeal to the courts, must be served upon the other party or
parties. Proof of such service must be made before the submission will
be considered by the Office. A statement signed by the attorney or other
authorized representative, attached to or appearing on the original
submission when filed, clearly stating the date and manner in which
service was made will be accepted as prima facie proof of service.
[[Page 313]]
(b) Service of submissions filed with the Board and any other papers
served on a party not required to be filed with the Board, must be on
the attorney or other authorized representative of the party if there be
such or on the party if there is no attorney or other authorized
representative, and must be made by email, unless otherwise stipulated,
or if the serving party can show by written explanation accompanying the
submission or paper, or in a subsequent amended certificate of service,
that service by email was attempted but could not be made due to
technical problems or extraordinary circumstances, then service may be
made in any of the following ways:
(1) By delivering a copy of the submission or paper to the person
served;
(2) By leaving a copy at the usual place of business of the person
served, with someone in the person's employment;
(3) When the person served has no usual place of business, by
leaving a copy at the person's residence, with some person of suitable
age and discretion who resides there;
(4) Transmission by the Priority Mail Express[supreg] Post Office to
Addressee service of the United States Postal Service or by first-class
mail, which may also be certified or registered;
(5) Transmission by overnight courier; or
(6) Other forms of electronic transmission.
(c) When service is made by first-class mail, Priority Mail
Express[supreg], or overnight courier, the date of mailing or of
delivery to the overnight courier will be considered the date of
service.
(d) If a party to an inter partes proceeding is not domiciled in the
United States and is not represented by an attorney or other authorized
representative located in the United States, none of the parties to the
proceeding is eligible to use the service option under paragraph (b)(4)
of this section. The party not domiciled in the United States may
designate by submission filed in the Office the name and address of a
person residing in the United States on whom may be served notices or
process in the proceeding. If the party has appointed a domestic
representative, official communications of the Office will be addressed
to the domestic representative unless the proceeding is being prosecuted
by an attorney at law or other qualified person duly authorized under
Sec.11.14(c) of this chapter. If the party has not appointed a
domestic representative and the proceeding is not being prosecuted by an
attorney at law or other qualified person, the Office will send
correspondence directly to the party, unless the party designates in
writing another address to which correspondence is to be sent. The mere
designation of a domestic representative does not authorize the person
designated to prosecute the proceeding unless qualified under Sec.
11.14(a) of this chapter, or qualified under Sec.11.14(b) of this
chapter and authorized under Sec.2.17(f).
(e) Every submission filed in an inter partes proceeding, and every
request for an extension of time to file an opposition, must be signed
by the party filing it, or by the party's attorney or other authorized
representative, but an unsigned submission will not be refused
consideration if a signed copy is submitted to the Office within the
time limit set in the notification of this defect by the Office.
[81 FR 69975, Oct. 7, 2016]
Sec.2.120 Discovery.
(a) In general. (1) Except as otherwise provided in this section,
and wherever appropriate, the provisions of the Federal Rules of Civil
Procedure relating to disclosure and discovery shall apply in
opposition, cancellation, interference and concurrent use registration
proceedings. The provisions of Rule 26 of the Federal Rules of Civil
Procedure relating to required disclosures, the conference of the
parties to discuss settlement and to develop a disclosure and discovery
plan, the scope, proportionality, timing and sequence of discovery,
protective orders, signing of disclosures and discovery responses, and
supplementation of disclosures and discovery responses, are applicable
to Board proceedings in modified form, as noted in these rules and as
may be detailed in any order instituting an inter partes proceeding or
subsequent scheduling order. The Board will specify the deadline for a
discovery conference, the
[[Page 314]]
opening and closing dates for the taking of discovery, and the deadlines
within the discovery period for making initial disclosures and expert
disclosure. The trial order setting these deadlines and dates will be
included within the notice of institution of the proceeding.
(2)(i) The discovery conference shall occur no later than the
opening of the discovery period, and the parties must discuss the
subjects set forth in Rule 26(f) of the Federal Rules of Civil Procedure
and any subjects set forth in the Board's institution order. A Board
Interlocutory Attorney or Administrative Trademark Judge will
participate in the conference upon request of any party made after
answer but no later than ten days prior to the deadline for the
conference, or when the Board deems it useful for the parties to have
Board involvement. The participating attorney or judge may expand or
reduce the number or nature of subjects to be discussed in the
conference as may be deemed appropriate. The discovery period will be
set for a period of 180 days.
(ii) Initial disclosures must be made no later than thirty days
after the opening of the discovery period.
(iii) Disclosure of expert testimony must occur in the manner and
sequence provided in Rule 26(a)(2) of the Federal Rules of Civil
Procedure, unless alternate directions have been provided by the Board
in an institution order or any subsequent order resetting disclosure,
discovery or trial dates. If the expert is retained after the deadline
for disclosure of expert testimony, the party must promptly file a
motion for leave to use expert testimony. Upon disclosure by any party
of plans to use expert testimony, whether before or after the deadline
for disclosing expert testimony, the Board, either on its own initiative
or on notice from either party of the disclosure of expert testimony,
may issue an order regarding expert discovery and/or set a deadline for
any other party to disclose plans to use a rebuttal expert.
(iv) The parties may stipulate to a shortening of the discovery
period, that there will be no discovery, that the number of discovery
requests or depositions be limited, or that reciprocal disclosures be
used in place of discovery. Limited extensions of the discovery period
may be granted upon stipulation of the parties approved by the Board, or
upon motion granted by the Board, or by order of the Board. If a motion
for an extension is denied, the discovery period may remain as
originally set or as reset. Disclosure deadlines and obligations may be
modified upon written stipulation of the parties approved by the Board,
or upon motion granted by the Board, or by order of the Board, but the
expert disclosure deadline must always be scheduled prior to the close
of discovery. If a stipulation or motion for modification is denied,
discovery disclosure deadlines may remain as originally set or reset and
obligations may remain unaltered.
(v) The parties are not required to prepare or transmit to the Board
a written report outlining their discovery conference discussions,
unless the parties have agreed to alter disclosure or discovery
obligations set forth by these rules or applicable Federal Rules of
Civil Procedure, or unless directed to file such a report by a
participating Board Interlocutory Attorney or Administrative Trademark
Judge.
(3) A party must make its initial disclosures prior to seeking
discovery, absent modification of this requirement by a stipulation of
the parties approved by the Board, or a motion granted by the Board, or
by order of the Board. Discovery depositions must be properly noticed
and taken during the discovery period. Interrogatories, requests for
production of documents and things, and requests for admission must be
served early enough in the discovery period, as originally set or as may
have been reset by the Board, so that responses will be due no later
than the close of discovery. Responses to interrogatories, requests for
production of documents and things, and requests for admission must be
served within thirty days from the date of service of such discovery
requests. The time to respond may be extended upon stipulation of the
parties, or upon motion granted by the Board, or by order of the Board,
but the response may not be due later than the close of discovery. The
resetting of a party's time to respond to an outstanding request for
[[Page 315]]
discovery will not result in the automatic rescheduling of the discovery
and/or testimony periods; such dates will be rescheduled only upon
stipulation of the parties approved by the Board, or upon motion granted
by the Board, or by order of the Board.
(b) Discovery deposition within the United States. The deposition of
a natural person shall be taken in the Federal judicial district where
the person resides or is regularly employed or at any place on which the
parties agree in writing. The responsibility rests wholly with the party
taking discovery to secure the attendance of a proposed deponent other
than a party or anyone who, at the time set for the taking of the
deposition, is an officer, director, or managing agent of a party, or a
person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules
of Civil Procedure. (See 35 U.S.C. 24.)
(c) Discovery deposition in foreign countries; or of foreign party
within jurisdiction of the United States. (1) The discovery deposition
of a natural person residing in a foreign country who is a party or who,
at the time set for the taking of the deposition, is an officer,
director, or managing agent of a party, or a person designated under
Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure,
shall, if taken in a foreign country, be taken in the manner prescribed
by Sec.2.124 unless the Trademark Trial and Appeal Board, upon motion
for good cause, orders that the deposition be taken by oral examination,
or the parties so stipulate.
(2) Whenever a foreign party is or will be, during a time set for
discovery, present within the United States or any territory which is
under the control and jurisdiction of the United States, such party may
be deposed by oral examination upon notice by the party seeking
discovery. Whenever a foreign party has or will have, during a time set
for discovery, an officer, director, managing agent, or other person who
consents to testify on its behalf, present within the United States or
any territory which is under the control and jurisdiction of the United
States, such officer, director, managing agent, or other person who
consents to testify in its behalf may be deposed by oral examination
upon notice by the party seeking discovery. The party seeking discovery
may have one or more officers, directors, managing agents, or other
persons who consent to testify on behalf of the adverse party,
designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure.
The deposition of a person under this paragraph shall be taken in the
Federal judicial district where the witness resides or is regularly
employed, or, if the witness neither resides nor is regularly employed
in a Federal judicial district, where the witness is at the time of the
deposition. This paragraph (c)(2) does not preclude the taking of a
discovery deposition of a foreign party by any other procedure provided
by paragraph (c)(1) of this section.
(d) Interrogatories. The total number of written interrogatories
which a party may serve upon another party pursuant to Rule 33 of the
Federal Rules of Civil Procedure, in a proceeding, shall not exceed
seventy-five, counting subparts, except that the Trademark Trial and
Appeal Board, in its discretion, may allow additional interrogatories
upon motion therefor showing good cause, or upon stipulation of the
parties, approved by the Board. A motion for leave to serve additional
interrogatories must be filed and granted prior to the service of the
proposed additional interrogatories and must be accompanied by a copy of
the interrogatories, if any, which have already been served by the
moving party, and by a copy of the interrogatories proposed to be
served. If a party upon which interrogatories have been served believes
that the number of interrogatories exceeds the limitation specified in
this paragraph (d), and is not willing to waive this basis for
objection, the party shall, within the time for (and instead of) serving
answers and specific objections to the interrogatories, serve a general
objection on the ground of their excessive number. If the inquiring
party, in turn, files a motion to compel discovery, the motion must be
accompanied by a copy of the set(s) of the interrogatories which
together are said to exceed the limitation, and must otherwise comply
with the requirements of paragraph (f) of this section.
[[Page 316]]
(e) Requests for production. The total number of requests for
production which a party may serve upon another party pursuant to Rule
34 of the Federal Rules of Civil Procedure, in a proceeding, shall not
exceed seventy-five, counting subparts, except that the Trademark Trial
and Appeal Board, in its discretion, may allow additional requests upon
motion therefor showing good cause, or upon stipulation of the parties,
approved by the Board. A motion for leave to serve additional requests
must be filed and granted prior to the service of the proposed
additional requests and must be accompanied by a copy of the requests,
if any, which have already been served by the moving party, and by a
copy of the requests proposed to be served. If a party upon which
requests have been served believes that the number of requests exceeds
the limitation specified in this paragraph, and is not willing to waive
this basis for objection, the party shall, within the time for (and
instead of) serving responses and specific objections to the requests,
serve a general objection on the ground of their excessive number. If
the inquiring party, in turn, files a motion to compel discovery, the
motion must be accompanied by a copy of the set(s) of the requests which
together are said to exceed the limitation, and must otherwise comply
with the requirements of paragraph (f) of this section. The time, place,
and manner for production of documents, electronically stored
information, and tangible things shall comport with the provisions of
Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to
agreement of the parties, or where and in the manner which the Trademark
Trial and Appeal Board, upon motion, orders.
(f) Motion for an order to compel disclosure or discovery. (1) If a
party fails to make required initial disclosures or expert testimony
disclosure, or fails to designate a person pursuant to Rule 30(b)(6) or
Rule 31(a) of the Federal Rules of Civil Procedure, or if a party, or
such designated person, or an officer, director or managing agent of a
party fails to attend a deposition or fails to answer any question
propounded in a discovery deposition, or any interrogatory, or fails to
produce and permit the inspection and copying of any document,
electronically stored information, or tangible thing, the party entitled
to disclosure or seeking discovery may file a motion to compel
disclosure, a designation, or attendance at a deposition, or an answer,
or production and an opportunity to inspect and copy. A motion to compel
initial disclosures must be filed within thirty days after the deadline
therefor and include a copy of the disclosure(s), if any, and a motion
to compel an expert testimony disclosure must be filed prior to the
close of the discovery period. A motion to compel discovery must be
filed before the day of the deadline for pretrial disclosures for the
first testimony period as originally set or as reset. A motion to compel
discovery shall include a copy of the request for designation of a
witness or of the relevant portion of the discovery deposition; or a
copy of the interrogatory with any answer or objection that was made; or
a copy of the request for production, any proffer of production or
objection to production in response to the request, and a list and brief
description of the documents, electronically stored information, or
tangible things that were not produced for inspection and copying. A
motion to compel initial disclosures, expert testimony disclosure, or
discovery must be supported by a showing from the moving party that such
party or the attorney therefor has made a good faith effort, by
conference or correspondence, to resolve with the other party or the
attorney therefor the issues presented in the motion but the parties
were unable to resolve their differences. If issues raised in the motion
are subsequently resolved by agreement of the parties, the moving party
should inform the Board in writing of the issues in the motion which no
longer require adjudication.
(2) When a party files a motion for an order to compel initial
disclosures, expert testimony disclosure, or discovery, the case will be
suspended by the Board with respect to all matters not germane to the
motion. After the motion to compel is filed and served, no party should
file any paper that is not germane to the motion, except as
[[Page 317]]
otherwise specified in the Board's suspension order. Nor may any party
serve any additional discovery until the period of suspension is lifted
or expires by or under order of the Board. The filing of a motion to
compel any disclosure or discovery shall not toll the time for a party
to comply with any disclosure requirement or to respond to any
outstanding discovery requests or to appear for any noticed discovery
deposition. If discovery has closed, however, the parties need not make
pretrial disclosures until directed to do so by the Board.
(g) Motion for a protective order. Upon motion by a party obligated
to make initial disclosures or expert testimony disclosure or from whom
discovery is sought, and for good cause, the Trademark Trial and Appeal
Board may make any order which justice requires to protect a party from
annoyance, embarrassment, oppression, or undue burden or expense,
including one or more of the types of orders provided by clauses (A)
through (H), inclusive, of Rule 26(c)(1) of the Federal Rules of Civil
Procedure. If the motion for a protective order is denied in whole or in
part, the Board may, on such conditions (other than an award of expenses
to the party prevailing on the motion) as are just, order that any party
comply with disclosure obligations or provide or permit discovery.
(h) Sanctions. (1) If a party fails to participate in the required
discovery conference, or if a party fails to comply with an order of the
Trademark Trial and Appeal Board relating to disclosure or discovery,
including a protective order, the Board may make any appropriate order,
including those provided in Rule 37(b)(2) of the Federal Rules of Civil
Procedure, except that the Board will not hold any person in contempt or
award expenses to any party. The Board may impose against a party any of
the sanctions provided in Rule 37(b)(2) in the event that said party or
any attorney, agent, or designated witness of that party fails to comply
with a protective order made pursuant to Rule 26(c) of the Federal Rules
of Civil Procedure. A motion for sanctions against a party for its
failure to participate in the required discovery conference must be
filed prior to the deadline for any party to make initial disclosures.
(2) If a party fails to make required initial disclosures or expert
testimony disclosure, and such party or the party's attorney or other
authorized representative informs the party or parties entitled to
receive disclosures that required disclosures will not be made, the
Board may make any appropriate order, as specified in paragraph (h)(1)
of this section. If a party, or an officer, director, or managing agent
of a party, or a person designated under Rule 30(b)(6) or 31(a) of the
Federal Rules of Civil Procedure to testify on behalf of a party, fails
to attend the party's or person's discovery deposition, after being
served with proper notice, or fails to provide any response to a set of
interrogatories or to a set of requests for production of documents and
things, and such party or the party's attorney or other authorized
representative informs the party seeking discovery that no response will
be made thereto, the Board may make any appropriate order, as specified
in paragraph (h)(1) of this section.
(i) Requests for admission. The total number of requests for
admission which a party may serve upon another party pursuant to Rule 36
of the Federal Rules of Civil Procedure, in a proceeding, shall not
exceed seventy-five, counting subparts, except that the Trademark Trial
and Appeal Board, in its discretion, may allow additional requests upon
motion therefor showing good cause, or upon stipulation of the parties,
approved by the Board. A motion for leave to serve additional requests
must be filed and granted prior to the service of the proposed
additional requests and must be accompanied by a copy of the requests,
if any, which have already been served by the moving party, and by a
copy of the requests proposed to be served. If a party upon which
requests for admission have been served believes that the number of
requests for admission exceeds the limitation specified in this
paragraph, and is not willing to waive this basis for objection, the
party shall, within the time for (and instead of) serving answers and
specific objections to the requests for admission, serve a general
objection on the ground of
[[Page 318]]
their excessive number. However, independent of this limit, a party may
make one comprehensive request for admission of any adverse party that
has produced documents for an admission authenticating specific
documents, or specifying which of those documents cannot be
authenticated.
(1) Any motion by a party to determine the sufficiency of an answer
or objection, including testing the sufficiency of a general objection
on the ground of excessive number, to a request made by that party for
an admission must be filed before the day of the deadline for pretrial
disclosures for the first testimony period, as originally set or as
reset. The motion shall include a copy of the request for admission and
any exhibits thereto and of the answer or objection. The motion must be
supported by a written statement from the moving party showing that such
party or the attorney therefor has made a good faith effort, by
conference or correspondence, to resolve with the other party or the
attorney therefor the issues presented in the motion and has been unable
to reach agreement. If issues raised in the motion are subsequently
resolved by agreement of the parties, the moving party should inform the
Board in writing of the issues in the motion which no longer require
adjudication.
(2) When a party files a motion to determine the sufficiency of an
answer or objection to a request for an admission, the case will be
suspended by the Board with respect to all matters not germane to the
motion. After the motion is filed and served, no party should file any
paper that is not germane to the motion, except as otherwise specified
in the Board's suspension order. Nor may any party serve any additional
discovery until the period of suspension is lifted or expires by or
under order of the Board. The filing of a motion to determine the
sufficiency of an answer or objection to a request for admission shall
not toll the time for a party to comply with any disclosure requirement
or to respond to any outstanding discovery requests or to appear for any
noticed discovery deposition. If discovery has closed, however, the
parties need not make pretrial disclosures until directed to do so by
the Board.
(j) Telephone and pretrial conferences. (1) Whenever it appears to
the Trademark Trial and Appeal Board that a stipulation or motion filed
in an inter partes proceeding is of such nature that a telephone
conference would be beneficial, the Board may, upon its own initiative
or upon request made by one or both of the parties, schedule a telephone
conference.
(2) Whenever it appears to the Trademark Trial and Appeal Board that
questions or issues arising during the interlocutory phase of an inter
partes proceeding have become so complex that their resolution by
correspondence or telephone conference is not practical and that
resolution would likely be facilitated by a conference in person of the
parties or their attorneys with an Administrative Trademark Judge or an
Interlocutory Attorney of the Board, the Board may, upon its own
initiative, direct that the parties and/or their attorneys meet with the
Board for a disclosure, discovery or pretrial conference on such terms
as the Board may order.
(3) Parties may not make a recording of the conferences referenced
in paragraphs (j)(1) and (2) of this section.
(k) Use of discovery deposition, answer to interrogatory, admission
or written disclosure. (1) The discovery deposition of a party or of
anyone who at the time of taking the deposition was an officer, director
or managing agent of a party, or a person designated by a party pursuant
to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure,
may be offered in evidence by an adverse party.
(2) Except as provided in paragraph (k)(1) of this section, the
discovery deposition of a witness, whether or not a party, shall not be
offered in evidence unless the person whose deposition was taken is,
during the testimony period of the party offering the deposition, dead;
or out of the United States (unless it appears that the absence of the
witness was procured by the party offering the deposition); or unable to
testify because of age, illness, infirmity, or imprisonment; or cannot
be served with a subpoena to compel attendance at a testimonial
deposition; or there is
[[Page 319]]
a stipulation by the parties; or upon a showing that such exceptional
circumstances exist as to make it desirable, in the interest of justice,
to allow the deposition to be used. The use of a discovery deposition by
any party under this paragraph will be allowed only by stipulation of
the parties approved by the Trademark Trial and Appeal Board, or by
order of the Board on motion, which shall be filed when the party makes
its pretrial disclosures, unless the motion is based upon a claim that
such exceptional circumstances exist as to make it desirable, in the
interest of justice, to allow the deposition to be used, even though
such deadline has passed, in which case the motion shall be filed
promptly after the circumstances claimed to justify use of the
deposition became known.
(3)(i) A discovery deposition, an answer to an interrogatory, an
admission to a request for admission, or a written initial disclosure,
which may be offered in evidence under the provisions of paragraph (k)
of this section, may be made of record in the case by filing the
deposition or any part thereof with any exhibit to the part that is
filed, or a copy of the interrogatory and answer thereto with any
exhibit made part of the answer, or a copy of the request for admission
and any exhibit thereto and the admission (or a statement that the party
from which an admission was requested failed to respond thereto), or a
copy of the written initial disclosure, together with a notice of
reliance in accordance with Sec.2.122(g). The notice of reliance and
the material submitted thereunder should be filed during the testimony
period of the party that files the notice of reliance. An objection made
at a discovery deposition by a party answering a question subject to the
objection will be considered at final hearing.
(ii) A party that has obtained documents from another party through
disclosure or under Rule 34 of the Federal Rules of Civil Procedure may
not make the documents of record by notice of reliance alone, except to
the extent that they are admissible by notice of reliance under the
provisions of Sec.2.122(e), or the party has obtained an admission or
stipulation from the producing party that authenticates the documents.
(4) If only part of a discovery deposition is submitted and made
part of the record by a party, an adverse party may introduce under a
notice of reliance any other part of the deposition which should in
fairness be considered so as to make not misleading what was offered by
the submitting party. A notice of reliance filed by an adverse party
must be supported by a written statement explaining why the adverse
party needs to rely upon each additional part listed in the adverse
party's notice, failing which the Board, in its discretion, may refuse
to consider the additional parts.
(5) Written disclosures, an answer to an interrogatory, or an
admission to a request for admission, may be submitted and made part of
the record only by the receiving or inquiring party except that, if
fewer than all of the written disclosures, answers to interrogatories,
or fewer than all of the admissions, are offered in evidence by the
receiving or inquiring party, the disclosing or responding party may
introduce under a notice of reliance any other written disclosures,
answers to interrogatories, or any other admissions, which should in
fairness be considered so as to make not misleading what was offered by
the receiving or inquiring party. The notice of reliance filed by the
disclosing or responding party must be supported by a written statement
explaining why the disclosing or responding party needs to rely upon
each of the additional written disclosures or discovery responses listed
in the disclosing or responding party's notice, and absent such
statement, the Board, in its discretion, may refuse to consider the
additional written disclosures or responses.
(6) Paragraph (k) of this section will not be interpreted to
preclude reading or use of written disclosures or documents, a discovery
deposition, or answer to an interrogatory, or admission as part of the
examination or cross-examination of any witness during the testimony
period of any party.
(7) When a written disclosure, a discovery deposition, or a part
thereof, or an answer to an interrogatory, or an
[[Page 320]]
admission, or an authenticated produced document has been made of record
by one party in accordance with the provisions of paragraph (k)(3) of
this section, it may be referred to by any party for any purpose
permitted by the Federal Rules of Evidence.
(8) Written disclosures or disclosed documents, requests for
discovery, responses thereto, and materials or depositions obtained
through the disclosure or discovery process should not be filed with the
Board, except when submitted with a motion relating to disclosure or
discovery, or in support of or in response to a motion for summary
judgment, or under a notice of reliance, when permitted, during a
party's testimony period.
[81 FR 69976, Oct. 7, 2016, as amended at 82 FR 33805, July 21, 2017]
Sec.2.121 Assignment of times for taking testimony and presenting
evidence.
(a) The Trademark Trial and Appeal Board will issue a trial order
setting a deadline for each party's required pretrial disclosures and
assigning to each party its time for taking testimony and presenting
evidence (``testimony period''). No testimony shall be taken or evidence
presented except during the times assigned, unless by stipulation of the
parties approved by the Board, or upon motion granted by the Board, or
by order of the Board. The deadlines for pretrial disclosures and the
testimony periods may be rescheduled by stipulation of the parties
approved by the Board, or upon motion granted by the Board, or by order
of the Board. If a motion to reschedule any pretrial disclosure deadline
and/or testimony period is denied, the pretrial disclosure deadline or
testimony period and any subsequent remaining periods may remain as set.
The resetting of the closing date for discovery will result in the
rescheduling of pretrial disclosure deadlines and testimony periods
without action by any party. The resetting of a party's testimony period
will result in the rescheduling of the remaining pretrial disclosure
deadlines without action by any party.
(b)(1) The Trademark Trial and Appeal Board will schedule a
testimony period for the plaintiff to present its case in chief, a
testimony period for the defendant to present its case and to meet the
case of the plaintiff, and a testimony period for the plaintiff to
present evidence in rebuttal.
(2) When there is a counterclaim, or when proceedings have been
consolidated and one party is in the position of plaintiff in one of the
involved proceedings and in the position of defendant in another of the
involved proceedings, or when there is an interference or a concurrent
use registration proceeding involving more than two parties, the Board
will schedule testimony periods so that each party in the position of
plaintiff will have a period for presenting its case in chief against
each party in the position of defendant, each party in the position of
defendant will have a period for presenting its case and meeting the
case of each plaintiff, and each party in the position of plaintiff will
have a period for presenting evidence in rebuttal.
(c) A testimony period which is solely for rebuttal will be set for
fifteen days. All other testimony periods will be set for thirty days.
The periods may be shortened or extended by stipulation of the parties
approved by the Trademark Trial and Appeal Board, or may be extended
upon motion granted by the Board, or by order of the Board. If a motion
for an extension is denied, the testimony periods and their associated
pretrial disclosure deadlines may remain as set.
(d) When parties stipulate to the rescheduling of a deadline for
pretrial disclosures and subsequent testimony periods or to the
rescheduling of the closing date for discovery and the rescheduling of
subsequent deadlines for pretrial disclosures and testimony periods, a
stipulation presented in the form used in a trial order, signed by the
parties, or a motion in said form signed by one party and including a
statement that every other party has agreed thereto, shall be submitted
to the Board through ESTTA, with the relevant dates set forth and an
express statement that all parties agree to the new dates.
(e) A party need not disclose, prior to its testimony period, any
notices of reliance it intends to file during its testimony period.
However, no later than fifteen days prior to the opening of
[[Page 321]]
each testimony period, or on such alternate schedule as may be provided
by order of the Board, the party scheduled to present evidence must
disclose the name and, if not previously provided, the telephone number
and address of each witness from whom it intends to take testimony, or
may take testimony if the need arises, general identifying information
about the witness, such as relationship to any party, including job
title if employed by a party, or, if neither a party nor related to a
party, occupation and job title, a general summary or list of subjects
on which the witness is expected to testify, and a general summary or
list of the types of documents and things which may be introduced as
exhibits during the testimony of the witness. The testimony of a witness
may be taken upon oral examination and transcribed, or presented in the
form of an affidavit or declaration, as provided in Sec.2.123.
Pretrial disclosure of a witness under this paragraph (e) does not
substitute for issuance of a proper notice of examination under Sec.
2.123(c) or Sec.2.124(b). If a party does not plan to take testimony
from any witnesses, it must so state in its pretrial disclosure. When a
party fails to make required pretrial disclosures, any adverse party or
parties may have remedy by way of a motion to the Board to delay or
reset any subsequent pretrial disclosure deadlines and/or testimony
periods. A party may move to quash a noticed testimony deposition of a
witness not identified or improperly identified in pretrial disclosures
before the deposition. When testimony has been presented by affidavit or
declaration, but was not covered by an earlier pretrial disclosure, the
remedy for any adverse party is the prompt filing of a motion to strike,
as provided in Sec. Sec.2.123 and 2.124.
[48 FR 23138, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 54
FR 34899, Aug. 22, 1989; 63 FR 48099, Sept. 9, 1998; 68 FR 55767, Sept.
26, 2003; 72 FR 42262, Aug. 1, 2007; 81 FR 69979, Oct. 7, 2016]
Sec.2.122 Matters in evidence.
(a) Applicable rules. Unless the parties otherwise stipulate, the
rules of evidence for proceedings before the Trademark Trial and Appeal
Board are the Federal Rules of Evidence, the relevant provisions of the
Federal Rules of Civil Procedure, the relevant provisions of Title 28 of
the United States Code, and the provisions of this part. When evidence
has been made of record by one party in accordance with these rules, it
may be referred to by any party for any purpose permitted by the Federal
Rules of Evidence.
(b) Application and registration files. (1) The file of each
application or registration specified in a notice of interference, of
each application or registration specified in the notice of a concurrent
use registration proceeding, of the application against which a notice
of opposition is filed, or of each registration against which a petition
or counterclaim for cancellation is filed forms part of the record of
the proceeding without any action by the parties and reference may be
made to the file for any relevant and competent purpose in accordance
with paragraph (b)(2) of this section.
(2) The allegation in an application for registration, or in a
registration, of a date of use is not evidence on behalf of the
applicant or registrant; a date of use of a mark must be established by
competent evidence. Specimens in the file of an application for
registration, or in the file of a registration, are not evidence on
behalf of the applicant or registrant unless identified and introduced
in evidence as exhibits during the period for the taking of testimony.
Statements made in an affidavit or declaration in the file of an
application for registration, or in the file of a registration, are not
testimony on behalf of the applicant or registrant. Establishing the
truth of these or any other matters asserted in the files of these
applications and registrations shall be governed by the Federal Rules of
Evidence, the relevant provisions of the Federal Rules of Civil
Procedure, the relevant provisions of Title 28 of the United States
Code, and the provisions of this part.
(c) Exhibits to pleadings. Except as provided in paragraph (d)(1) of
this section, an exhibit attached to a pleading is not evidence on
behalf of the party
[[Page 322]]
to whose pleading the exhibit is attached, and must be identified and
introduced in evidence as an exhibit during the period for the taking of
testimony.
(d) Registrations. (1) A registration of the opposer or petitioner
pleaded in an opposition or petition to cancel will be received in
evidence and made part of the record if the opposition or petition is
accompanied by an original or photocopy of the registration prepared and
issued by the Office showing both the current status of and current
title to the registration, or by a current copy of information from the
electronic database records of the Office showing the current status and
title of the registration. For the cost of a copy of a registration
showing status and title, see Sec.2.6(b)(4).
(2) A registration owned by any party to a proceeding may be made of
record in the proceeding by that party by appropriate identification and
introduction during the taking of testimony or by filing a notice of
reliance in accordance with paragraph (g) of this section, which shall
be accompanied by a copy (original or photocopy) of the registration
prepared and issued by the Office showing both the current status of and
current title to the registration, or by a current copy of information
from the electronic database records of the Office showing the current
status and title of the registration. The notice of reliance shall be
filed during the testimony period of the party that files the notice.
(e) Printed publications and official records. (1) Printed
publications, such as books and periodicals, available to the general
public in libraries or of general circulation among members of the
public or that segment of the public which is relevant in a particular
proceeding, and official records, if the publication or official record
is competent evidence and relevant to an issue, may be introduced in
evidence by filing a notice of reliance on the material being offered in
accordance with paragraph (g) of this section. The notice of reliance
shall specify the printed publication (including information sufficient
to identify the source and the date of the publication) or the official
record and the pages to be read; and be accompanied by the official
record or a copy thereof whose authenticity is established under the
Federal Rules of Evidence, or by the printed publication or a copy of
the relevant portion thereof. A copy of an official record of the Office
need not be certified to be offered in evidence.
(2) Internet materials may be admitted into evidence under a notice
of reliance in accordance with paragraph (g) of this section, in the
same manner as a printed publication in general circulation, so long as
the date the internet materials were accessed and their source (e.g.,
URL) are provided.
(f) Testimony from other proceedings. By order of the Trademark
Trial and Appeal Board, on motion, testimony taken in another
proceeding, or testimony taken in a suit or action in a court, between
the same parties or those in privity may be used in a proceeding, so far
as relevant and material, subject, however, to the right of any adverse
party to recall or demand the recall for examination or cross-
examination of any witness whose prior testimony has been offered and to
rebut the testimony.
(g) Notices of reliance. The types of evidence admissible by notice
of reliance are identified in paragraphs (d)(2) and (e)(1) and (2) of
this section and Sec.2.120(k). A notice of reliance shall be filed
during the testimony period of the party that files the notice. For all
evidence offered by notice of reliance, the notice must indicate
generally the relevance of the evidence and associate it with one or
more issues in the proceeding. Failure to identify the relevance of the
evidence, or associate it with issues in the proceeding, with sufficient
specificity is a procedural defect that can be cured by the offering
party within the time set by Board order.
[48 FR 23138, May 23, 1983, as amended at 54 FR 34899, Aug. 22, 1989; 54
FR 38041, Sept. 14, 1989; 63 FR 48099, Sept. 9, 1998; 72 FR 42262, Aug.
1, 2007; 81 FR 69980, Oct. 7, 2016]
Sec.2.123 Trial testimony in inter partes cases.
(a)(1) The testimony of witnesses in inter partes cases may be
submitted in
[[Page 323]]
the form of an affidavit or a declaration pursuant to Sec.2.20 and in
conformance with the Federal Rules of Evidence, filed during the
proffering party's testimony period, subject to the right of any adverse
party to elect to take and bear the expense of oral cross-examination of
that witness as provided under paragraph (c) of this section if such
witness is within the jurisdiction of the United States, or conduct
cross-examination by written questions as provided in Sec.2.124 if
such witness is outside the jurisdiction of the United States, and the
offering party must make that witness available; or taken by deposition
upon oral examination as provided by this section; or by deposition upon
written questions as provided by Sec.2.124.
(2) Testimony taken in a foreign country shall be taken: by
deposition upon written questions as provided by Sec.2.124, unless the
Board, upon motion for good cause, orders that the deposition be taken
by oral examination, or the parties so stipulate; or by affidavit or
declaration, subject to the right of any adverse party to elect to take
and bear the expense of cross-examination by written questions of that
witness. If a party serves notice of the taking of a testimonial
deposition upon written questions of a witness who is, or will be at the
time of the deposition, present within the United States or any
territory which is under the control and jurisdiction of the United
States, any adverse party may, within twenty days from the date of
service of the notice, file a motion with the Trademark Trial and Appeal
Board, for good cause, for an order that the deposition be taken by oral
examination.
(b) Stipulations. If the parties so stipulate in writing,
depositions may be taken before any person authorized to administer
oaths, at any place, upon any notice, and in any manner, and when so
taken may be used like other depositions. The parties may stipulate in
writing what a particular witness would testify to if called; or any
relevant facts in the case may be stipulated in writing.
(c) Notice of examination of witnesses. Before the oral depositions
of witnesses shall be taken by a party, due notice in writing shall be
given to the adverse party or parties, as provided in Sec.2.119(b), of
the time when and place where the depositions will be taken, of the
cause or matter in which they are to be used, and the name and address
of each witness to be examined. Depositions may be noticed for any
reasonable time and place in the United States. A deposition may not be
noticed for a place in a foreign country except as provided in paragraph
(a)(2) of this section. No party shall take depositions in more than one
place at the same time, nor so nearly at the same time that reasonable
opportunity for travel from one place of examination to the other is not
available. When a party elects to take oral cross-examination of an
affiant or declarant, the notice of such election must be served on the
adverse party and a copy filed with the Board within 20 days from the
date of service of the affidavit or declaration and completed within 30
days from the date of service of the notice of election. Upon motion for
good cause by any party, or upon its own initiative, the Board may
extend the periods for electing and taking oral cross-examination. When
such election has been made but cannot be completed within that
testimony period, the Board, after the close of that testimony period,
shall suspend or reschedule other proceedings in the matter to allow for
the orderly completion of the oral cross-examination(s).
(d) Persons before whom depositions may be taken. Depositions may be
taken before persons designated by Rule 28 of the Federal Rules of Civil
Procedure.
(e) Examination of witnesses. (1) Each witness before providing oral
testimony shall be duly sworn according to law by the officer before
whom the deposition is to be taken. Where oral depositions are taken,
every adverse party shall have a full opportunity to cross-examine each
witness. When testimony is proffered by affidavit or declaration, every
adverse party will have the right to elect oral cross-examination of any
witness within the jurisdiction of the United States. For examination of
witnesses outside the jurisdiction of the United States, see Sec.
2.124.
(2) The deposition shall be taken in answer to questions, with the
questions and answers recorded in their regular
[[Page 324]]
order by the officer, or by some other person (who shall be subject to
the provisions of Rule 28 of the Federal Rules of Civil Procedure) in
the presence of the officer except when the officer's presence is waived
on the record by agreement of the parties. The testimony shall be
recorded and transcribed, unless the parties present agree otherwise.
Exhibits which are marked and identified at the deposition will be
deemed to have been offered into evidence, without any formal offer
thereof, unless the intention of the party marking the exhibits is
clearly expressed to the contrary.
(3) If pretrial disclosures or the notice of examination of
witnesses served pursuant to paragraph (c) of this section are improper
or inadequate with respect to any witness, an adverse party may cross-
examine that witness under protest while reserving the right to object
to the receipt of the testimony in evidence. Promptly after the
testimony is completed, the adverse party, to preserve the objection,
shall move to strike the testimony from the record, which motion will be
decided on the basis of all the relevant circumstances.
(i) A motion to strike the testimony of a witness for lack of proper
or adequate pretrial disclosure may seek exclusion of the entire
testimony, when there was no pretrial disclosure, or may seek exclusion
of that portion of the testimony that was not adequately disclosed in
accordance with Sec.2.121(e).
(ii) A motion to strike the testimony of a witness for lack of
proper or adequate notice of examination must request the exclusion of
the entire testimony of that witness and not only a part of that
testimony.
(4) All objections made at the time of an oral examination to the
qualifications of the officer taking the deposition, or to the manner of
taking it, or to the evidence presented, or to the conduct of any party,
and any other objection to the proceedings, shall be noted by the
officer upon the deposition. Evidence objected to shall be taken subject
to the objections.
(5) When the oral deposition has been transcribed, the deposition
transcript shall be carefully read over by the witness or by the officer
to the witness, and shall then be signed by the witness in the presence
of any officer authorized to administer oaths unless the reading and the
signature be waived on the record by agreement of all parties.
(f) Certification and filing of deposition. (1) The officer shall
annex to the deposition his or her certificate showing:
(i) Due administration of the oath by the officer to the witness
before the commencement of his or her deposition;
(ii) The name of the person by whom the deposition was taken down,
and whether, if not taken down by the officer, it was taken down in his
or her presence;
(iii) The presence or absence of the adverse party;
(iv) The place, day, and hour of commencing and taking the
deposition;
(v) The fact that the officer was not disqualified as specified in
Rule 28 of the Federal Rules of Civil Procedure.
(2) If any of the foregoing requirements in paragraph (f)(1) of this
section are waived, the certificate shall so state. The officer shall
sign the certificate and affix thereto his or her seal of office, if he
or she has such a seal. The party taking the deposition, or its attorney
or other authorized representative, shall then promptly file the
transcript and exhibits in electronic form using ESTTA. If the nature of
an exhibit precludes electronic transmission via ESTTA, it shall be
submitted by mail by the party taking the deposition, or its attorney or
other authorized representative.
(g) Form of deposition. (1) The pages of each deposition must be
numbered consecutively, and the name of the witness plainly and
conspicuously written at the top of each page. A deposition must be in
written form. The questions propounded to each witness must be
consecutively numbered unless the pages have numbered lines. Each
question must be followed by its answer. The deposition transcript must
be submitted in full-sized format (one page per sheet), not condensed
(multiple pages per sheet).
(2) Exhibits must be numbered or lettered consecutively and each
must be marked with the number and title of
[[Page 325]]
the case and the name of the party offering the exhibit. Entry and
consideration may be refused to improperly marked exhibits.
(3) Each deposition must contain a word index and an index of the
names of the witnesses, giving the pages where the words appear in the
deposition and where witness examination and cross-examination begin,
and an index of the exhibits, briefly describing their nature and giving
the pages at which they are introduced and offered in evidence.
(h) Depositions must be filed. All depositions which are taken must
be duly filed in the Office. On refusal to file, the Office at its
discretion will not further hear or consider the contestant with whom
the refusal lies; and the Office may, at its discretion, receive and
consider a copy of the withheld deposition, attested by such evidence as
is procurable.
(i) Effect of errors and irregularities in depositions. Rule
32(d)(1), (2), and (3)(A) and (B) of the Federal Rules of Civil
Procedure shall apply to errors and irregularities in depositions.
Notice will not be taken of merely formal or technical objections which
shall not appear to have wrought a substantial injury to the party
raising them; and in case of such injury it must be made to appear that
the objection was raised at the time specified in said rule.
(j) Objections to admissibility. Subject to the provisions of
paragraph (i) of this section, objection may be made to receiving in
evidence any declaration, affidavit, or deposition, or part thereof, or
any other evidence, for any reason which would require the exclusion of
the evidence from consideration. Objections to the competency of a
witness or to the competency, relevancy, or materiality of testimony
must be raised at the time specified in Rule 32(d)(3)(A) of the Federal
Rules of Civil Procedure. Such objections may not be considered until
final hearing.
(k) Evidence not considered. Evidence not obtained and filed in
compliance with these sections will not be considered.
[37 FR 7607, Apr. 18, 1972, as amended at 41 FR 760, Jan. 5, 1976; 48 FR
23139, May 23, 1983; 54 FR 34899, Aug. 22, 1989; 54 FR 38041, Sept. 14,
1989; 63 FR 48099, Sept. 9, 1998; 68 FR 14337, Mar. 25, 2003; 68 FR
48289, Aug. 13, 2003; 68 FR 55767, Sept. 26, 2003; 72 FR 42262, Aug. 1,
2007; 81 FR 69981, Oct. 7, 2016; 81 FR 89383, Dec. 12, 2016]
Sec.2.124 Depositions upon written questions.
(a) A deposition upon written questions may be taken before any
person before whom depositions may be taken as provided by Rule 28 of
the Federal Rules of Civil Procedure.
(b)(1) A party desiring to take a testimonial deposition upon
written questions shall serve notice thereof upon each adverse party
within ten days from the opening date of the testimony period of the
party who serves the notice. The notice shall state the name and address
of the witness. A copy of the notice, but not copies of the questions,
shall be filed with the Trademark Trial and Appeal Board.
(2) A party desiring to take a discovery deposition upon written
questions shall serve notice thereof upon each adverse party and shall
file a copy of the notice, but not copies of the questions, with the
Board. The notice shall state the name and address, if known, of the
person whose deposition is to be taken. If the name of the person is not
known, a general description sufficient to identify the witness or the
particular class or group to which he or she belongs shall be stated in
the notice, and the party from whom the discovery deposition is to be
taken shall designate one or more persons to be deposed in the same
manner as is provided by Rule 30(b)(6) of the Federal Rules of Civil
Procedure.
(3) A party desiring to take cross-examination, by written
questions, of a witness who has provided testimony by affidavit or
declaration shall serve notice thereof upon each adverse party and shall
file a copy of the notice, but not copies of the questions, with the
Board.
(c) Every notice given under the provisions of paragraph (b) of this
section shall be accompanied by the name or
[[Page 326]]
descriptive title of the officer before whom the deposition is to be
taken.
(d)(1) Every notice served on any adverse party under the provisions
of paragraphs (b)(1) and (2) of this section, for the taking of direct
examination, shall be accompanied by the written questions to be
propounded on behalf of the party who proposes to take the deposition.
Every notice served on any adverse party under the provisions of
paragraph (b)(3) of this section, for the taking of cross-examination,
shall be accompanied by the written questions to be propounded on behalf
of the party who proposes to take the cross-examination. Within twenty
days from the date of service of the notice of taking direct
examination, or service of a testimony affidavit or declaration, any
adverse party may serve cross questions upon the party who proposes to
take the deposition. Any party who serves cross questions, whether in
response to direct examination questions or under paragraph (b)(3) of
this section, shall also serve every other adverse party. Within ten
days from the date of service of the cross questions, the party who
proposes to take the deposition, or who earlier offered testimony of the
witness by affidavit or declaration, may serve redirect questions on
every adverse party. Within ten days from the date of service of the
redirect questions, any party who served cross questions may serve
recross questions upon the party who proposes to take the deposition or
who earlier offered testimony of the witness by affidavit or
declaration; any party who serves recross questions shall also serve
every other adverse party. Written objections to questions may be served
on a party propounding questions; any party who objects shall serve a
copy of the objections on every other adverse party. In response to
objections, substitute questions may be served on the objecting party
within ten days of the date of service of the objections; substitute
questions shall be served on every other adverse party.
(2) Upon motion for good cause by any party, or upon its own
initiative, the Trademark Trial and Appeal Board may extend any of the
time periods provided by paragraph (d)(1) of this section. Upon receipt
of written notice that one or more testimonial depositions are to be
taken upon written questions, the Trademark Trial and Appeal Board shall
suspend or reschedule other proceedings in the matter to allow for the
orderly completion of the depositions upon written questions.
(3) Service of written questions, responses, and cross-examination
questions shall be in accordance with Sec.2.119(b).
(e) Within ten days after the last date when questions, objections,
or substitute questions may be served, the party who proposes to take
the deposition shall mail a copy of the notice and copies of all the
questions to the officer designated in the notice; a copy of the notice
and of all the questions mailed to the officer shall be served on every
adverse party. The officer designated in the notice shall take the
testimony of the witness in response to the questions and shall record
each answer immediately after the corresponding question. The officer
shall then certify the transcript and mail the transcript and exhibits
to the party who took the deposition.
(f) The party who took the deposition shall promptly serve a copy of
the transcript, copies of documentary exhibits, and duplicates or
photographs of physical exhibits on every adverse party. It is the
responsibility of the party who takes the deposition to assure that the
transcript is correct (see Sec.2.125(c)). If the deposition is a
discovery deposition, it may be made of record as provided by Sec.
2.120(k). If the deposition is a testimonial deposition, the original,
together with copies of documentary exhibits and duplicates or
photographs of physical exhibits, shall be filed promptly with the
Trademark Trial and Appeal Board.
(g) Objections to questions and answers in depositions upon written
questions may be considered at final hearing.
[48 FR 23139, May 23, 1983, as amended at 81 FR 69982, Oct. 7, 2016; 81
FR 89383, Dec. 12, 2016]
Sec.2.125 Filing and service of testimony.
(a) One copy of the declaration or affidavit prepared in accordance
with Sec.2.123, together with copies of documentary exhibits and
duplicates or
[[Page 327]]
photographs of physical exhibits, shall be served on each adverse party
at the time the declaration or affidavit is submitted to the Trademark
Trial and Appeal Board during the assigned testimony period.
(b) One copy of the transcript of each testimony deposition taken in
accordance with Sec.2.123 or Sec.2.124, together with copies of
documentary exhibits and duplicates or photographs of physical exhibits,
shall be served on each adverse party within thirty days after
completion of the taking of that testimony. If the transcript with
exhibits is not served on each adverse party within thirty days or
within an extension of time for the purpose, any adverse party which was
not served may have remedy by way of a motion to the Trademark Trial and
Appeal Board to reset such adverse party's testimony and/or briefing
periods, as may be appropriate. If the deposing party fails to serve a
copy of the transcript with exhibits on an adverse party after having
been ordered to do so by the Board, the Board, in its discretion, may
strike the deposition, or enter judgment as by default against the
deposing party, or take any such other action as may be deemed
appropriate.
(c) The party who takes testimony is responsible for having all
typographical errors in the transcript and all errors of arrangement,
indexing and form of the transcript corrected, on notice to each adverse
party, prior to the filing of one certified transcript with the
Trademark Trial and Appeal Board. The party who takes testimony is
responsible for serving on each adverse party one copy of the corrected
transcript or, if reasonably feasible, corrected pages to be inserted
into the transcript previously served.
(d) One certified transcript and exhibits shall be filed with the
Trademark Trial and Appeal Board. Notice of such filing shall be served
on each adverse party and a copy of each notice shall be filed with the
Board.
(e) Each transcript shall comply with Sec.2.123(g) with respect to
arrangement, indexing and form.
(f) Upon motion by any party, for good cause, the Trademark Trial
and Appeal Board may order that any part of an affidavit or declaration
or a deposition transcript or any exhibits that directly disclose any
trade secret or other confidential research, development, or commercial
information may be filed under seal and kept confidential under the
provisions of Sec.2.27(e). If any party or any attorney or agent of a
party fails to comply with an order made under this paragraph, the Board
may impose any of the sanctions authorized by Sec.2.120(h).
[81 FR 69983, Oct. 7, 2016]
Sec.2.126 Form of submissions to the Trademark Trial and Appeal Board.
(a) Submissions must be made to the Trademark Trial and Appeal Board
via ESTTA.
(1) Text in an electronic submission must be filed in at least 11-
point type and double-spaced.
(2) Exhibits pertaining to an electronic submission must be made
electronically as an attachment to the submission and must be clear and
legible.
(b) In the event that ESTTA is unavailable due to technical
problems, or when extraordinary circumstances are present, submissions
may be filed in paper form. All submissions in paper form, except the
extensions of time to file a notice of opposition, the notice of
opposition, the petition to cancel, or answers thereto (see Sec. Sec.
2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)),
must include a written explanation of such technical problems or
extraordinary circumstances. Paper submissions that do not meet the
showing required under this paragraph (b) will not be considered. A
paper submission, including exhibits and depositions, must meet the
following requirements:
(1) A paper submission must be printed in at least 11-point type and
double-spaced, with text on one side only of each sheet;
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.)
wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no tabs
or other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not
have any extruding tabs or other devices, and must be on the same size
and weight paper as the submission;
[[Page 328]]
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits
shall be identified in the manner prescribed in Sec.2.123(g)(2);
(6) Exhibits pertaining to a paper submission must be filed on paper
and comply with the requirements for a paper submission.
(c) To be handled as confidential, submissions to the Trademark
Trial and Appeal Board that are confidential in whole or part pursuant
to Sec.2.125(f) must be submitted using the ``Confidential'' selection
available in ESTTA or, where appropriate, under a separate paper cover.
Both the submission and its cover must be marked confidential and must
identify the case number and the parties. A copy of the submission for
public viewing with the confidential portions redacted must be submitted
concurrently.
[81 FR 69983, Oct. 7, 2016, as amended at 81 FR 89383, Dec. 12, 2016]
Sec.2.127 Motions.
(a) Every motion must be submitted in written form and must meet the
requirements prescribed in Sec.2.126. It shall contain a full
statement of the grounds, and shall embody or be accompanied by a brief.
Except as provided in paragraph (e)(1) of this section, a brief in
response to a motion shall be filed within twenty days from the date of
service of the motion unless another time is specified by the Trademark
Trial and Appeal Board, or the time is extended by stipulation of the
parties approved by the Board, or upon motion granted by the Board, or
upon order of the Board. If a motion for an extension is denied, the
time for responding to the motion remains as specified under this
section, unless otherwise ordered. Except as provided in paragraph
(e)(1) of this section, a reply brief, if filed, shall be filed within
twenty days from the date of service of the brief in response to the
motion. The time for filing a reply brief will not be extended or
reopened. The Board will consider no further papers in support of or in
opposition to a motion. Neither the brief in support of a motion nor the
brief in response to a motion shall exceed twenty-five pages in length
in its entirety, including table of contents, index of cases,
description of the record, statement of the issues, recitation of the
facts, argument, and summary. A reply brief shall not exceed ten pages
in length in its entirety. Exhibits submitted in support of or in
opposition to a motion are not considered part of the brief for purposes
of determining the length of the brief. When a party fails to file a
brief in response to a motion, the Board may treat the motion as
conceded. An oral hearing will not be held on a motion except on order
by the Board.
(b) Any request for reconsideration or modification of an order or
decision issued on a motion must be filed within one month from the date
thereof. A brief in response must be filed within twenty days from the
date of service of the request.
(c) Interlocutory motions, requests, conceded matters, and other
matters not actually or potentially dispositive of a proceeding may be
acted upon by a single Administrative Trademark Judge of the Trademark
Trial and Appeal Board, or by an Interlocutory Attorney or Paralegal of
the Board to whom authority to act has been delegated, or by ESTTA.
Motions disposed of by orders entitled ``By the Trademark Trial and
Appeal Board'' have the same legal effect as orders by a panel of three
Administrative Trademark Judges of the Board.
(d) When any party timely files a potentially dispositive motion,
including, but not limited to, a motion to dismiss, a motion for
judgment on the pleadings, or a motion for summary judgment, the case is
suspended by the Trademark Trial and Appeal Board with respect to all
matters not germane to the motion and no party should file any paper
which is not germane to the motion except as otherwise may be specified
in a Board order. If the case is not disposed of as a result of the
motion, proceedings will be resumed pursuant to an order of the Board
when the motion is decided.
(e)(1) A party may not file a motion for summary judgment until the
party has made its initial disclosures, except for a motion asserting
claim or issue preclusion or lack of jurisdiction by the Trademark Trial
and Appeal Board.
[[Page 329]]
A motion for summary judgment must be filed before the day of the
deadline for pretrial disclosures for the first testimony period, as
originally set or as reset. A motion under Rule 56(d) of the Federal
Rules of Civil Procedure, if filed in response to a motion for summary
judgment, shall be filed within thirty days from the date of service of
the summary judgment motion. The time for filing a motion under Rule
56(d) will not be extended or reopened. If no motion under Rule 56(d) is
filed, a brief in response to the motion for summary judgment shall be
filed within thirty days from the date of service of the motion unless
the time is extended by stipulation of the parties approved by the
Board, or upon motion granted by the Board, or upon order of the Board.
If a motion for an extension is denied, the time for responding to the
motion for summary judgment may remain as specified under this section.
A reply brief, if filed, shall be filed within twenty days from the date
of service of the brief in response to the motion. The time for filing a
reply brief will not be extended or reopened. The Board will consider no
further papers in support of or in opposition to a motion for summary
judgment.
(2) For purposes of summary judgment only, the Board will consider
any of the following, if a copy is provided with the party's brief on
the summary judgment motion: Written disclosures or disclosed documents,
a discovery deposition or any part thereof with any exhibit to the part
that is filed, an interrogatory and answer thereto with any exhibit made
part of the answer, a request for production and the documents or things
produced in response thereto, or a request for admission and any exhibit
thereto and the admission (or a statement that the party from which an
admission was requested failed to respond thereto). If any motion for
summary judgment is denied, the parties may stipulate that the materials
submitted with briefs on the motion be considered at trial as trial
evidence, which may be supplemented by additional evidence during trial.
(f) The Board will not hold any person in contempt, or award
attorneys' fees or other expenses to any party.
[48 FR 23140, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63
FR 48099, Sept. 9, 1998; 63 FR 52159, Sept. 30, 1998; 68 FR 55768, Sept.
26, 2003; 72 FR 42262, Aug. 1, 2007; 81 FR 69983, Oct. 7, 2016; 82 FR
33806, July 21, 2017]
Sec.2.128 Briefs at final hearing.
(a)(1) The brief of the party in the position of plaintiff shall be
due not later than sixty days after the date set for the close of
rebuttal testimony. The brief of the party in the position of defendant,
if filed, shall be due not later than thirty days after the due date of
the first brief. A reply brief by the party in the position of
plaintiff, if filed, shall be due not later than fifteen days after the
due date of the defendant's brief.
(2) When there is a counterclaim, or when proceedings have been
consolidated and one party is in the position of plaintiff in one of the
involved proceedings and in the position of defendant in another of the
involved proceedings, or when there is an interference or a concurrent
use registration proceeding involving more than two parties, the
Trademark Trial and Appeal Board will set the due dates for the filing
of the main brief, and the answering brief, and the rebuttal brief by
the parties.
(3) When a party in the position of plaintiff fails to file a main
brief, an order may be issued allowing plaintiff until a set time, not
less than fifteen days, in which to show cause why the Board should not
treat such failure as a concession of the case. If plaintiff fails to
file a response to the order, or files a response indicating that
plaintiff has lost interest in the case, judgment may be entered against
plaintiff. If a plaintiff files a response to the order showing good
cause, but does not have any evidence of record and does not move to
reopen its testimony period and make a showing of excusable neglect
sufficient to support such reopening, judgment may be entered against
plaintiff for failure to take testimony or submit any other evidence.
(b) Briefs must be submitted in written form and must meet the
requirements prescribed in Sec.2.126. Each brief
[[Page 330]]
shall contain an alphabetical index of cited cases. Without prior leave
of the Trademark Trial and Appeal Board, a main brief on the case shall
not exceed fifty-five pages in length in its entirety, including the
table of contents, index of cases, description of the record, statement
of the issues, recitation of the facts, argument, and summary; and a
reply brief shall not exceed twenty-five pages in its entirety.
Evidentiary objections that may properly be raised in a party's brief on
the case may instead be raised in an appendix or by way of a separate
statement of objections. The appendix or separate statement is not
included within the page limit. Any brief beyond the page limits and any
brief with attachments outside the stated requirements may not be
considered by the Board.
[48 FR 23140, May 23, 1983; 48 FR 27226, June 14, 1983, as amended at 54
FR 34900, Aug. 22, 1989; 68 FR 55768, Sept. 26, 2003; 81 FR 69984, Oct.
7, 2016]
Sec.2.129 Oral argument; reconsideration.
(a) If a party desires to have an oral argument at final hearing,
the party shall request such argument by a separate notice filed not
later than ten days after the due date for the filing of the last reply
brief in the proceeding. Oral arguments will be heard by at least three
Administrative Trademark Judges or other statutory members of the
Trademark Trial and Appeal Board at the time specified in the notice of
hearing. If any party appears at the specified time, that party will be
heard. Parties and members of the Board may attend in person or, at the
discretion of the Board, remotely. If the Board is prevented from
hearing the case at the specified time, a new hearing date will be set.
Unless otherwise permitted, oral arguments in an inter partes case will
be limited to thirty minutes for each party. A party in the position of
plaintiff may reserve part of the time allowed for oral argument to
present a rebuttal argument.
(b) The date or time of a hearing may be reset, so far as is
convenient and proper, to meet the wishes of the parties and their
attorneys or other authorized representatives. The Board may, however,
deny a request to reset a hearing date for lack of good cause or if
multiple requests for rescheduling have been filed.
(c) Any request for rehearing or reconsideration or modification of
a decision issued after final hearing must be filed within one month
from the date of the decision. A brief in response must be filed within
twenty days from the date of service of the request. The times specified
may be extended by order of the Trademark Trial and Appeal Board on
motion for good cause.
(d) When a party to an inter partes proceeding before the Trademark
Trial and Appeal Board cannot prevail without establishing constructive
use pursuant to section 7(c) of the Act in an application under section
1(b) of the Act, the Trademark Trial and Appeal Board will enter a
judgment in favor of that party, subject to the party's establishment of
constructive use. The time for filing an appeal or for commencing a
civil action under section 21 of the Act shall run from the date of the
entry of the judgment.
[48 FR 23141, May 23, 1983, as amended at 54 FR 29554, July 13, 1989; 54
FR 34900, Aug. 22, 1989; 54 FR 37597, Sept. 11, 1989; 72 FR 42263, Aug.
1, 2007; 81 FR 69984, Oct. 7, 2016]
Sec.2.130 New matter suggested by the trademark examining attorney.
If, while an inter partes proceeding involving an application under
section 1 or 44 of the Act is pending, facts appear which, in the
opinion of the examining attorney, render the mark in the application
unregistrable, the examining attorney should request that the Board
remand the application. The Board may suspend the proceeding and remand
the application to the trademark examining attorney for an ex parte
determination of the question of registrability. A copy of the trademark
examining attorney's final action will be furnished to the parties to
the inter partes proceeding following the final determination of
registrability by the trademark examining attorney or the Board on
appeal. The Board will consider the application for such further inter
partes action as may be appropriate.
[81 FR 69985, Oct. 7, 2016]
[[Page 331]]
Sec.2.131 Remand after decision in inter partes proceeding.
If, during an inter partes proceeding involving an application under
section 1 or 44 of the Act, facts are disclosed which appear to render
the mark unregistrable, but such matter has not been tried under the
pleadings as filed by the parties or as they might be deemed to be
amended under Rule 15(b) of the Federal Rules of Civil Procedure to
conform to the evidence, the Trademark Trial and Appeal Board, in lieu
of determining the matter in the decision on the proceeding, may remand
the application to the trademark examining attorney for reexamination in
the event the applicant ultimately prevails in the inter partes
proceeding. Upon remand, the trademark examining attorney shall
reexamine the application in light of the matter referenced by the
Board. If, upon reexamination, the trademark examining attorney finally
refuses registration to the applicant, an appeal may be taken as
provided by Sec. Sec.2.141 and 2.142.
[81 FR 69985, Oct. 7, 2016]
Sec.2.132 Involuntary dismissal for failure to take testimony.
(a) If the time for taking testimony by any party in the position of
plaintiff has expired and it is clear to the Board from the proceeding
record that such party has not taken testimony or offered any other
evidence, the Board may grant judgment for the defendant. Also, any
party in the position of defendant may, without waiving the right to
offer evidence in the event the motion is denied, move for dismissal on
the ground of the failure of the plaintiff to prosecute. The party in
the position of plaintiff shall have twenty days from the date of
service of the motion to show cause why judgment should not be rendered
dismissing the case. In the absence of a showing of excusable neglect,
judgment may be rendered against the party in the position of plaintiff.
If the motion is denied, testimony periods will be reset for the party
in the position of defendant and for rebuttal.
(b) If no evidence other than Office records showing the current
status and title of plaintiff's pleaded registration(s) is offered by
any party in the position of plaintiff, any party in the position of
defendant may, without waiving the right to offer evidence in the event
the motion is denied, move for dismissal on the ground that upon the law
and the facts the party in the position of plaintiff has shown no right
to relief. The party in the position of plaintiff shall have twenty days
from the date of service of the motion to file a brief in response to
the motion. The Trademark Trial and Appeal Board may render judgment
against the party in the position of plaintiff, or the Board may decline
to render judgment until all testimony periods have passed. If judgment
is not rendered on the motion to dismiss, testimony periods will be
reset for the party in the position of defendant and for rebuttal.
(c) A motion filed under paragraph (a) or (b) of this section must
be filed before the opening of the testimony period of the moving party,
except that the Trademark Trial and Appeal Board may in its discretion
grant a motion under paragraph (a) even if the motion was filed after
the opening of the testimony period of the moving party.
[48 FR 23141, May 23, 1983, as amended at 51 FR 28710, Aug. 11, 1986; 81
FR 69985, Oct. 7, 2016]
Sec.2.133 Amendment of application or registration during proceedings.
(a) An application subject to an opposition may not be amended in
substance nor may a registration subject to a cancellation be amended or
disclaimed in part, except with the consent of the other party or
parties and the approval of the Trademark Trial and Appeal Board, or
upon motion granted by the Board.
(b) If, in an inter partes proceeding, the Trademark Trial and
Appeal Board finds that a party whose application or registration is the
subject of the proceeding is not entitled to registration in the absence
of a specified restriction to the application or registration, the Board
will allow the party time in which to file a motion that the application
or registration be amended to conform to the findings of the Board,
failing which judgment will be entered against the party.
[[Page 332]]
(c) Geographic limitations will be considered and determined by the
Trademark Trial and Appeal Board only in the context of a concurrent use
registration proceeding.
(d) A plaintiff's pleaded registration will not be restricted in the
absence of a counterclaim to cancel the registration in whole or in
part, except that a counterclaim need not be filed if the registration
is the subject of another proceeding between the same parties or anyone
in privity therewith.
[54 FR 37597, Sept. 11, 1989, as amended at 72 FR 42263, Aug. 1, 2007]
Sec.2.134 Surrender or voluntary cancellation of registration.
(a) After the commencement of a cancellation proceeding, if the
respondent applies for cancellation of the involved registration under
section 7(e) of the Act of 1946 without the written consent of every
adverse party to the proceeding, judgment shall be entered against the
respondent. The written consent of an adverse party may be signed by the
adverse party or by the adverse party's attorney or other authorized
representative.
(b) After the commencement of a cancellation proceeding, if it comes
to the attention of the Trademark Trial and Appeal Board that the
respondent has permitted its involved registration to be cancelled under
section 8 or section 71 of the Act of 1946, or has failed to renew its
involved registration under section 9 of the Act of 1946, or has allowed
its registered extension of protection to expire under section 70(b) of
the Act of 1946, an order may be issued allowing respondent until a set
time, not less than fifteen days, in which to show cause why such
cancellation, failure to renew, or expiration should not be deemed to be
the equivalent of a cancellation by request of respondent without the
consent of the adverse party and should not result in entry of judgment
against respondent as provided by paragraph (a) of this section. In the
absence of a showing of good and sufficient cause, judgment may be
entered against respondent as provided by paragraph (a) of this section.
[48 FR 23141, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63
FR 48100, Sept. 9, 1998; 81 FR 69985, Oct. 7, 2016]
Sec.2.135 Abandonment of application or mark.
After the commencement of an opposition, concurrent use, or
interference proceeding, if the applicant files a written abandonment of
the application or of the mark without the written consent of every
adverse party to the proceeding, judgment shall be entered against the
applicant. The written consent of an adverse party may be signed by the
adverse party or by the adverse party's attorney or other authorized
representative.
[54 FR 34900, Aug. 22, 1989]
Sec.2.136 Status of application or registration on termination of
proceeding.
After the Board has issued its decision in an opposition,
cancellation or concurrent use proceeding, and after the time for filing
any appeal of the decision has expired, or any appeal that was filed has
been decided and the Board's decision affirmed, the proceeding will be
terminated by the Board. On termination of an opposition, cancellation
or concurrent use proceeding, if the judgment is not adverse to the
applicant or registrant, the subject application returns to the status
it had before the institution of the proceeding and the otherwise
appropriate status of the subject registration is unaffected by the
proceeding. If the judgment is adverse to the applicant or registrant,
the application stands refused or the registration will be cancelled in
whole or in part without further action and all proceedings thereon are
considered terminated.
[81 FR 69985, Oct. 7, 2016]
Appeals
Sec.2.141 Ex parte appeals from action of trademark examining attorney.
(a) An applicant may, upon final refusal by the trademark examining
attorney, appeal to the Trademark Trial and Appeal Board upon payment of
the
[[Page 333]]
prescribed fee for each class in the application for which an appeal is
taken, within six months of the date of issuance of the final action. A
second refusal on the same grounds may be considered as final by the
applicant for purpose of appeal.
(b) The applicant must pay an appeal fee for each class from which
the appeal is taken. If the applicant does not pay an appeal fee for at
least one class of goods or services before expiration of the six-month
statutory filing period, the application will be abandoned. In a
multiple-class application, if an appeal fee is submitted for fewer than
all classes, the applicant must specify the class(es) in which the
appeal is taken. If the applicant timely submits a fee sufficient to pay
for an appeal in at least one class, but insufficient to cover all the
classes, and the applicant has not specified the class(es) to which the
fee applies, the Board will issue a written notice setting a time limit
in which the applicant may either pay the additional fees or specify the
class(es) being appealed. If the applicant does not submit the required
fee or specify the class(es) being appealed within the set time period,
the Board will apply the fee(s) to the class(es) in ascending order,
beginning with the lowest numbered class.
[73 FR 67772, Nov. 17, 2008]
Sec.2.142 Time and manner of ex parte appeals.
(a) Any appeal filed under the provisions of Sec.2.141 must be
filed within six months from the date of the final refusal or the date
of the action from which the appeal is taken. An appeal is taken by
filing a notice of appeal in written form, as prescribed in Sec.2.126,
and paying the appeal fee.
(b)(1) The brief of appellant shall be filed within sixty days from
the date of appeal. If the brief is not filed within the time allowed,
the appeal may be dismissed. The examining attorney shall, within sixty
days after the brief of appellant is sent to the examining attorney,
file with the Trademark Trial and Appeal Board a written brief answering
the brief of appellant and shall email or mail a copy of the brief to
the appellant. The appellant may file a reply brief within twenty days
from the date of mailing of the brief of the examining attorney.
(2) Briefs must meet the requirements prescribed in Sec.2.126,
except examining attorney submissions need not be filed through ESTTA.
Without prior leave of the Trademark Trial and Appeal Board, a brief
shall not exceed twenty-five pages in length in its entirety, including
the table of contents, index of cases, description of the record,
statement of the issues, recitation of the facts, argument, and summary.
A reply brief from the appellant, if any, shall not exceed ten pages in
length in its entirety. Unless authorized by the Board, no further
briefs are permitted.
(3) Citation to evidence in briefs should be to the documents in the
electronic application record by date, the name of the paper under which
the evidence was submitted, and the page number in the electronic
record.
(c) All requirements made by the examining attorney and not the
subject of appeal shall be complied with prior to the filing of an
appeal, and the statement of issues in the brief should note such
compliance.
(d) The record in the application should be complete prior to the
filing of an appeal. Evidence should not be filed with the Board after
the filing of a notice of appeal. If the appellant or the examining
attorney desires to introduce additional evidence after an appeal is
filed, the appellant or the examining attorney should submit a request
to the Board to suspend the appeal and to remand the application for
further examination.
(e)(1) If the appellant desires an oral hearing, a request should be
made by a separate notice filed not later than ten days after the due
date for a reply brief. Oral argument will be heard by at least three
Administrative Trademark Judges or other statutory members of the
Trademark Trial and Appeal Board at the time specified in the notice of
hearing, which may be reset if the Board is prevented from hearing the
argument at the specified time or, so far as is convenient and proper,
to meet the wish of the appellant or the appellant's attorney or other
authorized representative. Appellants, examining attorneys, and members
of the
[[Page 334]]
Board may attend in person or, at the discretion of the Board, remotely.
(2) If the appellant requests an oral argument, the examining
attorney who issued the refusal of registration or the requirement from
which the appeal is taken, or in lieu thereof another examining attorney
as designated by a supervisory or managing attorney, shall present an
oral argument. If no request for an oral hearing is made by the
appellant, the appeal will be decided on the record and briefs.
(3) Oral argument will be limited to twenty minutes by the appellant
and ten minutes by the examining attorney. The appellant may reserve
part of the time allowed for oral argument to present a rebuttal
argument.
(f)(1) If, during an appeal from a refusal of registration, it
appears to the Trademark Trial and Appeal Board that an issue not
previously raised may render the mark of the appellant unregistrable,
the Board may suspend the appeal and remand the application to the
examining attorney for further examination to be completed within the
time set by the Board.
(2) If the further examination does not result in an additional
ground for refusal of registration, the examining attorney shall
promptly return the application to the Board, for resumption of the
appeal, with a written statement that further examination did not result
in an additional ground for refusal of registration.
(3) If the further examination does result in an additional ground
for refusal of registration, the examining attorney and appellant shall
proceed as provided by Sec. Sec.2.61, 2.62, and 2.63. If the ground
for refusal is made final, the examining attorney shall return the
application to the Board, which shall thereupon issue an order allowing
the appellant sixty days from the date of the order to file a
supplemental brief limited to the additional ground for the refusal of
registration. If the supplemental brief is not filed by the appellant
within the time allowed, the appeal may be dismissed.
(4) If the supplemental brief of the appellant is filed, the
examining attorney shall, within sixty days after the supplemental brief
of the appellant is sent to the examining attorney, file with the Board
a written brief answering the supplemental brief of appellant and shall
email or mail a copy of the brief to the appellant. The appellant may
file a reply brief within twenty days from the date of mailing of the
brief of the examining attorney.
(5) If an oral hearing on the appeal had been requested prior to the
remand of the application but not yet held, an oral hearing will be set
and heard as provided in paragraph (e) of this section. If an oral
hearing had been held prior to the remand or had not been previously
requested by the appellant, an oral hearing may be requested by the
appellant by a separate notice filed not later than ten days after the
due date for a reply brief on the additional ground for refusal of
registration. If the appellant files a request for an oral hearing, one
will be set and heard as provided in paragraph (e) of this section.
(6) If, during an appeal from a refusal of registration, it appears
to the examining attorney that an issue not involved in the appeal may
render the mark of the appellant unregistrable, the examining attorney
may, by written request, ask the Board to suspend the appeal and to
remand the application to the examining attorney for further
examination. If the request is granted, the examining attorney and
appellant shall proceed as provided by Sec. Sec.2.61, 2.62, and 2.63.
After the additional ground for refusal of registration has been
withdrawn or made final, the examining attorney shall return the
application to the Board, which shall resume proceedings in the appeal
and take further appropriate action with respect thereto.
(g) An application which has been considered and decided on appeal
will not be reopened except for the entry of a disclaimer under section
6 of the Act of 1946 or upon order of the Director, but a petition to
the Director to reopen an application will be considered only upon a
showing of sufficient cause for consideration of any matter not already
adjudicated.
[48 FR 23141, May 23, 1983, as amended at 54 FR 34901, Aug. 22, 1989; 68
FR 55768, Sept. 26, 2003; 72 FR 42263, Aug. 1, 2007; 80 FR 2312, Jan.
16, 2015; 81 FR 69985, Oct. 7, 2016]
[[Page 335]]
Sec.2.143 [Reserved]
Sec.2.144 Reconsideration of decision on ex parte appeal.
Any request for rehearing or reconsideration, or modification of the
decision, must be filed within one month from the date of the decision.
Such time may be extended by the Trademark Trial and Appeal Board upon a
showing of sufficient cause.
[54 FR 29554, July 13, 1989]
Sec.2.145 Appeal to court and civil action.
(a) For an Appeal to the United States Court of Appeals for the
Federal Circuit under section 21(a) of the Act. (1) An applicant for
registration, or any party to an interference, opposition, or
cancellation proceeding or any party to an application to register as a
concurrent user, hereinafter referred to as inter partes proceedings,
who is dissatisfied with the decision of the Trademark Trial and Appeal
Board, and any registrant who has filed an affidavit or declaration
under section 8 or section 71 of the Act or who has filed an application
for renewal and is dissatisfied with the decision of the Director
(Sec. Sec.2.165, 2.184), may appeal to the United States Court of
Appeals for the Federal Circuit. It is unnecessary to request
reconsideration by the Board before filing any such appeal; however, a
party requesting reconsideration must do so before filing a notice of
appeal.
(2) In all appeals under section 21(a), the appellant must take the
following steps:
(i) File the notice of appeal with the Director, addressed to the
Office of the General Counsel, as provided in Sec.104.2 of this
chapter;
(ii) File a copy of the notice of appeal with the Trademark Trial
and Appeal Board via ESTTA; and
(iii) Comply with the requirements of the Federal Rules of Appellate
Procedure and Rules for the United States Court of Appeals for the
Federal Circuit, including serving the requisite number of copies on the
Court and paying the requisite fee for the appeal.
(3) Additional requirements. (i) The notice of appeal shall specify
the party or parties taking the appeal and shall designate the decision
or part thereof appealed from.
(ii) In inter partes proceedings, the notice of appeal must be
served as provided in Sec.2.119.
(b) For a notice of election under section 21(a)(1) to proceed under
section 21(b) of the Act. (1) Any applicant or registrant in an ex parte
case who takes an appeal to the United States Court of Appeals for the
Federal Circuit waives any right to proceed under section 21(b) of the
Act.
(2) If an adverse party to an appeal taken to the United States
Court of Appeals for the Federal Circuit by a defeated party in an inter
partes proceeding elects to have all further review proceedings
conducted under section 21(b) of the Act, that party must take the
following steps:
(i) File a notice of election with the Director, addressed to the
Office of the General Counsel, as provided in Sec.104.2 of this
chapter;
(ii) File a copy of the notice of election with the Trademark Trial
and Appeal Board via ESTTA; and
(iii) Serve the notice of election as provided in Sec.2.119.
(c) For a civil action under section 21(b) of the Act. (1) Any
person who may appeal to the United States Court of Appeals for the
Federal Circuit (paragraph (a) of this section), may have remedy by
civil action under section 21(b) of the Act. It is unnecessary to
request reconsideration by the Board before filing any such civil
action; however, a party requesting reconsideration must do so before
filing a civil action.
(2) Any applicant or registrant in an ex parte case who seeks remedy
by civil action under section 21(b) of the Act must serve the summons
and complaint pursuant to Rule 4(i) of the Federal Rules of Civil
Procedure with the copy to the Director addressed to the Office of the
General Counsel as provided in Sec.104.2 of this chapter. A copy of
the complaint must also be filed with the Trademark Trial and Appeal
Board via ESTTA.
(3) The party initiating an action for review of a Board decision in
an inter partes case under section 21(b) of the Act must file notice
thereof with the Trademark Trial and Appeal Board via
[[Page 336]]
ESTTA no later than five business days after filing the complaint in the
district court. The notice must identify the civil action with
particularity by providing the case name, case number, and court in
which it was filed. A copy of the complaint may be filed with the
notice. Failure to file the required notice can result in termination of
the Board proceeding and further action within the United States Patent
and Trademark Office consistent with the final Board decision.
(d) Time for appeal or civil action--(1) For an appeal under section
21(a). The notice of appeal filed pursuant to section 21(a) of the Act
must be filed with the Director no later than sixty-three (63) days from
the date of the final decision of the Trademark Trial and Appeal Board
or the Director. In inter partes cases, the time for filing a notice of
cross-appeal expires 14 days after service of the notice of appeal or 63
days from the date of the decision of the Trademark Trial and Appeal
Board or the Director, whichever is later.
(2) For a notice of election under 21(a)(1) and a civil action
pursuant to such notice of election. The times for filing a notice of
election under section 21(a)(1) and for commencing a civil action
pursuant to a notice of election are governed by section 21(a)(1) of the
Act.
(3) For a civil action under section 21(b). A civil action must be
commenced no later than sixty-three (63) days after the date of the
final decision of the Trademark Trial and Appeal Board or Director. In
inter partes cases, the time for filing a cross-action expires 14 days
after service of the summons and complaint or 63 days from the date of
the decision of the Trademark Trial and Appeal Board or the Director,
whichever is later.
(4) Time computation. (i) If a request for rehearing or
reconsideration or modification of the Board decision is filed within
the time specified in Sec.2.127(b), Sec.2.129(c), or Sec.2.144, or
within any extension of time granted thereunder, the time for filing an
appeal or commencing a civil action shall expire no later than sixty-
three (63) days after action on the request.
(ii) Holidays. The times specified in this section in days are
calendar days. If the last day of time specified for an appeal, notice
of election, or commencing a civil action falls on a Saturday, Sunday or
Federal holiday in the District of Columbia, the time is extended to the
next day which is neither a Saturday, Sunday nor a Federal holiday in
the District of Columbia pursuant to Sec.2.196.
(e) Extension of time. (1) The Director, or the Director's designee,
may extend the time for filing an appeal, or commencing a civil action,
upon written request if:
(i) Requested before the expiration of the period for filing an
appeal or commencing a civil action, and upon a showing of good cause;
or
(ii) Requested after the expiration of the period for filing an
appeal or commencing a civil action, and upon a showing that the failure
to act was the result of excusable neglect.
(2) The request must be filed as provided in Sec.104.2 of this
chapter and addressed to the attention of the Office of the Solicitor. A
copy of the request should also be filed with the Trademark Trial and
Appeal Board via ESTTA.
[81 FR 69986, Oct. 7, 2016, as amended at 81 FR 89383, Dec. 12, 2016]
Petitions and Action by the Director
Sec.2.146 Petitions to the Director.
(a) Petition may be taken to the Director in a trademark case:
(1) From any repeated or final formal requirement of the examiner in
the ex parte prosecution of an application if permitted by Sec.2.63(a)
and (b);
(2) In any case for which the Act of 1946, Title 35 of the United
States Code, or parts 2, 3, 6, and 7 of Title 37 of the Code of Federal
Regulations specifies that the matter is to be determined directly or
reviewed by the Director;
(3) To invoke the supervisory authority of the Director in
appropriate circumstances;
(4) In any case not specifically defined and provided for by parts
2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or
(5) In an extraordinary situation, when justice requires and no
other party is injured thereby, to request a
[[Page 337]]
suspension or waiver of any requirement of the rules not being a
requirement of the Act of 1946.
(b) Questions of substance arising during the ex parte prosecution
of applications, including, but not limited to, questions arising under
sections 2, 3, 4, 5, 6, and 23 of the Act of 1946, are not appropriate
subject matter for petitions to the Director.
(c) Every petition to the Director shall include a statement of the
facts relevant to the petition, the points to be reviewed, the action or
relief requested, and the fee required by Sec.2.6. Any brief in
support of the petition shall be embodied in or accompany the petition.
The petition must be signed by the petitioner, someone with legal
authority to bind the petitioner (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice under
Sec.11.14 of this chapter, in accordance with the requirements of
Sec.2.193(e)(5). When facts are to be proved on petition, the
petitioner must submit proof in the form of verified statements signed
by someone with firsthand knowledge of the facts to be proved, and any
exhibits.
(d) Unless a different deadline is specified elsewhere in this
chapter, a petition under this section must be filed by not later than:
(1) Two months after the issue date of the action, or date of
receipt of the filing, from which relief is requested; or
(2) Where the applicant or registrant declares under Sec.2.20 or
28 U.S.C. 1746 that it did not receive the action, or where no action
was issued, the petition must be filed by not later than:
(i) Two months of actual knowledge of the abandonment of an
application and not later than six months after the date the trademark
electronic records system indicates that the application is abandoned in
full or in part;
(ii) Where the registrant has timely filed an affidavit of use or
excusable non-use under Section 8 or 71 of the Act, or a renewal
application under Section 9 of the Act, two months after the date of
actual knowledge of the cancellation/expiration of a registration and
not later than six months after the date the trademark electronic
records system indicates that the registration is cancelled/expired; or
(iii) Two months after the date of actual knowledge of the denial of
certification of an international application under Sec.7.13(b) and
not later than six months after the trademark electronic records system
indicates that certification is denied.
(e)(1) A petition from the grant or denial of a request for an
extension of time to file a notice of opposition must be filed by not
later than fifteen days after the issue date of the grant or denial of
the request. A petition from the grant of a request must be served on
the attorney or other authorized representative of the potential
opposer, if any, or on the potential opposer. A petition from the denial
of a request must be served on the attorney or other authorized
representative of the applicant, if any, or on the applicant. Proof of
service of the petition must be made as provided by Sec.2.119. The
potential opposer or the applicant, as the case may be, may file a
response by not later than fifteen days after the date of service of the
petition and must serve a copy of the response on the petitioner, with
proof of service as provided by Sec.2.119. No further document
relating to the petition may be filed.
(2) A petition from an interlocutory order of the Trademark Trial
and Appeal Board must be filed by not later than thirty days after the
issue date of the order from which relief is requested. Any brief in
response to the petition must be filed, with any supporting exhibits, by
not later than fifteen days after the date of service of the petition.
Petitions and responses to petitions, and any documents accompanying a
petition or response under this subsection, must be served on every
adverse party pursuant to Sec.2.119.
(f) An oral hearing will not be held on a petition except when
considered necessary by the Director.
(g) The mere filing of a petition to the Director will not act as a
stay in any appeal or inter partes proceeding that is pending before the
Trademark Trial and Appeal Board, nor stay the period for replying to an
Office action in an application, except when a stay is specifically
requested and is granted or
[[Page 338]]
when Sec. Sec.2.63(a) and (b) and 2.65(a) are applicable to an ex
parte application.
(h) Authority to act on petitions, or on any petition, may be
delegated by the Director.
(i) If the Director denies a petition, the petitioner may request
reconsideration, if:
(1) The petitioner files the request by not later than:
(i) Two months after the issue date of the decision denying the
petition; or
(ii) Two months after the date of actual knowledge of the decision
denying the petition and not later than six months after the issue date
of the decision where the petitioner declares under Sec.2.20 or 28
U.S.C. 1746 that it did not receive the decision; and
(2) The petitioner pays a second petition fee under Sec.2.6.
[82 FR 29409, June 29, 2017, as amended at 84 FR 37095, July 31, 2019]
Sec.2.147 Petition to the Director to accept a paper submission.
(a) Paper submission when TEAS is unavailable on the date of a
filing deadline. (1) An applicant or registrant may file a petition to
the Director under this section requesting acceptance of a submission
filed on paper if:
(i) TEAS is unavailable on the date of the deadline for the
submission specified in a regulation in part 2 or 7 of this chapter or
in a section of the Act; and
(ii) The petition is timely filed, pursuant to Sec.2.197 or Sec.
2.198, on the date of the deadline.
(2) The petition must include:
(i) The paper submission;
(ii) Proof that TEAS was unavailable on the date of the deadline;
(iii) A statement of the facts relevant to the petition, supported
by a declaration under Sec.2.20 or 28 U.S.C. 1746 that is signed by
the petitioner, someone with legal authority to bind the petitioner
(e.g., a corporate officer or general partner of a partnership), or a
practitioner qualified to practice under Sec.11.14 of this chapter;
(iv) The fee for a petition filed on paper under Sec.
2.6(a)(15)(i); and
(v) Any other required fee(s) under Sec.2.6 for the paper
submission.
(b) Certain paper submissions timely filed before the date of a
filing deadline. (1) An applicant, registrant, or petitioner for
cancellation may file a petition to the Director under this section,
requesting acceptance of any of the following submissions that was
timely submitted on paper and otherwise met the minimum filing
requirements, but not processed or examined by the Office because it was
not submitted electronically pursuant to Sec.2.21(a), Sec.2.23(a),
or Sec.2.111(c)(1), and the applicant, registrant, or petitioner for
cancellation is unable to timely resubmit the document electronically by
the deadline:
(i) An application seeking a priority filing date with a deadline
under section 44(d)(1) of the Act;
(ii) A statement of use filed within the last six months of the
period specified in section 1(d)(2) of the Act;
(iii) An affidavit or declaration of continued use or excusable
nonuse with a deadline under section 8(a)(3) or section 71(a)(3) of the
Act;
(iv) A request for renewal of a registration with a deadline under
section 9(a) of the Act;
(v) An application for transformation of an extension of protection
into a United States application with a deadline under section 70(c) of
the Act; or
(vi) A petition to cancel a registration under section 14 of the Act
on the fifth year anniversary of the date of the registration of the
mark.
(2) The petition must be filed by not later than two months after
the issue date of the notice denying acceptance of the paper filing and
must include:
(i) A statement of the facts relevant to the petition, supported by
a declaration under Sec.2.20 or 28 U.S.C. 1746 that is signed by the
petitioner, someone with legal authority to bind the petitioner (e.g., a
corporate officer or general partner of a partnership), or a
practitioner qualified to practice under Sec.11.14 of this chapter;
(ii) A copy of the relevant paper submission and proof that it was
timely filed;
(iii) Proof that a sufficient fee accompanied the original paper
submission;
(iv) The required fee(s) under Sec.2.6 for the paper submission;
and
(v) The relevant petition fee under Sec.2.6(a)(15).
(c) Petition under Sec.2.146. If the applicant or registrant is
unable to meet
[[Page 339]]
the requirements under paragraphs (a) or (b) of this section for filing
the petition, the applicant or registrant may submit a petition to the
Director under Sec.2.146(a)(5) to request a waiver of Sec.2.21(a) or
Sec.2.23(a).
(d) This section does not apply to requirements for paper
submissions to the Trademark Trial and Appeal Board except as specified
in paragraph (b)(vi).
[84 FR 37095, July 31, 2019]
Sec.2.148 Director may suspend certain rules.
In an extraordinary situation, when justice requires and no other
party is injured thereby, any requirement of the rules in parts 2, 3, 6,
and 7 of this chapter that is not a requirement of the Act may be
suspended or waived by the Director.
[84 FR 37096, July 31, 2019]
Sec.2.149 Letters of protest against pending applications.
(a) A third party may submit, for consideration and entry in the
record of a trademark application, objective evidence relevant to the
examination of the application for a ground for refusal of registration
if the submission is made in accordance with this section.
(b) A party protesting multiple applications must file a separate
submission under this section for each application.
(c) Any submission under this section must be filed no later than 30
days after the date the application is published for opposition under
section 12(a) of the Act and Sec.2.80 of this part. If the subject
application cannot be withdrawn from issuance of a registration while
consideration of the protest is pending, the protest may be considered
untimely.
(d)(1) If the letter of protest is filed before publication of the
subject application, the evidence must be relevant to the identified
ground(s) for refusal, such that it is appropriate for the examining
attorney to consider whether to issue a refusal or make a requirement
under the Act or this part.
(2) If the letter of protest is filed on or within 30 days after the
date of publication of the subject application, the evidence must
establish a prima facie case for refusal on the identified ground(s),
such that failure to issue a refusal or to make a requirement would
likely result in issuance of a registration in violation of the Act or
parts 2 or 7 of this section.
(e) Filing a submission under this section does not stay or extend
the time for filing a notice of opposition.
(f) Any submission under this section must be made in writing, filed
through TEAS, and include:
(1) The fee required by Sec.2.6(a)(25);
(2) The serial number of the pending application that is the subject
of the protest;
(3) An itemized evidence index that does not identify the protestor
or its representatives, does not contain legal argument, and includes:
(i) An identification of the documents, or portions of documents,
being submitted as evidence. The submission may not total more than 10
items of evidence in support of a specified ground of refusal and more
than 75 total pages of evidence without a detailed and sufficient
explanation that establishes the special circumstances that necessitate
providing more than 10 items of evidence per refusal ground or more than
75 total pages of evidence; and
(ii) A concise factual statement of the relevant ground(s) for
refusal of registration appropriate in ex parte examination that each
item identified supports; and
(4) A clear and legible copy of each item identified in the evidence
index where:
(i) Copies of third-party registrations come from the electronic
records of the Office and show the current status and title of the
registration;
(ii) Evidence from the internet includes the date the evidence was
published or accessed and the complete URL address of the website; and
(iii) Copies of printed publications identify the publication name
and date of publication.
(g) Any submission under this section may not be entered or
considered by the Office if:
(1) Any part of the submission is not in compliance with this
section;
[[Page 340]]
(2) The application record shows that the examining attorney already
considered the refusal ground(s) specified in the submission; or
(3) A provision of the Act or parts 2 or 7 of this chapter precludes
acceptance of the submission.
(h) If a submission is determined to be in compliance with this
section, only the specified ground(s) for refusal and the provided
evidence relevant to the ground(s) for refusal will be included in the
application record for consideration by the examining attorney. An
applicant should not reply to the entry into the application record of
evidence entered under this section.
(i) Any determination whether to include in an application record
the ground(s) or evidence for a refusal of registration in a submission
under this section is not petitionable.
(j) A third party filing a submission under this section will not
receive any communication from the Office relating to the submission
other than acknowledgement that it has been received by the Office and
notification of whether the submission is found to be compliant or non-
compliant with this section. Communications with the third party will
not be made of record in the application. The Office will not accept
amendments to a non-compliant submission that was previously filed.
Instead, a third party who previously filed a non-compliant submission
may file another submission that meets the requirements of paragraph (f)
of this section, provided the time period for filing a submission in
paragraph (c) of this section has not closed.
(k) The limited involvement of the third party ends with the filing
of the submission under this section. The third party may not directly
contact the examining attorney assigned to the application.
[85 FR 73215, Nov. 17, 2020]
Certificate
Sec.2.151 Certificate.
When the Office determines that a mark is registrable, the Office
will issue to the owner a certificate of registration on the Principal
Register or the Supplemental Register. The certificate will state the
application filing date, the act under which the mark is registered, the
date of issue, and the number of the registration and will include a
reproduction of the mark and pertinent data from the application. A
notice of the requirements of sections 8 and 71 of the Act will issue
with the certificate.
[84 FR 37096, July 31, 2019]
Publication of Marks Registered Under 1905 Act
Authority: Secs. 2.153 to 2.156 also issued under sec. 12, 60 Stat.
432; 15 U.S.C. 1062.
Sec.2.153 Publication requirements.
The owner of a mark registered under the provisions of the Trademark
Act of 1881 or 1905 may at any time prior to the expiration of the
period for which the registration was issued or renewed, upon the
payment of the prescribed fee, file an affidavit or declaration in
accordance with Sec.2.20 setting forth those goods or services in the
registration on or in connection with which said mark is in use in
commerce, and stating that the owner claims the benefits of the Act of
1946. The affidavit or declaration must be signed by a person properly
authorized to sign on behalf of the owner under Sec.2.193(e)(1).
[74 FR 54909, Oct. 26, 2009]
Sec.2.154 Publication in Official Gazette.
A notice of the claim of benefits under the Act of 1946 and a
reproduction of the mark will then be published in the Official Gazette
as soon as practicable. The published mark will retain its original
registration number.
Sec.2.155 Notice of publication.
The Office will send the registrant a notice of publication of the
mark and of the requirement for filing the affidavit or declaration
required by section 8 of the Act.
[64 FR 48924, Sept. 8, 1999]
Sec.2.156 Not subject to opposition; subject to cancellation.
The published mark is not subject to opposition, but is subject to
petitions to cancel as specified in Sec.2.111 and to
[[Page 341]]
cancellation for failure to file the affidavit or declaration required
by section 8 of the Act.
[64 FR 48924, Sept. 8, 1999]
Reregistration of Marks Registered Under Prior Acts
Sec.2.158 Reregistration of marks registered under Acts of 1881, 1905, and 1920.
Trademarks registered under the Act of 1881, the Act of 1905 or the
Act of 1920 may be reregistered under the Act of 1946, either on the
Principal Register, if eligible, or on the Supplemental Register, but a
new complete application for registration must be filed complying with
the rules relating thereto, and such application will be subject to
examination and other proceedings in the same manner as other
applications filed under the Act of 1946. See Sec.2.26 for use of old
drawing.
Cancellation for Failure To File Affidavit or Declaration
Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat.
431; 15 U.S.C. 1058.
Sec.2.160 Affidavit or declaration of continued use or excusable
nonuse required to avoid cancellation of registration.
(a) During the following time periods, the owner of the registration
must file an affidavit or declaration of continued use or excusable
nonuse, or the registration will be cancelled:
(1)(i) For registrations issued under the Trademark Act of 1946, on
or after the fifth anniversary and no later than the sixth anniversary
after the date of registration; or
(ii) For registrations issued under prior Acts, on or after the
fifth anniversary and no later than the sixth anniversary after the date
of publication under section 12(c) of the Act; and
(2) For all registrations, within the year before the end of every
ten-year period after the date of registration.
(3) The affidavit or declaration may be filed within a grace period
of six months after the end of the deadline set forth in paragraphs
(a)(1) and (a)(2) of this section, with payment of the grace period
surcharge per class required by section 8(a)(3) of the Act and Sec.
2.6.
(b) For the requirements for the affidavit or declaration, see Sec.
2.161.
[64 FR 48924, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]
Sec.2.161 Requirements for a complete affidavit or declaration of use
in commerce or excusable nonuse; requirement for the submission of
additional information, exhibits, affidavits or declarations, and
specimens; and fee for deletions of goods, services, and/or
classes from a registration.
(a) Requirements for a complete affidavit or declaration. A complete
affidavit or declaration under section 8 of the Act must:
(1) Be filed by the owner within the period set forth in Sec.
2.160(a);
(2) Include a verified statement attesting to the use in commerce or
excusable nonuse of the mark within the period set forth in section 8 of
the Act. This verified statement must be executed on or after the
beginning of the filing period specified in Sec.2.160(a);
(3) Include the U.S. registration number;
(4)(i) Include the fee required by Sec.2.6 for each class that the
affidavit or declaration covers;
(ii) If the affidavit or declaration is filed during the grace
period under section 8(a)(3) of the Act, include the grace period
surcharge per class required by Sec.2.6; and
(iii) If at least one fee is submitted for a multiple-class
registration, but the fee is insufficient to cover all the classes, and
the class(es) to which the fee(s) should be applied is not specified,
the Office will issue a notice requiring either submission of the
additional fee(s) or specification of the class(es) to which the initial
fee(s) should be applied. Additional fees may be submitted if the
requirements of Sec.2.164 are met. If the additional fee(s) is not
submitted within the time period set out in the Office action, and the
class(es) to which the original fee(s) should be applied is not
specified, the Office will presume that the fee(s) covers the classes in
ascending order, beginning with the lowest numbered class;
(5)(i) Specify the goods, services, or nature of the collective
membership
[[Page 342]]
organization for which the mark is in use in commerce, and/or the goods,
services, or nature of the collective membership organization for which
excusable nonuse is claimed under paragraph (a)(6)(ii) of this section;
and
(ii) Specify the goods, services, or classes being deleted from the
registration, if the affidavit or declaration covers fewer than all the
goods, services, or classes in the registration;
(6)(i) State that the registered mark is in use in commerce; or
(ii) If the registered mark is not in use in commerce on or in
connection with all the goods, services, or classes specified in the
registration, set forth the date when such use of the mark in commerce
stopped and the approximate date when such use is expected to resume,
and recite facts to show that nonuse as to those goods, services, or
classes is due to special circumstances that excuse the nonuse and is
not due to an intention to abandon the mark; and
(7) Include one specimen showing how the mark is in use in commerce
for each class in the registration, unless excusable nonuse is claimed
under paragraph (a)(6)(ii) of this section. When requested by the
Office, additional specimens must be provided. The specimen must meet
the requirements of Sec.2.56.
(8) Additional requirements for a collective mark: In addition to
the above requirements, a complete affidavit or declaration pertaining
to a collective mark must:
(i) State that the owner is exercising legitimate control over the
use of the mark in commerce; and
(ii) If the registration issued from an application based solely on
section 44 of the Act, state the nature of the owner's control over the
use of the mark by the members in the first affidavit or declaration
filed under paragraph (a)(1) of this section.
(9) Additional requirements for a certification mark: In addition to
the above requirements, a complete affidavit or declaration pertaining
to a certification mark must:
(i) Include a copy of the certification standards specified in Sec.
2.45(a)(4)(i)(B);
(A) Submitting certification standards for the first time. If the
registration issued from an application based solely on section 44 of
the Act, include a copy of the certification standards in the first
affidavit or declaration filed under paragraph (a)(1) of this section;
or
(B) Certification standards submitted in prior filing. If the
certification standards in use at the time of filing the affidavit or
declaration have not changed since the date they were previously
submitted to the Office, include a statement to that effect. If the
certification standards in use at the time of filing the affidavit or
declaration have changed since the date they were previously submitted
to the Office, include a copy of the revised certification standards;
(ii) State that the owner is exercising legitimate control over the
use of the mark in commerce; and
(iii) Satisfy the requirements of Sec.2.45(a)(4)(i)(A) and (C).
(10) For requirements of a complete affidavit or declaration of use
in commerce or excusable nonuse for a registration that issued from a
section 66(a) basis application, see Sec.7.37.
(b) Requirement for the submission of additional information,
exhibits, affidavits or declarations, and specimens. The Office may
require the owner to furnish such information, exhibits, affidavits or
declarations, and such additional specimens as may be reasonably
necessary to the proper examination of the affidavit or declaration
under section 8 of the Act or for the Office to assess and promote the
accuracy and integrity of the register.
(c) Fee for deletions of goods, services, and/or classes from a
registration. Deletions by the owner of goods, services, and/or classes
from a registration after submission and prior to acceptance of the
affidavit or declaration must be accompanied by the relevant fee in
Sec.2.6(a)(12)(iii) or (iv).
[85 FR 73216, Nov. 17, 2020]
Sec.2.162 Notice to registrant.
When a certificate of registration is originally issued, the Office
issues with the certificate a notice of the requirement for filing the
affidavit or declaration of use or excusable nonuse under section 8 or
section 71 of the Act. However, the affidavit or declaration must
[[Page 343]]
be filed within the time period required by section 8 or section 71 of
the Act even if this notice is not received.
[84 FR 37096, July 31, 2019]
Sec.2.163 Acknowledgment of receipt of affidavit or declaration.
The Office will issue a notice as to whether an affidavit or
declaration is acceptable, or the reasons for refusal.
(a) If the affidavit or declaration is filed within the time periods
set forth in section 8 of the Act, deficiencies may be corrected after
notification from the Office if the requirements of Sec.2.164 are met.
(b) A response to the refusal must be filed within six months of the
date of issuance of the Office action, or before the end of the filing
period set forth in section 8(a) of the Act, whichever is later. The
response must be signed by the owner, someone with legal authority to
bind the owner (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec.11.14
of this chapter, in accordance with the requirements of Sec.
2.193(e)(2).
(c) If no response is filed within this time period, the
registration will be cancelled, unless time remains in the grace period
under section 8(a)(3) of the Act. If time remains in the grace period,
the owner may file a complete, new affidavit.
[75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]
Sec.2.164 Correcting deficiencies in affidavit or declaration.
(a) If the affidavit or declaration is filed within the time periods
set forth in section 8 of the Act, deficiencies may be corrected after
notification from the Office, as follows:
(1) Correcting deficiencies in affidavits or declarations timely
filed within the periods set forth in sections 8(a)(1) and 8(a)(2) of
the Act. If the affidavit or declaration is timely filed within the
relevant filing period set forth in section 8(a)(1) or section 8(a)(2)
of the Act, deficiencies may be corrected before the end of this filing
period without paying a deficiency surcharge. Deficiencies may be
corrected after the end of this filing period with payment of the
deficiency surcharge required by section 8(c) of the Act and Sec.2.6.
(2) Correcting deficiencies in affidavits or declarations filed
during the grace period. If the affidavit or declaration is filed during
the six-month grace period provided by section 8(a)(3) of the Act,
deficiencies may be corrected before the expiration of the grace period
without paying a deficiency surcharge. Deficiencies may be corrected
after the expiration of the grace period with payment of the deficiency
surcharge required by section 8(c) of the Act and Sec.2.6.
(b) If the affidavit or declaration is not filed within the time
periods set forth in section 8 of the Act, the registration will be
cancelled.
[75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]
Sec.2.165 Petition to Director to review refusal.
(a) A response to the examiner's initial refusal to accept an
affidavit or declaration is required before filing a petition to the
Director, unless the examiner directs otherwise. See Sec.2.163(b) for
the deadline for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, the owner may file a petition to the Director to review the
action. The petition must be filed within six months of the date of
issuance of the action maintaining the refusal, or the Office will
cancel the registration and issue a notice of the cancellation.
(c) A decision by the Director is necessary before filing an appeal
or commencing a civil action in any court.
[64 FR 48925, Sept. 8, 1999, as amended at 73 FR 67773, Nov. 17, 2008]
Sec.2.166 Affidavit of continued use or excusable nonuse combined
with renewal application.
An affidavit or declaration under section 8 of the Act and a renewal
application under section 9 of the Act may be combined into a single
document, provided that the document meets the requirements of both
sections 8 and 9 of the Act.
[64 FR 48925, Sept. 8, 1999]
[[Page 344]]
Affidavit or Declaration Under Section 15
Sec.2.167 Affidavit or declaration under section 15.
The affidavit or declaration in accordance with Sec.2.20 provided
by section 15 of the Act for acquiring incontestability for a mark
registered on the Principal Register or a mark registered under the
Trademark Act of 1881 or 1905 and published under section 12(c) of the
Act (see Sec.2.153) must:
(a) Be verified;
(b) Identify the certificate of registration by the certificate
number and date of registration;
(c) For a trademark, service mark, collective trademark, collective
service mark, and certification mark, recite the goods or services
stated in the registration on or in connection with which the mark has
been in continuous use in commerce for a period of five years after the
date of registration or date of publication under section 12(c) of the
Act, and is still in use in commerce; for a collective membership mark,
describe the nature of the owner's collective membership organization
specified in the registration in connection with which the mark has been
in continuous use in commerce for a period of five years after the date
of registration or date of publication under section 12(c) of the Act,
and is still in use in commerce;
(d) Specify that there has been no final decision adverse to the
owner's claim of ownership of such mark for such goods, services, or
collective membership organization, or to the owner's right to register
the same or to keep the same on the register;
(e) Specify that there is no proceeding involving said rights
pending in the Office or in a court and not finally disposed of;
(f) Be filed within one year after the expiration of any five-year
period of continuous use following registration or publication under
section 12(c) of the Act; and
(g) Include the fee required by Sec.2.6 for each class to which
the affidavit or declaration pertains in the registration. If no fee, or
a fee insufficient to cover at least one class, is filed at an
appropriate time, the affidavit or declaration will not be refused if
the required fee(s) (see Sec.2.6) is filed in the Office within the
time limit set forth in the notification of this defect by the Office.
If the submitted fees are insufficient to cover all classes in the
registration, the particular class or classes to which the affidavit or
declaration pertains should be specified.
(h) If the affidavit or declaration fails to satisfy any of the
requirements in paragraphs (a) through (g) of this section, the owner
will be notified in an Office action that the affidavit or declaration
cannot be acknowledged. If a response is not received within the time
period provided or does not satisfy the requirements of the Office
action, the affidavit or declaration will be abandoned.
(i) If the affidavit or declaration satisfies paragraphs (a) through
(g) of this section, the Office will issue a notice of acknowledgement.
(j) An affidavit or declaration may be abandoned by the owner upon
petition to the Director under Sec.2.146 either before or after the
notice of acknowledgement has issued.
(k) If an affidavit or declaration is abandoned, the owner may file
a new affidavit or declaration with a new filing fee.
(Sec. 15, 60 Stat. 433; 15 U.S.C. 1065; 35 U.S.C. 6; 15 U.S.C. 1113,
1123)
[30 FR 13193, Oct. 16, 1965, as amended at 47 FR 41282, Sept. 17, 1982;
64 FR 48925, Sept. 8, 1999; 73 FR 67773, Nov. 17, 2008; 74 FR 54910,
Oct. 26, 2009; 80 FR 33188, June 11, 2015]
Sec.2.168 Affidavit or declaration under section 15 combined with
affidavit or declaration under sections 8 or 71, or with renewal
application.
(a) The affidavit or declaration filed under section 15 of the Act
may also be used as the affidavit or declaration required by section 8,
if the affidavit or declaration meets the requirements of both sections
8 and 15. The affidavit or declaration filed under section 15 of the Act
may also be used as the affidavit or declaration required by section 71,
if the affidavit or declaration meets the requirements of both sections
71 and 15.
(b) The affidavit or declaration filed under section 15 of the Act
may be combined with an application for renewal of a registration under
section 9
[[Page 345]]
of the Act, if the requirements of both sections 9 and 15 are met.
[64 FR 48925, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]
Correction, Disclaimer, Surrender, Etc.
Sec.2.171 New certificate on change of ownership.
(a) Full change of ownership. If the ownership of a registered mark
changes, the new owner may request that a new certificate of
registration be issued in the name of the new owner. The assignment or
other document changing title must be recorded in the Office. The
request for the new certificate must include the fee required by Sec.
2.6(a)(8) and be signed by the owner of the registration, someone with
legal authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice under
Sec.11.14 of this chapter. In a registered extension of protection,
the assignment must be recorded with the International Bureau of the
World Intellectual Property Organization before it can be recorded in
the Office (see Sec.7.22).
(b) Partial change of ownership. (1) In a registration resulting
from an application based on section 1 or section 44 of the Act, if
ownership of a registration has changed with respect to some but not all
of the goods and/or services, the owner(s) may file a request that the
registration be divided into two or more separate registrations. The
assignment or other document changing title must be recorded in the
Office. The request to divide must include the fee required by Sec.
2.6(a)(8) for each new registration created by the division, and be
signed by the owner of the registration, someone with legal authority to
bind the owner (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec.11.14
of this chapter, in accordance with Sec.2.193(e)(2) of this chapter.
(2)(i) When the International Bureau of the World Intellectual
Property Organization notifies the Office that an international
registration has been divided as the result of a change of ownership
with respect to some but not all of the goods and/or services, the
Office will construe the International Bureau's notice as a request to
divide. The Office will update Office records to reflect the change in
ownership, divide out the assigned goods and/or services from the
registered extension of protection (parent registration), and publish
notice of the parent registration in the Official Gazette.
(ii) The Office will create a new registration number for the child
registration, and enter the information about the new registration in
its automated records. The Office will notify the new owner that the new
owner must pay the fee required by Sec.2.6 to obtain a new
registration certificate for the child registration. It is not necessary
for the new owner to file a separate request to divide.
(iii) The Office will not divide a registered extension of
protection unless the International Bureau notifies the Office that the
international registration has been divided.
[73 FR 67774, Nov. 17, 2008, as amended at 74 FR 54910, Oct. 26, 2009;
80 FR 2312, Jan. 16, 2015]
Sec.2.172 Surrender for cancellation.
Upon application by the owner, the Director may permit any
registration to be surrendered for cancellation. The application for
surrender must be signed by the owner of the registration, someone with
legal authority to bind the owner (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice under
Sec.11.14 of this chapter. When a registration has more than one
class, one or more entire class(es) but fewer than the total number of
classes may be surrendered. Deletion of fewer than all the goods or
services in a single class constitutes amendment of the registration as
to that class (see Sec.2.173), rather than surrender. A surrender for
cancellation may not subsequently be withdrawn.
[80 FR 2312, Jan. 16, 2015]
Sec.2.173 Amendment of registration.
(a) Form of amendment. The owner of a registration may apply to
amend a registration or to disclaim part of the mark in the
registration. The owner
[[Page 346]]
must submit a written request specifying the amendment or disclaimer. If
the registration is involved in an inter partes proceeding before the
Trademark Trial and Appeal Board, the request must be filed by
appropriate motion to the Board.
(b) Requirements for request. A request for amendment or disclaimer
must:
(1) Include the fee required by Sec.2.6;
(2) Be verified and signed in accordance with Sec.2.193(e)(6); and
(3) If the amendment involves a change in the mark: one new specimen
per class showing the mark as used on or in connection with the goods,
services, or collective membership organization; a verified statement
that the specimen was in use in commerce at least as early as the filing
date of the amendment; and a new drawing of the amended mark. When
requested by the Office, additional specimens must be provided.
(4) The Office may require the owner to furnish such specimens,
information, exhibits, and affidavits or declarations as may be
reasonably necessary to the proper examination of the amendment.
(c) Registration must still contain registrable matter. The
registration as amended must still contain registrable matter, and the
mark as amended must be registrable as a whole.
(d) Amendment may not materially alter the mark. An amendment or
disclaimer that materially alters the character of the mark will not be
permitted, in accordance with section 7(e) of the Act.
(e) Amendment of identification of goods, services, or collective
membership organization. No amendment in the identification of goods or
services, or description of the nature of the collective membership
organization, in a registration will be permitted except to restrict the
identification or to change it in ways that would not require
republication of the mark.
(f) Amendment of certification statement for certification marks. An
amendment of the certification statement specified in Sec.
2.45(a)(4)(i)(A) or (a)(4)(ii)(A) that would materially alter the
certification statement will not be permitted, in accordance with
section 7(e) of the Act.
(g) Conforming amendments may be required. If the registration
includes a disclaimer, description of the mark, or other miscellaneous
statement, any request to amend the registration must include a request
to make any necessary conforming amendments to the disclaimer,
description, or other statement.
(h) Elimination of disclaimer. No amendment seeking the elimination
of a disclaimer will be permitted, unless deletion of the disclaimed
portion of the mark is also sought.
(i) No amendment to add or delete section 2(f) claim of acquired
distinctiveness. An amendment seeking the addition or deletion of a
claim of acquired distinctiveness will not be permitted.
[73 FR 67774, Nov. 17, 2008, as amended at 77 FR 30207, May 22, 2012; 80
FR 33189, June 11, 2015]
Sec.2.174 Correction of Office mistake.
Whenever Office records clearly disclose a material mistake in a
registration, incurred through the fault of the Office, the Office will
issue a certificate of correction stating the fact and nature of the
mistake, signed by the Director or by an employee designated by the
Director, without charge. Thereafter, the corrected certificate shall
have the same effect as if it had been originally issued in the
corrected form. In the discretion of the Director, the Office may issue
a new certificate of registration without charge.
[73 FR 67774, Nov. 17, 2008]
Sec.2.175 Correction of mistake by owner.
(a) Whenever a mistake has been made in a registration and a showing
has been made that the mistake occurred in good faith through the fault
of the owner, the Director may issue a certificate of correction. In the
discretion of the Director, the Office may issue a new certificate upon
payment of the required fee, provided that the correction does not
involve such changes in the registration as to require republication of
the mark.
(b) An application for such action must:
(1) Include the following:
[[Page 347]]
(i) Specification of the mistake for which correction is sought;
(ii) Description of the manner in which it arose; and
(iii) A showing that it occurred in good faith;
(2) Be verified; and
(3) Be accompanied by the required fee.
(Sec. 7, 60 Stat. 430, as amended; 15 U.S.C. 1057)
[30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 69
FR 51364, Aug. 19, 2004; 73 FR 67774, Nov. 17, 2008; 80 FR 33189, June
11, 2015]
Sec.2.176 Consideration of above matters.
The matters in Sec. Sec.2.171 to 2.175 will be considered in the
first instance by the Post Registration examiners, except for requests
to amend registrations involved in inter partes proceedings before the
Trademark Trial and Appeal Board, as specified in Sec.2.173(a), which
shall be considered by the Board. If an action of the examiner is
adverse, the owner of the registration may petition the Director to
review the action under Sec.2.146. If the owner does not respond to an
adverse action of the examiner within six months of the date of
issuance, the matter will be considered abandoned.
[73 FR 67774, Nov. 17, 2008]
Term and Renewal
Authority: Secs. 2.181 to 2.184 also issued under sec. 9, 60 Stat.
431; 15 U.S.C. 1059.
Sec.2.181 Term of original registrations and renewals.
(a)(1) Subject to the provisions of section 8 of the Act requiring
an affidavit or declaration of continued use or excusable nonuse,
registrations issued or renewed prior to November 16, 1989, whether on
the Principal Register or on the Supplemental Register, remain in force
for twenty years from their date of issue or the date of renewal, and
may be further renewed for periods of ten years, unless previously
cancelled or surrendered.
(2) Subject to the provisions of section 8 of the Act requiring an
affidavit or declaration of continued use or excusable nonuse,
registrations issued or renewed on or after November 16, 1989, whether
on the Principal Register or on the Supplemental Register, remain in
force for ten years from their date of issue or the date of renewal, and
may be further renewed for periods of ten years, unless previously
cancelled or surrendered.
(b) Registrations issued under the Acts of 1905 and 1881 remain in
force for their unexpired terms and may be renewed in the same manner as
registrations under the Act of 1946.
(c) Registrations issued under the Act of 1920 cannot be renewed
unless renewal is required to support foreign registrations and in such
case may be renewed on the Supplemental Register in the same manner as
registrations under the Act of 1946.
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37597, Sept. 11, 1989;
64 FR 48926, Sept. 8, 1999]
Sec.2.182 Time for filing renewal application.
An application for renewal must be filed within one year before the
expiration date of the registration, or within the six-month grace
period after the expiration date of the registration. If no renewal
application is filed within this period, the registration will expire.
[64 FR 48926, Sept. 8, 1999]
Sec.2.183 Requirements for a complete renewal application.
A complete renewal application must include:
(a) A request for renewal of the registration, signed by the
registrant or the registrant's representative;
(b) The fee required by Sec.2.6 for each class;
(c) The additional fee required by Sec.2.6 for each class if the
renewal application is filed during the six-month grace period set forth
in section 9(a) of the Act;
(d) If the renewal application covers less than all the goods,
services, or classes in the registration, then a list specifying the
particular goods, services, or classes to be renewed.
(e) If at least one fee is submitted for a multiple-class
registration, but the fee is insufficient to cover all the classes and
the class(es) to which the fee(s) should be applied are not specified,
the
[[Page 348]]
Office will issue a notice requiring either the submission of additional
fee(s) or an indication of the class(es) to which the original fee(s)
should be applied. Additional fee(s) may be submitted if the
requirements of Sec.2.185 are met. If the required fee(s) are not
submitted and the class(es) to which the original fee(s) should be
applied are not specified, the Office will presume that the fee(s) cover
the classes in ascending order, beginning with the lowest numbered
class.
(f) Renewals of registrations issued under a prior classification
system will be processed on the basis of that system, unless the
registration has been amended to adopt international classification
pursuant to Sec.2.85(e)(3).
[64 FR 48926, Sept. 8, 1999, as amended at 67 FR 79523, Dec. 30, 2002;
73 FR 67775, Nov. 17, 2008; 80 FR 33189, June 11, 2015]
Sec.2.184 Refusal of renewal.
(a) If the renewal application is not acceptable, the Office will
issue a notice stating the reason(s) for refusal.
(b)(1) The registrant must file a response to the refusal of renewal
within six months of the date of issuance of the Office action, or
before the expiration date of the registration, whichever is later. If
no response is filed within this time period, the registration will
expire, unless time remains in the grace period under section 9(a) of
the Act. If time remains in the grace period, the registrant may file a
complete new renewal application.
(2) The response must be signed by the registrant, someone with
legal authority to bind the registrant (e.g., a corporate officer or
general partner of a partnership), or a practitioner who meets the
requirements of Sec.11.14 of this chapter, in accordance with the
requirements of Sec.2.193(e)(2).
(c) If the renewal application is not filed within the time periods
set forth in section 9(a) of the Act, the registration will expire.
[64 FR 48926, Sept. 8, 1999, as amended at 73 FR 67775, Nov. 17, 2008;
74 FR 54910, Oct. 26, 2009]
Sec.2.185 Correcting deficiencies in renewal application.
(a) If the renewal application is filed within the time periods set
forth in section 9(a) of the Act, deficiencies may be corrected after
notification from the Office, as follows:
(1) Correcting deficiencies in renewal applications filed within one
year before the expiration date of the registration. If the renewal
application is filed within one year before the expiration date of the
registration, deficiencies may be corrected before the expiration date
of the registration without paying a deficiency surcharge. Deficiencies
may be corrected after the expiration date of the registration with
payment of the deficiency surcharge required by section 9(a) of the Act
and Sec.2.6.
(2) Correcting deficiencies in renewal applications filed during the
grace period. If the renewal application is filed during the six-month
grace period, deficiencies may be corrected before the expiration of the
grace period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of the
deficiency surcharge required by section 9(a) of the Act and Sec.2.6.
(b) If the renewal application is not filed within the time periods
set forth in section 9(a) of the Act, the registration will expire. This
deficiency cannot be cured.
[64 FR 48926, Sept. 8, 1999, as amended at 80 FR 2312, Jan. 16, 2015]
Sec.2.186 Petition to Director to review refusal of renewal.
(a) A response to the examiner's initial refusal of the renewal
application is required before filing a petition to the Director, unless
the examiner directs otherwise. See Sec.2.184(b) for the deadline for
responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the renewal
application, a petition to the Director to review the refusal may be
filed. The petition must be filed within six months of the date of
issuance of the Office action maintaining the refusal, or the renewal
application will be abandoned and the registration will expire.
(c) A decision by the Director is necessary before filing an appeal
or commencing a civil action in any court.
[64 FR 48926, Sept. 8, 1999, as amended at 73 FR 67775, Nov. 17, 2008]
[[Page 349]]
General Information and Correspondence in Trademark Cases
Source: 68 FR 48289, Aug. 13, 2003, unless otherwise noted.
Sec. Sec.2.188 [Reserved]
Sec.2.189 Requirement to provide domicile address.
An applicant or registrant must provide and keep current the address
of its domicile, as defined in Sec.2.2(o).
[84 FR 31511, July 2, 2019]
Sec.2.190 Addresses for trademark correspondence with the
United States Patent and Trademark Office.
(a) Paper trademark documents. In general, trademark documents to be
delivered by the USPS must be addressed to: Commissioner for Trademarks,
P.O. Box 1451, Alexandria, VA 22313-1451. Trademark-related documents to
be delivered by hand, private courier, or other delivery service may be
delivered during the hours the Office is open to receive correspondence
to the Trademark Assistance Center, James Madison Building--East Wing,
Concourse Level, 600 Dulany Street, Alexandria, Virginia 22314.
(b) Electronic trademark documents. Trademark documents filed
electronically must be submitted through TEAS. Documents that relate to
proceedings before the Trademark Trial and Appeal Board must be filed
electronically with the Board through ESTTA.
(c) Trademark assignment documents. Requests to record documents in
the Assignment Recordation Branch may be filed electronically through
ETAS. Paper documents and cover sheets to be recorded in the Assignment
Recordation Branch should be addressed as designated in Sec.3.27 of
this chapter.
(d) Requests for certified copies of trademark documents. Paper
requests for certified copies of trademark documents must be addressed
to: Mail Stop Document Services, Director of the United States Patent
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(e) Certain documents relating to international applications and
registrations. International applications under Sec.7.11, subsequent
designations under Sec.7.21, responses to notices of irregularity
under Sec.7.14, requests to record changes in the International
Register under Sec.7.23 and Sec.7.24, requests to note replacements
under Sec.7.28, requests for transformation under Sec.7.31 of this
chapter, and petitions to the Director to review an action of the
Office's Madrid Processing Unit must be addressed to: Madrid Processing
Unit, 600 Dulany Street, Alexandria, VA 22314-5796.
[84 FR 37096, July 31, 2019]
Sec.2.191 Action of the Office based on the written record.
All business with the Office must be transacted in writing. The
action of the Office will be based exclusively on the written record. No
consideration will be given to any alleged oral promise, stipulation, or
understanding when there is disagreement or doubt.
[84 FR 37096, July 31, 2019]
Sec.2.192 Business to be conducted with decorum and courtesy.
Trademark applicants, registrants, and parties to proceedings before
the Trademark Trial and Appeal Board and their attorneys or agents are
required to conduct their business with decorum and courtesy. Documents
presented in violation of this requirement will be submitted to the
Director and will be returned by the Director's direct order. Complaints
against trademark examining attorneys and other employees must be made
in correspondence separate from other documents.
Sec.2.193 Trademark correspondence and signature requirements.
(a) Signature required. Each piece of correspondence that requires a
signature must bear:
(1) A handwritten signature personally signed in permanent ink by
the person named as the signatory, or a true copy thereof; or
(2) An electronic signature that meets the requirements of paragraph
(c) of this section, personally entered by the person named as the
signatory. The Office will accept an electronic signature that meets the
requirements
[[Page 350]]
of paragraph (c) of this section on correspondence filed on paper or
through TEAS or ESTTA.
(b) Copy of original signature. If a copy of an original signature
is filed, the filer should retain the original as evidence of
authenticity. If a question of authenticity arises, the Office may
require submission of the original.
(c) Requirements for electronic signature. A person signing a
document electronically must:
(1) Personally enter any combination of letters, numbers, spaces
and/or punctuation marks that the signer has adopted as a signature,
placed between two forward slash (``/'') symbols in the signature block
on the electronic submission; or
(2) Sign the document using some other form of electronic signature
specified by the Director.
(d) Signatory must be identified. The first and last name, and the
title or position, of the person who signs a document in connection with
a trademark application, registration, or proceeding before the
Trademark Trial and Appeal Board must be set forth immediately below or
adjacent to the signature.
(e) Proper person to sign. Documents filed in connection with a
trademark application or registration must be signed as specified in
paragraphs (e)(1) through (9) of this section:
(1) Verified statement of facts. A verified statement in support of
an application for registration, amendment to an application for
registration, allegation of use under Sec.2.76 or Sec.2.88, request
for extension of time to file a statement of use under Sec.2.89, or an
affidavit under section 8, 12(c), 15, or 71 of the Act must satisfy the
requirements of Sec.2.2(n), and be signed by the owner or a person
properly authorized to sign on behalf of the owner. A person who is
properly authorized to verify facts on behalf of an owner is:
(i) A person with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership);
(ii) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the owner; or
(iii) An attorney as defined in Sec.11.1 of this chapter who has
an actual written or verbal power of attorney or an implied power of
attorney from the owner.
(2) Responses, amendments to applications, requests for express
abandonment, requests for reconsideration of final actions, and requests
to divide. Responses to Office actions, amendments to applications,
requests for express abandonment, requests for reconsideration of final
actions, and requests to divide must be signed by the owner of the
application or registration, someone with legal authority to bind the
owner (e.g., a corporate officer or general partner of a partnership),
or a practitioner qualified to practice under Sec.11.14 of this
chapter, in accordance with the following guidelines:
(i) If the owner is represented by a practitioner qualified to
practice before the Office under Sec.11.14 of this chapter, the
practitioner must sign, except where the owner is required to sign the
correspondence; or
(ii) If the owner is not represented by a practitioner qualified to
practice under Sec.11.14 of this chapter, the individual owner or
someone with legal authority to bind the owner (e.g., a corporate
officer or general partner of a partnership) must sign. In the case of
joint owners who are not represented by a qualified practitioner, all
must sign.
(3) Powers of attorney and revocations of powers of attorney. Powers
of attorney and revocations of powers of attorney must be signed by the
individual applicant, registrant or party to a proceeding pending before
the Office, or by someone with legal authority to bind the applicant,
registrant, or party (e.g., a corporate officer or general partner of a
partnership). In the case of joint applicants, registrants, or parties,
all must sign. Once the applicant, registrant or party has designated a
qualified practitioner(s), the named practitioner may sign an associate
power of attorney appointing another qualified practitioner(s) as an
additional person(s) authorized to prosecute the application or
registration. If the applicant, registrant, or party revokes the
original power of attorney, the revocation discharges any associate
power signed by the practitioner whose power has been revoked. If the
practitioner
[[Page 351]]
who signed an associate power withdraws, the withdrawal discharges any
associate power signed by the withdrawing practitioner upon acceptance
of the request for withdrawal by the Office.
(4) Petitions to revive under Sec.2.66. A petition to revive under
Sec.2.66 must be signed by someone with firsthand knowledge of the
facts regarding unintentional delay.
(5) Petitions to Director under Sec.2.146 or Sec.2.147. A
petition to the Director under Sec.2.146 or Sec.2.147 must be signed
by the petitioner, someone with legal authority to bind the petitioner
(e.g., a corporate officer or general partner of a partnership), or a
practitioner qualified to practice under Sec.11.14 of this chapter, in
accordance with the following guidelines:
(i) If the petitioner is represented by a practitioner qualified to
practice before the Office under Sec.11.14 of this chapter, the
practitioner must sign; or
(ii) If the petitioner is not represented by a practitioner
authorized to practice before the Office under Sec.11.14 of this
chapter, the individual petitioner or someone with legal authority to
bind the petitioner (e.g., a corporate officer or general partner of a
partnership) must sign. In the case of joint petitioners, all must sign.
(6) Requests for correction, amendment or surrender of
registrations. A request for correction, amendment or surrender of a
registration must be signed by the owner of the registration, someone
with legal authority to bind the owner (e.g., a corporate officer or
general partner of a partnership), or a practitioner qualified to
practice before the Office under Sec.11.14 of this chapter. In the
case of joint owners who are not represented by a qualified
practitioner, all must sign.
(7) Renewal applications. A renewal application must be signed by
the registrant or the registrant's representative.
(8) Designations and revocations of domestic representative. A
designation or revocation of a domestic representative must be signed by
the applicant or registrant, someone with legal authority to bind the
applicant or registrant (e.g., a corporate officer or general partner of
a partnership), or a practitioner qualified to practice under Sec.
11.14 of this chapter. In the case of joint applicants or registrants,
all must sign.
(9) Requests to change correspondence address in an application or
registration. A notice of change of correspondence address in an
application or registration must be signed by the applicant or
registrant, someone with legal authority to bind the applicant or
registrant (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec.11.14
of this chapter, in accordance with the following guidelines:
(i) If the applicant or registrant is represented by a practitioner
qualified to practice before the Office under Sec.11.14 of this
chapter, the practitioner must sign; or
(ii) If the applicant or registrant is not represented by a
practitioner qualified to practice before the Office under Sec.11.14,
the individual applicant or registrant or someone with legal authority
to bind the applicant or registrant (e.g., a corporate officer or
general partner of a partnership) must sign. In the case of joint
applicants or joint registrants, all must sign.
(10) Cover letters. A person transmitting paper documents to the
Office may sign a cover letter or transmittal letter. The Office neither
requires cover letters nor questions the authority of a person who signs
a communication that merely transmits paper documents.
(f) Signature as certification. The presentation to the Office
(whether by signing, filing, submitting, or later advocating) of any
document by any person, whether a practitioner or non-practitioner,
constitutes a certification under Sec.11.18(b) of this chapter.
Violations of Sec.11.18(b) of this chapter may jeopardize the validity
of the application or registration, and may result in the imposition of
sanctions under Sec.11.18(c) of this chapter. Any practitioner
violating Sec.11.18(b) of this chapter may also be subject to
disciplinary action. See Sec.11.18(d) and Sec.11.804 of this
chapter.
(g) Separate copies for separate files. (1) Since each file must be
complete in itself, a separate copy of every document filed in
connection with a trademark application, registration, or inter
[[Page 352]]
partes proceeding must be furnished for each file to which the document
pertains, even though the documents filed in multiple files may be
identical.
(2) Parties should not file duplicate copies of documents in a
single application, registration, or proceeding file, unless the Office
requires the filing of duplicate copies.
(h) Separate documents for separate branches of the Office. Since
different branches or sections of the Office may consider different
matters, each distinct subject, inquiry or order must be contained in a
separate document to avoid confusion and delay in answering
correspondence.
(i) Certified documents required by statute. When a statute requires
that a document be certified, a copy or facsimile transmission of the
certification is not acceptable.
[74 FR 54910, Oct. 26, 2009, as amended at 80 FR 33189, June 11, 2015;
83 FR 1559, Jan. 12, 2018; 84 FR 37096, July 31, 2019]
Sec.2.194 Identification of trademark application or registration.
(a) No correspondence relating to a trademark application should be
filed prior to receipt of the application serial number.
(b) (1) A letter about a trademark application should identify the
serial number, the name of the applicant, and the mark.
(2) A letter about a registered trademark should identify the
registration number, the name of the registrant, and the mark.
Sec.2.195 Filing date of trademark correspondence.
The filing date of trademark correspondence is determined as
follows:
(a) Electronic submissions. The filing date of an electronic
submission is the date the Office receives the submission, based on
Eastern Time, regardless of whether that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia.
(b) Paper correspondence. The filing date of a submission submitted
on paper is the date the Office receives the submission, except as
follows:
(1) Priority Mail Express[supreg]. The filing date of the submission
is the date of deposit with the USPS, if filed pursuant to the
requirements of Sec.2.198.
(2) Certificate of mailing. The filing date of the submission is the
date of deposit with the USPS, if filed pursuant to the requirements of
Sec.2.197.
(3) Office closed. The Office is not open to receive paper
correspondence on any day that is a Saturday, Sunday, or Federal holiday
within the District of Columbia.
(c) Email and facsimile submissions. Email and facsimile submissions
are not permitted and, if submitted, will not be accorded a date of
receipt.
(d) Interruptions in USPS. If the Director designates a postal
service interruption or emergency within the meaning of 35 U.S.C. 21(a),
any person attempting to file correspondence by Priority Mail
Express[supreg] Post Office to Addressee service who was unable to
deposit the correspondence with the USPS due to the interruption or
emergency may petition the Director to consider such correspondence as
filed on a particular date in the Office. The petition must:
(1) Be filed promptly after the ending of the designated
interruption or emergency;
(2) Include the original correspondence or a copy of the original
correspondence; and
(3) Include a statement that the correspondence would have been
deposited with the USPS on the requested filing date but for the
designated interruption or emergency in Priority Mail Express[supreg]
service; and that the correspondence attached to the petition is the
original correspondence or a true copy of the correspondence originally
attempted to be deposited as Priority Mail Express[supreg] on the
requested filing date.
[84 FR 37097, July 31, 2019]
Sec.2.196 Times for taking action: Expiration on Saturday, Sunday
or Federal holiday.
Whenever periods of time are specified in this part in days,
calendar days are intended. When the day, or the last day fixed by
statute or by regulation under this part for taking any action or paying
any fee in the Office falls on a Saturday, Sunday, or Federal holiday
within the District of Columbia, the
[[Page 353]]
action may be taken, or the fee paid, on the next succeeding day that is
not a Saturday, Sunday, or a Federal holiday.
Sec.2.197 Certificate of mailing.
(a) The filing date of correspondence submitted under this section
is the date of deposit with the USPS if the correspondence:
(1) Is addressed as set out in Sec.2.190 and deposited with the
USPS with sufficient postage as first-class mail; and
(2) Includes a certificate of mailing for each piece of
correspondence that:
(i) Attests to the mailing and the address used;
(ii) Includes the name of the document and the application serial
number or USPTO reference number, if assigned, or registration number to
which the document pertains;
(iii) Is signed separately from any signature for the correspondence
by a person who has a reasonable basis to expect that the correspondence
would be mailed on the date indicated; and
(iv) Sets forth the date of deposit with the USPS.
(b) If correspondence is mailed in accordance with paragraph (a) of
this section, but not received by the Office, the party who mailed such
correspondence may file a petition to the Director under Sec.
2.146(a)(2) to consider such correspondence filed in the Office on the
date of deposit with the USPS. The petition must:
(1) Be filed within two months after the date of mailing;
(2) Include a copy of the previously mailed correspondence and
certificate; and
(3) Include a verified statement attesting to the facts of the
original mailing.
(c) If the certificate of mailing does not meet the requirements of
paragraph (a)(2) of this section, the filing date is the date the Office
receives the submission.
[84 FR 37097, July 31, 2019]
Sec.2.198 Filing of correspondence by Priority Mail Express[supreg].
(a) The filing date of correspondence submitted under this section
is the date of deposit with the USPS, as shown by the ``date accepted''
on the Priority Mail Express[supreg] label or other official USPS
notation.
(b) If the USPS deposit date cannot be determined, the filing date
is the date the Office receives the submission.
(c) If there is a discrepancy between the filing date accorded by
the Office to the correspondence and the ``date accepted,'' the party
who submitted the correspondence may file a petition to the Director
under Sec.2.146(a)(2) to accord the correspondence a filing date as of
the ``date accepted.'' The petition must:
(1) Be filed within two months after the date of deposit;
(2) Include a true copy of the Priority Mail Express[supreg] mailing
label showing the ``date accepted,'' and any other official notation by
the USPS relied upon to show the date of deposit; and
(3) Include a verified statement attesting to the facts of the
original mailing.
(d) If the party who submitted the correspondence can show that the
``date accepted'' was incorrectly entered or omitted by the USPS, the
party may file a petition to the Director under Sec.2.146(a)(2) to
accord the correspondence a filing date as of the date the
correspondence is shown to have been deposited with the USPS. The
petition must:
(1) Be filed within two months after the date of deposit;
(2) Include proof that the correspondence was deposited in the
Priority Mail Express[supreg] Post Office to Addressee service prior to
the last scheduled pickup on the requested filing date. Such proof must
be corroborated by evidence from the USPS or evidence that came into
being within one business day after the date of deposit; and
(3) Include a verified statement attesting to the facts of the
original mailing.
(e) If correspondence is properly addressed to the Office pursuant
to Sec.2.190 and deposited with sufficient postage in the Priority
Mail Express[supreg] Post Office to Addressee service of the USPS, but
not received by the Office, the party who submitted the correspondence
may file a petition to the Director under Sec.2.146(a)(2) to consider
such correspondence filed in the Office on the USPS deposit date. The
petition must:
[[Page 354]]
(1) Be filed within two months after the date of deposit;
(2) Include a copy of the previously mailed correspondence showing
the number of the Priority Mail Express[supreg] mailing label thereon;
and
(3) Include a verified statement attesting to the facts of the
original mailing.
[84 FR 37097, July 31, 2019]
Trademark Records and Files of the Patent and Trademark Office
Source: 68 FR 48292, Aug. 13, 2003, unless otherwise noted.
Sec.2.200 Assignment records open to public inspection.
(a)(1) Separate assignment records are maintained in the Office for
patents and trademarks. The assignment records relating to trademark
applications and registrations (for assignments recorded on or after
January 1, 1955) are open to public inspection at the Office, and copies
of those assignment records may be obtained upon request and payment of
the fee set forth in Sec.2.6 of this chapter.
(2) All records of trademark assignments recorded before January 1,
1955, are maintained by the National Archives and Records Administration
(NARA). The records are open to public inspection. Certified and
uncertified copies of those assignment records are provided by NARA upon
request and payment of the fees required by NARA.
(b) An order for a copy of an assignment or other document should
identify the reel and frame number where the assignment or document is
recorded.
[68 FR 48292, Aug. 13, 2003, as amended at 81 FR 72707, Oct. 21, 2016]
Sec.2.201 Copies and certified copies.
(a) Non-certified copies of trademark registrations and of any
trademark records or trademark documents within the jurisdiction of the
Office and open to the public, will be furnished by the Office to any
person entitled thereto, upon payment of the appropriate fee required by
Sec.2.6.
(b) Certified copies of trademark registrations and of any trademark
records or trademark documents within the jurisdiction of the Office and
open to the public will be authenticated by the seal of the Office and
certified by the Director, or in his or her name attested by an officer
of the Office authorized by the Director, upon payment of the fee
required by Sec.2.6.
Fees and Payment of Money in Trademark Cases
Source: 68 FR 48292, Aug. 13, 2003, unless otherwise noted.
Sec.2.206 Trademark fees payable in advance.
(a) Trademark fees and charges payable to the Office are required to
be paid in advance; that is, at the time of requesting any action by the
Office for which a fee or charge is payable.
(b) All fees paid to the Office must be itemized in each individual
trademark application or registration file, or trademark proceeding, so
that the purpose for which the fees are paid is clear. The Office may
return fees that are not itemized as required by this paragraph.
Sec.2.207 Methods of payment.
(a) All payments of money required in trademark cases, including
fees for the processing of international trademark applications and
registrations that are paid through the Office, shall be made in U.S.
dollars and in the form of a cashier's or certified check, Treasury
note, national bank note, or United States Postal Service money order.
If sent in any other form, the Office may delay or cancel the credit
until collection is made. Checks and money orders must be made payable
to the Director of the United States Patent and Trademark Office.
(Checks made payable to the Commissioner of Patents and Trademarks will
continue to be accepted.) Payments from foreign countries must be
payable and immediately negotiable in the United States for the full
amount of the fee required. Money sent to the Office by mail will be at
the risk of the sender, and letters containing money should be
registered with the United States Postal Service.
(b) Payments of money required for trademark fees may also be made
by credit card, except for replenishing a
[[Page 355]]
deposit account. Payment of a fee by credit card must specify the amount
to be charged to the credit card and such other information as is
necessary to process the charge, and is subject to collection of the
fee. The Office will not accept a general authorization to charge fees
to a credit card. If credit card information is provided on a form or
document other than a form provided by the Office for the payment of
fees by credit card, the Office will not be liable if the credit card
number becomes public knowledge.
[68 FR 48292, Aug. 13, 2003, as amended at 69 FR 43752, July 22, 2004]
Sec.2.208 Deposit accounts.
(a) For the convenience of attorneys, and the general public in
paying any fees due, in ordering copies of records, or services offered
by the Office, deposit accounts may be established in the Office. A
minimum deposit of $1,000 is required for paying any fees due or in
ordering any services offered by the Office. The Office will issue a
deposit account statement at the end of each month. 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. An amount sufficient to cover all fees,
copies, or services requested must always be on deposit. Charges to
accounts with insufficient funds will not be accepted. A service charge
(Sec.2.6(b)(11)) will be assessed for each month that the balance at
the end of the month is below $1,000.
(b) A general authorization to charge all fees, or only certain fees
to a deposit account containing sufficient funds may be filed in an
individual application, either for the entire pendency of the
application or with respect to a particular document filed. An
authorization to charge a fee to a deposit account will not be
considered payment of the fee on the date the authorization to charge
the fee is effective as to the particular fee to be charged unless
sufficient funds are present in the account to cover the fee.
(c) A deposit account holder may replenish the deposit account by
submitting a payment to the Office. A payment to replenish a deposit
account must be submitted by one of the methods set forth in paragraphs
(c)(1), (c)(2), (c)(3), or (c)(4) of this section.
(1) A payment to replenish a deposit account may be submitted by
electronic funds transfer through the Federal Reserve Fedwire System,
which requires that the following information be provided to the deposit
account holder's bank or financial institution:
(i) Name of the Bank, which is Treas NYC (Treasury New York City);
(ii) Bank Routing Code, which is 021030004;
(iii) United States Patent and Trademark Office account number with
the Department of the Treasury, which is 13100001; and
(iv) The deposit account holder's company name and deposit account
number.
(2) A payment to replenish a deposit account may be submitted by
electronic funds transfer over the Office's Internet Web site
(www.uspto.gov).
(3) A payment to replenish a deposit account may be addressed to:
Director of the United States Patent and Trademark Office, Attn: Deposit
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
[68 FR 48292, Aug. 13, 2003, as amended at 69 FR 43752, July 22, 2004;
70 FR 56128, Sept. 26, 2005; 73 FR 67775, Nov. 17, 2008; 81 FR 72707,
Oct. 21, 2016]
Sec.2.209 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of
that required. A change of purpose after the payment of a fee, such as
when a party desires to withdraw a trademark application, appeal or
other trademark filing for which a fee was paid, will not entitle a
party to a refund of such fee. The Office will not refund amounts of
twenty-five dollars or less unless a refund is specifically requested,
and will not notify the payor of such amounts. If a party paying a fee
or requesting a refund does not provide the banking information
necessary for making refunds by electronic funds transfer (31 U.S.C.
3332 and 31 CFR part 208), or instruct the Office that refunds are to be
credited to a deposit account, the Director may require such
information, or use the banking information on the payment instrument to
make a refund.
[[Page 356]]
Any refund of a fee paid by credit card will be by a credit to the
credit card account to which the fee was charged.
(b) Any request for refund must be filed within two years from the
date the fee was paid, except as otherwise provided in this paragraph.
If the Office charges a deposit account by an amount other than an
amount specifically indicated in an authorization (Sec.2.208(b)), any
request for refund based upon such charge must be filed within two years
from the date of the deposit account statement indicating such charge,
and include a copy of that deposit account statement. The time periods
set forth in this paragraph are not extendable.
PART 3_ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE--Table of Contents
Editorial Note: Part 3 pertaining to both patents and trademarks is
placed in the grouping pertaining to patents regulations.
PART 4_COMPLAINTS REGARDING INVENTION PROMOTERS--Table of Contents
Editorial Note: Part 4 is placed in the separate grouping of parts
pertaining to patents regulations.
PART 5_SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES--Table of Contents
Editorial Note: Part 5 is placed in the separate grouping of parts
pertaining to patents regulations.
PART 6_CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT--
Table of Contents
Sec.
6.1 International schedule of classes of goods and services.
6.2 Prior U.S. schedule of classes of goods and services.
6.3 Schedule for certification marks.
6.4 Schedule for collective membership marks.
Authority: Secs. 30, 41, 60 Stat. 436, 440; 15 U.S.C. 1112, 1123; 35
U.S.C. 2, unless otherwise noted.
Sec.6.1 International schedule of classes of goods and services.
Goods
1. Chemicals for use in industry, science and photography, as well
as in agriculture, horticulture and forestry; unprocessed artificial
resins, unprocessed plastics; fire extinguishing and fire prevention
compositions; tempering and soldering preparations; substances for
tanning animal skins and hides; adhesives for use in industry; putties
and other paste fillers; compost, manures, fertilizers; biological
preparations for use in industry and science.
2. Paints, varnishes, lacquers; preservatives against rust and
against deterioration of wood; colorants, dyes; inks for printing,
marking and engraving; raw natural resins; metals in foil and powder
form for use in painting, decorating, printing and art.
3. Non-medicated cosmetics and toiletry preparations; non-medicated
dentifrices; perfumery, essential oils; bleaching preparations and other
substances for laundry use; cleaning, polishing, scouring and abrasive
preparations.
4. Industrial oils and greases, wax; lubricants; dust absorbing,
wetting and binding compositions; fuels and illuminants; candles and
wicks for lighting.
5. Pharmaceuticals, medical and veterinary preparations; sanitary
preparations for medical purposes; dietetic food and substances adapted
for medical or veterinary use, food for babies; dietary supplements for
human beings and animals; plasters, materials for dressings; material
for stopping teeth, dental wax; disinfectants; preparations for
destroying vermin; fungicides, herbicides.
6. Common metals and their alloys, ores; metal materials for
building and construction; transportable buildings of metal; non-
electric cables and wires of common metal; small items of metal
hardware; metal containers for storage or transport; safes.
7. Machines, machine tools, power-operated tools; motors and
engines, except for land vehicles; machine coupling and transmission
components, except for land vehicles; agricultural implements, other
than hand-operated hand tools; incubators for eggs; automatic vending
machines.
8. Hand tools and implements, hand-operated; cutlery; side arms,
except firearms; razors.
9. Scientific, research, navigation, surveying, photographic,
cinematographic, audiovisual, optical, weighing, measuring, signalling,
detecting, testing, inspecting, life-saving and teaching apparatus and
instruments; apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling the distribution
or use of electricity; apparatus and
[[Page 357]]
instruments for recording, transmitting, reproducing or processing
sound, images or data; recorded and downloadable media, computer
software, blank digital or analogue recording and storage media;
mechanisms for coin-operated apparatus; cash registers, calculating
devices; computers and computer peripheral devices; diving suits,
divers' masks, ear plugs for divers, nose clips for divers and swimmers,
gloves for divers, breathing apparatus for underwater swimming; fire-
extinguishing apparatus.
10. Surgical, medical, dental and veterinary apparatus and
instruments; artificial limbs, eyes and teeth; orthopaedic articles;
suture materials; therapeutic and assistive devices adapted for persons
with disabilities; massage apparatus; apparatus, devices and articles
for nursing infants; sexual activity apparatus, devices and articles.
11. Apparatus and installations for lighting, heating, cooling,
steam generating, cooking, drying, ventilating, water supply and
sanitary purposes.
12. Vehicles; apparatus for locomotion by land, air or water.
13. Firearms; ammunition and projectiles; explosives; fireworks.
14. Precious metals and their alloys; jewellery, precious and semi-
precious stones; horological and chronometric instruments.
15. Musical instruments; music stands and stands for musical
instruments; conductors' batons.
16. Paper and cardboard; printed matter; bookbinding material;
photographs; stationery and office requisites, except furniture;
adhesives for stationery or household purposes; drawing materials and
materials for artists; paintbrushes; instructional and teaching
materials; plastic sheets, films and bags for wrapping and packaging;
printers' type, printing blocks.
17. Unprocessed and semi-processed rubber, gutta-percha, gum,
asbestos, mica and substitutes for all these materials; plastics and
resins in extruded form for use in manufacture; packing, stopping and
insulating materials; flexible pipes, tubes and hoses, not of metal.
18. Leather and imitations of leather; animal skins and hides;
luggage and carrying bags; umbrellas and parasols; walking sticks;
whips, harness and saddlery; collars, leashes and clothing for animals.
19. Materials, not of metal, for building and construction; rigid
pipes, not of metal, for building; asphalt, pitch, tar and bitumen;
transportable buildings, not of metal; monuments, not of metal.
20. Furniture, mirrors, picture frames; containers, not of metal,
for storage or transport; unworked or semi-worked bone, horn, whalebone
or mother-of-pearl; shells; meerschaum; yellow amber.
21. Household or kitchen utensils and containers; cookware and
tableware, except forks, knives and spoons; combs and sponges; brushes,
except paintbrushes; brush-making materials; articles for cleaning
purposes; unworked or semi-worked glass, except building glass;
glassware, porcelain and earthenware.
22. Ropes and string; nets; tents and tarpaulins; awnings of textile
or synthetic materials; sails; sacks for the transport and storage of
materials in bulk; padding, cushioning and stuffing materials, except of
paper, cardboard, rubber or plastics; raw fibrous textile materials and
substitutes therefor.
23. Yarns and threads for textile use.
24. Textiles and substitutes for textiles; household linen; curtains
of textile or plastic.
25. Clothing, footwear, headwear.
26. Lace, braid and embroidery, and haberdashery ribbons and bows;
buttons, hooks and eyes, pins and needles; artificial flowers; hair
decorations; false hair.
27. Carpets, rugs, mats and matting, linoleum and other materials
for covering existing floors; wall hangings, not of textile.
28. Games, toys and playthings; video game apparatus; gymnastic and
sporting articles; decorations for Christmas trees.
29. Meat, fish, poultry and game; meat extracts; preserved, frozen,
dried and cooked fruits and vegetables; jellies, jams, compotes; eggs;
milk, cheese, butter, yogurt and other milk products; oils and fats for
food.
30. Coffee, tea, cocoa and artificial coffee; rice, pasta and
noodles; tapioca and sago; flour and preparations made from cereals;
bread, pastries and confectionery; chocolate; ice cream, sorbets and
other edible ices; sugar, honey, treacle; yeast, baking-powder; salt,
seasonings, spices, preserved herbs; vinegar, sauces and other
condiments; ice (frozen water).
31. Raw and unprocessed agricultural, aquacultural, horticultural
and forestry products; raw and unprocessed grains and seeds; fresh
fruits and vegetables, fresh herbs; natural plants and flowers; bulbs,
seedlings and seeds for planting; live animals; foodstuffs and beverages
for animals; malt.
32. Beers; non-alcoholic beverages; mineral and aerated waters;
fruit beverages and fruit juices; syrups and other non-alcoholic
preparations for making beverages.
33. Alcoholic beverages, except beers; alcoholic preparations for
making beverages.
34. Tobacco and tobacco substitutes; cigarettes and cigars;
electronic cigarettes and oral vaporizers for smokers; smokers'
articles; matches.
Services
35. Advertising; business management, organization and
administration; office functions.
[[Page 358]]
36. Financial, monetary and banking services; insurance services;
real estate affairs.
37. Construction services; installation and repair services; mining
extraction, oil and gas drilling.
38. Telecommunications services.
39. Transport; packaging and storage of goods; travel arrangement.
40. Treatment of materials; recycling of waste and trash; air
purification and treatment of water; printing services; food and drink
preservation.
41. Education; providing of training; entertainment; sporting and
cultural activities.
42. Scientific and technological services and research and design
relating thereto; industrial analysis, industrial research and
industrial design services; quality control and authentication services;
design and development of computer hardware and software.
43. Services for providing food and drink; temporary accommodation.
44. Medical services; veterinary services; hygienic and beauty care
for human beings or animals; agriculture, aquaculture, horticulture and
forestry services.
45. Legal services; security services for the physical protection of
tangible property and individuals; personal and social services rendered
by others to meet the needs of individuals.
[85 FR 69503, Nov. 3, 2020]
Sec.6.2 Prior U.S. schedule of classes of goods and services.
------------------------------------------------------------------------
Class Title
------------------------------------------------------------------------
Goods
1 Raw or partly prepared materials.
2 Receptacles.
3 Baggage, animal equipments, portfolios, and pocket books.
4 Abrasives and polishing materials.
5 Adhesives.
6 Chemicals and chemical compositions.
7 Cordage.
8 Smokers' articles, not including tobacco products.
9 Explosives, firearms, equipments, and projectiles.
10 Fertilizers.
11 Inks and inking materials.
12 Construction materials.
13 Hardware and plumbing and steamfitting supplies.
14 Metals and metal castings and forgings.
15 Oils and greases.
16 Protective and decorative coatings.
17 Tobacco products.
18 Medicines and pharmaceutical preparations.
19 Vehicles.
20 Linoleum and oiled cloth.
21 Electrical apparatus, machines, and supplies.
22 Games, toys, and sporting goods.
23 Cutlery, machinery, and tools, and parts thereof.
24 Laundry appliances and machines.
25 Locks and safes.
26 Measuring and scientific appliances.
27 Horological instruments.
28 Jewelry and precious-metal ware.
29 Brooms, brushes, and dusters.
30 Crockery, earthenware, and porcelain.
31 Filters and refrigerators.
32 Furniture and upholstery.
33 Glassware.
34 Heating, lighting, and ventilating apparatus.
35 Belting, hose, machinery packing, and nonmetallic tires.
36 Musical instruments and supplies.
37 Paper and stationery.
38 Prints and publications.
39 Clothing.
40 Fancy goods, furnishings, and notions.
41 Canes, parasols, and umbrellas.
42 Knitted, netted, and textile fabrics, and substitutes therefor.
43 Thread and yarn.
44 Dental, medical, and surgical appliances.
45 Soft drinks and carbonated waters.
46 Foods and ingredients of foods.
47 Wines.
48 Malt beverages and liquors.
49 Distilled alcoholic liquors.
50 Merchandise not otherwise classified.
51 Cosmetics and toilet preparations.
52 Detergents and soaps.
Services
100 Miscellaneous.
101 Advertising and business.
102 Insurance and financial.
103 Construction and repair.
104 Communication.
105 Transportation and storage.
106 Material treatment.
107 Education and entertainment.
------------------------------------------------------------------------
[24 FR 10383, Dec. 22, 1959. Redesignated at 38 FR 14681, June 4, 1973]
Sec.6.3 Schedule for certification marks.
In applications for registration of certification marks based on
sections 1 and 44 of the Trademark Act and registrations resulting from
such applications, goods and services are classified in two classes as
follows:
A. Goods.
B. Services.
[73 FR 67775, Nov. 15, 2008]
Sec.6.4 Schedule for collective membership marks.
All collective membership marks in applications based on sections 1
and 44 of the Trademark Act and registrations resulting from such
applications are classified as follows:
------------------------------------------------------------------------
Class Title
------------------------------------------------------------------------
200.............................. Collective Membership.
------------------------------------------------------------------------
[73 FR 67775, Nov. 17, 2008]
[[Page 359]]
PART 7_RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF
MARKS--Table of Contents
Subpart A_General Information
Sec.
7.1 Definitions of terms as used in this part.
7.2 [Reserved]
7.3 Correspondence must be in English.
7.4 International applications and registrations originating from the
USPTO--Requirements to electronically file and communicate
with the Office.
7.5 [Reserved]
7.6 Schedule of U.S. process fees.
7.7 Payments of fees to International Bureau.
Subpart B_International Application Originating From the United States
7.11 Requirements for international application originating from the
United States.
7.12 Claim of color.
7.13 Certification of international application.
7.14 Correcting irregularities in international application.
Subpart C_Subsequent Designation Submitted Through the Office
7.21 Subsequent designation.
Subpart D_Recording Changes to International Registration
7.22 Recording changes to international registration.
7.23 Requests for recording assignments at the International Bureau.
7.24 Requests to record security interest or other restriction of
holder's rights of disposal or release of such restriction
submitted through the Office.
Subpart E_Extension of Protection to the United States
7.25 Sections of part 2 applicable to extension of protection.
7.26 Filing date of extension of protection for purposes of examination
in the Office.
7.27 Priority claim of extension of protection for purposes of
examination in the Office.
7.28 Replacement of U.S. registration by registered extension of
protection.
7.29 Effect of replacement on U.S. registration.
7.30 Effect of cancellation or expiration of international registration.
7.31 Requirements for transformation of an extension of protection to
the United States into a U.S. application.
Subpart F_Affidavit Under Section 71 of the Act for Extension of
Protection to the United States
7.36 Affidavit or declaration of use in commerce or excusable nonuse
required to avoid cancellation of an extension of protection
to the United States.
7.37 Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse; requirement for the submission
of additional information, exhibits, affidavits or
declarations, and specimens; and fee for deletions of goods,
services, and/or classes from a registration.
7.38 Notice to holder of extension of protection.
7.39 Acknowledgment of receipt of and correcting deficiencies in
affidavit or declaration of use in commerce or excusable
nonuse.
7.40 Petition to Director to review refusal.
Subpart G_Renewal of International Registration and Extension of
Protection
7.41 Renewal of international registration and extension of protection.
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless othe rwise noted.
Source: 68 FR 55769, Sept. 26, 2003, unless otherwise noted.
Subpart A_General Information
Sec.7.1 Definitions of terms as used in this part.
(a) the Act means the Trademark Act of 1946, 60 Stat. 427, as
amended, codified in 15 U.S.C. 1051 et seq.
(b) Subsequent designation means a request for extension of
protection of an international registration to a Contracting Party made
after the International Bureau registers the mark.
(c) The acronym TEAS means the Trademark Electronic Application
System, and, as used in this part, includes all related electronic
systems required to complete an electronic submission through TEAS.
(d) The term Office or the abbreviation USPTO means the United
States Patent and Trademark Office.
(e) All references to sections in this part refer to 37 Code of
Federal Regulations, except as otherwise stated.
[[Page 360]]
(f) The definitions specified in Sec.2.2 of this chapter apply to
this part.
[68 FR 55769, Sept. 26, 2003, as amended at 80 FR 33190, June 11, 2015;
84 FR 31511, July 2, 2019; 84 FR 37098, July 31, 2019]
Sec.7.2 [Reserved]
Sec.7.3 Correspondence must be in English.
International applications and registrations, requests for extension
of protection and all other related correspondence with the Office must
be in English. The Office will not process correspondence that is in a
language other than English.
Sec.7.4 International applications and registrations originating
from the USPTO--Requirements to electronically file and communicate
with the Office.
(a) Unless stated otherwise in this chapter, all correspondence
filed with the USPTO relating to international applications and
registrations originating from the USPTO must be submitted through TEAS
and include a valid email address for correspondence.
(b) Applicants and registrants under this section must provide and
maintain a valid email address for correspondence with the Office.
(c) If an applicant or registrant under this section is a national
of a country that has acceded to the Trademark Law Treaty, but not to
the Singapore Treaty on the Law of Trademarks, the requirements of
paragraphs (a) and (b) of this section do not apply.
(d) If TEAS is unavailable, or in an extraordinary situation, an
applicant or registrant under this section who is required to file a
submission through TEAS may submit a petition to the Director under
Sec.2.146(a)(5) and (c) of this chapter to accept the submission filed
on paper.
[84 FR 37098, July 31, 2019]
Sec.7.5 [Reserved]
Sec.7.6 Schedule of U.S. process fees.
(a) The Office requires the following process fees:
(1) Certification of international application based on single
application or registration. (i) For certifying an international
application based on a single basic application or registration, filed
on paper, per class--$200.00
(ii) For certifying an international application based on a single
basic application or registration, filed through TEAS, per class--
$100.00
(2) Certification of international application based on more than
one application or registration. (i) For certifying an international
application based on more than one basic application or registration
filed on paper, per class--$250.00
(ii) For certifying an international application based on more than
one basic application or registration filed through TEAS, per class--
$150.00
(3) Transmission of subsequent designation. (i) For transmitting a
subsequent designation under Sec.7.21, filed on paper--$200.00
(ii) For transmitting a subsequent designation under Sec.7.21,
filed through TEAS--$100.00
(4) Transmission of request to record an assignment or restriction.
(i) For transmitting a request to record an assignment or restriction,
or release of a restriction, under Sec.7.23 or Sec.7.24 filed on
paper--$200.00
(ii) For transmitting a request to record an assignment or
restriction, or release of a restriction, under Sec.7.23 or Sec.7.24
filed through TEAS--$100.00
(5) Notice of replacement. (i) For filing a notice of replacement
under Sec.7.28 on paper, per class--$200.00
(ii) For filing a notice of replacement under Sec.7.28 through
TEAS, per class--$100.00
(6) Affidavit under section 71. (i) For filing an affidavit under
section 71 of the Act on paper, per class--$325.00
(ii) For filing an affidavit under section 71 of the Act through
TEAS, per class--$225.00
(iii) For deleting goods, services, and/or classes after submission
and prior to acceptance of an affidavit under section 71 of the Act on
paper, per class--$350.00
(iv) For deleting goods, services, and/or classes after submission
and prior to acceptance of an affidavit under section 71 of the Act
through TEAS, per class --$250.00
(7) Filing affidavit under section 71 during grace period. (i)
Surcharge for filing
[[Page 361]]
an affidavit under section 71 of the Act during the grace period on
paper, per class--$200.00
(ii) Surcharge for filing an affidavit under section 71 of the Act
during the grace period through TEAS, per class--$100.00
(8) Correcting deficiency in section 71 affidavit. (i) For
correcting a deficiency in a section 71 affidavit filed on paper--
$200.00
(ii) For correcting a deficiency in a section 71 affidavit filed
through TEAS--$100.00
(b) The fees required in paragraph (a) of this section must be paid
in U.S. dollars at the time of submission of the requested action. See
Sec.2.207 of this chapter for acceptable forms of payment and Sec.
2.208 of this chapter for payments using a deposit account established
in the Office.
[81 FR 72708, Oct. 21, 2016, as amended at 85 FR 73217, Nov. 17, 2020]
Sec.7.7 Payments of fees to International Bureau.
(a) For documents filed through TEAS, the following fees may be paid
either directly to the International Bureau or through the Office:
(1) International application fees;
(2) Subsequent designation fees; and
(3) Recording fee for an assignment of an international registration
under Sec.7.23.
(b) The fees in paragraph (a) of this section may be paid as
follows:
(1)(i) Directly to the International Bureau by debit to a current
account with the International Bureau. In this case, an applicant or
holder's submission to the Office must include the International Bureau
account number; or
(ii) Directly to the International Bureau using any other acceptable
method of payment. In this case, an applicant or holder's submission to
the Office must include the International Bureau receipt number for
payment of the fees; or
(2) Through the Office. Fees paid through the Office must be paid in
U.S. dollars at the time of submission. See Sec.2.207 of this chapter
for acceptable forms of payment and Sec.2.208 of this chapter for
payments using a deposit account established in the Office.
(c) All fees for paper filings must be paid directly to the
International Bureau.
(d) The International Bureau fee calculator may be viewed on the Web
site of the World Intellectual Property Organization, currently
available at: http:// www.wipo.int/ madrid/en/.
[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57185, Sept. 24, 2004]
Subpart B_International Application Originating From the United States
Sec.7.11 Requirements for international application originating from
the United States.
(a) The Office will grant a date of receipt to an international
application that is filed through TEAS in accordance with Sec.7.4(a),
or typed on the official paper form issued by the International Bureau,
if permitted under Sec.7.4(c) or accepted on petition pursuant to
Sec.7.4(d). The international application must include all of the
following:
(1) The filing date and serial number of the basic application and/
or the registration date and registration number of the basic
registration;
(2) The name and entity of the international applicant that is
identical to the name and entity of the applicant or registrant in the
basic application or basic registration, and the applicant's current
address;
(3) A reproduction of the mark that is the same as the mark in the
basic application and/or registration and that meets the requirements of
Sec.2.52 of this title.
(i) If the mark in the basic application and/or registration is
depicted in black and white and the basic application or registration
does not include a color claim, the reproduction of the mark in the
international application must be black and white.
(ii) If the mark in the basic application or registration is
depicted in black and white and includes a color claim, the
international application must include both a black and white
reproduction of the mark and a color reproduction of the mark.
(iii) If the mark in the basic application and/or registration is
depicted in color, the reproduction of the mark in
[[Page 362]]
the international application must be in color.
(iv) If the international application is filed on paper, the mark
must be no more than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide,
and must appear in the box designated by the International Bureau on the
International Bureau's official form;
(4) A color claim as set out in Sec.7.12, if appropriate;
(5) A description of the mark that is the same as the description of
the mark in the basic application or registration, as appropriate;
(6) An indication of the type of mark if the mark in the basic
application and/or registration is a three-dimensional mark, a sound
mark, a collective mark or a certification mark;
(7) A list of the goods and/or services that is identical to or
narrower than the list of goods and/or services in each claimed basic
application or registration and classified according to the Nice
Agreement Concerning the International Classification of Goods and
Services for the Purposes of the Registration of Marks;
(8) A list of the designated Contracting Parties. If the goods and/
or services in the international application are not the same for each
designated Contracting Party, the application must list the goods and/or
services in the international application that pertain to each
designated Contracting Party;
(9) The certification fee required by Sec.7.6;
(10) If the application is filed through TEAS, the international
application fees for all classes, and the fees for all designated
Contracting Parties identified in the international application (see
Sec.7.7); and
(11) A statement that the applicant is entitled to file an
international application in the Office, specifying that applicant: Is a
national of the United States; has a domicile in the United States; or
has a real and effective industrial or commercial establishment in the
United States. Where an applicant's address is not in the United States,
the applicant must provide the address of its U.S. domicile or
establishment.
(b) For requirements for certification, see Sec.7.13.
[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57185, Sept. 24, 2004;
73 FR 67775, Nov. 17, 2008; 84 FR 37098, July 31, 2019]
Sec.7.12 Claim of color.
(a) If color is claimed as a feature of the mark in the basic
application and/or registration, the international application must
include a statement that color is claimed as a feature of the mark and
set forth the same name(s) of the color(s) claimed in the basic
application and/or registration.
(b) If color is not claimed as a feature of the mark in the basic
application and/or registration, color may not be claimed as a feature
of the mark in the international application.
Sec.7.13 Certification of international application.
(a) When an international application contains all the elements set
forth in Sec.7.11(a), the Office will certify to the International
Bureau that the information contained in the international application
corresponds to the information contained in the basic application(s)
and/or basic registration(s) at the time of certification, and will then
forward the international application to the International Bureau.
(b) When an international application does not meet the requirements
of Sec.7.11(a), the Office will not certify or forward the
international application. If the international applicant paid the
international application fees (see Sec.7.7) through the Office, the
Office will refund the international fees. The Office will not refund
the certification fee.
Sec.7.14 Correcting irregularities in international application.
(a) Response period. Upon receipt of a notice of irregularities in
an international application from the International Bureau, the
applicant must respond to the International Bureau within the period set
forth in the notice.
(b) Classification and Identification of Goods and Services.
Responses to International Bureau notices of irregularities in the
classification or identification of goods or services in an
international application must be submitted
[[Page 363]]
through the Office for forwarding to the International Bureau. The
Office will review an applicant's response to a notice of irregularities
in the identification of goods or services to ensure that the response
does not identify goods or services that are broader than the scope of
the goods or services in the basic application or registration.
(c) Fees. If the International Bureau notice of irregularities
requires the payment of fees, the fees for correcting irregularities in
the international application must be paid directly to the International
Bureau.
(d) Other Irregularities Requiring Response from Applicant. Except
for responses to irregularities mentioned in paragraph (b) of this
section and payment of fees for correcting irregularities mentioned in
paragraph (c) of this section, all other responses may be submitted
through the Office in accordance with Sec.7.14(e), or filed directly
at the International Bureau. The Office will forward timely responses to
the International Bureau, but will not review the responses or respond
to any irregularities on behalf of the international applicant.
(e) Procedure for response. To be considered timely, a response must
be received by the International Bureau before the end of the response
period set forth in the International Bureau's notice. Receipt in the
Office does not fulfill this requirement. Any response submitted through
the Office for forwarding to the International Bureau should be
submitted as soon as possible, but at least one month before the end of
the response period in the International Bureau's notice. The Office
will not process any response received in the Office after the
International Bureau's response deadline.
[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004;
73 FR 67776, Nov. 17, 2008]
Subpart C_Subsequent Designation Submitted Through the Office
Sec.7.21 Subsequent designation.
(a) A subsequent designation may be filed directly with the
International Bureau, or, if it meets the requirements of paragraph (b)
of this section, submitted through the Office.
(b) The Office will grant a date of receipt to a subsequent
designation that is filed through TEAS in accordance with Sec.7.4(a),
or typed on the official paper form issued by the International Bureau,
if permitted under Sec.7.4(c) or accepted on petition pursuant to
Sec.7.4(d). The subsequent designation must contain all of the
following:
(1) The international registration number;
(2) The serial number of the U.S. application or registration number
of the U.S. registration that formed the basis of the international
registration;
(3) The name and address of the holder of the international
registration;
(4) A statement that the holder is entitled to file a subsequent
designation in the Office, specifying that holder: Is a national of the
United States; has a domicile in the United States; or has a real and
effective industrial or commercial establishment in the United States.
Where a holder's address is not in the United States, the holder must
provide the address of its U.S. domicile or establishment;
(5) A list of goods and/or services that is identical to or narrower
than the list of goods and/or services in the international
registration;
(6) A list of the designated Contracting Parties. If the goods and/
or services in the subsequent designation are not the same for each
designated Contracting Party, the holder must list the goods and/or
services covered by the subsequent designation that pertain to each
designated Contracting Party;
(7) The U.S. transmittal fee required by Sec.7.6; and
(8) If the subsequent designation is filed through TEAS, the
subsequent designation fees (see Sec.7.7).
(c) If the subsequent designation is accorded a date of receipt, the
Office will then forward the subsequent designation to the International
Bureau.
(d) If the subsequent designation fails to contain all the elements
set forth in paragraph (b) of this section, the Office will not forward
the subsequent designation to the International Bureau. The Office will
notify the holder of the
[[Page 364]]
reason(s). If the holder paid the subsequent designation fees (see Sec.
7.7) through the Office, the Office will refund the subsequent
designation fees. The Office will not refund the transmittal fee.
(e) Correspondence to correct any irregularities in a subsequent
designation must be made directly with the International Bureau.
[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004;
85 FR 37098, July 31, 2019]
Subpart D_Recording Changes to International Registration
Sec.7.22 Recording changes to international registration.
Except as provided in Sec. Sec.7.23 and 7.24, requests to record
changes to an international registration must be filed with the
International Bureau. If a request to record an assignment or
restriction of a holder's right of disposal of an international
registration or the release of such a restriction meets the requirements
of Sec.7.23 or 7.24, the Office will forward the request to the
International Bureau. Section 10 of the Act and part 3 of this chapter
are not applicable to assignments or restrictions of international
registrations.
Sec.7.23 Requests for recording assignments at the International
Bureau.
A request to record an assignment of an international registration
may be submitted through the Office for forwarding to the International
Bureau only if the assignee cannot obtain the assignor's signature for
the request to record the assignment.
(a) A request to record an assignment submitted through the Office
must include all of the following:
(1) The international registration number;
(2) The name and address of the holder of the international
registration;
(3) The name and address of the assignee of the international
registration;
(4) A statement that the assignee: Is a national of the United
States; has a domicile in the United States; or has a real and effective
industrial or commercial establishment in the United States. Where an
assignee's address is not in the United States, the assignee must
provide the address of its U.S. domicile or establishment;
(5) A statement, signed and verified (sworn to) or supported by a
declaration under Sec.2.20 of this chapter, that, for the request to
record the assignment, either the assignee could not obtain the
assignor's signature because the holder no longer exists, or, after a
good-faith effort, the assignee could not obtain the assignor's
signature;
(6) An indication that the assignment applies to the designation to
the United States or an international registration that is based on a
U.S. application or registration;
(7) A statement that the assignment applies to all the goods and/or
services in the international registration, or if less, a list of the
goods and/or services in the international registration that have been
assigned that pertain to the designation to the United States; and
(8) The U.S. transmittal fee required by Sec.7.6.
(b) If a request to record an assignment contains all the elements
set forth in paragraph (a) of this section, the Office will forward the
request to the International Bureau. Forwarding the request to the
International Bureau is not a determination by the Office of the
validity of the assignment or the effect that the assignment has on the
title of the international registration.
(c) If the request fails to contain all the elements set forth in
paragraph (a) of this section, the Office will not forward the request
to the International Bureau. The Office will notify the assignee(s) of
the reason(s). If the assignee paid the fees to record the assignment
(see Sec.7.7) through the Office, the Office will refund the recording
fee. The Office will not refund the transmittal fee.
(d) Correspondence to correct any irregularities in a request to
record an assignment must be made directly with the International
Bureau.
[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004;
80 FR 2313, Jan. 16, 2015]
[[Page 365]]
Sec.7.24 Requests to record security interest or other restriction
of holder's rights of disposal or release of such restriction submitted
through the Office.
(a) A party who obtained a security interest or other restriction of
a holder's right to dispose of an international registration, or the
release of such a restriction, may submit a request to record the
restriction or release through the Office for forwarding to the
International Bureau only if:
(1) The restriction or release:
(i) Is the result of a court order; or
(ii) Is the result of an agreement between the holder of the
international registration and the party restricting the holder's right
of disposal, and the signature of the holder cannot be obtained for the
request to record the restriction or release;
(2) The party who obtained the restriction is a national of, is
domiciled in, or has a real and effective industrial or commercial
establishment in the United States; and
(3) The restriction or release applies to the holder's right to
dispose of the international registration in the United States.
(b) A request to record a restriction or the release of a
restriction must be submitted by the party who obtained the restriction
of the holder's right of disposal and include all the following:
(1) The international registration number;
(2) The name and address of the holder of the international
registration;
(3) The name and address of the party who obtained the restriction;
(4) A statement that the party who submitted the request: Is a
national of the United States; has a domicile in the United States; or
has a real and effective industrial or commercial establishment in the
United States. Where a party's address is not in the United States, the
party must provide the address of its U.S. domicile or establishment;
(5)(i) A statement that the restriction is the result of a court
order, or
(ii) Where the restriction is the result of an agreement between the
holder of the international registration and the party restricting the
holder's right of disposal, a statement, signed and verified (sworn to)
or supported by a declaration under Sec.2.20 of this chapter, that,
for the request to record the restriction, or release of the
restriction, either the holder of the international registration could
not obtain the signature of the party restricting the holder's right of
disposal because the party restricting the holder's right of disposal no
longer exists, or, after a good-faith effort, the holder of the
international registration could not obtain the signature of the party
restricting the holder's right of disposal;
(6) A summary of the main facts concerning the restriction;
(7) An indication that the restriction, or the release of the
restriction, of the holder's right of disposal of the international
registration applies to the designation to the United States or an
international registration that is based on a U.S. application or
registration; and
(8) The U.S. transmittal fee required by Sec.7.6.
(c) If a request to record a restriction, or the release of a
restriction, contains all the elements set forth in paragraph (b) of
this section, the Office will forward the request to the International
Bureau. Forwarding the request to the International Bureau is not a
determination by the Office of the validity of the restriction, or its
release, or the effect that the restriction has on the holder's right to
dispose of the international registration.
(d) If the request fails to contain all the elements set forth in
paragraph (b) of this section, the Office will not forward the request.
The Office will notify the party who submitted the request of the
reason(s). The Office will not refund the transmittal fee.
(e) Correspondence to correct any irregularities in a request to
record a restriction of a holder's right to dispose of an international
registration or the release of such a restriction must be made directly
with the International Bureau.
[68 FR 55769, Sept. 26, 2003, as amended at 80 FR 2313, Jan. 16, 2015]
[[Page 366]]
Subpart E_Extension of Protection to the United States
Sec.7.25 Sections of part 2 applicable to extension of protection.
(a) Except for Sec. Sec.2.21, 2.22, 2.76, 2.88, 2.89, 2.130,
2.131, 2.160 through 2.166, 2.168, 2.173, 2.175, and 2.181 through
2.186, all sections in parts 2 and 11 of this chapter shall apply to an
extension of protection of an international registration to the United
States, including sections related to proceedings before the Trademark
Trial and Appeal Board, unless otherwise stated.
(b) The Office will refer to a request for an extension of
protection to the United States as an application under section 66(a) of
the Act, and references to applications and registrations in part 2 of
this chapter include extensions of protection to the United States.
(c) Upon registration in the United States under section 69 of the
Act, an extension of protection to the United States is referred to as a
registration, a registered extension of protection, or a section 66(a)
registration.
[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004;
70 FR 38774, July 6, 2005; 73 FR 47686, Aug. 14, 2008; 73 FR 67776, Nov.
17, 2008; 75 FR 35977, June 24, 2010; 78 FR 20197, Apr. 3, 2013; 80 FR
2313, Jan. 16, 2015; 84 FR 37099, July 31, 2019]
Sec.7.26 Filing date of extension of protection for purposes of
examination in the Office.
(a) If a request for extension of protection of an international
registration to the United States is made in an international
application and the request includes a declaration of a bona fide
intention to use the mark in commerce as set out in Sec.2.33(e) of
this chapter, the filing date of the extension of protection to the
United States is the international registration date.
(b) If a request for extension of protection of an international
registration to the United States is made in a subsequent designation
and the request includes a declaration of a bona fide intention to use
the mark in commerce as set out in Sec.2.33(e), the filing date of the
extension of protection to the United States is the date that the
International Bureau records the subsequent designation.
Sec.7.27 Priority claim of extension of protection for purposes of
examination in the Office.
An extension of protection of an international registration to the
United States is entitled to a claim of priority under section 67 of the
Act if:
(a) The request for extension of protection contains a claim of
priority;
(b) The request for extension of protection specifies the filing
date, serial number and the country of the application that forms the
basis for the claim of priority; and
(c) The date of the international registration or the date of
recording of the subsequent designation at the International Bureau of
the request for extension of protection to the United States is not
later than six months after the filing date of the application that
forms the basis for the claim of priority.
Sec.7.28 Replacement of U.S. registration by registered extension
of protection.
(a) A registered extension of protection affords the same rights as
those afforded to a previously issued U.S. registration if:
(1) Both registrations are owned by the same person and identify the
same mark; and
(2) All the goods and/or services listed in the U.S. registration
are also listed in the registered extension of protection.
(b) The holder of an international registration with a registered
extension of protection to the United States that meets the requirements
of paragraph (a) of this section may file a request to note replacement
of the U.S. registration with the extension of protection. If the
request contains all of the following, the Office will take note of the
replacement in its automated records:
(1) The serial number or registration number of the extension of
protection;
(2) The registration number of the replaced U.S. registration; and
(3) The fee required by Sec.7.6.
(c) If the request to note replacement is denied, the Office will
notify the holder of the reason(s) for refusal.
[[Page 367]]
Sec.7.29 Effect of replacement on U.S. registration.
A U.S. registration that has been replaced by a registered extension
of protection under section 74 of the Act and Sec.7.28 will remain in
force, unless cancelled, expired or surrendered, as long as:
(a) The owner of the replaced U.S. registration continues to file
affidavits or declarations of use in commerce or excusable nonuse under
section 8 of the Act; and
(b) The replaced U.S. registration is renewed under section 9 of the
Act.
Sec.7.30 Effect of cancellation or expiration of international
registration.
When the International Bureau notifies the Office of the
cancellation or expiration of an international registration, in whole or
in part, the Office shall cancel, in whole or in part, the corresponding
pending or registered extension of protection to the United States. The
date of cancellation of an extension of protection or relevant part
shall be the date of cancellation or expiration of the corresponding
international registration or relevant part.
Sec.7.31 Requirements for transformation of an extension of
protection to the United States into a U.S. application.
If the International Bureau cancels an international registration in
whole or in part, under Article 6(4) of the Madrid Protocol, the holder
of that international registration may file a request to transform the
goods and/or services to which the cancellation applies in the
corresponding pending or registered extension of protection to the
United States into an application under section 1 or 44 of the Act.
(a) The holder of the international registration must file a request
for transformation within three months of the date of cancellation of
the international registration and include:
(1) The serial number or registration number of the extension of
protection to the United States;
(2) The name and address of the holder of the international
registration;
(3) Identify the goods and/or services to be transformed, if other
than all the goods and/or services that have been cancelled;
(4) The application filing fee for at least one class of goods or
services required by Sec.2.6(a)(1) of this chapter; and
(5) An email address for receipt of correspondence from the Office.
(b) If the request for transformation contains all the elements set
forth in paragraph (a) of this section, the extension of protection
shall be transformed into an application under section 1 and/or 44 of
the Act and accorded the same filing date and the same priority that was
accorded to the extension of protection.
(c) The application under section 1 and/or 44 of the Act that
results from a transformed extension of protection will be examined
under part 2 of this chapter.
(d) A request for transformation that fails to contain all the
elements set forth in paragraph (a) of this section will not be
accepted.
[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004;
80 FR 2313, Jan. 16, 2015]
Subpart F_Affidavit Under Section 71 of the Act for Extension of
Protection to the United States
Sec.7.36 Affidavit or declaration of use in commerce or excusable
nonuse required to avoid cancellation of an extension of protection
to the United States.
(a) Subject to the provisions of section 71 of the Act, a registered
extension of protection shall remain in force for the term of the
international registration upon which it is based unless the
international registration expires or is cancelled under section 70 of
the Act due to cancellation of the international registration by the
International Bureau.
(b) During the following time periods, the holder of an
international registration must file an affidavit or declaration of use
or excusable nonuse, or the registered extension of protection will be
cancelled under section 71 of the Act:
(1) On or after the fifth anniversary and no later than the sixth
anniversary
[[Page 368]]
after the date of registration in the United States; and
(2) Within the year before the end of every ten-year period after
the date of registration in the United States.
(3) The affidavit or declaration may be filed within a grace period
of six months after the end of the deadline set forth in paragraphs
(b)(1) and (b)(2) of this section, with payment of the grace period
surcharge per class required by section 71(a)(3) of the Act and Sec.
7.6.
(c) For the requirements for the affidavit or declaration, see Sec.
7.37.
[68 FR 55769, Sept. 26, 2003, as amended at 75 FR 35977, June 24, 2010]
Sec.7.37 Requirements for a complete affidavit or declaration of use
in commerce or excusable nonuse; requirement for the submission of
additional information, exhibits, affidavits or declarations, and
specimens; and fee for deletions of goods, services, and/or
classes from a registration.
(a) Requirements for a complete affidavit or declaration. A complete
affidavit or declaration under section 71 of the Act must:
(1) Be filed by the holder of the international registration within
the period set forth in Sec.7.36(b);
(2) Include a verified statement attesting to the use in commerce or
excusable nonuse of the mark within the period set forth in section 71
of the Act. The verified statement must be executed on or after the
beginning of the filing period specified in Sec.7.36(b). A person who
is properly authorized to sign on behalf of the holder is:
(i) A person with legal authority to bind the holder;
(ii) A person with firsthand knowledge of the facts and actual or
implied authority to act on behalf of the holder; or
(iii) An attorney, as defined in Sec.11.1 of this chapter, who has
an actual written or verbal power of attorney or an implied power of
attorney from the holder;
(3) Include the U.S. registration number;
(4)(i) Include the fee required by Sec.7.6 for each class that the
affidavit or declaration covers;
(ii) If the affidavit or declaration is filed during the grace
period under section 71(a)(3) of the Act, include the grace period
surcharge per class required by Sec.7.6;
(iii) If at least one fee is submitted for a multiple-class
registration, but the fee is insufficient to cover all the classes, and
the class(es) to which the fee(s) should be applied is not specified,
the Office will issue a notice requiring either submission of the
additional fee(s) or specification of the class(es) to which the initial
fee(s) should be applied. Additional fees may be submitted if the
requirements of Sec.7.39 are met. If the additional fee(s) is not
submitted within the time period set out in the Office action, and the
class(es) to which the original fee(s) should be applied is not
specified, the Office will presume that the fee(s) covers the classes in
ascending order, beginning with the lowest numbered class;
(5)(i) Specify the goods, services, or nature of the collective
membership organization for which the mark is in use in commerce, and/or
the goods, services, or nature of the collective membership organization
for which excusable nonuse is claimed under paragraph (a)(6)(ii) of this
section; and
(ii) Specify the goods, services, or classes being deleted from the
registration, if the affidavit or declaration covers fewer than all the
goods, services, or classes in the registration;
(6)(i) State that the registered mark is in use in commerce; or
(ii) If the registered mark is not in use in commerce on or in
connection with all the goods, services, or classes specified in the
registration, set forth the date when such use of the mark in commerce
stopped and the approximate date when such use is expected to resume,
and recite facts to show that nonuse as to those goods, services, or
classes is due to special circumstances that excuse the nonuse and is
not due to an intention to abandon the mark; and
(7) Include one specimen showing how the mark is in use in commerce
for each class in the registration, unless excusable nonuse is claimed
under paragraph (a)(6)(ii) of this section. When requested by the
Office, additional specimens must be provided. The
[[Page 369]]
specimen must meet the requirements of Sec.2.56 of this chapter.
(8) Additional requirements for a collective mark: In addition to
the above requirements, a complete affidavit or declaration pertaining
to a collective mark must:
(i) State that the holder is exercising legitimate control over the
use of the mark in commerce; and
(ii) State the nature of the holder's control over the use of the
mark by the members in the first affidavit or declaration filed under
paragraph (a)(1) of this section.
(9) Additional requirements for a certification mark: In addition to
the above requirements, a complete affidavit or declaration pertaining
to a certification mark must:
(i) Include a copy of the certification standards specified in Sec.
2.45(a)(4)(i)(B) of this chapter;
(A) Submitting certification standards for the first time. In the
first affidavit or declaration filed under paragraph (a)(1) of this
section, include a copy of the certification standards; or
(B) Certification standards submitted in prior filing. If the
certification standards in use at the time of filing the affidavit or
declaration have not changed since the date they were previously
submitted to the Office, include a statement to that effect. If the
certification standards in use at the time of filing the affidavit or
declaration have changed since the date they were previously submitted
to the Office, include a copy of the revised certification standards;
(ii) State that the holder is exercising legitimate control over the
use of the mark in commerce; and
(iii) Satisfy the requirements of Sec.2.45(a)(4)(i)(A) and (C) of
this chapter.
(b) Requirement for the submission of additional information,
exhibits, affidavits or declarations, and specimens. The Office may
require the holder to furnish such information, exhibits, affidavits or
declarations, and such additional specimens as may be reasonably
necessary to the proper examination of the affidavit or declaration
under section 71 of the Act or for the Office to assess and promote the
accuracy and integrity of the register.
(c) Fee for deletions of goods, services, and/or classes from a
registration. Deletions by the holder of goods, services, and/or classes
from a registration after submission and prior to acceptance of the
affidavit or declaration must be accompanied by the relevant fee in
Sec.7.6(a)(6)(iii) or (iv).
[85 FR 73217, Nov. 17, 2020]
Sec.7.38 Notice to holder of extension of protection.
The registration certificate for an extension of protection to the
United States includes a notice of the requirement for filing the
affidavit or declaration of use or excusable nonuse under section 71 of
the Act. However, the affidavit or declaration must be filed within the
time period required by section 71 of the Act regardless of whether this
notice is received.
Sec.7.39 Acknowledgment of receipt of and correcting deficiencies
in affidavit or declaration of use in commerce or excusable nonuse.
The Office will issue a notice as to whether an affidavit or
declaration is acceptable, or the reasons for refusal.
(a) A response to the refusal must be filed within six months of the
date of issuance of the Office action, or before the end of the filing
period set forth in section 71(a) of the Act, whichever is later. The
response must be signed by the holder, someone with legal authority to
bind the holder (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec.11.14
of this chapter, in accordance with the requirements of Sec.
2.193(e)(2).
(b) If no response is filed within this time period, the extension
of protection will be cancelled, unless time remains in the grace period
under section 71(a)(3) of the Act. If time remains in the grace period,
the holder may file a complete, new affidavit.
(c) If the affidavit or declaration is filed within the time periods
set forth in section 71 of the Act, deficiencies may be corrected after
notification from the Office, as follows:
(1) Correcting deficiencies in affidavits or declarations timely
filed within the periods set forth in sections 71(a)(1) and 71(a)(2) of
the Act. If the affidavit or
[[Page 370]]
declaration is timely filed within the relevant filing period set forth
in section 71(a)(1) or section 71(a)(2) of the Act, deficiencies may be
corrected before the end of this filing period without paying a
deficiency surcharge. Deficiencies may be corrected after the end of
this filing period with payment of the deficiency surcharge required by
section 71(c) of the Act and Sec.7.6.
(2) Correcting deficiencies in affidavits or declarations filed
during the grace period. If the affidavit or declaration is filed during
the six-month grace period provided by section 71(a)(3) of the Act,
deficiencies may be corrected before the expiration of the grace period
without paying a deficiency surcharge. Deficiencies may be corrected
after the expiration of the grace period with payment of the deficiency
surcharge required by section 71(c) of the Act and Sec.7.6.
(d) If the affidavit or declaration is not filed within the time
periods set forth in section 71 of the Act, the registration will be
cancelled.
[75 FR 35977, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]
Sec.7.40 Petition to Director to review refusal.
(a) A response to the examiner's initial refusal to accept an
affidavit or declaration is required before filing a petition to the
Director, unless the examiner directs otherwise. See Sec.7.39(b) for
the deadline for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, the holder may file a petition to the Director to review
the examiner's action. The petition must be filed within six months of
the date of issuance of the action maintaining the refusal, or the
Office will cancel the registration.
(c) A decision by the Director is necessary before filing an appeal
or commencing a civil action in any court.
[68 FR 55769, Sept. 26, 2003, as amended at 73 FR 67776, Nov. 17, 2008]
Subpart G_Renewal of International Registration and Extension of
Protection
Sec.7.41 Renewal of international registration and extension
of protection.
(a) Any request to renew an international registration and its
extension of protection to the United States must be made at the
International Bureau in accordance with Article 7 of the Madrid
Protocol.
(b) A request to renew an international registration or extension of
protection to the United States submitted through the Office will not be
processed.
[[Page 371]]
INDEX II_RULES RELATING TO TRADEMARKS
Editorial Note: This listing is provided for information purposes
only. It is compiled and kept up-to-date by the Department of Commerce.
This index is updated as of July 1, 2021.
Section
A
Abandonment of application or mark:
During inter partes proceeding.....................................2.135
Express abandonment.................................................2.68
For failure to respond or to respond completely to official action
2.65(a)
For failure to timely file a statement of use....................2.65(c)
Revival of abandoned application....................................2.66
Acceptance of affidavit under sec. 8...............................2.163
Access:
To applications, and all proceedings relating thereto, after
publication or registration......................................2.27(d)
To applications prior to publication.............................2.27(b)
To assignment records..............................................2.200
To decisions of Director and the Trademark Trial and Appeal Board
2.27(c)
To materials filed under seal pursuant to a protective order....2.27(e);
2.126(c)
To pending trademark application index...........................2.27(a)
Acknowledgment of receipt of affidavit or declaration:
Filed under sec. 8.................................................2.163
Filed under sec. 71.................................................7.39
Act, The, defined.................................................2.2(a)
Action by assignee of record or owner......................3.71(d), 3.73
Action by Examiner on application...................................2.61
Adding party to an interference.....................................2.98
Address for correspondence with U.S. Patent and Trademark Office
2.190
Additional specimens:
Bases for filing..........................................2.34(a)(1)(iv)
Specimens........................................................2.56(a)
Action by examiner...............................................2.61(b)
Amendment to allege use.......................................2.76(b)(2)
Application may include multiple classes.................2.86(a)(3), (b)
Filing statement of use after notice of allowance.............2.88(a)(1)
Requirements for a complete affidavit or declaration of continued
use or excusable nonuse.........................................2.161(a)
Amendment of registration...............................2.173(b)(3), (4)
Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse................................7.37(a), (h)
Admissions, request for (discovery):
Motion to determine sufficiency of response.....................2.120(i)
Numerical limit on..............................................2.120(i)
Timing of.......................................................2.120(a)
Use of admission................................................2.120(k)
When to file copy of request with Trademark Trial and Appeal Board
2.120(k)(8)
Advertising by attorneys and others, restricted...................11.702
Affidavit or declaration:
[[Page 372]]
Claiming benefits of Act of 1946...................................2.153
Combined secs. 8 and 15.........................................2.168(a)
Combined secs. 9 and 15.........................................2.168(b)
For incontestability under sec. 15.................................2.167
Of use in commerce or excusable nonuse under sec. 8............2.160-166
Of use in commerce or excusable nonuse under sec. 71...........7.36-7.40
Reconsideration of, under sec. 8.............................2.163-2.165
Reconsideration of, under sec. 71.............................7.39, 7.40
Testimony in inter partes proceeding...............2.122(b)(2), 2.123(a)
To avoid cancellation of registration under sec. 8...........2.160-2.166
To avoid cancellation of registration under sec. 71............7.36-7.40
Agent. (See Attorneys and other representatives)
Allegations in application or registration not evidence on behalf
of applicant or registrant in inter partes proceeding........2.122(b)(2)
Allowance, notice of.......................................2.81(b), 2.88
Amendment of application:
After final action...............................................2.64(b)
After publication....................................2.35(b)(2), 2.84(b)
Between notice of allowance and statement of use....................2.77
Description or drawing of mark......................................2.72
Form of amendment...................................................2.74
Involved in inter partes proceedings...............................2.133
To allege use.......................................................2.76
To change to different register.....................................2.75
To correct informalities............................................2.71
To seek concurrent use registration.................................2.73
Amendment of pleadings in inter partes proceedings:
Cancellation.......................................................2.115
Opposition.........................................................2.107
Amendment of registration:
During inter partes proceedings....................................2.133
Requirements for, in general.......................................2.173
Amendment to allege use.............................................2.76
Amendments to description or drawing of mark after filing........2.72(b)
Correction of deficiency in......................................2.76(g)
Filed during final action response period........................2.64(c)
Minimum requirements for filing..................................2.76(e)
Requirements for.................................................2.76(b)
Time for filing..................................................2.76(a)
Withdrawal of....................................................2.76(h)
Answer to pleadings in opposition and cancellation proceedings....2.106,
2.114
Contents of answer..............................2.106(b)(1), 2.114(b)(2)
Corresponds to answer in court proceeding.......................2.116(c)
Counterclaim....................................2.106(b)(3), 2.114(b)(3)
Failure to timely answer..............................2.106(a), 2.114(a)
Answer to notice instituting concurrent use proceeding...........2.99(d)
Failure to answer.............................................2.99(d)(3)
Who needs to answer and when..................................2.99(d)(2)
Appeal to Court and civil action...................................2.145
Appeal to Court from decision of Director..........................2.145
Appeal to Court from decision of Trademark Trial and Appeal Board
2.145
Appeal to U.S. Court of Appeals for the Federal Circuit.........2.145(a)
Civil action....................................................2.145(c)
Extensions of time to appeal....................................2.145(e)
Notice of appeal to Court....................................2.145(c)(3)
Notice of appeal to U.S. Court of Appeals for the Federal Circuit
2.145(a)(2), (3)
[[Page 373]]
Notice of election by appellee to proceed by civil action after
appeal to U.S. Court of Appeals for the Federal circuit......2.145(b)(2)
Time for appeal or civil action.................................2.145(d)
Appeal to Trademark Trial and Appeal Board:
Appropriate response to final refusal or second refusal on the
same grounds..............................................2.64(a), 2.141
Briefs on appeal................................................2.142(b)
Compliance with requirements not on appeal......................2.142(c)
Failure of appellant to file brief...........................2.142(b)(1)
Introduction of new evidence after filing of appeal.............2.142(d)
Oral hearing on appeal..........................................2.142(e)
Reconsideration of decision on appeal..............................2.144
Remand to Examiner re new issue prior to decision...............2.142(f)
Reopening of examination of application after decision on appeal
2.142(g)
Time and manner of filing appeal................................2.142(a)
Applicant:
Foreign.................................................2.24, 2.34(a)(3)
Name of...........................................2.21(a)(1), 2.32(a)(2)
Signature and oath or declaration...................................2.33
Application for registration...................................2.21-2.47
Access to pending applications......................................2.27
Amendment of. See Amendment of application.
Basis for filing..............................................2.34, 2.35
Certification mark..................................................2.45
Collective mark.....................................................2.44
Color claim in................................................2.52(b)(1)
Concurrent use..........................................2.42, 2.73, 2.99
Conflicting marks, co-pending applications for......................2.83
Description of mark.................................................2.37
Different classes may be combined...................................2.86
Dividing of applications............................................2.87
Drawing required....................................................2.51
Extension of protection of international registration to United
States.........................................................7.25-7.41
Filing-date requirements............................................2.21
Form of application............................................2.32-2.47
For international registration. See International registration,
application for
Must be in English...............................................2.32(a)
Principal Register..................................................2.46
Priority claim based on foreign application.............2.34(a)(4), 7.27
Prior registrations should be identified............................2.36
Requirements for drawings......................................2.52-2.54
Requirements for written application...........................2.32-2.34
Service mark........................................................2.43
Signature of........................................................2.33
Specimens filed with..........................................2.56, 2.59
Supplemental Register...............................................2.47
Verification of.......................................2.32(b), (c), 2.33
Assignee:
Certificate of registration may be issued to........................3.85
New certificate of registration may be issued to...................2.171
Not domiciled in U.S................................................3.61
Right to take action when assignment is recorded or proof of
assignment has been submitted..............................3.71(d), 3.73
Assignment of registered marks or marks subject to pending
applications..............................................3.1-3.85, 7.23
Cover sheet required to record................................3.28, 3.31
Effect of recording.................................................3.54
[[Page 374]]
Electronically filed requests to record...........3.25(c)(1), 3.31(a)(7)
Extension of protection of international registration to U.S.,
assignment of.................................................7.22, 7.23
Original documents should not be submitted for recordation.........3.25,
3.34(b)
Recording fees......................................................3.41
Recording in U.S. Patent and Trademark Office of assignments or
other instruments relating to such marks............................3.11
Recording of changes to International registrations or
applications not applicable.........................................7.22
Records open to public inspection...........................2.200, 2.201
Requirements for recording...............................3.25-3.31, 3.41
Assignment of trial dates in inter partes proceedings....2.120(a), 2.121
Consolidated proceedings.....................................2.121(b)(2)
Counterclaim.................................................2.121(b)(2)
Discovery period................................................2.120(a)
Extending, Rescheduling.....................2.120(a), 2.121(a), (c), (d)
Testimony periods..................................................2.121
Trial order mailed with notice of institution...................2.120(a)
Attorney conflict of interest............2.61(c), 11.107, 11.108, 11.111
Attorneys and other representatives............2.11, 2.17-2.19, 2.119(d)
Attorneys fees:
Unavailable.....................................................2.127(f)
Authentication of copies of assignment records...............2.200(a)(2)
B
Basis for filing an application...............................2.34, 2.35
Bona fide intention to use....................2.34(a)(2), 2.34(a)(3)(i),
2.34(a)(4)(B)(ii), 2.89(a)(3), 2.89(b)(3)
Briefs:
At final hearing in inter partes case..............................2.128
Failure of appellant to file brief on appeal.................2.142(b)(1)
Failure of inter partes plaintiff to file brief at final hearing
2.128(a)(3)
Failure to file brief on inter partes motion....................2.127(a)
On appeal to Trademark Trial and Appeal Board...................2.142(b)
On motions in inter partes cases........................2.127(a), (e)(1)
On petitions to Director...................................2.146(c), (e)
Burden of proof in an interference..................................2.96
Business with U.S. Patent and Trademark Office to be conducted
with decorum and courtesy..........................................2.192
Business with U.S. Patent and Trademark Office transacted in
writing............................................................2.191
C
Cancellation of registrations (See also International Registration,
cancellation of):
By cancellation proceeding; pleadings and procedure................2.111
(See also Petition for Cancellation)
By registrant...............................................2.134, 2.172
For failure to file affidavit or declaration of use under sec. 8
2.160-2.166
For failure to file affidavit or declaration of use under sec. 71
7.36-7.40
During cancellation proceeding.....................................2.134
Cases not specifically defined in rules, petition to the Director
2.146(a)(4)
Certificate of correction of registration...................2.174, 2.175
Certificate of mailing by first class mail.........................2.197
Certificate of registration:
As evidence in inter partes proceeding................2.122(b), (d), (e)
Contents...........................................................2.151
[[Page 375]]
In Registered extension of protection of international
registration to United States.......................................7.28
Issuance of new certificate to assignee............................2.171
When and how issued....................................2.81, 2.82, 2.151
Certification mark......................................2.45, 2.56(b)(5)
Certification of international application..........................7.13
Certified copies of registrations and records......................2.201
Citizenship of applicant......................................2.32(a)(3)
Civil action:
From decision of Director.......................................2.145(c)
From decision of Trademark Trial and Appeal Board...............2.145(c)
Notice of election by appellee to proceed by civil action after
appeal to U.S. Court of Appeals for the Federal Circuit......2.145(b)(2)
Notice to Trademark Trial and Appeal Board of election to commence
civil action for review of Board decision....................2.145(c)(3)
Suspension of action in application pending outcome.................2.67
Suspension of inter partes proceedings pending outcome.............2.117
Time for commencing civil action from decision of Director or
Trademark Trial and Appeal Board.............................2.145(d)(3)
Waiver of right to proceed by civil action in ex parte case
2.145(b)(1)
Civil Procedure, Federal Rules of, applied to inter partes
proceedings.................................2.116(a), 2.120(a), 2.122(a)
Claim of benefits of Act of 1946 for marks registered under prior
Acts.........................................................2.153-2.156
Classification of goods and services................................2.85
Application limited to single class..............................2.86(a)
Combined applications...............................................2.86
Schedules of classes.............................................6.1-6.4
Collective mark.........................................2.44, 2.56(b)(3)
Color claim:
In application for registration in United States..............2.52(b)(1)
In application for international registration...........7.11(a)(4), 7.12
Combined applications...............................................2.86
Combined inter partes proceedings:
Cancellation....................................................2.112(b)
Opposition......................................................2.104(b)
Commencement of cancellation....................................2.111(a)
Commencement of opposition......................................2.101(a)
Communication with attorney or other representative.................2.18
Complaints against U.S. Patent and Trademark Office employees......2.192
Compliance of applicant with other laws.............................2.69
Compliance with discovery order of Trademark Trial and Appeal
Board...........................................................2.120(h)
Compulsory counterclaim...................2.106(b)(3)(i), 2.114(b)(3)(i)
Concurrent use registration...................................2.42, 2.99
Amendment to seek...................................................2.73
Answer to notice of concurrent use proceeding, by whom and when
2.99(d)
Application requirements............................................2.42
Based upon court determination...................................2.99(f)
Burden of proving entitlement to.................................2.99(e)
Consideration and determination by Trademark Trial and Appeal
Board..................................................2.99(h), 2.133(c)
Examination by Examiner.....................................2.99(a), (b)
Intent-to-use applications, when subject to................2.73, 2.99(g)
Mark must first be published for opposition purposes.............2.99(b)
Notice of concurrent use proceeding.........................2.99(c), (d)
[[Page 376]]
Registrations and applications to register on Supplemental
Register and registrations under Act of 1920 not subject to......2.99(g)
Request to divide application during concurrent use proceeding
2.87(c)(1)
Conduct of practitioners...................................11.101-11.901
Conference, pre-trial, in inter partes cases.................2.120(j)(2)
Conference, telephone, in inter partes cases.................2.120(j)(1)
Confidential matters...............2.27(e), 2.125(f), 2.116(g), 2.126(c)
Conflict of interest, attorney...........2.61(c), 11.107, 11.108, 11.111
Conflicting marks, co-pending applications for................2.83, 2.91
Consent of applicant or authorized representative to withdrawal of
opposition after answer.........................................2.106(c)
Consent of opposer to abandonment of application or mark...........2.135
Consent of petitioner to surrender or voluntary cancellation of
registration.......................................................2.134
Consent of registrant withdrawal of cancellation after answer...2.114(c)
Consolidated inter partes proceedings:
Filing consolidated petition to cancel..........................2.112(b)
Filing consolidated opposition..................................2.104(b)
Times for filing briefs......................................2.128(a)(2)
Times for taking testimony...................................2.121(b)(2)
Constructive use, entry of judgment subject to establishment of in
inter partes proceedings........................................2.129(d)
Contested or inter partes case procedures....................2.116-2.136
Copies of registrations and records........................2.6(b), 2.201
Correction of informalities by amendment............................2.71
Correction of mistake in certificate of registration:
Mistake by U.S. Patent and Trademark Office........................2.174
Mistake by registrant..............................................2.175
Mistake in international registration...............................7.22
Correspondence, addresses for.................................2.190, 7.4
Correspondence, with whom held......................2.18, 2.24, 2.119(d)
Counterclaim in opposition and cancellation.....2.106(b)(3), 2.114(b)(3)
Court determination as basis for concurrent use registration.....2.99(f)
Courtesy and decorum in dealing with U.S. Patent and Trademark
Office.............................................................2.192
Court of Appeals for the Federal Circuit, U.S., appeal to..........2.145
D
Date of first use and first use in commerce:
Amendment of.....................................................2.71(c)
Required in amendment to allege use.................2.76(b)(1)(iii), (c)
Required in statement of use........................2.88(b)(1)(iii), (c)
Required in use applications under sec. l(a)....2.34(a)(1)(ii) and (iii)
Date of use allegation in application or registration not evidence
on behalf of applicant or registrant in inter partes case....2.122(b)(2)
Declaration in lieu of oath or verification.........................2.20
Declaration of interference.........................................2.91
Default judgment for failure to offer evidence in inter partes
proceeding......................................................2.132(a)
Delay in responding to official action..............................2.66
Deposit accounts for paying fees...................................2.208
Depositions, discovery, in inter partes cases:
Domestic party..................................................2.120(b)
Foreign party or representative.................................2.120(c)
Motion to compel attendance.....................................2.120(f)
Nonparty........................................................2.120(b)
Time for taking.................................................2.120(a)
[[Page 377]]
Use of..........................................................2.120(k)
When to file with Trademark Trial and Appeal Board...........2.120(k)(8)
Depositions, discovery or trial testimony, upon written questions
2.124
Depositions, trial testimony.......................................2.123
Before whom taken...............................................2.123(d)
Certification and filing........................................2.123(f)
Corresponds to the trial in court proceedings...................2.116(e)
Effect of errors and irregularities.............................2.123(i)
Examination of witnesses........................................2.123(e)
Filing and service of testimony transcript............2.123(f)(2), 2.125
Form of depositions.............................................2.123(g)
Manner of taking................................................2.123(a)
Must be filed...................................................2.123(h)
Notice of taking................................................2.123(c)
Protective order relating to transcript or exhibits.............2.125(f)
Raising of objections.................................2.123(e), (i), (j)
Stipulations concerning.........................................2.123(b)
Taken in foreign country.....................................2.123(a)(2)
Timing.............................................................2.121
Description of mark in application......................2.37, 2.52(b)(5)
Amendment to........................................................2.72
Designation of representative by foreign applicant, registrant, or
party:
Application.........................................................2.24
Assignment..........................................................3.61
In inter partes proceeding......................................2.119(d)
Director of United States Patent and Trademark Office:
May suspend certain rules................................2.146(a), 2.148
Petition to........................................................2.146
Disciplinary Proceedings....................................11.19 -11.62
Disclaimer:
During inter partes cases..........................................2.133
In part, of registered mark........................................2.173
Disclosures:
Expert disclosures......................................2.120(a)(2)(iii)
Failure to make.................................................2.120(f)
Filing with Board.......................................2.120(k)(5), (8)
Initial disclosures.....................................2.120(a)(2), (3)
Motion to compel................................................2.120(f)
Protective order................................................2.120(g)
Sanctions....................................................2.120(h)(2)
Discovery depositions. See Depositions, discovery, in inter partes
cases.
Discovery procedure................................................2.120
Automatic disclosure and discovery provisions of Federal Rules of
Civil Procedure applicable......................................2.120(a)
Discovery conference............................................2.120(a)
Discovery deposition of domestic party..........................2.120(b)
Discovery deposition of foreign party...........................2.120(c)
Discovery provisions of Federal Rules of Civil Procedure apply
except as otherwise provided....................................2.120(a)
Electronically stored information..........................2.120(e), (f)
Failure to comply with discovery order of Trademark Trial and
Appeal Board....................................................2.120(h)
Interrogatories.................................................2.120(d)
Motion for order to compel discovery..................2.120(d), 2.120(f)
Motion for a protective order...................................2.120(g)
Place of production of documents and things.....................2.120(e)
Pre-trial conference.........................................2.120(j)(2)
Proceeding suspended pending decision on motion to compel....2.120(f)(2)
[[Page 378]]
Request for admissions..........................................2.120(i)
Sanctions for failure to comply with discovery order of Trademark
Trial and Appeal Board..........................................2.120(h)
Telephone conference.........................................2.120(j)(1)
Time for discovery..............................................2.120(a)
Use of discovery deposition, answer to interrogatory, or admission
2.120(k)
When to file discovery materials with Trademark Trial and Appeal
Board........................................................2.120(k)(8)
Dismissal:
For failure to file brief on appeal to Trademark Trial and Appeal
Board........................................................2.142(b)(1)
For failure to take testimony or offer other evidence in inter
partes case........................................................2.132
Distinctiveness under sec. 2(f), proof of...........................2.41
Dividing an application.............................................2.87
Dividing a registration.........................................2.171(b)
Domestic representative of foreign applicant, registrant, or party:
Application.........................................................2.24
Assignment..........................................................3.61
In inter partes proceeding......................................2.119(d)
Domicile of applicant.........................................2.32(a)(2)
Drawing........................................................2.51-2.54
Amendment to mark in................................................2.72
Color in......................................................2.52(b)(1)
Drawings required...................................................2.51
Electronically filed.......................................2.52(c), 2.53
Paper...............................................................2.54
Requirements for drawing.......................................2.52-2.54
Standard character drawing.......................................2.52(a)
Typed drawing. See Standard character drawing
Duplicate registrations, Office does not issue......................2.48
Domicile:
Complete application..........................................2.32(a)(2)
Definition........................................................2.2(o)
Requirement for representation...................................2.11(a)
Requirement to provide.............................................2.189
TEAS Plus application.........................................2.22(a)(1)
Duration of registration:
Cancellation for failure to file affidavit or declaration of use
under sec. 8.......................................................2.160
Cancellation for failure to file affidavit or declaration of use
under sec. 71.......................................................7.36
Renewal................................................2.181-2.186, 7.41
Term of original registrations and renewals........................2.181
Duty to monitor status:
Applications..................................................2.23(d)(1)
Registrations.................................................2.23(d)(2)
E
Electronic filing with Trademark Trial and Appeal Board........2.126(a),
2.191
Electronically stored information, discovery of............2.120(e), (f)
Emergencies or interruptions in United States Postal Service....2.195(d)
``Entity'', defined...............................................2.2(b)
Entry of judgment, in inter partes proceeding, subject to
establishment of constructive use...............................2.129(d)
Evidence in ex parte appeal after notice of appeal..............2.142(d)
Evidence in inter partes proceeding..........................2.122-2.125
[[Page 379]]
Affidavit and declaration testimony.............................2.123(a)
Allegations of use and specimens in applications and registrations
2.122(b)(2)
Discovery responses.............................................2.120(k)
Exhibits attached to pleadings..................................2.122(c)
Files of applications or registrations which are subject matter of
proceeding...................................................2.122(b)(1)
Official records................................................2.122(e)
Printed publications............................................2.122(e)
Registration owned by any party to proceeding................2.122(d)(2)
Registration pleaded by opposer or petitioner................2.122(d)(1)
Rules of evidence...............................................2.122(a)
Stipulated facts................................................2.123(b)
Testimony by affidavit or declaration...........................2.123(a)
Testimony from other proceedings between parties................2.122(f)
Testimony upon oral examination....................................2.123
Testimony upon written questions...................................2.124
Evidence of distinctiveness.........................................2.41
Examination of applications.........................................2.61
Examination of witnesses in inter partes proceeding.............2.123(e)
Examiner's appearance at ex parte appeal oral hearing........2.142(e)(2)
Examiner's brief on appeal......................................2.142(b)
Examiner's jurisdiction over an application.........................2.84
Exhibits attached to pleadings as evidence......................2.122(c)
Exhibits, testimony, filing and service of.........................2.125
Ex parte appeal. (See Appeal to Trademark Trial and Appeal Board)
Ex parte matter disclosed but not tried in inter partes case.......2.131
Express abandonment of application or mark:
During examination procedure........................................2.68
During inter partes proceeding.....................................2.135
``ExpressMail'' procedure for filing of papers and fees............2.198
Express surrender or cancellation of registration:
During inter partes proceeding.....................................2.134
Requirements for...................................................2.172
Extension of protection of international registration to United
States.........................................................7.25-7.41
Affidavit of continued use or excusable nonuse required after
registration...................................................7.36-7.40
Assignment of.......................................................7.23
Basis for registration...............................2.34(a)(5), 2.35(a)
Certificate of registration..................................2.151, 7.28
Definitions of terms.................................................7.1
Effect of cancellation or expiration of international registration
7.30
Filing date.........................................................7.26
Not registrable on Supplemental Register................2.47(c), 2.75(c)
Part 2 rules applicable..........................................7.25(a)
Part 3 rules do not apply...........................................7.22
Priority claim......................................................7.27
Renewal.............................................................7.41
Registered extension of protection cannot be amended under Section
7 of the Act.....................................................7.25(a)
Replacement of U.S. registration by...........................7.28, 7.29
Trademark Rules of Practice applicable to...........................7.25
Transformation to U.S. application..................................7.31
Extension of time for discovery and testimony...2.120(a), 2.121(a), (c),
(d)
Extension of time for filing opposition...........2.6(a)(22)-(23); 2.102
Extension of time for filing statement of use.......................2.89
Fee for filing request for..............................2.6(a)(22), (23)
Good cause showing, when necessary.......................2.89(b)(4), (d)
[[Page 380]]
Request filed with statement of use..............................2.89(e)
F
Facsimile transmission of certain correspondence to U.S. Patent
and Trademark Office............................................2.195(c)
Facsimile transmission not allowed to Trademark Trial and Appeal
Board...........................................................2.195(c)
Failure by appellant to file brief on ex parte appeal........2.142(b)(1)
Failure by plaintiff to file brief at final hearing in inter
partes proceeding............................................2.128(a)(3)
Failure to answer opposition....................................2.106(a)
Failure to answer petition for cancellation.....................2.114(a)
Failure to comply with discovery order..........................2.120(h)
Failure to comply with order relating to confidential testimony or
exhibits........................................................2.125(f)
Failure to file affidavit of use under sec. 8 or renewal
application for registration in inter partes proceeding.........2.134(b)
Failure to file brief on motion.................................2.127(a)
Failure to offer evidence other than U.S. Patent and Trademark
Office records..................................................2.132(b)
Failure to respond to official action...............................2.65
Failure to take testimony or offer other evidence...............2.132(a)
Failure to timely file a statement of use........................2.88(h)
Fax transmission of certain correspondence to U.S. Patent and
Trademark Office................................................2.195(c)
Federal Rules of Civil Procedure............2.116(a), 2.120(a), 2.122(a)
Federal Rules of Evidence.......................................2.122(a)
Fees and charges..............................2.6, 2.206-2.209, 7.6, 7.7
For application under section 66(a)........................2.6(a)(1)(ii)
For filing an application......................................2.6(a)(1)
For TEAS Plus application..................................2.6(a)(1)(iv)
For TEAS Standard application.............................2.6(a)(1)(iii)
Payable to International Bureau......................................7.7
Fees, insufficient amount submitted:
For application...............................................2.21(a)(5)
For petition for cancellation...................................2.111(d)
For ex parte appeal.............................................2.141(b)
For opposition..................................................2.101(c)
For renewal application.........................................2.183(e)
Fees, payment of..............................2.6, 2.206-2.207, 7.6, 7.7
To International Bureau..............................................7.7
Filing an amendment to allege use...................................2.76
Filing an extension of protection under 66(a).................2.34(a)(5)
Filing an opposition...............................................2.101
Filing and service of trial testimony..............................2.125
Filing date, effective, after amendment of sec. l(b) application
to Supplemental Register.........................................2.75(b)
Filing date of application....................................2.21, 7.26
Filing of confidential submissions...................2.125(f), 2.126-(c)
Filing of submissions electronically with Trademark Trial and
Appeal Board.............................................2.126(a), 2.191
Filing of papers and fees by Priority Mail Express.................2.198
Filing petition for cancellation...................................2.111
Filing requests for extensions of time for filing statement of use
2.89
Filing statement of use after notice of allowance...................2.88
Filing substitute specimens.........................................2.59
Final refusal of application........................................2.64
[[Page 381]]
Filing amendment to allege use during final action response period
2.64(d)
Reconsideration of...............................................2.64(a)
Final hearing, briefs at (inter partes proceeding).................2.128
Foreign applicant, registrant, or party, designation of domestic
representative......................................2.24, 2.119(d), 3.61
Foreign application, priority claim based on............2.34(a)(4), 7.27
Foreign registration:
Application based on, under sec. 44..................2.34(a)(3), 2.47(b)
Copy of...................................................2.34(a)(3)(ii)
Necessary before publication..............................2.34(a)(3)(ii)
Form of amendment to application....................................2.74
Form of submissions to Trademark Trial and Appeal Board............2.126
G
General information and correspondence..................2.190-2.198, 7.4
Goods and/or services identification of:
Additions not permitted..........................................2.71(a)
Amendment of.....................................................2.71(a)
Amendment of, filed with statement of use........................2.88(h)
In affidavit or declaration filed under sec. 8..............2.161 (a)(5)
In affidavit or declaration filed under sec. 71...............7.37(a)(5)
In international application..................................7.11(a)(7)
In written application........................................2.32(a)(6)
Multiple goods or services comprised in single class or multiple
classes..................................2.32(a)(6), 2.34(a)(1)(v), 2.86
Required in amendment to allege use.....................2.76(b)(iv), (c)
Required in request for extension of time to file statement of use
2.89(a)(3), (f)
Required in statement of use..................................2.88(b)(1)
Good cause, showing necessary for extension of time to file
statement of use.........................................2.89(b)(4), (d)
H
Hearing, oral:
At final hearing in inter partes proceeding........................2.129
On appeal to Trademark Trial and Appeal Board...................2.142(e)
On motion in inter partes proceedings.................2.120(j), 2.127(a)
On petition to Director.........................................2.146(f)
I
Identification of goods and/or services. (See Goods and/or services
identification of)
Identification of pending application or registered mark in
correspondence.....................................................2.194
Identification of prior registrations...............................2.36
Incontestability of right to use mark:
Affidavit under sec. 15............................................2.167
Freedom from interference proceeding.............................2.91(b)
Informalities, amendment to correct.................................2.71
Intent-to-use applications under sec. 1(b):
Abandonment for failure to timely file a statement of use........2.65(c)
Amendment to allege use.............................................2.76
Amendments between notice of allowance and statement of use.........2.77
Basis for filing application........................................2.34
Bona fide intention to use mark in commerce necessary......2.34(a)(2)(i)
Certification mark..................................................2.45
[[Page 382]]
Collective mark.....................................................2.44
Dividing............................................................2.87
Drawing required...........................................2.32(c), 2.51
Extensions of time for filing statement of use......................2.89
Filing-date requirements............................................2.21
Notice of allowance..............................................2.81(b)
Requirements for written application....................2.32, 2.34(a)(2)
Revival of application abandoned for failure to respond to a
notice of allowance..............................................2.66(c)
Specimens filed with amendment to allege use or statement of use
2.56, 2.76, 2.88
Statement of use....................................................2.88
When eligible for concurrent use.....................2.42, 2.73, 2.99(g)
When eligible for amendment to Supplemental Register....2.47(d), 2.75(b)
Interlocutory motions, inter partes proceeding.....................2.127
Interference.......................................2.91-2.93, 2.96, 2.98
Adding Party to interference........................................2.98
Burden of proof.....................................................2.96
Conflicting marks, co-pending applications for......................2.83
Declaration of interference.........................................2.91
Declared only on petition to Director............................2.91(a)
Institution of interference.........................................2.93
Issue...............................................................2.96
Marks must otherwise be deemed registrable..........................2.92
Notice of interference..............................................2.93
Preliminary to interference.........................................2.92
Registrations and applications on the Supplemental Register,
registrations under the Act of 1920, and registrations of
incontestable marks not subject to interference..................2.91(b)
Request to divide application during interference.............2.87(c)(1)
International application......................................7.11-7.14
Address for mailing paper.......................................2.190(a)
Cannot be filed by fax..........................................2.195(c)
Certification of....................................................7.13
Claim of color in...................................................7.12
Correspondence, receipt of...........................................7.4
Definitions of terms.................................................7.1
Fees for........................................................7.6, 7.7
Irregularities in...................................................7.14
Must be filed through TEAS or on International Bureau's form.....7.11(a)
Must be in English...................................................7.3
Requirements for....................................................7.11
Subsequent designation..............................................7.21
International Bureau.......7.1, 7.7, 7.11, 7.13, 7.14, 7.21, 7.22, 7.23,
7.24, 7.26, 7.27, 7.30, 7.31, 7.36, 7.41, 11.9
Payment of fees to...................................................7.7
International register, recording changes in. See also
International registration.....................................7.22-7.24
International registration......................................7.1-7.41
Application for. See International application.
Assignment of.......................................................7.23
Cancellation of...............................................7.30, 7.31
Correspondence must be in English....................................7.3
Definitions of terms.................................................7.1
Extension of protection to United States. See Extension of protection of
international registration to United States
Priority claim......................................................7.27
Recording changes in...........................................7.22-7.24
[[Page 383]]
Renewal of..........................................................7.41
Replacement...................................................7.28, 7.29
Restriction on holder's right to dispose of.........................7.24
Subsequent designation..............................................7.21
Inter partes procedure.......................................2.116-2.136
Inter partes proceedings......................................2.91-2.136
Cancellation.................................................2.111-2.115
Concurrent use......................................................2.99
Failure of plaintiff to file brief at final hearing..........2.128(a)(3)
Failure of plaintiff to take testimony.............................2.132
Interference.......................................2.91-2.93, 2.96, 2.98
Opposition...................................................2.101-2.107
Procedure in.................................................2.116-2.136
Interrogatories (discovery).....................................2.120(d)
Motion for an order to compel answer..................2.120(d), 2.120(f)
Numerical limit on..............................................2.120(d)
Timing of.......................................................2.120(a)
Use of answers..................................................2.120(k)
When to file copy of interrogatories and answers thereto with
Trademark Trial and Appeal Board.............................2.120(k)(8)
Interruptions or emergencies in United States Postal Service....2.195(d)
Irregularities in application for international registration. (See
International application, irregularities in)
Issue date of the notice of allowance............................2.81(b)
J
Judgment by default:
Failure by plaintiff to file brief at final hearing..........2.128(a)(3)
Failure to answer cancellation..................................2.114(a)
Failure to answer notice of concurrent use proceeding.........2.99(d)(3)
Failure to answer opposition....................................2.106(a)
Failure by plaintiff to take testimony or offer other evidence.....2.132
Judgment, entry of in inter partes proceeding subject to
establishment of constructive use...............................2.129(d)
Jurisdiction over published applications............................2.84
Amendment after publication of mark..............................2.84(b)
Amendment during inter partes proceeding...........................2.133
Remand to Examiner by Trademark Trial and Appeal Board......2.130, 2.131
L
Lawyers. (See Attorneys)
Letter, separate for each distinct subject of inquiry...........2.193(h)
Letters, address for mailing to U.S. Patent and Trademark Office
2.190
Letters of protest:
Filed before publication.....................................2.149(d)(1)
Filed on or after publication................................2.149(d)(2)
Inclusion in application record............................2.149(h), (i)
Requirements....................................................2.149(f)
Separate submissions for each application.......................2.149(b)
Timeliness of submission........................................2.149(c)
M
Madrid Protocol. (See International registration, international
application)
Mailing, certificate of............................................2.197
Mailing address for correspondence with U.S. Patent and Trademark
Office.............................................................2.190
[[Page 384]]
Marks on Supplemental Register published only upon registration.....2.82
Marks registered under 1905 Act. claiming benefits of 1946 Act
2.153-2.156
Marks under sec. 12(c) not subject to opposition; subject to
cancellation.......................................................2.156
Matters in evidence in inter partes cases..........................2.122
Mistake in registration incurred through fault of applicant........2.175
Mistake in registration incurred through fault of U.S. Patent and
Trademark Office...................................................2.174
Money, payment of..................................2.206-2.209, 7.6, 7.7
Motions in inter partes proceedings:
Briefs on...............................................2.127(a), (e)(1)
Contents........................................................2.127(a)
Electronic filing required......................................2.126(a)
Failure to respond to motion....................................2.127(a)
For a protective order..........................................2.120(g)
For judgment for failure to take testimony.........................2.132
For summary judgment............................................2.127(e)
Interlocutory motions and requests, who may act on..............2.127(c)
Request for reconsideration of decision on motion...............2.127(b)
Suspension pending determination of potentially dispositive motion
2.127(d)
To add application to interference..................................2.98
To compel discovery...................................2.120(d), 2.120(f)
To determine sufficiency of answer or objection to request for
admission.......................................................2.120(i)
To extend discovery period......................................2.120(a)
To extend times for taking testimony upon written questions
2.124(d)(2)
To extend trial periods...............................2.121(a), (c), (d)
To suspend.........................................................2.117
To take oral deposition abroad..................2.120(c)(1), 2.123(a)(2)
To use testimony from another proceeding........................2.122(f)
Unavailable remedies............................................2.127(f)
Multiple class applications....................2.32(a)(6), 2.34(a)(1)(v)
Dividing of.........................................................2.87
Multiple goods or services comprised in single class or multiple
classes.............................................................2.86
Dividing of.........................................................2.87
N
New certificate on change of ownership.............................2.171
Notice by publication, undelivered Office notices..................2.118
Notice of allowance..............................................2.81(b)
Filing statement of use after.......................................2.88
Issue date of....................................................2.81(b)
Notice of appeal to court and civil action.........................2.145
Notice of appeal to Trademark Trial and Appeal Board............2.142(a)
Notice of concurrent use proceeding.........................2.99(c), (d)
Notice of claim of benefits of 1946 Act......................2.153-2.156
Notice of election by appellee to proceed by civil action after
appeal to U.S. Court of Appeals for the Federal Circuit......2.145(b)(2)
Notice of interference..............................................2.93
Notice of publication under sec. 12(c).............................2.155
Notice of reliance on discovery.................................2.120(k)
Notice of reliance on printed publications and official records
2.122(e)
Notice to Trademark Trial and Appeal Board of civil action...2.145(c)(3)
Notice, where address of registrant in cancellation proceeding is
unknown............................................................2.118
[[Page 385]]
Notification of acceptance of or deficiency in amendment to allege
use.........................................................2.76(d), (e)
Notification of acceptance of or deficiency in statement of use
2.88(f), (g)
Notification of filing cancellation................................2.113
Notification of filing opposition..................................2.105
Notification of grant or denial of request for an extension of
time to file a statement of use..................................2.89(g)
Notification of opposition.........................................2.105
O
Oath, declaration in lieu of........................................2.20
Oaths, before whom and when made in testimonial deposition...2.123(e)(5)
Official Gazette contents:
Claim of benefits under sec. 12(c) for marks registered under 1905
Act................................................................2.154
First filed of applications for conflicting marks...................2.83
Marks on Principal Register published for opposition................2.80
Marks on Supplemental Register published when registered............2.82
Official records, reliance on in inter partes proceeding........2.122(e)
Omission of matter from response to Examiner's action............2.65(b)
Opposition to registration of mark on Principal Register:....2.101-2.107
Amendment of opposition............................................2.107
Answer.............................................................2.106
Commencement of opposition......................................2.101(a)
Consolidated oppositions........................................2.104(b)
Contents of opposition.............................................2.104
Corresponds to complaint in a court proceeding..................2.116(c)
Discovery..........................................................2.120
Documents not returnable............................................2.25
Extension of time for filing an opposition.........................2.102
Failure to timely answer........................................2.106(a)
Fee for filing................................................2.6(a)(17)
Filing an opposition...............................................2.101
Insufficient fees...............................................2.101(d)
Notification of opposition.........................................2.105
Procedure, inter partes......................................2.116-2.136
Request to divide application during opposition...............2.87(c)(1)
Suspension of proceedings..........................................2.117
Time for filing opposition......................................2.101(c)
Who may file opposition.........................................2.101(b)
Withdrawal of opposition........................................2.106(c)
Oral argument at final hearing in inter partes proceeding..........2.129
Oral hearing:
Ex parte appeal.................................................2.142(e)
Inter partes proceedings.............2.116(f), 2.120(j), 2.127(a), 2.129
On petition to Director.........................................2.146(f)
Oral promise, stipulation, or understanding........................2.191
Ownership, prior registrations, identification in application.......2.36
P
Payment of money..............................2.6, 2.206-2.209, 7.6, 7.7
Pending application index...........................................2.27
Period for response to Office actions...............................2.62
Personal appearance unnecessary....................................2.191
Persons who may practice before the U.S. Patent and Trademark
Office in trademark cases..........................................11.14
Petition for cancellation....................................2.111-2.115
[[Page 386]]
Amendment of petition..............................................2.115
Answer.............................................................2.114
Commencement of cancellation proceeding.........................2.111(a)
Contents of petition...............................................2.112
Corresponds to complaint in a court proceeding..................2.116(c)
Discovery..........................................................2.120
Failure to timely answer........................................2.114(a)
Fee for filing................................................2.6(a)(16)
Filing petition for cancellation...................................2.111
Insufficient fees...............................................2.111(d)
Notification of cancellation proceeding............................2.113
Procedure, inter partes......................................2.116-2.136
Suspension of proceedings..........................................2.117
Time for filing petition........................................2.111(b)
Who may file petition...........................................2.111(b)
Withdrawal of petition..........................................2.114(c)
Petition for rehearing, reconsideration or modification of decision:
Decision in inter partes proceeding.............................2.129(c)
Decision on ex parte appeal........................................2.144
Decision on interlocutory motion in inter partes proceeding.....2.127(b)
Petition to revive abandoned application............................2.66
Petition to the Director...........................................2.146
Any case not specifically defined and provided for by rules
2.146(a)(4)
Contents of petition............................................2.146(c)
Delegation of authority to act on petitions.....................2.146(h)
Extraordinary situation requiring suspension or waiver of
requirement of rules.........................................2.146(a)(5)
Fee.................................................2.6(a)(15), 2.146(c)
From denial of request for extension of time to file statement of
use..............................................................2.89(g)
From grant or denial of request for extension of time to oppose
2.146(e)(1)
From interlocutory order of Trademark Trial and Appeal Board
2.146(e)(2)
Invoke supervisory authority.................................2.146(a)(3)
Oral hearing on petition........................................2.146(f)
Reconsideration of decision on petition................2.66(e), 2.146(i)
Reconsideration of refusal to accept sec. 8 affidavit or
declaration.....................................................2.165(b)
Refusal of renewal of registration.................................2.186
Relief from repeated formal requirement of Examiner.............2.63(b),
2.146(a)(1)
Review of adverse action on correction, disclaimer, surrender,
etc. of registration...............................................2.176
Stays time in appeal, inter partes proceeding, or reply to Office
action only when stay is specifically requested and granted.....2.146(g)
Subject matter for petitions...............................2.146(a), (b)
Time to file petition......................................2.146(d), (e)
To accept a paper submission.......................................2.147
To accord filing date as of date of deposit as Priority Mail
Express............................................................2.198
Pleading, amendment of......................................2.107, 2.115
Position of parties in inter partes proceedings...........2.96, 2.99(e),
2.116(b)
Postal Service, United States, interruptions or emergencies in
2.195(d)
Post notice of allowance......................................2.88, 2.89
Post publication....................................................2.81
Power of attorney or authorization of other representative....2.17, 2.19
Practice before the U.S. Patent and Trademark Office, individuals
entitled to........................................................11.14
Predecessor in title or related company, use by.....................2.38
Pre-trial conference, inter partes proceeding................2.120(j)(2)
Principal Register..................................................2.46
[[Page 387]]
Amendment to or from Supplemental Register..........................2.75
Printed publications, as evidence in inter partes proceedings...2.122(e)
Prior acts, status of prior registrations..........................2.158
Priority claim based on foreign application.............2.34(a)(4), 7.27
Prior registrations, ownership, identification in application.......2.36
Procedure in inter partes cases..............................2.116-2.136
Production of documents and things, request for (discovery).....2.120(e)
Motion for an order to compel production...................2.120(e), (f)
Numerical limit on..............................................2.120(e)
Place of production.............................................2.120(e)
Timing of.......................................................2.120(a)
Professional conduct of attorneys..........................11.101-11.901
Proof of distinctiveness under sec. 2(f)............................2.41
Proof of service................................................2.119(a)
Protective order:
Access to materials filed under..................................2.27(e)
Form of filing materials under..................................2.126(c)
Standard protective order automatically imposed.................2.116(g)
Relating to discovery...........................................2.120(g)
Relating to testimony...........................................2.125(f)
Sanctions for violation...............................2.120(h), 2.125(f)
Publication and post publication...............................2.80-2.84
Publication in Official Gazette:
Jurisdiction over published applications............................2.84
Of claim of benefits under sec. 12(c) for marks registered under
1905 Act...........................................................2.154
Of first filed of applications for conflicting marks................2.83
Of mark on Principal Register for opposition after approval.........2.80
Of marks on Supplemental Register when registered...................2.82
Publication, notice by, undelivered Office notices to applicant or
registrant in inter partes proceeding..............................2.118
R
Rebuttal testimony......................................2.121(b)(1), (c)
Receipt of papers and fees..............................2.195-2.198, 7.4
Recognition of attorneys or other authorized person..........2.17, 11.14
Reconsideration:
Of affidavit or declaration of use under sec. 8.......2.163(b), 2.165(a)
Of decision after final hearing in inter partes proceeding......2.129(c)
Of decision on ex parte appeal.....................................2.144
Of decision on petition to Director.............................2.146(i)
Of decision on petition to revive................................2.66(e)
Of final action..................................................2.64(b)
Of order or decision on interlocutory motion....................2.127(b)
Records of documents in Assignment Services Division of U.S.
Patent and Trademark Office....................................3.11-3.56
Records and files of the U.S. Patent and Trademark Office....2.27, 2.200
Reexamination of application........................................2.63
Reexamination of application after remand by the Trademark Trial
and Appeal Board.....................................2.130, 2.131, 2.142
Refund of money paid to U.S. Patent and Trademark Office...........2.209
Refusal of affidavit or declaration of use under sec. 8............2.163
Refusal of affidavit or declaration of use under sec. 71............7.39
Refusal of registration.............................................2.61
Refusal of renewal.................................................2.184
Refusal of request for extension of time to file a statement of
use..............................................................2.89(g)
[[Page 388]]
Registered extension of protection. (See Extension of protection of
international registration to United States)
Registrability of marks in plurality of classes (combined
applications).......................................................2.86
Registrant claiming benefits of 1946 Act.....................2.153-2.156
Registration as evidence in inter partes proceeding:
File of registration which is the subject of the proceeding.....2.122(b)
Registration owned by any party to proceeding................2.122(d)(2)
Registration pleaded by opposer or petitioner................2.122(d)(1)
Registration records open to public inspection...................2.27(d)
Registrations, printed copies available............................2.201
Related company or predecessor, use by..............................2.38
Reinstatement:
Of an abandoned application......................................2.64(a)
Deadline.....................................................2.64(a)(1))
Requirements.................................................2.64(a)(2))
Of cancelled or expired registration.............................2.64(b)
Deadline.....................................................2.64(b)(1))
Requirements.................................................2.64(b)(2))
May be construed as petition.....................................2.64(c)
Remand to Examiner:
After decision in inter partes case................................2.131
During appeal from refusal of registration.................2.142(d), (f)
During inter partes case...........................................2.130
Renewal of registration................................2.181-2.186, 7.41
Application for renewal, requirements..............................2.183
Failure to renew registration involved in inter partes proceeding
2.134(b)
Of international registration.......................................7.41
Period in which to file............................................2.182
Refusal of renewal.................................................2.184
Review of Examiner's refusal by Director...........................2.186
Term of original registrations and renewals........................2.181
Replacement...................................................7.28, 7.29
Reply briefs in inter partes proceedings........................2.127(a)
Representation of others before the U.S. Patent and Trademark
Office.............................................................11.14
Representative, domestic or U.S. (See Domestic representative)
Representation, recognition for..............................2.17, 11.14
Representation, requirement for.....................................2.11
Republication of marks registered under prior acts...........2.153-2.156
Request for admissions (discovery). (See Admissions, request for)
Request for Extension of protection of international registration to
United States. (See Extension of protection of international
registration to United States)
Request for extension of time for discovery and testimony. (See
Extension of time for discovery and testimony)
Request for extension of time to file opposition. (See Extension of time
for filing opposition)
Request for extension of time to file statement of use. (See Extension
of time to file statement of use)
Request for information, exhibits, affidavits, declarations, and
additional specimens by Examiner.................................2.61(b)
Request for production (discovery). (See Production of documents and
things, request for)
Request for reconsideration. See Reconsideration.
Request for records................................................2.201
Request for registration......................................2.32(a)(1)
Request to divide an application....................................2.87
[[Page 389]]
Request to divide a registration................................2.171(b)
Requirements for receiving a filing date......................2.21, 7.26
Requirements for written application...........................2.32-2.34
Registration of marks registered under prior acts..................2.158
Response to official action.........................................2.62
Restriction on holder's right to dispose of international
registration........................................................7.24
Request for reinstatement. See Reinstatement.
Review by Director:
For relief from repeated formal requirement by Examiner..........2.63(b)
Of adverse action on correction, disclaimer, surrender, etc. of
registration.......................................................2.176
Of refusal of affidavit or declaration of use under sec. 8.........2.165
Of refusal of affidavit or declaration of use under sec. 71.........7.40
Of refusal of renewal application..................................2.186
Petitions to the Director..........................................2.146
Revival of abandoned applications...................................2.66
Revocation of power of attorney.....................................2.19
Rules of evidence in inter partes cases.........................2.122(a)
Requirement to correspond electronically:
Email address....................................................2.23(b)
Trademark correspondence............................................2.23
Revival of applications abandoned in full or in part due to
unintentional delay:
Deadline.........................................................2.66(a)
For failure to respond to a notice of allowance..................2.66(c)
For failure to respond to an Office action.......................2.66(b)
Reconsideration of denial of petition to revive..................2.66(e)
Rules of practice in trademark cases:
Suspension, petition to Director......................2.146(a)(5), 2.148
Waiver, petition to Director..........................2.146(a)(5), 2.148
S
Sanction for failure to comply with discovery order.............2.120(h)
Sanction for failure to comply with protective order relating to
testimony.......................................................2.125(f)
Saturday, Sunday, or Federal holiday, time for taking action
expiring on.................................................2.195, 2.196
Schedule of classes of goods and services..................2.85, 6.1-6.4
Schedule of time for discovery and trial periods.........2.120(a), 2.121
Sec. 2(f), proof of distinctiveness.................................2.41
Sec. 8 affidavit or declaration of use.......................2.160-2.166
Sec. 44, application based on:
Amendment to change application to different register............2.75(a)
Amendment to description or drawing in mark......................2.72(c)
Basis for filing....................................................2.34
Certification mark...............................................2.45(b)
Collective mark..................................................2.44(b)
Drawing required.................................................2.32(c)
Filing-date requirements............................................2.21
Goods or services identified may not exceed scope of those in
foreign application or registration...........................2.32(a)(6)
Priority claim................................................2.34(a)(4)
Requirements for drawings......................................2.52-2.54
Requirements for written application...........................2.32-2.34
Supplemental Register............................................2.47(b)
Sec. 71 affidavit or declaration of use........................7.36-7.40
Service charge for filing renewal application during grace period
2.6(a)(6), 2.185
Services marks......................................................2.43
[[Page 390]]
Specimens........................................................2.56(c)
Service of copies of testimony.....................................2.125
Service and signing of submissions.................................2.119
Signature and certificate of attorney..............................11.18
Signature of applicant..............................................2.33
Signature of electronically-filed document......................2.193(c)
Single certificate for one mark registered in a plurality of
classes..........................................................2.86(c)
Specimens.....................................................2.56, 2.59
Electronically-filed..........................................2.56(d)(4)
Not evidence on behalf of applicant or registrant in inter partes
proceeding...................................................2.122(b)(2)
Of service mark...............................................2.56(b)(2)
Requirement of filing with affidavit or declaration of use under
sec. 8.......................................................2.161(a)(7)
Requirement of filing with affidavit or declaration of use under
sec. 71.......................................................7.37(a)(7)
Requirement of filing with amendment to allege use............2.76(b)(2)
Requirement of filing with statement of use...........2.88(b)(2), (c)(2)
Support of amendment to application...........................2.71, 2.72
Support of amendment to registration...............................2.173
Statement of use....................................................2.88
Amendments to description or drawing of mark after filing.....2.72(b)(1)
Amendments to dates of use after filing.......................2.71(c)(2)
Extensions of time to file..........................................2.89
Fee for filing.................................................2.6(a)(3)
May not be withdrawn.............................................2.88(g)
Minimum requirements for filing..................................2.88(e)
Requirements for.................................................2.88(b)
Time for filing..................................................2.88(a)
Status of application after ex parte appeal.....................2.142(g)
Status of application and registration on termination of inter
partes proceedings.................................................2.136
Stipulated evidence, inter partes cases.........................2.123(b)
Stipulation to extend discovery and/or trial periods.....2.120(a), 2.121
Subsequent designation..............................................7.21
Address for mailing paper....................................., 2.190(a)
Cannot be filed by fax..........................................2.195(c)
Fees for.................................................7.7, 7.21(b)(8)
Must be filed through TEAS or on International Bureau's form.....7.21(b)
Substitute specimens, filing of.....................................2.59
Summary judgments in inter partes proceedings...................2.127(e)
Sunday, Saturday, or Federal holiday, time for taking action
expiring on.................................................2.195, 2.196
Supplemental Register:
Amendment from Principal Register.......................2.47(c), 2.75(c)
Application requirements............................................2.47
Approval............................................................2.82
Cancellation.......................................................2.111
Certificate of registration.........................................2.82
Intent-to-use applications, when eligible........................2.47(d)
Marks published when registered.....................................2.82
Marks in request for extension of protection of international
registration not registrable on.........................2.47(c), 2.75(c)
Surrender of certificate of registration...........................2.172
During inter partes proceeding.....................................2.134
Suspension of action in application by U.S. Patent and Trademark
Office..............................................................2.67
Suspension from practice before U.S. Patent and Trademark Office
11.11; 11.25
[[Page 391]]
Suspension of later filed conflicting application...................2.83
Suspension of inter partes proceedings by Trademark Trial and Appeal
Board:
For good cause upon motion or stipulation.......................2.117(c)
Pending disposition of motion potentially dispositive of case...2.127(d)
Pending disposition of motion to compel.....................2.120(f)(2)
Pending disposition of motion to test sufficiency of response to
request for admission........................................2.120(i)(2)
Pending termination of civil action or other Board proceeding...2.117(a)
Suspension of rules, Director.........................2.146(a)(5), 2.148
T
TEAS....................2.2(f), 2.6(a)(1), 2.52(c), 2.56(d), 2.193(a)(2)
Application filing fee.........................................2.6(a)(1)
Definition of.....................................................2.2(f)
Drawing...................................................2.52(c), 2.53
Signature..........................................................2.193
Specimen........................................................2.56(d)
TEAS Plus............................................2.6(a)(1)(iv), 2.22
Term of original registrations and renewals........................2.181
Testimony in inter partes cases:
Assignment and resetting of times..................................2.121
By affidavit or declaration.....................................2.123(a)
By oral examination................................................2.123
By written questions...............................................2.124
Failure to take....................................................2.132
Filing and service of testimony................2.123(f), 2.124(f), 2.125
Arrangement, indexing, and form of transcript...2.123(g); 2.125 (c), (e)
Corrections to........................................2.124(f), 2.125(b)
Deposition must be filed........................................2.123(h)
Filing with Trademark Trial and Appeal Board.........2.123(f), 2.124(f),
2.125(d), 2.126(a), 2.191
Service on adverse party.........................2.124(f), 2.125(a), (b)
From another proceeding.........................................2.122(f)
In foreign countries.........................................2.123(a)(2)
Objections to.........................2.123 (e), (i), (j); 2.124(d), (g)
Stipulated testimony............................................2.123(b)
Time:
For amendment.......................................................2.62
For ex parte appeal.............................................2.142(a)
For filing affidavit or declaration to avoid cancellation......2.160(a),
7.36(b)
For filing amendment to allege use...............................2.76(a)
For filing appeal to court or civil action......................2.145(d)
For filing briefs in inter partes proceedings......................2.127
For filing extension of time to oppose.............................2.102
For filing opposition...........................................2.101(c)
For filing petition for cancellation............................2.111(b)
For filing request for extension of time to file statement of use
2.89(a), (b)
For filing request to divide application.........................2.87(c)
For filing statement of use......................................2.88(a)
For response to U.S. Patent and Trademark Office action.............2.62
For taking discovery............................................2.120(a)
For taking testimony...............................................2.121
Transformation......................................................7.31
Translation of assignment...........................................3.26
U
Undelivered Office notices, to applicant or registrant.............2.118
[[Page 392]]
Unprofessional conduct, attorneys..........................11.101-11.901
Unprovided for and extraordinary circumstances, petition to
Director................................................2.146(a)(4), (5)
U.S. Court of Appeals for the Federal Circuit, appeal to...........2.145
Use:
Allegation of use in commerce...........................2.34, 2.76, 2.88
Amendment to allege use in commerce.................................2.76
Bona fide intention to use in commerce........................2.34, 2.89
By predecessor or by related companies..............................2.38
Dates of first use and first use in commerce....2.34(a)(1)(ii) and (iii)
Statement of use....................................................2.88
Use of discovery................................................2.120(k)
V
Verification:
Declaration in lieu of oath or verification.........................2.20
In support of amendments to descriptions or drawings of the mark
2.72
In support of amendments to dates of use.........................2.71(c)
In support of request for extension of time to file statement of
use.................................................................2.89
Of application......................................................2.33
Of electronically-filed document...................................2.193
Required with amendment to allege use....................2.76(b)(1), (g)
Required with statement of use........................2.88(b)(1), (c)(3)
Required with substitute specimens..................................2.59
W
Waiver of rule, petition to Director..................2.146(a)(5), 2.148
Willful false statements, declaration...............................2.20
Withdrawal from employment, practitioners...................2.19, 11.116
Withdrawal of amendment to allege use............................2.76(f)
Withdrawal of application...........................................2.68
Involved in inter partes proceeding................................2.135
Withdrawal of opposition with or without consent................2.106(c)
Withdrawal of cancellation with or without consent..............2.114(c)
Withdrawal of registration by voluntary surrender by registrant:
Involved in cancellation proceeding................................2.134
Requirements for...................................................2.172
Withdrawal of statement of use prohibited........................2.88(f)
Witnesses:
Discovery deposition.......................................2.120(b), (c)
Examination by oral deposition (Testimony).........................2.123
Examination by written questions...................................2.124
Foreign............................................2.120(c), 2.123(a)(2)
Testimony by affidavit or declaration...........................2.123(a)
Written application............................................2.32-2.47
[[Page 393]]
PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE--Table of Contents
PART 10 [RESERVED]
PART 11_REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE--Table of Contents
Subpart A_General Provisions
General Information
Sec.
11.1 Definitions.
11.2 Director of the Office of Enrollment and Discipline.
11.3 Suspension of rules.
11.4 Computing time.
Subpart B_Recognition To Practice Before the USPTO
Patents, Trademarks, and Other Non-Patent Law
11.5 Register of attorneys and agents in patent matters; practice before
the Office.
11.6 Registration of attorneys and agents.
11.7 Requirements for registration.
11.8 Oath and registration fee.
11.9 Limited recognition in patent matters.
11.10 Restrictions on practice in patent matters; former and current
Office employees; government employees.
11.11 Administrative suspension, inactivation, resignation,
reinstatement, and revocation.
11.12-11.13 [Reserved]
11.14 Individuals who may practice before the Office in trademark and
other non-patent matters.
11.15 Refusal to recognize a practitioner.
11.16 Requirements for admission to the USPTO Law School Clinic
Certification Program.
11.17 Requirements for participation in the USPTO Law School Clinic
Certification Program.
11.18 Signature and certificate for correspondence filed in the Office.
Subpart C_Investigations and Disciplinary Proceedings; Jurisdiction,
Sanctions, Investigations, and Proceedings
11.19 Disciplinary jurisdiction; grounds for discipline and for transfer
to disability inactive status.
11.20 Disciplinary sanctions; Transfer to disability inactive status.
11.21 Warnings.
11.22 Disciplinary investigations.
11.23 Committee on Discipline.
11.24 Reciprocal discipline.
11.25 Interim suspension and discipline based upon conviction of
committing a serious crime.
11.26 Settlement.
11.27 Exclusion on consent.
11.28 Incapacitated practitioners in a disciplinary proceeding.
11.29 Reciprocal transfer or initial transfer to disability inactive
status.
11.30-11.31 [Reserved]
11.32 Instituting a disciplinary proceeding.
11.33 [Reserved]
11.34 Complaint.
11.35 Service of complaint.
11.36 Answer to complaint.
11.37 [Reserved]
11.38 Contested case.
11.39 Hearing officer; responsibilities; review of interlocutory orders;
stays.
11.40 Representative for OED Director or respondent.
11.41 Filing of papers.
11.42 Service of papers.
11.43 Motions before a hearing officer.
11.44 Hearings.
11.45 Amendment of pleadings.
11.46-11.48 [Reserved]
11.49 Burden of proof.
11.50 Evidence.
11.51 Depositions.
11.52 Written discovery.
11.53 Proposed findings and conclusions; post-hearing memorandum.
11.54 Initial decision of hearing officer.
11.55 Appeal to the USPTO Director.
11.56 Decision of the USPTO Director.
11.57 Review of final decision of the USPTO Director.
11.58 Duties of disciplined practitioner or practitioner in disability
inactive status.
11.59 Dissemination of disciplinary and other information.
11.60 Petition for reinstatement of disciplined practitioner.
11.61-11.99 [Reserved]
Subpart D_USPTO Rules of Professional Conduct
11.100 [Reserved]
Client-Practitioner Relationship
11.101 Competence.
11.102 Scope of representation and allocation of authority between
client and practitioner.
11.103 Diligence.
11.104 Communication.
11.105 Fees.
[[Page 394]]
11.106 Confidentiality of information.
11.107 Conflict of interest; Current clients.
11.108 Conflict of interest; Current clients; Specific rules.
11.109 Duties to former clients.
11.110 Imputation of conflicts of interest; General rule.
11.111 Former or current Federal Government employees.
11.112 Former judge, arbitrator, mediator or other third-party neutral.
11.113 Organization as client.
11.114 Client with diminished capacity.
11.115 Safekeeping property.
11.116 Declining or terminating representation.
11.117 Sale of law practice.
11.118 Duties to prospective client.
11.119-11.200 [Reserved]
Counselor
11.201 Advisor.
11.202 [Reserved]
11.203 Evaluation for use by third persons.
11.204 Practitioner serving as third-party neutral.
11.205-11.300 [Reserved]
Advocate
11.301 Meritorious claims and contentions.
11.302 Expediting proceedings.
11.303 Candor toward the tribunal.
11.304 Fairness to opposing party and counsel.
11.305 Impartiality and decorum of the tribunal.
11.306 Trial publicity.
11.307 Practitioner as witness.
11.308 [Reserved]
11.309 Advocate in nonadjudicative proceedings.
11.310-11.400 [Reserved]
Transactions With Persons Other Than Clients
11.401 Truthfulness in statements to others.
11.402 Communication with person represented by a practitioner.
11.403 Dealing with unrepresented person.
11.404 Respect for rights of third persons.
11.405-11.500 [Reserved]
Law Firms and Associations
11.501 Responsibilities of partners, managers, and supervisory
practitioners.
11.502 Responsibilities of a subordinate practitioner.
11.503 Responsibilities regarding non-practitioner assistance.
11.504 Professional independence of a practitioner.
11.505 Unauthorized practice of law.
11.506 Restrictions on right to practice.
11.507 Responsibilities regarding law-related services.
11.508-11.700 [Reserved]
Information About Legal Services
11.701 Communications concerning a practitioner's services.
11.702 Communications concerning a practitioner's services: specific
rules.
11.703 Solicitation of clients.
11.704 Communication of fields of practice and specialization.
11.705 Firm names and letterheads.
11.706-11.800 [Reserved]
Maintaining the Integrity of the Profession
11.801 Registration, recognition and disciplinary matters.
11.802 Judicial and legal officials.
11.803 Reporting professional misconduct.
11.804 Misconduct.
11.805-11.900 [Reserved]
11.901 Savings clause.
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2(b)(2), 32, 41;
Sec. 1, Pub. L. 113-227, 128 Stat. 2114.
Source: 69 FR 35452, June 24, 2004, unless otherwise noted.
Subpart A_General Provisions
General Information
Sec.11.1 Definitions.
This part governs solely the practice of patent, trademark, and
other law before the United States Patent and Trademark Office. Nothing
in this part shall be construed to preempt the authority of each State
to regulate the practice of law, except to the extent necessary for the
United States Patent and Trademark Office to accomplish its Federal
objectives. Unless otherwise clear from the context, the following
definitions apply to this part:
Attorney or lawyer means an individual who is an active member in
good standing of the bar of the highest court of any State. A non-lawyer
means a person who is not an attorney or lawyer.
Belief or believes means that the person involved actually supposed
the fact in question to be true. A person's belief may be inferred from
circumstances.
Confirmed in writing, when used in reference to the informed consent
of a person, means informed consent that is given in writing by the
person or a writing that a practitioner promptly transmits to the person
confirming an
[[Page 395]]
oral informed consent. If it is not feasible to obtain or transmit the
writing at the time the person gives informed consent, then the
practitioner must obtain or transmit it within a reasonable time
thereafter.
Conviction or convicted means any confession to a crime; a verdict
or judgment finding a person guilty of a crime; any entered plea,
including nolo contendere or Alford plea, to a crime; or receipt of
deferred adjudication (whether judgment or sentence has been entered or
not) for an accused or pled crime.
Crime means any offense declared to be a felony or misdemeanor by
Federal or State law in the jurisdiction where the act occurs.
Data sheet means a form used to collect the name, address, and
telephone information from individuals recognized to practice before the
Office in patent matters.
Disqualified means any action that prohibits a practitioner from
participating in or appearing before the program or agency, regardless
of how long the prohibition lasts or the specific terminology used.
Federal agency means any authority of the executive branch of the
Government of the United States.
Federal program means any program established by an Act of Congress
or administered by a Federal agency.
Firm or law firm means a practitioner or practitioners in a law
partnership, professional corporation, sole proprietorship or other
association authorized to practice law; or practitioners employed in a
legal services organization or the legal department of a corporation or
other organization.
Fiscal year means the time period from October 1st through the
ensuing September 30th.
Fraud or fraudulent means conduct that involves a misrepresentation
of material fact made with intent to deceive or a state of mind so
reckless respecting consequences as to be the equivalent of intent,
where there is justifiable reliance on the misrepresentation by the
party deceived, inducing the party to act thereon, and where there is
injury to the party deceived resulting from reliance on the
misrepresentation. Fraud also may be established by a purposeful
omission or failure to state a material fact, which omission or failure
to state makes other statements misleading, and where the other elements
of justifiable reliance and injury are established.
Good moral character and reputation means the possession of honesty
and truthfulness, trustworthiness and reliability, and a professional
commitment to the legal process and the administration of justice, as
well as the condition of being regarded as possessing such qualities.
Grievance means a written submission from any source received by the
OED Director that presents possible grounds for discipline of a
specified practitioner.
Informed consent means the agreement by a person to a proposed
course of conduct after the practitioner has communicated adequate
information and explanation about the material risks of and reasonably
available alternatives to the proposed course of conduct.
Knowingly, known, or knows means actual knowledge of the fact in
question. A person's knowledge may be inferred from circumstances.
Law-related services means services that might reasonably be
performed in conjunction with and in substance are related to the
provision of legal services, and that are not prohibited as unauthorized
practice of law when provided by a non-lawyer.
OED means the Office of Enrollment and Discipline.
OED Director means the Director of the Office of Enrollment and
Discipline.
OED Director's representatives means attorneys within the USPTO
Office of General Counsel who act as representatives of the OED
Director.
Office means the United States Patent and Trademark Office.
Partner means a member of a partnership, a shareholder in a law firm
organized as a professional corporation, or a member of an association
authorized to practice law.
Person means an individual, a corporation, an association, a trust,
a partnership, and any other organization or legal entity.
Practitioner means:
[[Page 396]]
(1) An attorney or agent registered to practice before the Office in
patent matters;
(2) An individual authorized under 5 U.S.C. 500(b), or otherwise as
provided by Sec.11.14(a), (b), and (c), to practice before the Office
in trademark matters or other non-patent matters;
(3) An individual authorized to practice before the Office in patent
matters under Sec.11.9(a) or (b); or
(4) An individual authorized to practice before the Office under
Sec.11.16(d).
Proceeding before the Office means an application for patent, an
application for reissue, a reexamination, a protest, a public use
matter, an inter partes patent matter, correction of a patent,
correction of inventorship, an application to register a trademark, an
inter partes trademark matter, an appeal, a petition, and any other
matter that is pending before the Office.
Reasonable or reasonably when used in relation to conduct by a
practitioner means the conduct of a reasonably prudent and competent
practitioner.
Reasonable belief or reasonably believes when used in reference to a
practitioner means that the practitioner believes the matter in question
and that the circumstances are such that the belief is reasonable.
Reasonably should know when used in reference to a practitioner
means that a practitioner of reasonable prudence and competence would
ascertain the matter in question.
Registration means registration to practice before the Office in
patent proceedings.
Roster or register means a list of individuals who have been
registered as either a patent attorney or patent agent.
Screened means the isolation of a practitioner from any
participation in a matter through the timely imposition of procedures
within a firm that are reasonably adequate under the circumstances to
protect information that the isolated practitioner is obligated to
protect under these USPTO Rules of Professional Conduct or other law.
Serious crime means:
(1) Any criminal offense classified as a felony under the laws of
the United States, any state or any foreign country where the crime
occurred, or any criminal offense punishable by death or imprisonment of
more than one year; or
(2) Any crime a necessary element of which, as determined by the
statutory or common law definition of such crime in the jurisdiction
where the crime occurred, includes interference with the administration
of justice, false swearing, misrepresentation, fraud, willful failure to
file income tax returns, deceit, bribery, extortion, misappropriation,
theft, or an attempt or a conspiracy or solicitation of another to
commit a ``serious crime.''
Significant evidence of rehabilitation means satisfactory evidence
that is significantly more probable than not that there will be no
recurrence in the foreseeable future of the practitioner's prior
disability or addiction.
State means any of the 50 states of the United States of America,
the District of Columbia, and any commonwealth or territory of the
United States of America.
Substantial when used in reference to degree or extent means a
material matter of clear and weighty importance.
Suspend or suspension means a temporary debarring from practice
before the Office or other jurisdiction.
Tribunal means the Office, a court, an arbitrator in a binding
arbitration proceeding or a legislative body, administrative agency or
other body acting in an adjudicative capacity. A legislative body,
administrative agency or other body acts in an adjudicative capacity
when a neutral official, after the presentation of evidence or legal
argument by a party or parties, will render a binding legal judgment
directly affecting a party's interests in a particular matter.
United States means the United States of America, and the
territories and possessions the United States of America.
USPTO Director means the Director of the United States Patent and
Trademark Office, or an employee of the Office delegated authority to
act for the Director of the United States Patent and Trademark Office in
matters arising under this part.
Writing or written means a tangible or electronic record of a
communication
[[Page 397]]
or representation, including handwriting, typewriting, printing,
photostating, photography, audio or video recording and electronic
communications. A ``signed'' writing includes an electronic sound,
symbol or process attached to or logically associated with a writing and
executed or adopted by a person with the intent to sign the writing.
[69 FR 35452, June 24, 2004, as amended at 73 FR 47687, Aug. 14, 2008;
77 FR 45251, July 31, 2012; 78 FR 20197, Apr. 3, 2013; 81 FR 33596, May
27, 2016; 86 FR 28452, May 26, 2021; 86 FR 32640, June 22, 2021]
Sec.11.2 Director of the Office of Enrollment and Discipline.
(a) Appointment. The USPTO Director shall appoint a Director of the
Office of Enrollment and Discipline (OED Director). In the event of a
vacancy in the office of the OED Director, the USPTO Director may
designate an employee of the Office to serve as acting OED Director. The
OED Director shall be an active member in good standing of the bar of
the highest court of a State.
(b) Duties. The OED Director shall:
(1) Supervise staff as may be necessary for the performance of the
OED Director's duties.
(2) Receive and act upon applications for registration, prepare and
grade the registration examination, maintain the register provided for
in Sec.11.5, and perform such other duties in connection with
enrollment and recognition of attorneys and agents as may be necessary.
(3) Conduct investigations into the moral character and reputation
of any individual seeking to be registered as an attorney or agent, or
of any individual seeking limited recognition, deny registration or
recognition of individuals failing to demonstrate possession of good
moral character and reputation, and perform such other duties in
connection with enrollment matters and investigations as may be
necessary.
(4) Conduct investigations of matters involving possible grounds for
discipline. Except in matters meriting summary dismissal, no disposition
under Sec.11.22(h) shall be recommended or undertaken by the OED
Director until the subject of the investigation has been afforded an
opportunity to respond to a reasonable inquiry by the OED Director.
(5) With the consent of a panel of three members of the Committee on
Discipline, initiate disciplinary proceedings under Sec.11.32 and
perform such other duties in connection with investigations and
disciplinary proceedings as may be necessary.
(6) Oversee the preliminary screening of information and close
investigations as provided for in Sec.11.22.
(7) [Reserved]
(c) Petition to OED Director regarding enrollment or recognition.
Any petition from any action or requirement of the staff of OED
reporting to the OED Director shall be taken to the OED Director
accompanied by payment of the fee set forth in Sec.1.21(a)(5)(i) of
this chapter. Any such petition not filed within sixty days from the
mailing date of the action or notice from which relief is requested will
be dismissed as untimely. The filing of a petition will neither stay the
period for taking other action which may be running, nor stay other
proceedings. The petitioner may file a single request for
reconsideration of a decision within thirty days of the date of the
decision. Filing a request for reconsideration stays the period for
seeking review of the OED Director's decision until a final decision on
the request for reconsideration is issued.
(d) Review of OED Director's decision regarding enrollment or
recognition. A party dissatisfied with a final decision of the OED
Director regarding enrollment or recognition shall seek review of the
decision upon petition to the USPTO Director accompanied by payment of
the fee set forth in Sec.1.21(a)(5)(ii) of this chapter. By filing
such petition to the USPTO Director, the party waives any right to seek
reconsideration from the OED Director. Any petition not filed within
thirty days after the final decision of the OED Director may be
dismissed as untimely. Briefs or memoranda, if any, in support of the
petition shall accompany the petition. The petition will be decided on
the basis of the record made before the OED Director. The USPTO Director
in deciding the petition will consider no
[[Page 398]]
new evidence. Copies of documents already of record before the OED
Director shall not be submitted with the petition. An oral hearing will
not be granted except when considered necessary by the USPTO Director.
Any request for reconsideration of the decision of the USPTO Director
may be dismissed as untimely if not filed within thirty days after the
date of said decision. Only a decision of the USPTO Director regarding
denial of a petition constitutes a final decision for the purpose of
judicial review.
(e) Petition to USPTO Director in disciplinary matters. A party
dissatisfied with any action or notice of any employee of the Office of
Enrollment and Discipline during or at the conclusion of a disciplinary
investigation shall seek review of the action or notice upon petition to
the OED Director. A petition from any action or notice of the staff
reporting to the OED Director shall be taken to the OED Director. A
party dissatisfied with the OED Director's final decision shall seek
review of the final decision upon petition to the USPTO Director to
invoke the supervisory authority of the USPTO Director in appropriate
circumstances in disciplinary matters. Any petition under this paragraph
must contain a statement of the facts involved and the point or points
to be reviewed and the action requested. Briefs or memoranda, if any, in
support of the petition must accompany the petition. Where facts are to
be proven, the proof in the form of affidavits or declarations (and
exhibits, if any) must accompany the petition. The OED Director may be
directed by the USPTO Director to file a reply to the petition to the
USPTO Director, supplying a copy to the petitioner. An oral hearing on
petition taken to the USPTO Director will not be granted except when
considered necessary by the USPTO Director. The filing of a petition
under this paragraph will not stay an investigation, disciplinary
proceeding, or other proceedings. Any petition under this part not filed
within thirty days of the mailing date of the action or notice from
which relief is requested may be dismissed as untimely. Any request for
reconsideration of the decision of the OED Director or the USPTO
Director may be dismissed as untimely if not filed within thirty days
after the date of said decision. Only a decision of the USPTO Director
regarding denial of a petition constitutes a final decision for the
purpose of judicial review.
[69 FR 35452, June 24, 2004, as amended at 73 FR 47687, Aug. 14, 2008;
78 FR 20198, Apr. 3, 2013; 86 FR 28452, May 26, 2021]
Sec.11.3 Suspension of rules.
(a) In an extraordinary situation, when justice requires, any
requirement of the regulations of this Part which is not a requirement
of statute may be suspended or waived by the USPTO Director or the
designee of the USPTO Director, sua sponte, or on petition by any party,
including the OED Director or the OED Director's representative, subject
to such other requirements as may be imposed.
(b) No petition under this section shall stay a disciplinary
proceeding unless ordered by the USPTO Director or a hearing officer.
[73 FR 47688, Aug. 14, 2008]
Sec.11.4 Computing time.
Computing time. The following rules apply in computing any time
period specified in this part where the period is stated in days or a
longer unit of time:
(a) Exclude the day of the event that triggers the period;
(b) Count every day, including intermediate Saturdays, Sundays, and
legal holidays; and
(c) Include the last day of the period, but if the last day is a
Saturday, Sunday, or legal holiday, the period continues to run until
the end of the next day that is not a Saturday, Sunday, or legal
holiday.
[86 FR 28452, May 26, 2021]
Subpart B_Recognition To Practice Before the USPTO
Patents, Trademarks, and Other Non-Patent Law
Sec.11.5 Register of attorneys and agents in patent matters;
practice before the Office.
(a) Register of attorneys and agents. A register of attorneys and
agents is kept
[[Page 399]]
in the Office on which are entered the names of all individuals
recognized as entitled to represent applicants having prospective or
immediate business before the Office in the preparation and prosecution
of patent applications. Registration in the Office under the provisions
of this part shall entitle the individuals so registered to practice
before the Office only in patent matters.
(b) Practice before the Office. Practice before the Office includes,
but is not limited to, law-related service that comprehends any matter
connected with the presentation to the Office or any of its officers or
employees relating to a client's rights, privileges, duties, or
responsibilities under the laws or regulations administered by the
Office for the grant of a patent or registration of a trademark, or for
enrollment or disciplinary matters. Such presentations include preparing
necessary documents in contemplation of filing the documents with the
Office, corresponding and communicating with the Office, and
representing a client through documents or at interviews, hearings, and
meetings, as well as communicating with and advising a client concerning
matters pending or contemplated to be presented before the Office.
Nothing in this section proscribes a practitioner from employing or
retaining non-practitioner assistants under the supervision of the
practitioner to assist the practitioner in matters pending or
contemplated to be presented before the Office.
(1) Practice before the Office in patent matters. Practice before
the Office in patent matters includes, but is not limited to, preparing
or prosecuting any patent application; consulting with or giving advice
to a client in contemplation of filing a patent application or other
document with the Office; drafting the specification or claims of a
patent application; drafting an amendment or reply to a communication
from the Office that may require written argument to establish the
patentability of a claimed invention; drafting a reply to a
communication from the Office regarding a patent application; and
drafting a communication for a public use, interference, reexamination
proceeding, petition, appeal to or any other proceeding before the
Patent Trial and Appeal Board, or other patent proceeding. Registration
to practice before the Office in patent matters authorizes the
performance of those services that are reasonably necessary and incident
to the preparation and prosecution of patent applications or other
proceeding before the Office involving a patent application or patent in
which the practitioner is authorized to participate. The services
include:
(i) Considering the advisability of relying upon alternative forms
of protection which may be available under state law, and
(ii) Drafting an assignment or causing an assignment to be executed
for the patent owner in contemplation of filing or prosecution of a
patent application for the patent owner, where the practitioner
represents the patent owner after a patent issues in a proceeding before
the Office, and when drafting the assignment the practitioner does no
more than replicate the terms of a previously existing oral or written
obligation of assignment from one person or party to another person or
party.
(2) Practice before the Office in trademark matters. Practice before
the Office in trademark matters includes, but is not limited to,
consulting with or giving advice to a client in contemplation of filing
a trademark application or other document with the Office; preparing or
prosecuting an application for trademark registration; preparing an
amendment that may require written argument to establish the
registrability of the mark; preparing or prosecuting a document for
maintaining, correcting, amending, canceling, surrendering, or otherwise
affecting a registration; and conducting an opposition, cancellation, or
concurrent use proceeding; or conducting an appeal to the Trademark
Trial and Appeal Board.
[73 FR 47688, Aug. 14, 2008, as amended at 77 FR 46629, Aug. 6, 2012; 86
FR 28452, May 26, 2021]
Sec.11.6 Registration of attorneys and agents.
(a) Attorneys. Any citizen of the United States who is an attorney
and who fulfills the requirements of this part may be registered as a
patent attorney to practice before the Office.
[[Page 400]]
When appropriate, any alien who is an attorney, who lawfully resides in
the United States, and who fulfills the requirements of this part may be
registered as a patent attorney to practice before the Office, provided
that such registration is not inconsistent with the terms upon which the
alien was admitted to, and resides in, the United States and further
provided that the alien may remain registered only:
(1) If the alien continues to lawfully reside in the United States
and registration does not become inconsistent with the terms upon which
the alien continues to lawfully reside in the United States, or
(2) If the alien ceases to reside in the United States, the alien is
qualified to be registered under paragraph (c) of this section. See also
Sec.11.9(b).
(b) Agents. Any citizen of the United States who is not an attorney,
and who fulfills the requirements of this part may be registered as a
patent agent to practice before the Office. When appropriate, any alien
who is not an attorney, who lawfully resides in the United States, and
who fulfills the requirements of this part may be registered as a patent
agent to practice before the Office, provided that such registration is
not inconsistent with the terms upon which the alien was admitted to,
and resides in, the United States, and further provided that the alien
may remain registered only:
(1) If the alien continues to lawfully reside in the United States
and registration does not become inconsistent with the terms upon which
the alien continues to lawfully reside in the United States or
(2) If the alien ceases to reside in the United States, the alien is
qualified to be registered under paragraph (c) of this section. See also
Sec.11.9(b).
(c) Foreigners. Any foreigner not a resident of the United States
who shall file proof to the satisfaction of the OED Director that he or
she is registered and in good standing before the patent office of the
country in which he or she resides and practices, and who is possessed
of the qualifications stated in Sec.11.7, may be registered as a
patent agent to practice before the Office for the limited purpose of
presenting and prosecuting patent applications of applicants located in
such country, provided that the patent office of such country allows
substantially reciprocal privileges to those admitted to practice before
the Office. Registration as a patent agent under this paragraph shall
continue only during the period that the conditions specified in this
paragraph obtain. Upon notice by the patent office of such country that
a patent agent registered under this section is no longer registered or
no longer in good standing before the patent office of such country, and
absent a showing of cause why his or her name should not be removed from
the register, the OED Director shall promptly remove the name of the
patent agent from the register and publish the fact of removal. Upon
ceasing to reside in such country, the patent agent registered under
this section is no longer qualified to be registered under this section,
and the OED Director shall promptly remove the name of the patent agent
from the register and publish the fact of removal.
(d) Patent Trial and Appeal Board matters. For action by a person
who is not registered in a proceeding before the Patent Trial and Appeal
Board, see Sec.41.5(a) or Sec.42.10(c) of this title.
[69 FR 35452, June 24, 2004, as amended at 69 FR 50003, Aug. 12, 2004;
77 FR 46629, Aug. 6, 2012]
Sec.11.7 Requirements for registration.
(a) No individual will be registered to practice before the Office
unless he or she has:
(1) Applied to the USPTO Director in writing by completing an
application for registration form supplied by the OED Director and
furnishing all requested information and material; and
(2) Established to the satisfaction of the OED Director that he or
she:
(i) Possesses good moral character and reputation;
(ii) Possesses the legal, scientific, and technical qualifications
necessary for him or her to render applicants valuable service; and
(iii) Is competent to advise and assist patent applicants in the
presentation and prosecution of their applications before the Office.
(b)(1) To enable the OED Director to determine whether an individual
has
[[Page 401]]
the qualifications specified in paragraph (a)(2) of this section, the
individual shall:
(i) File a complete application for registration each time admission
to the registration examination is requested. A complete application for
registration includes:
(A) An application for registration form supplied by the OED
Director wherein all requested information and supporting documents are
furnished,
(B) Payment of the fees required by Sec.1.21(a)(1) of this
chapter;
(C) Satisfactory proof of scientific and technical qualifications,
and
(D) For aliens, provide proof that recognition is not inconsistent
with the terms of their visa or entry into the United States;
(ii) Pass the registration examination, unless the taking and
passing of the examination is waived as provided in paragraph (d) of
this section. Unless examination is waived pursuant to paragraph (d) of
this section, each individual seeking registration must take and pass
the registration examination to enable the OED Director to determine
whether the individual possesses the legal and competence qualifications
specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of this section. An
individual failing the examination may, upon receipt of notice of
failure from OED, reapply for admission to the examination. An
individual failing the examination must wait thirty days after the date
the individual last took the examination before retaking the
examination. An individual reapplying shall:
(A) File a completed application for registration form wherein all
requested information and supporting documents are furnished,
(B) Pay the fees required by Sec.1.21(a)(1) of this subchapter,
and
(C) For aliens, provide proof that recognition is not inconsistent
with the terms of their visa or entry into the United States; and
(iii) Provide satisfactory proof of possession of good moral
character and reputation.
(2) An individual failing the examination may, upon receipt of
notice of failure from OED, reapply for admission to the examination. An
individual failing the examination for the first or second time must
wait 30 days after the date the individual last took the examination
before retaking the examination. An individual failing the examination
for the third or fourth time must wait 90 days after the date the
individual last took the examination before retaking the examination. An
individual may not take the examination more than five times. However,
upon petition under Sec.11.2(c), the OED Director may, at his or her
discretion, waive this limitation upon such conditions as the OED
Director may prescribe. An individual reapplying shall:
(i) File a completed application for registration form including all
requested information and supporting documents not previously provided
to OED,
(ii) Pay the fees required by Sec.1.21(a)(1) of this chapter,
(iii) For aliens, provide proof that registration is not
inconsistent with the terms of their visa or entry into the United
States, and
(iv) Provide satisfactory proof of good moral character and
reputation.
(3) An individual failing to file a complete application for
registration will not be admitted to the examination and will be
notified of the incompleteness. Applications for registration that are
incomplete as originally submitted will be considered only when they
have been completed and received by OED, provided that this occurs
within 60 days of the mailing date of the notice of incompleteness.
Thereafter, a new and complete application for registration must be
filed. Only an individual approved as satisfying the requirements of
paragraph (b)(1)(i) of this section may be admitted to the examination.
(4)(i) A notice of admission shall be sent to those individuals who
have been admitted to the registration examination. This notice shall
specify a certain period of time in which to schedule and take the
examination.
(ii) An individual may request an extension of this period of time
by written request to the OED Director. Such request must be received by
the OED Director prior to the expiration of the
[[Page 402]]
period specified in the notice as extended by any previously granted
extension and must include the fee specified in Sec.1.21(a)(1)(iv).
Upon the granting of the request, the period of time in which the
individual may schedule and take the registration examination shall be
extended by 90 days.
(iii) An individual who does not take the registration examination
within the period of time specified in the notice may not take the
examination without filing a new application for registration, as set
forth in paragraph (b)(1)(i) of this section.
(c) Each individual seeking registration is responsible for updating
all information and answers submitted in or with the application for
registration based upon anything occurring between the date the
application for registration is signed by the individual, and the date
he or she is registered or recognized to practice before the Office in
patent matters. The update shall be filed within thirty days after the
date of the occasion that necessitates the update.
(d) Waiver of the Registration Examination for Former Office
Employees--(1) Former patent examiners who by July 26, 2004, had not
actively served four years in the patent examining corps, and were
serving in the corps at the time of their separation. The OED Director
may waive the taking of a registration examination in the case of any
individual meeting the requirements of paragraph (b)(1)(i)(C) of this
section who is a former patent examiner but by July 26, 2004, had not
served four years in the patent examining corps, if the individual
demonstrates that he or she:
(i) Actively served in the patent examining corps of the Office and
was serving in the corps at the time of separation from the Office;
(ii) Received a certificate of legal competency and negotiation
authority;
(iii) After receiving the certificate of legal competency and
negotiation authority, was rated at least fully successful in each
quality performance element of his or her performance plan for the last
two complete fiscal years as a patent examiner; and
(iv) Was not under an oral or written warning regarding the quality
performance elements at the time of separation from the patent examining
corps.
(2) Former patent examiners who on July 26, 2004, had actively
served four years in the patent examining corps, and were serving in the
corps at the time of their separation. The OED Director may waive the
taking of a registration examination in the case of any individual
meeting the requirements of paragraph (b)(1)(i)(C) of this section who
is a former patent examiner and by July 26, 2004, had served four years
in the patent examining corps, if the individual demonstrates that he or
she:
(i) Actively served for at least four years in the patent examining
corps of the Office by July 26, 2004, and was serving in the corps at
the time of separation from the Office;
(ii) Was rated at least fully successful in each quality performance
element of his or her performance plan for the last two complete fiscal
years as a patent examiner in the Office; and
(iii) Was not under an oral or written warning regarding the quality
performance elements at the time of separation from the patent examining
corps.
(3) Certain former Office employees who were not serving in the
patent examining corps upon their separation from the Office. The OED
Director may waive the taking of a registration examination in the case
of a former Office employee meeting the requirements of paragraph
(b)(1)(i)(C) of this section who, by petition, demonstrates the
necessary legal qualifications to render to patent applicants and others
valuable service and assistance in the preparation and prosecution of
their applications or other business before the Office by showing that
he or she has:
(i) Exhibited comprehensive knowledge of patent law equivalent to
that shown by passing the registration examination as a result of having
been in a position of responsibility in the Office in which he or she:
(A) Provided substantial guidance on patent examination policy,
including the development of rule or procedure changes, patent
examination guidelines, changes to the Manual of Patent Examining
Procedure, training or testing materials for the patent examining corps,
or materials for the registration
[[Page 403]]
examination or continuing legal education; or
(B) Represented the Office in patent matters before Federal courts;
and
(ii) Was rated at least fully successful in each quality performance
element of his or her performance plan for said position for the last
two complete rating periods in the Office and was not under an oral or
written warning regarding such performance elements at the time of
separation from the Office.
(4) To be eligible for consideration for waiver, an individual
formerly employed by the Office within the scope of one of paragraphs
(d)(1), (d)(2) or (d)(3) of this section must file a complete
application for registration and pay the fee required by Sec.
1.21(a)(1)(i) of this subchapter within two years of the individual's
date of separation from the Office. All other individuals formerly
employed by the Office, including former examiners, filing an
application for registration or fee more than two years after separation
from the Office, are required to take and pass the registration
examination. The individual or former examiner must pay the examination
fee required by Sec.1.21(a)(1)(ii) of this subchapter within thirty
days after notice of non-waiver.
(e) Examination results. Notification of the examination results is
final. Within 60 days of the mailing date of a notice of failure, the
individual is entitled to inspect, but not copy, the questions and
answers he or she incorrectly answered. Review will be under
supervision. No notes may be taken during such review. Substantive
review of the answers or questions may not be pursued by petition for
regrade.
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under Sec.11.6(c), in addition to satisfying
the provisions of paragraphs (a) and (b) of this section, and the
provisions of Sec.11.8(b), shall pay the application fee required by
Sec.1.21(a)(1)(i) of this chapter upon filing an application for
registration.
(g) Investigation of good moral character and reputation. (1) Every
individual seeking recognition shall answer all questions in the
application for registration and request(s) for information and evidence
issued by OED; disclose all relevant facts, dates, and information; and
provide verified copies of documents relevant to his or her good moral
character and reputation. An individual who is an attorney shall submit
a certified copy of each of his or her State bar applications and
determinations of character and reputation, if available.
(2)(i) If the OED Director receives information from any source that
reflects adversely on the good moral character or reputation of an
individual seeking registration or recognition, the OED Director shall
conduct an investigation into the good moral character and reputation of
that individual. The investigation will be conducted after the
individual has passed the registration examination, or after the
registration examination has been waived for the individual, as
applicable. An individual failing to timely answer questions or respond
to an inquiry by OED shall be deemed to have withdrawn his or her
application, and shall be required to reapply, pass the examination, and
otherwise satisfy all the requirements of this section. No individual
shall be certified for registration or recognition by the OED Director
until, to the satisfaction of the OED Director, the individual
demonstrates his or her possession of good moral character and
reputation.
(ii) The OED Director, in considering an application for
registration by an attorney, may accept a State bar's determination of
character and reputation as meeting the requirements set forth in
paragraph (a)(2)(i) of this section if, after review, the Office finds
no substantial discrepancy between the information provided with his or
her application for registration and the State bar application and
determination of character and reputation, provided that acceptance is
not inconsistent with other rules and the requirements of 35 U.S.C.
2(b)(2)(D).
(h) Good moral character and reputation. Evidence showing lack of
good moral character and reputation may include, but is not limited to,
conviction of a felony or a misdemeanor identified in paragraph (h)(1)
of this section, drug or alcohol abuse; lack of candor; suspension or
disbarment on ethical grounds from a State bar; and
[[Page 404]]
resignation from a State bar while under investigation.
(1) Conviction of felony or misdemeanor. An individual who has been
convicted of a felony or a misdemeanor involving moral turpitude, breach
of trust, interference with the administration of justice, false
swearing, misrepresentation, fraud, deceit, bribery, extortion,
misappropriation, theft, or conspiracy to commit any felony or
misdemeanor, is presumed not to be of good moral character and
reputation in the absence of a pardon or a satisfactory showing of
reform and rehabilitation, and shall file with his or her application
for registration the fees required by Sec.1.21(a)(1)(ii) and (a)(10)
of this subchapter. The OED Director shall determine whether individuals
convicted of said felony or misdemeanor provided satisfactory proof of
reform and rehabilitation.
(i) An individual who has been convicted of a felony or a
misdemeanor identified in paragraph (h)(1) of this section shall not be
eligible to apply for registration during the time of any sentence
(including confinement or commitment to imprisonment), deferred
adjudication, and period of probation or parole as a result of the
conviction, and for a period of two years after the date of completion
of the sentence, deferred adjudication, and period of probation or
parole, whichever is later.
(ii) The following presumptions apply to the determination of good
moral character and reputation of an individual convicted of said felony
or misdemeanor:
(A) The court record or docket entry of conviction is conclusive
evidence of guilt in the absence of a pardon or a satisfactory showing
of reform or rehabilitation; and
(B) An individual convicted of a felony or any misdemeanor
identified in paragraph (h)(1) of this section is conclusively deemed
not to have good moral character and reputation, and shall not be
eligible to apply for registration for a period of two years after
completion of the sentence, deferred adjudication, and period of
probation or parole, whichever is later.
(iii) The individual, upon applying for registration, shall provide
satisfactory evidence that he or she is of good moral character and
reputation.
(iv) Upon proof that a conviction has been set aside or reversed,
the individual shall be eligible to file a complete application for
registration and the fee required by Sec.1.21(a)(1)(ii) of this
subchapter and, upon passing the registration examination, have the OED
Director determine, in accordance with paragraph (h)(1) of this section,
whether, absent the conviction, the individual possesses good moral
character and reputation.
(2) Good moral character and reputation involving drug or alcohol
abuse. An individual's record is reviewed as a whole to see if there is
a drug or alcohol abuse issue. An individual appearing to abuse drugs or
alcohol may be asked to undergo an evaluation, at the individual's
expense, by a qualified professional approved by the OED Director. In
instances where, before an investigation commences, there is evidence of
a present abuse or an individual has not established a record of
recovery, the OED Director may request the individual to withdraw his or
her application, and require the individual to satisfactorily
demonstrate that he or she is complying with treatment and undergoing
recovery.
(3) Moral character and reputation involving lack of candor. An
individual's lack of candor in disclosing facts bearing on or relevant
to issues concerning good moral character and reputation when completing
the application or any time thereafter may be found to be cause to deny
registration on moral character and reputation grounds.
(4) Moral character and reputation involving suspension, disbarment,
or resignation from a profession. (i) An individual who has been
disbarred or suspended from practice of law or other profession, or has
resigned in lieu of a disciplinary proceeding (excluded or disbarred on
consent) shall be ineligible to apply for registration as follows:
(A) An individual who has been disbarred from practice of law or
other profession, or has resigned in lieu of a disciplinary proceeding
(excluded or
[[Page 405]]
disbarred on consent) shall be ineligible to apply for registration for
a period of five years from the date of disbarment or resignation.
(B) An individual who has been suspended on ethical grounds from the
practice of law or other profession shall be ineligible to apply for
registration until expiration of the period of suspension.
(C) An individual who was not only disbarred, suspended or resigned
in lieu of a disciplinary proceeding, but also convicted in a court of a
felony, or of a crime involving moral turpitude or breach of trust,
shall be ineligible to apply for registration until the conditions in
paragraphs (h)(1) and (h)(4) of this section are fully satisfied.
(ii) An individual who has been disbarred or suspended, or who
resigned in lieu of a disciplinary proceeding shall file an application
for registration and the fees required by Sec.1.21(a)(1)(ii) and
(a)(10) of this subchapter; provide a full and complete copy of the
proceedings that led to the disbarment, suspension, or resignation; and
provide satisfactory proof that he or she possesses good moral character
and reputation. The following presumptions shall govern the
determination of good moral character and reputation of an individual
who has been licensed to practice law or other profession in any
jurisdiction and has been disbarred, suspended on ethical grounds, or
allowed to resign in lieu of discipline, in that jurisdiction:
(A) A copy of the record resulting in disbarment, suspension or
resignation is prima facie evidence of the matters contained in the
record, and the imposition of disbarment or suspension, or the
acceptance of the resignation of the individual shall be deemed
conclusive that the individual has committed professional misconduct.
(B) The individual is ineligible for registration and is deemed not
to have good moral character and reputation during the period of the
imposed discipline.
(iii) The only defenses available with regard to an underlying
disciplinary matter resulting in disbarment, suspension on ethical
grounds, or resignation in lieu of a disciplinary proceeding are set out
below, and must be shown to the satisfaction of the OED Director:
(A) The procedure in the disciplinary court was so lacking in notice
or opportunity to be heard as to constitute a deprivation of due
process;
(B) There was such infirmity of proof establishing the misconduct as
to give rise to the clear conviction that the Office could not,
consistently with its duty, accept as final the conclusion on that
subject; or
(C) The finding of lack of good moral character and reputation by
the Office would result in grave injustice.
(i) Factors that may be taken into consideration when evaluating
rehabilitation of an individual seeking a moral character and reputation
determination. The factors enumerated below are guidelines to assist the
OED Director in determining whether an individual has demonstrated
rehabilitation from an act of misconduct or moral turpitude. The factors
include:
(1) The nature of the act of misconduct, including whether it
involved moral turpitude, whether there were aggravating or mitigating
circumstances, and whether the activity was an isolated event or part of
a pattern;
(2) The age and education of the individual at the time of the
misconduct and the age and education of the individual at the present
time;
(3) The length of time that has passed between the misconduct and
the present, absent any involvement in any further acts of moral
turpitude, the amount of time and the extent of rehabilitation being
dependent upon the nature and seriousness of the act of misconduct under
consideration;
(4) Restitution by the individual to any person who suffered
monetary losses through acts or omissions of the individual;
(5) Expungement of a conviction;
(6) Successful completion or early discharge from probation or
parole;
(7) Abstinence from the use of controlled substances or alcohol for
not less than two years if the specific misconduct was attributable in
part to the use of a controlled substance or alcohol, where abstinence
may be demonstrated by, but is not necessarily limited to, enrolling in
and complying
[[Page 406]]
with a self-help or professional treatment program;
(8) If the specific misconduct was attributable in part to a
medically recognized mental disease, disorder or illness, proof that the
individual sought professional assistance, and complied with the
treatment program prescribed by the professional, and submitted letters
from the treating psychiatrist/psychologist verifying that the medically
recognized mental disease, disorder or illness will not impede the
individual's ability to competently practice before the Office;
(9) Payment of the fine imposed in connection with any criminal
conviction;
(10) Correction of behavior responsible in some degree for the
misconduct;
(11) Significant and conscientious involvement in programs designed
to provide social benefits or to ameliorate social problems; and
(12) Change in attitude from that which existed at the time of the
act of misconduct in question as evidenced by any or all of the
following:
(i) Statements of the individual;
(ii) Statements from persons familiar with the individual's previous
misconduct and with subsequent attitudes and behavioral patterns;
(iii) Statements from probation or parole officers or law
enforcement officials as to the individual's social adjustments; and
(iv) Statements from persons competent to testify with regard to
neuropsychiatry or emotional disturbances.
(j) Notice to Show Cause. The OED Director shall inquire into the
good moral character and reputation of an individual seeking
registration, providing the individual with the opportunity to create a
record on which a decision is made. If, following inquiry and
consideration of the record, the OED Director is of the opinion that the
individual seeking registration has not satisfactorily established that
he or she possesses good moral character and reputation, the OED
Director shall issue to the individual a notice to show cause why the
individual's application for registration should not be denied.
(1) The individual shall be given no less than ten days from the
date of the notice to reply. The notice shall be given by certified mail
at the address appearing on the application if the address is in the
United States, and by any other reasonable means if the address is
outside the United States.
(2) Following receipt of the individual's response, or in the
absence of a response, the OED Director shall consider the individual's
response, if any, and the record, and determine whether, in the OED
Director's opinion, the individual has sustained his or her burden of
satisfactorily demonstrating that he or she possesses good moral
character and reputation.
(k) Reapplication for registration. An individual who has been
refused registration for lack of good moral character or reputation may
reapply for registration two years after the date of the decision,
unless a shorter period is otherwise ordered by the USPTO Director. An
individual, who has been notified that he or she is under investigation
for good moral character and reputation may elect to withdraw his or her
application for registration, and may reapply for registration two years
after the date of withdrawal. Upon reapplication for registration, the
individual shall pay the fees required by Sec.1.21(a)(1)(ii) and
(a)(10) of this subchapter, and has the burden of showing to the
satisfaction of the OED Director his or her possession of good moral
character and reputation as prescribed in paragraph (b) of this section.
Upon reapplication for registration, the individual also shall complete
successfully the examination prescribed in paragraph (b) of this
section, even though the individual has previously passed a registration
examination.
(l) Transfer of status from agent to attorney. An agent registered
under Sec.11.6(b) may request registration as an attorney under Sec.
11.6(a). The agent shall demonstrate his or her good standing as an
attorney and pay the fee required by Sec.1.21(a)(2)(iii) of this
chapter.
[69 FR 35452, June 24, 2004, as amended at 86 FR 28453, May 26, 2021]
[[Page 407]]
Sec.11.8 Oath and registration fee.
(a) After an individual passes the examination, or the examination
is waived, the OED Director shall promptly publish a solicitation for
information concerning the individual's good moral character and
reputation. The solicitation shall include the individual's name, and
business or communication postal address.
(b) An individual shall not be registered as an attorney under Sec.
11.6(a), registered as an agent under Sec.11.6(b) or (c), or granted
limited recognition under Sec.11.9(b) unless within two years of the
mailing date of a notice of passing registration examination or of
waiver of the examination the individual files with the OED Director a
completed Data Sheet, an oath or declaration prescribed by the USPTO
Director, and the registration fee set forth in Sec.1.21(a)(2) of this
subchapter. An individual seeking registration as an attorney under
Sec.11.6(a) must provide a certificate of good standing of the bar of
the highest court of a State that is no more than six months old.
(c) An individual who does not comply with the requirements of
paragraph (b) of this section within the two-year period will be
required to retake the registration examination.
(d) [Reserved]
[69 FR 35452, June 24, 2004, as amended at 73 FR 67757, Nov. 17, 2008;
78 FR 20198, Apr. 3, 2013]
Sec.11.9 Limited recognition in patent matters.
(a) Any individual not registered under Sec.11.6 may, upon a
showing of circumstances that render it necessary or justifiable and
that the individual is of good moral character and reputation, be given
limited recognition by the OED Director to prosecute as attorney or
agent a specified patent application or specified patent applications.
Limited recognition under this paragraph shall not extend further than
the application or applications specified. Limited recognition shall not
be granted to individuals who have passed the examination or to those
for whom the examination has been waived while such individual's
application for registration to practice before the Office in patent
matters is pending.
(b) A nonimmigrant alien residing in the United States and
fulfilling the provisions of paragraphs (d) and (e) of this section may
be granted limited recognition if the nonimmigrant alien is authorized
by the United States Government to be employed or trained in the United
States in the capacity of representing a patent applicant by presenting
or prosecuting a patent application. Limited recognition shall be
granted for a period consistent with the terms of authorized employment
or training. Limited recognition shall not be granted or extended to a
non-United States citizen residing abroad. If granted, limited
recognition shall automatically expire upon the nonimmigrant alien's
departure from the United States.
(c) An individual not registered under Sec.11.6 may, if appointed
by an applicant, prosecute an international patent application only
before the United States International Searching Authority and the
United States International Preliminary Examining Authority, provided
that the individual has the right to practice before the national office
with which the international application is filed as provided in PCT
Art. 49, Rule 90 and Sec.1.455 of this subchapter, or before the
International Bureau when the USPTO is acting as Receiving Office
pursuant to PCT Rules 83.1 bis and 90.1.
(d) No individual will be granted limited recognition to practice
before the Office under paragraph (b) of this section unless he or she
has:
(1) Applied to the USPTO Director in writing by completing an
application form supplied by the OED Director and furnishing all
requested information and material; and
(2) Established to the satisfaction of the OED Director that he or
she:
(i) Possesses good moral character and reputation;
(ii) Possesses the legal, scientific, and technical qualifications
necessary for him or her to render applicants valuable service; and
(iii) Is competent to advise and assist patent applicants in the
presentation and prosecution of their applications before the Office.
[[Page 408]]
(e)(1) To enable the OED Director to determine whether an individual
has the qualifications specified in paragraph (d)(2) of this section,
the individual shall:
(i) File a complete application for limited recognition each time
admission to the registration examination is requested. A complete
application for limited recognition includes:
(A) An application for limited recognition form supplied by the OED
Director wherein all requested information and supporting documents are
furnished;
(B) Payment of the fees required by Sec.1.21(a)(1) of this
chapter;
(C) Satisfactory proof of scientific and technical qualifications;
and
(D) Satisfactory proof that the terms of the individual's
immigration status or entry into the United States authorize employment
or training in the preparation and prosecution of patents for others;
and
(ii) Pass the registration examination. Each individual seeking
limited recognition under this section must take and pass the
registration examination to enable the OED Director to determine whether
the individual possesses the legal and competence qualifications
specified in paragraphs (d)(2)(ii) and (d)(2)(iii) of this section.
(2) An individual failing the examination may, upon receipt of
notice of failure from OED, reapply for admission to the examination. An
individual failing the examination for the first or second time must
wait 30 days after the date the individual last took the examination
before retaking the examination. An individual failing the examination
for the third or fourth time must wait 90 days after the date the
individual last took the examination before retaking the examination. An
individual may not take the examination more than five times. However,
upon petition under Sec.11.2(c), the OED Director may, at his or her
discretion, waive this limitation upon such conditions as the OED
Director may prescribe. An individual reapplying shall:
(i) File a complete application for limited recognition form,
including all requested information and supporting documents not
previously provided to OED;
(ii) Pay the application fee required by Sec.1.21(a)(1) of this
chapter;
(iii) Provide satisfactory proof that the terms of the individual's
immigration status or entry into the United States authorize employment
or training in the preparation and prosecution of patents for others;
and
(iv) Provide satisfactory proof of good moral character and
reputation.
(3) An individual failing to file a complete application will not be
admitted to the examination and will be notified of such deficiency.
Applications for limited recognition that are incomplete will be
considered only when the deficiency has been cured, provided that this
occurs within 60 days of the mailing date of the notice of deficiency.
Thereafter, a new and complete application for limited recognition must
be filed. An individual seeking limited recognition under paragraph (b)
of this section must satisfy the requirements of paragraph (e)(1)(i) of
this section to be admitted to the examination.
(4)(i) A notice of admission shall be sent to those individuals who
have been admitted to the registration examination. This notice shall
specify a certain period of time in which to schedule and take the
examination.
(ii) An individual may request an extension of this period of time
by written request to the OED Director. Such request must be received by
the OED Director prior to the expiration of the period specified in the
notice, as extended by any previously granted extension, and must
include the fee specified in Sec.1.21(a)(1)(iv). Upon the granting of
the request, the period of time in which the individual may schedule and
take the examination shall be extended by 90 days.
(iii) An individual who does not take the examination within the
period of time specified in the notice may not take the examination
without filing a new application for limited recognition as set forth in
paragraph (e)(1)(i) of this section.
(f) Applications for reinstatement of limited recognition. (1) A
person whose grant of limited recognition expired less than five years
before the application for reinstatement may be reinstated provided the
person:
[[Page 409]]
(i) Files a complete application that includes:
(A) A request for reinstatement with the fee required by Sec.
1.21(a)(9)(ii); and
(B) Satisfactory proof that the terms of the individual's
immigration status or entry into the United States authorize employment
or training in the preparation and prosecution of patents for others;
and
(ii) Provides satisfactory proof of good moral character and
reputation.
(2) Persons whose grant of limited recognition expired five years or
more before filing a complete application for reinstatement must comply
with paragraph (f)(1) of this section and provide objective evidence
that they continue to possess the necessary legal qualifications to
render applicants valuable service to patent applicants.
[69 FR 35452, June 24, 2004, as amended at 78 FR 20198, Apr. 3, 2013; 86
FR 28453, May 26, 2021]
Sec.11.10 Restrictions on practice in patent matters; former and
current Office employees; government employees.
(a) Only practitioners registered under Sec.11.6; individuals
given limited recognition under Sec.11.9(a) or (b) or Sec.11.16; or
individuals admitted pro hac vice as provided in Sec.41.5(a) or
42.10(c) of this chapter are permitted to represent others before the
Office in patent matters.
(b) Post employment agreement of former Office employee. No
individual who has served in the patent examining corps or elsewhere in
the Office may practice before the Office after termination of his or
her service, unless he or she signs a written undertaking agreeing:
(1) To not knowingly act as agent or attorney for or otherwise
represent any other person:
(i) Before the Office,
(ii) In connection with any particular patent or patent application,
(iii) In which said employee participated personally and
substantially as an employee of the Office; and
(2) To not knowingly act within two years after terminating
employment by the Office as agent or attorney for, or otherwise
represent any other person:
(i) Before the Office,
(ii) In connection with any particular patent or patent application,
(iii) If such patent or patent application was pending under the
employee's official responsibility as an officer or employee within a
period of one year prior to the termination of such responsibility.
[86 FR 28454, May 26, 2021]
Sec.11.11 Administrative suspension, inactivation, resignation,
reinstatement, and revocation.
(a) Contact information. (1) A registered practitioner, or person
granted limited recognition under Sec.11.9(b), must notify the OED
Director of the postal address for their office, at least one and up to
three email addresses where they receive email, and a business telephone
number, as well as every change to each of said addresses and telephone
number within thirty days of the date of the change. A registered
practitioner, or person granted limited recognition under Sec.11.9(b),
shall, in addition to any notice of change of address and telephone
number filed in individual patent applications, separately file written
notice of the change of address or telephone number with the OED
Director. A registered practitioner, or person granted limited
recognition under Sec.11.9(b), who is an attorney in good standing
with the bar of the highest court of one or more states shall provide
the OED Director with the identification number associated with each bar
membership. The OED Director shall publish a list containing the name,
postal business addresses, business telephone number, registration
number or limited recognition number, and registration status as an
attorney or agent of each registered practitioner, or person granted
limited recognition under Sec.11.9(b), recognized to practice before
the Office in patent matters. The OED Director may also publish the
continuing legal education certification status of each registered
practitioner, or person granted limited recognition under Sec.11.9(b).
(2) Biennially, registered practitioners and persons granted limited
recognition may be required to file a registration statement with the
OED Director for the purpose of
[[Page 410]]
ascertaining whether such practitioner desires to remain in an active
status. Any registered practitioner, or person granted limited
recognition under Sec.11.9(b), failing to file the registration
statement or give any information requested by the OED Director within a
time limit specified shall be subject to administrative suspension under
paragraph (b) of this section.
(3)(i) A registered practitioner, or person granted limited
recognition under Sec.11.9(b), who has completed, in the past 24
months, five hours of continuing legal education credits in patent law
and practice and one hour of continuing legal education credit in
ethics, may certify such completion to the OED Director.
(ii) A registered practitioner, or person granted limited
recognition under Sec.11.9(b), may earn up to two of the five hours of
continuing legal education credit in patent law and practice by
providing patent pro bono legal services through the USPTO Patent Pro
Bono Program. One hour of continuing legal education credit in patent
law and practice may be earned for every three hours of patent pro bono
legal service.
(b) Administrative suspension. (1) Whenever it appears that a
registered practitioner, or person granted limited recognition under
Sec.11.9(b), has failed to comply with paragraph (a)(2) of this
section, the OED Director shall publish and send a notice to the
registered practitioner, or person granted limited recognition, advising
of the noncompliance, the consequence of being administratively
suspended set forth in paragraph (b)(6) of this section if noncompliance
is not timely remedied, and the requirements for reinstatement under
paragraph (f) of this section. The notice shall be published and sent to
the registered practitioner, or person granted limited recognition, by
mail to the last postal address furnished under paragraph (a) of this
section or by email addressed to the last email address furnished under
paragraph (a) of this section. The notice shall demand compliance and
payment of a delinquency fee set forth in Sec.1.21(a)(9)(i) of this
chapter within 60 days after the date of such notice.
(2) In the event a practitioner fails to comply with the
requirements specified in a notice provided pursuant to paragraph (b)(1)
of this section within the time allowed, the OED Director shall publish
and send to the practitioner a notice to show cause why the practitioner
should not be administratively suspended. Such notice shall be sent in
the same manner as set forth in paragraph (b)(1) of this section. The
OED Director shall file a copy of the notice to show cause with the
USPTO Director.
(3) A practitioner to whom a notice to show cause under this section
has been issued shall be allowed 30 days from the date of the notice to
show cause to file a response with the USPTO Director. The response
should address any factual and legal bases why the practitioner should
not be administratively suspended. The practitioner shall serve the OED
Director with a copy of the response at the time it is filed with the
USPTO Director. Within 10 days of receiving a copy of the response, the
OED Director may file a reply with the USPTO Director. A copy of the
reply by the OED Director shall be sent to the practitioner at the
practitioner's address of record. If the USPTO Director determines that
there are no genuine issues of material fact regarding the Office's
compliance with the notice requirements under this section or the
failure of the practitioner to pay the requisite fees, the USPTO
Director shall enter an order administratively suspending the
practitioner. Otherwise, the USPTO Director shall enter an appropriate
order dismissing the notice to show cause. Any request for
reconsideration of the USPTO Director's decision must be filed within 20
days after the date such decision is rendered by the USPTO Director.
Nothing herein shall permit an administratively suspended practitioner
to seek a stay of the suspension during the pendency of any review of
the USPTO Director's final decision. If, prior to the USPTO Director
entering an order under this section, the OED Director determines that a
practitioner has complied with requirements specified in the notice to
show cause, the OED Director may withdraw the notice to show cause, and
the practitioner will not be administratively suspended.
(4) [Reserved]
[[Page 411]]
(5) A practitioner is subject to investigation and discipline for
his or her conduct prior to, during, or after the period he or she was
administratively suspended.
(6) A practitioner is prohibited from practicing before the Office
in patent matters while administratively suspended. A practitioner who
knows he or she has been administratively suspended is subject to
discipline for failing to comply with the provisions of this paragraph
and shall comply with the provisions of Sec.11.116.
(7) An administratively suspended practitioner may request
reinstatement by complying with paragraph (f)(1) of this section.
(c) Administrative inactivation. (1) Any registered practitioner who
shall become employed by the Office shall comply with Sec.11.116 for
withdrawal from all patent, trademark, and other non-patent matters
wherein he or she represents an applicant or other person, and notify
the OED Director in writing of said employment on the first day of said
employment. The name of any registered practitioner employed by the
Office shall be endorsed on the register as administratively inactive.
Upon separation from the Office, an administratively inactive
practitioner may request reactivation by complying with paragraph (f)(2)
of this section.
(2) Any registered practitioner who is a judge of a court of record,
full-time court commissioner, U.S. bankruptcy judge, U.S. magistrate
judge, or a retired judge who is eligible for temporary judicial
assignment and is not engaged in the practice of law may request, in
writing, that his or her name be endorsed on the register as
administratively inactive. Upon acceptance of the request, the OED
Director shall endorse the name of the practitioner as administratively
inactive. Following separation from the bench, the practitioner may
request reactivation by complying with paragraph (f)(2) of this section.
(3) An administratively inactive practitioner remains subject to the
provisions of the USPTO Rules of Professional Conduct and to proceedings
and sanctions under Sec. Sec.11.19 through 11.58 for conduct that
violates a provision of the USPTO Rules of Professional Conduct prior to
or during such administrative inactivity.
(d) Voluntary inactivation. (1) Any registered practitioner may
voluntarily enter inactive status by filing a request, in writing, that
his or her name be endorsed on the roster as voluntarily inactive. Upon
acceptance of the request, the OED Director shall endorse the name as
voluntarily inactive.
(2) [Reserved]
(3) A registered practitioner who seeks or enters into voluntary
inactive status is subject to investigation and discipline for his or
her conduct prior to, during, or after the period of his or her
inactivation.
(4) [Reserved]
(5) A registered practitioner in voluntary inactive status is
prohibited from practicing before the Office in patent cases while in
voluntary inactive status. A registered practitioner in voluntary
inactive status will be subject to discipline for failing to comply with
the provisions of this paragraph. Upon acceptance of the request for
voluntary inactive status, the practitioner must comply with the
provisions of Sec.11.116.
(6) Any registered practitioner whose name has been endorsed as
voluntarily inactive pursuant to paragraph (d)(1) of this section and is
not under investigation and not subject to a disciplinary proceeding may
be restored to active status on the register as may be appropriate,
provided that the practitioner files a written request for restoration,
a completed application for registration on a form supplied by the OED
Director furnishing all requested information and material, including
information and material pertaining to the practitioner's moral
character and reputation under Sec.11.7(a)(2)(i) during the period of
inactivation, a declaration or affidavit attesting to the fact that the
practitioner has read the most recent revisions of the patent laws and
the rules of practice before the Office, and pays the fees set forth in
Sec.1.21(a)(7)(iii) and (iv) of this subchapter.
(e) Resignation. A registered practitioner or a practitioner
recognized under Sec.11.14(c) may request to resign by notifying the
OED Director in writing of such intent, unless such practitioner is
under investigation under
[[Page 412]]
Sec.11.22 for a possible violation of the USPTO Rules of Professional
Conduct, is a practitioner against whom probable cause has been found by
a panel of the Committee on Discipline under Sec.11.23(b), or is a
respondent in a pending proceeding instituted under Sec.11.24, Sec.
11.25, or Sec.11.29. Upon acceptance in writing by the OED Director of
such request, that practitioner shall no longer be eligible to practice
before the Office in patent matters but shall continue to file a change
of address for five years thereafter in order that he or she may be
located in the event information regarding the practitioner's conduct
comes to the attention of the OED Director or any grievance is made
about his or her conduct while he or she engaged in practice before the
Office. The name of any practitioner whose resignation is accepted shall
be endorsed as resigned, and notice thereof published in the Official
Gazette. Upon acceptance of the resignation by the OED Director, the
practitioner must comply with the provisions of Sec.11.116. A
practitioner is subject to investigation and discipline for his or her
conduct that occurred prior to, during, or after the period of his or
her resignation.
(f) Administrative reinstatement. (1)(i) Any administratively
suspended registered practitioner, or person granted limited recognition
under Sec.11.9(b), may be reinstated provided the practitioner:
(A) Is not the subject of a disciplinary investigation or a party to
a disciplinary proceeding;
(B) Has applied for reinstatement on an application form supplied by
the OED Director;
(C) Has demonstrated good moral character and reputation and
competence in advising and assisting patent applicants in the
presentation and prosecution of their applications before the Office;
(D) Has submitted a declaration or affidavit attesting to the fact
that the practitioner has read the most recent revisions of the patent
laws and the rules of practice before the Office;
(E) Has paid the fees set forth in Sec.1.21(a)(9)(ii) of this
chapter; and
(F) Has paid all applicable delinquency fees as set forth in Sec.
1.21(a)(9)(i) of this chapter.
(ii) Any administratively suspended registered practitioner, or
person granted limited recognition, who applies for reinstatement more
than five years after the effective date of the administrative
suspension, additionally shall be required to file a petition to the OED
Director requesting reinstatement and providing objective evidence that
they continue to possess the necessary legal qualifications to render
valuable service to patent applicants.
(2)(i) A practitioner who has been administratively inactivated
pursuant to paragraph (c) of this section may be reactivated after his
or her employment with the Office ceases or his or her employment in a
judicial capacity ceases, provided the following is filed with the OED
Director:
(A) A completed application for reactivation on a form supplied by
the OED Director;
(B) A data sheet;
(C) A signed written undertaking required by Sec.11.10(b); and
(D) The fee set forth in Sec.1.21(a)(9)(ii) of this chapter.
(ii) Administratively inactive practitioners who have been separated
from the Office or have ceased to be employed in a judicial capacity for
five or more years prior to filing a complete application for
reactivation shall be required to provide objective evidence that they
continue to possess the necessary legal qualifications to render
valuable service to patent applicants.
(3)(i) Any registered practitioner who has been endorsed as resigned
pursuant to paragraph (e) of this section may be reinstated on the
register provided the practitioner:
(A) Is not the subject of a disciplinary investigation or a party to
a disciplinary proceeding;
(B) Has applied for reinstatement on an application form supplied by
the OED Director;
(C) Has demonstrated good moral character and reputation and
competence in advising and assisting patent applicants in the
presentation and prosecution of their applications before the Office;
(D) Has submitted a declaration or affidavit attesting to the fact
that the practitioner has read the most recent
[[Page 413]]
revisions of the patent laws and the rules of practice before the
Office;
(E) Has paid the fees set forth in Sec.1.21(a)(9)(ii) of this
chapter; and
(F) Has paid all applicable delinquency fees as set forth in Sec.
1.21(a)(9)(i) of this chapter.
(ii) Any resigned registered practitioner who applies for
reinstatement more than five years after the effective date of the
resignation additionally shall be required to file a petition to the OED
Director requesting reinstatement and providing objective evidence that
they continue to possess the necessary legal qualifications to render
valuable service to patent applicants.
(g) Administrative revocation. (1) The USPTO Director may revoke an
individual's registration or limited recognition if:
(i) The registration or limited recognition was issued through
mistake or inadvertence, or
(ii) The individual's application for registration or limited
recognition contains materially false information or omits material
information.
(2) Whenever it appears that grounds for administrative revocation
exist, the OED Director shall issue to the individual a notice to show
cause why the individual's registration or limited recognition should
not be revoked.
(i) The notice to show cause shall be served on the individual in
the same manner as described in Sec.11.35.
(ii) The notice to show cause shall state the grounds for the
proposed revocation.
(iii) The OED Director shall file a copy of the notice to show cause
with the USPTO Director.
(3) Within 30 days after service of the notice to show cause, the
individual may file a response to the notice to show cause with the
USPTO Director. The response should address any factual or legal bases
why the individual's registration or limited recognition should not be
revoked. The individual shall serve the OED Director with a copy of the
response at the time it is filed with the USPTO Director. Within 10 days
of receiving a copy of the response, the OED Director may file a reply
with the USPTO Director. A copy of the reply by the OED Director shall
be sent to the individual at the individual's address of record.
(4) If the USPTO Director determines that there are no genuine
issues of material fact regarding the Office's compliance with the
notice requirements under this section or the grounds for the notice to
show cause, the USPTO Director shall enter an order revoking the
individual's registration or limited recognition. Otherwise, the USPTO
Director shall enter an appropriate order dismissing the notice to show
cause. An oral hearing will not be granted unless so ordered by the
USPTO Director, upon a finding that such hearing is necessary. Any
request for reconsideration of the USPTO Director's decision must be
filed within 20 days after the date such decision is rendered by the
USPTO Director. Nothing herein shall permit an individual to seek a stay
of the revocation during the pendency of any review of the USPTO
Director's final decision.
[86 FR 28455, May 26, 2021]
Sec. Sec.11.12-11.13 [Reserved]
Sec.11.14 Individuals who may practice before the Office in trademark
and other non-patent matters.
(a) Attorneys. Any individual who is an attorney as defined in Sec.
11.1 may represent others before the Office in trademark and other non-
patent matters. An attorney is not required to apply for registration or
recognition to practice before the Office in trademark and other non-
patent matters. Registration as a patent practitioner does not itself
entitle an individual to practice before the Office in trademark
matters.
(b) Non-lawyers. Individuals who are not attorneys are not
recognized to practice before the Office in trademark and other non-
patent matters, except that individuals not attorneys who were
recognized to practice before the Office in trademark matters under this
chapter prior to January 1, 1957, will be recognized as agents to
continue practice before the Office in trademark matters. Except as
provided in the preceding sentence, registration as a patent agent does
not itself entitle an individual to practice before the Office in
trademark matters.
[[Page 414]]
(c) Foreigners. (1) Any foreign attorney or agent not a resident of
the United States who shall file a written application for reciprocal
recognition under paragraph (f) of this section and prove to the
satisfaction of the OED Director that he or she is a registered and
active member in good standing before the trademark office of the
country in which he or she resides and practices and possesses good
moral character and reputation, may be recognized for the limited
purpose of representing parties located in such country before the
Office in the presentation and prosecution of trademark matters,
provided: The trademark office of such country and the USPTO have
reached an official understanding to allow substantially reciprocal
privileges to those permitted to practice in trademark matters before
the Office. Recognition under this paragraph (c) shall continue only
during the period that the conditions specified in this paragraph (c)
obtain.
(2) In any trademark matter where a foreign attorney or agent
authorized under paragraph (c)(1) of this section is representing an
applicant, registrant, or party to a proceeding, an attorney, as defined
in Sec.11.1 and qualified to practice under paragraph (a) of this
section, must also be appointed pursuant to Sec.2.17(b) and (c) of
this chapter as the representative who will file documents with the
Office and with whom the Office will correspond.
(d) Recognition of any individual under this section shall not be
construed as sanctioning or authorizing the performance of any act
regarded in the jurisdiction where performed as the unauthorized
practice of law.
(e) Appearance. No individual other than those specified in
paragraphs (a), (b), and (c) of this section will be permitted to
practice before the Office in trademark matters on behalf of a client.
Except as specified in Sec.2.11(a) of this chapter, an individual may
appear in a trademark or other non-patent matter in his or her own
behalf or on behalf of:
(1) A firm of which he or she is a member;
(2) A partnership of which he or she is a partner; or
(3) A corporation or association of which he or she is an officer
and which he or she is authorized to represent.
(f) Application for reciprocal recognition. An individual seeking
reciprocal recognition under paragraph (c) of this section, in addition
to providing evidence satisfying the provisions of paragraph (c) of this
section, shall apply in writing to the OED Director for reciprocal
recognition, and shall pay the application fee required by Sec.
1.21(a)(1)(i) of this subchapter.
[73 FR 47688, Aug. 14, 2008, as amended at 84 FR 31511, July 2, 2019]
Sec.11.15 Refusal to recognize a practitioner.
Any practitioner authorized to appear before the Office may be
suspended, excluded, or reprimanded in accordance with the provisions of
this Part. Any practitioner who is suspended or excluded under this Part
shall not be entitled to practice before the Office in patent,
trademark, or other non-patent matters while suspended or excluded.
[73 FR 47688, Aug. 14, 2008]
Sec.11.16 Requirements for admission to the USPTO Law School Clinic
Certification Program.
(a) The USPTO Law School Clinic Certification Program allows
students enrolled in a participating law school's clinic to practice
before the Office in patent or trademark matters by drafting, filing,
and prosecuting patent or trademark applications on a pro bono basis for
clients that qualify for assistance from the law school's clinic. All
law schools accredited by the American Bar Association are eligible for
participation in the program, and shall be examined for acceptance using
identical criteria.
(b) Application for admission and renewal--(1) Application for
admission. Non-participating law schools seeking admission to the USPTO
Law School Clinic Certification Program, and participating law schools
seeking to add a practice area, shall submit an application for
admission for such practice area to OED in accordance with criteria and
time periods set forth by the OED Director.
[[Page 415]]
(2) Renewal application. Each participating law school desiring to
continue in the USPTO Law School Clinic Certification Program shall,
biennially from a date assigned to the law school by the OED Director,
submit a renewal application to OED in accordance with criteria set
forth by the OED Director.
(3) The OED Director may refuse admission or renewal of a law school
to the USPTO Law School Clinic Certification Program if the OED Director
determines that admission, or renewal, of the law school would fail to
provide significant benefit to the public or the law students
participating in the law school's clinic.
(c) Faculty Clinic Supervisor. Any law school seeking admission to
or participating in the USPTO Law School Clinic Certification Program
must have at least one Faculty Clinic Supervisor for the patent practice
area, if the clinic includes patent practice; and at least one Faculty
Clinic Supervisor for the trademark practice area, if the clinic
includes trademark practice.
(1) Patent Faculty Clinic Supervisor. A Faculty Clinic Supervisor
for a law school clinic's patent practice must:
(i) Be a registered patent practitioner in active status and good
standing with OED;
(ii) Demonstrate at least 3 years experience in prosecuting patent
applications before the Office within the 5 years immediately prior to
the request for approval as a Faculty Clinic Supervisor;
(iii) Assume full responsibility for the instruction and guidance of
law students participating in the law school clinic's patent practice;
(iv) Assume full responsibility for all patent applications and
legal services, including filings with the Office, produced by the
clinic; and
(v) Comply with all additional criteria established by the OED
Director.
(2) Trademark Faculty Clinic Supervisor. A Faculty Clinic Supervisor
for a law school clinic's trademark practice must:
(i) Be an attorney as defined in Sec.11.1;
(ii) Demonstrate at least 3 years experience in prosecuting
trademark applications before the Office within the 5 years immediately
prior to the date of the request for approval as a Faculty Clinic
Supervisor;
(iii) Assume full responsibility for the instruction, guidance, and
supervision of law students participating in the law school clinic's
trademark practice;
(iv) Assume full responsibility for all trademark applications and
legal services, including filings with the Office, produced by the
clinic; and
(v) Comply with all additional criteria established by the OED
Director.
(3) A Faculty Clinic Supervisor under paragraph (c) of this section
must submit a statement:
(i) Assuming responsibility for performing conflicts checks for each
law student and client in the relevant clinic practice area;
(ii) Assuming responsibility for student instruction and work,
including instructing, mentoring, overseeing, and supervising all
participating law school students in the clinic's relevant practice
area;
(iii) Assuming responsibility for content and timeliness of all
applications and documents submitted to the Office through the relevant
practice area of the clinic;
(iv) Assuming responsibility for all communications by clinic
students to clinic clients in the relevant clinic practice area;
(v) Assuming responsibility for ensuring that there is no gap in
representation of clinic clients in the relevant practice area during
student turnover, school schedule variations, inter-semester
transitions, or other disruptions;
(vi) Attesting to meeting the criteria of paragraph (c)(1) or (2) of
this section based on relevant practice area of the clinic; and
(vii) Attesting to all other criteria as established by the OED
Director.
(d) Limited recognition for law students participating in the USPTO
Law School Clinic Certification Program. (1) The OED Director may grant
limited recognition to practice before the Office in patent or trademark
matters, or both, to law school students enrolled in a clinic of a law
school that is participating in the USPTO Law School Clinic
Certification Program upon submission and
[[Page 416]]
approval of an application by a law student to OED in accordance with
criteria established by the OED Director.
(2) In order to be granted limited recognition to practice before
the Office in patent matters under the USPTO Law School Clinic
Certification Program, a law student must:
(i) Be enrolled in a law school that is an active participant in the
USPTO Law School Clinic Certification Program;
(ii) Be enrolled in the patent practice area of a clinic of the
participating law school;
(iii) Have successfully completed at least one year of law school or
the equivalent;
(iv) Have read the USPTO Rules of Professional Conduct and the
relevant rules of practice and procedure for patent matters;
(v) Be supervised by an approved Faculty Clinic Supervisor pursuant
to paragraph (c)(1) of this section;
(vi) Be certified by the dean of the participating law school, or
one authorized to act for the dean, as: Having completed the first year
of law school or the equivalent, being in compliance with the law
school's ethics code, and being of good moral character and reputation;
(vii) Neither ask for nor receive any fee or compensation of any
kind for legal services from a clinic client on whose behalf service is
rendered;
(viii) Have proved to the satisfaction of the OED Director that he
or she possesses the scientific and technical qualifications necessary
for him or her to render patent applicants valuable service; and
(ix) Comply with all additional criteria established by the OED
Director.
(3) In order to be granted limited recognition to practice before
the Office in trademark matters under the USPTO Law School Clinic
Certification Program, a law student must:
(i) Be enrolled in a law school that is an active participant in the
USPTO Law School Clinic Certification Program;
(ii) Be enrolled in the trademark practice area of a clinic of the
participating law school;
(iii) Have successfully completed at least one year of law school or
the equivalent;
(iv) Have read the USPTO Rules of Professional Conduct and the
relevant USPTO rules of practice and procedure for trademark matters;
(v) Be supervised by an approved Faculty Clinic Supervisor pursuant
to paragraph (c)(2) of this section;
(vi) Be certified by the dean of the participating law school, or
one authorized to act for the dean, as: Having completed the first year
of law school or the equivalent, being in compliance with the law
school's ethics code, and being of good moral character and reputation;
(vii) Neither ask for nor receive any fee or compensation of any
kind for legal services from a clinic client on whose behalf service is
rendered; and
(viii) Comply with all additional criteria established by the OED
Director.
(4) Students registered to practice before the Office in patent
matters as a patent agent, or authorized to practice before the Office
in trademark matters under Sec.11.14, must complete and submit a
student application pursuant to paragraph (d)(1) of this section and
meet the criteria of paragraph (d)(2) or (3) of this section, as
applicable, in order to participate in the program.
[81 FR 33596, May 27, 2016]
Sec.11.17 Requirements for participation in the USPTO Law School
Clinic Certification Program.
(a) Each law school participating in the USPTO Law School Clinic
Certification Program must provide its patent and/or trademark services
on a pro bono basis.
(b) Each law school participating in the USPTO Law School Clinic
Certification Program shall, on a semi-annual basis, provide OED with a
report regarding its clinic activity during the reporting period, which
shall include:
(1) The number of law students participating in each of the patent
and trademark practice areas of the school's clinic;
(2) The number of faculty participating in each of the patent and
trademark practice areas of the school's clinic;
[[Page 417]]
(3) The number of persons to whom the school's clinic provided
assistance in any given patent or trademark matter but with whom no
practitioner-client relationship had formed;
(4) The number of client representations undertaken for each of the
patent and trademark practice areas of the school's clinic;
(5) The identity and number of applications and responses filed in
each of the patent and/or trademark practice areas of the school's
clinic;
(6) The number of patents issued, or trademarks registered, to
clients of the clinic; and
(7) All other information specified by the OED Director.
(c) Inactivation of law schools participating in the USPTO Law
School Certification Program. (1) The OED Director may inactivate a
patent and/or trademark practice area of a participating law school:
(i) If the participating law school does not have an approved
Faculty Clinic Supervisor for the relevant practice area, as described
in Sec.11.16(c);
(ii) If the participating law school does not meet each of the
requirements and criteria for participation in the USPTO Law School
Clinic Certification Program as set forth in Sec.11.16, this section,
or as otherwise established by the OED Director; or
(iii) For other good cause as determined by the OED Director.
(2) In the event that a practice area of a participating school is
inactivated, the participating law school students must:
(i) Immediately cease all student practice before the Office in the
relevant practice area and notify each client of such; and
(ii) Disassociate themselves from all client matters relating to
practice before the Office in the relevant practice area, including
complying with Office and State rules for withdrawal from
representation.
(3) A patent or trademark practice area of a law school clinic that
has been inactivated may be restored to active status, upon application
to and approval by the OED Director.
(d) Removal of law schools participating in the USPTO Law School
Clinic Certification Program. (1) The OED Director may remove a patent
and/or trademark practice area of the clinic of a law school
participating in the USPTO Law School Clinic Certification Program:
(i) Upon request from the law school;
(ii) If the participating law school does not meet each of the
requirements and criteria for participation in the USPTO Law School
Clinic Certification Program as set forth in Sec.11.16, this section,
or as otherwise established by the OED Director; or
(iii) For other good cause as determined by the OED Director.
(2) In the event that a practice area of a participating school is
removed by the OED Director, the participating law school students must:
(i) Immediately cease all student practice before the Office in the
relevant practice area and notify each client of such; and
(ii) Disassociate themselves from all client matters relating to
practice before the Office in the relevant practice area, including
complying with Office and State rules for withdrawal from
representation.
(3) A school that has been removed from participation in the USPTO
Law School Clinic Certification Program under this section may reapply
to the program in compliance with Sec.11.16.
[81 FR 33597, May 27, 2016]
Sec.11.18 Signature and certificate for correspondence filed in the
Office.
(a) For all documents filed in the Office in patent, trademark, and
other non-patent matters, and all documents filed with a hearing officer
in a disciplinary proceeding, except for correspondence that is required
to be signed by the applicant or party, each piece of correspondence
filed by a practitioner in the Office must bear a signature, personally
signed or inserted by such practitioner, in compliance with Sec.1.4(d)
or Sec.2.193(a) of this chapter.
(b) By presenting to the Office or hearing officer in a disciplinary
proceeding (whether by signing, filing, submitting, or later advocating)
any paper, the party presenting such paper, whether a practitioner or
non-practitioner, is certifying that--
(1) All statements made therein of the party's own knowledge are
true, all
[[Page 418]]
statements made therein on information and belief are believed to be
true, and all statements made therein are made with the knowledge that
whoever, in any matter within the jurisdiction of the Office, knowingly
and willfully falsifies, conceals, or covers up by any trick, scheme, or
device a material fact, or knowingly and willfully makes any false,
fictitious, or fraudulent statements or representations, or knowingly
and willfully makes or uses any false writing or document knowing the
same to contain any false, fictitious, or fraudulent statement or entry,
shall be subject to the penalties set forth under 18 U.S.C. 1001 and any
other applicable criminal statute, and violations of the provisions of
this section may jeopardize the probative value of the paper; and
(2) To the best of the party's knowledge, information and belief,
formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such
as to harass someone or to cause unnecessary delay or needless increase
in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing
law or by a nonfrivolous argument for the extension, modification, or
reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary
support or, if specifically so identified, are likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted on the
evidence, or if specifically so identified, are reasonably based on a
lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this
section are, after notice and reasonable opportunity to respond, subject
to such sanctions or actions as deemed appropriate by the USPTO
Director, which may include, but are not limited to, any combination
of--
(1) Striking the offending paper;
(2) Referring a practitioner's conduct to the Director of the Office
of Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or
presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may
also be subject to disciplinary action.
[73 FR 47689, Aug. 14, 2008, as amended at 74 FR 54912, Oct. 26, 2009;
78 FR 62409, Oct. 21, 2013; 86 FR 28457, May 26, 2021]
Subpart C_Investigations and Disciplinary Proceedings; Jurisdiction,
Sanctions, Investigations, and Proceedings
Source: 73 FR 47689, Aug. 14, 2008, unless otherwise noted.
Sec.11.19 Disciplinary jurisdiction; grounds for discipline and
for transfer to disability inactive status.
(a) Disciplinary jurisdiction. All practitioners engaged in practice
before the Office; all practitioners administratively suspended under
Sec.11.11; all practitioners registered or recognized to practice
before the Office in patent matters; all practitioners resigned,
inactivated, or in emeritus status under Sec.11.11; all practitioners
authorized under Sec.41.5(a) or 42.10(c) of this chapter; and all
practitioners transferred to disability inactive status or publicly
disciplined by a duly constituted authority are subject to the
disciplinary jurisdiction of the Office and subject to being transferred
to disability inactive status. A non-practitioner is also subject to the
disciplinary authority of the Office if the person engages in or offers
to engage in practice before the Office without proper authority.
(b) Grounds for discipline; Grounds for transfer to disability
inactive status. The following, whether done individually by a
practitioner or in concert with any other person or persons and whether
or not done in the course of providing legal services to a client, or in
a matter pending before the Office, constitute grounds for discipline or
[[Page 419]]
grounds for transfer to disability inactive status.
(1) Grounds for discipline include:
(i) Conviction of a serious crime;
(ii) Discipline on ethical or professional misconduct grounds
imposed in another jurisdiction or disciplinary disqualification from
participating in or appearing before any Federal program or agency;
(iii) Failure to comply with any order of a Court disciplining a
practitioner, or any final decision of the USPTO Director in a
disciplinary matter;
(iv) Violation of any USPTO Rule of Professional Conduct; or
(v) Violation of the oath or declaration taken by the practitioner.
See Sec.11.8.
(2) Grounds for transfer to disability inactive status include:
(i) Being transferred to disability inactive status in another
jurisdiction;
(ii) Being judicially declared incompetent, being judicially ordered
to be involuntarily committed after a hearing on the grounds of
insanity, incompetency or disability, or being placed by court order
under guardianship or conservatorship; or
(iii) Filing a motion requesting a disciplinary proceeding be held
in abeyance because the practitioner is suffering from a disability or
addiction that makes it impossible for the practitioner to adequately
defend the charges in the disciplinary proceeding.
(c) Petitions to disqualify a practitioner in ex parte or inter
partes matters in the Office are not governed by this subpart and will
be handled on a case-by-case basis under such conditions as the USPTO
Director deems appropriate.
(d) The OED Director may refer the existence of circumstances
suggesting unauthorized practice of law to the authorities in the
appropriate jurisdiction(s).
(e) The OED Director has the discretion to choose any of the
independent grounds of discipline under paragraph (b) of this section
and to pursue any of the procedures set forth in this subpart in every
disciplinary proceeding.
[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86
FR 28457, May 26, 2021]
Sec.11.20 Disciplinary sanctions; Transfer to disability inactive
status.
(a) Types of discipline. The USPTO Director, after notice and
opportunity for a hearing, and where grounds for discipline exist, may
impose on a practitioner the following types of discipline:
(1) Exclusion from practice before the Office;
(2) Suspension from practice before the Office for an appropriate
period of time;
(3) Reprimand or censure; or
(4) Probation. Probation may be imposed in lieu of or in addition to
any other disciplinary sanction. The conditions of probation shall be
stated in the order imposing probation. Violation of any condition of
probation shall be cause for imposition of the disciplinary sanction.
Imposition of the disciplinary sanction predicated upon violation of
probation shall occur only after a notice to show cause why the
disciplinary sanction should not be imposed is resolved adversely to the
practitioner.
(b) Conditions imposed with discipline. When imposing discipline,
the USPTO Director may condition reinstatement upon the practitioner
making restitution, successfully completing a professional
responsibility course or examination, or any other condition deemed
appropriate under the circumstances.
(c) Transfer to disability inactive status. As set forth in Sec.
11.29, the USPTO Director, after notice and opportunity for a hearing,
may transfer a practitioner to disability inactive status where grounds
exist to believe the practitioner has been transferred to disability
inactive status in another jurisdiction, has been judicially declared
incompetent, has been judicially ordered to be involuntarily committed
after a hearing on the grounds of incompetency or disability, or has
been placed by court order under guardianship or conservatorship.
[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86
FR 28457, May 26, 2021]
Sec.11.21 Warnings.
A warning is neither public nor a disciplinary sanction. The OED
Director may conclude an investigation with the issuance of a warning.
The warning shall contain a statement of facts and
[[Page 420]]
identify the USPTO Rules of Professional Conduct relevant to the facts.
[86 FR 28458, May 26, 2021]
Sec.11.22 Disciplinary investigations.
(a) The OED Director is authorized to investigate possible grounds
for discipline. An investigation may be initiated when the OED Director
receives a grievance, information or evidence from any source suggesting
possible grounds for discipline. Neither unwillingness nor neglect by a
grievant to prosecute a charge, nor settlement, compromise, or
restitution with the grievant, shall in itself justify abatement of an
investigation.
(b) Any person possessing information or evidence concerning
possible grounds for discipline of a practitioner may report the
information or evidence to the OED Director. The OED Director may
request that the report be presented in the form of an affidavit or
declaration.
(c) Notice to the OED Director. Upon receiving the notification
required by Sec.11.24(a), 11.25(a), or 11.29(a), the OED Director
shall obtain a certified copy of the record or order regarding such
discipline, disqualification, conviction, or transfer. A certified copy
of the record or order regarding the discipline, disqualification,
conviction, or transfer shall be clear and convincing evidence that the
practitioner has been disciplined, disqualified, convicted of a crime,
or transferred to disability status by another jurisdiction.
(d) Preliminary screening of information or evidence. The OED
Director shall examine all information or evidence concerning possible
grounds for discipline of a practitioner.
(e) Notification of investigation. The OED Director shall notify the
practitioner in writing of the initiation of an investigation into
whether a practitioner has engaged in conduct constituting possible
grounds for discipline.
(f) Request for information and evidence by OED Director.
(1) In the course of the investigation, the OED Director may request
information and evidence regarding possible grounds for discipline of a
practitioner from:
(i) The grievant,
(ii) The practitioner, or
(iii) Any person who may reasonably be expected to provide
information and evidence needed in connection with the grievance or
investigation.
(2) The OED Director may request information and evidence regarding
possible grounds for discipline of a practitioner from a non-grieving
client either after obtaining the consent of the practitioner or upon a
finding by a Contact Member of the Committee on Discipline, appointed in
accordance with Sec.11.23(d), that good cause exists to believe that
the possible ground for discipline alleged has occurred with respect to
non-grieving clients. Neither a request for, nor disclosure of, such
information shall constitute a violation of any USPTO Rules of
Professional Conduct.
(g) Where the OED Director makes a request under paragraph (f)(2) of
this section to a Contact Member of the Committee on Discipline, such
Contact Member shall not, with respect to the practitioner connected to
the OED Director's request, participate in the Committee on Discipline
panel that renders a probable cause determination under Sec.11.23(b)
concerning such practitioner.
(h) Disposition of investigation. Upon the conclusion of an
investigation, the OED Director may take appropriate action, including
but not limited to:
(1) Closing the investigation without issuing a warning or taking
disciplinary action;
(2) Issuing a warning to the practitioner;
(3) Instituting formal charges upon the approval of the Committee on
Discipline; or
(4) Entering into a settlement agreement with the practitioner and
submitting the same for approval of the USPTO Director.
(i) Closing investigation. The OED Director shall terminate an
investigation and decline to refer a matter to the Committee on
Discipline if the OED Director determines that:
(1) The information or evidence is unfounded;
(2) The information or evidence relates to matters not within the
jurisdiction of the Office;
(3) As a matter of law, the conduct about which information or
evidence
[[Page 421]]
has been obtained does not constitute grounds for discipline, even if
the conduct may involve a legal dispute; or
(4) The available evidence is insufficient to conclude that there is
probable cause to believe that grounds exist for discipline.
[73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012;
78 FR 20200, Apr. 3, 2013; 86 FR 28458, May 26, 2021]
Sec.11.23 Committee on Discipline.
(a) The USPTO Director shall appoint a Committee on Discipline. The
Committee on Discipline shall consist of at least three employees of the
Office. None of the Committee members shall report directly or
indirectly to the OED Director or any employee designated by the USPTO
Director to decide disciplinary matters. Each Committee member shall be
a member in good standing of the bar of the highest court of a State.
The Committee members shall select a Chairperson from among themselves.
Three Committee members will constitute a panel of the Committee.
(b) Powers and duties of the Committee on Discipline. The Committee
shall have the power and duty to:
(1) Meet in panels at the request of the OED Director and, after
reviewing evidence presented by the OED Director, by majority vote of
the panel, determine whether there is probable cause to bring charges
under Sec.11.32 against a practitioner; and
(2) Prepare and forward its own probable cause findings and
recommendations to the OED Director.
(c) No discovery shall be authorized of, and no member of the
Committee on Discipline shall be required to testify about deliberations
of, the Committee on Discipline or of any panel.
(d) The Chairperson shall appoint the members of the panels and a
Contact Member of the Committee on Discipline.
Sec.11.24 Reciprocal discipline.
(a) Notice to the OED Director. Within 30 days of being publicly
censured, publicly reprimanded, subjected to probation, disbarred or
suspended by another jurisdiction, or disciplinarily disqualified from
participating in or appearing before any Federal program or agency, a
practitioner subject to the disciplinary jurisdiction of the Office
shall notify the OED Director in writing of the same. A practitioner is
deemed to be disbarred if he or she is disbarred, is excluded on
consent, or has resigned in lieu of discipline or a disciplinary
proceeding. Upon receiving notification from any source or otherwise
learning that a practitioner subject to the disciplinary jurisdiction of
the Office has been publicly censured, publicly reprimanded, subjected
to probation, disbarred, suspended, or disciplinarily disqualified, the
OED Director shall obtain a certified copy of the record or order
regarding the public censure, public reprimand, probation, disbarment,
suspension, or disciplinary disqualification. A certified copy of the
record or order regarding the discipline shall establish a prima facie
case by clear and convincing evidence that the practitioner has been
publicly censured, publicly reprimanded, subjected to probation,
disbarred, suspended, or disciplinarily disqualified by another
jurisdiction. In addition to the actions identified in Sec.11.22(h)
and (i), the OED Director may, without Committee on Discipline
authorization, file with the USPTO Director a complaint complying with
Sec.11.34 against the practitioner predicated upon the public censure,
public reprimand, probation, disbarment, suspension, or disciplinary
disqualification. The OED Director may request the USPTO Director to
issue a notice and order as set forth in paragraph (b) of this section.
(b) Notification served on practitioner. Upon receipt of the
complaint and request for notice and order, the USPTO Director shall
issue a notice directed to the practitioner in accordance with Sec.
11.35 and to the OED Director containing:
(1) A copy of the record or order regarding the public censure,
public reprimand, probation, disbarment, suspension or disciplinary
disqualification;
(2) A copy of the complaint; and
(3) An order directing the practitioner to file a response with the
USPTO Director and the OED Director, within forty days of the date of
the notice establishing a genuine issue of material fact predicated upon
the grounds set forth in paragraphs (d)(1)(i) through
[[Page 422]]
(d)(1)(iv) of this section that the imposition of the identical public
censure, public reprimand, probation, disbarment, suspension or
disciplinary disqualification would be unwarranted and the reasons for
that claim.
(c) Effect of stay in another jurisdiction. In the event the public
censure, public reprimand, probation, disbarment, suspension imposed by
another jurisdiction or disciplinary disqualification imposed in the
Federal program or agency has been stayed, any reciprocal discipline
imposed by the USPTO may be deferred until the stay expires.
(d) Hearing and discipline to be imposed. (1) The USPTO Director
shall hear the matter on the documentary record unless the USPTO
Director determines that an oral hearing is necessary. The USPTO
Director may order the OED Director or the practitioner to supplement
the record with further information or argument. After expiration of the
period specified in paragraph (b)(3) of this section, the USPTO Director
shall consider the record and shall impose the identical public censure,
public reprimand, probation, disbarment, suspension, or disciplinary
disqualification unless the practitioner demonstrates by clear and
convincing evidence, and the USPTO Director finds there is a genuine
issue of material fact that:
(i) The procedure elsewhere was so lacking in notice or opportunity
to be heard as to constitute a deprivation of due process;
(ii) There was such infirmity of proof establishing the conduct as
to give rise to the clear conviction that the Office could not,
consistently with its duty, accept as final the conclusion on that
subject;
(iii) The imposition of the same public censure, public reprimand,
probation, disbarment, suspension or disciplinary disqualification by
the Office would result in grave injustice; or
(iv) Any argument that the practitioner was not publicly censured,
publicly reprimanded, placed on probation, disbarred, suspended or
disciplinarily disqualified.
(2) If the USPTO Director determines that there is no genuine issue
of material fact, the USPTO Director shall enter an appropriate final
order. If the USPTO Director is unable to make such determination
because there is a genuine issue of material fact, the USPTO Director
shall enter an appropriate order:
(i) Referring the complaint to a hearing officer for a formal
hearing and entry of an initial decision in accordance with the other
rules in this part, and
(ii) Directing the practitioner to file an answer to the complaint
in accordance with Sec.11.36.
(e) Adjudication in another jurisdiction or Federal agency or
program. In all other respects, a final adjudication, regardless of the
evidentiary standard, in another jurisdiction or Federal agency or
program that a practitioner, whether or not admitted in that
jurisdiction, has committed misconduct shall establish a prima facie
case by clear and convincing evidence that the practitioner has engaged
in misconduct under Sec.11.804(h).
(f) Reciprocal discipline--action where practice has ceased. Upon
request by the practitioner, reciprocal discipline may be imposed nunc
pro tunc only if the practitioner promptly notified the OED Director of
his or her censure, public reprimand, probation, disbarment, suspension
or disciplinary disqualification in another jurisdiction, and
establishes by clear and convincing evidence that the practitioner
voluntarily ceased all activities related to practice before the Office
and complied with all provisions of Sec.11.58. The effective date of
any public censure, public reprimand, probation, suspension, disbarment
or disciplinary disqualification imposed nunc pro tunc shall be the date
the practitioner voluntarily ceased all activities related to practice
before the Office and complied with all provisions of Sec.11.58.
(g) Reinstatement following reciprocal discipline proceeding. A
practitioner may petition for reinstatement under conditions set forth
in Sec.11.60 no sooner than completion of the period of reciprocal
discipline imposed, and compliance with all provisions of Sec.11.58.
[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86
FR 28458, May 26, 2021]
[[Page 423]]
Sec.11.25 Interim suspension and discipline based upon conviction
of committing a serious crime.
(a) Notice to the OED Director. Upon being convicted of a crime in a
court of the United States, any State, or a foreign country, a
practitioner subject to the disciplinary jurisdiction of the Office
shall notify the OED Director in writing of the same within 30 days from
the date of such conviction. Notwithstanding the preceding sentence, a
practitioner is not required to notify the OED Director of a traffic
offense that did not involve the use of alcohol or a controlled
substance, did not result in a fine in excess of $300, and did not
result in the imposition of any other punishment. Upon being advised or
learning that a practitioner subject to the disciplinary jurisdiction of
the Office has been convicted of a crime, the OED Director shall make a
preliminary determination whether the crime constitutes a serious crime
warranting interim suspension. If the crime is a serious crime, the OED
Director may file with the USPTO Director proof of the conviction and
request the USPTO Director to issue a notice and order set forth in
paragraph (b)(2) of this section. The OED Director may, in addition,
without Committee on Discipline authorization, file with the USPTO
Director a complaint complying with Sec.11.34 against the practitioner
predicated upon the conviction of a serious crime. If the crime is not a
serious crime, the OED Director may process the matter in the same
manner as any other information or evidence of a possible violation of
any USPTO Rule of Professional Conduct coming to the attention of the
OED Director.
(b) Interim suspension and referral for disciplinary proceeding. All
proceedings under this section shall be handled as expeditiously as
possible.
(1) The USPTO Director has authority to place a practitioner on
interim suspension after hearing the request for interim suspension on
the documentary record.
(2) Notification served on practitioner. Upon receipt of a certified
copy of the court record, docket entry, or judgment demonstrating that
the practitioner has been so convicted, together with the complaint, the
USPTO Director shall issue a notice directed to the practitioner in
accordance with Sec.11.35, and to the OED Director, containing:
(i) A copy of the court record, docket entry, or judgment of
conviction;
(ii) A copy of the complaint; and
(iii) An order directing the practitioner to file a response with
the USPTO Director and the OED Director, within forty days of the date
of the notice, establishing that there is a genuine issue of material
fact that the crime did not constitute a serious crime, the practitioner
is not the individual found guilty of the crime, or that the conviction
was so lacking in notice or opportunity to be heard as to constitute a
deprivation of due process.
(3) Hearing and final order on request for interim suspension. The
request for interim suspension shall be heard by the USPTO Director on
the documentary record unless the USPTO Director determines that the
practitioner's response establishes by clear and convincing evidence a
genuine issue of material fact that: The crime did not constitute a
serious crime, the practitioner is not the person who committed the
crime, or the conviction was so lacking in notice or opportunity to be
heard as to constitute a deprivation of due process. The USPTO Director
may order the OED Director or the practitioner to supplement the record
with further information or argument. If the USPTO Director determines
that there is no genuine issue of material fact, the USPTO Director
shall enter an appropriate final order regarding the OED Director's
request for interim suspension regardless of the pendency of any
criminal appeal. If the USPTO Director is unable to make such
determination because there is a genuine issue of material fact, the
USPTO Director shall enter a final order dismissing the request and
enter a further order referring the complaint to a hearing officer for a
hearing and entry of an initial decision in accordance with the other
rules in this part and directing the practitioner to file an answer to
the complaint in accordance with Sec.11.36.
(4) Termination. The USPTO Director has authority to terminate an
interim suspension. In the interest of justice, the USPTO Director may
terminate an interim suspension at any time upon a
[[Page 424]]
showing of extraordinary circumstances, after affording the OED Director
an opportunity to respond to the request to terminate interim
suspension.
(5) Referral for disciplinary proceeding. Upon entering a final
order imposing interim suspension, the USPTO Director shall refer the
complaint to a hearing officer to conduct a formal disciplinary
proceeding. The formal disciplinary proceeding, however, shall be stayed
by the hearing officer until all direct appeals from the conviction are
concluded. Review of the initial decision of the hearing officer shall
be pursuant to Sec.11.55.
(c) Proof of conviction and guilt--(1) Conviction in the United
States. For purposes of a hearing for interim suspension and a hearing
on the formal charges in a complaint filed as a consequence of the
conviction, a certified copy of the court record, docket entry, or
judgment of conviction in a court of the United States or any State
shall establish a prima facie case by clear and convincing evidence that
the practitioner was convicted of a serious crime and that the
conviction was not lacking in notice or opportunity to be heard as to
constitute a deprivation of due process.
(2) Conviction in a foreign country. For purposes of a hearing for
interim suspension and on the formal charges filed as a result of a
finding of guilt, a certified copy of the court record, docket entry, or
judgment of conviction in a court of a foreign country shall establish a
prima facie case by clear and convincing evidence that the practitioner
was convicted of a serious crime and that the conviction was not lacking
in notice or opportunity to be heard as to constitute a deprivation of
due process. However, nothing in this paragraph shall preclude the
practitioner from demonstrating by clear and convincing evidence in any
hearing on a request for interim suspension there is a genuine issue of
material fact to be considered when determining if the elements of a
serious crime were committed in violating the criminal law of the
foreign country and whether a disciplinary sanction should be entered.
(d) Crime determined not to be serious crime. If the USPTO Director
determines that the crime is not a serious crime, the complaint shall be
referred to the OED Director for investigation under Sec.11.22 and
processing as is appropriate.
(e) Reinstatement--(1) Upon reversal or setting aside a finding of
guilt or a conviction. If a practitioner suspended solely under the
provisions of paragraph (b) of this section demonstrates that the
underlying finding of guilt or conviction of serious crimes has been
reversed or vacated, the order for interim suspension shall be vacated
and the practitioner shall be placed on active status unless the finding
of guilt was reversed or the conviction was set aside with respect to
less than all serious crimes for which the practitioner was found guilty
or convicted. The vacating of the interim suspension will not terminate
any other disciplinary proceeding then pending against the practitioner,
the disposition of which shall be determined by the hearing officer
before whom the matter is pending, on the basis of all available
evidence other than the finding of guilt or conviction.
(2) Following conviction of a serious crime. Any practitioner
convicted of a serious crime and disciplined in whole or in part in
regard to that conviction, may petition for reinstatement under the
conditions set forth in Sec.11.60 no earlier than after completion of
service of his or her sentence, or after completion of service under
probation or parole, whichever is later.
(f) Notice to clients and others of interim suspension. An interim
suspension under this section shall constitute a suspension of the
practitioner for the purpose of Sec.11.58.
[73 FR 47689, Aug. 14, 2008, as amended at 78 FR 20200, Apr. 3, 2013; 86
FR 28458, May 26, 2021]
Sec.11.26 Settlement.
Before or after a complaint under Sec.11.34 is filed, a settlement
conference may occur between the OED Director and the practitioner. Any
offers of compromise and any statements made during the course of
settlement discussions shall not be admissible in subsequent
proceedings. The OED Director
[[Page 425]]
may recommend to the USPTO Director any settlement terms deemed
appropriate, including steps taken to correct or mitigate the matter
forming the basis of the action, or to prevent recurrence of the same or
similar conduct. A settlement agreement shall be effective only upon
entry of a final decision by the USPTO Director.
Sec.11.27 Exclusion on consent.
(a) Required affidavit. The OED Director may confer with a
practitioner concerning possible violations by the practitioner of the
Rules of Professional Conduct whether or not a disciplinary proceeding
has been instituted. A practitioner who is the subject of an
investigation or a pending disciplinary proceeding based on allegations
of grounds for discipline, and who desires to resign, may only do so by
consenting to exclusion and delivering to the OED Director an affidavit
declaring the consent of the practitioner to exclusion and stating:
(1) That the practitioner's consent is freely and voluntarily
rendered, that the practitioner is not being subjected to coercion or
duress, and that the practitioner is fully aware of the implications of
consenting to exclusion;
(2) That the practitioner is aware that there is currently pending
an investigation into, or a proceeding involving allegations of
misconduct, the nature of which shall be specifically set forth in the
affidavit to the satisfaction of the OED Director;
(3) That the practitioner acknowledges that, if and when he or she
applies for reinstatement under Sec.11.60, the OED Director will
conclusively presume, for the limited purpose of determining the
application for reinstatement, that:
(i) The facts upon which the investigation or complaint is based are
true, and
(ii) The practitioner could not have successfully defended himself
or herself against the allegations in the investigation or charges in
the complaint.
(b) Action by the USPTO Director. Upon receipt of the required
affidavit, the OED Director shall file the affidavit and any related
papers with the USPTO Director for review and approval. The USPTO
Director may order the OED Director or the practitioner to supplement
the record with further information or argument. The OED Director may
also file comments in response to the affidavit. If the affidavit is
approved, the USPTO Director will enter an order excluding the
practitioner on consent and providing other appropriate actions. Upon
entry of the order, the excluded practitioner shall comply with the
requirements set forth in Sec.11.58.
(c) [Reserved]
(d) Reinstatement. Any practitioner excluded on consent under this
section may not petition for reinstatement for five years. A
practitioner excluded on consent who intends to reapply for admission to
practice before the Office must comply with the provisions of Sec.
11.58, and apply for reinstatement in accordance with Sec.11.60.
Failure to comply with the provisions of Sec.11.58 constitutes grounds
for denying an application for reinstatement.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]
Sec.11.28 Incapacitated practitioners in a disciplinary proceeding.
(a) Holding in abeyance a disciplinary proceeding because of
incapacitation due to a current disability or addiction-- (1)
Practitioner's motion. In the course of a disciplinary proceeding under
Sec.11.32, the practitioner may file a motion requesting the hearing
officer to enter an order holding such proceeding in abeyance based on
the contention that the practitioner is suffering from a disability or
addiction that makes it impossible for the practitioner to adequately
defend the charges in the disciplinary proceeding.
(i) Content of practitioner's motion. The practitioner's motion
shall, in addition to any other requirement of Sec.11.43, include or
have attached thereto:
(A) A brief statement of all material facts;
(B) Affidavits, medical reports, official records, or other
documents and the opinion of at least one medical expert setting forth
and establishing any of the material facts on which the practitioner is
relying;
[[Page 426]]
(C) A statement that the practitioner acknowledges the alleged
incapacity by reason of disability or addiction;
(D) Written consent by the practitioner to be transferred to
disability inactive status if the motion is granted; and
(E) Written agreement by the practitioner not to practice before the
Office in patent, trademark, or other non-patent matters while in
disability inactive status.
(ii) Response. The OED Director's response to any motion hereunder
shall be served and filed within thirty days after service of the
practitioner's motion unless such time is shortened or enlarged by the
hearing officer for good cause shown, and shall set forth the following:
(A) All objections, if any, to the actions requested in the motion;
(B) An admission, denial or allegation of lack of knowledge with
respect to each of the material facts in the practitioner's motion and
accompanying documents; and
(C) Affidavits, medical reports, official records, or other
documents setting forth facts on which the OED Director intends to rely
for purposes of disputing or denying any material fact set forth in the
practitioner's papers.
(2) Disposition of practitioner's motion. The hearing officer shall
decide the motion and any response thereto. The motion shall be granted
upon a showing of good cause to believe the practitioner to be
incapacitated as alleged. If the required showing is made, the hearing
officer shall enter an order holding the disciplinary proceeding in
abeyance. In the case of addiction to drugs or intoxicants, the order
may provide that the practitioner will not be returned to active status
absent satisfaction of specified conditions. Upon receipt of the order,
the OED Director shall transfer the practitioner to disability inactive
status, give notice to the practitioner, cause notice to be published,
and give notice to appropriate authorities in the Office that the
practitioner has been placed in disability inactive status. The
practitioner shall comply with the provisions of Sec.11.58 and shall
not engage in practice before the Office in patent, trademark, and other
non-patent law until a determination is made of the practitioner's
capability to resume practice before the Office in a proceeding under
paragraph (c) or (d) of this section. A practitioner in disability
inactive status must obtain permission from the OED Director to engage
in paralegal activity permitted under Sec.11.58(h). Permission will be
granted only if the practitioner has complied with all the conditions of
Sec.11.58 applicable to disability inactive status. In the event that
permission is granted, the practitioner shall fully comply with the
provisions of Sec.11.58(h).
(b) Motion for reactivation. Any practitioner transferred to
disability inactive status in a disciplinary proceeding may file with
the hearing officer a motion for reactivation once a year beginning at
any time not less than one year after the initial effective date of
inactivation, or once during any shorter interval provided by the order
issued pursuant to paragraph (a)(2) of this section or any modification
thereof. If the motion is granted, the disciplinary proceeding shall
resume under such schedule as may be established by the hearing officer.
(c) Contents of motion for reactivation. A motion by the
practitioner for reactivation alleging that a practitioner has recovered
from a prior disability or addiction shall be accompanied by all
available medical reports or similar documents relating thereto. The
hearing officer may require the practitioner to present such other
information as is necessary.
(d) OED Director's motion to resume disciplinary proceeding held in
abeyance. (1) The OED Director, having good cause to believe a
practitioner is no longer incapacitated, may file a motion requesting
the hearing officer to terminate a prior order holding in abeyance any
pending proceeding because of the practitioner's disability or
addiction. The hearing officer shall decide the matter presented by the
OED Director's motion hereunder based on the affidavits and other
admissible evidence attached to the OED Director's motion and the
practitioner's response. The OED Director bears the burden of showing by
clear and convincing evidence that the practitioner is able to defend
himself or herself. If there is
[[Page 427]]
any genuine issue as to one or more material facts, the hearing officer
will hold an evidentiary hearing.
(2) The hearing officer, upon receipt of the OED Director's motion
under paragraph (d)(1) of this section, may direct the practitioner to
file a response. If the hearing officer requires the practitioner to
file a response, the practitioner must present clear and convincing
evidence that the prior self-alleged disability or addiction continues
to make it impossible for the practitioner to defend himself or herself
in the underlying proceeding being held in abeyance.
(e) Action by the hearing officer. If, in deciding a motion under
paragraph (b) or (d) of this section, the hearing officer determines
that there is good cause to believe the practitioner is not
incapacitated from defending himself or herself, or is not incapacitated
from practicing before the Office, the hearing officer shall take such
action as is deemed appropriate, including the entry of an order
directing the reactivation of the practitioner and resumption of the
disciplinary proceeding.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]
Sec.11.29 Reciprocal transfer or initial transfer to disability
inactive status.
(a) Notice to the OED Director--(1) Transfer to disability inactive
status in another jurisdiction as grounds for reciprocal transfer by the
Office. Within 30 days of being transferred to disability inactive
status in another jurisdiction, a practitioner subject to the
disciplinary jurisdiction of the Office shall notify the OED Director in
writing of the transfer. Upon notification from any source that a
practitioner subject to the disciplinary jurisdiction of the Office has
been transferred to disability inactive status in another jurisdiction,
the OED Director shall obtain a certified copy of the order. If the OED
Director finds that transfer to disability inactive status is
appropriate, the OED Director shall file with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be transferred to disability
inactive status, including the specific grounds therefor; and
(iii) A request that the USPTO Director issue a notice and order as
set forth in paragraph (b) of this section.
(2) Involuntary commitment, adjudication of incompetency, or court
ordered placement under guardianship or conservatorship as grounds for
initial transfer to disability inactive status. Within 30 days of being
judicially declared incompetent, judicially ordered to be involuntarily
committed after a hearing on the grounds of incompetency or disability,
or placed by court order under guardianship or conservatorship in
another jurisdiction, a practitioner subject to the disciplinary
jurisdiction of the Office shall notify the OED Director in writing of
such judicial action. Upon notification from any source that a
practitioner subject to the disciplinary jurisdiction of the Office has
been subject to such judicial action, the OED Director shall obtain a
certified copy of the order. If the OED Director finds that transfer to
disability inactive status is appropriate, the OED Director shall file
with the USPTO Director:
(i) The order;
(ii) A request that the practitioner be transferred to disability
inactive status, including the specific grounds therefor; and
(iii) A request that the USPTO Director issue a notice and order as
set forth in paragraph (b) of this section.
(b) Notice served on practitioner. Upon receipt of a certified copy
of an order or declaration issued by another jurisdiction demonstrating
that a practitioner subject to the disciplinary jurisdiction of the
Office has been transferred to disability inactive status, judicially
declared incompetent, judicially ordered to be involuntarily committed
after a judicial hearing on the grounds of incompetency or disability,
or placed by court order under guardianship or conservatorship, together
with the OED Director's request, the USPTO Director shall issue a
notice, comporting with Sec.11.35, directed to the practitioner
containing:
(1) A copy of the order or declaration from the other jurisdiction;
(2) A copy of the OED Director's request; and
[[Page 428]]
(3) An order directing the practitioner to file a response with the
USPTO Director and the OED Director, within 40 days from the date of the
notice, establishing by clear and convincing evidence a genuine issue of
material fact supported by an affidavit and predicated upon the grounds
set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of this section
that a transfer to disability inactive status would be unwarranted and
the reasons therefor.
(c) Effect of stay of transfer, judicially declared incompetence,
judicially ordered involuntarily commitment on the grounds of
incompetency or disability, or court-ordered placement under
guardianship or conservatorship. In the event the transfer, judicially
declared incompetence, judicially ordered involuntary commitment on the
grounds of incompetency or disability, or court-ordered placement under
guardianship or conservatorship in the other jurisdiction has been
stayed there, any reciprocal transfer or transfer by the Office may be
deferred until the stay expires.
(d) Transfer to disability inactive status. (1) The request for
transfer to disability inactive status shall be heard by the USPTO
Director on the documentary record unless the USPTO Director determines
that there is a genuine issue of material fact, in which case the USPTO
Director may deny the request. The USPTO Director may order the OED
Director or the practitioner to supplement the record with further
information or argument. After expiration of the period specified in
paragraph (b)(3) of this section, and after completion of any
supplemental hearings, the USPTO Director shall consider any timely
filed response and impose the identical transfer to disability inactive
status based on the practitioner's transfer to disability status in
another jurisdiction or shall transfer the practitioner to disability
inactive status based on judicially declared incompetence, judicially
ordered involuntary commitment on the grounds of incompetency or
disability, or court-ordered placement under guardianship or
conservatorship, unless the practitioner demonstrates by clear and
convincing evidence, and the USPTO Director finds there is a genuine
issue of material fact that:
(i) The procedure was so lacking in notice or opportunity to be
heard as to constitute a deprivation of due process;
(ii) There was such infirmity of proof establishing the transfer to
disability status, judicial declaration of incompetence, judicial order
for involuntary commitment on the grounds of incompetency or disability,
or placement by court order under guardianship or conservatorship that
the USPTO Director could not, consistent with the Office's duty, accept
as final the conclusion on that subject;
(iii) The imposition of the same disability status or transfer to
disability status by the USPTO Director would result in grave injustice;
or
(iv) The practitioner is not the individual transferred to
disability status, judicially declared incompetent, judicially ordered
for involuntary commitment on the grounds of incompetency or disability,
or placed by court order under guardianship or conservatorship.
(2) If the USPTO Director determines that there is no genuine issue
of material fact with regard to any of the elements of paragraphs
(d)(1)(i) through (d)(1)(iv) of this section, the USPTO Director shall
enter an appropriate final order. If the USPTO Director is unable to
make that determination because there is a genuine issue of material
fact, the USPTO Director shall enter an appropriate order dismissing the
OED Director's request for such reason.
(e) Adjudication in other jurisdiction. In all other aspects, a
final adjudication in another jurisdiction that a practitioner be
transferred to disability inactive status, is judicially declared
incompetent, is judicially ordered to be involuntarily committed on the
grounds of incompetency or disability, or is placed by court order under
guardianship or conservatorship shall establish the disability for
purposes of a reciprocal transfer to or transfer to disability status
before the Office.
(f) A practitioner who is transferred to disability inactive status
under this section shall be deemed to have been refused recognition to
practice before the Office for purposes of 35 U.S.C. 32.
(g) Order imposing reciprocal transfer to disability inactive status
or order imposing initial transfer to disability inactive
[[Page 429]]
status. An order by the USPTO Director imposing reciprocal transfer to
disability inactive status or transferring a practitioner to disability
inactive status shall be effective immediately and shall be for an
indefinite period until further order of the USPTO Director. A copy of
the order transferring a practitioner to disability inactive status
shall be served upon the practitioner, the practitioner's guardian, and/
or the director of the institution to which the practitioner has been
committed in the manner the USPTO Director may direct. A practitioner
reciprocally transferred or transferred to disability inactive status
shall comply with the provisions of this section and Sec.11.58 and
shall not engage in practice before the Office in patent, trademark, and
other non-patent law unless and until reinstated to active status.
(h) Confidentiality of proceeding; Orders to be public--(1)
Confidentiality of proceeding. All proceedings under this section
involving allegations of disability of a practitioner shall be kept
confidential until and unless the USPTO Director enters an order
reciprocally transferring or transferring the practitioner to disability
inactive status.
(2) Orders to be public. The OED Director shall publicize any
reciprocal transfer to disability inactive status or transfer to
disability inactive status in the same manner as for the imposition of
public discipline.
(i) Employment of practitioners on disability inactive status. A
practitioner in disability inactive status must obtain permission from
the OED Director to engage in paralegal activity permitted under Sec.
11.58(h). Permission will be granted only if the practitioner has
complied with all the conditions of Sec.11.58 applicable to disability
inactive status. In the event that permission is granted, the
practitioner shall fully comply with the provisions of Sec.11.58(h).
(j) Reinstatement from disability inactive status. (1) Generally. No
practitioner reciprocally transferred or transferred to disability
inactive status under this section may resume active status except by
order of the OED Director.
(2) Petition. A practitioner reciprocally transferred or transferred
to disability inactive status shall be entitled to petition the OED
Director for transfer to active status once a year, or at whatever
shorter intervals the USPTO Director may direct in the order
transferring or reciprocally transferring the practitioner to disability
inactive status or any modification thereof.
(3) Examination. Upon the filing of a petition for transfer to
active status, the OED Director may take or direct whatever action is
deemed necessary or proper to determine whether the incapacity has been
removed, including a direction for an examination of the practitioner by
qualified medical or psychological experts designated by the OED
Director. The expense of the examination shall be paid and borne by the
practitioner.
(4) Required disclosure, waiver of privilege. With the filing of a
petition for reinstatement to active status, the practitioner shall be
required to disclose the name of each psychiatrist, psychologist,
physician and hospital or other institution by whom or in which the
practitioner has been examined or treated for the disability since the
transfer to disability inactive status. The practitioner shall furnish
to the OED Director written consent to the release of information and
records relating to the incapacity if requested by the OED Director.
(5) Learning in the law, examination. The OED Director may direct
that the practitioner establish proof of competence and learning in law,
which proof may include passing the registration examination.
(6) Granting of petition for transfer to active status. The OED
Director shall grant the petition for transfer to active status upon a
showing by clear and convincing evidence that the incapacity has been
removed.
(7) Reinstatement in other jurisdiction. If a practitioner is
reciprocally transferred to disability inactive status on the basis of a
transfer to disability inactive status in another jurisdiction, the OED
Director may dispense with further evidence that the disability has been
removed and may immediately direct reinstatement to active status upon
such terms as are deemed proper and advisable.
[[Page 430]]
(8) Judicial declaration of competency. If a practitioner is
transferred to disability inactive status on the basis of a judicially
declared incompetence, judicially ordered involuntary commitment on the
grounds of incompetency or disability, or court-ordered placement under
guardianship or conservatorship has been declared to be competent, the
OED Director may dispense with further evidence that the incapacity to
practice law has been removed and may immediately direct reinstatement
to active status.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28459, May 26, 2021]
Sec. Sec.11.30-11.31 [Reserved]
Sec.11.32 Instituting a disciplinary proceeding.
If after conducting an investigation under Sec.11.22(a), the OED
Director is of the opinion that grounds exist for discipline under Sec.
11.19(b), the OED Director, after complying where necessary with the
provisions of 5 U.S.C. 558(c), may convene a meeting of a panel of the
Committee on Discipline. If convened, the panel of the Committee on
Discipline shall then determine as specified in Sec.11.23(b) whether
there is probable cause to bring disciplinary charges. If the panel of
the Committee on Discipline determines that probable cause exists to
bring charges, the OED Director may institute a disciplinary proceeding
by filing a complaint under Sec.11.34.
[78 FR 20201, Apr. 3, 2013]
Sec.11.33 [Reserved]
Sec.11.34 Complaint.
(a) A complaint instituting a disciplinary proceeding shall:
(1) Name the person who is the subject of the complaint who may then
be referred to as the ``respondent'';
(2) Give a plain and concise description of the respondent's alleged
grounds for discipline;
(3) State the place and time, not less than thirty days from the
date the complaint is filed, for filing an answer by the respondent;
(4) State that a decision by default may be entered if an answer is
not timely filed by the respondent; and
(5) Be signed by the OED Director.
(b) A complaint will be deemed sufficient if it fairly informs the
respondent of any grounds for discipline, and where applicable, the
USPTO Rules of Professional Conduct that form the basis for the
disciplinary proceeding so that the respondent is able to adequately
prepare a defense.
(c) The complaint shall be filed in the manner prescribed by the
USPTO Director. The term ``filed'' means the delivery, mailing, or
electronic transmission of a document to a hearing officer or designee
in connection with a disciplinary complaint or related matter.
(d) Time for filing a complaint. A complaint shall be filed within
one year after the date on which the OED Director receives a grievance
forming the basis of the complaint. No complaint shall be filed more
than ten years after the date on which the misconduct forming the basis
for the proceeding occurred.
(e) Tolling agreements. The one-year period for filing a complaint
under paragraph (d) of this section shall be tolled if the involved
practitioner and the OED Director agree in writing to such tolling.
[73 FR 47689, Aug. 14, 2008, as amended at 77 FR 45251, July 31, 2012;
78 FR 20201, Apr. 3, 2013; 86 FR 28460, May 26, 2021]
Sec.11.35 Service of complaint.
(a) A complaint may be served on a respondent by any of the
following methods:
(1) By delivering a copy of the complaint personally to the
respondent, in which case the individual who delivers the complaint to
the respondent shall file an affidavit with the OED Director indicating
the time and place the complaint was delivered to the respondent.
(2) By mailing a copy of the complaint by Priority Mail
Express[supreg], first-class mail, or any delivery service that provides
confirmation of delivery or attempted delivery to:
(i) A respondent who is a registered practitioner at the address
provided to OED pursuant to Sec.11.11, or
(ii) A respondent who is not registered at the last address for the
respondent known to the OED Director.
[[Page 431]]
(3) By any method mutually agreeable to the OED Director and the
respondent.
(4) In the case of a respondent who resides outside the United
States, by sending a copy of the complaint by any delivery service that
provides the ability to confirm delivery or attempted delivery, to:
(i) A respondent who is a registered practitioner at the address
provided to OED pursuant to Sec.11.11; or
(ii) A respondent who is not registered at the last address for the
respondent known to the OED Director.
(b) If a copy of the complaint cannot be delivered to the respondent
through any one of the procedures in paragraph (a) of this section, the
OED Director shall serve the respondent by causing an appropriate notice
to be published in the Official Gazette for two consecutive weeks, in
which case the time for filing an answer shall be 30 days from the
second publication of the notice. Failure to timely file an answer will
constitute an admission of the allegations in the complaint in
accordance with Sec.11.36(d), and the hearing officer may enter an
initial decision on default.
(c) If the respondent is known to the OED Director to be represented
by an attorney under Sec.11.40(a), a copy of the complaint may be
served on the attorney in lieu of service on the respondent in the
manner provided for in paragraph (a) or (b) of this section.
[86 FR 28460, May 26, 2021]
Sec.11.36 Answer to complaint.
(a) Time for answer. An answer to a complaint shall be filed within
the time set in the complaint but in no event shall that time be less
than thirty days from the date the complaint is filed.
(b) With whom filed. The answer shall be filed in writing with the
hearing officer at the address specified in the complaint. The hearing
officer may extend the time for filing an answer once for a period of no
more than thirty days upon a showing of good cause, provided a motion
requesting an extension of time is filed within thirty days after the
date the complaint is served on respondent. A copy of the answer, and
any exhibits or attachments thereto, shall be served on the OED
Director.
(c) Content. The respondent shall include in the answer a statement
of the facts that constitute the grounds of defense and shall
specifically admit or deny each allegation set forth in the complaint.
The respondent shall not deny a material allegation in the complaint
that the respondent knows to be true or state that respondent is without
sufficient information to form a belief as to the truth of an
allegation, when in fact the respondent possesses that information. The
respondent shall also state affirmatively in the answer special matters
of defense and any intent to raise a disability as a mitigating factor.
If respondent intends to raise a special matter of defense or
disability, the answer shall specify the defense or disability, its
nexus to the misconduct, and the reason it provides a defense or
mitigation. A respondent who fails to do so cannot rely on a special
matter of defense or disability. The hearing officer may, for good
cause, allow the respondent to file the statement late, grant additional
hearing preparation time, or make other appropriate orders.
(d) Failure to deny allegations in complaint. Every allegation in
the complaint that is not denied by a respondent in the answer shall be
deemed to be admitted and may be considered proven. The hearing officer
at any hearing need receive no further evidence with respect to that
allegation.
(e) Default judgment. Failure to timely file an answer will
constitute an admission of the allegations in the complaint and may
result in entry of default judgment.
Sec.11.37 [Reserved]
Sec.11.38 Contested case.
Upon the filing of an answer by the respondent, a disciplinary
proceeding shall be regarded as a contested case within the meaning of
35 U.S.C. 24. Evidence obtained by a subpoena issued under 35 U.S.C. 24
shall not be admitted into the record or considered unless leave to
proceed under 35 U.S.C. 24 was previously authorized by the hearing
officer.
[[Page 432]]
Sec.11.39 Hearing officer; responsibilities; review of interlocutory
orders; stays.
(a) Designation. A hearing officer designated by the USPTO Director
shall conduct disciplinary proceedings as provided by this part.
(b) Independence of the hearing officer. (1) A hearing officer
designated in accordance with paragraph (a) of this section shall not be
subject to first-level or second-level supervision by either the USPTO
Director or OED Director or his or her designee.
(2) A hearing officer designated in accordance with paragraph (a) of
this section shall not be subject to supervision of the person(s)
investigating or prosecuting the case.
(3) A hearing officer designated in accordance with paragraph (a) of
this section shall be impartial, shall not be an individual who has
participated in any manner in the decision to initiate the proceedings,
and shall not have been employed under the immediate supervision of the
practitioner.
(4) A hearing officer designated in accordance with paragraph (a) of
this section shall be either an administrative law judge appointed under
5 U.S.C. 3105 or an attorney designated under 35 U.S.C. 32. The hearing
officer shall possess suitable experience and training in conducting
hearings, reaching a determination, and rendering an initial decision in
an equitable manner.
(c) Responsibilities. The hearing officer shall have authority,
consistent with specific provisions of these regulations, to:
(1) Administer oaths and affirmations;
(2) Make rulings upon motions and other requests;
(3) Rule upon offers of proof, receive relevant evidence, and
examine witnesses;
(4) Authorize the taking of a deposition of a witness in lieu of
personal appearance of the witness before the hearing officer;
(5) Determine the time and place of any hearing and regulate its
course and conduct;
(6) Hold or provide for the holding of conferences to settle or
simplify the issues;
(7) Receive and consider oral or written arguments on facts or law;
(8) Adopt procedures and modify procedures for the orderly
disposition of proceedings;
(9) Make initial decisions under Sec. Sec.11.25 and 11.54; and
(10) Perform acts and take measures as necessary to promote the
efficient, timely, and impartial conduct of any disciplinary proceeding.
(d) Time for making initial decision. The hearing officer shall set
times and exercise control over a disciplinary proceeding such that an
initial decision under Sec.11.54 is normally issued within nine months
of the date a complaint is filed. The hearing officer may, however,
issue an initial decision more than nine months after a complaint is
filed if there exist circumstances, in his or her opinion, that preclude
issuance of an initial decision within nine months of the filing of the
complaint.
(e) Review of interlocutory orders. The USPTO Director will not
review an interlocutory order of a hearing officer except:
(1) When the hearing officer shall be of the opinion:
(i) That the interlocutory order involves a controlling question of
procedure or law as to which there is a substantial ground for a
difference of opinion, and
(ii) That an immediate decision by the USPTO Director may materially
advance the ultimate termination of the disciplinary proceeding, or
(2) In an extraordinary situation where the USPTO Director deems
that justice requires review.
(f) Stays pending review of interlocutory order. If the OED Director
or a respondent seeks review of an interlocutory order of a hearing
officer under paragraph (e)(2) of this section, any time period set by
the hearing officer for taking action shall not be stayed unless ordered
by the USPTO Director or the hearing officer.
(g) The hearing officer shall engage in no ex parte discussions with
any party on the merits of the complaint,
[[Page 433]]
beginning with appointment and ending when the final agency decision is
issued.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021]
Sec.11.40 Representative for OED Director or respondent.
(a) A respondent may represent himself or herself, or be represented
by an attorney before the Office in connection with an investigation or
disciplinary proceeding. The attorney shall file a written declaration
that he or she is an attorney within the meaning of Sec.11.1 and shall
state:
(1) The address to which the attorney wants correspondence related
to the investigation or disciplinary proceeding sent, and
(2) A telephone number where the attorney may be reached during
normal business hours.
(b) The Deputy General Counsel for Intellectual Property and
Solicitor and attorneys in the Office of the Solicitor shall represent
the OED Director. The attorneys representing the OED Director in
disciplinary proceedings shall not consult with the USPTO Director, the
General Counsel, the Deputy General Counsel for General Law, or an
individual designated by the USPTO Director to decide disciplinary
matters regarding the proceeding.
(c) The General Counsel and the Deputy General Counsel for General
Law shall remain screened from the investigation and prosecution of all
disciplinary proceedings in order that they shall be available as
counsel to the USPTO Director in deciding disciplinary proceedings
unless access is appropriate to perform their duties. After a final
decision is entered in a disciplinary proceeding, the OED Director and
attorneys representing the OED Director shall be available to counsel
the USPTO Director, the General Counsel, and the Deputy General Counsel
for General Law in any further proceedings.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021]
Sec.11.41 Filing of papers.
(a) The provisions of Sec. Sec.1.8 and 2.197 of this chapter do
not apply to disciplinary proceedings. All papers filed after the
complaint and prior to entry of an initial decision by the hearing
officer shall be filed with the hearing officer at an address or place
designated by the hearing officer. The term ``filed'' means the
delivery, mailing, or electronic transmission of a document to a hearing
officer or designee in connection with a disciplinary complaint or
related matter.
(b) All papers filed after entry of an initial decision by the
hearing officer shall be filed with the USPTO Director. A copy of the
paper shall be served on the OED Director. The hearing officer or the
OED Director may provide for filing papers and other matters by hand, by
Priority Mail Express[supreg], or by other means.
[69 FR 35452, June 24, 2004, as amended at 79 FR 63042, Oct. 22, 2014;
86 FR 28461, May 26, 2021]
Sec.11.42 Service of papers.
(a) All papers other than a complaint shall be served on a
respondent who is represented by an attorney by:
(1) Delivering a copy of the paper to the office of the attorney; or
(2) Mailing a copy of the paper by first-class mail, Priority Mail
Express[supreg], or other delivery service to the attorney at the
address provided by the attorney under Sec.11.40(a)(1); or
(3) Any other method mutually agreeable to the attorney and a
representative for the OED Director.
(b) All papers other than a complaint shall be served on a
respondent who is not represented by an attorney by:
(1) Delivering a copy of the paper to the respondent; or
(2) Mailing a copy of the paper by first-class mail, Priority Mail
Express[supreg], or other delivery service to the respondent at the
address to which a complaint may be served or such other address as may
be designated in writing by the respondent; or
(3) Any other method mutually agreeable to the respondent and a
representative for the OED Director.
(c) A respondent shall serve on the representative for the OED
Director one copy of each paper filed with the hearing officer or the
OED Director. A paper may be served on the representative for the OED
Director by:
[[Page 434]]
(1) Delivering a copy of the paper to the representative; or
(2) Mailing a copy of the paper by first-class mail, Priority Mail
Express[supreg], or other delivery service to an address designated in
writing by the representative; or
(3) Any other method mutually agreeable to the respondent and the
representative.
(d) Each paper filed in a disciplinary proceeding shall contain
therein a certificate of service indicating:
(1) The date on which service was made; and
(2) The method by which service was made.
(e) The hearing officer or the USPTO Director may require that a
paper be served by hand or by Priority Mail Express[supreg].
(f) Service by mail is completed when the paper mailed in the United
States is placed into the custody of the U.S. Postal Service.
[79 FR 63042, Oct. 22, 2014]
Sec.11.43 Motions before a hearing officer.
Motions, including all prehearing motions commonly filed under the
Federal Rules of Civil Procedure, shall be served on the opposing party
and filed with the hearing officer. Each motion shall be accompanied by
a written memorandum setting forth a concise statement of the facts and
supporting reasons, along with a citation of the authorities upon which
the movant relies. Unless extended by the tribunal for good cause, an
opposing party shall serve and file a memorandum in response to the
motion within 21 days of the date of service of the motion, and the
moving party may file a reply memorandum within 14 days after service of
the opposing party's responsive memorandum. All memoranda shall be
double-spaced and written in 12-point font unless otherwise ordered by
the hearing officer. Every motion must include a statement that the
moving party or attorney for the moving party has conferred with the
opposing party or attorney for the opposing party in a good-faith effort
to resolve the issues raised by the motion and whether the motion is
opposed. If, prior to a decision on the motion, the parties resolve
issues raised by a motion presented to the hearing officer, the parties
shall promptly notify the hearing officer.
[86 FR 28461, May 26, 2021]
Sec.11.44 Hearings.
(a) The hearing officer shall preside over hearings in disciplinary
proceedings. After the time for filing an answer has elapsed, the
hearing officer shall set the time and place for the hearing. In cases
involving an incarcerated respondent, any necessary oral hearing may be
held at the location of incarceration. Oral hearings will be
stenographically recorded and transcribed, and the testimony of
witnesses will be received under oath or affirmation. The hearing
officer shall conduct the hearing as if the proceeding were subject to 5
U.S.C. 556. A copy of the transcript of the hearing shall become part of
the record. A copy of the transcript shall be provided to the OED
Director and the respondent at the expense of the Office.
(b) If the respondent to a disciplinary proceeding fails to appear
at the hearing after a notice of hearing has been issued by the hearing
officer, the hearing officer may deem the respondent to have waived the
opportunity for a hearing and may proceed with the hearing in the
absence of the respondent. Where the respondent does not appear, the
hearing officer may strike the answer or any other pleading, deem the
respondent to have admitted the facts as alleged in the complaint,
receive evidence in aggravation or mitigation, enter a default judgment,
and/or enter an initial decision imposing discipline on the respondent.
(c) A hearing under this section will not be open to the public
except that the hearing officer may grant a request by a respondent to
open his or her hearing to the public and make the record of the
disciplinary proceeding available for public inspection, provided, a
protective order is entered to exclude from public disclosure
information which is privileged or confidential under applicable laws or
regulations.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28461, May 26, 2021]
[[Page 435]]
Sec.11.45 Amendment of pleadings.
The OED Director may, without Committee on Discipline authorization,
but with the authorization of the hearing officer, amend the complaint
to include additional charges based upon conduct committed before or
after the complaint was filed. If amendment of the complaint is
authorized, the hearing officer shall authorize amendment of the answer.
Any party who would otherwise be prejudiced by the amendment will be
given reasonable opportunity to meet the allegations in the complaint or
answer as amended, and the hearing officer shall make findings on any
issue presented by the complaint or answer as amended.
Sec. Sec.11.46-11.48 [Reserved]
Sec.11.49 Burden of proof.
In a disciplinary proceeding, the OED Director shall have the burden
of proving the violation by clear and convincing evidence and a
respondent shall have the burden of proving any affirmative defense by
clear and convincing evidence.
Sec.11.50 Evidence.
(a) Rules of evidence. The rules of evidence prevailing in courts of
law and equity are not controlling in hearings in disciplinary
proceedings. However, the hearing officer shall exclude evidence that is
irrelevant, immaterial, speculative, or unduly repetitious.
(b) Depositions. Depositions of witnesses taken pursuant to Sec.
11.51 may be admitted as evidence.
(c) Government documents. Official documents, records, and papers of
the Office, including, but not limited to, all papers in the file of a
disciplinary investigation, are admissible without extrinsic evidence of
authenticity. These documents, records, and papers may be evidenced by a
copy certified as correct by an employee of the Office.
(d) Exhibits. If any document, record, or other paper is introduced
in evidence as an exhibit, the hearing officer may authorize the
withdrawal of the exhibit subject to any conditions the hearing officer
deems appropriate.
(e) Objections. Objections to evidence will be in short form,
stating the grounds of objection. Objections and rulings on objections
will be a part of the record. No exception to the ruling is necessary to
preserve the rights of the parties.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28462, May 26, 2021]
Sec.11.51 Depositions.
(a) Depositions for use at the hearing in lieu of the personal
appearance of a witness before the hearing officer may be taken by the
respondent or the OED Director by agreement; or upon a showing of good
cause and with the approval of, and under such conditions as may be
deemed appropriate by, the hearing officer. If a motion to take a
deposition is granted, the hearing officer shall authorize a subpoena to
be issued pursuant to 35 U.S.C. 24. If the deponent is a USPTO employee,
the respondent shall comply with the requirements of part 104 of this
chapter.
(b) A party seeking a deposition shall give reasonable notice of not
less than 14 days unless a shorter period is agreed upon by the parties
or authorized by the hearing officer. The notice shall state the date,
time, and place of the deposition.
(c) Depositions may be taken upon oral or written questions before
any officer authorized to administer an oath or affirmation in the place
where the deposition is to be taken. Deposition expenses shall be borne
by the party at whose instance the deposition is taken.
(d) When a deposition is taken upon written questions, copies of the
written questions will be served upon the other party with the notice,
and copies of any written cross-questions will be served by hand or
Priority Mail Express[supreg] not less than five days before the date of
the taking of the deposition unless the parties mutually agree
otherwise.
(e) Testimony by deposition may be recorded by audiovisual means
provided that:
(1) The notice of deposition states that the method of recording is
audiovisual, and
(2) A written transcript of the deposition is prepared by a court
reporter who was present at the deposition and recorded the testimony.
[[Page 436]]
(f) A party on whose behalf a deposition is taken shall file with
the hearing officer a copy of a transcript of the deposition signed by a
court reporter and a copy of any audiovisual recording and shall serve
one copy of the transcript and any audiovisual recording upon the
opposing party.
(g) Depositions may not be taken to obtain discovery, except as
provided for in paragraph (h) of this section.
(h) When the OED Director and the respondent agree in writing, a
discovery deposition of any witness who will appear voluntarily may be
taken under such terms and conditions as may be mutually agreeable to
the OED Director and the respondent. The deposition shall not be filed
with the hearing officer and may not be admitted into evidence before
the hearing officer unless he or she orders the deposition admitted into
evidence. The admissibility of the deposition shall lie within the
discretion of the hearing officer, who may reject the deposition on any
reasonable basis, including the fact that demeanor is involved and that
the witness should have been called to appear personally before the
hearing officer.
[86 FR 28462, May 26, 2021]
Sec.11.52 Written discovery.
(a) After an answer is filed under Sec.11.36, a party may seek
written discovery of only relevant evidence. The party seeking written
discovery shall file a motion under Sec.11.43 explaining in detail,
for each request made, how the discovery sought is reasonable and
relevant to an issue actually raised in the complaint or the answer. The
motion shall include a copy of the proposed written discovery requests.
Any response shall include specific objections to each request, if any.
Any objection not raised in the response will be deemed to have been
waived.
(b) If the hearing officer concludes that the proposed written
discovery is reasonable and relevant, the hearing officer, under such
conditions as he or she deems appropriate, may order an opposing party,
within 30 days, or longer if so ordered by the hearing officer, to:
(1) Answer a reasonable number of requests for admission, including
requests for admission as to the genuineness of documents;
(2) Answer a reasonable number of interrogatories;
(3) Produce for inspection and copying a reasonable number of
documents; and
(4) Produce for inspection a reasonable number of things other than
documents.
(c) Discovery shall not be authorized under paragraph (a) of this
section of any matter that:
(1) Will be used by another party solely for impeachment;
(2) Is not available to the party under 35 U.S.C. 122;
(3) Relates to any other disciplinary proceeding before the Office;
(4) Relates to experts;
(5) Is privileged; or
(6) Relates to mental impressions, conclusions, opinions, or legal
theories of any attorney or other representative of a party.
(d) The hearing officer may deny discovery requested under paragraph
(a) of this section if the discovery sought:
(1) Will unduly delay the disciplinary proceeding;
(2) Will place an undue burden on the party required to produce the
discovery sought; or
(3) Consists of information that is available:
(i) Generally to the public,
(ii) Equally to the parties, or
(iii) To the party seeking the discovery through another source.
(e) A request for admission will be deemed admitted if the party to
whom the request is directed fails to respond or object to the request
within the time allowed.
(f) The hearing officer may require parties to file and serve, prior
to any hearing, a pre-hearing statement that contains:
(1) A list (together with a copy) of all proposed exhibits to be
used in connection with a party's case-in-chief;
(2) A list of proposed witnesses;
(3) As to each proposed expert witness:
(i) An identification of the field in which the individual will be
qualified as an expert,
[[Page 437]]
(ii) A statement as to the subject matter on which the expert is
expected to testify,
(iii) A complete statement of all opinions to which the expert is
expected to testify and the basis and reasons for them, and
(iv) A description of all facts or data considered by the expert in
forming the opinions; and
(4) Copies of memoranda reflecting the respondent's own statements
to administrative representatives.
[86 FR 28462, May 26, 2021]
Sec.11.53 Proposed findings and conclusions; post-hearing memorandum.
(a) Except in cases in which the respondent has failed to answer the
complaint or the amended complaint, or appear at a hearing, the hearing
officer, prior to making an initial decision, shall afford the parties a
reasonable opportunity to submit proposed findings and conclusions and a
post-hearing memorandum in support of the proposed findings and
conclusions.
(b) The OED Director shall serve and file a post-hearing memorandum
within 30 days after the hearing transcript has been filed with the
hearing officer. The respondent shall have 30 days after service of the
OED Director's post-hearing memorandum to file a responsive post-hearing
memorandum. The OED Director may file a reply memorandum within 21 days
after service of any responsive post-hearing memorandum.
(c) The respondent shall serve and file a post-hearing memorandum
with respect to any asserted affirmative defenses, or other matters for
which the respondent bears the burden of proof, within 30 days after the
hearing transcript has been filed with the hearing officer. The OED
Director shall have 30 days after service of the respondent's post-
hearing memorandum to file a responsive post-hearing memorandum. The
respondent may file a reply memorandum within 21 days after service of
any responsive post-hearing memorandum.
(d) The OED Director's and the respondent's responsive post-hearing
memoranda shall be limited to 50 pages, 12-point font, double-spacing,
and one-inch margins, and the reply memoranda shall be limited to 25
pages, 12-point font, double-spacing, and one-inch margins, unless
otherwise ordered by the hearing officer.
(e) The hearing officer may extend the time for filing a post-
hearing memorandum and may also increase the page limits, for good cause
shown.
[86 FR 28463, May 26, 2021]
Sec.11.54 Initial decision of hearing officer.
(a) The hearing officer shall make an initial decision in the case.
The decision will include:
(1) A statement of findings of fact and conclusions of law, as well
as the reasons or bases for those findings and conclusions with specific
references to the record, upon all the material issues of fact, law, or
discretion presented on the record; and
(2) An order of default judgment, of suspension or exclusion from
practice, of reprimand, of probation, or an order dismissing the
complaint. The order also may impose any conditions deemed appropriate
under the circumstances.
(b) The initial decision of the hearing officer shall explain the
reason for any default judgment, reprimand, suspension, exclusion, or
probation and shall explain any conditions imposed with discipline. In
determining any sanction, the following four factors shall be considered
if they are applicable:
(1) Whether the practitioner has violated a duty owed to a client,
the public, the legal system, or the profession;
(2) Whether the practitioner acted intentionally, knowingly, or
negligently;
(3) The amount of the actual or potential injury caused by the
practitioner's misconduct; and
(4) The existence of any aggravating or mitigating factors.
(c) The hearing officer shall transmit a copy of the initial
decision to the OED Director and to the respondent and shall transmit
the record of the proceeding to the OED Director within 14 days, or as
soon as practicable if thereafter, of the date of the initial decision.
(d) In the absence of an appeal to the USPTO Director, the decision
of the hearing officer will, without further proceedings, become the
final decision
[[Page 438]]
of the USPTO Director 30 days from the date of the decision of the
hearing officer.
[86 FR 28463, May 26, 2021]
Sec.11.55 Appeal to the USPTO Director.
(a) Within 14 days after the date of the initial decision of the
hearing officer under Sec. Sec.11.25 or 11.54, either party may appeal
to the USPTO Director by filing a notice of appeal. The notice shall be
filed with the General Counsel for the USPTO Director at the address set
forth in Sec.1.1(a)(3)(iv) of this chapter and served on the opposing
party. If both parties file notices of appeal, the first to file is
deemed the appellant for purposes of this rule. If both file on the same
day, the respondent is deemed the appellant.
(b) Any notice of cross-appeal shall be filed within 14 days after
the date of service of the notice of appeal.
(c) After a notice of appeal is filed, the OED Director shall
transmit the entire record to the USPTO Director and provide a copy to
the respondent.
(d) The appellant's brief shall be filed within 30 days after the
date of service of the record.
(e) Any appellee's brief shall be filed within 30 days after the
date of service of the appellant's brief.
(f) The appellant's and appellee's briefs shall comply with the
Federal Rules of Appellate Procedure 28(a)(2), (3), (5), (10), and
32(a)(4)-(7) unless otherwise ordered by the USPTO Director.
(g) Any reply brief shall be filed within 14 days after the date of
service of the appellee's brief and, unless otherwise ordered by the
USPTO Director, shall comply with Rules 28(c) and 32(a)(4)-(7) of the
Federal Rules of Appellate Procedure.
(h) If a cross-appeal has been filed, the parties shall comply with
Rules 28.1(c), (e), and (f) of the Federal Rules of Appellate Procedure
unless otherwise ordered by the USPTO Director.
(i) References to the record in the briefs must be to the pages of
the certified record.
(j) An appeal or cross-appeal must include exceptions to the
decisions of the hearing officer and supporting reasons for those
exceptions. Any exception not raised will be deemed to have been waived
and will be disregarded by the USPTO Director in reviewing the initial
decision.
(k) The USPTO Director may refuse entry of a nonconforming brief.
(l) The USPTO Director will decide the appeal on the record made
before the hearing officer.
(m) Unless the USPTO Director permits, no further briefs or motions
shall be filed. The USPTO Director may extend the time for filing a
brief upon the granting of a motion accompanied by a supporting
affidavit setting forth good cause warranting the extension.
(n) The USPTO Director may order reopening of a disciplinary
proceeding in accordance with the principles that govern the granting of
new trials. Any request to reopen a disciplinary proceeding on the basis
of newly discovered evidence must demonstrate that the newly discovered
evidence could not have been discovered any earlier by due diligence.
(o) Motions shall be served on the opposing party and filed with the
USPTO Director. Each motion shall be accompanied by a written memorandum
setting forth a concise statement of the facts and supporting reasons,
along with a citation of the authorities upon which the movant relies.
Unless extended by the USPTO Director for good cause, within 21 days of
the date of service of the motion, an opposing party shall serve and
file a response to the motion, and the moving party may file a reply
within 14 days after service of the opposing party's responsive
memorandum. All memoranda shall comply with Rules 32(a)(4)-(6) of the
Federal Rules of Appellate Procedure unless otherwise ordered by the
USPTO Director. Every motion must include a statement that the moving
party or attorney for the moving party has conferred with the opposing
party or attorney for the opposing party in a good faith effort to
resolve the issues raised by the motion and whether the motion is
opposed. If, prior to a decision on the motion, the parties resolve
issues raised by a motion presented to the USPTO Director, the parties
shall promptly notify the USPTO Director.
[86 FR 28463, May 26, 2021]
[[Page 439]]
Sec.11.56 Decision of the USPTO Director.
(a) The USPTO Director shall decide an appeal from an initial
decision of the hearing officer. On appeal from the initial decision,
the USPTO Director has authority to conduct a de novo review of the
factual record. The USPTO Director may affirm, reverse, or modify the
initial decision or remand the matter to the hearing officer for such
further proceedings as the USPTO Director may deem appropriate. In
making a final decision, the USPTO Director shall review the record or
the portions of the record designated by the parties. The USPTO Director
shall transmit a copy of the final decision to the OED Director and to
the respondent.
(b) A final decision of the USPTO Director may dismiss a
disciplinary proceeding, reverse or modify the initial decision,
reprimand a practitioner, or may suspend or exclude the practitioner
from practice before the Office. A final decision suspending or
excluding a practitioner shall require compliance with the provisions of
Sec.11.58. The final decision may also condition the reinstatement of
the practitioner upon a showing that the practitioner has taken steps to
correct or mitigate the matter forming the basis of the action, or to
prevent recurrence of the same or similar conduct.
(c) The respondent or the OED Director may make a single request for
reconsideration or modification of the decision by the USPTO Director if
filed within 20 days from the date of entry of the decision. The other
party may file a response to the request for reconsideration within 14
days of the filing of the request. No request for reconsideration or
modification shall be granted unless the request is based on newly
discovered evidence or clear error of law or fact, and the requestor
must demonstrate that any newly discovered evidence could not have been
discovered any earlier by due diligence. Such a request shall have the
effect of staying the effective date of the order of discipline in the
final decision. The decision by the USPTO Director is effective on its
date of entry.
[73 FR 47689, Aug. 14, 2008, as amended at 86 FR 28464, May 26, 2021]
Sec.11.57 Review of final decision of the USPTO Director.
(a) Review of the final decision by the USPTO Director in a
disciplinary case may be had by a petition filed in accordance with 35
U.S.C. 32. Any such petition shall be filed within 30 days after the
date of the final decision.
(b) The respondent must serve the USPTO Director with the petition.
The respondent must serve the petition in accordance with Rule 4 of the
Federal Rules of Civil Procedure and Sec.104.2 of this chapter.
(c) Except as provided for in Sec.11.56(c), an order for
discipline in a final decision will not be stayed except on proof of
exceptional circumstances.
[86 FR 28464, May 26, 2021]
Sec.11.58 Duties of disciplined practitioner or practitioner in
disability inactive status.
(a) Compliance requirements. An excluded or suspended practitioner
will not be automatically reinstated at the end of his or her period of
exclusion or suspension. Unless otherwise ordered by the USPTO Director,
an excluded or suspended practitioner must comply with the provisions of
this section and Sec.11.60 to be reinstated. A practitioner
transferred to disability inactive status must comply with the
provisions of this section and Sec.11.29 to be reinstated unless
otherwise ordered by the USPTO Director. Failure to comply with the
provisions of this section may constitute grounds for denying
reinstatement and cause for further action.
(b) Practice prohibitions. Any excluded or suspended practitioner,
or practitioner transferred to disability inactive status, shall:
(1) Not engage in practice before the Office in patent, trademark,
or other non-patent matters;
(2) Not advertise or otherwise hold himself or herself out as
authorized or able to practice before the Office; and
(3) Take all necessary steps to remove any advertisements or other
representations that would reasonably suggest that the practitioner is
authorized or able to practice before the Office.
[[Page 440]]
(c) Thirty-day requirements. Within 30 days after the date of the
order of exclusion, suspension, or transfer to disability inactive
status, an excluded or suspended practitioner, or practitioner
transferred to disability inactive status, shall:
(1) Withdraw from representation in all matters pending before the
Office;
(2) Provide written notice of the order of exclusion, suspension, or
transfer to disability inactive status to all State and Federal
jurisdictions and administrative agencies to which the practitioner is
admitted to practice;
(3) Provide to all clients having immediate or prospective business
before the Office in patent, trademark, or other non-patent matters:
(i) Written notice of the order of exclusion, suspension, or
transfer to disability inactive status, that calls attention to the
practitioner's lack of authority to act as a practitioner after the
effective date of the order; specifies any urgent dates for the client's
matters; and advises the client to act promptly to seek legal advice
elsewhere if the client is not already represented by another
practitioner;
(ii) Any papers or other property to which the clients are entitled,
or schedule a suitable time and place where the papers and other
property may be obtained, and call attention to any urgency for
obtaining the papers or other property; and
(iii) Any unearned fees for practice before the Office and any
advanced costs not expended;
(4) Provide written notice of the order of exclusion, suspension, or
transfer to disability inactive status to all opposing parties in
matters pending before the Office and provide in the notice a mailing
address for each client of the practitioner who is a party in the
pending matter; and
(5) Serve all notices required by paragraphs (c)(2), (c)(3), and
(c)(4) of this section by certified mail, return receipt requested,
unless the intended recipient is located outside the United States.
Where the intended recipient is located outside the United States, all
notices shall be sent by a delivery service that provides the ability to
confirm delivery or attempted delivery.
(d) Forty-five-day requirements. Within 45 days after the date of
the order of exclusion, suspension, or transfer to disability inactive
status, an excluded or suspended practitioner, or practitioner
transferred to disability inactive status, shall file with the OED
Director an affidavit of compliance certifying that the practitioner has
fully complied with the provisions of the order, with this section, and
with Sec.11.116 for withdrawal from representation. Appended to the
affidavit of compliance shall be:
(1) A copy of each form of notice; the names and addresses of the
clients, practitioners, courts, and agencies to which notices were sent;
and all return receipts or returned mail received up to the date of the
affidavit. Supplemental affidavits shall be filed covering subsequent
return receipts and returned mail. Such names and addresses of clients
shall remain confidential unless otherwise ordered by the USPTO
Director;
(2) A schedule showing the location, title, and account number of
every account in which the practitioner holds, or held as of the entry
date of the order, any client, trust, or fiduciary funds for practice
before the Office;
(3) A schedule describing, and evidence showing, the practitioner's
disposition of all client and fiduciary funds for practice before the
Office in the practitioner's possession, custody, or control as of the
date of the order or thereafter;
(4) A list of all State, Federal, and administrative jurisdictions
to which the practitioner is admitted to practice; and
(5) A description of the steps taken to remove any advertisements or
other representations that would reasonably suggest that the
practitioner is authorized to practice patent, trademark, or other non-
patent law before the Office.
(e) Requirement to update correspondence address. An excluded or
suspended practitioner, or a practitioner transferred to disability
inactive status, shall continue to file a statement in accordance with
Sec.11.11 regarding any change of residence or other address to which
communications may thereafter be directed.
[[Page 441]]
(f) Limited recognition for winding up practice. Unless otherwise
provided by an order of the USPTO Director, an excluded or suspended
practitioner, or practitioner transferred to disability inactive status,
shall not engage in any practice before the Office. The USPTO Director
may grant such a practitioner limited recognition for a period of no
more than 30 days to conclude work on behalf of a client on any matters
pending before the Office. If such work cannot be concluded, the
practitioner shall so advise the client so that the client may make
other arrangements.
(g) Required records. An excluded or suspended practitioner, or
practitioner transferred to disability inactive status, shall retain
copies of all notices sent and maintain records of the various steps
taken under this section. The practitioner shall provide proof of
compliance as a condition precedent to the granting of any petition for
reinstatement.
(h) Aiding another practitioner while suspended or excluded; acting
as a paralegal. An excluded or suspended practitioner, or practitioner
in disability inactive status, may act as a paralegal for a supervising
practitioner or perform other services for the supervising practitioner
that are normally performed by laypersons, provided:
(1) The practitioner is under the direct supervision of the
supervising practitioner;
(2) The practitioner is a salaried employee of:
(i) The supervising practitioner,
(ii) The supervising practitioner's law firm, or
(iii) A client-employer who employs the supervising practitioner as
a salaried employee;
(3) The supervising practitioner assumes full professional
responsibility to any client and the Office for any work performed by
the practitioner for the supervising practitioner; and
(4) The practitioner does not:
(i) Communicate directly in writing, orally, or otherwise with a
client, or prospective client, of the supervising practitioner in regard
to any immediate or prospective business before the Office;
(ii) Render any legal advice or any legal services in regard to any
immediate or prospective business before the Office; or
(iii) Meet in person with, regardless of the presence of the
supervising practitioner:
(A) Any Office employee in connection with the prosecution of any
patent, trademark, or other matter before the Office;
(B) Any client, or prospective client, of the supervising
practitioner, the supervising practitioner's law firm, or the client-
employer of the supervising practitioner regarding immediate or
prospective business before the Office; or
(C) Any witness or potential witness whom the supervising
practitioner, the supervising practitioner's law firm, or the
supervising practitioner's client-employer may, or intends to, call as a
witness in any proceeding before the Office. The term ``witness''
includes individuals who will testify orally in a proceeding before, or
sign an affidavit or any other document to be filed in, the Office.
(i) Reinstatement after aiding another practitioner while suspended
or excluded. When an excluded or suspended practitioner, or practitioner
transferred to disability inactive status, acts as a paralegal or
performs services under paragraph (h) of this section, the practitioner
shall not thereafter be reinstated to practice before the Office unless:
(1) The practitioner has filed with the OED Director an affidavit
that:
(i) Explains in detail the precise nature of all paralegal or other
services performed by the practitioner, and
(ii) Shows by clear and convincing evidence that the practitioner
has complied with the provisions of this section and all USPTO Rules of
Professional Conduct; and
(2) The supervising practitioner has filed with the OED Director a
written statement that:
(i) States that the supervising practitioner has read the affidavit
required by paragraph (i)(1) of this section and that the supervising
practitioner believes every statement in the affidavit to be true, and
(ii) States that the supervising practitioner believes that the
excluded or suspended practitioner, or practitioner
[[Page 442]]
transferred to disability inactive status, has complied with paragraph
(h) of this section.
[86 FR 28464, May 26, 2021]
Sec.11.59 Dissemination of disciplinary and other information.
(a) The OED Director shall inform the public of the disposition of
each matter in which public discipline has been imposed, and of any
other changes in a practitioner's registration status. Public discipline
includes exclusion, as well as exclusion on consent; suspension; and
public reprimand. Unless otherwise ordered by the USPTO Director, the
OED Director shall give notice of public discipline and the reasons for
the discipline to disciplinary enforcement agencies in the State where
the practitioner is admitted to practice, to courts where the
practitioner is known to be admitted, and the public. If public
discipline is imposed, the OED Director shall cause a final decision of
the USPTO Director to be published. Final decisions of the USPTO
Director include default judgments. See Sec.11.54(a)(2). If a private
reprimand is imposed, the OED Director shall cause a redacted version of
the final decision to be published.
(b) Records available to the public. Unless the USPTO Director
orders that the proceeding or a portion of the record be kept
confidential, the OED Director's records of every disciplinary
proceeding where a practitioner is reprimanded, suspended, or excluded,
including when said sanction is imposed by default judgment, shall be
made available to the public upon written request, except that
information may be withheld as necessary to protect the privacy of third
parties or as directed in a protective order issued pursuant to Sec.
11.44(c). The record of a proceeding that results in a practitioner's
transfer to disability inactive status shall not be available to the
public.
(c) Access to records of exclusion by consent. Unless the USPTO
Director orders that the proceeding or a portion of the record be kept
confidential, an order excluding a practitioner on consent under Sec.
11.27 and the affidavit required under paragraph (a) of Sec.11.27
shall be available to the public, except that information in the order
or affidavit may be withheld as necessary to protect the privacy of
third parties or as directed in a protective order under Sec.11.44(c).
The affidavit required under paragraph (a) of Sec.11.27 shall not be
used in any other proceeding except by order of the USPTO Director or
upon written consent of the practitioner.
Sec.11.60 Petition for reinstatement of disciplined practitioner.
(a) Restrictions on practice. An excluded or suspended practitioner
shall not resume the practice of patent, trademark, or other non-patent
matters before the Office until reinstated.
(b) Petition for reinstatement for excluded or suspended
practitioners. An excluded or suspended practitioner shall be eligible
to petition for reinstatement only upon expiration of the period of
suspension or exclusion and the practitioner's full compliance with
Sec.11.58. An excluded practitioner shall be eligible to petition for
reinstatement no earlier than five years from the effective date of the
exclusion.
(c) Review of reinstatement petition. An excluded or suspended
practitioner shall file a petition for reinstatement accompanied by the
fee required by Sec.1.21(a)(10) of this chapter. The petition for
reinstatement shall be filed with the OED Director. A practitioner who
has violated any provision of Sec.11.58 shall not be eligible for
reinstatement until a continuous period of the time in compliance with
Sec.11.58 that is equal to the period of suspension or exclusion has
elapsed. If the excluded or suspended practitioner is not eligible for
reinstatement, or if the OED Director determines that the petition is
insufficient or defective on its face, the OED Director may dismiss the
petition. Otherwise, the OED Director shall consider the petition for
reinstatement. The excluded or suspended practitioner seeking
reinstatement shall have the burden of proving, by clear and convincing
evidence, that:
(1) The excluded or suspended practitioner has the good moral
character and reputation, competency, and learning in law required under
Sec.11.7 for admission;
(2) The resumption of practice before the Office will not be
detrimental to
[[Page 443]]
the administration of justice or subversive to the public interest; and
(3) The practitioner, if suspended, has complied with the provisions
of Sec.11.58 for the full period of suspension or, if excluded, has
complied with the provisions of Sec.11.58 for at least five continuous
years.
(d) Petitions for reinstatement--Action by the OED Director granting
reinstatement. (1) If the excluded or suspended practitioner is found to
have complied with paragraphs (c)(1) through (c)(3) of this section, the
OED Director shall enter an order of reinstatement that shall be
conditioned on payment of the costs of the disciplinary proceeding to
the extent set forth in paragraphs (d)(2) and (d)(3) of this section.
(2) Payment of costs of disciplinary proceedings. Prior to
reinstatement to practice under this section, the excluded or suspended
practitioner shall pay the costs of the disciplinary proceeding. The
costs imposed pursuant to this section include all of the following:
(i) The actual expense incurred by the OED Director or the Office
for the original and copies of any reporter's transcripts of the
disciplinary proceeding and any fee paid for the services of the
reporter;
(ii) All expenses paid by the OED Director or the Office that would
qualify as taxable costs recoverable in civil proceedings; and
(iii) The charges determined by the OED Director to be ``reasonable
costs'' of investigation, hearing, and review. These amounts shall serve
to defray the costs, other than fees for services of attorneys and
experts, of the Office of Enrollment and Discipline in the preparation
or hearing of the disciplinary proceeding and costs incurred in the
administrative processing of the disciplinary proceeding.
(3) A practitioner may only be granted relief from an order
assessing costs under this section, whether in whole or in part or by
grant of an extension of time to pay these costs, upon grounds of
hardship, special circumstances, or other good cause at the discretion
of the OED Director.
(e) Petitions for reinstatement--Action by the OED Director denying
reinstatement. If the excluded or suspended practitioner is found unfit
to resume practice before the Office, the OED Director shall first
provide the excluded or suspended practitioner with an opportunity to
show cause in writing why the petition should not be denied. If
unpersuaded by the showing, the OED Director shall deny the petition. In
addition to the reinstatement provisions set forth in this section, the
OED Director may require the excluded or suspended practitioner, in
meeting the requirements of paragraph (c)(1) of this section, to take
and pass the registration examination; attend ethics, substance abuse,
or law practice management courses; and/or take and pass the Multistate
Professional Responsibility Examination.
(f) Right to review. An excluded or suspended practitioner
dissatisfied with a final decision of the OED Director regarding his or
her reinstatement may seek review by the USPTO Director pursuant to
Sec.11.2(d).
(g) Resubmission of petitions for reinstatement. If a petition for
reinstatement is denied, no further petition for reinstatement may be
filed until the expiration of at least one year following the denial
unless the order of denial provides otherwise.
(h) Reinstatement proceedings open to public. (1) Proceedings on any
petition for reinstatement shall be open to the public. Before
reinstating any excluded or suspended practitioner, the OED Director
shall publish a notice that such practitioner seeks reinstatement and
shall permit the public a reasonable opportunity to comment or submit
evidence regarding such matter.
(2) Up to 90 days prior to the expiration of the period of
suspension or exclusion, a practitioner may file a written notice of his
or her intent to seek reinstatement with the OED Director and may
request that such notice be published. In the absence of such a request,
notice of a petition for reinstatement will be published upon receipt of
such petition.
[86 FR 28465, May 26, 2021]
[[Page 444]]
Sec. Sec.11.61-11.99 [Reserved]
Subpart D_USPTO Rules of Professional Conduct
Source: 78 FR 20201, Apr. 3, 2013, unless otherwise noted.
Sec.11.100 [Reserved]
Client-Practitioner Relationship
Sec.11.101 Competence.
A practitioner shall provide competent representation to a client.
Competent representation requires the legal, scientific, and technical
knowledge, skill, thoroughness and preparation reasonably necessary for
the representation.
Sec.11.102 Scope of representation and allocation of authority
between client and practitioner.
(a) Subject to paragraphs (c) and (d) of this section, a
practitioner shall abide by a client's decisions concerning the
objectives of representation and, as required by Sec.11.104, shall
consult with the client as to the means by which they are to be pursued.
A practitioner may take such action on behalf of the client as is
impliedly authorized to carry out the representation. A practitioner
shall abide by a client's decision whether to settle a matter.
(b) [Reserved]
(c) A practitioner may limit the scope of the representation if the
limitation is reasonable under the circumstances and the client gives
informed consent.
(d) A practitioner shall not counsel a client to engage, or assist a
client, in conduct that the practitioner knows is criminal or
fraudulent, but a practitioner may discuss the legal consequences of any
proposed course of conduct with a client and may counsel or assist a
client to make a good-faith effort to determine the validity, scope,
meaning or application of the law.
Sec.11.103 Diligence.
A practitioner shall act with reasonable diligence and promptness in
representing a client.
Sec.11.104 Communication.
(a) A practitioner shall:
(1) Promptly inform the client of any decision or circumstance with
respect to which the client's informed consent is required by the USPTO
Rules of Professional Conduct;
(2) Reasonably consult with the client about the means by which the
client's objectives are to be accomplished;
(3) Keep the client reasonably informed about the status of the
matter;
(4) Promptly comply with reasonable requests for information from
the client; and
(5) Consult with the client about any relevant limitation on the
practitioner's conduct when the practitioner knows that the client
expects assistance not permitted by the USPTO Rules of Professional
Conduct or other law.
(b) A practitioner shall explain a matter to the extent reasonably
necessary to permit the client to make informed decisions regarding the
representation.
Sec.11.105 Fees.
(a) A practitioner shall not make an agreement for, charge, or
collect an unreasonable fee or an unreasonable amount for expenses. The
factors to be considered in determining the reasonableness of a fee
include the following:
(1) The time and labor required, the novelty and difficulty of the
questions involved, and the skill requisite to perform the legal service
properly;
(2) The likelihood, if apparent to the client, that the acceptance
of the particular employment will preclude other employment by the
practitioner;
(3) The fee customarily charged in the locality for similar legal
services;
(4) The amount involved and the results obtained;
(5) The time limitations imposed by the client or by the
circumstances;
(6) The nature and length of the professional relationship with the
client;
(7) The experience, reputation, and ability of the practitioner or
practitioners performing the services; and
(8) Whether the fee is fixed or contingent.
[[Page 445]]
(b) The scope of the representation and the basis or rate of the fee
and expenses for which the client will be responsible shall be
communicated to the client, preferably in writing, before or within a
reasonable time after commencing the representation, except when the
practitioner will charge a regularly represented client on the same
basis or rate. Any changes in the basis or rate of the fee or expenses
shall also be communicated to the client.
(c) A fee may be contingent on the outcome of the matter for which
the service is rendered, except in a matter in which a contingent fee is
prohibited by law. A contingent fee agreement shall be in a writing
signed by the client and shall state the method by which the fee is to
be determined, including the percentage or percentages that shall accrue
to the practitioner in the event of settlement, trial or appeal;
litigation and other expenses to be deducted from the recovery; and
whether such expenses are to be deducted before or after the contingent
fee is calculated. The agreement must clearly notify the client of any
expenses for which the client will be liable whether or not the client
is the prevailing party. Upon conclusion of a contingent fee matter, the
practitioner shall provide the client with a written statement stating
the outcome of the matter and, if there is a recovery, showing the
remittance to the client and the method of its determination.
(d) [Reserved]
(e) A division of a fee between practitioners who are not in the
same firm may be made only if:
(1) The division is in proportion to the services performed by each
practitioner or each practitioner assumes joint responsibility for the
representation;
(2) The client agrees to the arrangement, including the share each
practitioner will receive, and the agreement is confirmed in writing;
and
(3) The total fee is reasonable.
Sec.11.106 Confidentiality of information.
(a) A practitioner shall not reveal information relating to the
representation of a client unless the client gives informed consent, the
disclosure is impliedly authorized in order to carry out the
representation, the disclosure is permitted by paragraph (b) of this
section, or the disclosure is required by paragraph (c) of this section.
(b) A practitioner may reveal information relating to the
representation of a client to the extent the practitioner reasonably
believes necessary:
(1) To prevent reasonably certain death or substantial bodily harm;
(2) To prevent the client from engaging in inequitable conduct
before the Office or from committing a crime or fraud that is reasonably
certain to result in substantial injury to the financial interests or
property of another and in furtherance of which the client has used or
is using the practitioner's services;
(3) To prevent, mitigate, or rectify substantial injury to the
financial interests or property of another that is reasonably certain to
result or has resulted from the client's commission of a crime, fraud,
or inequitable conduct before the Office in furtherance of which the
client has used the practitioner's services;
(4) To secure legal advice about the practitioner's compliance with
the USPTO Rules of Professional Conduct;
(5) To establish a claim or defense on behalf of the practitioner in
a controversy between the practitioner and the client, to establish a
defense to a criminal charge or civil claim against the practitioner
based upon conduct in which the client was involved, or to respond to
allegations in any proceeding concerning the practitioner's
representation of the client;
(6) To comply with other law or a court order; or
(7) To detect and resolve conflicts of interest arising from the
practitioner's change of employment or from changes in the composition
or ownership of a firm, but only if the revealed information would not
compromise the practitioner-client privilege or otherwise prejudice the
client.
(c) A practitioner shall disclose to the Office information
necessary to comply with applicable duty of disclosure provisions.
(d) A practitioner shall make reasonable efforts to prevent the
inadvertent
[[Page 446]]
or unauthorized disclosure of, or unauthorized access to, information
relating to the representation of a client.
[86 FR 28466, May 26, 2021]
Sec.11.107 Conflict of interest; Current clients.
(a) Except as provided in paragraph (b) of this section, a
practitioner shall not represent a client if the representation involves
a concurrent conflict of interest. A concurrent conflict of interest
exists if:
(1) The representation of one client will be directly adverse to
another client; or
(2) There is a significant risk that the representation of one or
more clients will be materially limited by the practitioner's
responsibilities to another client, a former client or a third person or
by a personal interest of the practitioner.
(b) Notwithstanding the existence of a concurrent conflict of
interest under paragraph (a) of this section, a practitioner may
represent a client if:
(1) The practitioner reasonably believes that the practitioner will
be able to provide competent and diligent representation to each
affected client;
(2) The representation is not prohibited by law;
(3) The representation does not involve the assertion of a claim by
one client against another client represented by the practitioner in the
same litigation or other proceeding before a tribunal; and
(4) Each affected client gives informed consent, confirmed in
writing.
Sec.11.108 Conflict of interest; Current clients; Specific rules.
(a) A practitioner shall not enter into a business transaction with
a client or knowingly acquire an ownership, possessory, security or
other pecuniary interest adverse to a client unless:
(1) The transaction and terms on which the practitioner acquires the
interest are fair and reasonable to the client and are fully disclosed
and transmitted in writing in a manner that can be reasonably understood
by the client;
(2) The client is advised in writing of the desirability of seeking
and is given a reasonable opportunity to seek the advice of independent
legal counsel in the transaction; and
(3) The client gives informed consent, in a writing signed by the
client, to the essential terms of the transaction and the practitioner's
role in the transaction, including whether the practitioner is
representing the client in the transaction.
(b) A practitioner shall not use information relating to
representation of a client to the disadvantage of the client unless the
client gives informed consent, except as permitted or required by the
USPTO Rules of Professional Conduct.
(c) A practitioner shall not solicit any substantial gift from a
client, including a testamentary gift, or prepare on behalf of a client
an instrument giving the practitioner or a person related to the
practitioner any substantial gift unless the practitioner or other
recipient of the gift is related to the client. For purposes of this
paragraph, related persons include a spouse, child, grandchild, parent,
grandparent or other relative or individual with whom the practitioner
or the client maintains a close, familial relationship.
(d) Prior to the conclusion of representation of a client, a
practitioner shall not make or negotiate an agreement giving the
practitioner literary or media rights to a portrayal or account based in
substantial part on information relating to the representation.
(e) A practitioner shall not provide financial assistance to a
client in connection with pending or contemplated litigation or a
proceeding before the Office, except that:
(1) A practitioner may advance court costs and expenses of
litigation, the repayment of which may be contingent on the outcome of
the matter;
(2) A practitioner representing an indigent client may pay court
costs and expenses of litigation or a proceeding before the Office on
behalf of the client;
(3) A practitioner may advance costs and expenses in connection with
a proceeding before the Office provided the client remains ultimately
liable for such costs and expenses; and
(4) A practitioner may also advance any fee required to prevent or
remedy
[[Page 447]]
an abandonment of a client's application by reason of an act or omission
attributable to the practitioner and not to the client, whether or not
the client is ultimately liable for such fee.
(f) A practitioner shall not accept compensation for representing a
client from one other than the client unless:
(1) The client gives informed consent;
(2) There is no interference with the practitioner's independence of
professional judgment or with the client-practitioner relationship; and
(3) Information relating to representation of a client is protected
as required by Sec.11.106.
(g) A practitioner who represents two or more clients shall not
participate in making an aggregate settlement of the claims of or
against the clients, unless each client gives informed consent, in a
writing signed by the client. The practitioner's disclosure shall
include the existence and nature of all the claims involved and of the
participation of each person in the settlement.
(h) A practitioner shall not:
(1) Make an agreement prospectively limiting the practitioner's
liability to a client for malpractice unless the client is independently
represented in making the agreement; or
(2) Settle a claim or potential claim for such liability with an
unrepresented client or former client unless that person is advised in
writing of the desirability of seeking and is given a reasonable
opportunity to seek the advice of independent legal counsel in
connection therewith.
(i) A practitioner shall not acquire a proprietary interest in the
cause of action, subject matter of litigation, or a proceeding before
the Office which the practitioner is conducting for a client, except
that the practitioner may, subject to the other provisions in this
section:
(1) Acquire a lien authorized by law to secure the practitioner's
fee or expenses;
(2) Contract with a client for a reasonable contingent fee in a
civil case; and
(3) In a patent case or a proceeding before the Office, take an
interest in the patent or patent application as part or all of his or
her fee.
(j) [Reserved]
(k) While practitioners are associated in a firm, a prohibition in
paragraphs (a) through (i) of this section that applies to any one of
them shall apply to all of them.
Sec.11.109 Duties to former clients.
(a) A practitioner who has formerly represented a client in a matter
shall not thereafter represent another person in the same or a
substantially related matter in which that person's interests are
materially adverse to the interests of the former client unless the
former client gives informed consent, confirmed in writing.
(b) A practitioner shall not knowingly represent a person in the
same or a substantially related matter in which a firm with which the
practitioner formerly was associated had previously represented a
client:
(1) Whose interests are materially adverse to that person; and
(2) About whom the practitioner had acquired information protected
by Sec. Sec.11.106 and 11.109(c) that is material to the matter;
unless the former client gives informed consent, confirmed in writing.
(c) A practitioner who has formerly represented a client in a matter
or whose present or former firm has formerly represented a client in a
matter shall not thereafter:
(1) Use information relating to the representation to the
disadvantage of the former client except as the USPTO Rules of
Professional Conduct would permit or require with respect to a client,
or when the information has become generally known; or
(2) Reveal information relating to the representation except as the
USPTO Rules of Professional Conduct would permit or require with respect
to a client.
Sec.11.110 Imputation of conflicts of interest; General rule.
(a) While practitioners are associated in a firm, none of them shall
knowingly represent a client when any one of them practicing alone would
be prohibited from doing so by Sec. Sec.11.107 or 11.109, unless:
[[Page 448]]
(1) The prohibition is based on a personal interest of the
disqualified practitioner and does not present a significant risk of
materially limiting the representation of the client by the remaining
practitioners in the firm; or
(2) The prohibition is based upon Sec.11.109(a) or (b), and arises
out of the disqualified practitioner's association with a prior firm,
and
(i) The disqualified practitioner is timely screened from any
participation in the matter and is apportioned no part of the fee
therefrom; and
(ii) Written notice is promptly given to any affected former client
to enable the former client to ascertain compliance with the provisions
of this section, which shall include a description of the screening
procedures employed; a statement of the firm's and of the screened
practitioner's compliance with the USPTO Rules of Professional Conduct;
a statement that review may be available before a tribunal; and an
agreement by the firm to respond promptly to any written inquiries or
objections by the former client about the screening procedures.
(b) When a practitioner has terminated an association with a firm,
the firm is not prohibited from thereafter representing a person with
interests materially adverse to those of a client represented by the
formerly associated practitioner and not currently represented by the
firm, unless:
(1) The matter is the same or substantially related to that in which
the formerly associated practitioner represented the client; and
(2) Any practitioner remaining in the firm has information protected
by Sec. Sec.11.106 and 11.109(c) that is material to the matter.
(c) A disqualification prescribed by this section may be waived by
the affected client under the conditions stated in Sec.11.107.
(d) The disqualification of practitioners associated in a firm with
former or current Federal Government lawyers is governed by Sec.
11.111.
Sec.11.111 Former or current Federal Government employees.
A practitioner who is a former or current Federal Government
employee shall not engage in any conduct which is contrary to applicable
Federal ethics law, including conflict of interest statutes and
regulations of the department, agency or commission formerly or
currently employing said practitioner.
Sec.11.112 Former judge, arbitrator, mediator or other third-party
neutral.
(a) Except as stated in paragraph (d) of this section, a
practitioner shall not represent anyone in connection with a matter in
which the practitioner participated personally and substantially as a
judge or other adjudicative officer or law clerk to such a person or as
an arbitrator, mediator or other third-party neutral, unless all parties
to the proceeding give informed consent, confirmed in writing.
(b) A practitioner shall not negotiate for employment with any
person who is involved as a party or as practitioner for a party in a
matter in which the practitioner is participating personally and
substantially as a judge or other adjudicative officer or as an
arbitrator, mediator or other third-party neutral. A practitioner
serving as a law clerk to a judge or other adjudicative officer may
negotiate for employment with a party or practitioner involved in a
matter in which the clerk is participating personally and substantially,
but only after the practitioner has notified the judge, or other
adjudicative officer.
(c) If a practitioner is disqualified by paragraph (a) of this
section, no practitioner in a firm with which that practitioner is
associated may knowingly undertake or continue representation in the
matter unless:
(1) The disqualified practitioner is timely screened from any
participation in the matter and is apportioned no part of the fee
therefrom; and
(2) Written notice is promptly given to the parties and any
appropriate tribunal to enable them to ascertain compliance with the
provisions of this section.
(d) An arbitrator selected as a partisan of a party in a multimember
arbitration panel is not prohibited from subsequently representing that
party.
[[Page 449]]
Sec.11.113 Organization as client.
(a) A practitioner employed or retained by an organization
represents the organization acting through its duly authorized
constituents.
(b) If a practitioner for an organization knows that an officer,
employee or other person associated with the organization is engaged in
action, intends to act or refuses to act in a matter related to the
representation that is a violation of a legal obligation to the
organization, or a violation of law that reasonably might be imputed to
the organization, and that is likely to result in substantial injury to
the organization, then the practitioner shall proceed as is reasonably
necessary in the best interest of the organization. Unless the
practitioner reasonably believes that it is not necessary in the best
interest of the organization to do so, the practitioner shall refer the
matter to higher authority in the organization, including, if warranted
by the circumstances, to the highest authority that can act on behalf of
the organization as determined by applicable law.
(c) Except as provided in paragraph (d) of this section, if
(1) Despite the practitioner's efforts in accordance with paragraph
(b) of this section the highest authority that can act on behalf of the
organization insists upon or fails to address in a timely and
appropriate manner an action, or a refusal to act, that is clearly a
violation of law, and
(2) The practitioner reasonably believes that the violation is
reasonably certain to result in substantial injury to the organization,
then the practitioner may reveal information relating to the
representation whether or not Sec.11.106 permits such disclosure, but
only if and to the extent the practitioner reasonably believes necessary
to prevent substantial injury to the organization.
(d) Paragraph (c) of this section shall not apply with respect to
information relating to a practitioner's representation of an
organization to investigate an alleged violation of law, or to defend
the organization or an officer, employee or other constituent associated
with the organization against a claim arising out of an alleged
violation of law.
(e) A practitioner who reasonably believes that he or she has been
discharged because of the practitioner's actions taken pursuant to
paragraphs (b) or (c) of this section, or who withdraws under
circumstances that require or permit the practitioner to take action
under either of those paragraphs, shall proceed as the practitioner
reasonably believes necessary to assure that the organization's highest
authority is informed of the practitioner's discharge or withdrawal.
(f) In dealing with an organization's directors, officers,
employees, members, shareholders, or other constituents, a practitioner
shall explain the identity of the client when the practitioner knows or
reasonably should know that the organization's interests are adverse to
those of the constituents with whom the practitioner is dealing.
(g) A practitioner representing an organization may also represent
any of its directors, officers, employees, members, shareholders or
other constituents, subject to the provisions of Sec.11.107. If the
organization's consent to the dual representation is required by Sec.
11.107, the consent shall be given by an appropriate official of the
organization other than the individual who is to be represented, or by
the shareholders.
Sec.11.114 Client with diminished capacity.
(a) When a client's capacity to make adequately considered decisions
in connection with a representation is diminished, whether because of
minority, mental impairment or for some other reason, the practitioner
shall, as far as reasonably possible, maintain a normal client-
practitioner relationship with the client.
(b) When the practitioner reasonably believes that the client has
diminished capacity, is at risk of substantial physical, financial or
other harm unless action is taken and cannot adequately act in the
client's own interest, the practitioner may take reasonably necessary
protective action, including consulting with individuals or entities
that have the ability to take action to protect the client and, in
appropriate cases, seeking the appointment of a
[[Page 450]]
guardian ad litem, conservator or guardian.
(c) Information relating to the representation of a client with
diminished capacity is protected under Sec.11.106. When taking
protective action pursuant to paragraph (b) of this section, the
practitioner is impliedly authorized under Sec.11.106(a) to reveal
information about the client, but only to the extent reasonably
necessary to protect the client's interests.
Sec.11.115 Safekeeping property.
(a) A practitioner shall hold property of clients or third persons
that is in a practitioner's possession in connection with a
representation separate from the practitioner's own property. Funds
shall be kept in a separate account maintained in the state where the
practitioner's office is situated, or elsewhere with the consent of the
client or third person. Where the practitioner's office is situated in a
foreign country, funds shall be kept in a separate account maintained in
that foreign country or elsewhere with the consent of the client or
third person. Other property shall be identified as such and
appropriately safeguarded. Complete records of such account funds and
other property shall be kept by the practitioner and shall be preserved
for a period of five years after termination of the representation.
(b) A practitioner may deposit the practitioner's own funds in a
client trust account for the sole purpose of paying bank service charges
on that account, but only in an amount necessary for that purpose.
(c) A practitioner shall deposit into a client trust account legal
fees and expenses that have been paid in advance, to be withdrawn by the
practitioner only as fees are earned or expenses incurred.
(d) Upon receiving funds or other property in which a client or
third person has an interest, a practitioner shall promptly notify the
client or third person. Except as stated in this section or otherwise
permitted by law or by agreement with the client, a practitioner shall
promptly deliver to the client or third person any funds or other
property that the client or third person is entitled to receive and,
upon request by the client or third person, shall promptly render a full
accounting regarding such property.
(e) When in the course of representation a practitioner is in
possession of property in which two or more persons (one of whom may be
the practitioner) claim interests, the property shall be kept separate
by the practitioner until the dispute is resolved. The practitioner
shall promptly distribute all portions of the property as to which the
interests are not in dispute.
(f) All separate accounts for clients or third persons kept by a
practitioner must also comply with the following provisions:
(1) Required records. The records to be kept include:
(i) Receipt and disbursement journals containing a record of
deposits to and withdrawals from client trust accounts, specifically
identifying the date, source, and description of each item deposited, as
well as the date, payee and purpose of each disbursement;
(ii) Ledger records for all client trust accounts showing, for each
separate trust client or beneficiary, the source of all funds deposited,
the names of all persons for whom the funds are or were held, the amount
of such funds, the descriptions and amounts of charges or withdrawals,
and the names of all persons or entities to whom such funds were
disbursed;
(iii) Copies of retainer and compensation agreements with clients;
(iv) Copies of accountings to clients or third persons showing the
disbursement of funds to them or on their behalf;
(v) Copies of bills for legal fees and expenses rendered to clients;
(vi) Copies of records showing disbursements on behalf of clients;
(vii) The physical or electronic equivalents of all checkbook
registers, bank statements, records of deposit, pre-numbered canceled
checks, and substitute checks provided by a financial institution;
(viii) Records of all electronic transfers from client trust
accounts, including the name of the person authorizing transfer, the
date of transfer, the name of the recipient and confirmation from the
financial institution of the trust
[[Page 451]]
account number from which money was withdrawn and the date and the time
the transfer was completed;
(ix) Copies of monthly trial balances and quarterly reconciliations
of the client trust accounts maintained by the practitioner; and
(x) Copies of those portions of client files that are reasonably
related to client trust account transactions.
(2) Client trust account safeguards. With respect to client trust
accounts required by paragraphs (a) through (e) of this section:
(i) Only a practitioner or a person under the direct supervision of
the practitioner shall be an authorized signatory or authorize transfers
from a client trust account;
(ii) Receipts shall be deposited intact and records of deposit
should be sufficiently detailed to identify each item; and
(iii) Withdrawals shall be made only by check payable to a named
payee and not to cash, or by authorized electronic transfer.
(3) Availability of records. Records required by paragraph (f)(1) of
this section may be maintained by electronic, photographic, or other
media provided that they otherwise comply with paragraphs (f)(1) and
(f)(2) of this section and that printed copies can be produced. These
records shall be readily accessible to the practitioner.
(4) Lawyers. The records kept by a lawyer are deemed to be in
compliance with this section if the types of records that are maintained
meet the recordkeeping requirements of a state in which the lawyer is
licensed and in good standing, the recordkeeping requirements of the
state where the lawyer's principal place of business is located, or the
recordkeeping requirements of this section.
(5) Patent agents and persons granted limited recognition who are
employed in the United States by a law firm. The records kept by a law
firm employing one or more registered patent agents or persons granted
limited recognition under Sec.11.9 are deemed to be in compliance with
this section if the types of records that are maintained meet the
recordkeeping requirements of the state where at least one practitioner
of the law firm is licensed and in good standing, the recordkeeping
requirements of the state where the law firm's principal place of
business is located, or the recordkeeping requirements of this section.
Sec.11.116 Declining or terminating representation.
(a) Except as stated in paragraph (c) of this section, a
practitioner shall not represent a client, or where representation has
commenced, shall withdraw from the representation of a client if:
(1) The representation will result in violation of the USPTO Rules
of Professional Conduct or other law;
(2) The practitioner's physical or mental condition materially
impairs the practitioner's ability to represent the client; or
(3) The practitioner is discharged.
(b) Except as stated in paragraph (c) of this section, a
practitioner may withdraw from representing a client if:
(1) Withdrawal can be accomplished without material adverse effect
on the interests of the client;
(2) The client persists in a course of action involving the
practitioner's services that the practitioner reasonably believes is
criminal or fraudulent;
(3) The client has used the practitioner's services to perpetrate a
crime or fraud;
(4) A client insists upon taking action that the practitioner
considers repugnant or with which the practitioner has a fundamental
disagreement;
(5) The client fails substantially to fulfill an obligation to the
practitioner regarding the practitioner's services and has been given
reasonable warning that the practitioner will withdraw unless the
obligation is fulfilled;
(6) The representation will result in an unreasonable financial
burden on the practitioner or has been rendered unreasonably difficult
by the client; or
(7) Other good cause for withdrawal exists.
(c) A practitioner must comply with applicable law requiring notice
to or permission of a tribunal when terminating a representation. When
ordered to do so by a tribunal, a practitioner shall continue
representation notwithstanding good cause for terminating the
representation.
[[Page 452]]
(d) Upon termination of representation, a practitioner shall take
steps to the extent reasonably practicable to protect a client's
interests, such as giving reasonable notice to the client, allowing time
for employment of other counsel, surrendering papers and property to
which the client is entitled and refunding any advance payment of fee or
expense that has not been earned or incurred. The practitioner may
retain papers relating to the client to the extent permitted by other
law.
Sec.11.117 Sale of law practice.
A practitioner or a law firm may sell or purchase a law practice, or
an area of law practice, including good will, if the following
conditions are satisfied:
(a) The seller ceases to engage in the private practice of law, or
in the area of practice that has been sold, in a geographic area in
which the practice has been conducted;
(b)(1) Except as provided in paragraph (b)(2) of this section, the
entire practice, or the entire area of practice, is sold to one or more
lawyers or law firms;
(2) To the extent the practice or the area of practice involves
patent proceedings before the Office, that practice or area of practice
may be sold only to one or more registered practitioners or law firms
that include at least one registered practitioner;
(c)(1) The seller gives written notice to each of the seller's
clients regarding:
(i) The proposed sale;
(ii) The client's right to retain other counsel or to take
possession of the file; and
(iii) The fact that the client's consent to the transfer of the
client's files will be presumed if the client does not take any action
or does not otherwise object within ninety (90) days after receipt of
the notice.
(2) If a client cannot be given notice, the representation of that
client may be transferred to the purchaser only upon entry of an order
so authorizing by a court having jurisdiction. The seller may disclose
to the court in camera information relating to the representation only
to the extent necessary to obtain an order authorizing the transfer of a
file; and
(d) The fees charged clients shall not be increased by reason of the
sale.
Sec.11.118 Duties to prospective client.
(a) A person who consults with a practitioner about the possibility
of forming a client-practitioner relationship with respect to a matter
is a prospective client.
(b) Even when no client-practitioner relationship ensues, a
practitioner who has learned information from a prospective client shall
not use or reveal that information, except as Sec.11.109 would permit
with respect to information of a former client.
(c) A practitioner subject to paragraph (b) of this section shall
not represent a client with interests materially adverse to those of a
prospective client in the same or a substantially related matter if the
practitioner received information from the prospective client that could
be significantly harmful to that person in the matter, except as
provided in paragraph (d) of this section. If a practitioner is
disqualified from representation under this paragraph, no practitioner
in a firm with which that practitioner is associated may knowingly
undertake or continue representation in such a matter, except as
provided in paragraph (d) of this section.
(d) When the practitioner has received disqualifying information as
defined in paragraph (c) of this section, representation is permissible
if:
(1) Both the affected client and the prospective client have given
informed consent, confirmed in writing; or
(2) The practitioner who received the information took reasonable
measures to avoid exposure to more disqualifying information than was
reasonably necessary to determine whether to represent the prospective
client; and
(i) The disqualified practitioner is timely screened from any
participation in the matter and is apportioned no part of the fee
therefrom; and
(ii) Written notice is promptly given to the prospective client.
[78 FR 20201, Apr. 3, 2013, as amended at 86 FR 28466, May 26, 2021]
[[Page 453]]
Sec. Sec.11.119-11.200 [Reserved]
Counselor
Sec.11.201 Advisor.
In representing a client, a practitioner shall exercise independent
professional judgment and render candid advice. In rendering advice, a
practitioner may refer not only to law but to other considerations such
as moral, economic, social and political factors that may be relevant to
the client's situation.
Sec.11.202 [Reserved]
Sec.11.203 Evaluation for use by third persons.
(a) A practitioner may provide an evaluation of a matter affecting a
client for the use of someone other than the client if the practitioner
reasonably believes that making the evaluation is compatible with other
aspects of the practitioner's relationship with the client.
(b) When the practitioner knows or reasonably should know that the
evaluation is likely to affect the client's interests materially and
adversely, the practitioner shall not provide the evaluation unless the
client gives informed consent.
(c) Except as disclosure is authorized in connection with a report
of an evaluation, information relating to the evaluation is otherwise
protected by Sec.11.106.
Sec.11.204 Practitioner serving as third-party neutral.
(a) A practitioner serves as a third-party neutral when the
practitioner assists two or more persons who are not clients of the
practitioner to reach a resolution of a dispute or other matter that has
arisen between them. Service as a third-party neutral may include
service as an arbitrator, a mediator or in such other capacity as will
enable the practitioner to assist the parties to resolve the matter.
(b) A practitioner serving as a third-party neutral shall inform
unrepresented parties that the practitioner is not representing them.
When the practitioner knows or reasonably should know that a party does
not understand the practitioner's role in the matter, the practitioner
shall explain the difference between the practitioner's role as a third-
party neutral and a practitioner's role as one who represents a client.
Sec. Sec.11.205-11.300 [Reserved]
Advocate
Sec.11.301 Meritorious claims and contentions.
A practitioner shall not bring or defend a proceeding, or assert or
controvert an issue therein, unless there is a basis in law and fact for
doing so that is not frivolous, which includes a good-faith argument for
an extension, modification or reversal of existing law.
Sec.11.302 Expediting proceedings.
A practitioner shall make reasonable efforts to expedite proceedings
before a tribunal consistent with the interests of the client.
Sec.11.303 Candor toward the tribunal.
(a) A practitioner shall not knowingly:
(1) Make a false statement of fact or law to a tribunal or fail to
correct a false statement of material fact or law previously made to the
tribunal by the practitioner;
(2) Fail to disclose to the tribunal legal authority in the
controlling jurisdiction known to the practitioner to be directly
adverse to the position of the client and not disclosed by opposing
counsel in an inter partes proceeding, or fail to disclose such
authority in an ex parte proceeding before the Office if such authority
is not otherwise disclosed; or
(3) Offer evidence that the practitioner knows to be false. If a
practitioner, the practitioner's client, or a witness called by the
practitioner, has offered material evidence and the practitioner comes
to know of its falsity, the practitioner shall take reasonable remedial
measures, including, if necessary, disclosure to the tribunal. A
practitioner may refuse to offer evidence that the practitioner
reasonably believes is false.
(b) A practitioner who represents a client in a proceeding before a
tribunal
[[Page 454]]
and who knows that a person intends to engage, is engaging or has
engaged in criminal or fraudulent conduct related to the proceeding
shall take reasonable remedial measures, including, if necessary,
disclosure to the tribunal.
(c) The duties stated in paragraphs (a) and (b) of this section
continue to the conclusion of the proceeding, and apply even if
compliance requires disclosure of information otherwise protected by
Sec.11.106.
(d) In an ex parte proceeding, a practitioner shall inform the
tribunal of all material facts known to the practitioner that will
enable the tribunal to make an informed decision, whether or not the
facts are adverse.
(e) In a proceeding before the Office, a practitioner shall disclose
to the Office information necessary to comply with applicable duty of
disclosure provisions.
Sec.11.304 Fairness to opposing party and counsel.
A practitioner shall not:
(a) Unlawfully obstruct another party's access to evidence or
unlawfully alter, destroy or conceal a document or other material having
potential evidentiary value. A practitioner shall not counsel or assist
another person to do any such act;
(b) Falsify evidence, counsel or assist a witness to testify
falsely, or offer an inducement to a witness that is prohibited by law;
(c) Knowingly disobey an obligation under the rules of a tribunal
except for an open refusal based on an assertion that no valid
obligation exists;
(d) Make a frivolous discovery request or fail to make a reasonably
diligent effort to comply with a legally proper discovery request by an
opposing party;
(e) In a proceeding before a tribunal, allude to any matter that the
practitioner does not reasonably believe is relevant or that will not be
supported by admissible evidence, assert personal knowledge of facts in
issue except when testifying as a witness, or state a personal opinion
as to the justness of a cause, the credibility of a witness, the
culpability of a civil litigant or the guilt or innocence of an accused;
or
(f) Request a person other than a client to refrain from voluntarily
giving relevant information to another party unless:
(1) The person is a relative or an employee or other agent of a
client; and
(2) The practitioner reasonably believes that the person's interests
will not be adversely affected by refraining from giving such
information.
Sec.11.305 Impartiality and decorum of the tribunal.
A practitioner shall not:
(a) Seek to influence a judge, hearing officer, administrative law
judge, administrative patent judge, administrative trademark judge,
juror, prospective juror, employee or officer of the Office, or other
official by means prohibited by law;
(b) Communicate ex parte with such a person during the proceeding
unless authorized to do so by law, rule or court order; or
(c) [Reserved]
(d) Engage in conduct intended to disrupt any proceeding before a
tribunal.
Sec.11.306 Trial publicity.
(a) A practitioner who is participating or has participated in the
investigation or litigation of a matter shall not make an extrajudicial
statement that the practitioner knows or reasonably should know will be
disseminated by means of public communication and will have a
substantial likelihood of materially prejudicing an adjudicative
proceeding in the matter.
(b) Notwithstanding paragraph (a) of this section, a practitioner
may state:
(1) The claim, offense or defense involved and, except when
prohibited by law, the identity of the persons involved;
(2) Information contained in a public record;
(3) That an investigation of a matter is in progress;
(4) The scheduling or result of any step in litigation;
(5) A request for assistance in obtaining evidence and information
necessary thereto; and
(6) A warning of danger concerning the behavior of a person
involved, when
[[Page 455]]
there is reason to believe that there exists the likelihood of
substantial harm to an individual or to the public interest.
(c) Notwithstanding paragraph (a) of this section, a practitioner
may make a statement that a reasonable practitioner would believe is
required to protect a client from the substantial undue prejudicial
effect of recent publicity not initiated by the practitioner or the
practitioner's client. A statement made pursuant to this paragraph shall
be limited to such information as is necessary to mitigate the recent
adverse publicity.
(d) No practitioner associated in a firm or government agency with a
practitioner subject to paragraph (a) of this section shall make a
statement prohibited by paragraph (a).
Sec.11.307 Practitioner as witness.
(a) A practitioner shall not act as advocate at a proceeding before
a tribunal in which the practitioner is likely to be a necessary witness
unless:
(1) The testimony relates to an uncontested issue;
(2) The testimony relates to the nature and value of legal services
rendered in the case; or
(3) Disqualification of the practitioner would work substantial
hardship on the client.
(b) A practitioner may act as advocate in a proceeding before a
tribunal in which another practitioner in the practitioner's firm is
likely to be called as a witness unless precluded from doing so by
Sec. Sec.11.107 or 11.109.
Sec.11.308 [Reserved]
Sec.11.309 Advocate in nonadjudicative proceedings.
A practitioner representing a client before a legislative body or
administrative agency in a nonadjudicative proceeding shall disclose
that the appearance is in a representative capacity and shall conform to
the provisions of Sec. Sec.11.303(a) through (c), 11.304(a) through
(c), and 11.305.
Sec. Sec.11.310-11.400 [Reserved]
Transactions With Persons Other Than Clients
Sec.11.401 Truthfulness in statements to others.
In the course of representing a client, a practitioner shall not
knowingly:
(a) Make a false statement of material fact or law to a third
person; or
(b) Fail to disclose a material fact to a third person when
disclosure is necessary to avoid assisting a criminal or fraudulent act
by a client, unless disclosure is prohibited by Sec.11.106.
Sec.11.402 Communication with person represented by a practitioner.
(a) In representing a client, a practitioner shall not communicate
about the subject of the representation with a person the practitioner
knows to be represented by another practitioner in the matter, unless
the practitioner has the consent of the other practitioner or is
authorized to do so by law, rule, or a court order.
(b) This section does not prohibit communication by a practitioner
with government officials who are otherwise represented by counsel and
who have the authority to redress the grievances of the practitioner's
client, provided that, if the communication relates to a matter for
which the government official is represented, then prior to the
communication the practitioner must disclose to such government official
both the practitioner's identity and the fact that the practitioner
represents a party with a claim against the government.
Sec.11.403 Dealing with unrepresented person.
In dealing on behalf of a client with a person who is not
represented by a practitioner, a practitioner shall not state or imply
that the practitioner is disinterested. When the practitioner knows or
reasonably should know that the unrepresented person misunderstands the
practitioner's role in the matter, the practitioner shall make
reasonable efforts to correct the misunderstanding. The practitioner
shall not give legal advice to an unrepresented person, other than the
advice to
[[Page 456]]
secure counsel, if the practitioner knows or reasonably should know that
the interests of such a person are or have a reasonable possibility of
being in conflict with the interests of the client.
Sec.11.404 Respect for rights of third persons.
(a) In representing a client, a practitioner shall not use means
that have no substantial purpose other than to embarrass, delay, or
burden a third person, or use methods of obtaining evidence that violate
the legal rights of such a person.
(b) A practitioner who receives a document or electronically stored
information relating to the representation of the practitioner's client
and knows or reasonably should know that the document or electronically
stored information was inadvertently sent shall promptly notify the
sender.
Sec. Sec.11.405-11.500 [Reserved]
Law Firms and Associations
Sec.11.501 Responsibilities of partners, managers, and supervisory
practitioners.
(a) A practitioner who is a partner in a law firm, and a
practitioner who individually or together with other practitioners
possesses comparable managerial authority in a law firm, shall make
reasonable efforts to ensure that the firm has in effect measures giving
reasonable assurance that all practitioners in the firm conform to the
USPTO Rules of Professional Conduct.
(b) A practitioner having direct supervisory authority over another
practitioner shall make reasonable efforts to ensure that the other
practitioner conforms to the USPTO Rules of Professional Conduct.
(c) A practitioner shall be responsible for another practitioner's
violation of the USPTO Rules of Professional Conduct if:
(1) The practitioner orders or, with knowledge of the specific
conduct, ratifies the conduct involved; or
(2) The practitioner is a partner or has comparable managerial
authority in the law firm in which the other practitioner practices, or
has direct supervisory authority over the other practitioner, and knows
of the conduct at a time when its consequences can be avoided or
mitigated but fails to take reasonable remedial action.
Sec.11.502 Responsibilities of a subordinate practitioner.
(a) A practitioner is bound by the USPTO Rules of Professional
Conduct notwithstanding that the practitioner acted at the direction of
another person.
(b) A subordinate practitioner does not violate the USPTO Rules of
Professional Conduct if that practitioner acts in accordance with a
supervisory practitioner's reasonable resolution of an arguable question
of professional duty.
Sec.11.503 Responsibilities regarding non-practitioner assistance.
With respect to a non-practitioner assistant employed or retained by
or associated with a practitioner:
(a) A practitioner who is a partner, and a practitioner who
individually or together with other practitioners possesses comparable
managerial authority in a law firm shall make reasonable efforts to
ensure that the firm has in effect measures giving reasonable assurance
that the person's conduct is compatible with the professional
obligations of the practitioner;
(b) A practitioner having direct supervisory authority over the non-
practitioner assistant shall make reasonable efforts to ensure that the
person's conduct is compatible with the professional obligations of the
practitioner; and
(c) A practitioner shall be responsible for conduct of such a person
that would be a violation of the USPTO Rules of Professional Conduct if
engaged in by a practitioner if:
(1) The practitioner orders or, with the knowledge of the specific
conduct, ratifies the conduct involved; or
(2) The practitioner is a partner or has comparable managerial
authority in the law firm in which the person is employed, or has direct
supervisory authority over the person, and knows of the conduct at a
time when its consequences can be avoided or mitigated but fails to take
reasonable remedial action.
[[Page 457]]
Sec.11.504 Professional independence of a practitioner.
(a) A practitioner or law firm shall not share legal fees with a
non-practitioner, except that:
(1) An agreement by a practitioner with the practitioner's firm,
partner, or associate may provide for the payment of money, over a
reasonable period of time after the practitioner's death, to the
practitioner's estate or to one or more specified persons;
(2) A practitioner who purchases the practice of a deceased,
disabled, or disappeared practitioner may, pursuant to the provisions of
Sec.11.117, pay to the estate or other representative of that
practitioner the agreed-upon purchase price;
(3) A practitioner or law firm may include non-practitioner
employees in a compensation or retirement plan, even though the plan is
based in whole or in part on a profit-sharing arrangement; and
(4) A practitioner may share legal fees, whether awarded by a
tribunal or received in settlement of a matter, with a nonprofit
organization that employed, retained or recommended employment of the
practitioner in the matter and that qualifies under Section 501(c)(3) of
the Internal Revenue Code.
(b) A practitioner shall not form a partnership with a non-
practitioner if any of the activities of the partnership consist of the
practice of law.
(c) A practitioner shall not permit a person who recommends,
employs, or pays the practitioner to render legal services for another
to direct or regulate the practitioner's professional judgment in
rendering such legal services.
(d) A practitioner shall not practice with or in the form of a
professional corporation or association authorized to practice law for a
profit, if:
(1) A non-practitioner owns any interest therein, except that a
fiduciary representative of the estate of a practitioner may hold the
stock or interest of the practitioner for a reasonable time during
administration;
(2) A non-practitioner is a corporate director or officer thereof or
occupies the position of similar responsibility in any form of
association other than a corporation; or
(3) A non-practitioner has the right to direct or control the
professional judgment of a practitioner.
Sec.11.505 Unauthorized practice of law.
A practitioner shall not practice law in a jurisdiction in violation
of the regulation of the legal profession in that jurisdiction, or
assist another in doing so.
Sec.11.506 Restrictions on right to practice.
A practitioner shall not participate in offering or making:
(a) A partnership, shareholders, operating, employment, or other
similar type of agreement that restricts the right of a practitioner to
practice after termination of the relationship, except an agreement
concerning benefits upon retirement; or
(b) An agreement in which a restriction on the practitioner's right
to practice is part of the settlement of a client controversy.
Sec.11.507 Responsibilities regarding law-related services.
A practitioner shall be subject to the USPTO Rules of Professional
Conduct with respect to the provision of law-related services if the
law-related services are provided:
(a) By the practitioner in circumstances that are not distinct from
the practitioner's provision of legal services to clients; or
(b) In other circumstances by an entity controlled by the
practitioner individually or with others if the practitioner fails to
take reasonable measures to assure that a person obtaining the law-
related services knows that the services are not legal services and that
the protections of the client-practitioner relationship do not exist.
Sec. Sec.11.508-11.700 [Reserved]
Information About Legal Services
Sec.11.701 Communications concerning a practitioner's services.
A practitioner shall not make a false or misleading communication
about the practitioner or the practitioner's services. A communication
is false or
[[Page 458]]
misleading if it contains a material misrepresentation of fact or law,
or omits a fact necessary to make the statement considered as a whole
not materially misleading.
Sec.11.702 Communications concerning a practitioner's services: specific rules.
(a) A practitioner may communicate information regarding the
practitioner's services through any medium.
(b) A practitioner shall not compensate, give, or promise anything
of value to a person for recommending the practitioner's services,
except that a practitioner may:
(1) Pay the reasonable costs of advertisements or communications
permitted by this section;
(2) Pay the usual charges of a legal service plan or a not-for-
profit or qualified practitioner referral service;
(3) Pay for a law practice in accordance with Sec.11.117;
(4) Refer clients to another practitioner or a non-practitioner
professional pursuant to an agreement not otherwise prohibited under the
USPTO Rules of Professional Conduct that provides for the other person
to refer clients or customers to the practitioner, if:
(i) The reciprocal referral agreement is not exclusive, and
(ii) The client is informed of the existence and nature of the
agreement; and
(5) Give nominal gifts as an expression of appreciation that are
neither intended nor reasonably expected to be a form of compensation
for recommending a practitioner's services.
(c) A practitioner shall not state or imply that he or she is
certified as a specialist in a particular field of law, unless:
(1) The practitioner has been certified as a specialist by an
organization that has been approved by an appropriate authority of a
State or that has been accredited by the American Bar Association, and
(2) The name of the certifying organization is clearly identified in
the communication.
(d) Any communication made under this section must include the name
and contact information of at least one practitioner or law firm
responsible for its content.
[86 FR 28466, May 26, 2021]
Sec.11.703 Solicitation of clients.
(a) ``Solicitation'' or ``solicit'' denotes a communication
initiated by or on behalf of a practitioner or law firm that is directed
to a specific person the practitioner knows or reasonably should know
needs legal services in a particular matter and that offers to provide,
or reasonably can be understood as offering to provide, legal services
for that matter.
(b) A practitioner shall not solicit professional employment by live
person-to-person contact when a significant motive for the
practitioner's doing so is the practitioner's or law firm's pecuniary
gain, unless the contact is with a:
(1) Practitioner;
(2) Person who has a family, close personal, or prior business or
professional relationship with the practitioner or law firm; or
(3) Person who routinely uses for business purposes the type of
legal services offered by the practitioner.
(c) A practitioner shall not solicit professional employment even
when not otherwise prohibited by paragraph (b) of this section, if:
(1) The target of solicitation has made known to the practitioner a
desire not to be solicited by the practitioner, or
(2) The solicitation involves coercion, duress, or harassment.
(d) This section does not prohibit communications authorized by law
or ordered by a court or other tribunal.
(e) Notwithstanding the prohibitions in this section, a practitioner
may participate with a prepaid or group legal service plan operated by
an organization not owned or directed by the practitioner that uses live
person-to-person contact to enroll members or sell subscriptions for the
plan from persons who are not known to need legal services in a
particular matter covered by the plan.
[86 FR 28467, May 26, 2021]
[[Page 459]]
Sec.11.704 Communication of fields of practice and specialization.
(a) A practitioner may communicate the fact that the practitioner
does or does not practice in particular fields of law.
(b) A registered practitioner who is an attorney may use the
designation ``Patents,'' ``Patent Attorney,'' ``Patent Lawyer,''
``Registered Patent Attorney,'' or a substantially similar designation.
A registered practitioner who is not an attorney may use the designation
``Patents,'' ``Patent Agent,'' ``Registered Patent Agent,'' or a
substantially similar designation. Unless authorized by Sec.11.14(b),
a registered patent agent shall not hold himself or herself out as being
qualified or authorized to practice before the Office in trademark
matters or before a court.
(c) [Reserved]
(d) A practitioner shall not state or imply that a practitioner is
certified as a specialist in a particular field of law, unless:
(1) The practitioner has been certified as a specialist by an
organization that has been approved by an appropriate state authority or
that has been accredited by the American Bar Association; and
(2) The name of the certifying organization is clearly identified in
the communication.
(e) Individuals granted limited recognition may use the designation
``Limited Recognition'' but may not hold themselves out as being
registered.
[78 FR 20201, Apr. 3, 2013, as amended at 86 FR 28467, May 26, 2021]
Sec.11.705 Firm names and letterheads.
(a) A practitioner shall not use a firm name, letterhead or other
professional designation that violates Sec.11.701. A trade name may be
used by a practitioner in private practice if it does not imply a
connection with a government agency or with a public or charitable legal
services organization and is not otherwise in violation of Sec.11.701.
(b) [Reserved]
(c) The name of a practitioner holding a public office shall not be
used in the name of a law firm, or in communications on its behalf,
during any substantial period in which the practitioner is not actively
and regularly practicing with the firm.
Sec. Sec.11.706-11.800 [Reserved]
Maintaining the Integrity of the Profession
Sec.11.801 Registration, recognition and disciplinary matters.
An applicant for registration or recognition to practice before the
Office, or a practitioner in connection with an application for
registration or recognition, or a practitioner in connection with a
disciplinary or reinstatement matter, shall not:
(a) Knowingly make a false statement of material fact; or
(b) Fail to disclose a fact necessary to correct a misapprehension
known by the person to have arisen in the matter, fail to cooperate with
the Office of Enrollment and Discipline in an investigation of any
matter before it, or knowingly fail to respond to a lawful demand or
request for information from an admissions or disciplinary authority,
except that the provisions of this section do not require disclosure of
information otherwise protected by Sec.11.106.
Sec.11.802 Judicial and legal officials.
(a) A practitioner shall not make a statement that the practitioner
knows to be false or with reckless disregard as to its truth or falsity
concerning the qualifications or integrity of a judge, adjudicatory
officer or public legal officer, or of a candidate for election or
appointment to judicial or legal office.
(b) A practitioner who is a candidate for judicial office shall
comply with the applicable provisions of the Code of Judicial Conduct.
Sec.11.803 Reporting professional misconduct.
(a) A practitioner who knows that another practitioner has committed
a violation of the USPTO Rules of Professional Conduct that raises a
substantial question as to that practitioner's honesty, trustworthiness
or fitness as a practitioner in other respects, shall inform the OED
Director and any other appropriate professional authority.
[[Page 460]]
(b) A practitioner who knows that a judge, hearing officer,
administrative law judge, administrative patent judge, or administrative
trademark judge has committed a violation of applicable rules of
judicial conduct that raises a substantial question as to the
individual's fitness for office shall inform the appropriate authority.
(c) The provisions of this section do not require disclosure of
information otherwise protected by Sec.11.106 or information gained
while participating in an approved lawyers assistance program.
Sec.11.804 Misconduct.
It is professional misconduct for a practitioner to:
(a) Violate or attempt to violate the USPTO Rules of Professional
Conduct, knowingly assist or induce another to do so, or do so through
the acts of another;
(b) Commit a criminal act that reflects adversely on the
practitioner's honesty, trustworthiness, or fitness as a practitioner in
other respects, or be convicted of a crime that reflects adversely on
the practitioner's honesty, trustworthiness, or fitness as a
practitioner in other respects;
(c) Engage in conduct involving dishonesty, fraud, deceit or
misrepresentation;
(d) Engage in conduct that is prejudicial to the administration of
justice;
(e) State or imply an ability to influence improperly a government
agency or official or to achieve results by means that violate the USPTO
Rules of Professional Conduct or other law;
(f) Knowingly assist a judge, hearing officer, administrative law
judge, administrative patent judge, administrative trademark judge, or
judicial officer in conduct that is a violation of applicable rules of
judicial conduct or other law;
(g) Knowingly assist an officer or employee of the Office in conduct
that is a violation of applicable rules of conduct or other law;
(h) Be publicly disciplined on ethical or professional misconduct
grounds by any duly constituted authority of:
(1) A State,
(2) The United States, or
(3) A country having disciplinary jurisdiction over the
practitioner; or
(i) Engage in other conduct that adversely reflects on the
practitioner's fitness to practice before the Office.
[78 FR 20201, Apr. 3, 2013, as amended at 86 FR 28467, May 26, 2021]
Sec. Sec.11.805-11.900 [Reserved]
Sec.11.901 Savings clause.
(a) A disciplinary proceeding based on conduct engaged in prior to
the effective date of these regulations may be instituted subsequent to
such effective date, if such conduct would continue to justify
disciplinary sanctions under the provisions of this part.
(b) No practitioner shall be subject to a disciplinary proceeding
under this part based on conduct engaged in before the effective date
hereof if such conduct would not have been subject to disciplinary
action before such effective date.
PARTS 15 15a [RESERVED]
PART 41_PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD--
Table of Contents
Subpart A_General Provisions
Sec.
41.1 Policy.
41.2 Definitions.
41.3 Petitions.
41.4 Timeliness.
41.5 Counsel.
41.6 Public availability of Board records.
41.7 Management of the record.
41.8 Mandatory notices.
41.9 Action by owner.
41.10 Correspondence addresses.
41.11 Ex parte communications in inter partes proceedings.
41.12 Citation of authority.
41.20 Fees.
Subpart B_Ex Parte Appeals
41.30 Definitions.
41.31 Appeal to Board.
41.33 Amendments and affidavits or other Evidence after appeal.
41.35 Jurisdiction over appeal.
41.37 Appeal brief.
41.39 Examiner's answer.
41.40 Tolling of time period to file a reply brief.
41.41 Reply brief.
41.45 Appeal forwarding fee.
[[Page 461]]
41.47 Oral hearing.
41.50 Decisions and other actions by the Board.
41.52 Rehearing.
41.54 Action following decision.
Subpart C_Inter Partes Appeals
41.60 Definitions.
41.61 Notice of appeal and cross appeal to Board.
41.63 Amendments and affidavits or other evidence after appeal.
41.64 Jurisdiction over appeal in inter partes reexamination.
41.66 Time for filing briefs.
41.67 Appellant's brief.
41.68 Respondent's brief.
41.69 Examiner's answer.
41.71 Rebuttal brief.
41.73 Oral hearing.
41.77 Decisions and other actions by the Board.
41.79 Rehearing.
41.81 Action following decision.
Subpart D_Contested Cases
41.100 Definitions.
41.101 Notice of proceeding.
41.102 Completion of examination.
41.103 Jurisdiction over involved files.
41.104 Conduct of contested case.
41.106 Filing and service.
41.108 Lead counsel.
41.109 Access to and copies of Office records.
41.110 Filing claim information.
41.120 Notice of basis for relief.
41.121 Motions.
41.122 Oppositions and replies.
41.123 Default filing times.
41.124 Oral argument.
41.125 Decision on motions.
41.126 Arbitration.
41.127 Judgment.
41.128 Sanctions.
41.150 Discovery.
41.151 Admissibility.
41.152 Applicability of the Federal Rules of Evidence.
41.153 Records of the Office.
41.154 Form of evidence.
41.155 Objection; motion to exclude; motion in limine.
41.156 Compelling testimony and production.
41.157 Taking testimony.
41.158 Expert testimony; tests and data.
Subpart E_Patent Interferences
41.200 Procedure; pendency.
41.201 Definitions.
41.202 Suggesting an interference.
41.203 Declaration.
41.204 Notice of basis for relief.
41.205 Settlement agreements.
41.206 Common interests in the invention.
41.207 Presumptions.
41.208 Content of substantive and responsive motions.
Authority: 35 U.S.C. 2(b)(2), 3(a)(2)(A), 21, 23, 32, 41, 134, 135,
and Public Law 112-29.
Source: 69 FR 50003, Aug. 12, 2004, unless otherwise noted.
Subpart A_General Provisions
Sec.41.1 Policy.
(a) Scope. Part 41 governs appeals and interferences before the
Patent Trial and Appeal Board. Sections 1.1 to 1.36 and 1.181 to 1.183
of this title also apply to practice before the Board, as do other
sections of part 1 of this title that are incorporated by reference into
part 41.
(b) Construction. The provisions of Part 41 shall be construed to
secure the just, speedy, and inexpensive resolution of every proceeding
before the Board.
(c) Decorum. Each party must act with courtesy and decorum in all
proceedings before the Board, including interactions with other parties.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012]
Sec.41.2 Definitions.
Unless otherwise clear from the context, the following definitions
apply to proceedings under this part:
Affidavit means affidavit, declaration under Sec.1.68 of this
title, or statutory declaration under 28 U.S.C. 1746. A transcript of an
ex parte deposition may be used as an affidavit in a contested case.
Board means the Patent Trial and Appeal Board and includes:
(1) For a final Board action:
(i) In an appeal or contested case, a panel of the Board.
(ii) In a proceeding under Sec.41.3, the Chief Administrative
Patent Judge or another official acting under an express delegation from
the Chief Administrative Patent Judge.
(2) For non-final actions, a Board member or employee acting with
the authority of the Board.
Board member means the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office,
[[Page 462]]
the Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office, the
Commissioner for Patents, the Commissioner for Trademarks, and the
administrative patent judges.
Contested case means a Board proceeding other than an appeal under
35 U.S.C. 134 or a petition under Sec.41.3. An appeal in an inter
partes reexamination is not a contested case.
Final means, with regard to a Board action, final for the purposes
of judicial review. A decision is final only if:
(1) In a panel proceeding. The decision is rendered by a panel,
disposes of all issues with regard to the party seeking judicial review,
and does not indicate that further action is required; and
(2) In other proceedings. The decision disposes of all issues or the
decision states it is final.
Hearing means consideration of the issues of record. Rehearing means
reconsideration.
Office means United States Patent and Trademark Office.
Panel means at least three Board members acting in a panel
proceeding.
Panel proceeding means a proceeding in which final action is
reserved by statute to at least three Board members, but includes a non-
final portion of such a proceeding whether administered by a panel or
not.
Party, in this part, means any entity participating in a Board
proceeding, other than officers and employees of the Office, including:
(1) An appellant;
(2) A participant in a contested case;
(3) A petitioner; and
(4) Counsel for any of the above, where context permits.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012]
Sec.41.3 Petitions.
(a) Deciding official. Petitions must be addressed to the Chief
Administrative Patent Judge. A panel or an administrative patent judge
may certify a question of policy to the Chief Administrative Patent
Judge for decision. The Chief Administrative Patent Judge may delegate
authority to decide petitions.
(b) Scope. This section covers petitions on matters pending before
the Board (Sec. Sec.41.35, 41.64, 41.103, and 41.205); otherwise, see
Sec. Sec.1.181 to 1.183 of this title. The following matters are not
subject to petition:
(1) Issues committed by statute to a panel, and
(2) In pending contested cases, procedural issues. See Sec.
41.121(a)(3) and Sec.41.125(c).
(c) Petition fee. The fee set in Sec.41.20(a) must accompany any
petition under this section except no fee is required for a petition
under this section seeking supervisory review.
(d) Effect on proceeding. The filing of a petition does not stay the
time for any other action in a Board proceeding.
(e) Time for action. (1) Except as otherwise provided in this part
or as the Board may authorize in writing, a party may:
(i) File the petition within 14 days from the date of the action
from which the party is requesting relief, and
(ii) File any request for reconsideration of a petition decision
within 14 days of the decision on petition or such other time as the
Board may set.
(2) A party may not file an opposition or a reply to a petition
without Board authorization.
[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
Sec.41.4 Timeliness.
(a) Extensions of time. Extensions of time will be granted only on a
showing of good cause except as otherwise provided by rule.
(b) Late filings. (1) A late filing that results in either an
application becoming abandoned or a reexamination prosecution becoming
terminated under Sec.1.550(d) or Sec.1.957(b) of this title or
limited under Sec.1.957(c) of this title may be revived as set forth
in Sec.1.137 of this title.
(2) A late filing that does not result in either an application
becoming abandoned or a reexamination prosecution becoming terminated
under Sec.1.550(d) or Sec.1.957(b) of this title or limited under
Sec.1.957(c) of this title will be excused upon a showing of excusable
neglect or a Board determination that consideration on the merits would
be in the interest of justice.
[[Page 463]]
(c) Scope. This section governs all proceedings before the Board,
but does not apply to filings related to Board proceedings before or
after the Board has jurisdiction, such as:
(1) Extensions during prosecution (see Sec.1.136 of this title),
(2) Filing of a brief or request for oral hearing (see Sec. Sec.
41.37, 41.41, 41.47, 41.67, 41.68, 41.71 and 41.73), or
(3) Seeking judicial review (see Sec. Sec.1.301 to 1.304 of this
title).
[69 FR 50003, Aug. 12, 2004, as amended at 72 FR 18907, Apr. 16, 2007]
Sec.41.5 Counsel.
While the Board has jurisdiction:
(a) Appearance pro hac vice. The Board may authorize a person other
than a registered practitioner to appear as counsel in a specific
proceeding.
(b) Disqualification. (1) The Board may disqualify counsel in a
specific proceeding after notice and an opportunity to be heard.
(2) A decision to disqualify is not final for the purposes of
judicial review until certified by the Chief Administrative Patent
Judge.
(c) Withdrawal. Counsel may not withdraw from a proceeding before
the Board unless the Board authorizes such withdrawal. See Sec.11.116
of this subchapter regarding conditions for withdrawal.
(d) Procedure. The Board may institute a proceeding under this
section on its own or a party in a contested case may request relief
under this section.
(e) Referral to the Director of Enrollment and Discipline. Possible
violations of the disciplinary rules in part 11 of this subchapter may
be referred to the Office of Enrollment and Discipline for
investigation. See Sec.11.22 of this subchapter.
[69 FR 50003, Aug. 12, 2004, as amended at 73 FR 47704, Aug. 14, 2008;
78 FR 20211, Apr. 3, 2013]
Sec.41.6 Public availability of Board records.
(a) Publication--(1) Generally. Any Board action is available for
public inspection without a party's permission if rendered in a file
open to the public pursuant to Sec.1.11 of this title or in an
application that has been published in accordance with Sec. Sec.1.211
to 1.221 of this title. The Office may independently publish any Board
action that is available for public inspection.
(2) Determination of special circumstances. Any Board action not
publishable under paragraph (a)(1) of this section may be published or
made available for public inspection if the Director believes that
special circumstances warrant publication and a party does not, within
two months after being notified of the intention to make the action
public, object in writing on the ground that the action discloses the
objecting party's trade secret or other confidential information and
states with specificity that such information is not otherwise publicly
available. If the action discloses such information, the party shall
identify the deletions in the text of the action considered necessary to
protect the information. If the affected party considers that the entire
action must be withheld from the public to protect such information, the
party must explain why. The party will be given time, not less than
twenty days, to request reconsideration and seek court review before any
contested portion of the action is made public over its objection.
(b) Record of proceeding. (1) The record of a Board proceeding is
available to the public unless a patent application not otherwise
available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final
Board action in or judgment in a Board proceeding, the record of the
Board proceeding will be made available to the public if any involved
file is or becomes open to the public under Sec.1.11 of this title or
an involved application is or becomes published under Sec. Sec.1.211
to 1.221 of this title.
Sec.41.7 Management of the record.
(a) The Board may expunge any paper directed to a Board proceeding,
or filed while an application or patent is under the jurisdiction of the
Board, that is not authorized under this part or in a Board order, or
that is filed contrary to a Board order.
[[Page 464]]
(b) A party may not file a paper previously filed in the same Board
proceeding, not even as an exhibit or appendix, without Board
authorization or as required by rule.
Sec.41.8 Mandatory notices.
(a) In an appeal brief (Sec. Sec.41.37, 41.67, or 41.68) or at the
initiation of a contested case (Sec.41.101), and within 20 days of any
change during the proceeding, a party must identify:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that could affect, or
be affected by, the Board proceeding.
(b) For contested cases, a party seeking judicial review of a Board
proceeding must file a notice with the Board of the judicial review
within 20 days of the filing of the complaint or the notice of appeal.
The notice to the Board must include a copy of the complaint or notice
of appeal. See also Sec. Sec.1.301 to 1.304 of this title.
Sec.41.9 Action by owner.
(a) Entire interest. An owner of the entire interest in an
application or patent involved in a Board proceeding may act in the
proceeding to the exclusion of the inventor (see Sec. Sec.3.71 and
3.73 of this title).
(b) Part interest. An owner of a part interest in an application or
patent involved in a Board proceeding may petition to act in the
proceeding to the exclusion of an inventor or a co-owner. The petition
must show the inability or refusal of an inventor or co-owner to
prosecute the proceeding or other cause why it is in the interest of
justice to permit the owner of a part interest to act in the proceeding.
An order granting the petition may set conditions on the actions of the
parties during the proceeding.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 48826, Aug. 14, 2012]
Sec.41.10 Correspondence addresses.
Except as the Board may otherwise direct,
(a) Appeals. Correspondence in an application or a patent involved
in an appeal (subparts B and C of this part) during the period beginning
when an appeal docketing notice is issued and ending when a decision has
been rendered by the Board, as well as any request for rehearing of a
decision by the Board, shall be mailed to: Patent Trial and Appeal
Board, United States Patent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313-1450. Notices of appeal, appeal briefs, reply
briefs, requests for oral hearing, as well as all other correspondence
in an application or a patent involved in an appeal to the Board for
which an address is not otherwise specified, should be addressed as set
out in Sec.1.1(a)(1)(i) of this title.
(b) Interferences. Mailed correspondence in interference (subpart D
of this part) shall be sent to Mail Stop INTERFERENCE, Patent Trial and
Appeal Board, United States Patent and Trademark Office, PO Box 1450,
Alexandria, Virginia 22313-1450.
(c) Trial Proceedings. Correspondence in trial proceedings (part 42
of this title) are governed by Sec.42.6(b) of this title.
[77 FR 46630, Aug. 6, 2012]
Sec.41.11 Ex Parte communications in inter partes proceedings.
An ex parte communication about an inter partes reexamination
(subpart C of this part) or about a contested case (subparts D and E of
this part) with a Board member, or with a Board employee assigned to the
proceeding, is not permitted.
Sec.41.12 Citation of authority.
(a) For any United States Supreme Court decision, citation to the
United States Reports is preferred.
(b) For any decision other than a United States Supreme Court
decision, citation to the West Reporter System is preferred.
(c) Citations to authority must include pinpoint citations whenever
a specific holding or portion of an authority is invoked.
(d) Non-binding authority should be used sparingly. If the authority
is not an authority of the Office and is not reproduced in the United
States Reports or the West Reporter System, a copy of the authority
should be provided.
[76 FR 72296, Nov. 22, 2011]
[[Page 465]]
Sec.41.20 Fees.
(a) Petition fee. The fee for filing a petition under this part is:
$420.00.
(b) Appeal fees.(1) For filing a notice of appeal from the examiner
to the Patent Trial and Appeal Board:
Table 1 to Paragraph (b)(1)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $210.00
By a small entity (Sec. 1.27(a))......................... 420.00
By other than a small or micro entity...................... 840.00
------------------------------------------------------------------------
(2)(i) For filing a brief in support of an appeal in an application
or ex parte reexamination proceeding: $0.00.
(ii) In addition to the fee for filing a notice of appeal, for
filing a brief in support of an appeal in an inter partes reexamination
proceeding:
Table 2 to Paragraph (b)(2)(ii)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $525.00
By a small entity (Sec. 1.27(a))......................... 1,050.00
By other than a small or micro entity...................... 2,100.00
------------------------------------------------------------------------
(3) For filing a request for an oral hearing before the Board in an
appeal under 35 U.S.C. 134:
Table 3 to Paragraph (b)(3)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $340.00
By a small entity (Sec. 1.27(a))......................... 680.00
By other than a small or micro entity...................... 1,360.00
------------------------------------------------------------------------
(4) In addition to the fee for filing a notice of appeal, for
forwarding an appeal in an application or ex parte reexamination
proceeding to the Board:
Table 4 to Paragraph (b)(4)
------------------------------------------------------------------------
------------------------------------------------------------------------
By a micro entity (Sec. 1.29)............................ $590.00
By a small entity (Sec. 1.27(a))......................... 1,180.00
By other than a small or micro entity...................... 2,360.00
------------------------------------------------------------------------
[78 FR 4290, Jan. 18, 2013, as amended at 82 FR 52817, Nov. 14, 2017; 85
FR 46993, Aug. 3, 2020]
Subpart B_Ex Parte Appeals
Sec.41.30 Definitions.
In addition to the definitions in Sec.41.2, the following
definitions apply to proceedings under this subpart unless otherwise
clear from the context:
Applicant means either the applicant in a national application for a
patent or the applicant in an application for reissue of a patent.
Evidence means something (including testimony, documents and
tangible objects) that tends to prove or disprove the existence of an
alleged fact, except that for the purpose of this subpart Evidence does
not include dictionaries, which may be cited before the Board.
Owner means the owner of the patent undergoing ex parte
reexamination under Sec.1.510 of this title.
Proceeding means either a national application for a patent, an
application for reissue of a patent, an ex parte reexamination
proceeding, or a trial before the Patent Trial and Appeal Board. Appeal
to the Board in an inter partes reexamination proceeding is controlled
by subpart C of this part.
Record means the items listed in the content listing of the Image
File Wrapper of the official file of the application or reexamination
proceeding on appeal or the official file of the Office if other than
the Image File Wrapper, excluding amendments, Evidence, and other
documents that were not entered. In the case of an issued patent being
reissued or reexamined, the Record further includes the Record of the
patent being reissued or reexamined.
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011;
77 FR 46630, Aug. 6, 2012]
Sec.41.31 Appeal to Board.
(a) Who may appeal and how to file an appeal. An appeal is taken to
the Board by filing a notice of appeal.
(1) Every applicant, any of whose claims has been twice rejected,
may appeal from the decision of the examiner to the Board by filing a
notice of appeal accompanied by the fee set forth in Sec.41.20(b)(1)
within the time period provided under Sec.1.134 of this title for
reply.
(2) Every owner of a patent under ex parte reexamination filed under
Sec.1.510 of this title before November 29, 1999, any of whose claims
has been twice rejected, may appeal from the decision of the examiner to
the Board by filing a notice of appeal accompanied by the fee set forth
in Sec.41.20(b)(1) within the
[[Page 466]]
time period provided under Sec.1.134 of this title for reply.
(3) Every owner of a patent under ex parte reexamination filed under
Sec.1.510 of this title on or after November 29, 1999, any of whose
claims has been finally (Sec.1.113 of this title) rejected, may appeal
from the decision of the examiner to the Board by filing a notice of
appeal accompanied by the fee set forth in Sec.41.20(b)(1) within the
time period provided under Sec.1.134 of this title for reply.
(b) The signature requirements of Sec. Sec.1.33 and 11.18(a) of
this title do not apply to a notice of appeal filed under this section.
(c) An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office. Questions relating to
matters not affecting the merits of the invention may be required to be
settled before an appeal can be considered.
(d) The time periods set forth in paragraphs (a)(1) through (a)(3)
of this section are extendable under the provisions of Sec.1.136 of
this title for patent applications and Sec.1.550(c) of this title for
ex parte reexamination proceedings.
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011]
Sec.41.33 Amendments and affidavits or other Evidence after appeal.
(a) Amendments filed after the date of filing an appeal pursuant to
Sec.41.31(a)(1) through (a)(3) and prior to the date a brief is filed
pursuant to Sec.41.37 may be admitted as provided in Sec.1.116 of
this title.
(b) Amendments filed on or after the date of filing a brief pursuant
to Sec.41.37 may be admitted:
(1) To cancel claims, where such cancellation does not affect the
scope of any other pending claim in the proceeding, or
(2) To rewrite dependent claims into independent form.
(c) All other amendments filed after the date of filing an appeal
pursuant to Sec.41.31(a)(1) through (a)(3) will not be admitted except
as permitted by Sec. Sec.41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1).
(d)(1) An affidavit or other Evidence filed after the date of filing
an appeal pursuant to Sec.41.31(a)(1) through (a)(3) and prior to the
date of filing a brief pursuant to Sec.41.37 may be admitted if the
examiner determines that the affidavit or other Evidence overcomes all
rejections under appeal and that a showing of good and sufficient
reasons why the affidavit or other Evidence is necessary and was not
earlier presented has been made.
(2) All other affidavits or other Evidence filed after the date of
filing an appeal pursuant to Sec.41.31(a)(1) through (a)(3) will not
be admitted except as permitted by Sec. Sec.41.39(b)(1),
41.50(a)(2)(i), and 41.50(b)(1).
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72296, Nov. 22, 2011]
Sec.41.35 Jurisdiction over appeal.
(a) Beginning of jurisdiction. Jurisdiction over the proceeding
passes to the Board upon the filing of a reply brief under Sec.41.41
or the expiration of the time in which to file such a reply brief,
whichever is earlier.
(b) End of jurisdiction. The jurisdiction of the Board ends when:
(1) The Director or the Board enters a remand order (see Sec. Sec.
41.35(c), 41.35(e), and 41.50(a)(1)),
(2) The Board enters a final decision (see Sec.41.2) and judicial
review is sought or the time for seeking judicial review has expired,
(3) An express abandonment which complies with Sec.1.138 of this
title is recognized,
(4) A request for continued examination is filed which complies with
Sec.1.114 of this title,
(5) Appellant fails to take any required action under Sec. Sec.
41.39(b), 41.50(a)(2), 41.50(b), or 41.50(d), and the Board enters an
order of dismissal, or
(6) Appellant reopens prosecution pursuant to Sec.41.40(b) or in
response to a new ground of rejection entered in a decision of the Board
(see Sec.41.50(b)(1)).
(c) Remand ordered by the Director. Prior to the entry of a decision
on the appeal by the Board (see Sec.41.50), the Director may sua
sponte order the proceeding remanded to the examiner.
(d) Documents filed during Board's jurisdiction. Except for
petitions authorized by this part, consideration of any
[[Page 467]]
information disclosure statement or petition filed while the Board
possesses jurisdiction over the proceeding will be held in abeyance
until the Board's jurisdiction ends.
(e) Administrative remands ordered by the Board. If, after receipt
and review of the proceeding, the Board determines that the file is not
complete or is not in compliance with the requirements of this subpart,
the Board may relinquish jurisdiction to the examiner or take other
appropriate action to permit completion of the file.
[76 FR 72297, Nov. 22, 2011]
Sec.41.37 Appeal brief.
(a) Timing. Appellant must file a brief under this section within
two months from the date of filing the notice of appeal under Sec.
41.31. The appeal brief fee in an application or ex parte reexamination
proceeding is $0.00, but if the appeal results in an examiner's answer,
the appeal forwarding fee set forth in Sec.41.20(b)(4) must be paid
within the time period specified in Sec.41.45 to avoid dismissal of an
appeal.
(b) Failure to file a brief. On failure to file the brief within the
period specified in paragraph (a) of this section, the appeal will stand
dismissed.
(c) Content of appeal brief. (1) Except as otherwise provided in
this paragraph, the brief shall contain the following items under
appropriate headings and in the order indicated in paragraphs (c)(1)(i)
through (v) of this section, except that a brief filed by an appellant
who is not represented by a registered practitioner need only
substantially comply with paragraphs (c)(1)(i), (c)(1)(ii), (c)(1)(iv),
and (c)(1)(v) of this section:
(i) Real party in interest. A statement identifying by name the real
party in interest at the time the appeal brief is filed, except that
such statement is not required if the named inventor or inventors are
themselves the real party in interest. If an appeal brief does not
contain a statement of the real party in interest, the Office may assume
that the named inventor or inventors are the real party in interest.
(ii) Related appeals, interferences, and trials. A statement
identifying by application, patent, appeal, interference, or trial
number all other prior and pending appeals, interferences, trials before
the Board, or judicial proceedings (collectively, ``related cases'')
which satisfy all of the following conditions: involve an application or
patent owned by the appellant or assignee, are known to appellant, the
appellant's legal representative, or assignee, and may be related to,
directly affect or be directly affected by or have a bearing on the
Board's decision in the pending appeal, except that such statement is
not required if there are no such related cases. If an appeal brief does
not contain a statement of related cases, the Office may assume that
there are no such related cases.
(iii) Summary of claimed subject matter. A concise explanation of
the subject matter defined in each of the rejected independent claims,
which shall refer to the specification in the Record by page and line
number or by paragraph number, and to the drawing, if any, by reference
characters. For each rejected independent claim, and for each dependent
claim argued separately under the provisions of paragraph (c)(1)(iv) of
this section, if the claim contains a means plus function or step plus
function recitation as permitted by 35 U.S.C. 112(f), then the concise
explanation must identify the structure, material, or acts described in
the specification in the Record as corresponding to each claimed
function with reference to the specification in the Record by page and
line number or by paragraph number, and to the drawing, if any, by
reference characters. Reference to the patent application publication
does not satisfy the requirements of this paragraph.
(iv) Argument. The arguments of appellant with respect to each
ground of rejection, and the basis therefor, with citations of the
statutes, regulations, authorities, and parts of the Record relied on.
The arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant. Except as provided for in Sec. Sec.
41.41, 41.47 and 41.52, any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of
the present appeal. Each ground of rejection contested by appellant must
be argued under a separate heading, and each
[[Page 468]]
heading shall reasonably identify the ground of rejection being
contested (e.g., by claim number, statutory basis, and applied
reference, if any). For each ground of rejection applying to two or more
claims, the claims may be argued separately (claims are considered by
appellant as separately patentable), as a group (all claims subject to
the ground of rejection stand or fall together), or as a subgroup (a
subset of the claims subject to the ground of rejection stand or fall
together). When multiple claims subject to the same ground of rejection
are argued as a group or subgroup by appellant, the Board may select a
single claim from the group or subgroup and may decide the appeal as to
the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone. Notwithstanding any other provision
of this paragraph, the failure of appellant to separately argue claims
which appellant has grouped together shall constitute a waiver of any
argument that the Board must consider the patentability of any grouped
claim separately. Under each heading identifying the ground of rejection
being contested, any claim(s) argued separately or as a subgroup shall
be argued under a separate subheading that identifies the claim(s) by
number. A statement which merely points out what a claim recites will
not be considered an argument for separate patentability of the claim.
(v) Claims appendix. An appendix containing a copy of the claims
involved in the appeal.
(2) A brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other Evidence. See Sec.1.116 of
this title for treatment of amendments, affidavits or other evidence
filed after final action but before or on the same date of filing an
appeal and Sec.41.33 for treatment of amendments, affidavits or other
Evidence filed after the date of filing the appeal. Review of an
examiner's refusal to admit an amendment or Evidence is by petition to
the Director. See Sec.1.181 of this title.
(d) Notice of non-compliance. If a brief is filed which does not
comply with all the requirements of paragraph (c) of this section,
appellant will be notified of the reasons for non-compliance and given a
time period within which to file an amended brief. If appellant does
not, within the set time period, file an amended brief that overcomes
all the reasons for non-compliance stated in the notification, the
appeal will stand dismissed. Review of a determination of non-compliance
is by petition to the Chief Administrative Patent Judge. See Sec.41.3.
(e) Extensions of time. The time periods set forth in this section
are extendable under the provisions of Sec.1.136 of this title for
patent applications and Sec.1.550(c) of this title for ex parte
reexamination proceedings.
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72297, Nov. 22, 2011;
77 FR 46630, Aug. 6, 2012; 78 FR 4291, Jan. 18, 2013; 78 FR 17107, Mar.
20, 2013]
Sec.41.39 Examiner's answer.
(a) Content of examiner's answer. The primary examiner may, within
such time as may be directed by the Director, furnish a written answer
to the appeal brief.
(1) An examiner's answer is deemed to incorporate all of the grounds
of rejection set forth in the Office action from which the appeal is
taken (as modified by any advisory action and pre-appeal brief
conference decision), unless the examiner's answer expressly indicates
that a ground of rejection has been withdrawn.
(2) An examiner's answer may include a new ground of rejection. For
purposes of the examiner's answer, any rejection that relies upon any
Evidence not relied upon in the Office action from which the appeal is
taken (as modified by any advisory action) shall be designated by the
primary examiner as a new ground of rejection. The examiner must obtain
the approval of the Director to furnish an answer that includes a new
ground of rejection.
(b) Appellant's response to new ground of rejection. If an
examiner's answer contains a rejection designated as a new ground of
rejection, appellant must within two months from the date of the
examiner's answer exercise one of the following two options to avoid sua
sponte dismissal of the appeal as to the claims subject to the new
ground of rejection:
[[Page 469]]
(1) Reopen prosecution. Request that prosecution be reopened before
the primary examiner by filing a reply under Sec.1.111 of this title
with or without amendment or submission of affidavits (Sec. Sec.1.130,
1.131 or 1.132 of this of this title) or other Evidence. Any amendment
or submission of affidavits or other Evidence must be relevant to the
new ground of rejection. A request that complies with this paragraph
will be entered and the application or the patent under ex parte
reexamination will be reconsidered by the examiner under the provisions
of Sec.1.112 of this title. Any request that prosecution be reopened
under this paragraph will be treated as a request to withdraw the
appeal.
(2) Maintain appeal. Request that the appeal be maintained by filing
a reply brief as set forth in Sec.41.41. Such a reply brief must
address as set forth in Sec.41.37(c)(1)(iv) each new ground of
rejection and should follow the other requirements of a brief as set
forth in Sec.41.37(c). A reply brief may not be accompanied by any
amendment, affidavit (Sec. Sec.1.130, 1.131 or 1.132 of this of this
title) or other Evidence. If a reply brief filed pursuant to this
section is accompanied by any amendment, affidavit or other Evidence, it
shall be treated as a request that prosecution be reopened before the
primary examiner under paragraph (b)(1) of this section.
(c) Extensions of time. Extensions of time under Sec.1.136(a) of
this title for patent applications are not applicable to the time period
set forth in this section. See Sec.1.136(b) of this title for
extensions of time to reply for patent applications and Sec.1.550(c)
of this title for extensions of time to reply for ex parte reexamination
proceedings.
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72298, Nov. 22, 2011]
Sec.41.40 Tolling of time period to file a reply brief.
(a) Timing. Any request to seek review of the primary examiner's
failure to designate a rejection as a new ground of rejection in an
examiner's answer must be by way of a petition to the Director under
Sec.1.181 of this title filed within two months from the entry of the
examiner's answer and before the filing of any reply brief. Failure of
appellant to timely file such a petition will constitute a waiver of any
arguments that a rejection must be designated as a new ground of
rejection.
(b) Petition granted and prosecution reopened. A decision granting a
petition under Sec.1.181 to designate a new ground of rejection in an
examiner's answer will provide a two-month time period in which
appellant must file a reply under Sec.1.111 of this title to reopen
the prosecution before the primary examiner. On failure to timely file a
reply under Sec.1.111, the appeal will stand dismissed.
(c) Petition not granted and appeal maintained. A decision refusing
to grant a petition under Sec.1.181 of this title to designate a new
ground of rejection in an examiner's answer will provide a two-month
time period in which appellant may file only a single reply brief under
Sec.41.41.
(d) Withdrawal of petition and appeal maintained. If a reply brief
under Sec.41.41 is filed within two months from the date of the
examiner's answer and on or after the filing of a petition under Sec.
1.181 to designate a new ground of rejection in an examiner's answer,
but before a decision on the petition, the reply brief will be treated
as a request to withdraw the petition and to maintain the appeal.
(e) Extensions of time. Extensions of time under Sec.1.136(a) of
this title for patent applications are not applicable to the time period
set forth in this section. See Sec.1.136(b) of this title for
extensions of time to reply for patent applications and Sec.1.550(c)
of this title for extensions of time to reply for ex parte reexamination
proceedings.
[76 FR 72298, Nov. 22, 2011]
Sec.41.41 Reply brief.
(a) Timing. Appellant may file only a single reply brief to an
examiner's answer within the later of two months from the date of either
the examiner's answer, or a decision refusing to grant a petition under
Sec.1.181 of this title to designate a new ground of rejection in an
examiner's answer.
(b) Content. (1) A reply brief shall not include any new or non-
admitted amendment, or any new or non-admitted affidavit or other
Evidence. See
[[Page 470]]
Sec.1.116 of this title for amendments, affidavits or other evidence
filed after final action but before or on the same date of filing an
appeal and Sec.41.33 for amendments, affidavits or other Evidence
filed after the date of filing the appeal.
(2) Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in the
examiner's answer, including any designated new ground of rejection,
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown.
(c) Extensions of time. Extensions of time under Sec.1.136(a) of
this title for patent applications are not applicable to the time period
set forth in this section. See Sec.1.136(b) of this title for
extensions of time to reply for patent applications and Sec.1.550(c)
of this title for extensions of time to reply for ex parte reexamination
proceedings.
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72298, Nov. 22, 2011]
Sec.41.45 Appeal forwarding fee.
(a) Timing. Appellant in an application or ex parte reexamination
proceeding must pay the fee set forth in Sec.41.20(b)(4) within the
later of two months from the date of either the examiner's answer, or a
decision refusing to grant a petition under Sec.1.181 of this chapter
to designate a new ground of rejection in an examiner's answer.
(b) Failure to pay appeal forwarding fee. On failure to pay the fee
set forth in Sec.41.20(b)(4) within the period specified in paragraph
(a) of this section, the appeal will stand dismissed.
(c) Extensions of time. Extensions of time under Sec.1.136(a) of
this title for patent applications are not applicable to the time period
set forth in this section. See Sec.1.136(b) of this title for
extensions of time to reply for patent applications and Sec.1.550(c)
of this title for extensions of time to reply for ex parte reexamination
proceedings.
[78 FR 17107, Mar. 20, 2013]
Sec.41.47 Oral hearing.
(a) An oral hearing should be requested only in those circumstances
in which appellant considers such a hearing necessary or desirable for a
proper presentation of the appeal. An appeal decided on the briefs
without an oral hearing will receive the same consideration by the Board
as appeals decided after an oral hearing.
(b) If appellant desires an oral hearing, appellant must file, as a
separate paper captioned ``REQUEST FOR ORAL HEARING,'' a written request
for such hearing accompanied by the fee set forth in Sec.41.20(b)(3)
within two months from the date of the examiner's answer or on the date
of filing of a reply brief, whichever is earlier.
(c) If no request and fee for oral hearing have been timely filed by
appellant as required by paragraph (b) of this section, the appeal will
be assigned for consideration and decision on the briefs without an oral
hearing.
(d) If appellant has complied with all the requirements of paragraph
(b) of this section, a date for the oral hearing will be set, and due
notice thereof given to appellant. If an oral hearing is held, an oral
argument may be presented by, or on behalf of, the primary examiner if
considered desirable by either the primary examiner or the Board. A
hearing will be held as stated in the notice, and oral argument will
ordinarily be limited to twenty minutes for appellant and fifteen
minutes for the primary examiner unless otherwise ordered.
(e)(1) Appellant will argue first and may reserve time for rebuttal.
At the oral hearing, appellant may only rely on Evidence that has been
previously entered and considered by the primary examiner and present
argument that has been relied upon in the brief or reply brief except as
permitted by paragraph (e)(2) of this section. The primary examiner may
only rely on argument and Evidence relied upon in an answer except as
permitted by paragraph (e)(2) of this section.
(2) Upon a showing of good cause, appellant and/or the primary
examiner may rely on a new argument based upon a recent relevant
decision of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for oral hearing
complying with this rule, if the Board decides that a hearing is not
necessary, the Board will so notify appellant.
[[Page 471]]
(g) Extensions of time under Sec.1.136(a) of this title for patent
applications are not applicable to the time periods set forth in this
section. See Sec.1.136(b) of this title for extensions of time to
reply for patent applications and Sec.1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72298, Nov. 22, 2011]
Sec.41.50 Decisions and other actions by the Board.
(a)(1) Affirmance and reversal. The Board, in its decision, may
affirm or reverse the decision of the examiner in whole or in part on
the grounds and on the claims specified by the examiner. The affirmance
of the rejection of a claim on any of the grounds specified constitutes
a general affirmance of the decision of the examiner on that claim,
except as to any ground specifically reversed. The Board may also remand
an application to the examiner.
(2) If a substitute examiner's answer is written in response to a
remand by the Board for further consideration of a rejection pursuant to
paragraph (a)(1) of this section, the appellant must within two months
from the date of the substitute examiner's answer exercise one of the
following two options to avoid sua sponte dismissal of the appeal as to
the claims subject to the rejection for which the Board has remanded the
proceeding:
(i) Reopen prosecution. Request that prosecution be reopened before
the examiner by filing a reply under Sec.1.111 of this title with or
without amendment or submission of affidavits (Sec. Sec.1.130, 1.131
or 1.132 of this title) or other Evidence. Any amendment or submission
of affidavits or other Evidence must be relevant to the issues set forth
in the remand or raised in the substitute examiner's answer. A request
that complies with this paragraph (a) will be entered and the
application or the patent under ex parte reexamination will be
reconsidered by the examiner under the provisions of Sec.1.112 of this
title. Any request that prosecution be reopened under this paragraph
will be treated as a request to withdraw the appeal.
(ii) Maintain appeal. Request that the appeal be maintained by
filing a reply brief as provided in Sec.41.41. If such a reply brief
is accompanied by any amendment, affidavit or other Evidence, it shall
be treated as a request that prosecution be reopened before the examiner
under paragraph (a)(2)(i) of this section.
(b) New ground of rejection. Should the Board have knowledge of any
grounds not involved in the appeal for rejecting any pending claim, it
may include in its opinion a statement to that effect with its reasons
for so holding, and designate such a statement as a new ground of
rejection of the claim. A new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review. When the
Board enters such a non-final decision, the appellant, within two months
from the date of the decision, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner. The new ground
of rejection is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
Sec.41.52 by the Board upon the same Record. The request for rehearing
must address any new ground of rejection and state with particularity
the points believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other grounds
upon which rehearing is sought.
(c) Review of undesignated new ground of rejection. Any request to
seek review of a panel's failure to designate a new ground of rejection
in its decision must be raised by filing a request for rehearing as set
forth in Sec.41.52. Failure of appellant to timely file such a request
for
[[Page 472]]
rehearing will constitute a waiver of any arguments that a decision
contains an undesignated new ground of rejection.
(d) Request for briefing and information. The Board may order
appellant to additionally brief any matter that the Board considers to
be of assistance in reaching a reasoned decision on the pending appeal.
Appellant will be given a time period within which to respond to such an
order. Failure to timely comply with the order may result in the sua
sponte dismissal of the appeal.
(e) Remand not final action. Whenever a decision of the Board
includes a remand, that decision shall not be considered final for
judicial review. When appropriate, upon conclusion of proceedings on
remand before the examiner, the Board may enter an order otherwise
making its decision final for judicial review.
(f) Extensions of time. Extensions of time under Sec.1.136(a) of
this title for patent applications are not applicable to the time
periods set forth in this section. See Sec.1.136(b) of this title for
extensions of time to reply for patent applications and Sec.1.550(c)
of this title for extensions of time to reply for ex parte reexamination
proceedings.
[76 FR 72299, Nov. 22, 2011]
Sec.41.52 Rehearing.
(a)(1) Appellant may file a single request for rehearing within two
months of the date of the original decision of the Board. No request for
rehearing from a decision on rehearing will be permitted, unless the
rehearing decision so modified the original decision as to become, in
effect, a new decision, and the Board states that a second request for
rehearing would be permitted. The request for rehearing must state with
particularity the points believed to have been misapprehended or
overlooked by the Board. Arguments not raised, and Evidence not
previously relied upon, pursuant to Sec. Sec.41.37, 41.41, or 41.47
are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section. When a request for
rehearing is made, the Board shall render a decision on the request for
rehearing. The decision on the request for rehearing is deemed to
incorporate the earlier opinion reflecting its decision for appeal,
except for those portions specifically withdrawn on rehearing, and is
final for the purpose of judicial review, except when noted otherwise in
the decision on rehearing.
(2) Appellant may present a new argument based upon a recent
relevant decision of either the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection designated
pursuant to Sec.41.50(b) are permitted.
(4) New arguments that the Board's decision contains an undesignated
new ground of rejection are permitted.
(b) Extensions of time under Sec.1.136(a) of this title for patent
applications are not applicable to the time period set forth in this
section. See Sec.1.136(b) of this title for extensions of time to
reply for patent applications and Sec.1.550(c) of this title for
extensions of time to reply for ex parte reexamination proceedings.
[69 FR 50003, Aug. 12, 2004, as amended at 76 FR 72299, Nov. 22, 2011]
Sec.41.54 Action following decision.
After decision by the Board, jurisdiction over an application or
patent under ex parte reexamination proceeding passes to the examiner,
subject to appellant's right of appeal or other review, for such further
action by appellant or by the examiner, as the condition of the
application or patent under ex parte reexamination proceeding may
require, to carry into effect the decision.
[76 FR 72299, Nov. 22, 2011]
Subpart C_Inter Partes Appeals
Sec.41.60 Definitions.
In addition to the definitions in Sec.41.2, the following
definitions apply to proceedings under this subpart unless otherwise
clear from the context:
Appellant means any party, whether the owner or a requester, filing
a notice of appeal or cross appeal under Sec.41.61. If more than one
party appeals or cross appeals, each appealing or cross appealing party
is an appellant with respect to the claims to which his or her appeal or
cross appeal is directed.
[[Page 473]]
Filing means filing with a certificate indicating service of the
document under Sec.1.903 of this title.
Owner means the owner of the patent undergoing inter partes
reexamination under Sec.1.915 of this title.
Proceeding means an inter partes reexamination proceeding. Appeal to
the Board in an ex parte reexamination proceeding is controlled by
subpart B of this part. An inter partes reexamination proceeding is not
a contested case subject to subpart D.
Requester means each party, other than the owner, who requested that
the patent undergo inter partes reexamination under Sec.1.915 of this
title.
Respondent means any requester responding under Sec.41.68 to the
appellant's brief of the owner, or the owner responding under Sec.
41.68 to the appellant's brief of any requester. No requester may be a
respondent to the appellant brief of any other requester.
Sec.41.61 Notice of appeal and cross appeal to Board.
(a)(1) Upon the issuance of a Right of Appeal Notice under Sec.
1.953 of this title, the owner may appeal to the Board with respect to
the final rejection of any claim of the patent by filing a notice of
appeal within the time provided in the Right of Appeal Notice and paying
the fee set forth in Sec.41.20(b)(1).
(2) Upon the issuance of a Right of Appeal Notice under Sec.1.953
of this title, the requester may appeal to the Board with respect to any
final decision favorable to the patentability, including any final
determination not to make a proposed rejection, of any original,
proposed amended, or new claim of the patent by filing a notice of
appeal within the time provided in the Right of Appeal Notice and paying
the fee set forth in Sec.41.20(b)(1).
(b)(1) Within fourteen days of service of a requester's notice of
appeal under paragraph (a)(2) of this section and upon payment of the
fee set forth in Sec.41.20(b)(1), an owner who has not filed a notice
of appeal may file a notice of cross appeal with respect to the final
rejection of any claim of the patent.
(2) Within fourteen days of service of an owner's notice of appeal
under paragraph (a)(1) of this section and upon payment of the fee set
forth in Sec.41.20(b)(1), a requester who has not filed a notice of
appeal may file a notice of cross appeal with respect to any final
decision favorable to the patentability, including any final
determination not to make a proposed rejection, of any original,
proposed amended, or new claim of the patent.
(c) The notice of appeal or cross appeal in the proceeding must
identify the appealed claim(s) and must be signed by the owner, the
requester, or a duly authorized attorney or agent.
(d) An appeal or cross appeal, when taken, must be taken from all
the rejections of the claims in a Right of Appeal Notice which the
patent owner proposes to contest or from all the determinations
favorable to patentability, including any final determination not to
make a proposed rejection, in a Right of Appeal Notice which a requester
proposes to contest. Questions relating to matters not affecting the
merits of the invention may be required to be settled before an appeal
is decided.
(e) The time periods for filing a notice of appeal or cross appeal
may not be extended.
(f) If a notice of appeal or cross appeal is timely filed but does
not comply with any requirement of this section, appellant will be
notified of the reasons for non-compliance and given a non-extendable
time period within which to file an amended notice of appeal or cross
appeal. If the appellant does not then file an amended notice of appeal
or cross appeal within the set time period, or files a notice which does
not overcome all the reasons for non-compliance stated in the
notification of the reasons for non-compliance, that appellant's appeal
or cross appeal will stand dismissed.
Sec.41.63 Amendments and affidavits or other evidence after appeal.
(a) Amendments filed after the date of filing an appeal pursuant to
Sec.41.61 canceling claims may be admitted where such cancellation
does not affect the scope of any other pending claim in the proceeding.
(b) All other amendments filed after the date of filing an appeal
pursuant to Sec.41.61 will not be admitted except as permitted by
Sec.41.77(b)(1).
[[Page 474]]
(c) Affidavits or other evidence filed after the date of filing an
appeal pursuant to Sec.41.61 will not be admitted except as permitted
by reopening prosecution under Sec.41.77(b)(1).
Sec.41.64 Jurisdiction over appeal in inter partes reexamination.
(a) Jurisdiction over the proceeding passes to the Board upon
transmittal of the file, including all briefs and examiner's answers, to
the Board.
(b) If, after receipt and review of the proceeding, the Board
determines that the file is not complete or is not in compliance with
the requirements of this subpart, the Board may relinquish jurisdiction
to the examiner or take other appropriate action to permit completion of
the file.
(c) Prior to the entry of a decision on the appeal by the Board, the
Director may sua sponte order the proceeding remanded to the examiner.
Sec.41.66 Time for filing briefs.
(a) An appellant's brief must be filed no later than two months from
the latest filing date of the last-filed notice of appeal or cross
appeal or, if any party to the proceeding is entitled to file an appeal
or cross appeal but fails to timely do so, no later than two months from
the expiration of the time for filing (by the last party entitled to do
so) such notice of appeal or cross appeal. The time for filing an
appellant's brief or an amended appellant's brief may not be extended.
(b) Once an appellant's brief has been properly filed, any brief
must be filed by respondent within one month from the date of service of
the appellant's brief. The time for filing a respondent's brief or an
amended respondent's brief may not be extended.
(c) The examiner will consider both the appellant's and respondent's
briefs and may prepare an examiner's answer under Sec.41.69.
(d) Any appellant may file a rebuttal brief under Sec.41.71 within
one month of the date of the examiner's answer. The time for filing a
rebuttal brief or an amended rebuttal brief may not be extended.
(e) No further submission will be considered and any such submission
will be treated in accordance with Sec.1.939 of this title.
Sec.41.67 Appellant's brief.
(a)(1) Appellant(s) may once, within time limits for filing set
forth in Sec.41.66, file a brief and serve the brief on all other
parties to the proceeding in accordance with Sec.1.903 of this title.
(2) The brief must be signed by the appellant, or the appellant's
duly authorized attorney or agent and must be accompanied by the
requisite fee set forth in Sec.41.20(b)(2).
(b) An appellant's appeal shall stand dismissed upon failure of that
appellant to file an appellant's brief, accompanied by the requisite
fee, within the time allowed under Sec.41.66(a).
(c)(1) The appellant's brief shall contain the following items under
appropriate headings and in the order indicated in paragraphs (c)(1)(i)
through (c)(1)(xi) of this section.
(i) Real party in interest. A statement identifying by name the real
party in interest.
(ii) Related appeals, interferences, and trials. A statement
identifying by application, patent, appeal, interference, or trial
number all other prior and pending appeals, interferences, trials before
the Board, or judicial proceedings known to appellant, the appellant's
legal representative, or assignee which may be related to, directly
affect or be directly affected by or have a bearing on the Board's
decision in the pending appeal. Copies of any decisions rendered by a
court or the Board in any proceeding identified under this paragraph
must be included in an appendix as required by paragraph (c)(1)(xi) of
this section.
(iii) Status of claims. A statement of the status of all the claims
in the proceeding (e.g., rejected, allowed or confirmed, withdrawn,
objected to, canceled). If the appellant is the owner, the appellant
must also identify the rejected claims whose rejection is being
appealed. If the appellant is a requester, the appellant must identify
the claims that the examiner has made a determination favorable to
patentability, which determination is being appealed.
(iv) Status of amendments. A statement of the status of any
amendment
[[Page 475]]
filed subsequent to the close of prosecution.
(v) Summary of claimed subject matter. A concise explanation of the
subject matter defined in each of the independent claims involved in the
appeal, which shall refer to the specification by column and line
number, and to the drawing(s), if any, by reference characters. For each
independent claim involved in the appeal and for each dependent claim
argued separately under the provisions of paragraph (c)(1)(vii) of this
section, every means plus function and step plus function as permitted
by 35 U.S.C. 112(f), must be identified and the structure, material, or
acts described in the specification as corresponding to each claimed
function must be set forth with reference to the specification by page
and line number, and to the drawing, if any, by reference characters.
(vi) Issues to be reviewed on appeal. A concise statement of each
issue presented for review. No new ground of rejection can be proposed
by a third party requester appellant, unless such ground was withdrawn
by the examiner during the prosecution of the proceeding, and the third
party requester has not yet had an opportunity to propose it as a third
party requester proposed ground of rejection.
(vii) Argument. The contentions of appellant with respect to each
issue presented for review in paragraph (c)(1)(vi) of this section, and
the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the record relied on. Any arguments or
authorities not included in the brief permitted under this section or
Sec. Sec.41.68 and 41.71 will be refused consideration by the Board,
unless good cause is shown. Each issue must be treated under a separate
heading. If the appellant is the patent owner, for each ground of
rejection in the Right of Appeal Notice which appellant contests and
which applies to two or more claims, the claims may be argued separately
or as a group. When multiple claims subject to the same ground of
rejection are argued as a group by appellant, the Board may select a
single claim from the group of claims that are argued together to decide
the appeal with respect to the group of claims as to the ground of
rejection on the basis of the selected claim alone. Notwithstanding any
other provision of this paragraph, the failure of appellant to
separately argue claims which appellant has grouped together shall
constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately. Any claim argued
separately should be placed under a subheading identifying the claim by
number. Claims argued as a group should be placed under a subheading
identifying the claims by number. A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.
(viii) Claims appendix. An appendix containing a copy of the claims
to be reviewed on appeal.
(ix) Evidence appendix. An appendix containing copies of any
evidence submitted pursuant to Sec. Sec.1.130, 1.131, or 1.132 of this
title or of any other evidence entered by the examiner and relied upon
by appellant in the appeal, along with a statement setting forth where
in the record that evidence was entered in the record by the examiner.
Reference to unentered evidence is not permitted in the brief. See Sec.
41.63 for treatment of evidence submitted after appeal. This appendix
may also include copies of the evidence relied upon by the examiner in
any ground of rejection to be reviewed on appeal.
(x) Related proceedings appendix. An appendix containing copies of
decisions rendered by a court or the Board in any proceeding identified
pursuant to paragraph (c)(1)(ii) of this section.
(xi) Certificate of service. A certification that a copy of the
brief has been served in its entirety on all other parties to the
reexamination proceeding. The names and addresses of the parties served
must be indicated.
(2) A brief shall not include any new or non-admitted amendment, or
any new or non-admitted affidavit or other evidence. See Sec.1.116 of
this title for amendments, affidavits or other evidence filed after
final action but before or on the same date of filing an appeal and
Sec.41.63 for amendments, affidavits or other evidence after the date
of filing the appeal.
[[Page 476]]
(d) If a brief is filed which does not comply with all the
requirements of paragraph (a) and paragraph (c) of this section,
appellant will be notified of the reasons for non-compliance and given a
non-extendable time period within which to file an amended brief. If
appellant does not file an amended brief within the set time period, or
files an amended brief which does not overcome all the reasons for non-
compliance stated in the notification, that appellant's appeal will
stand dismissed.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46630, Aug. 6, 2012]
Sec.41.68 Respondent's brief.
(a)(1) Respondent(s) in an appeal may once, within the time limit
for filing set forth in Sec.41.66, file a respondent brief and serve
the brief on all parties in accordance with Sec.1.903 of this title.
(2) The brief must be signed by the party, or the party's duly
authorized attorney or agent, and must be accompanied by the requisite
fee set forth in Sec.41.20(b)(2).
(3) The respondent brief shall be limited to issues raised in the
appellant brief to which the respondent brief is directed.
(4) A requester's respondent brief may not address any brief of any
other requester.
(b)(1) The respondent brief shall contain the following items under
appropriate headings and in the order here indicated, and may include an
appendix containing only those portions of the record on which reliance
has been made.
(i) Real Party in Interest. A statement identifying by name the real
party in interest.
(ii) Related Appeals, Interferences, and trials. A statement
identifying by application, patent, appeal, interference, or trial
number all other prior and pending appeals, interferences or judicial
proceedings known to respondent, the respondent's legal representative,
or assignee which may be related to, directly affect or be directly
affected by or have a bearing on the Board's decision in the pending
appeal. Copies of any decisions rendered by a court or the Board in any
proceeding identified under this paragraph must be included in an
appendix as required by paragraph (b)(1)(ix) of this section.
(iii) Status of claims. A statement accepting or disputing
appellant's statement of the status of claims. If appellant's statement
of the status of claims is disputed, the errors in appellant's statement
must be specified with particularity.
(iv) Status of amendments. A statement accepting or disputing
appellant's statement of the status of amendments. If appellant's
statement of the status of amendments is disputed, the errors in
appellant's statement must be specified with particularity.
(v) Summary of claimed subject matter. A statement accepting or
disputing appellant's summary of the subject matter defined in each of
the independent claims involved in the appeal. If appellant's summary of
the subject matter is disputed, the errors in appellant's summary must
be specified.
(vi) Issues to be reviewed on appeal. A statement accepting or
disputing appellant's statement of the issues presented for review. If
appellant's statement of the issues presented for review is disputed,
the errors in appellant's statement must be specified. A counter
statement of the issues for review may be made. No new ground of
rejection can be proposed by a requester respondent.
(vii) Argument. A statement accepting or disputing the contentions
of appellant with each of the issues presented by the appellant for
review. If a contention of the appellant is disputed, the errors in
appellant's argument must be specified, stating the basis therefor, with
citations of the statutes, regulations, authorities, and parts of the
record relied on. Each issue must be treated under a separate heading.
An argument may be made with each of the issues stated in the counter
statement of the issues, with each counter-stated issue being treated
under a separate heading.
(viii) Evidence appendix. An appendix containing copies of any
evidence submitted pursuant to Sec. Sec.1.130, 1.131, or 1.132 of this
title or of any other evidence entered by the examiner and relied upon
by respondent in the appeal, along with a statement setting forth
[[Page 477]]
where in the record that evidence was entered in the record by the
examiner. Reference to unentered evidence is not permitted in the
respondent's brief. See Sec.41.63 for treatment of evidence submitted
after appeal.
(ix) Related proceedings appendix. An appendix containing copies of
decisions rendered by a court or the Board in any proceeding identified
pursuant to paragraph (b)(1)(ii) of this section.
(x) Certificate of service. A certification that a copy of the
respondent brief has been served in its entirety on all other parties to
the reexamination proceeding. The names and addresses of the parties
served must be indicated.
(2) A respondent brief shall not include any new or non-admitted
amendment, or any new or non-admitted affidavit or other evidence. See
Sec.1.116 of this title for amendments, affidavits or other evidence
filed after final action but before or on the same date of filing an
appeal and Sec.41.63 for amendments, affidavits or other evidence
filed after the date of filing the appeal.
(c) If a respondent brief is filed which does not comply with all
the requirements of paragraph (a) and paragraph (b) of this section,
respondent will be notified of the reasons for non-compliance and given
a non-extendable time period within which to file an amended brief. If
respondent does not file an amended respondent brief within the set time
period, or files an amended respondent brief which does not overcome all
the reasons for non-compliance stated in the notification, the
respondent brief and any amended respondent brief by that respondent
will not be considered.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012]
Sec.41.69 Examiner's answer.
(a) The primary examiner may, within such time as directed by the
Director, furnish a written answer to the owner's and/or requester's
appellant brief or respondent brief including, as may be necessary, such
explanation of the invention claimed and of the references relied upon,
the grounds of rejection, and the reasons for patentability, including
grounds for not adopting any proposed rejection. A copy of the answer
shall be supplied to the owner and all requesters. If the primary
examiner determines that the appeal does not comply with the provisions
of Sec. Sec.41.61, 41.66, 41.67 and 41.68 or does not relate to an
appealable action, the primary examiner shall make such determination of
record.
(b) An examiner's answer may not include a new ground of rejection.
(c) An examiner's answer may not include a new determination not to
make a proposed rejection of a claim.
(d) Any new ground of rejection, or any new determination not to
make a proposed rejection, must be made in an Office action reopening
prosecution.
Sec.41.71 Rebuttal brief.
(a) Within one month of the examiner's answer, any appellant may
once file a rebuttal brief.
(b)(1) The rebuttal brief of the owner may be directed to the
examiner's answer and/or any respondent brief.
(2) The rebuttal brief of the owner shall not include any new or
non-admitted amendment, or an affidavit or other evidence. See Sec.
1.116 of this title for amendments, affidavits or other evidence filed
after final action but before or on the same date of filing an appeal
and Sec.41.63 for amendments, affidavits or other evidence filed after
the date of filing the appeal.
(c)(1) The rebuttal brief of any requester may be directed to the
examiner's answer and/or the respondent brief of the owner.
(2) The rebuttal brief of a requester may not be directed to the
respondent brief of any other requester.
(3) No new ground of rejection can be proposed by a requester.
(4) The rebuttal brief of a requester shall not include any new or
non-admitted affidavit or other evidence. See Sec.1.116(d) of this
title for affidavits or other evidence filed after final action but
before or on the same date of filing an appeal and Sec.41.63(c) for
affidavits or other evidence filed after the date of filing the appeal.
(d) The rebuttal brief must include a certification that a copy of
the rebuttal brief has been served in its entirety on all other parties
to the proceeding. The names and addresses of the parties served must be
indicated.
[[Page 478]]
(e) If a rebuttal brief is timely filed under paragraph (a) of this
section but does not comply with all the requirements of paragraphs (a)
through (d) of this section, appellant will be notified of the reasons
for non-compliance and provided with a non-extendable period of one
month within which to file an amended rebuttal brief. If the appellant
does not file an amended rebuttal brief during the one-month period, or
files an amended rebuttal brief which does not overcome all the reasons
for non-compliance stated in the notification, that appellant's rebuttal
brief and any amended rebuttal brief by that appellant will not be
considered.
Sec.41.73 Oral hearing.
(a) An oral hearing should be requested only in those circumstances
in which an appellant or a respondent considers such a hearing necessary
or desirable for a proper presentation of the appeal. An appeal decided
on the briefs without an oral hearing will receive the same
consideration by the Board as an appeal decided after an oral hearing.
(b) If an appellant or a respondent desires an oral hearing, he or
she must file, as a separate paper captioned ``REQUEST FOR ORAL
HEARING,'' a written request for such hearing accompanied by the fee set
forth in Sec.41.20(b)(3) within two months after the date of the
examiner's answer. The time for requesting an oral hearing may not be
extended. The request must include a certification that a copy of the
request has been served in its entirety on all other parties to the
proceeding. The names and addresses of the parties served must be
indicated.
(c) If no request and fee for oral hearing have been timely filed by
appellant or respondent as required by paragraph (b) of this section,
the appeal will be assigned for consideration and decision on the briefs
without an oral hearing.
(d) If appellant or respondent has complied with all the
requirements of paragraph (b) of this section, a hearing date will be
set, and notice given to the owner and all requesters. If an oral
hearing is held, an oral argument may be presented by, or on behalf of,
the primary examiner if considered desirable by either the primary
examiner or the Board. The notice shall set a non-extendable period
within which all requests for oral hearing shall be submitted by any
other party to the appeal desiring to participate in the oral hearing. A
hearing will be held as stated in the notice, and oral argument will be
limited to thirty minutes for each appellant or respondent who has
requested an oral hearing, and twenty minutes for the primary examiner
unless otherwise ordered. No appellant or respondent will be permitted
to participate in an oral hearing unless he or she has requested an oral
hearing and submitted the fee set forth in Sec.41.20(b)(3).
(e)(1) At the oral hearing, each appellant and respondent may only
rely on evidence that has been previously entered and considered by the
primary examiner and present argument that has been relied upon in the
briefs except as permitted by paragraph (e)(2) of this section. The
primary examiner may only rely on argument and evidence relied upon in
an answer except as permitted by paragraph (e)(2) of this section. The
Board will determine the order of the arguments presented at the oral
hearing.
(2) Upon a showing of good cause, appellant, respondent and/or the
primary examiner may rely on a new argument based upon a recent relevant
decision of either the Board or a Federal Court.
(f) Notwithstanding the submission of a request for oral hearing
complying with this rule, if the Board decides that a hearing is not
necessary, the Board will so notify the owner and all requesters.
Sec.41.77 Decisions and other actions by the Board.
(a) The Patent Trial and Appeal Board, in its decision, may affirm
or reverse each decision of the examiner on all issues raised on each
appealed claim, or remand the reexamination proceeding to the examiner
for further consideration. The reversal of the examiner's determination
not to make a rejection proposed by the third party requester
constitutes a decision adverse to the patentability of the claims which
are subject to that proposed rejection which will be set forth in the
decision of the Patent Trial and Appeal
[[Page 479]]
Board as a new ground of rejection under paragraph (b) of this section.
The affirmance of the rejection of a claim on any of the grounds
specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically reversed.
(b) Should the Board reverse the examiner's determination not to
make a rejection proposed by a requester, the Board shall set forth in
the opinion in support of its decision a new ground of rejection; or
should the Board have knowledge of any grounds not raised in the appeal
for rejecting any pending claim, it may include in its opinion a
statement to that effect with its reasons for so holding, which
statement shall constitute a new ground of rejection of the claim. Any
decision which includes a new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review. When the
Board makes a new ground of rejection, the owner, within one month from
the date of the decision, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of the
appeal proceeding as to the rejected claim:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under Sec.41.79 by the Board upon the same record. The request
for rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
(c) Where the owner has filed a response requesting reopening of
prosecution under paragraph (b)(1) of this section, any requester,
within one month of the date of service of the owner's response, may
once file comments on the response. Such written comments must be
limited to the issues raised by the Board's opinion reflecting its
decision and the owner's response. Any requester that had not previously
filed an appeal or cross appeal and is seeking under this subsection to
file comments or a reply to the comments is subject to the appeal and
brief fees under Sec.41.20(b)(1) and (2), respectively, which must
accompany the comments or reply.
(d) Following any response by the owner under paragraph (b)(1) of
this section and any written comments from a requester under paragraph
(c) of this section, the proceeding will be remanded to the examiner.
The statement of the Board shall be binding upon the examiner unless an
amendment or new evidence not previously of record is made which, in the
opinion of the examiner, overcomes the new ground of rejection stated in
the decision. The examiner will consider any owner response under
paragraph (b)(1) of this section and any written comments by a requester
under paragraph (c) of this section and issue a determination that the
rejection is maintained or has been overcome.
(e) Within one month of the examiner's determination pursuant to
paragraph (d) of this section, the owner or any requester may once
submit comments in response to the examiner's determination. Within one
month of the date of service of comments in response to the examiner's
determination, the owner and any requesters may file a reply to the
comments. No requester reply may address the comments of any other
requester reply. Any requester that had not previously filed an appeal
or cross appeal and is seeking under this subsection to file comments or
a reply to the comments is subject to the appeal and brief fees under
Sec.41.20(b)(1) and (2), respectively, which must accompany the
comments or reply.
(f) After submission of any comments and any reply pursuant to
paragraph (e) of this section, or after time has expired, the proceeding
will be returned to the Board which shall reconsider the matter and
issue a new decision. The new decision is deemed to incorporate the
earlier decision, except for those portions specifically withdrawn.
(g) The time period set forth in paragraph (b) of this section is
subject to
[[Page 480]]
the extension of time provisions of Sec.1.956 of this title when the
owner is responding under paragraph (b)(1) of this section. The time
period set forth in paragraph (b) of this section may not be extended
when the owner is responding under paragraph (b)(2) of this section. The
time periods set forth in paragraphs (c) and (e) of this section may not
be extended.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012]
Sec.41.79 Rehearing.
(a) Parties to the appeal may file a request for rehearing of the
decision within one month of the date of:
(1) The original decision of the Board under Sec.41.77(a),
(2) The original Sec.41.77(b) decision under the provisions of
Sec.41.77(b)(2),
(3) The expiration of the time for the owner to take action under
Sec.41.77(b)(2), or
(4) The new decision of the Board under Sec.41.77(f).
(b)(1) The request for rehearing must state with particularity the
points believed to have been misapprehended or overlooked in rendering
the Board's opinion reflecting its decision. Arguments not raised in the
briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing except as
permitted by paragraphs (b)(2) and (b)(3) of this section.
(2) Upon a showing of good cause, appellant and/or respondent may
present a new argument based upon a recent relevant decision of either
the Board or a Federal Court.
(3) New arguments responding to a new ground of rejection made
pursuant to Sec.41.77(b) are permitted.
(c) Within one month of the date of service of any request for
rehearing under paragraph (a) of this section, or any further request
for rehearing under paragraph (d) of this section, the owner and all
requesters may once file comments in opposition to the request for
rehearing or the further request for rehearing. The comments in
opposition must be limited to the issues raised in the request for
rehearing or the further request for rehearing.
(d) If a party to an appeal files a request for rehearing under
paragraph (a) of this section, or a further request for rehearing under
this section, the Board shall render a decision on the request for
rehearing. The decision on the request for rehearing is deemed to
incorporate the earlier opinion reflecting its decision for appeal,
except for those portions specifically withdrawn on rehearing and is
final for the purpose of judicial review, except when noted otherwise in
the decision on rehearing. If the Board opinion reflecting its decision
on rehearing becomes, in effect, a new decision, and the Board so
indicates, then any party to the appeal may, within one month of the new
decision, file a further request for rehearing of the new decision under
this subsection. Such further request for rehearing must comply with
paragraph (b) of this section.
(e) The times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
Sec.41.81 Action following decision.
The parties to an appeal to the Board may not appeal to the U.S.
Court of Appeals for the Federal Circuit under Sec.1.983 of this title
until all parties' rights to request rehearing have been exhausted, at
which time the decision of the Board is final and appealable by any
party to the appeal to the Board.
Subpart D_Contested Cases
Sec.41.100 Definitions.
In addition to the definitions in Sec.41.2, the following
definitions apply to proceedings under this subpart:
Business day means a day other than a Saturday, Sunday, or Federal
holiday within the District of Columbia.
Involved means the Board has declared the patent application,
patent, or claim so described to be a subject of the contested case.
Sec.41.101 Notice of proceeding.
(a) Notice of a contested case will be sent to every party to the
proceeding. The entry of the notice initiates the proceeding.
(b) When the Board is unable to provide actual notice of a contested
case
[[Page 481]]
on a party through the correspondence address of record for the party,
the Board may authorize other modes of notice, including:
(1) Sending notice to another address associated with the party, or
(2) Publishing the notice in the Official Gazette of the United
States Patent and Trademark Office.
Sec.41.102 Completion of examination.
Before a contested case is initiated, except as the Board may
otherwise authorize, for each involved application and patent:
(a) Examination or reexamination must be completed, and
(b) There must be at least one claim that:
(1) Is patentable but for a judgment in the contested case, and
(2) Would be involved in the contested case.
Sec.41.103 Jurisdiction over involved files.
The Board acquires jurisdiction over any involved file when the
Board initiates a contested case. Other proceedings for the involved
file within the Office are suspended except as the Board may order.
Sec.41.104 Conduct of contested case.
(a) The Board may determine a proper course of conduct in a
proceeding for any situation not specifically covered by this part and
may enter non-final orders to administer the proceeding.
(b) An administrative patent judge may waive or suspend in a
proceeding the application of any rule in this subpart, subject to such
conditions as the administrative patent judge may impose.
(c) Times set in this subpart are defaults. In the event of a
conflict between a time set by rule and a time set by order, the time
set by order is controlling. Action due on a day other than a business
day may be completed on the next business day unless the Board expressly
states otherwise.
Sec.41.106 Filing and service.
(a) General format requirements. (1) The paper used for filings must
be durable and white. A party must choose to file on either A4-sized
paper or 8\1/2\ inch x 11 inch paper except in the case of exhibits that
require a larger size in order to preserve details of the original. A
party may not switch between paper sizes in a single proceeding. Only
one side of the paper may be used.
(2) In papers, including affidavits, created for the proceeding:
(i) Markings must be in black ink or must otherwise provide an
equivalently permanent, dark, high-contrast image on the paper. The
quality of printing must be equivalent to the quality produced by a
laser printer. Either a proportional or monospaced font may be used, but
the proportional font must be 12-point or larger and a monospaced font
must not contain more than 4 characters per centimeter (10 characters
per inch). Case names must be underlined or italicized.
(ii) Double spacing must be used except in headings, tables of
contents, tables of authorities, indices, signature blocks, and
certificates of service. Block quotations may be single-spaced and must
be indented. Margins must be at least 2.5 centimeters (1 inch) on all
sides.
(b) Papers other than exhibits--(1) Cover sheet. (i) The cover sheet
must include the caption the Board specifies for the proceeding, a
header indicating the party and contact information for the party, and a
title indicating the sequence and subject of the paper. For example,
``JONES MOTION 2, For benefit of an earlier application''.
(ii) If the Board specifies a color other than white for the cover
sheet, the cover sheet must be that color.
(2) Papers must have two 0.5 cm (\1/4\ inch) holes with centers 1 cm
(\1/2\ inch) from the top of the page and 7 cm (2 \3/4\ inch) apart,
centered horizontally on the page.
(3) Incorporation by reference; combined papers. Arguments must not
be incorporated by reference from one paper into another paper. Combined
motions, oppositions, replies, or other combined papers are not
permitted.
(4) Exhibits. Additional requirements for exhibits appear in Sec.
41.154(c).
(c) Working copy. Every paper filed must be accompanied by a working
copy marked ``APJ Copy''.
(d) Specific filing forms--(1) Filing by mail. A paper filed using
the Priority
[[Page 482]]
Mail Express[supreg] service of the United States Postal Service will be
deemed to be filed as of ``date accepted'' on the Priority Mail
Express[supreg] mailing label; otherwise, mail will be deemed to be
filed as of the stamped date of receipt at the Board.
(2) Other modes of filing. The Board may authorize other modes of
filing, including electronic filing and hand filing, and may set
conditions for the use of such other modes.
(e) Service. (1) Papers filed with the Board, if not previously
served, must be served simultaneously on every opposing party except as
the Board expressly directs.
(2) If a party is represented by counsel, service must be on
counsel.
(3) Service must be by Priority Mail Express[supreg] or by means at
least as fast and reliable as Priority Mail Express[supreg]. Electronic
service is not permitted without Board authorization.
(4) The date of service does not count in computing the time for
responding.
(f) Certificate of service. (1) Papers other than exhibits must
include a certificate of service as a separate page at the end of each
paper that must be served on an opposing party.
(2) Exhibits must be accompanied by a certificate of service, but a
single certificate may accompany any group of exhibits submitted
together.
(3) A certificate of service must state:
(i) The date and manner of service,
(ii) The name and address of every person served, and
(iii) For exhibits filed as a group, the name and number of each
exhibit served.
(4) A certificate made by a person other than a registered patent
practitioner must be in the form of an affidavit.
[69 FR 50003, Aug. 12, 2004, as amended at 79 FR 63043, Oct. 22, 2014]
Sec.41.108 Lead counsel.
(a) A party may be represented by counsel. The Board may require a
party to appoint a lead counsel. If counsel is not of record in a
party's involved application or patent, then a power of attorney for
that counsel for the party's involved application or patent must be
filed with the notice required in paragraph (b) of this section.
(b) Within 14 days of the initiation of each contested case, each
party must file a separate notice identifying its counsel, if any, and
providing contact information for each counsel identified or, if the
party has no counsel, then for the party. Contact information must, at a
minimum, include:
(1) A mailing address;
(2) An address for courier delivery when the mailing address is not
available for such delivery (for example, when the mailing address is a
Post Office box);
(3) A telephone number;
(4) A facsimile number; and
(5) An electronic mail address.
(c) A party must promptly notify the Board of any change in the
contact information required in paragraph (b) of this section.
Sec.41.109 Access to and copies of Office records.
(a) Request for access or copies. Any request from a party for
access to or copies of Office records directly related to a contested
case must be filed with the Board. The request must precisely identify
the records and in the case of copies include the appropriate fee set
under Sec.1.19(b) of this title.
(b) Authorization of access and copies. Access and copies will
ordinarily only be authorized for the following records:
(1) The application file for an involved patent;
(2) An involved application; and
(3) An application for which a party has been accorded benefit under
subpart E of this part.
(c) Missing or incomplete copies. If a party does not receive a
complete copy of a record within 21 days of the authorization, the party
must promptly notify the Board.
Sec.41.110 Filing claim information.
(a) Clean copy of claims. Within 14 days of the initiation of the
proceeding, each party must file a clean copy of its involved claims
and, if a biotechnology material sequence is a limitation, a clean copy
of the sequence.
[[Page 483]]
(b) Annotated copy of claims. Within 28 days of the initiation of
the proceeding, each party must:
(1) For each involved claim having a limitation that is illustrated
in a drawing or biotechnology material sequence, file an annotated copy
of the claim indicating in bold face between braces ({ {time} ) where
each limitation is shown in the drawing or sequence.
(2) For each involved claim that contains a means-plus-function or
step-plus-function limitation in the form permitted under 35 U.S.C.
112(f), file an annotated copy of the claim indicating in bold face
between braces ({ {time} ) the specific portions of the specification
that describe the structure, material, or acts corresponding to each
claimed function.
(c) Any motion to add or amend a claim must include:
(1) A clean copy of the claim,
(2) A claim chart showing where the disclosure of the patent or
application provides written description of the subject matter of the
claim, and
(3) Where applicable, a copy of the claims annotated according to
paragraph (b) of this section.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012]
Sec.41.120 Notice of basis for relief.
(a) The Board may require a party to provide a notice stating the
relief it requests and the basis for its entitlement to relief. The
Board may provide for the notice to be maintained in confidence for a
limited time.
(b) Effect. If a notice under paragraph (a) of this section is
required, a party will be limited to filing substantive motions
consistent with the notice. Ambiguities in the notice will be construed
against the party. A notice is not evidence except as an admission by a
party-opponent.
(c) Correction. A party may move to correct its notice. The motion
should be filed promptly after the party becomes aware of the basis for
the correction. A correction filed after the time set for filing notices
will only be entered if entry would serve the interests of justice.
Sec.41.121 Motions.
(a) Types of motions--(1) Substantive motions. Consistent with the
notice of requested relief, if any, and to the extent the Board
authorizes, a party may file a motion:
(i) To redefine the scope of the contested case,
(ii) To change benefit accorded for the contested subject matter, or
(iii) For judgment in the contested case.
(2) Responsive motions. The Board may authorize a party to file a
motion to amend or add a claim, to change inventorship, or otherwise to
cure a defect raised in a notice of requested relief or in a substantive
motion.
(3) Miscellaneous motions. Any request for relief other than a
substantive or responsive motion must be filed as a miscellaneous
motion.
(b) Burden of proof. The party filing the motion has the burden of
proof to establish that it is entitled to the requested relief.
(c) Content of motions; oppositions and replies. (1) Each motion
must be filed as a separate paper and must include:
(i) A statement of the precise relief requested,
(ii) A statement of material facts (see paragraph (d) of this
section), and
(iii) A full statement of the reasons for the relief requested,
including a detailed explanation of the significance of the evidence and
the governing law, rules, and precedent.
(2) Compliance with rules. Where a rule in part 1 of this title
ordinarily governs the relief sought, the motion must make any showings
required under that rule in addition to any showings required in this
part.
(3) The Board may order additional showings or explanations as a
condition for filing a motion.
(d) Statement of material facts. (1) Each material fact shall be set
forth as a separate numbered sentence with specific citations to the
portions of the record that support the fact.
(2) The Board may require that the statement of material facts be
submitted as a separate paper.
(e) Claim charts. Claim charts must be used in support of any paper
requiring the comparison of a claim to something else, such as another
claim, prior
[[Page 484]]
art, or a specification. Claim charts must accompany the paper as an
appendix. Claim charts are not a substitute for appropriate argument and
explanation in the paper.
(f) The Board may order briefing on any issue that could be raised
by motion.
Sec.41.122 Oppositions and replies.
(a) Oppositions and replies must comply with the content
requirements for motions and must include a statement identifying
material facts in dispute. Any material fact not specifically denied
shall be considered admitted.
(b) All arguments for the relief requested in a motion must be made
in the motion. A reply may only respond to arguments raised in the
corresponding opposition.
Sec.41.123 Default filing times.
(a) A motion, other than a miscellaneous motion, may only be filed
according to a schedule the Board sets. The default times for acting
are:
(1) An opposition is due 30 days after service of the motion.
(2) A reply is due 30 days after service of the opposition.
(3) A responsive motion is due 30 days after the service of the
motion.
(b) Miscellaneous motions. (1) If no time for filing a specific
miscellaneous motion is provided in this part or in a Board order:
(i) The opposing party must be consulted prior to filing the
miscellaneous motion, and
(ii) If an opposing party plans to oppose the miscellaneous motion,
the movant may not file the motion without Board authorization. Such
authorization should ordinarily be obtained through a telephone
conference including the Board and every other party to the proceeding.
Delay in seeking relief may justify a denial of the motion.
(2) An opposition may not be filed without authorization. The
default times for acting are:
(i) An opposition to a miscellaneous motion is due five business
days after service of the motion.
(ii) A reply to a miscellaneous motion opposition is due three
business days after service of the opposition.
(c) Exhibits. Each exhibit must be filed and served with the first
paper in which it is cited except as the Board may otherwise order.
Sec.41.124 Oral argument.
(a) Request for oral argument. A party may request an oral argument
on an issue raised in a paper within five business days of the filing of
the paper. The request must be filed as a separate paper and must
specify the issues to be considered.
(b) Copies for panel. If an oral argument is set for a panel, the
movant on any issue to be argued must provide three working copies of
the motion, the opposition, and the reply. Each party is responsible for
providing three working copies of its exhibits relating to the motion.
(c) Length of argument. If a request for oral argument is granted,
each party will have a total of 20 minutes to present its arguments,
including any time for rebuttal.
(d) Demonstrative exhibits must be served at least five business
days before the oral argument and filed no later than the time of the
oral argument.
(e) Transcription. The Board encourages the use of a transcription
service at oral arguments but, if such a service is to be used, the
Board must be notified in advance to ensure adequate facilities are
available and a transcript must be filed with the Board promptly after
the oral argument.
Sec.41.125 Decision on motions.
(a) Order of consideration. The Board may take up motions for
decisions in any order, may grant, deny, or dismiss any motion, and may
take such other action appropriate to secure the just, speedy, and
inexpensive determination of the proceeding. A decision on a motion may
include deferral of action on an issue until a later point in the
proceeding.
(b) Interlocutory decisions. A decision on motions without a
judgment is not final for the purposes of judicial review. A panel
decision on an issue will govern further proceedings in the contested
case.
(c) Rehearing--(1) Time for request. A request for rehearing of a
decision on a
[[Page 485]]
motion must be filed within fourteen days of the decision.
(2) No tolling. The filing of a request for rehearing does not toll
times for taking action.
(3) Burden on rehearing. The burden of showing a decision should be
modified lies with the party attacking the decision. The request must
specifically identify:
(i) All matters the party believes to have been misapprehended or
overlooked, and
(ii) The place where the matter was previously addressed in a
motion, opposition, or reply.
(4) Opposition; reply. Neither an opposition nor a reply to a
request for rehearing may be filed without Board authorization.
(5) Panel rehearing. If a decision is not a panel decision, the
party requesting rehearing may request that a panel rehear the decision.
A panel rehearing a procedural decision will review the decision for an
abuse of discretion.
Sec.41.126 Arbitration.
(a) Parties to a contested case may resort to binding arbitration to
determine any issue in a contested case. The Office is not a party to
the arbitration. The Board is not bound and may independently determine
questions of patentability, jurisdiction, and Office practice.
(b) The Board will not authorize arbitration unless:
(1) It is to be conducted according to Title 9 of the United States
Code.
(2) The parties notify the Board in writing of their intention to
arbitrate.
(3) The agreement to arbitrate:
(i) Is in writing,
(ii) Specifies the issues to be arbitrated,
(iii) Names the arbitrator, or provides a date not more than 30 days
after the execution of the agreement for the selection of the
arbitrator, and
(iv) Provides that the arbitrator's award shall be binding on the
parties and that judgment thereon can be entered by the Board.
(4) A copy of the agreement is filed within 20 days after its
execution.
(5) The arbitration is completed within the time the Board sets.
(c) The parties are solely responsible for the selection of the
arbitrator and the conduct of proceedings before the arbitrator.
(d) Issues not disposed of by the arbitration will be resolved in
accordance with the procedures established in this subpart.
(e) The Board will not consider the arbitration award unless it:
(1) Is binding on the parties,
(2) Is in writing,
(3) States in a clear and definite manner each issue arbitrated and
the disposition of each issue, and
(4) Is filed within 20 days of the date of the award.
(f) Once the award is filed, the parties to the award may not take
actions inconsistent with the award. If the award is dispositive of the
contested subject matter for a party, the Board may enter judgment as to
that party.
Sec.41.127 Judgment.
(a) Effect within Office--(1) Estoppel. A judgment disposes of all
issues that were, or by motion could have properly been, raised and
decided. A losing party who could have properly moved for relief on an
issue, but did not so move, may not take action in the Office after the
judgment that is inconsistent with that party's failure to move, except
that a losing party shall not be estopped with respect to any contested
subject matter for which that party was awarded a favorable judgment.
(2) Final disposal of claim. Adverse judgment against a claim is a
final action of the Office requiring no further action by the Office to
dispose of the claim permanently.
(b) Request for adverse judgment. A party may at any time in the
proceeding request judgment against itself. Actions construed to be a
request for adverse judgment include:
(1) Abandonment of an involved application such that the party no
longer has an application or patent involved in the proceeding,
(2) Cancellation or disclaiming of a claim such that the party no
longer has a claim involved in the proceeding,
(3) Concession of priority or unpatentability of the contested
subject matter, and
(4) Abandonment of the contest.
[[Page 486]]
(c) Recommendation. The judgment may include a recommendation for
further action by the examiner or by the Director. If the Board
recommends rejection of a claim of an involved application, the examiner
must enter and maintain the recommended rejection unless an amendment or
showing of facts not previously of record is filed which, in the opinion
of the examiner, overcomes the recommended rejection.
(d) Rehearing. A party dissatisfied with the judgment may file a
request for rehearing within 30 days of the entry of the judgment. The
request must specifically identify all matters the party believes to
have been misapprehended or overlooked, and the place where the matter
was previously addressed in a motion, opposition, or reply.
[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
Sec.41.128 Sanctions.
(a) The Board may impose a sanction against a party for misconduct,
including:
(1) Failure to comply with an applicable rule or order in the
proceeding;
(2) Advancing a misleading or frivolous request for relief or
argument; or
(3) Engaging in dilatory tactics.
(b) Sanctions include entry of:
(1) An order holding certain facts to have been established in the
proceeding;
(2) An order expunging, or precluding a party from filing, a paper;
(3) An order precluding a party from presenting or contesting a
particular issue;
(4) An order precluding a party from requesting, obtaining, or
opposing discovery;
(5) An order excluding evidence;
(6) An order awarding compensatory expenses, including attorney
fees;
(7) An order requiring terminal disclaimer of patent term; or
(8) Judgment in the contested case.
Sec.41.150 Discovery.
(a) Limited discovery. A party is not entitled to discovery except
as authorized in this subpart. The parties may agree to discovery among
themselves at any time.
(b) Automatic discovery. (1) Within 21 days of a request by an
opposing party, a party must:
(i) Serve a legible copy of every requested patent, patent
application, literature reference, and test standard mentioned in the
specification of the party's involved patent or application, or
application upon which the party will rely for benefit, and, if the
requested material is in a language other than English, a translation,
if available, and
(ii) File with the Board a notice (without copies of the requested
materials) of service of the requested materials.
(2) Unless previously served, or the Board orders otherwise, any
exhibit cited in a motion or in testimony must be served with the citing
motion or testimony.
(c) Additional discovery. (1) A party may request additional
discovery. The requesting party must show that such additional discovery
is in the interests of justice. The Board may specify conditions for
such additional discovery.
(2) When appropriate, a party may obtain production of documents and
things during cross examination of an opponent's witness or during
testimony authorized under Sec.41.156.
Sec.41.151 Admissibility.
Evidence that is not taken, sought, or filed in accordance with this
subpart shall not be admissible.
Sec.41.152 Applicability of the Federal Rules of Evidence.
(a) Generally. Except as otherwise provided in this subpart, the
Federal Rules of Evidence shall apply to contested cases.
(b) Exclusions. Those portions of the Federal Rules of Evidence
relating to criminal proceedings, juries, and other matters not relevant
to proceedings under this subpart shall not apply.
(c) Modifications in terminology. Unless otherwise clear from
context, the following terms of the Federal Rules of Evidence shall be
construed as indicated:
Appellate court means United States Court of Appeals for the Federal
Circuit or a United States district court
[[Page 487]]
when judicial review is under 35 U.S.C. 146.
Civil action, civil proceeding, action, and trial mean contested
case.
Courts of the United States, U.S. Magistrate, court, trial court,
and trier of fact mean Board.
Hearing means:
(i) In Federal Rule of Evidence 703, the time when the expert
testifies.
(ii) In Federal Rule of Evidence 804(a)(5), the time for taking
testimony.
Judge means the Board.
Judicial notice means official notice.
Trial or hearing means, in Federal Rule of Evidence 807, the time
for taking testimony.
(d) The Board, in determining foreign law, may consider any relevant
material or source, including testimony, whether or not submitted by a
party or admissible under the Federal Rules of Evidence.
Sec.41.153 Records of the Office.
Certification is not necessary as a condition to admissibility when
the evidence to be submitted is a record of the Office to which all
parties have access.
Sec.41.154 Form of evidence.
(a) Evidence consists of affidavits, transcripts of depositions,
documents, and things. All evidence must be submitted in the form of an
exhibit.
(b) Translation required. When a party relies on a document or is
required to produce a document in a language other than English, a
translation of the document into English and an affidavit attesting to
the accuracy of the translation must be filed with the document.
(c) An exhibit must conform with the requirements for papers in
Sec.41.106 of this subpart and the requirements of this paragraph.
(1) Each exhibit must have an exhibit label with a unique number in
a range assigned by the Board, the names of the parties, and the
proceeding number in the following format:
JONES EXHIBIT 2001
Jones v. Smith
Contested Case 104,999
(2) When the exhibit is a paper:
(i) Each page must be uniquely numbered in sequence, and
(ii) The exhibit label must be affixed to the lower right corner of
the first page of the exhibit without obscuring information on the first
page or, if obscuring is unavoidable, affixed to a duplicate first page.
(d) Exhibit list. Each party must maintain an exhibit list with the
exhibit number and a brief description of each exhibit. If the exhibit
is not filed, the exhibit list should note that fact. The Board may
require the filing of a current exhibit list prior to acting on a
motion.
[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
Sec.41.155 Objection; motion to exclude; motion in limine.
(a) Deposition. Objections to deposition evidence must be made
during the deposition. Evidence to cure the objection must be provided
during the deposition unless the parties to the deposition stipulate
otherwise on the deposition record.
(b) Other than deposition. For evidence other than deposition
evidence:
(1) Objection. Any objection must be served within five business
days of service of evidence, other than deposition evidence, to which
the objection is directed.
(2) Supplemental evidence. The party relying on evidence for which
an objection is timely served may respond to the objection by serving
supplemental evidence within ten business days of service of the
objection.
(c) Motion to exclude. A miscellaneous motion to exclude evidence
must be filed to preserve any objection. The motion must identify the
objections in the record in order and must explain the objections.
(d) Motion in limine. A party may file a miscellaneous motion in
limine for a ruling on the admissibility of evidence.
[69 FR 50003, Aug. 12, 2004, as amended at 69 FR 58260, Sept. 30, 2004]
Sec.41.156 Compelling testimony and production.
(a) Authorization required. A party seeking to compel testimony or
production of documents or things must
[[Page 488]]
file a miscellaneous motion for authorization. The miscellaneous motion
must describe the general relevance of the testimony, document, or thing
and must:
(1) In the case of testimony, identify the witness by name or title,
and
(2) In the case of a document or thing, the general nature of the
document or thing.
(b) Outside the United States. For testimony or production sought
outside the United States, the motion must also:
(1) In the case of testimony. (i) Identify the foreign country and
explain why the party believes the witness can be compelled to testify
in the foreign country, including a description of the procedures that
will be used to compel the testimony in the foreign country and an
estimate of the time it is expected to take to obtain the testimony; and
(ii) Demonstrate that the party has made reasonable efforts to
secure the agreement of the witness to testify in the United States but
has been unsuccessful in obtaining the agreement, even though the party
has offered to pay the expenses of the witness to travel to and testify
in the United States.
(2) In the case of production of a document or thing. (i) Identify
the foreign country and explain why the party believes production of the
document or thing can be compelled in the foreign country, including a
description of the procedures that will be used to compel production of
the document or thing in the foreign country and an estimate of the time
it is expected to take to obtain production of the document or thing;
and
(ii) Demonstrate that the party has made reasonable efforts to
obtain the agreement of the individual or entity having possession,
custody, or control of the document to produce the document or thing in
the United States but has been unsuccessful in obtaining that agreement,
even though the party has offered to pay the expenses of producing the
document or thing in the United States.
Sec.41.157 Taking testimony.
(a) Form. Direct testimony must be submitted in the form of an
affidavit except when the testimony is compelled under 35 U.S.C. 24, in
which case it may be in the form of a deposition transcript.
(b) Time and location. (1) Uncompelled direct testimony may be taken
at any time; otherwise, testimony may only be taken during such time
period as the Board may authorize.
(2) Other testimony. (i) Except as the Board otherwise orders,
authorized testimony may be taken at any reasonable time and location
within the United States before any disinterested official authorized to
administer oaths at that location.
(ii) Testimony outside the United States may only be taken as the
Board specifically directs.
(c) Notice of deposition. (1) Prior to the taking of testimony, all
parties to the proceeding must agree on the time and place for taking
testimony. If the parties cannot agree, the party seeking the testimony
must initiate a conference with the Board to set a time and place.
(2) Cross-examination should ordinarily take place after any
supplemental evidence relating to the direct testimony has been filed
and more than a week before the filing date for any paper in which the
cross-examination testimony is expected to be used. A party requesting
cross-examination testimony of more than one witness may choose the
order in which the witnesses are to be cross-examined.
(3) In the case of direct testimony, at least three business days
prior to the conference in paragraph (c)(1) of this section, the party
seeking the direct testimony must serve:
(i) A list and copy of each document under the party's control and
on which the party intends to rely, and
(ii) A list of, and proffer of reasonable access to, any thing other
than a document under the party's control and on which the party intends
to rely.
(4) Notice of the deposition must be filed at least two business
days before a deposition. The notice limits the scope of the testimony
and must list:
(i) The time and place of the deposition,
(ii) The name and address of the witness,
[[Page 489]]
(iii) A list of the exhibits to be relied upon during the
deposition, and
(iv) A general description of the scope and nature of the testimony
to be elicited.
(5) Motion to quash. Objection to a defect in the notice is waived
unless a miscellaneous motion to quash is promptly filed.
(d) Deposition in a foreign language. If an interpreter will be used
during the deposition, the party calling the witness must initiate a
conference with the Board at least five business days before the
deposition.
(e) Manner of taking testimony. (1) Each witness before giving a
deposition shall be duly sworn according to law by the officer before
whom the deposition is to be taken. The officer must be authorized to
take testimony under 35 U.S.C. 23.
(2) The testimony shall be taken in answer to interrogatories with
any questions and answers recorded in their regular order by the
officer, or by some other disinterested person in the presence of the
officer, unless the presence of the officer is waived on the record by
agreement of all parties.
(3) Any exhibits relied upon must be numbered according to the
numbering scheme assigned for the contested case and must, if not
previously served, be served at the deposition.
(4) All objections made at the time of the deposition to the
qualifications of the officer taking the deposition, the manner of
taking it, the evidence presented, the conduct of any party, and any
other objection to the proceeding shall be noted on the record by the
officer. Evidence objected to shall be taken subject to a ruling on the
objection.
(5) When the testimony has been transcribed, the witness shall read
and sign (in the form of an affidavit) a transcript of the deposition
unless:
(i) The parties otherwise agree in writing, (ii) The parties waive
reading and signature by the witness on the record at the deposition, or
(iii) The witness refuses to read or sign the transcript of the
deposition.
(6) The officer shall prepare a certified transcript by attaching to
the transcript of the deposition a certificate in the form of an
affidavit signed and sealed by the officer. Unless the parties waive any
of the following requirements, in which case the certificate shall so
state, the certificate must state:
(i) The witness was duly sworn by the officer before commencement of
testimony by the witness;
(ii) The transcript is a true record of the testimony given by the
witness;
(iii) The name of the person who recorded the testimony and, if the
officer did not record it, whether the testimony was recorded in the
presence of the officer;
(iv) The presence or absence of any opponent;
(v) The place where the deposition was taken and the day and hour
when the deposition began and ended;
(vi) The officer has no disqualifying interest, personal or
financial, in a party; and
(vii) If a witness refuses to read or sign the transcript, the
circumstances under which the witness refused.
(7) The officer must promptly provide a copy of the transcript to
all parties. The proponent of the testimony must file the original as an
exhibit.
(8) Any objection to the content, form, or manner of taking the
deposition, including the qualifications of the officer, is waived
unless made on the record during the deposition and preserved in a
timely filed miscellaneous motion to exclude.
(f) Costs. Except as the Board may order or the parties may agree in
writing, the proponent of the testimony shall bear all costs associated
with the testimony, including the reasonable costs associated with
making the witness available for the cross-examination.
Sec.41.158 Expert testimony; tests and data.
(a) Expert testimony that does not disclose the underlying facts or
data on which the opinion is based is entitled to little or no weight.
Testimony on United States patent law will not be admitted.
(b) If a party relies on a technical test or data from such a test,
the party must provide an affidavit explaining:
(1) Why the test or data is being used,
[[Page 490]]
(2) How the test was performed and the data was generated,
(3) How the data is used to determine a value,
(4) How the test is regarded in the relevant art, and
(5) Any other information necessary for the Board to evaluate the
test and data.
Subpart E_Patent Interferences
Sec.41.200 Procedure; pendency.
(a) A patent interference is a contested case subject to the
procedures set forth in subpart D of this part.
(b) Any reference to 35 U.S.C. 102 or 135 in this subpart refers to
the statute in effect on March 15, 2013, unless otherwise expressly
indicated. Any reference to 35 U.S.C. 141 or 146 in this subpart refers
to the statute applicable to the involved application or patent.
(c) Patent interferences shall be administered such that pendency
before the Board is normally no more than two years.
[69 FR 50003, Aug. 12, 2004, as amended at 75 FR 19559, Apr. 15, 2010;
80 FR 17971, Apr. 2, 2015]
Sec.41.201 Definitions.
In addition to the definitions in Sec. Sec.41.2 and 41.100, the
following definitions apply to proceedings under this subpart:
Accord benefit means Board recognition that a patent application
provides a proper constructive reduction to practice under 35 U.S.C.
102(g)(1).
Constructive reduction to practice means a described and enabled
anticipation under 35 U.S.C. 102(g)(1), in a patent application of the
subject matter of a count. Earliest constructive reduction to practice
means the first constructive reduction to practice that has been
continuously disclosed through a chain of patent applications including
in the involved application or patent. For the chain to be continuous,
each subsequent application must comply with the requirements of 35
U.S.C. 119-121, 365, or 386.
Count means the Board's description of the interfering subject
matter that sets the scope of admissible proofs on priority. Where there
is more than one count, each count must describe a patentably distinct
invention.
Involved claim means, for the purposes of 35 U.S.C. 135(a), a claim
that has been designated as corresponding to the count.
Senior party means the party entitled to the presumption under Sec.
41.207(a)(1) that it is the prior inventor. Any other party is a junior
party.
Threshold issue means an issue that, if resolved in favor of the
movant, would deprive the opponent of standing in the interference.
Threshold issues may include:
(1) No interference-in-fact, and
(2) In the case of an involved application claim first made after
the publication of the movant's application or issuance of the movant's
patent:
(i) Repose under 35 U.S.C. 135(b) in view of the movant's patent or
published application, or
(ii) Unpatentability for lack of written description under 35 U.S.C.
112 of an involved application claim where the applicant suggested, or
could have suggested, an interference under Sec.41.202(a).
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 46631, Aug. 6, 2012; 80
FR 17971, Apr. 2, 2015]
Sec.41.202 Suggesting an interference.
(a) Applicant. An applicant, including a reissue applicant, may
suggest an interference with another application or a patent. The
suggestion must:
(1) Provide sufficient information to identify the application or
patent with which the applicant seeks an interference,
(2) Identify all claims the applicant believes interfere, propose
one or more counts, and show how the claims correspond to one or more
counts,
(3) For each count, provide a claim chart comparing at least one
claim of each party corresponding to the count and show why the claims
interfere within the meaning of Sec.41.203(a),
(4) Explain in detail why the applicant will prevail on priority,
(5) If a claim has been added or amended to provoke an interference,
provide a claim chart showing the written description for each claim in
the applicant's specification, and
[[Page 491]]
(6) For each constructive reduction to practice for which the
applicant wishes to be accorded benefit, provide a chart showing where
the disclosure provides a constructive reduction to practice within the
scope of the interfering subject matter.
(b) Patentee. A patentee cannot suggest an interference under this
section but may, to the extent permitted under Sec.1.291 of this
title, alert the examiner of an application claiming interfering subject
matter to the possibility of an interference.
(c) Examiner. An examiner may require an applicant to add a claim to
provoke an interference. Failure to satisfy the requirement within a
period (not less than one month) the examiner sets will operate as a
concession of priority for the subject matter of the claim. If the
interference would be with a patent, the applicant must also comply with
paragraphs (a)(2) through (a)(6) of this section. The claim the examiner
proposes to have added must, apart from the question of priority under
35 U.S.C. 102(g):
(1) Be patentable to the applicant, and
(2) Be drawn to patentable subject matter claimed by another
applicant or patentee.
(d) Requirement to show priority under 35 U.S.C. 102(g). (1) When an
applicant has an earliest constructive reduction to practice that is
later than the apparent earliest constructive reduction to practice for
a patent or published application claiming interfering subject matter,
the applicant must show why it would prevail on priority.
(2) If an applicant fails to show priority under paragraph (d)(1) of
this section, an administrative patent judge may nevertheless declare an
interference to place the applicant under an order to show cause why
judgment should not be entered against the applicant on priority. New
evidence in support of priority will not be admitted except on a showing
of good cause. The Board may authorize the filing of motions to redefine
the interfering subject matter or to change the benefit accorded to the
parties.
(e) Sufficiency of showing. (1) A showing of priority under this
section is not sufficient unless it would, if unrebutted, support a
determination of priority in favor of the party making the showing.
(2) When testimony or production necessary to show priority is not
available without authorization under Sec.41.150(c) or Sec.
41.156(a), the showing shall include:
(i) Any necessary interrogatory, request for admission, request for
production, or deposition request, and
(ii) A detailed proffer of what the response to the interrogatory or
request would be expected to be and an explanation of the relevance of
the response to the question of priority.
[69 FR 50003, Aug. 12, 2004, as amended at 77 FR 42174, July 17, 2012]
Sec.41.203 Declaration.
(a) Interfering subject matter. An interference exists if the
subject matter of a claim of one party would, if prior art, have
anticipated or rendered obvious the subject matter of a claim of the
opposing party and vice versa.
(b) Notice of declaration. An administrative patent judge declares
the patent interference on behalf of the Director. A notice declaring an
interference identifies:
(1) The interfering subject matter;
(2) The involved applications, patents, and claims;
(3) The accorded benefit for each count; and
(4) The claims corresponding to each count.
(c) Redeclaration. An administrative patent judge may redeclare a
patent interference on behalf of the Director to change the declaration
made under paragraph (b) of this section.
(d) A party may suggest the addition of a patent or application to
the interference or the declaration of an additional interference. The
suggestion should make the showings required under Sec.41.202(a) of
this part.
Sec.41.204 Notice of basis for relief.
(a) Priority statement. (1) A party may not submit evidence of its
priority in addition to its accorded benefit unless it files a statement
setting forth all bases on which the party intends to establish its
entitlement to judgment on priority.
(2) The priority statement must:
[[Page 492]]
(i) State the date and location of the party's earliest corroborated
conception,
(ii) State the date and location of the party's earliest
corroborated actual reduction to practice,
(iii) State the earliest corroborated date on which the party's
diligence began, and
(iv) Provide a copy of the earliest document upon which the party
will rely to show conception.
(3) If a junior party fails to file a priority statement overcoming
a senior party's accorded benefit, judgment shall be entered against the
junior party absent a showing of good cause.
(b) Other substantive motions. The Board may require a party to list
the motions it intends to file, including sufficient detail to place the
Board and the opponent on notice of the precise relief sought.
(c) Filing and service. The Board will set the times for filing and
serving statements required under this section.
Sec.41.205 Settlement agreements.
(a) Constructive notice; time for filing. Pursuant to 35 U.S.C.
135(c), an agreement or understanding, including collateral agreements
referred to therein, made in connection with or in contemplation of the
termination of an interference must be filed prior to the termination of
the interference between the parties to the agreement. After a final
decision is entered by the Board, an interference is considered
terminated when no appeal (35 U.S.C. 141) or other review (35 U.S.C.
146) has been or can be taken or had. If an appeal to the U.S. Court of
Appeals for the Federal Circuit (under 35 U.S.C. 141) or a civil action
(under 35 U.S.C. 146) has been filed the interference is considered
terminated when the appeal or civil action is terminated. A civil action
is terminated when the time to appeal the judgment expires. An appeal to
the U.S. Court of Appeals for the Federal Circuit, whether from a
decision of the Board or a judgment in a civil action, is terminated
when the mandate is issued by the Court.
(b) Untimely filing. The Chief Administrative Patent Judge may
permit the filing of an agreement under paragraph (a) of this section up
to six months after termination upon petition and a showing of good
cause for the failure to file prior to termination.
(c) Request to keep separate. Any party to an agreement under
paragraph (a) of this section may request that the agreement be kept
separate from the interference file. The request must be filed with or
promptly after the agreement is filed.
(d) Access to agreement. Any person, other than a representative of
a Government agency, may have access to an agreement kept separate under
paragraph (c) of this section only upon petition and on a showing of
good cause. The agreement will be available to Government agencies on
written request.
Sec.41.206 Common interests in the invention.
An administrative patent judge may decline to declare, or if already
declared the Board may issue judgment in, an interference between an
application and another application or patent that are commonly owned.
Sec.41.207 Presumptions.
(a) Priority--(1) Order of invention. Parties are presumed to have
invented interfering subject matter in the order of the dates of their
accorded benefit for each count. If two parties are accorded the benefit
of the same earliest date of constructive reduction to practice, then
neither party is entitled to a presumption of priority with respect to
the other such party.
(2) Evidentiary standard. Priority may be proved by a preponderance
of the evidence except a party must prove priority by clear and
convincing evidence if the date of its earliest constructive reduction
to practice is after the issue date of an involved patent or the
publication date under 35 U.S.C. 122(b) of an involved application or
patent.
(b) Claim correspondence. (1) For the purposes of determining
priority and derivation, all claims of a party corresponding to the
count are presumed to stand or fall together. To challenge this
presumption, a party must file a timely substantive motion to have a
corresponding claim designated as not
[[Page 493]]
corresponding to the count. No presumption based on claim correspondence
regarding the grouping of claims exists for other grounds of
unpatentability.
(2) A claim corresponds to a count if the subject matter of the
count, treated as prior art to the claim, would have anticipated or
rendered obvious the subject matter of the claim.
(c) Cross-applicability of prior art. When a motion for judgment of
unpatentability against an opponent's claim on the basis of prior art is
granted, each of the movant's claims corresponding to the same count as
the opponent's claim will be presumed to be unpatentable in view of the
same prior art unless the movant in its motion rebuts this presumption.
Sec.41.208 Content of substantive and responsive motions.
The general requirements for motions in contested cases are stated
at Sec.41.121(c).
(a) In an interference, substantive motions must:
(1) Raise a threshold issue,
(2) Seek to change the scope of the definition of the interfering
subject matter or the correspondence of claims to the count,
(3) Seek to change the benefit accorded for the count, or
(4) Seek judgment on derivation or on priority.
(b) To be sufficient, a motion must provide a showing, supported
with appropriate evidence, such that, if unrebutted, it would justify
the relief sought. The burden of proof is on the movant.
(c) Showing patentability. (1) A party moving to add or amend a
claim must show the claim is patentable.
(2) A party moving to add or amend a count must show the count is
patentable over prior art.
PART 42_TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD
--Table of Contents
Subpart A_Trial Practice and Procedure
General
Sec.
42.1 Policy.
42.2 Definitions.
42.3 Jurisdiction.
42.4 Notice of trial.
42.5 Conduct of the proceeding.
42.6 Filing of documents, including exhibits; service.
42.7 Management of the record.
42.8 Mandatory notices.
42.9 Action by patent owner.
42.10 Counsel.
42.11 Duty of candor; signing papers; representations to the Board;
sanctions.
42.12 Sanctions.
42.13 Citation of authority.
42.14 Public availability.
Fees
42.15 Fees.
Petition and Motion Practice
42.20 Generally.
42.21 Notice of basis for relief.
42.22 Content of petitions and motions.
42.23 Oppositions, replies, and sur-replies.
42.24 Type-volume or page limits for petitions, motions, oppositions,
replies, and sur-replies.
42.25 Default filing times.
Testimony and Production
42.51 Discovery.
42.52 Compelling testimony and production.
42.53 Taking testimony.
42.54 Protective order.
42.55 Confidential information in a petition.
42.56 Expungement of confidential information.
42.57 Privilege for patent practitioners.
42.61 Admissibility.
42.62 Applicability of the Federal rules of evidence.
42.63 Form of evidence.
42.64 Objection; motion to exclude.
42.65 Expert testimony; tests and data.
Oral Argument, Decision, and Settlement
42.70 Oral argument.
42.71 Decision on petitions or motions.
42.72 Termination of trial.
42.73 Judgment.
42.74 Settlement.
Certificate
42.80 Certificate.
Subpart B_Inter Partes Review
General
42.100 Procedure; pendency.
42.101 Who may petition for inter partes review.
42.102 Time for filing.
42.103 Inter partes review fee.
42.104 Content of petition.
42.105 Service of petition.
[[Page 494]]
42.106 Filing date.
42.107 Preliminary response to petition.
Instituting Inter Partes Review
42.108 Institution of inter partes review.
After Institution of Inter Partes Review
42.120 Patent owner response.
42.121 Amendment of the patent.
42.122 Multiple proceedings and Joinder.
42.123 Filing of supplemental information.
Subpart C_Post-Grant Review
General.
42.200 Procedure; pendency.
42.201 Who may petition for a post-grant review.
42.202 Time for filing.
42.203 Post-grant review fee.
42.204 Content of petition.
42.205 Service of petition.
42.206 Filing date.
42.207 Preliminary response to petition.
Instituting Post-Grant Review
42.208 Institution of post-grant review.
After Institution of Post-Grant Review
42.220 Patent owner response.
42.221 Amendment of the patent.
42.222 Multiple proceedings and Joinder.
42.223 Filing of supplemental information.
42.224 Discovery.
Subpart D_Transitional Program for Covered Business Method Patents
42.300 Procedure; pendency.
42.301 Definitions.
42.302 Who may petition for a covered business method patent review.
42.303 Time for filing.
42.304 Content of petition.
Subpart E_Derivation
42.400 Procedure; pendency.
42.401 Definitions.
42.402 Who may file a petition for a derivation proceeding.
42.403 Time for filing.
42.404 Derivation fee.
42.405 Content of petition.
42.406 Service of petition.
42.407 Filing date.
Instituting Derivation Proceeding
42.408 Institution of derivation proceeding.
After Institution of Derivation Proceeding
42.409 Settlement agreements.
42.410 Arbitration.
42.411 Common interests in the invention.
42.412 Public availability of Board records.
Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316,
321-326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 Stat.
2456.
Source: 77 FR 48669, Aug. 14, 2012, unless otherwise noted.
Subpart A_Trial Practice and Procedure
General
Sec.42.1 Policy.
(a) Scope. Part 42 governs proceedings before the Patent Trial and
Appeal Board. Sections 1.4, 1.7, 1.14, 1.16, 1.22, 1.23, 1.25, 1.26,
1.32, 1.34, and 1.36 of this chapter also apply to proceedings before
the Board, as do other sections of part 1 of this chapter that are
incorporated by reference into this part.
(b) Construction. This part shall be construed to secure the just,
speedy, and inexpensive resolution of every proceeding.
(c) Decorum. Every party must act with courtesy and decorum in all
proceedings before the Board, including in interactions with other
parties.
(d) Evidentiary standard. The default evidentiary standard is a
preponderance of the evidence.
Sec.42.2 Definitions.
The following definitions apply to this part:
Affidavit means affidavit or declaration under Sec.1.68 of this
chapter. A transcript of an ex parte deposition or a declaration under
28 U.S.C. 1746 may be used as an affidavit.
Board means the Patent Trial and Appeal Board. Board means a panel
of the Board, or a member or employee acting with the authority of the
Board, including:
(1) For petition decisions and interlocutory decisions, a Board
member or employee acting with the authority of the Board.
(2) For final written decisions under 35 U.S.C. 135(d), 318(a), and
328(a), a panel of the Board.
Business day means a day other than a Saturday, Sunday, or Federal
holiday within the District of Columbia.
Confidential information means trade secret or other confidential
research,
[[Page 495]]
development, or commercial information.
Final means final for the purpose of judicial review to the extent
available. A decision is final only if it disposes of all necessary
issues with regard to the party seeking judicial review, and does not
indicate that further action is required.
Hearing means consideration of the trial.
Involved means an application, patent, or claim that is the subject
of the proceeding.
Judgment means a final written decision by the Board, or a
termination of a proceeding.
Motion means a request for relief other than by petition.
Office means the United States Patent and Trademark Office.
Panel means at least three members of the Board.
Party means at least the petitioner and the patent owner and, in a
derivation proceeding, any applicant or assignee of the involved
application.
Petition is a request that a trial be instituted.
Petitioner means the party filing a petition requesting that a trial
be instituted.
Preliminary Proceeding begins with the filing of a petition for
instituting a trial and ends with a written decision as to whether a
trial will be instituted.
Proceeding means a trial or preliminary proceeding.
Rehearing means reconsideration.
Trial means a contested case instituted by the Board based upon a
petition. A trial begins with a written decision notifying the
petitioner and patent owner of the institution of the trial. The term
trial specifically includes a derivation proceeding under 35 U.S.C. 135;
an inter partes review under Chapter 31 of title 35, United States Code;
a post-grant review under Chapter 32 of title 35, United States Code;
and a transitional business-method review under section 18 of the Leahy-
Smith America Invents Act. Patent interferences are administered under
part 41 and not under part 42 of this title, and therefore are not
trials.
Sec.42.3 Jurisdiction.
(a) The Board may exercise exclusive jurisdiction within the Office
over every involved application and patent during the proceeding, as the
Board may order.
(b) A petition to institute a trial must be filed with the Board
consistent with any time period required by statute.
Sec.42.4 Notice of trial.
(a) Institution of trial. The Board institutes the trial on behalf
of the Director.
(b) Notice of a trial will be sent to every party to the proceeding.
The entry of the notice institutes the trial.
(c) The Board may authorize additional modes of notice, including:
(1) Sending notice to another address associated with the party, or
(2) Publishing the notice in the Official Gazette of the United
States Patent and Trademark Office or the Federal Register.
Sec.42.5 Conduct of the proceeding.
(a) The Board may determine a proper course of conduct in a
proceeding for any situation not specifically covered by this part and
may enter non-final orders to administer the proceeding.
(b) The Board may waive or suspend a requirement of parts 1, 41, and
42 and may place conditions on the waiver or suspension.
(c) Times. (1) Setting times. The Board may set times by order.
Times set by rule are default and may be modified by order. Any
modification of times will take any applicable statutory pendency goal
into account.
(2) Extension of time. A request for an extension of time must be
supported by a showing of good cause.
(3) Late action. A late action will be excused on a showing of good
cause or upon a Board decision that consideration on the merits would be
in the interests of justice.
(d) Ex parte communications. Communication regarding a specific
proceeding with a Board member defined in 35 U.S.C. 6(a) is not
permitted unless both parties have an opportunity to be involved in the
communication.
[[Page 496]]
Sec.42.6 Filing of documents, including exhibits; service.
(a) General format requirements. (1) Page size must be 8\1/2\ inch x
11 inch except in the case of exhibits that require a larger size in
order to preserve details of the original.
(2) In documents, including affidavits, created for the proceeding:
(i) Markings must be in black or must otherwise provide an
equivalent dark, high-contrast image;
(ii) 14-point, Times New Roman proportional font, with normal
spacing, must be used;
(iii) Double spacing must be used except in claim charts, headings,
tables of contents, tables of authorities, indices, signature blocks,
and certificates of service. Block quotations may be 1.5 spaced, but
must be indented from both the left and the right margins; and
(iv) Margins must be at least 2.5 centimeters (1 inch) on all sides.
(3) Incorporation by reference; combined documents. Arguments must
not be incorporated by reference from one document into another
document. Combined motions, oppositions, replies, or other combined
documents are not permitted.
(4) Signature; identification. Documents must be signed in
accordance with Sec. Sec.1.33 and 11.18(a) of this title, and should
be identified by the trial number (where known).
(b) Modes of filing. (1) Electronic filing. Unless otherwise
authorized, submissions are to be made to the Board electronically via
the Internet according to the parameters established by the Board and
published on the Web site of the Office.
(2)(i) Filing by means other than electronic filing. A document
filed by means other than electronic filing must:
(A) Be accompanied by a motion requesting acceptance of the
submission; and
(B) Identify a date of transmission where a party seeks a filing
date other than the date of receipt at the Board.
(ii) Mailed correspondence shall be sent to: Mail Stop PATENT BOARD,
Patent Trial and Appeal Board, United States Patent and Trademark
Office, PO Box 1450, Alexandria, Virginia 22313-1450.
(c) Exhibits. Each exhibit must be filed with the first document in
which it is cited except as the Board may otherwise order.
(d) Previously filed paper. A document already in the record of the
proceeding must not be filed again, not even as an exhibit or an
appendix, without express Board authorization.
(e) Service. (1) Electronic or other mode. Service may be made
electronically upon agreement of the parties. Otherwise, service may be
by Priority Mail Express[supreg] or by means at least as fast and
reliable as Priority Mail Express[supreg].
(2) Simultaneous with filing. Each document filed with the Board, if
not previously served, must be served simultaneously on each opposing
party.
(3) Counsel of record. If a party is represented by counsel of
record in the proceeding, service must be on counsel.
(4) Certificate of service. (i) Each document, other than an
exhibit, must include a certificate of service at the end of that
document. Any exhibit filed with the document may be included in the
certification for the document.
(ii) For an exhibit filed separately, a transmittal letter
incorporating the certificate of service must be filed. If more than one
exhibit is filed at one time, a single letter should be used for all of
the exhibits filed together. The letter must state the name and exhibit
number for every exhibit filed with the letter.
(iii) The certificate of service must state:
(A) The date and manner of service; and
(B) The name and address of every person served.
[77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014;
80 FR 28565, May 19, 2015]
Sec.42.7 Management of the record.
(a) The Board may expunge any paper directed to a proceeding or
filed while an application or patent is under the jurisdiction of the
Board that is not authorized under this part or in a Board order or that
is filed contrary to a Board order.
[[Page 497]]
(b) The Board may vacate or hold in abeyance any non-Board action
directed to a proceeding while an application or patent is under the
jurisdiction of the Board unless the action was authorized by the Board.
Sec.42.8 Mandatory notices.
(a) Each notice listed in paragraph (b) of this section must be
filed with the Board:
(1) By the petitioner, as part of the petition;
(2) By the patent owner, or applicant in the case of derivation,
within 21 days of service of the petition; or
(3) By either party, within 21 days of a change of the information
listed in paragraph (b) of this section stated in an earlier paper.
(b) Each of the following notices must be filed:
(1) Real party-in-interest. Identify each real party-in-interest for
the party.
(2) Related matters. Identify any other judicial or administrative
matter that would affect, or be affected by, a decision in the
proceeding.
(3) Lead and back-up counsel. If the party is represented by
counsel, then counsel must be identified.
(4) Service information. Identify (if applicable):
(i) An electronic mail address;
(ii) A postal mailing address;
(iii) A hand-delivery address, if different than the postal mailing
address;
(iv) A telephone number; and
(v) A facsimile number.
Sec.42.9 Action by patent owner.
(a) Entire interest. An owner of the entire interest in an involved
application or patent may act to the exclusion of the inventor (see
Sec.3.71 of this title).
(b) Part interest. An owner of a part interest in the subject patent
may move to act to the exclusion of an inventor or a co-owner. The
motion must show the inability or refusal of an inventor or co-owner to
prosecute the proceeding or other cause why it is in the interests of
justice to permit the owner of a part interest to act in the trial. In
granting the motion, the Board may set conditions on the actions of the
parties.
Sec.42.10 Counsel.
(a) If a party is represented by counsel, the party must designate a
lead counsel and at least one back-up counsel who can conduct business
on behalf of the lead counsel.
(b) A power of attorney must be filed with the designation of
counsel, except the patent owner should not file an additional power of
attorney if the designated counsel is already counsel of record in the
subject patent or application.
(c) The Board may recognize counsel pro hac vice during a proceeding
upon a showing of good cause, subject to the condition that lead counsel
be a registered practitioner and to any other conditions as the Board
may impose. For example, where the lead counsel is a registered
practitioner, a motion to appear pro hac vice by counsel who is not a
registered practitioner may be granted upon showing that counsel is an
experienced litigating attorney and has an established familiarity with
the subject matter at issue in the proceeding.
(d) A panel of the Board may disqualify counsel for cause after
notice and opportunity for hearing. A decision to disqualify is not
final for the purposes of judicial review until certified by the Chief
Administrative Patent Judge.
(e) Counsel may not withdraw from a proceeding before the Board
unless the Board authorizes such withdrawal.
[77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015]
Sec.42.11 Duty of candor; signing papers; representations to the
Board; sanctions.
(a) Duty of candor. Parties and individuals involved in the
proceeding have a duty of candor and good faith to the Office during the
course of a proceeding.
(b) Signature. Every petition, response, written motion, and other
paper filed in a proceeding must comply with the signature requirements
set forth in Sec.11.18(a) of this chapter. The Board may expunge any
unsigned submission unless the omission is promptly corrected after
being called to the counsel's or party's attention.
[[Page 498]]
(c) Representations to the Board. By presenting to the Board a
petition, response, written motion, or other paper--whether by signing,
filing, submitting, or later advocating it--an attorney, registered
practitioner, or unrepresented party attests to compliance with the
certification requirements under Sec.11.18(b)(2) of this chapter.
(d) Sanctions--(1) In general. If, after notice and a reasonable
opportunity to respond, the Board determines that paragraph (c) of this
section has been violated, the Board may impose an appropriate sanction
on any attorney, registered practitioner, or party that violated the
rule or is responsible for the violation.
(2) Motion for sanctions. A motion for sanctions must be made
separately from any other motion and must describe the specific conduct
that allegedly violates paragraph (c) of this section. The motion must
be authorized by the Board under Sec.42.20 prior to filing the motion.
At least 21 days prior to seeking authorization to file a motion for
sanctions, the moving party must serve the other party with the proposed
motion. A motion for sanctions must not be filed or be presented to the
Board if the challenged paper, claim, defense, contention, or denial is
withdrawn or appropriately corrected within 21 days after service of
such motion or within another time the Board sets. If warranted, the
Board may award to the prevailing party the reasonable expenses,
including attorney's fees, incurred for the motion.
(3) On the Board's initiative. On its own, the Board may order an
attorney, registered practitioner, or party to show cause why conduct
specifically described in the order has not violated paragraph (c) of
this section and why a specific sanction authorized by the Board should
not be imposed.
(4) Nature of a sanction. A sanction imposed under this rule must be
limited to what suffices to deter repetition of the conduct or
comparable conduct by others similarly situated and should be consistent
with Sec.42.12.
(5) Requirements for an order. An order imposing a sanction must
describe the sanctioned conduct and explain the basis for the sanction.
[81 FR 18765, Apr. 1, 2016]
Sec.42.12 Sanctions.
(a) The Board may impose a sanction against a party for misconduct,
including:
(1) Failure to comply with an applicable rule or order in the
proceeding;
(2) Advancing a misleading or frivolous argument or request for
relief;
(3) Misrepresentation of a fact;
(4) Engaging in dilatory tactics;
(5) Abuse of discovery;
(6) Abuse of process; or
(7) Any other improper use of the proceeding, including actions that
harass or cause unnecessary delay or an unnecessary increase in the cost
of the proceeding.
(b) Sanctions include entry of one or more of the following:
(1) An order holding facts to have been established in the
proceeding;
(2) An order expunging or precluding a party from filing a paper;
(3) An order precluding a party from presenting or contesting a
particular issue;
(4) An order precluding a party from requesting, obtaining, or
opposing discovery;
(5) An order excluding evidence;
(6) An order providing for compensatory expenses, including attorney
fees;
(7) An order requiring terminal disclaimer of patent term; or
(8) Judgment in the trial or dismissal of the petition.
Sec.42.13 Citation of authority.
(a) For any United States Supreme Court decision, citation to the
United States Reports is preferred.
(b) For any decision other than a United States Supreme Court
decision, citation to the West Reporter System is preferred.
(c) Citations to authority must include pinpoint citations whenever
a specific holding or portion of an authority is invoked.
(d) Non-binding authority should be used sparingly. If the authority
is not an authority of the Office and is not reproduced in the United
States Reports or the West Reporter System, a copy of the authority
should be provided.
[[Page 499]]
Sec.42.14 Public availability.
The record of a proceeding, including documents and things, shall be
made available to the public, except as otherwise ordered. A party
intending a document or thing to be sealed shall file a motion to seal
concurrent with the filing of the document or thing to be sealed. The
document or thing shall be provisionally sealed on receipt of the motion
and remain so pending the outcome of the decision on the motion.
Fees
Sec.42.15 Fees.
(a) On filing a petition for inter partes review of a patent,
payment of the following fees are due:
(1) Inter Partes Review request fee: $19,000.00
(2) Inter Partes Review Post-Institution fee: $22,500.00
(3) In addition to the Inter Partes Review request fee, for
requesting a review of each claim in excess of 20: $375.00
(4) In addition to the Inter Partes Post-Institution request fee,
for requesting a review of each claim in excess of 20: $750.00
(b) On filing a petition for post-grant review or covered business
method patent review of a patent, payment of the following fees are due:
(1) Post-Grant or Covered Business Method Patent Review request fee:
$20,000.00
(2) Post-Grant or Covered Business Method Patent Review Post-
Institution fee: $27,500.00
(3) In addition to the Post-Grant or Covered Business Method Patent
Review request fee, for requesting a review of each claim in excess of
20: $475.00
(4) In addition to the Post-Grant or Covered Business Method Patent
Review Post-Institution fee, for requesting a review of each claim in
excess of 20: $1,050.00
(c) On the filing of a petition for a derivation proceeding, payment
of the following fee is due:
(1) Derivation petition fee: $420.00.
(2) [Reserved]
(d) Any request requiring payment of a fee under this part,
including a written request to make a settlement agreement available:
$420.00.
(e) Fee for non-registered practitioners to appear pro hac vice
before the Patent Trial and Appeal Board: $250.00.
[85 FR 46993, Aug. 3, 2020]
Petition and Motion Practice
Sec.42.20 Generally.
(a) Relief. Relief, other than a petition requesting the institution
of a trial, must be requested in the form of a motion.
(b) Prior authorization. A motion will not be entered without Board
authorization. Authorization may be provided in an order of general
applicability or during the proceeding.
(c) Burden of proof. The moving party has the burden of proof to
establish that it is entitled to the requested relief.
(d) Briefing. The Board may order briefing on any issue involved in
the trial.
Sec.42.21 Notice of basis for relief.
(a) Notice of request for relief. The Board may require a party to
file a notice stating the relief it requests and the basis for its
entitlement to relief. A notice must include sufficient detail to place
the Board and each opponent on notice of the precise relief requested. A
notice is not evidence except as an admission by a party-opponent.
(b) Filing and service. The Board may set the times and conditions
for filing and serving notices required under this section. The Board
may provide for the notice filed with the Board to be maintained in
confidence for a limited time.
(c) Effect. If a notice under paragraph (a) of this section is
required:
(1) A failure to state a sufficient basis for relief may result in a
denial of the relief requested;
(2) A party will be limited to filing motions consistent with the
notice; and
(3) Ambiguities in the notice will be construed against the party.
(d) Correction. A party may move to correct its notice. The motion
should be filed promptly after the party becomes aware of the basis for
the correction. A correction filed after the time
[[Page 500]]
set for filing notices will only be entered if entry would serve the
interests of justice.
Sec.42.22 Content of petitions and motions.
(a) Each petition or motion must be filed as a separate paper and
must include:
(1) A statement of the precise relief requested; and
(2) A full statement of the reasons for the relief requested,
including a detailed explanation of the significance of the evidence
including material facts, and the governing law, rules, and precedent.
(b) Relief requested. Where a rule in part 1 of this title
ordinarily governs the relief sought, the petition or motion must make
any showings required under that rule in addition to any showings
required in this part.
(c) Statement of material facts. Each petition or motion may include
a statement of material fact. Each material fact preferably shall be set
forth as a separately numbered sentence with specific citations to the
portions of the record that support the fact.
(d) The Board may order additional showings or explanations as a
condition for authorizing a motion (see Sec.42.20(b)).
Sec.42.23 Oppositions, replies, and sur-replies.
(a) Oppositions, replies, and sur-replies must comply with the
content requirements for motions and, if the paper to which the
opposition, reply, or sur-reply is responding contains a statement of
material fact, must include a listing of facts that are admitted,
denied, or cannot be admitted or denied. Any material fact not
specifically denied may be considered admitted.
(b) All arguments for the relief requested in a motion must be made
in the motion. A reply may only respond to arguments raised in the
corresponding opposition, patent owner preliminary response, patent
owner response, or decision on institution. A sur-reply may only respond
to arguments raised in the corresponding reply and may not be
accompanied by new evidence other than deposition transcripts of the
cross-examination of any reply witness.
[85 FR 79128, Dec. 9, 2020]
Sec.42.24 Type-volume or page limits for petitions, motions,
oppositions, replies, and sur-replies.
(a) Petitions and motions. (1) The following word counts or page
limits for petitions and motions apply and include any statement of
material facts to be admitted or denied in support of the petition or
motion. The word count or page limit does not include a table of
contents, a table of authorities, mandatory notices under Sec.42.8, a
certificate of service or word count, or appendix of exhibits or claim
listing.
(i) Petition requesting inter partes review: 14,000 words.
(ii) Petition requesting post-grant review: 18,700 words.
(iii) Petition requesting covered business method patent review:
18,700 words.
(iv) Petition requesting derivation proceeding: 14,000 words.
(v) Motions (excluding motions to amend): 15 pages.
(vi) Motions to Amend: 25 pages.
(2) Petitions to institute a trial must comply with the stated word
counts but may be accompanied by a motion to waive the word counts. The
petitioner must show in the motion how a waiver of the word counts is in
the interests of justice and must append a copy of proposed petition
exceeding the word count to the motion. If the motion is not granted,
the proposed petition exceeding the word count may be expunged or
returned. Any other motion to waive word counts or page limits must be
granted in advance of filing a motion, opposition, or reply for which
the waiver is necessary.
(b) Patent owner responses and oppositions. The word counts or page
limits set forth in this paragraph (b) do not include a listing of facts
which are admitted, denied, or cannot be admitted or denied.
(1) The word counts for a patent owner preliminary response to
petition are the same as the word counts for the petition.
(2) The word counts for a patent owner response to petition are the
[[Page 501]]
same as the word counts for the petition.
(3) The page limits for oppositions are the same as those for
corresponding motions.
(c) Replies and sur-replies. The following word counts or page
limits for replies and sur-replies apply and include any statement of
facts in support of the reply. The word counts or page limits do not
include a table of contents; a table of authorities; a listing of facts
that are admitted, denied, or cannot be admitted or denied; a
certificate of service or word count; or an appendix of exhibits.
(1) Replies to patent owner responses to petitions: 5,600 words.
(2) Replies to oppositions (excluding replies to oppositions to
motions to amend): 5 pages.
(3) Replies to oppositions to motions to amend: 12 pages.
(4) Sur-replies to replies to patent owner responses to petitions:
5,600 words.
(d) Certification. Any paper whose length is specified by type-
volume limits must include a certification stating the number of words
in the paper. A party may rely on the word count of the word-processing
system used to prepare the paper.
[81 FR 18765, Apr. 1, 2016, as amended at 81 FR 24703, Apr. 27, 2016; 85
FR 79128, Dec. 9, 2020]
Sec.42.25 Default filing times.
(a) A motion may only be filed according to a schedule set by the
Board. The default times for acting are:
(1) An opposition is due one month after service of the motion; and
(2) A reply is due one month after service of the opposition.
(b) A party should seek relief promptly after the need for relief is
identified. Delay in seeking relief may justify a denial of relief
sought.
Testimony and Production
Sec.42.51 Discovery.
(a) Mandatory initial disclosures.
(1) With agreement. Parties may agree to mandatory discovery
requiring the initial disclosures set forth in the Office Patent Trial
Practice Guide.
(i) The parties must submit any agreement reached on initial
disclosures by no later than the filing of the patent owner preliminary
response or the expiration of the time period for filing such a
response. The initial disclosures of the parties shall be filed as
exhibits.
(ii) Upon the institution of a trial, parties may automatically take
discovery of the information identified in the initial disclosures.
(2) Without agreement. Where the parties fail to agree to the
mandatory discovery set forth in paragraph (a)(1), a party may seek such
discovery by motion.
(b) Limited discovery. A party is not entitled to discovery except
as provided in paragraph (a) of this section, or as otherwise authorized
in this subpart.
(1) Routine discovery. Except as the Board may otherwise order:
(i) Unless previously served or otherwise by agreement of the
parties, any exhibit cited in a paper or in testimony must be served
with the citing paper or testimony.
(ii) Cross examination of affidavit testimony prepared for the
proceeding is authorized within such time period as the Board may set.
(iii) Unless previously served, a party must serve relevant
information that is inconsistent with a position advanced by the party
during the proceeding concurrent with the filing of the documents or
things that contains the inconsistency. This requirement does not make
discoverable anything otherwise protected by legally recognized
privileges such as attorney-client or attorney work product. This
requirement extends to inventors, corporate officers, and persons
involved in the preparation or filing of the documents or things.
(2) Additional discovery. (i) The parties may agree to additional
discovery between themselves. Where the parties fail to agree, a party
may move for additional discovery. The moving party must show that such
additional discovery is in the interests of justice, except in post-
grant reviews where additional discovery is limited to evidence directly
related to factual assertions advanced by either party in the proceeding
(see Sec.42.224). The Board may
[[Page 502]]
specify conditions for such additional discovery.
(ii) When appropriate, a party may obtain production of documents
and things during cross examination of an opponent's witness or during
authorized compelled testimony under Sec.42.52.
(c) Production of documents. Except as otherwise ordered by the
Board, a party producing documents and things shall either provide
copies to the opposing party or make the documents and things available
for inspection and copying at a reasonable time and location in the
United States.
[77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015]
Sec.42.52 Compelling testimony and production.
(a) Authorization required. A party seeking to compel testimony or
production of documents or things must file a motion for authorization.
The motion must describe the general relevance of the testimony,
document, or thing, and must:
(1) In the case of testimony, identify the witness by name or title;
and
(2) In the case of a document or thing, the general nature of the
document or thing.
(b) Outside the United States. For testimony or production sought
outside the United States, the motion must also:
(1) In the case of testimony. (i) Identify the foreign country and
explain why the party believes the witness can be compelled to testify
in the foreign country, including a description of the procedures that
will be used to compel the testimony in the foreign country and an
estimate of the time it is expected to take to obtain the testimony; and
(ii) Demonstrate that the party has made reasonable efforts to
secure the agreement of the witness to testify in the United States but
has been unsuccessful in obtaining the agreement, even though the party
has offered to pay the travel expenses of the witness to testify in the
United States.
(2) In the case of production of a document or thing. (i) Identify
the foreign country and explain why the party believes production of the
document or thing can be compelled in the foreign country, including a
description of the procedures that will be used to compel production of
the document or thing in the foreign country and an estimate of the time
it is expected to take to obtain production of the document or thing;
and
(ii) Demonstrate that the party has made reasonable efforts to
obtain the agreement of the individual or entity having possession,
custody, or control of the document or thing to produce the document or
thing in the United States but has been unsuccessful in obtaining that
agreement, even though the party has offered to pay the expenses of
producing the document or thing in the United States.
Sec.42.53 Taking testimony.
(a) Form. Uncompelled direct testimony must be submitted in the form
of an affidavit. All other testimony, including testimony compelled
under 35 U.S.C. 24, must be in the form of a deposition transcript.
Parties may agree to video-recorded testimony, but may not submit such
testimony without prior authorization of the Board. In addition, the
Board may authorize or require live or video-recorded testimony.
(b) Time and location. (1) Uncompelled direct testimony may be taken
at any time to support a petition, motion, opposition, or reply;
otherwise, testimony may only be taken during a testimony period set by
the Board.
(2) Except as the Board otherwise orders, during the testimony
period, deposition testimony may be taken at any reasonable time and
location within the United States before any disinterested official
authorized to administer oaths at that location.
(3) Uncompelled deposition testimony outside the United States may
only be taken upon agreement of the parties or as the Board specifically
directs.
(c) Duration. (1) Unless stipulated by the parties or ordered by the
Board, direct examination, cross-examination, and redirect examination
for compelled deposition testimony shall be subject to the following
time limits: Seven hours for direct examination, four hours for cross-
examination, and two hours for redirect examination.
[[Page 503]]
(2) Unless stipulated by the parties or ordered by the Board, cross-
examination, redirect examination, and re-cross examination for
uncompelled direct testimony shall be subject to the follow time limits:
Seven hours for cross-examination, four hours for redirect examination,
and two hours for re-cross examination.
(d) Notice of deposition. (1) Prior to the taking of deposition
testimony, all parties to the proceeding must agree on the time and
place for taking testimony. If the parties cannot agree, the party
seeking the testimony must initiate a conference with the Board to set a
time and place.
(2) Cross-examination should ordinarily take place after any
supplemental evidence relating to the direct testimony has been filed
and more than a week before the filing date for any paper in which the
cross-examination testimony is expected to be used. A party requesting
cross-examination testimony of more than one witness may choose the
order in which the witnesses are to be cross-examined.
(3) In the case of direct deposition testimony, at least three
business days prior to the conference in paragraph (d)(1) of this
section, or if there is no conference, at least ten days prior to the
deposition, the party seeking the direct testimony must serve:
(i) A list and copy of each document under the party's control and
on which the party intends to rely; and
(ii) A list of, and proffer of reasonable access to, anything other
than a document under the party's control and on which the party intends
to rely.
(4) The party seeking the deposition must file a notice of the
deposition at least ten business days before a deposition.
(5) Scope and content--(i) For direct deposition testimony, the
notice limits the scope of the testimony and must list:
(A) The time and place of the deposition;
(B) The name and address of the witness;
(C) A list of the exhibits to be relied upon during the deposition;
and
(D) A general description of the scope and nature of the testimony
to be elicited.
(ii) For cross-examination testimony, the scope of the examination
is limited to the scope of the direct testimony.
(iii) The notice must list the time and place of the deposition.
(iv) Where an additional party seeks to take direct testimony of a
third party witness at the time and place noticed in paragraph (d)(5) of
this section, the additional party must provide a counter notice that
lists the exhibits to be relied upon in the deposition and a general
description of the scope and nature of the testimony to be elicited.
(6) Motion to quash--Objection to a defect in the notice is waived
unless the objecting party promptly seeks authorization to file a motion
to quash.
(e) Deposition in a foreign language. If an interpreter will be used
during the deposition, the party calling the witness must initiate a
conference with the Board at least five business days before the
deposition.
(f) Manner of taking deposition testimony. (1) Before giving
deposition testimony, each witness shall be duly sworn according to law
by the officer before whom the deposition is to be taken. The officer
must be authorized to take testimony under 35 U.S.C. 23.
(2) The testimony shall be taken with any questions and answers
recorded in their regular order by the officer, or by some other
disinterested person in the presence of the officer, unless the presence
of the officer is waived on the record by agreement of all parties.
(3) Any exhibits used during the deposition must be numbered as
required by Sec.42.63(c), and must, if not previously served, be
served at the deposition. Exhibits objected to shall be accepted pending
a decision on the objection.
(4) All objections made at the time of the deposition to the
qualifications of the officer taking the deposition, the manner of
taking it, the evidence presented, the conduct of any party, and any
other objection to the deposition shall be noted on the record by the
officer.
(5) When the testimony has been transcribed, the witness shall read
and sign (in the form of an affidavit) a transcript of the deposition
unless:
(i) The parties otherwise agree in writing;
[[Page 504]]
(ii) The parties waive reading and signature by the witness on the
record at the deposition; or
(iii) The witness refuses to read or sign the transcript of the
deposition.
(6) The officer shall prepare a certified transcript by attaching a
certificate in the form of an affidavit signed and sealed by the officer
to the transcript of the deposition. Unless the parties waive any of the
following requirements, in which case the certificate shall so state,
the certificate must state:
(i) The witness was duly sworn by the officer before commencement of
testimony by the witness;
(ii) The transcript is a true record of the testimony given by the
witness;
(iii) The name of the person who recorded the testimony, and if the
officer did not record it, whether the testimony was recorded in the
presence of the officer;
(iv) The presence or absence of any opponent;
(v) The place where the deposition was taken and the day and hour
when the deposition began and ended;
(vi) The officer has no disqualifying interest, personal or
financial, in a party; and
(vii) If a witness refuses to read or sign the transcript, the
circumstances under which the witness refused.
(7) Except where the parties agree otherwise, the proponent of the
testimony must arrange for providing a copy of the transcript to all
other parties. The testimony must be filed as an exhibit.
(8) Any objection to the content, form, or manner of taking the
deposition, including the qualifications of the officer, is waived
unless made on the record during the deposition and preserved in a
timely filed motion to exclude.
(g) Costs. Except as the Board may order or the parties may agree in
writing, the proponent of the direct testimony shall bear all costs
associated with the testimony, including the reasonable costs associated
with making the witness available for the cross-examination.
[77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015]
Sec.42.54 Protective order.
(a) A party may file a motion to seal where the motion to seal
contains a proposed protective order, such as the default protective
order set forth in the Office Patent Trial Practice Guide. The motion
must include a certification that the moving party has in good faith
conferred or attempted to confer with other affected parties in an
effort to resolve the dispute. The Board may, for good cause, issue an
order to protect a party or person from disclosing confidential
information, including, but not limited to, one or more of the
following:
(1) Forbidding the disclosure or discovery;
(2) Specifying terms, including time and place, for the disclosure
or discovery;
(3) Prescribing a discovery method other than the one selected by
the party seeking discovery;
(4) Forbidding inquiry into certain matters, or limiting the scope
of disclosure or discovery to certain matters;
(5) Designating the persons who may be present while the discovery
is conducted;
(6) Requiring that a deposition be sealed and opened only by order
of the Board;
(7) Requiring that a trade secret or other confidential research,
development, or commercial information not be revealed or be revealed
only in a specified way; and
(8) Requiring that the parties simultaneously file specified
documents or information in sealed envelopes, to be opened as the Board
directs.
(b) [Reserved]
Sec.42.55 Confidential information in a petition.
A petitioner filing confidential information with a petition may,
concurrent with the filing of the petition, file a motion to seal with a
proposed protective order as to the confidential information. The
institution of the requested trial will constitute a grant of the motion
to seal unless otherwise ordered by the Board.
(a) Default protective order. Where a motion to seal requests entry
of the default protective order set forth in the
[[Page 505]]
Office Patent Trial Practice Guide, the petitioner must file, but need
not serve, the confidential information under seal. The patent owner may
only access the filed sealed information prior to the institution of the
trial by agreeing to the terms of the default protective order or
obtaining relief from the Board.
(b) Protective orders other than default protective order. Where a
motion to seal requests entry of a protective order other than the
default protective order, the petitioner must file, but need not serve,
the confidential information under seal. The patent owner may only
access the sealed confidential information prior to the institution of
the trial by:
(1) agreeing to the terms of the protective order requested by the
petitioner;
(2) agreeing to the terms of a protective order that the parties
file jointly; or
(3) obtaining entry of a protective order (e.g., the default
protective order).
Sec.42.56 Expungement of confidential information.
After denial of a petition to institute a trial or after final
judgment in a trial, a party may file a motion to expunge confidential
information from the record.
Sec.42.57 Privilege for patent practitioners.
(a) Privileged communications. A communication between a client and
a USPTO patent practitioner or a foreign jurisdiction patent
practitioner that is reasonably necessary and incident to the scope of
the practitioner's authority shall receive the same protections of
privilege under Federal law as if that communication were between a
client and an attorney authorized to practice in the United States,
including all limitations and exceptions.
(b) Definitions. The term ``USPTO patent practitioner'' means a
person who has fulfilled the requirements to practice patent matters
before the United States Patent and Trademark Office under Sec.11.7 of
this chapter. ``Foreign jurisdiction patent practitioner'' means a
person who is authorized to provide legal advice on patent matters in a
foreign jurisdiction, provided that the jurisdiction establishes
professional qualifications and the practitioner satisfies them. For
foreign jurisdiction practitioners, this rule applies regardless of
whether that jurisdiction provides privilege or an equivalent under its
laws.
(c) Scope of coverage. USPTO patent practitioners and foreign
jurisdiction patent practitioners shall receive the same treatment as
attorneys on all issues affecting privilege or waiver, such as
communications with employees or assistants of the practitioner and
communications between multiple practitioners.
[82 FR 51575, Nov. 7, 2017]
Sec.42.61 Admissibility.
(a) Evidence that is not taken, sought, or filed in accordance with
this subpart is not admissible.
(b) Records of the Office. Certification is not necessary as a
condition to admissibility when the evidence to be submitted is a record
of the Office to which all parties have access.
(c) Specification and drawings. A specification or drawing of a
United States patent application or patent is admissible as evidence
only to prove what the specification or drawing describes. If there is
data in the specification or a drawing upon which a party intends to
rely to prove the truth of the data, an affidavit by an individual
having first-hand knowledge of how the data was generated must be filed.
Sec.42.62 Applicability of the Federal rules of evidence.
(a) Generally. Except as otherwise provided in this subpart, the
Federal Rules of Evidence shall apply to a proceeding.
(b) Exclusions. Those portions of the Federal Rules of Evidence
relating to criminal proceedings, juries, and other matters not relevant
to proceedings under this subpart shall not apply.
(c) Modifications in terminology. Unless otherwise clear from
context, the following terms of the Federal Rules of Evidence shall be
construed as indicated:
[[Page 506]]
Appellate court means United States Court of Appeals for the Federal
Circuit.
Civil action, civil proceeding, and action mean a proceeding before
the Board under part 42.
Courts of the United States, U.S. Magistrate, court, trial court,
trier of fact, and judge mean Board.
Hearing means, as defined in Federal Rule of Evidence 804(a)(5), the
time for taking testimony.
Judicial notice means official notice.
Trial or hearing in Federal Rule of Evidence 807 means the time for
taking testimony.
(d) In determining foreign law, the Board may consider any relevant
material or source, including testimony, whether or not submitted by a
party or admissible under the Federal Rules of Evidence.
Sec.42.63 Form of evidence.
(a) Exhibits required. Evidence consists of affidavits, transcripts
of depositions, documents, and things. All evidence must be filed in the
form of an exhibit.
(b) Translation required. When a party relies on a document or is
required to produce a document in a language other than English, a
translation of the document into English and an affidavit attesting to
the accuracy of the translation must be filed with the document.
(c) Exhibit numbering. Each party's exhibits must be uniquely
numbered sequentially in a range the Board specifies. For the
petitioner, the range is 1001-1999, and for the patent owner, the range
is 2001-2999.
(d) Exhibit format. An exhibit must conform with the requirements
for papers in Sec.42.6 and the requirements of this paragraph.
(1) Each exhibit must have an exhibit label.
(i) An exhibit filed with the petition must include the petitioner's
name followed by a unique exhibit number.
(ii) For exhibits not filed with the petition, the exhibit label
must include the party's name followed by a unique exhibit number, the
names of the parties, and the trial number.
(2) When the exhibit is a paper:
(i) Each page must be uniquely numbered in sequence; and
(ii) The exhibit label must be affixed to the lower right corner of
the first page of the exhibit without obscuring information on the first
page or, if obscuring is unavoidable, affixed to a duplicate first page.
(e) Exhibit list. Each party must maintain an exhibit list with the
exhibit number and a brief description of each exhibit. If the exhibit
is not filed, the exhibit list should note that fact. A current exhibit
list must be served whenever evidence is served and the current exhibit
list must be filed when filing exhibits.
Sec.42.64 Objection; motion to exclude.
(a) Deposition evidence. An objection to the admissibility of
deposition evidence must be made during the deposition. Evidence to cure
the objection must be provided during the deposition, unless the parties
to the deposition stipulate otherwise on the deposition record.
(b) Other evidence. For evidence other than deposition evidence:
(1) Objection. Any objection to evidence submitted during a
preliminary proceeding must be filed within ten business days of the
institution of the trial. Once a trial has been instituted, any
objection must be filed within five business days of service of evidence
to which the objection is directed. The objection must identify the
grounds for the objection with sufficient particularity to allow
correction in the form of supplemental evidence.
(2) Supplemental evidence. The party relying on evidence to which an
objection is timely served may respond to the objection by serving
supplemental evidence within ten business days of service of the
objection.
(c) Motion to exclude. A motion to exclude evidence must be filed to
preserve any objection. The motion must identify the objections in the
record in order and must explain the objections. The motion may be filed
without prior authorization from the Board.
[77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015]
[[Page 507]]
Sec.42.65 Expert testimony; tests and data.
(a) Expert testimony that does not disclose the underlying facts or
data on which the opinion is based is entitled to little or no weight.
Testimony on United States patent law or patent examination practice
will not be admitted.
(b) If a party relies on a technical test or data from such a test,
the party must provide an affidavit explaining:
(1) Why the test or data is being used;
(2) How the test was performed and the data was generated;
(3) How the data is used to determine a value;
(4) How the test is regarded in the relevant art; and
(5) Any other information necessary for the Board to evaluate the
test and data.
Oral Argument, Decision, and Settlement
Sec.42.70 Oral argument.
(a) Request for oral argument. A party may request oral argument on
an issue raised in a paper at a time set by the Board. The request must
be filed as a separate paper and must specify the issues to be argued.
(b) Demonstrative exhibits must be served at least seven business
days before the oral argument and filed no later than the time of the
oral argument.
[77 FR 48669, Aug. 14, 2012, as amended at 81 FR 18765, Apr. 1, 2016]
Sec.42.71 Decision on petitions or motions.
(a) Order of consideration. The Board may take up petitions or
motions for decisions in any order, may grant, deny, or dismiss any
petition or motion, and may enter any appropriate order.
(b) Interlocutory decisions. A decision on a motion without a
judgment is not final for the purposes of judicial review. If a decision
is not a panel decision, the party may request that a panel rehear the
decision. When rehearing a non-panel decision, a panel will review the
decision for an abuse of discretion. A panel decision on an issue will
govern the trial.
(c) Petition decisions. A decision by the Board on whether to
institute a trial is final and nonappealable. A party may request
rehearing on a decision by the Board on whether to institute a trial
pursuant to paragraph (d) of this section. When rehearing a decision on
petition, a panel will review the decision for an abuse of discretion.
(d) Rehearing. A party dissatisfied with a decision may file a
single request for rehearing without prior authorization from the Board.
The burden of showing a decision should be modified lies with the party
challenging the decision. The request must specifically identify all
matters the party believes the Board misapprehended or overlooked, and
the place where each matter was previously addressed in a motion, an
opposition, a reply, or a sur-reply. A request for rehearing does not
toll times for taking action. Any request must be filed:
(1) Within 14 days of the entry of a non-final decision or a
decision to institute a trial as to at least one ground of
unpatentability asserted in the petition; or
(2) Within 30 days of the entry of a final decision or a decision
not to institute a trial.
[77 FR 48669, Aug. 14, 2012, as amended at 80 FR 28565, May 19, 2015; 85
FR 79129, Dec. 9, 2020]
Sec.42.72 Termination of trial.
The Board may terminate a trial without rendering a final written
decision, where appropriate, including where the trial is consolidated
with another proceeding or pursuant to a joint request under 35 U.S.C.
317(a) or 327(a).
Sec.42.73 Judgment.
(a) A judgment, except in the case of a termination, disposes of all
issues that were, or by motion reasonably could have been, raised and
decided.
(b) Request for adverse judgment. A party may request judgment
against itself at any time during a proceeding. Actions construed to be
a request for adverse judgment include:
(1) Disclaimer of the involved application or patent;
(2) Cancellation or disclaimer of a claim such that the party has no
remaining claim in the trial;
[[Page 508]]
(3) Concession of unpatentability or derivation of the contested
subject matter; and
(4) Abandonment of the contest.
(c) Recommendation. The judgment may include a recommendation for
further action by an examiner or by the Director.
(d) Estoppel. (1) Petitioner other than in derivation proceeding. A
petitioner, or the real party in interest or privy of the petitioner, is
estopped in the Office from requesting or maintaining a proceeding with
respect to a claim for which it has obtained a final written decision on
patentability in an inter partes review, post-grant review, or a covered
business method patent review, on any ground that the petitioner raised
or reasonably could have raised during the trial, except that estoppel
shall not apply to a petitioner, or to the real party in interest or
privy of the petitioner who has settled under 35 U.S.C. 317 or 327.
(2) In a derivation, the losing party who could have properly moved
for relief on an issue, but did not so move, may not take action in the
Office after the judgment that is inconsistent with that party's failure
to move, except that a losing party shall not be estopped with respect
to any contested subject matter for which that party was awarded a
favorable judgment.
(3) Patent applicant or owner. A patent applicant or owner is
precluded from taking action inconsistent with the adverse judgment,
including obtaining in any patent:
(i) A claim that is not patentably distinct from a finally refused
or canceled claim; or
(ii) An amendment of a specification or of a drawing that was denied
during the trial proceeding, but this provision does not apply to an
application or patent that has a different written description.
Sec.42.74 Settlement.
(a) Board role. The parties may agree to settle any issue in a
proceeding, but the Board is not a party to the settlement and may
independently determine any question of jurisdiction, patentability, or
Office practice.
(b) Agreements in writing. Any agreement or understanding between
the parties made in connection with, or in contemplation of, the
termination of a proceeding shall be in writing and a true copy shall be
filed with the Board before the termination of the trial.
(c) Request to keep separate. A party to a settlement may request
that the settlement be treated as business confidential information and
be kept separate from the files of an involved patent or application.
The request must be filed with the settlement. If a timely request is
filed, the settlement shall only be available:
(1) To a Government agency on written request to the Board; or
(2) To any other person upon written request to the Board to make
the settlement agreement available, along with the fee specified in
Sec.42.15(d) and on a showing of good cause.
Certificate
Sec.42.80 Certificate.
After the Board issues a final written decision in an inter partes
review, post-grant review, or covered business method patent review and
the time for appeal has expired or any appeal has terminated, the Office
will issue and publish a certificate canceling any claim of the patent
finally determined to be unpatentable, confirming any claim of the
patent determined to be patentable, and incorporating in the patent any
new or amended claim determined to be patentable by operation of the
certificate.
Subpart B_Inter Partes Review
Source: 77 FR 48727, Aug. 14, 2012, unless otherwise noted.
General
Sec.42.100 Procedure; pendency.
(a) An inter partes review is a trial subject to the procedures set
forth in subpart A of this part.
(b) In an inter partes review proceeding, a claim of a patent, or a
claim proposed in a motion to amend under Sec.42.121, shall be
construed using the same claim construction standard that would be used
to construe the claim in
[[Page 509]]
a civil action under 35 U.S.C. 282(b), including construing the claim in
accordance with the ordinary and customary meaning of such claim as
understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent. Any prior claim construction
determination concerning a term of the claim in a civil action, or a
proceeding before the International Trade Commission, that is timely
made of record in the inter partes review proceeding will be considered.
(c) An inter partes review proceeding shall be administered such
that pendency before the Board after institution is normally no more
than one year. The time can be extended by up to six months for good
cause by the Chief Administrative Patent Judge, or adjusted by the Board
in the case of joinder.
[77 FR 48727, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 83
FR 51358, Oct. 11, 2018]
Sec.42.101 Who may petition for inter partes review.
A person who is not the owner of a patent may file with the Office a
petition to institute an inter partes review of the patent unless:
(a) Before the date on which the petition for review is filed, the
petitioner or real party-in-interest filed a civil action challenging
the validity of a claim of the patent;
(b) The petition requesting the proceeding is filed more than one
year after the date on which the petitioner, the petitioner's real
party-in-interest, or a privy of the petitioner is served with a
complaint alleging infringement of the patent; or
(c) The petitioner, the petitioner's real party-in-interest, or a
privy of the petitioner is estopped from challenging the claims on the
grounds identified in the petition.
Sec.42.102 Time for filing.
(a) A petition for inter partes review of a patent must be filed
after the later of the following dates, where applicable:
(1) If the patent is a patent described in section 3(n)(1) of the
Leahy-Smith America Invents Act, the date that is nine months after the
date of the grant of the patent;
(2) If the patent is a patent that is not described in section
3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant
of the patent; or
(3) If a post-grant review is instituted as set forth in subpart C
of this part, the date of the termination of such post-grant review.
(b) [Reserved]
[77 FR 48727, Aug. 14, 2012, as amended at 78 FR 17874, Mar. 25, 2013;
84 FR 51982, Oct. 1, 2019]
Sec.42.103 Inter partes review fee.
(a) An inter partes review fee set forth in Sec.42.15(a) must
accompany the petition. (b) No filing date will be accorded to the
petition until full payment is received.
Sec.42.104 Content of petition.
In addition to the requirements of Sec. Sec.42.6, 42.8, 42.22, and
42.24, the petition must set forth:
(a) Grounds for standing. The petitioner must certify that the
patent for which review is sought is available for inter partes review
and that the petitioner is not barred or estopped from requesting an
inter partes review challenging the patent claims on the grounds
identified in the petition.
(b) Identification of challenge. Provide a statement of the precise
relief requested for each claim challenged. The statement must identify
the following:
(1) The claim;
(2) The specific statutory grounds under 35 U.S.C. 102 or 103 on
which the challenge to the claim is based and the patents or printed
publications relied upon for each ground;
(3) How the challenged claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112(f), the construction of the
claim must identify the specific portions of the specification that
describe the structure, material, or acts corresponding to each claimed
function;
(4) How the construed claim is unpatentable under the statutory
grounds identified in paragraph (b)(2) of this section. The petition
must specify where each element of the claim is found in the prior art
patents or printed publications relied upon; and
[[Page 510]]
(5) The exhibit number of the supporting evidence relied upon to
support the challenge and the relevance of the evidence to the challenge
raised, including identifying specific portions of the evidence that
support the challenge. The Board may exclude or give no weight to the
evidence where a party has failed to state its relevance or to identify
specific portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or
typographical mistake in the petition. The grant of such a motion does
not change the filing date of the petition.
Sec.42.105 Service of petition.
In addition to the requirements of Sec.42.6, the petitioner must
serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the
patent owner at the correspondence address of record for the subject
patent. The petitioner may additionally serve the petition and
supporting evidence on the patent owner at any other address known to
the petitioner as likely to effect service.
(b) Upon agreement of the parties, service may be made
electronically. Service may be by Priority Mail Express[supreg] or by
means at least as fast and reliable as Priority Mail Express[supreg].
Personal service is not required.
[77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014]
Sec.42.106 Filing date.
(a) Complete petition. A petition to institute inter partes review
will not be accorded a filing date until the petition satisfies all of
the following requirements:
(1) Complies with Sec.42.104;
(2) Effects service of the petition on the correspondence address of
record as provided in Sec.42.105(a); and
(3) Is accompanied by the fee to institute required in Sec.
42.15(a).
(b) Incomplete petition. Where a party files an incomplete petition,
no filing date will be accorded, and the Office will dismiss the
petition if the deficiency in the petition is not corrected within one
month from the notice of an incomplete petition.
Sec.42.107 Preliminary response to petition.
(a) The patent owner may file a preliminary response to the
petition. The response is limited to setting forth the reasons why no
inter partes review should be instituted under 35 U.S.C. 314 and can
include supporting evidence. The preliminary response is subject to the
word count under Sec.42.24.
(b) Due date. The preliminary response must be filed no later than
three months after the date of a notice indicating that the request to
institute an inter partes review has been granted a filing date. A
patent owner may expedite the proceeding by filing an election to waive
the patent owner preliminary response.
(c) [Reserved]
(d) No amendment. The preliminary response shall not include any
amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory
disclaimer under 35 U.S.C. 253(a) in compliance with Sec.1.321(a) of
this chapter, disclaiming one or more claims in the patent. No inter
partes review will be instituted based on disclaimed claims.
[77 FR 48727, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016]
Instituting Inter Partes Review
Sec.42.108 Institution of inter partes review.
(a) When instituting inter partes review, the Board will authorize
the review to proceed on all of the challenged claims and on all grounds
of unpatentability asserted for each claim.
(b) At any time prior to a decision on institution of inter partes
review, the Board may deny all grounds for unpatentability for all of
the challenged claims. Denial of all grounds is a Board decision not to
institute inter partes review.
(c) Inter partes review shall not be instituted unless the Board
decides that the information presented in the petition demonstrates that
there is a reasonable likelihood that at least one of the claims
challenged in the petition is unpatentable. The Board's decision will
[[Page 511]]
take into account a patent owner preliminary response where such a
response is filed, including any testimonial evidence. A petitioner may
seek leave to file a reply to the preliminary response in accordance
with Sec. Sec.42.23 and 42.24(c). Any such request must make a showing
of good cause.
[85 FR 79129, Dec. 9, 2020]
After Institution of Inter Partes Review
Sec.42.120 Patent owner response.
(a) Scope. A patent owner may file a single response to the petition
and/or decision on institution. A patent owner response is filed as an
opposition and is subject to the page limits provided in Sec.42.24.
(b) Due date for response. If no time for filing a patent owner
response to a petition is provided in a Board order, the default date
for filing a patent owner response is three months from the date the
inter partes review was instituted.
[77 FR 48727, Aug. 14, 2012, as amended at 85 FR 79129, Dec. 9, 2020]
Sec.42.121 Amendment of the patent.
(a) Motion to amend. A patent owner may file one motion to amend a
patent, but only after conferring with the Board.
(1) Due date. Unless a due date is provided in a Board order, a
motion to amend must be filed no later than the filing of a patent owner
response.
(2) Scope. A motion to amend may be denied where:
(i) The amendment does not respond to a ground of unpatentability
involved in the trial; or
(ii) The amendment seeks to enlarge the scope of the claims of the
patent or introduce new subject matter.
(3) A reasonable number of substitute claims. A motion to amend may
cancel a challenged claim or propose a reasonable number of substitute
claims. The presumption is that only one substitute claim would be
needed to replace each challenged claim, and it may be rebutted by a
demonstration of need.
(b) Content. A motion to amend claims must include a claim listing,
which claim listing may be contained in an appendix to the motion, show
the changes clearly, and set forth:
(1) The support in the original disclosure of the patent for each
claim that is added or amended; and
(2) The support in an earlier-filed disclosure for each claim for
which benefit of the filing date of the earlier filed disclosure is
sought.
(c) Additional motion to amend. In addition to the requirements set
forth in paragraphs (a) and (b) of this section, any additional motion
to amend may not be filed without Board authorization. An additional
motion to amend may be authorized when there is a good cause showing or
a joint request of the petitioner and the patent owner to materially
advance a settlement. In determining whether to authorize such an
additional motion to amend, the Board will consider whether a petitioner
has submitted supplemental information after the time period set for
filing a motion to amend in paragraph (a)(1) of this section.
(d) Burden of Persuasion. On a motion to amend:
(1) A patent owner bears the burden of persuasion to show, by a
preponderance of the evidence, that the motion to amend complies with
the requirements of paragraphs (1) and (3) of 35 U.S.C. 316(d), as well
as paragraphs (a)(2), (a)(3), (b)(1), and (b)(2) of this section;
(2) A petitioner bears the burden of persuasion to show, by a
preponderance of the evidence, that any proposed substitute claims are
unpatentable; and
(3) Irrespective of paragraphs (d)(1) and (2) of this section, the
Board may, in the interests of justice, exercise its discretion to grant
or deny a motion to amend only for reasons supported by readily
identifiable and persuasive evidence of record. In doing so, the Board
may make of record only readily identifiable and persuasive evidence in
a related proceeding before the Office or evidence that a district court
can judicially notice. Where the Board exercises its discretion under
this paragraph, the parties will have an opportunity to respond.
[77 FR 48727, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015; 85
FR 82935, Dec. 21, 2020]
[[Page 512]]
Sec.42.122 Multiple proceedings and Joinder.
(a) Multiple proceedings. Where another matter involving the patent
is before the Office, the Board may during the pendency of the inter
partes review enter any appropriate order regarding the additional
matter including providing for the stay, transfer, consolidation, or
termination of any such matter.
(b) Request for joinder. Joinder may be requested by a patent owner
or petitioner. Any request for joinder must be filed, as a motion under
Sec.42.22, no later than one month after the institution date of any
inter partes review for which joinder is requested. The time period set
forth in Sec.42.101(b) shall not apply when the petition is
accompanied by a request for joinder.
Sec.42.123 Filing of supplemental information.
(a) Motion to submit supplemental information. Once a trial has been
instituted, a party may file a motion to submit supplemental information
in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit
supplemental information is made within one month of the date the trial
is instituted.
(2) The supplemental information must be relevant to a claim for
which the trial has been instituted.
(b) Late submission of supplemental information. A party seeking to
submit supplemental information more than one month after the date the
trial is instituted, must request authorization to file a motion to
submit the information. The motion to submit supplemental information
must show why the supplemental information reasonably could not have
been obtained earlier, and that consideration of the supplemental
information would be in the interests-of-justice.
(c) Other supplemental information. A party seeking to submit
supplemental information not relevant to a claim for which the trial has
been instituted must request authorization to file a motion to submit
the information. The motion must show why the supplemental information
reasonably could not have been obtained earlier, and that consideration
of the supplemental information would be in the interests-of-justice.
Subpart C_Post-Grant Review
Source: 77 FR 48729, Aug. 14, 2012, unless otherwise noted.
General
Sec.42.200 Procedure; pendency.
(a) A post-grant review is a trial subject to the procedures set
forth in subpart A of this part.
(b) In a post-grant review proceeding, a claim of a patent, or a
claim proposed in a motion to amend under Sec.42.221, shall be
construed using the same claim construction standard that would be used
to construe the claim in a civil action under 35 U.S.C. 282(b),
including construing the claim in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill
in the art and the prosecution history pertaining to the patent. Any
prior claim construction determination concerning a term of the claim in
a civil action, or a proceeding before the International Trade
Commission, that is timely made of record in the post-grant review
proceeding will be considered.
(c) A post-grant review proceeding shall be administered such that
pendency before the Board after institution is normally no more than one
year. The time can be extended by up to six months for good cause by the
Chief Administrative Patent Judge, or adjusted by the Board in the case
of joinder.
(d) Interferences commenced before September 16, 2012, shall proceed
under part 41 of this chapter except as the Chief Administrative Patent
Judge, acting on behalf of the Director, may otherwise order in the
interests-of-justice.
[77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 83
FR 51358, Oct. 11, 2018]
Sec.42.201 Who may petition for a post-grant review.
A person who is not the owner of a patent may file with the Office a
petition to institute a post-grant review of the patent unless:
[[Page 513]]
(a) Before the date on which the petition for review is filed, the
petitioner or real party-in-interest filed a civil action challenging
the validity of a claim of the patent; or
(b) The petitioner, the petitioner's real party-in-interest, or a
privy of the petitioner is estopped from challenging the claims on the
grounds identified in the petition.
Sec.42.202 Time for filing.
(a) A petition for a post-grant review of a patent must be filed no
later than the date that is nine months after the date of the grant of a
patent or of the issuance of a reissue patent. A petition, however, may
not request a post-grant review for a claim in a reissue patent that is
identical to or narrower than a claim in the original patent from which
the reissue patent was issued unless the petition is filed not later
than the date that is nine months after the date of the grant of the
original patent.
(b) [Reserved]
[77 FR 48729, Aug. 14, 2012, as amended at 84 FR 51982, Oct. 1, 2019]
Sec.42.203 Post-grant review fee.
(a) A post-grant review fee set forth in Sec.42.15(b) must
accompany the petition.
(b) No filing date will be accorded to the petition until full
payment is received.
Sec.42.204 Content of petition.
In addition to the requirements of Sec. Sec.42.6, 42.8, 42.22, and
42.24, the petition must set forth:
(a) Grounds for standing. The petitioner must certify that the
patent for which review is sought is available for post-grant review and
that the petitioner is not barred or estopped from requesting a post-
grant review challenging the patent claims on the grounds identified in
the petition.
(b) Identification of challenge. Provide a statement of the precise
relief requested for each claim challenged. The statement must identify
the following:
(1) The claim;
(2) The specific statutory grounds permitted under 35 U.S.C.
282(b)(2) or (3) on which the challenge to the claim is based;
(3) How the challenged claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112(f), the construction of the
claim must identify the specific portions of the specification that
describe the structure, material, or acts corresponding to each claimed
function;
(4) How the construed claim is unpatentable under the statutory
grounds identified in paragraph (b)(2) of this section. Where the
grounds for unpatentability are based on prior art, the petition must
specify where each element of the claim is found in the prior art. For
all other grounds of unpatentability, the petition must identify the
specific part of the claim that fails to comply with the statutory
grounds raised and state how the identified subject matter fails to
comply with the statute; and
(5) The exhibit number of the supporting evidence relied upon to
support the challenge and the relevance of the evidence to the challenge
raised, including identifying specific portions of the evidence that
support the challenge. The Board may exclude or give no weight to the
evidence where a party has failed to state its relevance or to identify
specific portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or
typographical mistake in the petition. The grant of such a motion does
not change the filing date of the petition.
Sec.42.205 Service of petition.
In addition to the requirements of Sec.42.6, the petitioner must
serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the
patent owner at the correspondence address of record for the subject
patent. The petitioner may additionally serve the petition and
supporting evidence on the patent owner at any other address known to
the petitioner as likely to effect service.
(b) Upon agreement of the parties, service may be made
electronically. Service may be by Priority Mail Express[supreg] or by
means at least as fast and
[[Page 514]]
reliable as Priority Mail Express[supreg]. Personal service is not
required.
[77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014]
Sec.42.206 Filing date.
(a) Complete petition. A petition to institute a post-grant review
will not be accorded a filing date until the petition satisfies all of
the following requirements:
(1) Complies with Sec.42.204 or Sec.42.304, as the case may be,
(2) Effects service of the petition on the correspondence address of
record as provided in Sec.42.205(a); and
(3) Is accompanied by the filing fee in Sec.42.15(b).
(b) Incomplete petition. Where a party files an incomplete petition,
no filing date will be accorded and the Office will dismiss the request
if the deficiency in the petition is not corrected within the earlier of
either one month from the notice of an incomplete petition, or the
expiration of the statutory deadline in which to file a petition for
post-grant review.
Sec.42.207 Preliminary response to petition.
(a) The patent owner may file a preliminary response to the
petition. The response is limited to setting forth the reasons why no
post-grant review should be instituted under 35 U.S.C. 324 and can
include supporting evidence. The preliminary response is subject to the
word count under Sec.42.24.
(b) Due date. The preliminary response must be filed no later than
three months after the date of a notice indicating that the request to
institute a post-grant review has been granted a filing date. A patent
owner may expedite the proceeding by filing an election to waive the
patent owner preliminary response.
(c) [Reserved]
(d) No amendment. The preliminary response shall not include any
amendment.
(e) Disclaim Patent Claims. The patent owner may file a statutory
disclaimer under 35 U.S.C. 253(a) in compliance with Sec.1.321(a),
disclaiming one or more claims in the patent. No post-grant review will
be instituted based on disclaimed claims.
[77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016]
Instituting Post-Grant Review
Sec.42.208 Institution of post-grant review.
(a) When instituting post-grant review, the Board will authorize the
review to proceed on all of the challenged claims and on all grounds of
unpatentability asserted for each claim.
(b) At any time prior to institution of post-grant review, the Board
may deny all grounds for unpatentability for all of the challenged
claims. Denial of all grounds is a Board decision not to institute post-
grant review.
(c) Post-grant review shall not be instituted unless the Board
decides that the information presented in the petition demonstrates that
it is more likely than not that at least one of the claims challenged in
the petition is unpatentable. The Board's decision will take into
account a patent owner preliminary response where such a response is
filed, including any testimonial evidence. A petitioner may seek leave
to file a reply to the preliminary response in accordance with
Sec. Sec.42.23 and 42.24(c). Any such request must make a showing of
good cause.
(d) Additional grounds. Sufficient grounds under Sec.42.208(c) may
be a showing that the petition raises a novel or unsettled legal
question that is important to other patents or patent applications.
[77 FR 48729, Aug. 14, 2012, as amended at 81 FR 18766, Apr. 1, 2016; 85
FR 79129, Dec. 9, 2020]
After Institution of Post-Grant Review
Sec.42.220 Patent owner response.
(a) Scope. A patent owner may file a single response to the petition
and/or decision on institution. A patent owner response is filed as an
opposition and is subject to the page limits provided in Sec.42.24.
(b) Due date for response. If no date for filing a patent owner
response to a petition is provided in a Board order,
[[Page 515]]
the default date for filing a patent owner response is three months from
the date the post-grant review is instituted.
[77 FR 48729, Aug. 14, 2012, as amended at 85 FR 79129, Dec. 9, 2020]
Sec.42.221 Amendment of the patent.
(a) Motion to amend. A patent owner may file one motion to amend a
patent, but only after conferring with the Board.
(1) Due date. Unless a due date is provided in a Board order, a
motion to amend must be filed no later than the filing of a patent owner
response.
(2) Scope. A motion to amend may be denied where:
(i) The amendment does not respond to a ground of unpatentability
involved in the trial; or
(ii) The amendment seeks to enlarge the scope of the claims of the
patent or introduce new subject matter.
(3) A reasonable number of substitute claims. A motion to amend may
cancel a challenged claim or propose a reasonable number of substitute
claims. The presumption is that only one substitute claim would be
needed to replace each challenged claim, and it may be rebutted by a
demonstration of need.
(b) Content. A motion to amend claims must include a claim listing,
which claim listing may be contained in an appendix to the motion, show
the changes clearly, and set forth:
(1) The support in the original disclosure of the patent for each
claim that is added or amended; and
(2) The support in an earlier-filed disclosure for each claim for
which benefit of the filing date of the earlier filed disclosure is
sought.
(c) Additional motion to amend. In addition to the requirements set
forth in paragraphs (a) and (b) of this section, any additional motion
to amend may not be filed without Board authorization. An additional
motion to amend may be authorized when there is a good cause showing or
a joint request of the petitioner and the patent owner to materially
advance a settlement. In determining whether to authorize such an
additional motion to amend, the Board will consider whether a petitioner
has submitted supplemental information after the time period set for
filing a motion to amend in paragraph (a)(1) of this section.
(d) Burden of Persuasion. On a motion to amend:
(1) A patent owner bears the burden of persuasion to show, by a
preponderance of the evidence, that the motion to amend complies with
the requirements of paragraphs (1) and (3) of 35 U.S.C. 326(d), as well
as paragraphs (a)(2), (a)(3), (b)(1), and (b)(2) of this section;
(2) A petitioner bears the burden of persuasion to show, by a
preponderance of the evidence, that any proposed substitute claims are
unpatentable; and
(3) Irrespective of paragraphs (d)(1) and (2) of this section, the
Board may, in the interests of justice, exercise its discretion to grant
or deny a motion to amend only for reasons supported by readily
identifiable and persuasive evidence of record. In doing so, the Board
may make of record only readily identifiable and persuasive evidence in
a related proceeding before the Office or evidence that a district court
can judicially notice. Where the Board exercises its discretion under
this paragraph, the parties will have an opportunity to respond.
[77 FR 48729, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015; 85
FR 82935, Dec. 21, 2020]
Sec.42.222 Multiple proceedings and Joinder.
(a) Multiple proceedings. Where another matter involving the patent
is before the Office, the Board may during the pendency of the post-
grant review enter any appropriate order regarding the additional matter
including providing for the stay, transfer, consolidation, or
termination of any such matter.
(b) Request for joinder. Joinder may be requested by a patent owner
or petitioner. Any request for joinder must be filed, as a motion under
Sec.42.22, no later than one month after the institution date of any
post-grant review for which joinder is requested.
[[Page 516]]
Sec.42.223 Filing of supplemental information.
(a) Motion to submit supplemental information. Once a trial has been
instituted, a party may file a motion to submit supplemental information
in accordance with the following requirements:
(1) A request for the authorization to file a motion to submit
supplemental information is made within one month of the date the trial
is instituted.
(2) The supplemental information must be relevant to a claim for
which the trial has been instituted.
(b) Late submission of supplemental information. A party seeking to
submit supplemental information more than one month after the date the
trial is instituted, must request authorization to file a motion to
submit the information. The motion to submit supplemental information
must show why the supplemental information reasonably could not have
been obtained earlier, and that consideration of the supplemental
information would be in the interests-of-justice.
(c) Other supplemental information. A party seeking to submit
supplemental information not relevant to a claim for which the trial has
been instituted must request authorization to file a motion to submit
the information. The motion must show why the supplemental information
reasonably could not have been obtained earlier, and that consideration
of the supplemental information would be in the interests-of-justice.
Sec.42.224 Discovery.
Notwithstanding the discovery provisions of subpart A:
(a) Requests for additional discovery may be granted upon a showing
of good cause as to why the discovery is needed; and
(b) Discovery is limited to evidence directly related to factual
assertions advanced by either party in the proceeding.
Subpart D_Transitional Program for Covered Business Method Patents
Source: 77 FR 48731, Aug. 14, 2012, unless otherwise noted.
Sec.42.300 Procedure; pendency.
(a) A covered business method patent review is a trial subject to
the procedures set forth in subpart A of this part and is also subject
to the post-grant review procedures set forth in subpart C except for
Sec. Sec.42.200, 42.201, 42.202, and 42.204.
(b) In a covered business method patent review proceeding, a claim
of a patent, or a claim proposed in a motion to amend under Sec.
42.221, shall be construed using the same claim construction standard
that would be used to construe the claim in a civil action under 35
U.S.C. 282(b), including construing the claim in accordance with the
ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the
patent. Any prior claim construction determination concerning a term of
the claim in a civil action, or a proceeding before the International
Trade Commission, that is timely made of record in the covered business
method patent review proceeding will be considered.
(c) A covered business method patent review proceeding shall be
administered such that pendency before the Board after institution is
normally no more than one year. The time can be extended by up to six
months for good cause by the Chief Administrative Patent Judge, or
adjusted by the Board in the case of joinder.
(d) The rules in this subpart are applicable until September 15,
2020, except that the rules shall continue to apply to any petition for
a covered business method patent review filed before the date of repeal.
[77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015; 81
FR 18766, Apr. 1, 2016; 83 FR 51359, Oct. 11, 2018]
Sec.42.301 Definitions.
In addition to the definitions in Sec.42.2, the following
definitions apply to proceedings under this subpart D:
[[Page 517]]
(a) Covered business method patent means a patent that claims a
method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management of
a financial product or service, except that the term does not include
patents for technological inventions.
(b) Technological invention. In determining whether a patent is for
a technological invention solely for purposes of the Transitional
Program for Covered Business Methods (section 42.301(a)), the following
will be considered on a case-by-case basis: whether the claimed subject
matter as a whole recites a technological feature that is novel and
unobvious over the prior art; and solves a technical problem using a
technical solution.
[77 FR 48753, Aug. 14, 2012]
Sec.42.302 Who may petition for a covered business method patent
review.
(a) A petitioner may not file with the Office a petition to
institute a covered business method patent review of the patent unless
the petitioner, the petitioner's real party-in-interest, or a privy of
the petitioner has been sued for infringement of the patent or has been
charged with infringement under that patent. Charged with infringement
means a real and substantial controversy regarding infringement of a
covered business method patent exists such that the petitioner would
have standing to bring a declaratory judgment action in Federal court.
(b) A petitioner may not file a petition to institute a covered
business method patent review of the patent where the petitioner, the
petitioner's real party-in-interest, or a privy of the petitioner is
estopped from challenging the claims on the grounds identified in the
petition.
(c) A petitioner may not file a petition to institute a covered
business method patent review of the patent where, before the date on
which the petition is filed, the petitioner or real party-in-interest
filed a civil action challenging the validity of a claim of the patent.
[77 FR 48731, Aug. 14, 2012, as amended at 80 FR 28566, May 19, 2015]
Sec.42.303 Time for filing.
A petition requesting a covered business method patent review may be
filed any time except during the period in which a petition for a post-
grant review of the patent would satisfy the requirements of 35 U.S.C.
321(c).
Sec.42.304 Content of petition.
In addition to any other notices required by subparts A and C of
this part, a petition must request judgment against one or more claims
of a patent identified by patent number. In addition to the requirements
of Sec. Sec.42.6, 42.8, 42.22, and 42.24 the petition must set forth:
(a) Grounds for standing. The petitioner must demonstrate that the
patent for which review is sought is a covered business method patent,
and that the petitioner meets the eligibility requirements of Sec.
42.302.
(b) Identification of challenge. Provide a statement of the precise
relief requested for each claim challenged. The statement must identify
the following:
(1) The claim;
(2) The specific statutory grounds permitted under paragraph (2) or
(3) of 35 U.S.C. 282(b), except as modified by section 18(a)(1)(C) of
the Leahy-Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284
(2011)), on which the challenge to the claim is based;
(3) How the challenged claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112(f), the construction of the
claim must identify the specific portions of the specification that
describe the structure, material, or acts corresponding to each claimed
function;
(4) How the construed claim is unpatentable under the statutory
grounds identified in paragraph (b)(2) of this section. Where the
grounds for unpatentability are based on prior art, the petition must
specify where each element of the claim is found in the prior art. For
all other grounds of unpatentability, the petition must identify the
specific part of the claim that fails to comply with the statutory
grounds raised and state how the identified subject matter fails to
comply with the statute; and
[[Page 518]]
(5) The exhibit number of supporting evidence relied upon to support
the challenge and the relevance of the evidence to the challenge raised,
including identifying specific portions of the evidence that support the
challenge. The Board may exclude or give no weight to the evidence where
a party has failed to state its relevance or to identify specific
portions of the evidence that support the challenge.
(c) A motion may be filed that seeks to correct a clerical or
typographical mistake in the petition. The grant of such a motion does
not change the filing date of the petition.
Subpart E_Derivation
Source: 77 FR 56090, Sep. 11, 2012, unless otherwise noted.
Sec.42.400 Procedure; pendency.
(a) A derivation proceeding is a trial subject to the procedures set
forth in subpart A of this part.
(b) The Board may for good cause authorize or direct the parties to
address patentability issues that arise in the course of the derivation
proceeding.
Sec.42.401 Definitions.
In addition to the definitions in Sec.42.2, the following
definitions apply to proceedings under this subpart:
Agreement or understanding under 35 U.S.C. 135(e) means settlement
for the purposes of Sec.42.74.
Applicant includes a reissue applicant.
Application includes both an application for an original patent and
an application for a reissued patent.
First publication means either a patent or an application
publication under 35 U.S.C. 122(b), including a publication of an
international application designating the United States as provided by
35 U.S.C. 374.
Petitioner means a patent applicant who petitions for a
determination that another party named in an earlier-filed patent
application allegedly derived a claimed invention from an inventor named
in the petitioner's application and filed the earlier application
without authorization.
Respondent means a party other than the petitioner.
Same or substantially the same means patentably indistinct.
Sec.42.402 Who may file a petition for a derivation proceeding.
An applicant for patent may file a petition to institute a
derivation proceeding in the Office.
Sec.42.403 Time for filing.
A petition for a derivation proceeding must be filed within the one-
year period beginning on the date of the first publication of a claim to
an invention that is the same or substantially the same as the earlier
application's claim to the allegedly derived invention.
Sec.42.404 Derivation fee.
(a) A derivation fee set forth in Sec.42.15(c) must accompany the
petition.
(b) No filing date will be accorded to the petition until payment is
complete.
Sec.42.405 Content of petition.
(a) Grounds for standing. The petition must:
(1) Demonstrate compliance with Sec. Sec.42.402 and 42.403; and
(2) Show that the petitioner has at least one claim that is:
(i) The same or substantially the same as the respondent's claimed
invention; and
(ii) The same or substantially the same as the invention disclosed
to the respondent.
(b) In addition to the requirements of Sec. Sec.42.8 and 42.22,
the petition must:
(1) Provide sufficient information to identify the application or
patent for which the petitioner seeks a derivation proceeding;
(2) Demonstrate that a claimed invention was derived from an
inventor named in the petitioner's application, and that the inventor
from whom the invention was derived did not authorize the filing of the
earliest application claiming such invention; and
(3) For each of the respondent's claims to the derived invention,
(i) Show why the claimed invention is the same or substantially the
same as the invention disclosed to the respondent, and
[[Page 519]]
(ii) Identify how the claim is to be construed. Where the claim to
be construed contains a means-plus-function or step-plus-function
limitation as permitted under 35 U.S.C. 112(f), the construction of the
claim must identify the specific portions of the specification that
describe the structure, material, or acts corresponding to each claimed
function.
(c) Sufficiency of showing. A derivation showing is not sufficient
unless it is supported by substantial evidence, including at least one
affidavit addressing communication of the derived invention and lack of
authorization that, if unrebutted, would support a determination of
derivation. The showing of communication must be corroborated.
Sec.42.406 Service of petition.
In addition to the requirements of Sec.42.6, the petitioner must
serve the petition and exhibits relied upon in the petition as follows:
(a) The petition and supporting evidence must be served on the
respondent at the correspondence address of record for the earlier
application or subject patent. The petitioner may additionally serve the
petition and supporting evidence on the respondent at any other address
known to the petitioner as likely to effect service.
(b) Upon agreement of the parties, service may be made
electronically. Service may be by Priority Mail Express[supreg] or by
means at least as fast and reliable as Priority Mail Express[supreg].
Personal service is not required.
[77 FR 48669, Aug. 14, 2012, as amended at 79 FR 63043, Oct. 22, 2014]
Sec.42.407 Filing date.
(a) Complete petition. A petition to institute a derivation
proceeding will not be accorded a filing date until the petition
satisfies all of the following requirements:
(1) Complies with Sec. Sec.42.404 and 42.405, and
(2) Service of the petition on the correspondence address of record
as provided in Sec.42.406.
(b) Incomplete petition. Where the petitioner files an incomplete
petition, no filing date will be accorded, and the Office will dismiss
the petition if the deficiency in the petition is not corrected within
the earlier of either one month from notice of the incomplete petition,
or the expiration of the statutory deadline in which to file a petition
for derivation.
Instituting Derivation Proceeding
Sec.42.408 Institution of derivation proceeding.
(a) An administrative patent judge institutes, and may as necessary
reinstitute, the derivation proceeding on behalf of the Director.
(b) Additional derivation proceeding. The petitioner may suggest the
addition of a patent or application to the derivation proceeding. The
suggestion should make the showings required under Sec.42.405 and
explain why the suggestion could not have been made in the original
petition.
After Institution of Derivation Proceeding
Sec.42.409 Settlement agreements.
An agreement or understanding under 35 U.S.C. 135(e) is a settlement
for the purposes of Sec.42.74.
Sec.42.410 Arbitration.
(a) Parties may resort to binding arbitration to determine any
issue. The Office is not a party to the arbitration. The Board is not
bound by, and may independently determine, any question of
patentability.
(b) The Board will not set a time for, or otherwise modify the
proceeding for, an arbitration unless:
(1) It is to be conducted according to Title 9 of the United States
Code;
(2) The parties notify the Board in writing of their intention to
arbitrate;
(3) The agreement to arbitrate:
(i) Is in writing;
(ii) Specifies the issues to be arbitrated;
(iii) Names the arbitrator, or provides a date not more than 30 days
after the execution of the agreement for the selection of the
arbitrator;
(iv) Provides that the arbitrator's award shall be binding on the
parties and that judgment thereon can be entered by the Board;
[[Page 520]]
(v) Provides that a copy of the agreement is filed within 20 days
after its execution; and
(vi) Provides that the arbitration is completed within the time the
Board sets.
(c) The parties are solely responsible for the selection of the
arbitrator and the conduct of the arbitration.
(d) The Board may determine issues the arbitration does not resolve.
(e) The Board will not consider the arbitration award unless it:
(1) Is binding on the parties;
(2) Is in writing;
(3) States in a clear and definite manner each issue arbitrated and
the disposition of each issue; and
(4) Is filed within 20 days of the date of the award.
(f) Once the award is filed, the parties to the award may not take
actions inconsistent with the award. If the award is dispositive of the
contested subject matter for a party, the Board may enter judgment as to
that party.
Sec.42.411 Common interests in the invention.
The Board may decline to institute, or if already instituted the
Board may issue judgment in, a derivation proceeding between an
application and a patent or another application that are commonly owned.
Sec.42.412 Public availability of Board records.
(a) Publication. (1) Generally. Any Board decision is available for
public inspection without a party's permission if rendered in a file
open to the public pursuant to Sec.1.11 of this chapter or in an
application that has been published in accordance with Sec. Sec.1.211
to 1.221 of this chapter. The Office may independently publish any Board
decision that is available for public inspection.
(2) Determination of special circumstances. Any Board decision not
publishable under paragraph (a)(1) of this section may be published or
made available for public inspection if the Director believes that
special circumstances warrant publication and a party does not petition
within two months after being notified of the intention to make the
decision public, objecting in writing on the ground that the decision
discloses the objecting party's trade secret or other confidential
information and stating with specificity that such information is not
otherwise publicly available.
(b) Record of proceeding. (1) The record of a Board proceeding is
available to the public, unless a patent application not otherwise
available to the public is involved.
(2) Notwithstanding paragraph (b)(1) of this section, after a final
Board decision in or judgment in a Board proceeding, the record of the
Board proceeding will be made available to the public if any involved
file is or becomes open to the public under Sec.1.11 of this chapter
or an involved application is or becomes published under Sec. Sec.
1.211 to 1.221 of this chapter.
PART 90_JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS--
Table of Contents
Sec.
90.1 Scope.
90.2 Notice; service.
90.3 Time for appeal or civil action.
Authority: 35 U.S.C. 2(b)(2).
Source: 77 FR 48677, Aug. 14, 2012, unless otherwise noted.
Sec.90.1 Scope.
The provisions herein govern judicial review for Patent Trial and
Appeal Board decisions under chapter 13 of title 35, United States Code.
Judicial review of decisions arising out of inter partes reexamination
proceedings that are requested under 35 U.S.C. 311, and where available,
judicial review of decisions arising out of interferences declared
pursuant to 35 U.S.C. 135 continue to be governed by the pertinent
regulations in effect on July 1, 2012.
Sec.90.2 Notice; service.
(a) For an appeal under 35 U.S.C. 141. (1) In all appeals, the
notice of appeal required by 35 U.S.C. 142 must be filed with the
Director of the United States Patent and Trademark Office as provided in
Sec.104.2 of this title. A copy of the notice of appeal must also be
filed with the Patent Trial and Appeal
[[Page 521]]
Board in the appropriate manner provided in Sec.41.10(a), 41.10(b), or
42.6(b).
(2) In all appeals, the party initiating the appeal must comply with
the requirements of the Federal Rules of Appellate Procedure and Rules
for the United States Court of Appeals for the Federal Circuit,
including:
(i) Serving the requisite number of copies on the Court; and
(ii) Paying the requisite fee for the appeal.
(3) Additional requirements. (i) In appeals arising out of an ex
parte reexamination proceeding ordered pursuant to Sec.1.525, notice
of the appeal must be served as provided in Sec.1.550(f) of this
title.
(ii) In appeals arising out of an inter partes review, a post-grant
review, a covered business method patent review, or a derivation
proceeding, notice of the appeal must provide sufficient information to
allow the Director to determine whether to exercise the right to
intervene in the appeal pursuant to 35 U.S.C. 143, and it must be served
as provided in Sec.42.6(e) of this title.
(b) For a notice of election under 35 U.S.C. 141(d) to proceed under
35 U.S.C. 146. (1) Pursuant to 35 U.S.C. 141(d), if an adverse party
elects to have all further review proceedings conducted under 35 U.S.C.
146 instead of under 35 U.S.C. 141, that party must file a notice of
election with the United States Patent and Trademark Office as provided
in Sec.104.2.
(2) A copy of the notice of election must also be filed with the
Patent Trial and Appeal Board in the manner provided in Sec.42.6(b).
(3) A copy of the notice of election must also be served where
necessary pursuant to Sec.42.6(e).
(c) For a civil action under 35 U.S.C. 146. The party initiating an
action under 35 U.S.C. 146 must file a copy of the complaint no later
than five business days after filing the complaint in district court
with the Patent Trial and Appeal Board in the manner provided in Sec.
42.6(b), and the Office of the Solicitor pursuant to Sec.104.2.
Failure to comply with this requirement can result in further action
within the United States Patent and Trademark Office consistent with the
final Board decision.
Sec.90.3 Time for appeal or civil action.
(a) Filing deadline. (1) For an appeal under 35 U.S.C. 141. The
notice of appeal filed pursuant to 35 U.S.C. 142 must be filed with the
Director of the United States Patent and Trademark Office no later than
sixty-three (63) days after the date of the final Board decision. Any
notice of cross-appeal is controlled by Rule 4(a)(3) of the Federal
Rules of Appellate Procedure, and any other requirement imposed by the
Rules of the United States Court of Appeals for the Federal Circuit.
(2) For a notice of election under 35 U.S.C. 141(d). The time for
filing a notice of election under 35 U.S.C. 141(d) is governed by 35
U.S.C. 141(d).
(3) For a civil action under 35 U.S.C. 145 or 146. (i) A civil
action must be commenced no later than sixty-three (63) days after the
date of the final Board decision.
(ii) The time for commencing a civil action pursuant to a notice of
election under 35 U.S.C. 141(d) is governed by 35 U.S.C. 141(d).
(b) Time computation. (1) Rehearing. A timely request for rehearing
will reset the time for appeal or civil action to no later than sixty-
three (63) days after action on the request. Any subsequent request for
rehearing from the same party in the same proceeding will not reset the
time for seeking judicial review, unless the additional request is
permitted by order of the Board.
(2) Holidays. If the last day for filing an appeal or civil action
falls on a Federal holiday in the District of Columbia, the time is
extended pursuant to 35 U.S.C. 21(b).
(c) Extension of time. (1) The Director, or his designee, may extend
the time for filing an appeal, or commencing a civil action, upon
written request if:
(i) Requested before the expiration of the period for filing an
appeal or commencing a civil action, and upon a showing of good cause;
or
(ii) Requested after the expiration of the period for filing an
appeal of commencing a civil action, and upon a showing that the failure
to act was the result of excusable neglect.
(2) The request must be filed as provided in Sec.104.2 of this
title.
[[Page 523]]
INDEX III_RULES RELATING TO PRACTICE BEFORE THE PATENT AND TRADEMARK
OFFICE
Editorial Note: This listing is provided for informational purposes
only. It is compiled and kept current by the Department of Commerce.
This index is updated as of July 1, 2021.
Section
A
Address change.....................................................11.11
Advertising.......................................11.701, 11.702, 11.703
Agreements restricting practice...................................11.506
Aliens...........................................11.6, 11.7, 11.9, 11.14
Applicant for patent, representation of......................1.31, 11.10
Applicant for trademark, representation of..........................2.11
Attorney, status change from agent..................................11.7
Attorneys, recognition of to practice in trademark matters.........11.14
Attorneys, registration of to practice in patent matters.....11.6, 11.7,
11.9
B
Breach of trust...................................................11.804
Business transactions or relations with client....................11.108
C
Candidate for judicial office.....................................11.802
Certificate of mailing........................................1.8, 11.18
Circumventing a disciplinary rule.................................11.804
Rules of Professional Conduct..............................11.101-11.901
Committee on Discipline........................11.2, 11.22, 11.23, 11.32
Communicating with person having adverse interest........11.401, 11.402,
11.403
Communications concerning practitioner's service.........11.701, 11.702,
11.703, 11.704
Compensation for legal services...........................11.105, 11.108
Competence................................................11.101, 11.103
Complaint instituting disciplinary proceedings..............11.32, 11.34
Concealment of material information...............................11.804
Conduct in proceeding before Office...............................11.303
Conduct prejudicial to the administration of justice..............11.804
Conflict of interest......................11.107, 11.108, 11.110, 11.111
Conviction of criminal offense........................11.7, 11.19, 11.25
D
Deceit............................................................11.804
Decisions of the USPTO Director.............................11.56, 11.57
Definitions:
Agent...............................................................11.6
Attorney............................................................11.1
Director of Enrollment and Discipline...............................11.1
Grievance...........................................................11.1
Fraud...............................................................11.1
Law firm............................................................11.1
Lawyer..............................................................11.1
[[Page 524]]
Office..............................................................11.1
Partner.............................................................11.1
Person..............................................................11.1
Practitioner........................................................11.1
Proceeding before the Office........................................11.1
Register............................................................11.1
Registration........................................................11.1
Respondent.........................................................11.34
Roster..............................................................11.1
State...............................................................11.1
Tribunal...........................................................11.11
Writing.............................................................11.1
United States.......................................................11.1
Designation as registered attorney or agent.......................11.704
Direct contact with prospective clients...........................11.703
Director of Enrollment and Discipline...............................11.2
Review of decisions of the Director.................................11.2
Disability inactive status...........................11.19, 11.20, 11.29
Disbarment from practice on ethical grounds..................11.7, 11.19
Discharge of attorney or agent by client..........................11.116
Disciplinary Proceedings and Investigations:
Administrative Procedures Act........................11.32, 11.39, 11.44
Amendment of complaint.............................................11.45
Amendment of pleadings.............................................11.45
Answer to complaint................................................11.36
Appeal of initial decision of Hearing officer......................11.55
Burden of proof....................................................11.49
Certificate of mailing........................................1.8, 11.41
Complaint..........................................................11.34
Contested case.....................................................11.38
Deliberations of Committee on Discipline...........................11.23
Discovery (see also Discovery in Disciplinary Proceedings).........11.52
Exception to ruling................................................11.50
Filing papers after complaint filed................................11.41
Hearing officer....................................................11.39
Hearings before hearing officer....................................11.44
Initial decision of hearing officer.........................11.39, 11.54
Instituting a disciplinary proceeding..............................11.32
Investigations of violations of disciplinary rules...........11.2, 11.22
Notice of suspension or exclusion of practitioner..................11.59
Objections to evidence.............................................11.50
Post hearing memorandum............................................11.53
Pre-hearing statement..............................................11.52
Reinstatement of suspended or excluded practitioner................11.60
Reprimand of registered attorney or agent...................11.20, 11.59
Resignation of practitioner........................................11.11
Review of decision denying reinstatement of practitioner............11.2
Review of interlocutory orders by Administrative Law Judge.........11.39
Review of USPTO Director's final decision..........................11.57
Savings clause....................................................11.901
Service of complaint...............................................11.35
Settlement of complaint............................................11.26
Stay pending review of interlocutory order.........................11.39
Discourteous conduct..............................................11.804
Discovery in Disciplinary Proceedings:
Copying of documents...............................................11.52
Depositions..........................................11.39, 11.50, 11.51
Evidence....................................................11.50, 11.52
[[Page 525]]
Impeachment........................................................11.52
Inspection of documents............................................11.52
Interrogatories....................................................11.52
Motions filed with hearing officer..........................11.43, 11.52
Privileged information.............................................11.52
Undue delay in proceedings.........................................11.52
Division of legal fees............................................11.105
Duress, use of............................................11.703, 11.804
E
Employee testimony. (See Testimony by Office employee)
Employment:
Declining or terminating representation...........................11.116
Failure to carry out contract.....................................11.103
Refusing employment...............11.107, 11.108, 11.109, 11.110, 11.307
Withdrawal from employment.......11.107, 11.108, 11.109, 11.110, 11.116,
11.307
Exception to ruling................................................11.50
Excessive legal fees..............................................11.105
Exclusion of practitioner............................11.20, 11.27, 11.58
F
Faculty Clinic Supervisor...................................11.16, 11.17
Failure to disclose material fact with regard to registration.....11.801
Failure to notify client..................................11.104, 11.804
False accusations.........................................11.401, 11.804
False statements concerning officials.............11.401, 11.802, 11.804
Fees:
In general..........................................................1.21
Extension of time to schedule registration examination........11.7, 11.9
Petition to review decision of Director of Enrollment and
Discipline..........................................................11.2
Registration........................................................11.8
Registration examination............................................11.7
Reinstatement......................................................11.11
Fees for legal services...........................................11.105
Firm name, use of.................................................11.705
Fitness to practice before the Office.....................11.803, 11.804
Foreigners.......................................11.6, 11.7, 11.9, 11.14
Former Patent and Trademark Office employees.........11.7, 11.10, 11.111
Fraud or inequitable conduct.....11.102, 11.106, 11.116, 11.303, 11.401,
11.804
Funds of client, preserving identity of...................11.105, 11.115
G
Gift, improperly bestowing........................................11.108
Government employees, registration of to practice in patent
matters....................................................11.10, 11.111
I
Illegal conduct involving moral turpitude...................11.7, 11.804
Illegal fees for services.........................................11.105
Improper alteration of patent application.........................11.804
Improper execution of oath or declaration.........................11.804
Improper influence........................................11.305, 11.804
Improper signature.................................................11.18
Incompetence..............................................11.101, 11.103
[[Page 526]]
Independent professional judgment, exercise of...11.107, 11.108, 11.109,
11.110, 11.307, 11.504
Individual unqualified in respect to character, education, etc.....11.7,
11.7, 11.801
Influence by others than client..........11.107, 11.108, 11.109, 11.110,
11.307, 11.504
Information precluding registration, failure to disclose....11.7, 11.801
Initial decision of Administrative Law Judge................11.39, 11.54
Integrity and competence of the legal profession, maintaining of
11.801
Interest in litigation or proceeding before Office, acquiring of
11.108
Investigations of violations of disciplinary rules..................11.2
J
Judicial office, candidate for....................................11.802
Jurisdiction, disciplinary.........................................11.19
L
Law school students................................................11.16
Law School Clinic Certification Program.....................11.16, 11.17
Legal Fees:
Division of.......................................................11.105
Failure to pay....................................................11.116
Sharing of........................................................11.105
Letterheads, use of...............................................11.705
Limited recognition to practice in patent matters...................11.9
M
Malpractice, limiting client's liability..........................11.108
Materially false statements in application for registration.......11.801
Misappropriation of funds.................................11.804, 11.115
Misconduct........................................................11.804
Misrepresentations..................................11.7, 11.701, 11.804
Multiple employment.......................11.107, 11.108, 11.109, 11.110
N
Neglecting legal matters..........................11.101, 11.103, 11.104
Non-practitioner, formation of partnership with...........11.117, 11.504
Notice of suspension or exclusion..................................11.59
O
Oath requirement....................................................11.8
Officials, contact with...........................................11.305
P
Petitions:a
Fees in general.....................................................1.21
Reinstatement.........................................11.9, 11.11, 11.60
Reinstatement of limited recognition...............................11.11
Review decision of USPTO Director..................................11.57
Review decision of Director of Enrollment and Discipline............11.2
Suspension of rules.................................................11.3
Practitioner responsibilities.............................11.501, 11.502
Preserving secrets and confidences of client..............11.106, 11.118
Pro-se applicant..............................................1.31, 2.11
Property of client................................................11.115
Proprietary interest in subject matter............................11.108
[[Page 527]]
Publication...................................11.11, 11.35, 11.59, 11.60
R
Recognition to Practice Before the Patent and Trademark Office:
Agents..............................................., 11.6, 11.7, 11.14
Aliens...........................................11.6, 11.7, 11.9, 11.14
Attorneys..............................................11.6, 11.7, 11.14
Change of address, requirement to notify Director..................11.11
Person not suspended or excluded....................................11.2
Suspended or excluded practitioner.................................11.60
Examination for registration in patent matters................11.7, 11.9
Examination fee.....................................................11.7
Foreigners.......................................11.6, 11.7, 11.9, 11.14
Former Patent and Trademark Office employees.........11.7, 11.10, 11.111
Government employees.......................................11.10, 11.111
Limited recognition in patent matters...............................11.9
Non-lawyers, recognition in trademark matters......................11.14
Patent matters.........................................11.6, 11.9, 11.10
Recognition for representation.........................1.34, 2.17, 11.14
Recognition to practice..........................11.6, 11.7, 11.9, 11.14
Refusal to recognize practitioner..................................11.15
Register of attorneys and agents in patent matters..................11.5
Registration fee....................................................11.8
Registration number................................................11.11
Removal of attorneys and agents from the register..................11.11
Representation by registered attorney or agent in patent matters
1.31
Requirements for registration.......................................11.7
Review of Director's decision refusing registration.................11.2
Trademark matters..................................................11.14
Unauthorized representation by an agent.........., 11.10, 11.505, 11.704
Records, property and funds of client, maintaining of.............11.115
Registration statement, biennial submission........................11.11
Reinstatement after removal from the register................11.2, 11.11
Reinstatement of suspended or excluded non-practitioner............11.60
Reporting professional misconduct.................................11.803
Representation, declining or terminating..........................11.116
Representing client within bounds of the law.....11.102, 11.301, 11.302,
11.303, 11.304, 11.401, 11.404
Reprimand of registered attorney or agent..........................11.20
Resignation........................................................11.11
Revocation of registration to practice patent matters..............11.11
S
Safekeeping of property...........................................11.115
Secrets and confidence, preservation of clients...................11.106
Service of papers..................................................11.42
Service of process:
Acceptance of service of process...........................11.42, 104.12
Definition
Scope and purpose.................................................104.11
Settlement of claims of clients...................................11.108
Settlement of disciplinary claims..................................11.26
Sharing legal fees........................................11.105, 11.504
Signature and certificate of practitioner..........................11.18
Solicitation......................................................11.703
Statement concerning officials, making false..............11.401, 11.804
Suspension of practitioner.............11.11, 11.20, 11.24, 11.25, 11.58
[[Page 528]]
Suspension of rules.................................................11.3
Time, computing.....................................................11.4
T
Testimony of Office employees:
Definition.........................................................104.1
General rule......................................................104.21
Office policy.....................................................104.22
Proceedings involving the United States...........................104.23
Production of documents...........................................104.22
Scope.............................................................104.11
Subpoena of Office employees.......................................104.2
Threats, use of...................................................11.804
Trial Publicity...................................................11.306
U
Unauthorized practice......................11.14, 11.505, 11.701, 11.704
V
Violating duty of candor and good faith...........11.106, 11.303, 11.804
Violation of disciplinary rule, misconduct........................11.804
W
Witnesses.................................................11.304, 11.307
Z
Zealously representing the client.................11.102, 11.103, 11.404
[[Page 529]]
SUBCHAPTER B_ADMINISTRATION
PARTS 100 101 [RESERVED]
PART 102_DISCLOSURE OF GOVERNMENT INFORMATION--Table of Contents
Subpart A_Freedom of Information Act
Sec.
102.1 General.
102.2 Public reference facilities.
102.3 Records under FOIA.
102.4 Requirements for making requests.
102.5 Responsibility for responding to requests.
102.6 Time limits and expedited processing.
102.7 Responses to requests.
102.9 Business Information.
102.10 Appeals from initial determinations or untimely delays.
102.11 Fees.
Subpart B_Privacy Act
102.21 Purpose and scope.
102.22 Definitions.
102.23 Procedures for making inquiries.
102.24 Procedures for making requests for records.
102.25 Disclosure of requested records to individuals.
102.26 Special procedures: Medical records.
102.27 Procedures for making requests for correction or amendment.
102.28 Review of requests for correction or amendment.
102.29 Appeal of initial adverse determination on correction or
amendment.
102.30 Disclosure of record to person other than the individual to whom
it pertains.
102.31 Fees.
102.32 Penalties.
102.33 General exemptions.
102.34 Specific exemptions.
Appendix to Part 102--Systems of Records Noticed by Other Federal
Agencies and Applicable to USPTO Records, and Applicability of
This Part Thereto
Authority: 5 U.S.C. 552; 5 U.S.C. 552a; 5 U.S.C. 553; 31 U.S.C.
3717; 35 U.S.C. 2(b)(2), 21, 41, 42, 122; 44 U.S.C. 3101.
Source: 65 FR 52917, Aug. 31, 2000, unless otherwise noted.
Subpart A_Freedom of Information Act
Sec.102.1 General.
(a) The information in this part is furnished for the guidance of
the public and in compliance with the requirements of the Freedom of
Information Act (FOIA), as amended (5 U.S.C. 552). This part sets forth
the procedures the United States Patent and Trademark Office (USPTO)
follows to make publicly available the materials and indices specified
in 5 U.S.C. 552(a)(2) and records requested under 5 U.S.C. 552(a)(3).
Information routinely provided to the public as part of a regular USPTO
activity (for example, press releases issued by the Office of Public
Affairs) may be provided to the public without following this part.
USPTO's policy is to make discretionary disclosures of records or
information exempt from disclosure under FOIA whenever disclosure would
not foreseeably harm an interest protected by a FOIA exemption, but this
policy does not create any right enforceable in court.
(b) As used in this subpart, FOIA Officer means the USPTO employee
designated to administer FOIA for USPTO. To ensure prompt processing of
a request, correspondence should be addressed to the FOIA Officer,
United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450, or delivered by hand to 10B20, Madison Building
East, 600 Dulany Street, Alexandria, Virginia.
[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003;
70 FR 10489, Mar. 4, 2005]
Sec.102.2 Public reference facilities.
(a) USPTO maintains a public reference facility that contains the
records FOIA requires to be made regularly available for public
inspection and copying; furnishes information and otherwise assists the
public concerning USPTO operations under FOIA; and receives and
processes requests for records under FOIA. The FOIA Officer is
responsible for determining which of USPTO's records are required to be
made available for public inspection and copying, and for making those
records available in USPTO's reference and records inspection facility.
The FOIA Officer shall maintain and make available for public inspection
and copying a current subject-matter index
[[Page 530]]
of USPTO's public inspection facility records. Each index shall be
updated regularly, at least quarterly, with respect to newly included
records. In accordance with 5 U.S.C. 552(a)(2), USPTO has determined
that it is unnecessary and impracticable to publish quarterly, or more
frequently, and distribute copies of the index and supplements thereto.
The public reference facility is located in the Public Search Room,
Madison Building East, First Floor, 600 Dulany Street, Alexandria,
Virginia.
(b) The FOIA Officer shall also make public inspection facility
records created by USPTO on or after November 1, 1996, available
electronically through USPTO's World Wide Web site (http://
www.uspto.gov). Information available at the site shall include:
(1) The FOIA Officer's index of the public inspection facility
records, which indicates which records are available electronically; and
(2) The general index referred to in paragraph (c)(3) of this
section.
(c) USPTO maintains and makes available for public inspection and
copying:
(1) A current index providing identifying information for the public
as to any matter that is issued, adopted, or promulgated after July 4,
1967, and that is retained as a record and is required to be made
available or published. Copies of the index are available upon request
after payment of the direct cost of duplication;
(2) Copies of records that have been released and that the FOIA
Officer determines, because of their subject matter, have become or are
likely to become the subject of subsequent requests for substantially
the same records;
(3) A general index of the records described in paragraph (c)(2) of
this section;
(4) Final opinions and orders, including concurring and dissenting
opinions made in the adjudication of cases;
(5) Those statements of policy and interpretations that have been
adopted by USPTO and are not published in the Federal Register; and
(6) Administrative staff manuals and instructions to staff that
affect a member of the public.
[65 FR 52917, Aug. 31, 2000, as amended at 75 FR 36295, June 25, 2010]
Sec.102.3 Records under FOIA.
(a) Records under FOIA include all Government records, regardless of
format, medium or physical characteristics, and include electronic
records and information, audiotapes, videotapes, and photographs.
(b) There is no obligation to create, compile, or obtain from
outside USPTO a record to satisfy a FOIA request. With regard to
electronic data, the issue of whether records are created or merely
extracted from an existing database is not always apparent. When
responding to FOIA requests for electronic data where creation of a
record or programming becomes an issue, USPTO shall undertake reasonable
efforts to search for the information in electronic format.
(c) USPTO officials may, upon request, create and provide new
information pursuant to user fee statutes, such as the first paragraph
of 15 U.S.C. 1525, or in accordance with authority otherwise provided by
law. This is outside the scope of FOIA.
(d) The FOIA Officer shall preserve all correspondence pertaining to
the requests received under this subpart, as well as copies of all
requested records, until disposition or destruction is authorized by
Title 44 of the United States Code or a National Archives and Records
Administration's General Records Schedule. The FOIA Officer shall not
dispose of records while they are the subject of a pending request,
appeal, or lawsuit under FOIA.
Sec.102.4 Requirements for making requests.
(a) A request for USPTO records that are not customarily made
available to the public as part of USPTO's regular informational
services must be in writing, and shall be processed under FOIA,
regardless of whether FOIA is mentioned in the request. Requests should
be sent to the USPTO FOIA Officer, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA
requires
[[Page 531]]
to be made regularly available for public inspection and copying are
addressed in Sec.102.2(c)). For the quickest handling, the request
letter and envelope should be marked ``Freedom of Information Act
Request.'' For requests for records about oneself, Sec.102.24 contains
additional requirements. For requests for records about another
individual, either a written authorization signed by that individual
permitting disclosure of those records to the requester or proof that
individual is deceased (for example, a copy of a death certificate or an
obituary) facilitates processing the request.
(b) The records requested must be described in enough detail to
enable USPTO personnel to locate them with a reasonable amount of
effort. Whenever possible, a request should include specific information
about each record sought, such as the date, title or name, author,
recipient, and subject matter of the record, and the name and location
of the office where the record is located. Also, if records about a
court case are sought, the title of the case, the court in which the
case was filed, and the nature of the case should be included. If known,
any file designations or descriptions for the requested records should
be included. In general, the more specifically the request describes the
records sought, the greater the likelihood that USPTO will locate those
records. If the FOIA Officer determines that a request does not
reasonably describe records, the FOIA Officer will inform the requester
what additional information is needed or why the request is otherwise
insufficient. The FOIA Officer also may give the requester an
opportunity to discuss the request so that it may be modified to meet
the requirements of this section.
[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003]
Sec.102.5 Responsibility for responding to requests.
(a) In general. Except as stated in paragraph (b) of this section,
the USPTO will process FOIA requests directed to USPTO. In determining
records responsive to a request, the FOIA Officer shall include only
those records within USPTO's possession and control as of the date the
FOIA Officer receives the request.
(b) Consultations and referrals. If the FOIA Officer receives a
request for a record in USPTO's possession in which another Federal
agency subject to FOIA has the primary interest, the FOIA Officer shall
refer the record to that agency for direct response to the requester.
The FOIA Officer shall consult with another Federal agency before
responding to a requester if the FOIA Officer receives a request for a
record in which another Federal agency subject to FOIA has a significant
interest, but not the primary interest; or another Federal agency not
subject to FOIA has the primary interest or a significant interest.
Ordinarily, the agency that originated a record will be presumed to have
the primary interest in it.
(c) Notice of referral. Whenever a FOIA Officer refers a document to
another Federal agency for direct response to the requester, the FOIA
Officer will ordinarily notify the requester in writing of the referral
and inform the requester of the name of the agency to which the document
was referred.
(d) Timing of responses to consultations and referrals. All
consultations and referrals shall be handled according to the date the
FOIA request was received by the first Federal agency.
(e) Agreements regarding consultations and referrals. The FOIA
Officer may make agreements with other Federal agencies to eliminate the
need for consultations or referrals for particular types of records.
Sec.102.6 Time limits and expedited processing.
(a) In general. The FOIA Officer ordinarily shall respond to
requests according to their order of receipt.
(b) Initial response and appeal. Subject to paragraph (c)(1) of this
section, an initial response shall be made within 20 working days (i.e.,
excluding Saturdays, Sundays, and legal public holidays) of the receipt
of a request for a record under this part by the proper FOIA Officer
identified in accordance with Sec.102.5(a), and an appeal shall be
decided within 20 working days of its receipt by the Office of the
General Counsel.
[[Page 532]]
(c) Unusual circumstances. (1) In unusual circumstances as specified
in paragraph (c)(2) of this section, the FOIA Officer may extend the
time limits in paragraph (b) of this section by notifying the requester
in writing as soon as practicable of the unusual circumstances and of
the date by which processing of the request is expected to be completed.
Extensions of time for the initial determination and extensions on
appeal may not exceed a total of ten working days, unless the requester
agrees to a longer extension, or the FOIA Officer provides the requester
with an opportunity either to limit the scope of the request so that it
may be processed within the applicable time limit, or to arrange an
alternative time frame for processing the request or a modified request.
(2) As used in this section, unusual circumstances means, but only
to the extent reasonably necessary to properly process the particular
request:
(i) The need to search for and collect the requested records from
field facilities or other establishments separate from the office
processing the request;
(ii) The need to search for, collect, and appropriately examine a
voluminous amount of separate and distinct records that are the subject
of a single request; or
(iii) The need for consultation, which shall be conducted with all
practicable speed, with another Federal agency having a substantial
interest in the determination of the request.
(3) Unusual circumstances do not include a delay that results from a
predictable workload of requests, unless USPTO demonstrates reasonable
progress in reducing its backlog of pending requests. Refusal to
reasonably modify the scope of a request or arrange an alternate time
frame may affect a requester's ability to obtain judicial review.
(4) If the FOIA Officer reasonably believes that multiple requests
submitted by a requester, or by a group of requesters acting in concert,
constitute a single request that would otherwise involve unusual
circumstances, and the requests involve clearly related matters, the
FOIA Officer may aggregate them. Multiple requests involving unrelated
matters will not be aggregated.
(d) Multitrack processing. (1) The FOIA Officer may use two or more
processing tracks by distinguishing between simple and more complex
requests based on the number of pages involved, or some other measure of
the amount of work and/or time needed to process the request, and
whether the request qualifies for expedited processing as described in
paragraph (e) of this section.
(2) The FOIA Officer may provide requesters in a slower track with
an opportunity to limit the scope of their requests in order to qualify
for faster processing. The FOIA Officer may contact the requester by
telephone or by letter, whichever is most efficient in each case.
(e) Expedited processing. (1) Requests and appeals shall be taken
out of order and given expedited treatment whenever it is determined
they involve:
(i) Circumstances in which the lack of expedited treatment could
reasonably be expected to pose an imminent threat to the life or
physical safety of an individual;
(ii) The loss of substantial due process rights;
(iii) A matter of widespread and exceptional media interest in which
there exist questions about the Government's integrity that affect
public confidence; or
(iv) An urgency to inform the public about an actual or alleged
Federal Government activity, if made by a person primarily engaged in
disseminating information.
(2) A request for expedited processing may be made at the time of
the initial request for records or at any later time. For a prompt
determination, a request for expedited processing should be sent to the
FOIA Officer.
(3) A requester who seeks expedited processing must submit a
statement, certified to be true and correct to the best of that person's
knowledge and belief, explaining in detail the basis for requesting
expedited processing. For example, a requester within the category
described in paragraph (e)(1)(iv) of this section, if not a full-time
member of the news media, must establish that he or she is a person
whose main professional activity or occupation is information
dissemination, though it need not be his or her sole occupation.
[[Page 533]]
A requester within the category described in paragraph (e)(1)(iv) of
this section must also establish a particular urgency to inform the
public about the Government activity involved in the request, beyond the
public's right to know about Government activity generally. The
formality of certification may be waived as a matter of administrative
discretion.
(4) Within ten calendar days of receipt of a request for expedited
processing, the FOIA Officer will decide whether to grant it and shall
notify the requester of the decision. If a request for expedited
treatment is granted, the request shall be given priority and processed
as soon as practicable. If a request for expedited processing is denied,
any appeal of that decision shall be acted on expeditiously.
Sec.102.7 Responses to requests.
(a) Grants of requests. If the FOIA Officer makes a determination to
grant a request in whole or in part, the FOIA Officer will notify the
requester in writing. The FOIA Officer will inform the requester in the
notice of any fee charged under Sec.102.11 and disclose records to the
requester promptly upon payment of any applicable fee. Records disclosed
in part shall be marked or annotated to show each applicable FOIA
exemption and the amount of information deleted, unless doing so would
harm an interest protected by an applicable exemption. The location of
the information deleted shall also be indicated on the record, if
feasible.
(b) Adverse determinations of requests. If the FOIA Officer makes an
adverse determination regarding a request, the FOIA Officer will notify
the requester of that determination in writing. An adverse determination
is a denial of a request in any respect, namely: A determination to
withhold any requested record in whole or in part; a determination that
a requested record does not exist or cannot be located; a determination
that a record is not readily reproducible in the form or format sought
by the requester; a determination that what has been requested is not a
record subject to FOIA (except that a determination under Sec.
102.11(j) that records are to be made available under a fee statute
other than FOIA is not an adverse determination); a determination
against the requester on any disputed fee matter, including a denial of
a request for a fee waiver; or a denial of a request for expedited
treatment. Each denial letter shall be signed by the FOIA Officer and
shall include:
(1) The name and title or position of the denying official;
(2) A brief statement of the reason(s) for the denial, including
applicable FOIA exemption(s);
(3) An estimate of the volume of records or information withheld, in
number of pages or some other reasonable form of estimation. This
estimate need not be provided if the volume is otherwise indicated
through deletions on records disclosed in part, or if providing an
estimate would harm an interest protected by an applicable FOIA
exemption; and
(4) A statement that the denial may be appealed, and a list of the
requirements for filing an appeal under Sec.102.10(b).
Sec.102.9 Business Information.
(a) In general. Business information obtained by USPTO from a
submitter will be disclosed under FOIA only under this section.
(b) Definitions. For the purposes of this section:
(1) Business information means commercial or financial information,
obtained by USPTO from a submitter, which may be protected from
disclosure under FOIA exemption 4 (5 U.S.C. 552(b)(4)).
(2) Submitter means any person or entity outside the Federal
Government from whom USPTO obtains business information, directly or
indirectly. The term includes corporations; state, local and tribal
governments; and foreign governments.
(c) Designation of business information. A submitter of business
information should designate by appropriate markings, either at the time
of submission or at a reasonable time thereafter, any portions of its
submission that it considers to be protected from disclosure under FOIA
exemption 4. These designations will expire ten years after the date of
the submission unless the
[[Page 534]]
submitter requests, and provides justification for, a longer designation
period.
(d) Notice to submitters. The FOIA Officer shall provide a submitter
with prompt written notice of a FOIA request or administrative appeal
that seeks its business information whenever required under paragraph
(e) of this section, except as provided in paragraph (h) of this
section, in order to give the submitter an opportunity under paragraph
(f) of this section to object to disclosure of any specified portion of
that information. Such written notice shall be sent via certified mail,
return receipt requested, or similar means. The notice shall either
describe the business information requested or include copies of the
requested records containing the information. When notification of a
large number of submitters is required, notification may be made by
posting or publishing the notice in a place reasonably likely to
accomplish notification.
(e) When notice is required. Notice shall be given to the submitter
whenever:
(1) The information has been designated in good faith by the
submitter as protected from disclosure under FOIA exemption 4; or
(2) The FOIA Officer has reason to believe that the information may
be protected from disclosure under FOIA exemption 4.
(f) Opportunity to object to disclosure. The FOIA Officer shall
allow a submitter seven working days (i.e., excluding Saturdays,
Sundays, and legal public holidays) from the date of receipt of the
written notice described in paragraph (d) of this section to provide the
FOIA Officer with a detailed statement of any objection to disclosure.
The statement must specify all grounds for withholding any portion of
the information under any exemption of FOIA and, in the case of
exemption 4, it must show why the information is a trade secret or
commercial or financial information that is privileged or confidential.
If a submitter fails to respond to the notice within the time specified,
the submitter will be considered to have no objection to disclosure of
the information. Information a submitter provides under this paragraph
may itself be subject to disclosure under FOIA.
(g) Notice of intent to disclose. The FOIA Officer shall consider a
submitter's objections and specific grounds under FOIA for nondisclosure
in deciding whether to disclose business information. If the FOIA
Officer decides to disclose business information over the objection of a
submitter, the FOIA Officer shall give the submitter written notice via
certified mail, return receipt requested, or similar means, which shall
include:
(1) A statement of reason(s) why the submitter's objections to
disclosure were not sustained;
(2) A description of the business information to be disclosed; and
(3) A statement that the FOIA Officer intends to disclose the
information seven working days from the date the submitter receives the
notice.
(h) Exceptions to notice requirements. The notice requirements of
paragraphs (d) and (g) of this section shall not apply if:
(1) The FOIA Officer determines that the information should not be
disclosed;
(2) The information has been lawfully published or has been
officially made available to the public;
(3) Disclosure of the information is required by statute (other than
FOIA) or by a regulation issued in accordance with Executive Order
12600; or
(4) The designation made by the submitter under paragraph (c) of
this section appears obviously frivolous, in which case the FOIA Officer
shall provide the submitter written notice of any final decision to
disclose the information seven working days from the date the submitter
receives the notice.
(i) Notice of FOIA lawsuit. Whenever a requester files a lawsuit
seeking to compel the disclosure of business information, the FOIA
Officer shall promptly notify the submitter.
(j) Corresponding notice to requesters. Whenever a FOIA Officer
provides a submitter with notice and an opportunity to object to
disclosure under paragraph (d) of this section, the FOIA Officer shall
also notify the requester(s). Whenever a submitter files
[[Page 535]]
a lawsuit seeking to prevent the disclosure of business information, the
FOIA Officer shall notify the requester(s).
Sec.102.10 Appeals from initial determinations or untimely delays.
(a) If a request for records is initially denied in whole or in
part, or has not been timely determined, or if a requester receives an
adverse initial determination regarding any other matter under this
subpart (as described in Sec.102.7(b)), the requester may file a
written appeal, which must be received by the Office of General Counsel
within thirty calendar days of the date of the written denial or, if
there has been no determination, may be submitted anytime after the due
date, including the last extension under Sec.102.6(c), of the
determination.
(b) Appeals shall be decided by a Deputy General Counsel. Appeals
should be addressed to the General Counsel, United States Patent and
Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450. Both the
letter and the appeal envelope should be clearly marked ``Freedom of
Information Appeal''. The appeal must include a copy of the original
request and the initial denial, if any, and may include a statement of
the reasons why the records requested should be made available and why
the initial denial, if any, was in error. No opportunity for personal
appearance, oral argument or hearing on appeal is provided.
(c) If an appeal is granted, the person making the appeal shall be
immediately notified and copies of the releasable documents shall be
made available promptly thereafter upon receipt of appropriate fees
determined in accordance with Sec.102.11.
(d) If no determination of an appeal has been sent to the requester
within the twenty-working-day period specified in Sec.102.6(b) or the
last extension thereof, the requester is deemed to have exhausted his
administrative remedies with respect to the request, giving rise to a
right of judicial review under 5 U.S.C. 552(a)(6)(C). If the person
making a request initiates a civil action against USPTO based on the
provision in this paragraph, the administrative appeal process may
continue.
(e) A determination on appeal shall be in writing and, when it
denies records in whole or in part, the letter to the requester shall
include:
(1) A brief explanation of the basis for the denial, including a
list of applicable FOIA exemptions and a description of how the
exemptions apply;
(2) A statement that the decision is final;
(3) Notification that judicial review of the denial is available in
the United States district court for the district in which the requester
resides or has its principal place of business, the United States
District Court for the Eastern District of Virginia, or the District of
Columbia; and
(4) The name and title or position of the official responsible for
denying the appeal.
[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003]
Sec.102.11 Fees.
(a) In general. USPTO shall charge for processing requests under
FOIA in accordance with paragraph (c) of this section, except when fees
are limited under paragraph (d) of this section or when a waiver or
reduction of fees is granted under paragraph (k) of this section. USPTO
shall collect all applicable fees before sending copies of requested
records to a requester. Requesters must pay fees by check or money order
made payable to the Treasury of the United States.
(b) Definitions. For purposes of this section:
(1) Commercial use request means a request from or on behalf of a
person who seeks information for a use or purpose that furthers his or
her commercial, trade, or profit interests, which can include furthering
those interests through litigation. The FOIA Officer shall determine,
whenever reasonably possible, the use to which a requester will put the
requested records. When it appears that the requester will put the
records to a commercial use, either because of the nature of the request
itself or because the FOIA Officer has reasonable cause to doubt a
requester's stated use, the FOIA Officer shall provide the requester a
reasonable opportunity to submit further clarification.
[[Page 536]]
(2) Direct costs means those expenses USPTO incurs in searching for
and duplicating (and, in the case of commercial use requests, reviewing)
records to respond to a FOIA request. Direct costs include, for example,
the labor costs of the employee performing the work (the basic rate of
pay for the employee, plus 16 percent of that rate to cover benefits).
Not included in direct costs are overhead expenses such as the costs of
space and heating or lighting of the facility in which the records are
kept.
(3) Duplication means the making of a copy of a record, or of the
information contained in it, necessary to respond to a FOIA request.
Copies may take the form of paper, microform, audiovisual materials, or
electronic records (for example, magnetic tape or disk), among others.
The FOIA Officer shall honor a requester's specified preference of form
or format of disclosure if the record is readily reproducible with
reasonable efforts in the requested form or format.
(4) Educational institution means a preschool, a public or private
elementary or secondary school, an institution of undergraduate higher
education, an institution of graduate higher education, an institution
of professional education, or an institution of vocational education,
that operates a program of scholarly research. To be in this category, a
requester must show that the request is authorized by and is made under
the auspices of a qualifying institution, and that the records are
sought to further scholarly research rather than for a commercial use.
(5) Noncommercial scientific institution means an institution that
is not operated on a ``commercial'' basis, as that term is defined in
paragraph (b)(1) of this section, and that is operated solely for the
purpose of conducting scientific research, the results of which are not
intended to promote any particular product or industry. To be in this
category, a requester must show that the request is authorized by and is
made under the auspices of a qualifying institution and that the records
are sought to further scientific research rather than for a commercial
use.
(6) Representative of the news media, or news media requester means
any person actively gathering news for an entity that is organized and
operated to publish or broadcast news to the public. The term ``news''
means information that is about current events or that would be of
current interest to the public. Examples of news media entities include
television or radio stations broadcasting to the public at large and
publishers of periodicals (but only if they can qualify as disseminators
of ``news'') that make their products available for purchase or
subscription by the general public. For ``freelance'' journalists to be
regarded as working for a news organization, they must demonstrate a
solid basis for expecting publication through that organization. A
publication contract would be the clearest proof, but the FOIA Officer
shall also look to the past publication record of a requester in making
this determination. To be in this category, a requester must not be
seeking the requested records for a commercial use. However, a request
for records supporting the news-dissemination function of the requester
shall not be considered to be for a commercial use.
(7) Review means the examination of a record located in response to
a request in order to determine whether any portion of it is exempt from
disclosure. It also includes processing any record for disclosure--for
example, doing all that is necessary to redact it and prepare it for
disclosure. Review costs are recoverable even if a record ultimately is
not disclosed. Review time does not include time spent resolving general
legal or policy issues regarding the application of exemptions.
(8) Search means the process of looking for and retrieving records
or information responsive to a request. It includes page-by-page or
line-by-line identification of information within records and also
includes reasonable efforts to locate and retrieve information from
records maintained in electronic form or format. The FOIA Officer shall
ensure that searches are done in the most efficient and least expensive
manner reasonably possible.
(c) Fees. In responding to FOIA requests, the FOIA Officer shall
charge the fees summarized in chart form in paragraphs (c)(1) and (c)(2)
of this section and explained in paragraphs (c)(3) through (c)(5) of
this section, unless a
[[Page 537]]
waiver or reduction of fees has been granted under paragraph (k) of this
section.
(1) The four categories and chargeable fees are:
------------------------------------------------------------------------
Category Chargeable fees
------------------------------------------------------------------------
(i) Commercial Use Requesters.......... Search, Review, and
Duplication.
(ii) Educational and Non-commercial Duplication (excluding the cost
Scientific Institution Requesters. of the first 100 pages).
(iii) Representatives of the News Media Duplication (excluding the cost
of the first 100 pages).
(iv) All Other Requesters.............. Search and Duplication
(excluding the cost of the
first 2 hours of search and
100 pages).
------------------------------------------------------------------------
(2) Uniform fee schedule.
------------------------------------------------------------------------
Service Rate
------------------------------------------------------------------------
(i) Manual search...................... Actual salary rate of employee
involved, plus 16 percent of
salary rate.
(ii) Computerized search............... Actual direct cost, including
operator time.
(iii) Duplication of records:
(A) Paper copy reproduction............ $.15 per page
(B) Other reproduction (e.g., computer Actual direct cost, including
disk or printout, microfilm, operator time.
microfiche, or microform).
(iv) Review of records (includes Actual salary rate of employee
preparation for release, i.e. conducting review, plus 16
excising). percent of salary rate.
------------------------------------------------------------------------
(3) Search. (i) Search fees shall be charged for all requests--other
than requests made by educational institutions, noncommercial scientific
institutions, or representatives of the news media--subject to the
limitations of paragraph (d) of this section. The FOIA Officer will
charge for time spent searching even if no responsive records are
located or if located records are entirely exempt from disclosure.
Search fees shall be the direct costs of conducting the search by the
involved employees.
(ii) For computer searches of records, requesters will be charged
the direct costs of conducting the search, although certain requesters
(as provided in paragraph (d)(1) of this section) will be charged no
search fee and certain other requesters (as provided in paragraph (d)(3)
of this section) are entitled to the cost equivalent of two hours of
manual search time without charge. These direct costs include the costs,
attributable to the search, of operating a central processing unit and
operator/programmer salary.
(4) Duplication. Duplication fees will be charged to all requesters,
subject to the limitations of paragraph (d) of this section. For a paper
photocopy of a record (no more than one copy of which need be supplied),
the fee shall be $.15 cents per page. For copies produced by computer,
such as tapes or printouts, the FOIA Officer shall charge the direct
costs, including operator time, of producing the copy. For other forms
of duplication, the FOIA Officer will charge the direct costs of that
duplication.
(5) Review. Review fees shall be charged to requesters who make a
commercial use request. Review fees shall be charged only for the
initial record review--the review done when the FOIA Officer determines
whether an exemption applies to a particular record at the initial
request level. No charge will be made for review at the administrative
appeal level for an exemption already applied. However, records withheld
under an exemption that is subsequently determined not to apply may be
reviewed again to determine whether any other exemption not previously
considered applies, and the costs of that review are chargeable. Review
fees shall be the direct costs of conducting the review by the involved
employees.
(d) Limitations on charging fees. (1) No search fee will be charged
for requests by educational institutions, noncommercial scientific
institutions, or representatives of the news media.
[[Page 538]]
(2) No search fee or review fee will be charged for a quarter-hour
period unless more than half of that period is required for search or
review.
(3) Except for requesters seeking records for a commercial use, the
FOIA Officer will provide without charge:
(i) The first 100 pages of duplication (or the cost equivalent); and
(ii) The first two hours of search (or the cost equivalent).
(4) Whenever a total fee calculated under paragraph (c) of this
section is $20.00 or less for any request, no fee will be charged.
(5) The provisions of paragraphs (d) (3) and (4) of this section
work together. This means that for requesters other than those seeking
records for a commercial use, no fee will be charged unless the cost of
the search in excess of two hours plus the cost of duplication in excess
of 100 pages totals more than $20.00.
(e) Notice of anticipated fees over $20.00. When the FOIA Officer
determines or estimates that the fees to be charged under this section
will be more than $20.00, the FOIA Officer shall notify the requester of
the actual or estimated fees, unless the requester has indicated a
willingness to pay fees as high as those anticipated. If only a portion
of the fee can be estimated readily, the FOIA Officer shall advise the
requester that the estimated fee may be only a portion of the total fee.
If the FOIA Officer has notified a requester that actual or estimated
fees are more than $20.00, the FOIA Officer shall not consider the
request received or process it further until the requester agrees to pay
the anticipated total fee. Any such agreement should be in writing. A
notice under this paragraph shall offer the requester an opportunity to
discuss the matter with USPTO personnel in order to reformulate the
request to meet the requester's needs at a lower cost.
(f) Charges for other services. Apart from the other provisions of
this section, the FOIA Officer shall ordinarily charge the direct cost
of special services. Such special services could include certifying that
records are true copies or sending records by other than ordinary mail.
(g) Charging interest. The FOIA Officer shall charge interest on any
unpaid bill starting on the 31st calendar day following the date of
billing the requester. Interest charges shall be assessed at the rate
provided in 31 U.S.C. 3717 and accrue from the date of the billing until
payment is received by the FOIA Officer. The FOIA Officer shall follow
the provisions of the Debt Collection Improvement Act of 1996 (Pub. L.
104-134), as amended, and its administrative procedures, including the
use of consumer reporting agencies, collection agencies, and offset.
(h) Aggregating requests. If a FOIA Officer reasonably believes that
a requester or a group of requesters acting together is attempting to
divide a request into a series of requests for the purpose of avoiding
fees, the FOIA Officer may aggregate those requests and charge
accordingly. The FOIA Officer may presume that multiple requests of this
type made within a 30-calendar-day period have been made in order to
avoid fees. If requests are separated by a longer period, the FOIA
Officer shall aggregate them only if a solid basis exists for
determining that aggregation is warranted under all the circumstances
involved. Multiple requests involving unrelated matters shall not be
aggregated.
(i) Advance payments. (1) For requests other than those described in
paragraphs (i)(2) and (3) of this section, the FOIA Officer shall not
require the requester to make an advance payment: a payment made before
work is begun or continued on a request. Payment owed for work already
completed (i.e., a payment before copies are sent to a requester) is not
an advance payment.
(2) If the FOIA Officer determines or estimates that a total fee to
be charged under this section will be more than $250.00, the requester
must pay the entire anticipated fee before beginning to process the
request, unless the FOIA Officer receives a satisfactory assurance of
full payment from a requester who has a history of prompt payment.
(3) If a requester has previously failed to pay a properly charged
FOIA fee to USPTO or another responsible Federal agency within 30
calendar days of the date of billing, the FOIA Officer shall require the
requester to pay the full
[[Page 539]]
amount due, plus any applicable interest, and to make an advance payment
of the full amount of any anticipated fee, before the FOIA Officer
begins to process a new request or continues to process a pending
request from that requester.
(4) In cases in which the FOIA Officer requires payment under
paragraphs (i)(2) or (3) of this section, the request shall not be
considered received and further work will not be done on it until the
required payment is received.
(5) Upon the completion of processing of a request, when a specific
fee is determined to be payable and appropriate notice has been given to
the requester, the FOIA Officer shall make records available to the
requester only upon receipt of full payment of the fee.
(j) Other statutes specifically providing for fees. The fee schedule
of this section does not apply to fees charged under any statute (except
for FOIA) that specifically requires USPTO or another responsible
Federal agency to set and collect fees for particular types of records.
If records responsive to requests are maintained for distribution by
agencies operating such statutorily based fee schedule programs, the
FOIA Officer shall inform requesters of how to obtain records from those
sources.
(k) Requirements for waiver or reduction of fees. (1) Records
responsive to a request will be furnished without charge or at a charge
reduced below that established under paragraph (c) of this section if
the FOIA Officer determines, based on all available information, that
the requester has demonstrated that:
(i) Disclosure of the requested information is in the public
interest because it is likely to contribute significantly to public
understanding of the operations or activities of the Government; and
(ii) Disclosure of the information is not primarily in the
commercial interest of the requester.
(2) To determine whether the first fee waiver requirement is met,
the FOIA Officer shall consider the following factors:
(i) The subject of the request: whether the subject of the requested
records concerns the operations or activities of the Government. The
subject of the requested records must concern identifiable operations or
activities of the Federal Government, with a connection that is direct
and clear, not remote or attenuated.
(ii) The informative value of the information to be disclosed:
whether the disclosure is ``likely to contribute'' to an understanding
of Government operations or activities. The disclosable portions of the
requested records must be meaningfully informative about Government
operations or activities in order to be ``likely to contribute'' to an
increased public understanding of those operations or activities. The
disclosure of information that already is in the public domain, in
either a duplicative or a substantially identical form, would not be
likely to contribute to such understanding.
(iii) The contribution to an understanding of the subject by the
public likely to result from disclosure: whether disclosure of the
requested information will contribute to the understanding of a
reasonably broad audience of persons interested in the subject, as
opposed to the individual understanding of the requester. A requester's
expertise in the subject area and ability and intention to effectively
convey information to the public shall be considered. It shall be
presumed that a representative of the news media satisfies this
consideration. It shall be presumed that a requester who merely provides
information to media sources does not satisfy this consideration.
(iv) The significance of the contribution to public understanding:
whether the disclosure is likely to contribute ``significantly'' to
public understanding of Government operations or activities. The
public's understanding of the subject in question prior to the
disclosure must be significantly enhanced by the disclosure.
(3) To determine whether the second fee waiver requirement is met,
the FOIA Officer shall consider the following factors:
(i) The existence and magnitude of a commercial interest: whether
the requester has a commercial interest that would be furthered by the
requested disclosure. The FOIA Officer shall consider any commercial
interest of the
[[Page 540]]
requester (with reference to the definition of ``commercial use
request'' in paragraph (b)(1) of this section), or of any person on
whose behalf the requester may be acting, that would be furthered by the
requested disclosure. Requesters shall be given an opportunity to
provide explanatory information regarding this consideration.
(ii) The primary interest in disclosure: whether any identified
commercial interest of the requester is sufficiently large, in
comparison with the public interest in disclosure, that disclosure is
``primarily in the commercial interest of the requester.'' A fee waiver
or reduction is justified if the public interest standard (paragraph
(k)(1)(i) of this section) is satisfied and the public interest is
greater than any identified commercial interest in disclosure. The FOIA
Officer ordinarily shall presume that if a news media requester has
satisfied the public interest standard, the public interest is the
primary interest served by disclosure to that requester. Disclosure to
data brokers or others who merely compile and market Government
information for direct economic return shall not be presumed to
primarily serve the public interest.
(4) If only some of the records to be released satisfy the
requirements for a fee waiver, a waiver shall be granted for those
records.
(5) Requests for the waiver or reduction of fees should address the
factors listed in paragraphs (k)(2) and (3) of this section, insofar as
they apply to each request.
Subpart B_Privacy Act
Sec.102.21 Purpose and scope.
(a) The purpose of this subpart is to establish policies and
procedures for implementing the Privacy Act of 1974, as amended (5
U.S.C. 552a) (the Act). The main objectives are to facilitate full
exercise of rights conferred on individuals under the Act and to ensure
the protection of privacy as to individuals on whom USPTO maintains
records in systems of records under the Act. USPTO accepts the
responsibility to act promptly and in accordance with the Act upon
receipt of any inquiry, request or appeal from a citizen of the United
States or an alien lawfully admitted for permanent residence into the
United States, regardless of the age of the individual. Further, USPTO
accepts the obligations to maintain only such information on individuals
as is relevant and necessary to the performance of its lawful functions,
to maintain that information with such accuracy, relevancy, timeliness,
and completeness as is reasonably necessary to assure fairness in
determinations made by USPTO about the individual, to obtain information
from the individual to the extent practicable, and to take every
reasonable step to protect that information from unwarranted disclosure.
USPTO will maintain no record describing how an individual exercises
rights guaranteed by the First Amendment unless expressly authorized by
statute or by the individual about whom the record is maintained or
unless pertinent to and within the scope of an authorized law
enforcement activity. An individual's name and address will not be sold
or rented by USPTO unless such action is specifically authorized by law;
however, this provision shall not be construed to require the
withholding of names and addresses otherwise permitted to be made
public.
(b) This subpart is administered by the Privacy Officer of USPTO.
(c) Matters outside the scope of this subpart include the following:
(1) Requests for records which do not pertain to the individual
making the request, or to the individual about whom the request is made
if the requester is the parent or guardian of the individual;
(2) Requests involving information pertaining to an individual which
is in a record or file but not within the scope of a system of records
notice published in the Federal Register;
(3) Requests to correct a record where a grievance procedure is
available to the individual either by regulation or by provision in a
collective bargaining agreement with USPTO, and the individual has
initiated, or has expressed in writing the intention of initiating, such
grievance procedure. An individual selecting the grievance procedure
waives the use of the procedures in this subpart to correct or amend a
record; and,
[[Page 541]]
(4) Requests for employee-employer services and counseling which
were routinely granted prior to enactment of the Act, including, but not
limited to, test calculations of retirement benefits, explanations of
health and life insurance programs, and explanations of tax withholding
options.
(d) Any request for records which pertains to the individual making
the request, or to the individual about whom the request is made if the
requester is the parent or guardian of the individual, shall be
processed under the Act and this subpart and under the Freedom of
Information Act and USPTO's implementing regulations at Subpart A of
this part, regardless whether the Act or the Freedom of Information Act
is mentioned in the request.
Sec.102.22 Definitions.
(a) All terms used in this subpart which are defined in 5 U.S.C.
552a shall have the same meaning herein.
(b) As used in this subpart:
(1) Act means the ``Privacy Act of 1974, as amended (5 U.S.C.
552a)''.
(2) Appeal means a request by an individual to review and reverse an
initial denial of a request by that individual for correction or
amendment.
(3) USPTO means the United States Patent and Trademark Office.
(4) Inquiry means either a request for general information regarding
the Act and this subpart or a request by an individual (or that
individual's parent or guardian) that USPTO determine whether it has any
record in a system of records which pertains to that individual.
(5) Person means any human being and also shall include but not be
limited to, corporations, associations, partnerships, trustees,
receivers, personal representatives, and public or private
organizations.
(6) Privacy Officer means a USPTO employee designated to administer
this subpart.
(7) Request for access means a request by an individual or an
individual's parent or guardian to see a record which is in a particular
system of records and which pertains to that individual.
(8) Request for correction or amendment means the request by an
individual or an individual's parent or guardian that USPTO change
(either by correction, amendment, addition or deletion) a particular
record in a system of records which pertains to that individual.
Sec.102.23 Procedures for making inquiries.
(a) Any individual, regardless of age, who is a citizen of the
United States or an alien lawfully admitted for permanent residence into
the United States may submit an inquiry to USPTO. The inquiry should be
made either in person at 10B20, Madison Building East, 600 Dulany
Street, Alexandria, Virginia, or by mail addressed to the Privacy
Officer, United States Patent and Trademark Office, P.O. Box 1450,
Alexandria, Virginia 22313-1450, or to the official identified in the
notification procedures paragraph of the systems of records notice
published in the Federal Register. If an individual believes USPTO
maintains a record pertaining to that individual but does not know which
system of records might contain such a record, the USPTO Privacy Officer
will provide assistance in person or by mail.
(b) Inquiries submitted by mail should include the words ``PRIVACY
ACT INQUIRY'' in capital letters at the top of the letter and on the
face of the envelope. If the inquiry is for general information
regarding the Act and this subpart, no particular information is
required. USPTO reserves the right to require compliance with the
identification procedures appearing at Sec.102.24(d) where
circumstances warrant. If the inquiry is a request that USPTO determine
whether it has, in a given system of records, a record which pertains to
the individual, the following information should be submitted:
(1) Name of individual whose record is sought;
(2) Individual whose record is sought is either a U.S. citizen or an
alien lawfully admitted for permanent residence;
(3) Identifying data that will help locate the record (for example,
maiden name, occupational license number, period or place of employment,
etc.);
(4) Record sought, by description and by record system name, if
known;
[[Page 542]]
(5) Action requested (that is, sending information on how to
exercise rights under the Act; determining whether requested record
exists; gaining access to requested record; or obtaining copy of
requested record);
(6) Copy of court guardianship order or minor's birth certificate,
as provided in Sec.102.24(f)(3), but only if requester is guardian or
parent of individual whose record is sought;
(7) Requester's name (printed), signature, address, and telephone
number (optionan( �
(8) Date; and,
(9) Certification of request by notary or other official, but only
if
(i) Request is for notification that requested record exists, for
access to requested record or for copy of requested record;
(ii) Record is not available to any person under 5 U.S.C. 552; and
(iii) Requester does not appear before an employee of USPTO for
verification of identity.
(c) Any inquiry which is not addressed as specified in paragraph (a)
of this section or which is not marked as specified in paragraph (b) of
this section will be so addressed and marked by USPTO personnel and
forwarded immediately to the Privacy Officer. An inquiry which is not
properly addressed by the individual will not be deemed to have been
``received'' for purposes of measuring the time period for response
until actual receipt by the Privacy Officer. In each instance when an
inquiry so forwarded is received, the Privacy Officer shall notify the
individual that his or her inquiry was improperly addressed and the date
the inquiry was received at the proper address.
(d)(1) Each inquiry received shall be acted upon promptly by the
Privacy Officer. Every effort will be made to respond within ten working
days (i.e., excluding Saturdays, Sundays and legal public holidays) of
the date of receipt. If a response cannot be made within ten working
days, the Privacy Officer shall send an acknowledgment during that
period providing information on the status of the inquiry and asking for
such further information as may be necessary to process the inquiry. The
first correspondence sent by the Privacy Officer to the requester shall
contain USPTO's control number assigned to the request, as well as a
note that the requester should use that number in all future contacts in
order to facilitate processing. USPTO shall use that control number in
all subsequent correspondence.
(2) If the Privacy Officer fails to send an acknowledgment within
ten working days, as provided above, the requester may ask the General
Counsel to take corrective action. No failure of the Privacy Officer to
send an acknowledgment shall confer administrative finality for purposes
of judicial review.
(e) An individual shall not be required to state a reason or
otherwise justify his or her inquiry.
(f) Special note should be taken of the fact that certain agencies
are responsible for publishing notices of systems of records having
Government-wide application to other agencies, including USPTO. The
agencies known to be publishing these general notices and the types of
records covered therein appear in an appendix to this part. The
provisions of this section, and particularly paragraph (a) of this
section, should be followed in making inquiries with respect to such
records. Such records in USPTO are subject to the provisions of this
part to the extent indicated in the appendix to this part. The
exemptions, if any, determined by an agency publishing a general notice
shall be invoked and applied by USPTO after consultation, as necessary,
with that other agency.
[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003;
70 FR 10489, Mar. 4, 2005]
Sec.102.24 Procedures for making requests for records.
(a) Any individual, regardless of age, who is a citizen of the
United States or an alien lawfully admitted for permanent residence into
the United States may submit a request to the USPTO for access to
records. The request should be made either in person at 10B20, Madison
Building East, 600 Dulany Street, Alexandria, Virginia, or by mail
addressed to the Privacy Officer, United States Patent and Trademark
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
[[Page 543]]
(b) Requests submitted by mail should include the words ``PRIVACY
ACT REQUEST'' in capital letters at the top of the letter and on the
face of the envelope. Any request which is not addressed as specified in
paragraph (a) of this section or which is not marked as specified in
this paragraph will be so addressed and marked by USPTO personnel and
forwarded immediately to the Privacy Officer. A request which is not
properly addressed by the individual will not be deemed to have been
``received'' for purposes of measuring time periods for response until
actual receipt by the Privacy Officer. In each instance when a request
so forwarded is received, the Privacy Officer shall notify the
individual that his or her request was improperly addressed and the date
when the request was received at the proper address.
(c) If the request follows an inquiry under Sec.102.23 in
connection with which the individual's identity was established by
USPTO, the individual need only indicate the record to which access is
sought, provide the USPTO control number assigned to the request, and
sign and date the request. If the request is not preceded by an inquiry
under Sec.102.23, the procedures of this section should be followed.
(d) The requirements for identification of individuals seeking
access to records are as follows:
(1) In person. Each individual making a request in person shall be
required to present satisfactory proof of identity. The means of proof,
in the order of preference and priority, are:
(i) A document bearing the individual's photograph (for example,
driver's license, passport or military or civilian identification card);
(ii) A document, preferably issued for participation in a federally
sponsored program, bearing the individual's signature (for example,
unemployment insurance book, employer's identification card, national
credit card, and professional, craft or union membership card); and
(iii) A document bearing neither the photograph nor the signature of
the individual, preferably issued for participation in a federally
sponsored program (for example, Medicaid card). In the event the
individual can provide no suitable documentation of identity, USPTO will
require a signed statement asserting the individual's identity and
stipulating that the individual understands the penalty provision of 5
U.S.C. 552a(i)(3) recited in Sec.102.32(a). In order to avoid any
unwarranted disclosure of an individual's records, USPTO reserves the
right to determine the adequacy of proof of identity offered by any
individual, particularly when the request involves a sensitive record.
(2) Not in person. If the individual making a request does not
appear in person before the Privacy Officer or other employee authorized
to determine identity, a certification of a notary public or equivalent
officer empowered to administer oaths must accompany the request under
the circumstances prescribed in Sec.102.23(b)(9). The certification in
or attached to the letter must be substantially in accordance with the
following text:
City of ________
County of ________ :ss
(Name of individual), who affixed (his) (her) signature below in my
presence, came before me, a (title), in and for the aforesaid County and
State, this ______ day of ______, 20__, and established (his) (her)
identity to my satisfaction.
My commission expires ________.
(Signature)
(3) Parents of minors and legal guardians. An individual acting as
the parent of a minor or the legal guardian of the individual to whom a
record pertains shall establish his or her personal identity in the same
manner prescribed in either paragraph (d)(1) or (d)(2) of this section.
In addition, such other individual shall establish his or her identity
in the representative capacity of parent or legal guardian. In the case
of the parent of a minor, the proof of identity shall be a certified or
authenticated copy of the minor's birth certificate. In the case of a
legal guardian of an individual who has been declared incompetent due to
physical or mental incapacity or age by a court of competent
jurisdiction, the proof of identity shall be a certified or
authenticated copy of the court's order. For purposes of the Act, a
parent or legal guardian may represent only a living individual, not a
decedent. A parent or legal guardian may be accompanied
[[Page 544]]
during personal access to a record by another individual, provided the
provisions of Sec.102.25(f) are satisfied.
(e) When the provisions of this subpart are alleged to impede an
individual in exercising his or her right to access, USPTO will
consider, from an individual making a request, alternative suggestions
regarding proof of identity and access to records.
(f) An individual shall not be required to state a reason or
otherwise justify his or her request for access to a record.
[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14338, Mar. 25, 2003;
70 FR 10490, Mar. 4, 2005]
Sec.102.25 Disclosure of requested records to individuals.
(a)(1) The Privacy Officer shall act promptly upon each request.
Every effort will be made to respond within ten working days (i.e.,
excluding Saturdays, Sundays, and legal public holidays) of the date of
receipt. If a response cannot be made within ten working days due to
unusual circumstances, the Privacy Officer shall send an acknowledgment
during that period providing information on the status of the request
and asking for any further information that may be necessary to process
the request. ``Unusual circumstances'' shall include circumstances in
which
(i) A search for and collection of requested records from inactive
storage, field facilities or other establishments is required;
(ii) A voluminous amount of data is involved;
(iii) Information on other individuals must be separated or expunged
from the particular record; or
(iv) Consultations with other agencies having a substantial interest
in the determination of the request are necessary.
(2) If the Privacy Officer fails to send an acknowledgment within
ten working days, as provided above in paragraph (a) of this section,
the requester may ask the General Counsel to take corrective action. No
failure of the Privacy Officer to send an acknowledgment shall confer
administrative finality for purposes of judicial review.
(b) Grant of access--(1) Notification. An individual shall be
granted access to a record pertaining to him or her, except where the
provisions of paragraph (g)(1) of this section apply. The Privacy
Officer will notify the individual of a determination to grant access,
and provide the following information:
(i) The methods of access, as set forth in paragraph (b)(2) of this
section;
(ii) The place at which the record may be inspected;
(iii) The earliest date on which the record may be inspected and the
period of time that the records will remain available for inspection. In
no event shall the earliest date be later than thirty calendar days from
the date of notification;
(iv) The estimated date by which a copy of the record could be
mailed and the estimate of fees pursuant to Sec.102.31. In no event
shall the estimated date be later than thirty calendar days from the
date of notification;
(v) The fact that the individual, if he or she wishes, may be
accompanied by another individual during personal access, subject to the
procedures set forth in paragraph (f) of this section; and,
(vi) Any additional requirements needed to grant access to a
specific record.
(2) Methods of access. The following methods of access to records by
an individual may be available depending on the circumstances of a given
situation:
(i) Inspection in person may be had in a location specified by the
Privacy Officer during business hours;
(ii) Transfer of records to a Federal facility more convenient to
the individual may be arranged, but only if the Privacy Officer
determines that a suitable facility is available, that the individual's
access can be properly supervised at that facility, and that transmittal
of the records to that facility will not unduly interfere with
operations of USPTO or involve unreasonable costs, in terms of both
money and manpower; and
(iii) Copies may be mailed at the request of the individual, subject
to payment of the fees prescribed in Sec.102.31. USPTO, on its own
initiative, may elect to provide a copy by mail, in
[[Page 545]]
which case no fee will be charged the individual.
(c) Access to medical records is governed by the provisions of Sec.
102.26.
(d) USPTO will supply such other information and assistance at the
time of access as to make the record intelligible to the individual.
(e) USPTO reserves the right to limit access to copies and abstracts
of original records, rather than the original records. This election
would be appropriate, for example, when the record is in an automated
data media such as tape or diskette, when the record contains
information on other individuals, and when deletion of information is
permissible under exemptions (for example, 5 U.S.C. 552a(k)(2)). In no
event shall original records of USPTO be made available to the
individual except under the immediate supervision of the Privacy Officer
or the Privacy Officer's designee.
(f) Any individual who requests access to a record pertaining to
that individual may be accompanied by another individual of his or her
choice. ``Accompanied'' includes discussion of the record in the
presence of the other individual. The individual to whom the record
pertains shall authorize the presence of the other individual in
writing. The authorization shall include the name of the other
individual, a specific description of the record to which access is
sought, the USPTO control number assigned to the request, the date, and
the signature of the individual to whom the record pertains. The other
individual shall sign the authorization in the presence of the Privacy
Officer. An individual shall not be required to state a reason or
otherwise justify his or her decision to be accompanied by another
individual during personal access to a record.
(g) Initial denial of access--(1) Grounds. Access by an individual
to a record which pertains to that individual will be denied only upon a
determination by the Privacy Officer that:
(i) The record is exempt under Sec.102.33 or Sec.102.34, or
exempt by determination of another agency publishing notice of the
system of records, as described in Sec.102.23(f);
(ii) The record is information compiled in reasonable anticipation
of a civil action or proceeding;
(iii) The provisions of Sec.102.26 pertaining to medical records
temporarily have been invoked; or
(iv) The individual has unreasonably failed to comply with the
procedural requirements of this part.
(2) Notification. The Privacy Officer shall give notice of denial of
access to records to the individual in writing and shall include the
following information:
(i) The Privacy Officer's name and title or position;
(ii) The date of the denial;
(iii) The reasons for the denial, including citation to the
appropriate section of the Act and this part;
(iv) The individual's opportunities, if any, for further
administrative consideration, including the identity and address of the
responsible official. If no further administrative consideration within
USPTO is available, the notice shall state that the denial is
administratively final; and
(v) If stated to be administratively final within USPTO, the
individual's right to judicial review provided under 5 U.S.C.
552a(g)(1), as limited by 5 U.S.C. 552a(g)(5).
(3) Administrative review. When an initial denial of a request is
issued by the Privacy Officer, the individual's opportunities for
further consideration shall be as follows:
(i) As to denial under paragraph (g)(1)(i) of this section, two
opportunities for further consideration are available in the
alternative:
(A) If the individual contests the application of the exemption to
the records, review procedures in Sec.102.25(g)(3)(ii) shall apply; or
(B) If the individual challenges the exemption itself, the procedure
is a petition for the issuance, amendment, or repeal of a rule under 5
U.S.C. 553(e). If the exemption was determined by USPTO, such petition
shall be filed with the General Counsel. If the exemption was determined
by another agency (as described in Sec.102.23(f)), USPTO will provide
the individual with the name and address of the other agency and any
relief sought by the individual shall be that provided by the
[[Page 546]]
regulations of the other agency. Within USPTO, no such denial is
administratively final until such a petition has been filed by the
individual and disposed of on the merits by the General Counsel.
(ii) As to denial under paragraphs (g)(1)(ii) of this section,
(g)(1)(iv) of this section or (to the limited extent provided in
paragraph (g)(3)(i)(A) of this section) paragraph (g)(1)(i) of this
section, the individual may file for review with the General Counsel, as
indicated in the Privacy Officer's initial denial notification. The
procedures appearing in Sec.102.28 shall be followed by both the
individual and USPTO to the maximum extent practicable.
(iii) As to denial under paragraph (g)(1)(iii) of this section, no
further administrative consideration within USPTO is available because
the denial is not administratively final until expiration of the time
period indicated in Sec.102.26(a).
(h) If a request is partially granted and partially denied, the
Privacy Officer shall follow the appropriate procedures of this section
as to the records within the grant and the records within the denial.
Sec.102.26 Special procedures: Medical records.
(a) No response to any request for access to medical records by an
individual will be issued by the Privacy Officer for a period of seven
working days (i.e., excluding Saturdays, Sundays, and legal public
holidays) from the date of receipt.
(b) USPTO has published as a routine use, for all systems of records
containing medical records, consultations with an individual's physician
or psychologist if, in the sole judgment of USPTO, disclosure could have
an adverse effect upon the individual. The mandatory waiting period set
forth in paragraph (a) of this section will permit exercise of this
routine use in appropriate cases. USPTO will pay no cost of any such
consultation.
(c) In every case of a request by an individual for access to
medical records, the Privacy Officer shall:
(1) Inform the individual of the waiting period prescribed in
paragraph (a) of this section;
(2) Obtain the name and address of the individual's physician and/or
psychologist, if the individual consents to give them;
(3) Obtain specific, written consent for USPTO to consult the
individual's physician and/or psychologist in the event that USPTO
believes such consultation is advisable, if the individual consents to
give such authorization;
(4) Obtain specific, written consent for USPTO to provide the
medical records to the individual's physician or psychologist in the
event that USPTO believes access to the record by the individual is best
effected under the guidance of the individual's physician or
psychologist, if the individual consents to give such authorization; and
(5) Forward the individual's medical record to USPTO's medical
expert for review and a determination on whether consultation with or
transmittal of the medical records to the individual's physician or
psychologist is warranted. If the consultation with or transmittal of
such records to the individual's physician or psychologist is determined
to be warranted, USPTO's medical expert shall so consult or transmit.
Whether or not such a consultation or transmittal occurs, USPTO's
medical officer shall provide instruction to the Privacy Officer
regarding the conditions of access by the individual to his or her
medical records.
(d) If an individual refuses in writing to give the names and
consents set forth in paragraphs (c)(2) through (c)(4) of this section
and USPTO has determined that disclosure could have an adverse effect
upon the individual, USPTO shall give the individual access to said
records by means of a copy, provided without cost to the requester, sent
registered mail return receipt requested.
Sec.102.27 Procedures for making requests for correction or amendment.
(a) Any individual, regardless of age, who is a citizen of the
United States or an alien lawfully admitted for permanent residence into
the United States may submit a request for correction or amendment to
USPTO. The request should be made either in person or by mail addressed
to the Privacy Officer
[[Page 547]]
who processed the individual's request for access to the record, and to
whom is delegated authority to make initial determinations on requests
for correction or amendment. The office of the Privacy Officer is open
to the public between the hours of 9 a.m. and 4 p.m., Monday through
Friday (excluding legal public holidays).
(b) Requests submitted by mail should include the words ``PRIVACY
ACT REQUEST'' in capital letters at the top of the letter and on the
face of the envelope. Any request which is not addressed as specified in
paragraph (a) of this section or which is not marked as specified in
this paragraph will be so addressed and marked by USPTO personnel and
forwarded immediately to the Privacy Officer. A request which is not
properly addressed by the individual will not be deemed to have been
``received'' for purposes of measuring the time period for response
until actual receipt by the Privacy Officer. In each instance when a
request so forwarded is received, the Privacy Officer shall notify the
individual that his or her request was improperly addressed and the date
the request was received at the proper address.
(c) Since the request, in all cases, will follow a request for
access under Sec.102.25, the individual's identity will be established
by his or her signature on the request and use of the USPTO control
number assigned to the request.
(d) A request for correction or amendment should include the
following:
(1) Specific identification of the record sought to be corrected or
amended (for example, description, title, date, paragraph, sentence,
line and words);
(2) The specific wording to be deleted, if any;
(3) The specific wording to be inserted or added, if any, and the
exact place at which to be inserted or added; and
(4) A statement of the basis for the requested correction or
amendment, with all available supporting documents and materials which
substantiate the statement. The statement should identify the criterion
of the Act being invoked, that is, whether the information in the record
is unnecessary, inaccurate, irrelevant, untimely or incomplete.
Sec.102.28 Review of requests for correction or amendment.
(a)(1)(i) Not later than ten working days (i.e., excluding
Saturdays, Sundays and legal public holidays) after receipt of a request
to correct or amend a record, the Privacy Officer shall send an
acknowledgment providing an estimate of time within which action will be
taken on the request and asking for such further information as may be
necessary to process the request. The estimate of time may take into
account unusual circumstances as described in Sec.102.25(a). No
acknowledgment will be sent if the request can be reviewed, processed,
and the individual notified of the results of review (either compliance
or denial) within the ten working days. Requests filed in person will be
acknowledged in writing at the time submitted.
(ii) If the Privacy Officer fails to send the acknowledgment within
ten working days, as provided in paragraph (a)(1)(i) of this section,
the requester may ask the General Counsel to take corrective action. No
failure of the Privacy Officer to send an acknowledgment shall confer
administrative finality for purposes of judicial review.
(2) Promptly after acknowledging receipt of a request, or after
receiving such further information as might have been requested, or
after arriving at a decision within the ten working days, the Privacy
Officer shall either:
(i) Make the requested correction or amendment and advise the
individual in writing of such action, providing either a copy of the
corrected or amended record or a statement as to the means whereby the
correction or amendment was effected in cases where a copy cannot be
provided (for example, erasure of information from a record maintained
only in magnetically recorded computer files); or
(ii) Inform the individual in writing that his or her request is
denied and provide the following information:
(A) The Privacy Officer's name and title or position;
(B) The date of the denial;
[[Page 548]]
(C) The reasons for the denial, including citation to the
appropriate sections of the Act and this subpart; and
(D) The procedures for appeal of the denial as set forth in Sec.
102.29, including the address of the General Counsel.
(3) The term promptly in this section means within thirty working
days (i.e., excluding Saturdays, Sundays, and legal public holidays). If
the Privacy Officer cannot make the determination within thirty working
days, the individual will be advised in writing of the reason therefor
and of the estimated date by which the determination will be made.
(b) Whenever an individual's record is corrected or amended pursuant
to a request by that individual, the Privacy Officer shall be
responsible for notifying all persons and agencies to which the
corrected or amended portion of the record had been disclosed prior to
its correction or amendment, if an accounting of such disclosure
required by the Act was made. The notification shall require a recipient
agency maintaining the record to acknowledge receipt of the
notification, to correct or amend the record, and to apprise any agency
or person to which it had disclosed the record of the substance of the
correction or amendment.
(c) The following criteria will be considered by the Privacy Officer
in reviewing a request for correction or amendment:
(1) The sufficiency of the evidence submitted by the individual;
(2) The factual accuracy of the information;
(3) The relevance and necessity of the information in terms of
purpose for which it was collected;
(4) The timeliness and currency of the information in light of the
purpose for which it was collected;
(5) The completeness of the information in terms of the purpose for
which it was collected;
(6) The degree of risk that denial of the request could unfairly
result in determinations adverse to the individual;
(7) The character of the record sought to be corrected or amended;
and
(8) The propriety and feasibility of complying with the specific
means of correction or amendment requested by the individual.
(d) USPTO will not undertake to gather evidence for the individual,
but does reserve the right to verify the evidence which the individual
submits.
(e) Correction or amendment of a record requested by an individual
will be denied only upon a determination by the Privacy Officer that:
(1) The individual has failed to establish, by a preponderance of
the evidence, the propriety of the correction or amendment in light of
the criteria set forth in paragraph (c) of this section;
(2) The record sought to be corrected or amended is part of the
official record in a terminated judicial, quasi-judicial, or quasi-
legislative proceeding to which the individual was a party or
participant;
(3) The information in the record sought to be corrected or amended,
or the record sought to be corrected or amended, is the subject of a
pending judicial, quasi-judicial, or quasi-legislative proceeding to
which the individual is a party or participant;
(4) The correction or amendment would violate a duly enacted statute
or promulgated regulation; or
(5) The individual has unreasonably failed to comply with the
procedural requirements of this part.
(f) If a request is partially granted and partially denied, the
Privacy Officer shall follow the appropriate procedures of this section
as to the records within the grant and the records within the denial.
Sec.102.29 Appeal of initial adverse determination on correction or
amendment.
(a) When a request for correction or amendment has been denied
initially under Sec.102.28, the individual may submit a written appeal
within thirty working days (i.e., excluding Saturdays, Sundays and legal
public holidays) after the date of the initial denial. When an appeal is
submitted by mail, the postmark is conclusive as to timeliness.
(b) An appeal should be addressed to the General Counsel, United
States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia
22313-1450. An appeal should include the words
[[Page 549]]
``PRIVACY APPEAL'' in capital letters at the top of the letter and on
the face of the envelope. An appeal not addressed and marked as provided
herein will be so marked by USPTO personnel when it is so identified and
will be forwarded immediately to the General Counsel. An appeal which is
not properly addressed by the individual will not be deemed to have been
``received'' for purposes of measuring the time periods in this section
until actual receipt by the General Counsel. In each instance when an
appeal so forwarded is received, the General Counsel shall notify the
individual that his or her appeal was improperly addressed and the date
when the appeal was received at the proper address.
(c) The individual's appeal shall include a statement of the reasons
why the initial denial is believed to be in error and USPTO's control
number assigned to the request. The appeal shall be signed by the
individual. The record which the individual requests be corrected or
amended and all correspondence between the Privacy Officer and the
requester will be furnished by the Privacy Officer who issued the
initial denial. Although the foregoing normally will comprise the entire
record on appeal, the General Counsel may seek additional information
necessary to assure that the final determination is fair and equitable
and, in such instances, disclose the additional information to the
individual to the greatest extent possible, and provide an opportunity
for comment thereon.
(d) No personal appearance or hearing on appeal will be allowed.
(e) The General Counsel shall act upon the appeal and issue a final
determination in writing not later than thirty working days (i.e.,
excluding Saturdays, Sundays and legal public holidays) from the date on
which the appeal is received, except that the General Counsel may extend
the thirty days upon deciding that a fair and equitable review cannot be
made within that period, but only if the individual is advised in
writing of the reason for the extension and the estimated date by which
a final determination will issue. The estimated date should not be later
than the sixtieth working day after receipt of the appeal unless unusual
circumstances, as described in Sec.102.25(a), are met.
(f) If the appeal is determined in favor of the individual, the
final determination shall include the specific corrections or amendments
to be made and a copy thereof shall be transmitted promptly both to the
individual and to the Privacy Officer who issued the initial denial.
Upon receipt of such final determination, the Privacy Officer promptly
shall take the actions set forth in Sec.102.28(a)(2)(i) and (b).
(g) If the appeal is denied, the final determination shall be
transmitted promptly to the individual and state the reasons for the
denial. The notice of final determination also shall inform the
individual of the following:
(1) The right of the individual under the Act to file a concise
statement of reasons for disagreeing with the final determination. The
statement ordinarily should not exceed one page and USPTO reserves the
right to reject a statement of excessive length. Such a statement shall
be filed with the General Counsel. It should provide the USPTO control
number assigned to the request, indicate the date of the final
determination and be signed by the individual. The General Counsel shall
acknowledge receipt of such statement and inform the individual of the
date on which it was received.
(2) The facts that any such disagreement statement filed by the
individual will be noted in the disputed record, that the purposes and
uses to which the statement will be put are those applicable to the
record in which it is noted, and that a copy of the statement will be
provided to persons and agencies to which the record is disclosed
subsequent to the date of receipt of such statement;
(3) The fact that USPTO will append to any such disagreement
statement filed by the individual, a copy of the final determination or
summary thereof which also will be provided to persons and agencies to
which the disagreement statement is disclosed; and,
(4) The right of the individual to judicial review of the final
determination under 5 U.S.C. 552a(g)(1)(A), as limited by 5 U.S.C.
552a(g)(5).
(h) In making the final determination, the General Counsel shall
employ
[[Page 550]]
the criteria set forth in Sec.102.28(c) and shall deny an appeal only
on the grounds set forth in Sec.102.28(e).
(i) If an appeal is partially granted and partially denied, the
General Counsel shall follow the appropriate procedures of this section
as to the records within the grant and the records within the denial.
(j) Although a copy of the final determination or a summary thereof
will be treated as part of the individual's record for purposes of
disclosure in instances where the individual has filed a disagreement
statement, it will not be subject to correction or amendment by the
individual.
(k) The provisions of paragraphs (g)(1) through (g)(3) of this
section satisfy the requirements of 5 U.S.C. 552a(e)(3).
[65 FR 52917, Aug. 31, 2000, as amended at 68 FR 14339, Mar. 25, 2003]
Sec.102.30 Disclosure of record to person other than the individual
to whom it pertains.
(a) USPTO may disclose a record pertaining to an individual to a
person other than the individual to whom it pertains only in the
following instances:
(1) Upon written request by the individual, including authorization
under Sec.102.25(f);
(2) With the prior written consent of the individual;
(3) To a parent or legal guardian under 5 U.S.C. 552a(h);
(4) When required by the Act and not covered explicitly by the
provisions of 5 U.S.C. 552a(b); and
(5) When permitted under 5 U.S.C. 552a(b)(1) through (12), which
read as follows: \1\
---------------------------------------------------------------------------
\1\ 5 U.S.C. 552a(b)(4) has no application within USPTO.
---------------------------------------------------------------------------
(i) To those officers and employees of the agency which maintains
the record who have a need for the record in the performance of their
duties;
(ii) Required under 5 U.S.C. 552 ;
(iii) For a routine use as defined in 5 U.S.C. 552a(a)(7) and
described under 5 U.S.C. 552a(e)(4)(D);
(iv) To the Bureau of the Census for purposes of planning or
carrying out a census or survey or related activity pursuant to the
provisions of Title 13;
(v) To a recipient who has provided the agency with advance adequate
written assurance that the record will be used solely as a statistical
research or reporting record, and the record is to be transferred in a
form that is not individually identifiable;
(vi) To the National Archives and Records Administration as a record
which has sufficient historical or other value to warrant its continued
preservation by the United States Government, or for evaluation by the
Archivist of the United States or the designee of the Archivist to
determine whether the record has such value;
(vii) To another agency or to an instrumentality of any governmental
jurisdiction within or under the control of the United States for a
civil or criminal law enforcement activity if the activity is authorized
by law, and if the head of the agency or instrumentality has made a
written request to the agency which maintains the record specifying the
particular portion desired and the law enforcement activity for which
the record is sought;
(viii) To a person pursuant to a showing of compelling circumstances
affecting the health or safety of an individual if upon such disclosure
notification is transmitted to the last known address of such
individual;
(ix) To either House of Congress, or, to the extent of matter within
its jurisdiction, any committee or subcommittee thereof, any joint
committee of Congress or subcommittee of any such joint committee;
(x) To the Comptroller General, or any of his authorized
representatives, in the course of the performance of the duties of the
General Accounting Office;
(xi) Pursuant to the order of a court of competent jurisdiction; or
(xii) To a consumer reporting agency in accordance with section
3711(e) of Title 31.
(b) The situations referred to in paragraph (a)(4) of this section
include the following:
(1) 5 U.S.C. 552a(c)(4) requires dissemination of a corrected or
amended record or notation of a disagreement
[[Page 551]]
statement by USPTO in certain circumstances;
(2) 5 U.S.C. 552a(d) requires disclosure of records to the
individual to whom they pertain, upon request; and
(3) 5 U.S.C. 552a(g) authorizes civil action by an individual and
requires disclosure by USPTO to the court.
(c) The Privacy Officer shall make an accounting of each disclosure
by him of any record contained in a system of records in accordance with
5 U.S.C. 552a(c) (1) and (2). Except for a disclosure made under 5
U.S.C. 552a(b)(7), the Privacy Officer shall make such accounting
available to any individual, insofar as it pertains to that individual,
on request submitted in accordance with Sec.102.24. The Privacy
Officer shall make reasonable efforts to notify any individual when any
record in a system of records is disclosed to any person under
compulsory legal process, promptly upon being informed that such process
has become a matter of public record.
Sec.102.31 Fees.
The only fees to be charged to or collected from an individual under
the provisions of this part are for duplication of records at the
request of the individual. The Privacy Officer shall charge fees for
duplication of records under the Act in the same way in which they
charge duplication fees under Sec.102.11, except as provided in this
section.
(a) No fees shall be charged or collected for the following: Search
for and retrieval of the records; review of the records; copying at the
initiative of USPTO without a request from the individual;
transportation of records and personnel; and first-class postage.
(b) It is the policy of USPTO to provide an individual with one copy
of each record corrected or amended pursuant to his or her request
without charge as evidence of the correction or amendment.
(c) As required by the United States Office of Personnel Management
in its published regulations implementing the Act, USPTO will charge no
fee for a single copy of a personnel record covered by that agency's
Government-wide published notice of systems of records.
Sec.102.32 Penalties.
(a) The Act provides, in pertinent part:
Any person who knowingly and willfully requests or obtains any
record concerning an individual from an agency under false pretenses
shall be guilty of a misdemeanor and fined not more than $5,000. (5
U.S.C. 552a(i)(3)).
(b) A person who falsely or fraudulently attempts to obtain records
under the Act also may be subject to prosecution under such other
criminal statutes as 18 U.S.C. 494, 495 and 1001.
Sec.102.33 General exemptions.
(a) Individuals may not have access to records maintained by USPTO
but which were provided by another agency which has determined by
regulation that such information is subject to general exemption under 5
U.S.C. 552a(j). If such exempt records are within a request for access,
USPTO will advise the individual of their existence and of the name and
address of the source agency. For any further information concerning the
record and the exemption, the individual must contact that source
agency.
(b) The general exemption determined to be necessary and proper with
respect to systems of records maintained by USPTO, including the parts
of each system to be exempted, the provisions of the Act from which they
are exempted, and the justification for the exemption, is as follows:
Investigative Records--Contract and Grant Frauds and Employee Criminal
Misconduct--COMMERCE/DEPT.--12. Pursuant to 5 U.S.C. 552a(j)(2), these
records are hereby determined to be exempt from all provisions of the
Act, except 5 U.S.C. 552a (b), (c) (1) and (2), (e)(4) (A) through (F),
(e) (6), (7), (9), (10), and (11), and (i). These exemptions are
necessary to ensure the proper functions of the law enforcement
activity, to protect confidential sources of information, to fulfill
promises of confidentiality, to prevent interference with law
enforcement proceedings, to avoid the disclosure of investigative
techniques, to avoid the endangering of law enforcement personnel, to
avoid premature disclosure of the knowledge of criminal activity and the
evidentiary
[[Page 552]]
bases of possible enforcement actions, and to maintain the integrity of
the law enforcement process.
Sec.102.34 Specific exemptions.
(a)(1) Some systems of records under the Act which are maintained by
USPTO contain, from time-to-time, material subject to the exemption
appearing at 5 U.S.C. 552a(k)(1), relating to national defense and
foreign policy materials. The systems of records published in the
Federal Register by USPTO which are within this exemption are: COMMERCE/
PAT-TM-6, COMMERCE/PAT-TM-7, COMMERCE/PAT-TM-8, COMMERCE/PAT-TM-9.
(2) USPTO hereby asserts a claim to exemption of such materials
wherever they might appear in such systems of records, or any systems of
records, at present or in the future. The materials would be exempt from
5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4) (G), (H), and (I), and (f) to
protect materials required by Executive order to be kept secret in the
interest of the national defense and foreign policy.
(b) The specific exemptions determined to be necessary and proper
with respect to systems of records maintained by USPTO, including the
parts of each system to be exempted, the provisions of the Act from
which they are exempted, and the justification for the exemption, are as
follows:
(1)(i) Exempt under 5 U.S.C. 552a(k)(2). The systems of records
exempt (some only conditionally), the sections of the Act from which
exempted, and the reasons therefor are as follows:
(A) Investigative Records--Contract and Grant Frauds and Employee
Criminal Misconduct--COMMERCE/DEPT-12, but only on condition that the
general exemption claimed in Sec.102.33(b)(3) is held to be invalid;
(B) Investigative Records--Persons Within the Investigative
Jurisdiction of USPTO--COMMERCE/DEPT-13;
(C) Litigation, Claims and Administrative Proceeding Records--
COMMERCE/DEPT-14;
(D) Attorneys and Agents Registered to Practice Before the Office--
COMMERCE/PAT-TM-1;
(E) Complaints, Investigations and Disciplinary Proceedings Relating
to Registered Patent Attorneys and Agents--COMMERCE/PAT-TM-2; and
(F) Non-Registered Persons Rendering Assistance to Patent
Applicants--COMMERCE/PAT-TM-5.
(ii) The foregoing are exempted from 5 U.S.C. 552a (c)(3), (d),
(e)(1), (e)(4)(G), (H), and (I), and (f). The reasons for asserting the
exemption are to prevent subjects of investigation from frustrating the
investigatory process, to insure the proper functioning and integrity of
law enforcement activities, to prevent disclosure of investigative
techniques, to maintain the ability to obtain necessary information, to
fulfill commitments made to sources to protect their identities and the
confidentiality of information and to avoid endangering these sources
and law enforcement personnel. Special note is taken of the fact that
the proviso clause in this exemption imports due process and procedural
protections for the individual. The existence and general character of
the information exempted will be made known to the individual to whom it
pertains.
(2)(i) Exempt under 5 U.S.C. 552a(k)(5). The systems of records
exempt (some only conditionally), the sections of the act from which
exempted, and the reasons therefor are as follows:
(A) Investigative Records--Contract and Grant Frauds and Employee
Criminal Misconduct--COMMERCE/DEPT-12, but only on condition that the
general exemption claimed in Sec.102.33(b)(3) is held to be invalid;
(B) Investigative Records--Persons Within the Investigative
Jurisdiction of USPTO--COMMERCE/DEPT-13; and
(C) Litigation, Claims, and Administrative Proceeding Records--
COMMERCE/DEPT-14.
(ii) The foregoing are exempted from 5 U.S.C. 552a (c)(3), (d),
(e)(1), (e)(4) (G), (H), and (I), and (f). The reasons for asserting the
exemption are to maintain the ability to obtain candid and necessary
information, to fulfill commitments made to sources to protect the
confidentiality of information, to avoid endangering these sources and,
ultimately, to facilitate proper selection or continuance of the best
applicants
[[Page 553]]
or persons for a given position or contract. Special note is made of the
limitation on the extent to which this exemption may be asserted. The
existence and general character of the information exempted will be made
known to the individual to whom it pertains.
(c) At the present time, USPTO claims no exemption under 5 U.S.C.
552a(k) (3), (4), (6) and (7).
Sec. Appendix to Part 102--Systems of Records Noticed by Other Federal
Agencies \1\ and Applicable to USPTO Records and Applicability of This
Part Thereto
------------------------------------------------------------------------
Category of records Other federal agency
------------------------------------------------------------------------
Federal Personnel Records.............. Office of Personnel Management.
\2\
Federal Employee Compensation Act Department of Labor. \3\
Program.
Equal Employment Opportunity Appeal Equal Employment Opportunity
Complaints. Commission. \4\
Formal Complaints/Appeals of Adverse Merit Systems Protection Board.
Personnel Actions. \5\
------------------------------------------------------------------------
\1\ Other than systems of records noticed by the Department of Commerce.
Where the system of records applies only to USPTO, these regulations
apply. Where the system of records applies generally to components of
the Department of Commerce, the regulations of that department attach
at the point of any denial for access or for correction or amendment.
\2\ The provisions of this part do not apply to these records covered by
notices of systems of records published by the Office of Personnel
Management for all agencies. The regulations of OPM alone apply.
\3\ The provisions of this part apply only initially to these records
covered by notices of systems of records published by the U.S.
Department of Labor for all agencies. The regulations of that
department attach at the point of any denial for access or for
correction or amendment.
\4\ The provisions of this part do not apply to these records covered by
notices of systems of records published by the Equal Employment
Opportunity Commission for all agencies. The regulations of the
Commission alone apply.
\5\ The provisions of this part do not apply to these records covered by
notices of systems of records published by the Merit Systems
Protection Board for all agencies. The regulations of the Board alone
apply.
PART 104_LEGAL PROCESSES--Table of Contents
Subpart A_General Provisions
Sec.
104.1 Definitions.
104.2 Address for mail and service; telephone number.
104.3 Waiver of rules.
104.4 Relationship of this Part to the Federal Rules of Civil and
Criminal Procedure.
Subpart B_Service of Process
104.11 Scope and purpose.
104.12 Acceptance of Service of Process.
Subpart C_Employee Testimony and Production of Documents in Legal
Proceedings
104.21 Scope and purpose.
104.22 Demand for testimony or production of documents.
104.23 Expert or opinion testimony.
104.24 Demands or requests in legal proceedings for records protected by
confidentiality statutes.
Subpart D_Employee Indemnification
104.31 Scope.
104.32 Procedure for requesting indemnification.
Subpart E_Tort Claims
104.41 Procedure for filing claims.
104.42 Finality of settlement or denial of claims.
Authority: 35 U.S.C. 2(b)(2), 10, 23, 25; 44 U.S.C. 3101, except as
otherwise indicated.
Source: 66 FR 47389, Sept. 12, 2001, unless otherwise noted.
Subpart A_General Provisions
Sec.104.1 Definitions.
Demand means a request, order, or subpoena for testimony or
documents for use in a legal proceeding.
Director means the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office
(see Sec.1.9(j)).
Document means any record, paper, and other property held by the
Office, including without limitation, official letters, telegrams,
memoranda, reports, studies, calendar and diary entries, maps, graphs,
pamphlets, notes, charts, tabulations, analyses, statistical or
informational accumulations, any kind of summaries of meetings and
conversations, film impressions, magnetic tapes, and sound or mechanical
reproductions.
[[Page 554]]
Employee means any current or former officer or employee of the
Office.
Legal proceeding means any pretrial, trial, and posttrial stages of
existing or reasonably anticipated judicial or administrative actions,
hearings, investigations, or similar proceedings before courts,
commissions, boards or other tribunals, foreign or domestic. This phrase
includes all phases of discovery as well as responses to formal or
informal requests by attorneys or others involved in legal proceedings.
Office means the United States Patent and Trademark Office,
including any operating unit in the United States Patent and Trademark
Office, and its predecessors, the Patent Office and the Patent and
Trademark Office.
Official business means the authorized business of the Office.
General Counsel means the General Counsel of the Office.
Testimony means a statement in any form, including personal
appearances before a court or other legal tribunal, interviews,
depositions, telephonic, televised, or videotaped statements or any
responses given during discovery or similar proceedings, which response
would involve more than the production of documents, including a
declaration under 35 U.S.C. 25 or 28 U.S.C. 1746.
United States means the Federal Government, its departments and
agencies, individuals acting on behalf of the Federal Government, and
parties to the extent they are represented by the United States.
[66 FR 47389, Sept. 12, 2001, as amended at 68 FR 14339, Mar. 25, 2003]
Sec.104.2 Address for mail and service; telephone number.
(a) Mail under this part should be addressed to the Office of the
General Counsel, United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia 22313-1450.
(b) Service by hand should be made during business hours to the
Office of the General Counsel, 10B20, Madison Building East, 600 Dulany
Street, Alexandria, Virginia.
(c) The Office of the General Counsel may be reached by telephone at
571-272-7000 during business hours.
[66 FR 47389, Sept. 12, 2001, as amended at 70 FR 10490, Mar. 4, 2005;
75 FR 36295, June 25, 2010]
Sec.104.3 Waiver of rules.
In extraordinary situations, when the interest of justice requires,
the General Counsel may waive or suspend the rules of this part, sua
sponte or on petition of an interested party to the Director, subject to
such requirements as the General Counsel may impose. Any such petition
must be accompanied by a petition fee of $130.00.
[69 FR 56546, Sept. 21, 2004]
Sec.104.4 Relationship of this Part to the Federal Rules of Civil
or Criminal Procedure.
Nothing in this part waives or limits any requirement under the
Federal Rules of Civil or Criminal Procedure.
Subpart B_Service of Process
Sec.104.11 Scope and purpose.
(a) This subpart sets forth the procedures to be followed when a
summons and complaint is served on the Office or on the Director or an
employee in his or her official capacity.
(b) This subpart is intended, and should be construed, to ensure the
efficient administration of the Office and not to impede any legal
proceeding.
(c) This subpart does not apply to subpoenas, the procedures for
which are set out in subpart C.
(d) This subpart does not apply to service of process made on an
employee personally on matters not related to official business of the
Office or to the official responsibilities of the employee.
Sec.104.12 Acceptance of service of process.
(a) Any summons and complaint to be served in person or by
registered or certified mail or as otherwise authorized by law on the
Office, on the Director, or on an employee in his or her official
capacity, shall be served as indicated in Sec.104.2.
[[Page 555]]
(b) Any employee of the Office served with a summons and complaint
shall immediately notify, and shall deliver the summons and complaint
to, the Office of the General Counsel.
(c) Any employee receiving a summons and complaint shall note on the
summons and complaint the date, hour, and place of service and whether
service was by hand or by mail.
(d) When a legal proceeding is brought to hold an employee
personally liable in connection with an action taken in the conduct of
official business, rather than liable in an official capacity, the
employee by law is to be served personally with process. See Fed. R.
Civ. P. 4(e). An employee sued personally for an action taken in the
conduct of official business shall immediately notify and deliver a copy
of the summons and complaint to the General Counsel.
(e) An employee sued personally in connection with official business
may be represented by the Department of Justice at its discretion (28
CFR 50.15 and 50.16).
(f) The Office will only accept service of process for an employee
in the employee's official capacity.
Subpart C_Employee Testimony and Production of Documents in Legal
Proceedings
Sec.104.21 Scope and purpose.
(a) This subpart sets forth the policies and procedures of the
Office regarding the testimony of employees as witnesses in legal
proceedings and the production or disclosure of information contained in
Office documents for use in legal proceedings pursuant to a demand.
(b) Exceptions. This subpart does not apply to any legal proceeding
in which:
(1) An employee is to testify regarding facts or events that are
unrelated to official business; or
(2) A former employee is to testify as an expert in connection with
a particular matter in which the former employee did not participate
personally while at the Office.
Sec.104.22 Demand for testimony or production of documents.
(a) Whenever a demand for testimony or for the production of
documents is made upon an employee, the employee shall immediately
notify the Office of the General Counsel at the telephone number or
addresses in Sec.104.2 and make arrangements to send the subpoena to
the General Counsel promptly.
(b) An employee may not give testimony, produce documents, or answer
inquiries from a person not employed by the Office regarding testimony
or documents subject to a demand or a potential demand under the
provisions of this subpart without the approval of the General Counsel.
The General Counsel may authorize the provision of certified copies not
otherwise available under Part 1 of this title subject to payment of
applicable fees under Sec.1.19.
(c)(1) Demand for testimony or documents. A demand for the testimony
of an employee under this subpart shall be addressed to the General
Counsel as indicated in Sec.104.2.
(2) Subpoenas. A subpoena for employee testimony or for a document
shall be served in accordance with the Federal Rules of Civil or
Criminal Procedure or applicable state procedure, and a copy of the
subpoena shall be sent to the General Counsel as indicated in Sec.
104.2.
(3) Affidavits. Except when the United States is a party, every
demand shall be accompanied by an affidavit or declaration under 28
U.S.C. 1746 or 35 U.S.C. 25(b) setting forth the title of the legal
proceeding, the forum, the requesting party's interest in the legal
proceeding, the reason for the demand, a showing that the desired
testimony or document is not reasonably available from any other source,
and, if testimony is requested, the intended use of the testimony, a
general summary of the desired testimony, and a showing that no document
could be provided and used in lieu of testimony.
(d) Failure of the attorney to cooperate in good faith to enable the
General Counsel to make an informed determination under this subpart may
serve as a basis for a determination not to comply with the demand.
(e) A determination under this subpart to comply or not to comply
with a
[[Page 556]]
demand is not a waiver or an assertion of any other ground for
noncompliance, including privilege, lack of relevance, or technical
deficiency.
(f) Noncompliance. If the General Counsel makes a determination not
to comply, he or she will seek Department of Justice representation for
the employee and will attempt to have the subpoena modified or quashed.
If Department of Justice representation cannot be arranged, the employee
should appear at the time and place set forth in the subpoena. In such a
case, the employee should produce a copy of these rules and state that
the General Counsel has advised the employee not to provide the
requested testimony nor to produce the requested document. If a legal
tribunal rules that the demand in the subpoena must be complied with,
the employee shall respectfully decline to comply with the demand,
citing United States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951).
Sec.104.23 Expert or opinion testimony.
(a)(1) If the General Counsel authorizes an employee to give
testimony in a legal proceeding not involving the United States, the
testimony, if otherwise proper, shall be limited to facts within the
personal knowledge of the employee. Employees, with or without
compensation, shall not provide expert testimony in any legal
proceedings regarding Office information, subjects, or activities except
on behalf of the United States or a party represented by the United
States Department of Justice.
(2) The General Counsel may authorize an employee to appear and give
the expert or opinion testimony upon the requester showing, pursuant to
Sec.104.3 of this part, that exceptional circumstances warrant such
testimony and that the anticipated testimony will not be adverse to the
interest of the Office or the United States.
(b)(1) If, while testifying in any legal proceeding, an employee is
asked for expert or opinion testimony regarding Office information,
subjects, or activities, which testimony has not been approved in
advance in writing in accordance with the regulations in this subpart,
the witness shall:
(i) Respectfully decline to answer on the grounds that such expert
or opinion testimony is forbidden by this subpart;
(ii) Request an opportunity to consult with the General Counsel
before giving such testimony; and
(iii) Explain that upon such consultation, approval for such
testimony may be provided.
(2) If the tribunal conducting the proceeding then orders the
employee to provide expert or opinion testimony regarding Office
information, subjects, or activities without the opportunity to consult
with the General Counsel, the employee shall respectfully refuse to
provide such testimony, citing United States ex rel. Touhy v. Ragen, 340
U.S. 462 (1951).
(c) If an employee is unaware of the regulations in this subpart and
provides expert or opinion testimony regarding Office information,
subjects, or activities in a legal proceeding without the aforementioned
consultation, the employee shall, as soon after testifying as possible,
inform the General Counsel that such testimony was given and provide a
written summary of the expert or opinion testimony provided.
(d) Proceeding where the United States is a party. In a proceeding
in which the United States is a party or is representing a party, an
employee may not testify as an expert or opinion witness for any party
other than the United States.
Sec.104.24 Demands or requests in legal proceedings for records
protected by confidentiality statutes.
Demands in legal proceedings for the production of records, or for
the testimony of employees regarding information protected by the
confidentiality provisions of the Patent Act (35 U.S.C. 122), the
Privacy Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 1905), or
any other confidentiality statute, must satisfy the requirements for
disclosure set forth in those statutes and associated rules before the
records may be provided or testimony given.
[[Page 557]]
Subpart D_Employee Indemnification
Sec.104.31 Scope.
The procedure in this subpart shall be followed if a civil action or
proceeding is brought, in any court, against an employee (including the
employee's estate) for personal injury, loss of property, or death,
resulting from the employee's activities while acting within the scope
of the employee's office or employment. When the employee is
incapacitated or deceased, actions required of an employee should be
performed by the employee's executor, administrator, or comparable legal
representative.
Sec.104.32 Procedure for requesting indemnification.
(a) After being served with process or pleadings in such an action
or proceeding, the employee shall within five (5) calendar days of
receipt, deliver to the General Counsel all such process and pleadings
or an attested true copy thereof, together with a fully detailed report
of the circumstances of the incident giving rise to the court action or
proceeding.
(b)(1) An employee may request indemnification to satisfy a verdict,
judgment, or award entered against that employee only if the employee
has timely satisfied the requirements of paragraph (a) of this section.
(2) No request for indemnification will be considered unless the
employee has submitted a written request through the employee's
supervisory chain to the General Counsel with:
(i) Appropriate documentation, including copies of the verdict,
judgment, appeal bond, award, or settlement proposal;
(ii) The employee's explanation of how the employee was acting
within the scope of the employee's employment; and
(iii) The employee's statement of whether the employee has insurance
or any other source of indemnification.
Subpart E_Tort Claims
Authority: 28 U.S.C. 2672; 35 U.S.C. 2(b)(2); 44 U.S.C. 3101; 28 CFR
Part 14.
Sec.104.41 Procedure for filing claims.
Administrative claims against the Office filed pursuant to the
administrative claims provision of the Federal Tort Claims Act (28
U.S.C. 2672) and the corresponding Department of Justice regulations (28
CFR Part 14) shall be filed with the General Counsel as indicated in
Sec.104.2.
Sec.104.42 Finality of settlement or denial of claims.
Only a decision of the Director or the General Counsel regarding
settlement or denial of any claim under this subpart may be considered
final for the purpose of judicial review.
[[Page 558]]
SUBCHAPTER C_PROTECTION OF FOREIGN MASK WORKS
PART 150_REQUESTS FOR PRESIDENTIAL PROCLAMATIONS PURSUANT TO 17 U.S.C.
902(a)(2)--Table of Contents
Sec.
150.1 Definitions.
150.2 Initiation of evaluation.
150.3 Submission of requests.
150.4 Evaluation.
150.5 Duration of proclamation.
150.6 Mailing address.
Authority: 35 U.S.C. 2(b)(2); E.O. 12504, 50 FR 4849; 3 CFR, 1985
Comp., p. 335.
Source: 53 FR 24447, June 29, 1988, unless otherwise noted.
Editorial Note: Nomenclature changes to part 150 appear at 68 FR
14339, Mar. 25, 2003.
Sec.150.1 Definitions.
(a) Director means the Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office
(see Sec.1.9(j)).
(b) Foreign government means the duly-constituted executive of a
foreign nation, or an international or regional intergovernmental
organization which has been empowered by its member states to request
issuance of Presidential proclamations on their behalf under this part.
(c) Interim order means an order issued by the Secretary of Commerce
under 17 U.S.C. 914.
(d) Mask work means a series of related images, however fixed or
encoded--
(1) Having or representing the predetermined, three-dimensional
pattern of metallic, insulating, or semiconductor material present or
removed from the layers of a semiconductor chip product; and
(2) In which series the relation of the images to one another is
that each image has the pattern of the surface of one form of the
semiconductor chip product.
(e) Presidential proclamation means an action by the President
extending to foreign nationals, domiciliaries and sovereign authorities
the privilege of applying for registrations for mask works pursuant to
17 U.S.C. 902.
(f) Request means a request by a foreign government for the issuance
of a Presidential proclamation.
(g) Proceeding means a proceeding to issue an interim order
extending protection to foreign nationals, domiciliaries and sovereign
authorities under 17 U.S.C. Chapter 9.
(h) Secretary means the Secretary of Commerce.
[53 FR 24447, June 29, 1988, as amended at 68 Fr 14339, Mar. 25, 2003]
Sec.150.2 Initiation of evaluation.
(a) The Director independently or as directed by the Secretary, may
initiate an evaluation of the propriety of recommending the issuance,
revision, suspension or revocation of a section 902 proclamation.
(b) The Director shall initiate an evaluation of the propriety of
recommending the issuance of a section 902 proclamation upon receipt of
a request from a foreign government.
Sec.150.3 Submission of requests.
(a) Requests for the issuance of a section 902 proclamation shall be
submitted by foreign governments for review by the Director.
(b) Requests for issuance of a proclamation shall include:
(1) A copy of the foreign law or legal rulings that provide
protection for U.S. mask works which provide a basis for the request.
(2) A copy of any regulations or administrative orders implementing
the protection.
(3) A copy of any laws, regulations or administrative orders
establishing or regulating the registration (if any) of mask works.
(4) Any other relevant laws, regulations or administrative orders.
(5) All copies of laws, legal rulings, regulations or administrative
orders submitted must be in unedited, full-text form, and if possible,
must be reproduced from the original document.
(6) All material submitted must be in the original language, and if
not in English, must be accompanied by a certified English translation.
[[Page 559]]
Sec.150.4 Evaluation.
(a) Upon submission of a request by a foreign government for the
issuance of a section 902 proclamation, if an interim order under
section 914 has not been issued, the Director may initiate a section 914
proceeding if additional information is required.
(b) If an interim order under section 914 has been issued, the
information obtained during the section 914 proceeding will be used in
evaluating the request for a section 902 proclamation.
(c) After the Director receives the request of a foreign government
for a section 902 proclamation, or after a determination is made by the
Director to initiate independently an evaluation pursuant to Sec.
150.2(a) of this part, a notice will be published in the Federal
Register to request relevant and material comments on the adequacy and
effectiveness of the protection afforded U.S. mask works under the
system of law described in the notice. Comments should include detailed
explanations of any alleged deficiencies in the foreign law or any
alleged deficiencies in its implementation. If the alleged deficiencies
include problems in administration such as registration, the respondent
should include as specifically as possible full detailed explanations,
including dates for and the nature of any alleged problems. Comments
shall be submitted to the Director within sixty (60) days of publication
of the Federal Register notice.
(d) The Director shall notify the Register of Copyrights and the
Committees on the Judiciary of the Senate and the House of
Representatives of the initiation of an evaluation under these
regulations.
(e) If the written comments submitted by any party present relevant
and material reasons why a proclamation should not issue, the Director
will:
(1) Contact the party raising the issue for verification and any
needed additional information;
(2) Contact the requesting foreign government to determine if the
issues raised by the party can be resolved; and,
(i) If the issues are resolved, continue with the evaluation; or,
(ii) If the issues cannot be resolved on this basis, hold a public
hearing to gather additional information.
(f) The comments, the section 902 request, information obtained from
a section 914 proceeding, if any, and information obtained in a hearing
held pursuant to paragraph (e)(ii) of this section, if any, will be
evaluated by the Director.
(g) The Director will forward the information to the Secretary,
together with an evaluation and a draft recommendation.
(h) The Secretary will forward a recommendation regarding the
issuance of a section 902 proclamation to the President.
Sec.150.5 Duration of proclamation.
(a) The recommendation for the issuance of a proclamation may
include terms and conditions regarding the duration of the proclamation.
(b) Requests for the revision, suspension or revocation of a
proclamation may be submitted by any interested party. Requests for
revision, suspension or revocation of a proclamation will be considered
in substantially the same manner as requests for the issuance of a
section 902 proclamation.
Sec.150.6 Mailing address.
Requests and all correspondence pursuant to these guidelines shall
be addressed to: Mail Stop Congressional Relations, Director of the
United States Patent and Trademark Office, P.O. Box 1450, Alexandria,
Virginia 22313-1450.
[70 FR 10490, Mar. 4, 2005]
PARTS 151 199 [RESERVED]
[[Page 561]]
CHAPTER II--U.S. COPYRIGHT OFFICE, LIBRARY OF CONGRESS
--------------------------------------------------------------------
SUBCHAPTER A--COPYRIGHT OFFICE AND PROCEDURES
Part Page
200 [Reserved]
201 General provisions.......................... 562
202 Preregistration and registration of claims
to copyright............................ 652
203 Freedom of Information Act: Policies and
procedures.............................. 710
204 Privacy Act: Policies and procedures........ 723
205 Legal processes............................. 726
210 Compulsory license for making and
distributing physical and digital
phonorecords of nondramatic musical
works................................... 732
211 Mask work protection........................ 797
212 Protection of vessel designs................ 801
SUBCHAPTER B [RESERVED]
Index to Chapter II--Copyright Office,
Library of Congress..................... 807
[[Page 562]]
SUBCHAPTER A_COPYRIGHT OFFICE AND PROCEDURES
PART 200 [RESERVED]
PART 201_GENERAL PROVISIONS--Table of Contents
Sec.
201.1 Communication with the Copyright Office.
201.2 Information given by the Copyright Office.
201.3 Fees for registration, recordation, and related services, special
services, and services performed by the Licensing Division.
201.4 Recordation of transfers and other documents pertaining to
copyright.
201.5 [Reserved]
201.6 Payment and refund of Copyright Office fees.
201.7 Cancellation of completed registrations.
201.8 Disruption of postal or other transportation or communication
services.
201.9 [Reserved]
201.10 Notices of termination of transfers and licenses.
201.11 Satellite carrier statements of account covering statutory
licenses for secondary transmissions.
201.12 Recordation of certain contracts by cable systems located outside
of the forty-eight contiguous States.
201.13 Notices of objection to certain noncommercial performances of
non-dramatic literary or musical works.
201.14 Warnings of copyright for use by certain libraries and archives.
201.15 [Reserved]
201.16 Verification of a Statement of Account for secondary
transmissions made by cable systems and satellite carriers.
201.17 Statements of Account covering compulsory licenses for secondary
transmissions by cable systems.
201.18 Notice of intention to obtain a compulsory license for making and
distributing phonorecords of non-dramatic musical works.
201.19-201.21 [Reserved]
201.22 Advance notices of potential infringement of works consisting of
sounds, images, or both.
201.23 Transfer of unpublished copyright deposits to the Library of
Congress.
201.24 Warning of copyright for software lending by nonprofit libraries.
201.25 Visual Arts Registry.
201.26 Recordation of documents pertaining to computer shareware and
donation of public domain computer software.
201.27 Initial notice of distribution of digital recording devices or
media.
201.28 Statements of Account for digital audio recording devices or
media.
201.29 Access to, and confidentiality of, Statements of Account,
Verification Auditor's Reports, and other verification
information filed in the Copyright Office for digital audio
recording devices or media.
201.30 Verification of Statements of Account.
201.31 Procedures for closing out royalty payments accounts in
accordance with the Audio Home Recording Act.
201.32 [Reserved]
201.33 Procedures for filing Notices of Intent to Enforce a restored
copyright under the Uruguay Round Agreements Act.
201.34 Procedures for filing Correction Notices of Intent to Enforce a
Copyright Restored under the Uruguay Round Agreements Act.
201.35 Schedules of pre-1972 sound recordings.
201.36 Notices of contact information for transmitting entities publicly
performing pre-1972 sound recordings.
201.37 Noncommercial use of pre-1972 sound recordings.
201.38 Designation of agent to receive notification of claimed
infringement.
201.39 Notice to Libraries and Archives of Normal Commercial
Exploitation or Availability at Reasonable Price.
201.40 Exemptions to prohibition against circumvention.
Authority: 17 U.S.C. 702.
Section 201.10 also issued under 17 U.S.C. 304.
Sec.201.1 Communication with the Copyright Office.
(a) General purpose addresses. Members of the public must use the
correct address in order to facilitate timely receipt by the U.S.
Copyright Office division or section to which an inquiry should be
directed. The address set forth in paragraph (b) may be used for general
inquiries made to a particular division or section of the U.S. Copyright
Office. Addresses for special, limited purposes are provided below in
paragraph (c) of this section. Please note that the Library of Congress
no longer accepts direct deliveries from commercial couriers and
messengers.\1\
[[Page 563]]
For additional address information, including information on courier
delivery, mail delays, or disruptions, please visit the ``Contact us''
section on the Office's website (http://www.copyright.gov). General
questions may also be directed to the U.S. Copyright Office website
submission form at: http:// www.copyright.gov /help/ general -form.html.
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\1\ See 69 FR 5371 (Feb. 4, 2004) and 68 FR 70039 (Dec. 16, 2003).
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(b) General purpose address. (1) Mail and other communications that
do not come under the areas listed in paragraph (b)(2) of this section
shall be addressed to the Library of Congress, U.S. Copyright Office,
101 Independence Avenue SE., Washington, DC 20559-6000, or as otherwise
indicated in instructions on the Copyright Office's website or forms
provided by the Office.
(2) Codes to facilitate the routing of mail. To assure that postal
mail is routed correctly within the U.S. Copyright Office, applicants
should indicate, by the appropriate code, the general subject matter of
the correspondence. Such correspondence should be addressed to the
Office in the following manner: Library of Congress, U.S. Copyright
Office--(Insert appropriate code listed below), 101 Independence Avenue
SE., Washington, DC 20559-6000.
------------------------------------------------------------------------
Type of submission Code
------------------------------------------------------------------------
Registration of Literary Works................ TX
Registration of Serials....................... SE
Registration of Visual Arts Works............. VA
Registration of Works of the Performing Arts, PA
except Motion Pictures.
Registration of Sound Recordings.............. SR
Registration of Motion pictures............... MP
Registration of Renewal claims................ RE
Document Recordations......................... DOC
Registration of Mask Works.................... MW
Registration of Vessel Designs................ VH
Copyright Acquisitions........................ CAD
Deposit Demands............................... CAD/AD
Licensing Division............................ LD
Notice to Libraries and Archives.............. NLA
Publications Section.......................... PUB
------------------------------------------------------------------------
(c) Limited purpose addresses. The following addresses may be used
only in the special, limited circumstances given for a particular U.S.
Copyright Office service:
(1) Time Sensitive Notices and Requests. Other than notices served
on the Register of Copyrights submitted pursuant to 17 U.S.C. 411(a),
411(b)(2), and 508, all time sensitive correspondence to the Office of
the General Counsel and the Office of Policy and International Affairs,
and requests for expedited service from the Records Research and
Certification Section of the Office of Public Information and Education
to meet the needs of pending or prospective litigation, customs matters,
or contract or publishing deadlines should be addressed to: U.S.
Copyright Office, P.O. Box 70400, Washington, DC 20024-0400. Freedom of
Information Act (FOIA) requests and FOIA appeals must also be mailed to:
P.O. Box 70400, Washington, DC 20024-0400, but clearly labeled ``Freedom
of Information Act Request'' or ``Freedom of Information Act Appeal'' as
appropriate. Notices and requests served on the Register of Copyrights
submitted pursuant to 17 U.S.C. 411(a) or 411(b)(2) should be submitted
via email in accordance with 37 CFR 205.13 (for section 411(a) notices)
and Sec.205.14 (for section 411(b)(2) notices). Notices served on the
Register of Copyrights submitted pursuant to 17 U.S.C. 508 should be
submitted via email in accordance with 37 CFR 205.15.
(2) Notices of Termination. Notices of Termination of transfers and
licenses under sections 203 and 304 of the Copyright Act should be
addressed to: U.S. Copyright Office, Notices of Termination, and
submitted either electronically in the form and manner prescribed in
instructions on the Office's website or by mail to P.O. Box 71537,
Washington, DC 20024-1537.
(3) Reconsiderations of Refusals To Register and Requests for
Cancellation. First and second requests for reconsideration of refusal
to register a copyright, mask work, or vessel design claim, and requests
to cancel registered works should be addressed to: U.S. Copyright
Office, RAC Division, and submitted either electronically in the form
and manner prescribed in instructions on the Office's website or by mail
to P.O. Box 71380, Washington, DC 20024-1380.
(4) Searches and Copies of Records or Deposits. Requests for
searches of registrations and recordations in the completed catalogs,
indexes, and/or other records of the U.S. Copyright Office as well as
requests for copies of records or deposits for use in litigation or
other authorized purposes should be addressed to: U.S. Copyright Office,
Records Research and Certification
[[Page 564]]
Section, and submitted either electronically in the form and manner
prescribed in instructions on the Office's website or by mail to P.O.
Box 70400, Washington, DC 20559-0400.
(5) Inquiries to Licensing Division. Filings or inquiries to the
Licensing Division may be submitted either electronically in the form
and manner prescribed in instructions on the Office's website or by
mail. If sending by mail, notices related to statutory licenses under 17
U.S.C. 112, 114, and 115 should be addressed to: U.S. Copyright Office,
P.O. Box 70977, Washington, DC 20024-0400. Statements of account related
to statutory licenses under 17 U.S.C. 119 and chapter 10 should be
addressed to: U.S. Copyright Office, SOA, P.O. Box 70400, Washington, DC
20024-0400. Filings or inquiries related to section 111 licenses should
be sent to Library of Congress, U.S. Copyright Office, Attn: 111
Licenses, 101 Independence Avenue SE., Washington, DC 20559.
(6) Mandatory deposit copies. Mandatory deposit copies of published
works submitted for the Library of Congress under 17 U.S.C. 407 and
Sec.202.19 of this chapter (including serial publications that are not
being registered) should be addressed to: Library of Congress, U.S.
Copyright Office, Attn: 407 Deposits, 101 Independence Avenue SE,
Washington, DC 20559-6600, except that mandatory deposit copies
submitted as complimentary subscriptions for serial publications that
are being registered should be addressed to: Library of Congress, Group
Serials Registration, Washington, DC 20540-4161.
(7) Requests to remove PII from registration records. Requests to
remove personally identifiable information from registration records
pursuant to Sec. Sec.201.2(e) and (f) should be addressed to: U.S.
Copyright Office, Associate Register of Copyrights and Director of the
Office of Public Information and Education. Requests may be submitted
either electronically in the form and manner prescribed in instructions
on the Office's website or by mail to P.O. Box 70400, Washington, DC
20024-0400, and clearly labeled ``Request to Remove Requested PII,''
``Request for Reconsideration Following Denial of Request to Remove
Requested PII,'' or ``Request to Remove Extraneous PII,'' as
appropriate.
[78 FR 42873, July 18, 2013, as amended at 82 FR 9007, Feb. 2, 2017; 82
FR 9355, Feb. 6, 2017; 82 FR 21697, May 10, 2017; 83 FR 4145, Jan. 30,
2018; 83 FR 61549, Nov. 30, 2018; 84 FR 60918, Nov. 12, 2019; 85 FR
19667, Apr. 8, 2020; 85 FR 10604, Feb. 25, 2020; 85 FR 31982, May 28,
2020]
Effective Date Note: At 86 FR 32641, June 22, 2021, Sec.201.1 was
amended by:
a.i. Removing the entry ``Copyright Acquisitions'' and adding in its
place the entry ``Acquisitions and Deposits''.
ii. Revising the entry for ``Deposit Demands''.
iii. Removing the entry ``Licensing Division'' adding in its place
the entry ``Licensing Section'' in paragraph (b)(2) table.
b. In paragraph (c)(3), removing ``RAC'' and adding in its place
``MCA''
c. In paragraph (c)(5), removing ``Licensing Division'' from each
place it appears and adding in its place ``Licensing Section'',
effective July 22, 2021. For the convenience of the user, the revised
text is set forth as follows:
Sec.201.1 Communication with the Copyright Office.
* * * * *
(b) * * *
(2) * * *
------------------------------------------------------------------------
Type of submission Code
------------------------------------------------------------------------
* * * * *
Acquisitions and Deposits.................. A&D
Deposit Demands............................ A&D/AD
Licensing Section.......................... LS
* * * * *
------------------------------------------------------------------------
* * * * *
Sec.201.2 Information given by the Copyright Office.
(a) In general. (1) Information relative to the operations of the
Copyright Office is supplied without charge. A search of the records,
indexes, and deposits will be made for such information as they may
contain relative to copyright claims upon application and payment of the
statutory fee. The Copyright Office, however, does not undertake the
making of comparisons of copyright deposits to determine similarity
between works.
(2) The Copyright Office does not furnish the names of copyright
attorneys,
[[Page 565]]
publishers, agents, or other similar information.
(3) In the administration of the Copyright Act in general, the
Copyright Office interprets the Act. The Copyright Office, however, does
not give specific legal advice on the rights of persons, whether in
connection with particular uses of copyrighted works, cases of alleged
foreign or domestic copyright infringement, contracts between authors
and publishers, or other matters of a similar nature.
(b) Inspection and copying of records. (1) Inspection and copying of
completed records and indexes relating to a registration or a recorded
document, and inspection of copies or identifying material deposited in
connection with a completed copyright registration may be undertaken in
the Records Research and Certification Section. Since some of these
materials are not stored on the immediate premises of the Copyright
Office, it is advisable to consult the Records Research and
Certification Section to determine the length of time necessary to
produce the requested materials.
(2) It is the general policy of the Copyright Office to deny direct
public access to in-process files and to any work (or other) areas where
they are kept. However, direct public use of computers intended to
access the automated equivalent of limited portions of these files is
permitted on a specified terminal in the Records Management Section, LM
B-14, Monday through Friday, upon payment of applicable fees.
(3) Information contained in Copyright Office in-process files may
be obtained by anyone upon payment of applicable fees and request to the
Office of Public Information and Education, in accordance with the
following procedures:
(i) In general, all requests by the public for information in the
in-process and open unfinished business files should be made to the
Records Research and Certification Section, which upon receipt of
applicable fees will give a report that provides the following for each
request:
(A) The date(s) of receipt of:
(1) The application(s) for registration that may have been submitted
and is (are) in process;
(2) The document(s) that may have been submitted for recordation and
is (are) in process;
(3) The copy or copies (or phonorecords) that may have been
submitted;
(B) The title of the work(s); and
(C) The name of the applicant or remitter.
(ii) Such searches of the in-process files will be given priority to
the extent permitted by the demands of normal work flow of the affected
sections of the Copyright Office.
(4)(i) Access will be afforded as follows to pending applications
for registration, the deposit material accompanying them, and pending
documents for recordation:
(A) In the case of applications for registration and deposits
accompanying them, upon the request of the copyright claimant or his/her
authorized representative, and
(B) In the case of documents, upon the request of at least one of
the persons who executed the document or by an authorized representative
of that person.
(ii) These requests should be made to the Records Research and
Certification Section, and the review of the materials will be permitted
there. No charge will be made for reviewing these materials; the
appropriate search fee identified in Sec.201.3(c) or Sec.201.3(d)
will be assessed, and the appropriate copying fee identified in Sec.
201.3(c) or Sec.201.3(d) will be assessed if the claimant wants and is
entitled to a copy of the material.
(5) In exceptional circumstances, the Register of Copyrights may
allow inspection of pending applications and open correspondence files
by someone other than the copyright claimant, upon submission of a
written request which is deemed by the Register to show good cause for
such access and establishes that the person making the request is one
properly and directly concerned. The written request should be mailed to
the address specified in Sec.201.1(c).
(6) Direct public access will not be permitted to any financial or
accounting records, including records maintained on Deposit Accounts.
(7) The Register of Copyrights has issued an administrative manual
[[Page 566]]
known as the Compendium of U.S. Copyright Office Practices, Third
Edition. The Compendium explains many of the practices and procedures
concerning the Office's mandate and statutory duties under title 17 of
the United States Code. It is both a technical manual for the Copyright
Office's staff, as well as a guidebook for authors, copyright licensees,
practitioners, scholars, the courts, and members of the general public.
The Third Edition and prior editions of the Compendium may be viewed,
downloaded, or printed from the Office's website. They are also
available for public inspection and copying in the Records Research and
Certification Section.
(c) Correspondence. (1) Official correspondence, including
preliminary applications, between copyright claimants or their agents
and the Copyright Office, and directly relating to a completed
registration, a recorded document, a rejected application for
registration, or a document for which recordation was refused is
available for public inspection. Included in the correspondence
available for public inspection is that portion of the file directly
relating to a completed registration, recorded document, a rejected
application for registration, or a document for which recordation was
refused which was once open to public inspection as a closed case, even
if the case is subsequently reopened. Public inspection is available
only for the correspondence contained in the file during the time it was
closed because of one of the aforementioned actions. Correspondence
relating to the reopening of the file and reconsideration of the case is
considered part of an in-process file until final action is taken, and
public inspection of that correspondence is governed by Sec.201.2(b).
Requests for reproductions of the correspondence shall be made pursuant
to paragraph (d) of this section.
(2) Correspondence, application forms, and any accompanying material
forming a part of a pending application are considered in-process files
and access to them is governed by paragraph (b) of this section.
(3) Correspondence, memoranda, reports, opinions, and similar
material relating to internal matters of personnel and procedures,
office administration, security matters, and internal consideration of
policy and decisional matters including the work product of an attorney,
are not open to public inspection.
(4) The Copyright Office will not respond to any abusive or
scurrilous correspondence or correspondence where the intent is unknown.
(d) Requests for copies. (1) Requests for copies of records should
include the following:
(i) A clear identification of the type of records desired (for
example, additional certificates of registration, copies of
correspondence, copies of deposits).
(ii) A specification of whether the copies are to be certified or
uncertified.
(iii) A clear identification of the specific records to be copied.
Requests should include the following specific information, if possible:
(A) The type of work involved (for example, novel, lyrics,
photograph);
(B) The registration number;
(C) The year date or approximate year date of registration;
(D) The complete title of the work;
(E) The author(s) including any pseudonym by which the author may be
known; and
(F) The claimant(s); and
(G) If the requested copy is of an assignment, license, contract, or
other recorded document, the volume and page number of the recorded
document.
(iv) If the copy requested is an additional certificate of
registration, include the fee. The Records Research and Certification
Section will review requests for copies of other records and quote fees
for each.
(v) The telephone number and address of the requestor.
(2) Requests for certified or uncertified reproductions of the
copies, phonorecords, or identifying material deposited in connection
with a copyright registration of published or unpublished works in the
custody of the Copyright Office will be granted only when one of the
following three conditions has been met:
(i) The Copyright Office receives written authorization from the
copyright claimant of record or his or her designated agent, or from the
owner of
[[Page 567]]
any of the exclusive rights in the copyright as long as this ownership
can be demonstrated by written documentation of the transfer of
ownership.
(ii) The Copyright Office receives a written request from an
attorney on behalf of either the plaintiff or defendant in connection
with litigation, actual or prospective, involving the copyrighted work.
The following information must be included in such a request:
(A) The names of all the parties involved and the nature of the
controversy;
(B) The name of the court in which the actual case is pending or, in
the case of a prospective proceeding, a full statement of the facts of
the controversy in which the copyrighted work is involved; and
(C) Satisfactory assurance that the requested reproduction will be
used only in connection with the specified litigation.
(iii) The Copyright Office receives a court order for reproduction
of the deposited copies, phonorecords, or identifying material of a
registered work which is the subject of litigation. The order must be
issued by a court having jurisdiction of the case in which the
reproduction is to be submitted as evidence.
(3) When a request is made for a reproduction of a phonorecord, such
as an audiotape or cassette, in which either a sound recording or the
underlying musical, dramatic, or literary work is embodied, the
Copyright Office will provide proximate reproduction. The Copyright
Office reserves the right to substitute a monaural reproduction for a
stereo, quadraphonic, or any other type of fixation of the work accepted
for deposit.
(e) Requests for removal of requested personally identifiable
information from the online public catalog. (1) In general, an author,
claimant of record, or the authorized representative of the author or
claimant of record may submit a request to remove certain categories of
personally identifiable information (``PII'') described in paragraph
(e)(2) of this section from the Copyright Office's online public catalog
by following the procedure set forth in paragraph (e)(3) of this
section. Where the requester provides verifiable, non-personally
identifiable substitute information to replace the PII being removed,
the Office will grant the request unless it determines that the need to
maintain the original information in the public record substantially
outweighs the safety, privacy, or other stated concern. If the requester
does not provide verifiable, non-personally-identifiable substitute
information, the Office will grant the request only if the safety,
privacy, or other stated concern substantially outweighs the need for
the information to remain in the public record. The Office will review
requests by joint authors or claimants on a case-by-case basis.
(2) Categories of personally identifiable information that may be
removed from the online public catalog include names, home addresses,
personal telephone and fax numbers, personal email addresses, and other
information that is requested by the Office as part the copyright
registration application except that:
(i) Requests for removal of driver's license numbers, social
security numbers, banking information, credit card information and other
extraneous PII covered by paragraph (f) of this section are governed by
the provisions of that paragraph.
(ii) Requests to remove the address of a copyright claimant must be
accompanied by a verifiable substitute address. The Office will not
remove the address of a copyright claimant unless such a verifiable
substitute address is provided.
(iii) Names of authors or claimants may not be removed or replaced
with a pseudonym. Requests to substitute the prior name of the author or
claimant with the current legal name of the author or claimant must be
accompanied by official documentation of the legal name change.
(3) Requests for removal of PII from the online catalog must be in
the form of an affidavit, must be accompanied by the non-refundable fee
listed in Sec.201.3(c), and must include the following information:
(i) The copyright registration number(s).
[[Page 568]]
(ii) The name of the author and/or claimant of record on whose
behalf the request is made.
(iii) Identification of the specific PII that is to be removed.
(iv) If applicable, verifiable non-personally-identifiable
substitute information that should replace the PII to be removed.
(v) In the case of requests to replace the names of authors or
claimants, the request must be accompanied by a court order granting a
legal name change.
(vi) A statement providing the reasons supporting the request. If
the requester is not providing verifiable, non-personally-identifiable
substitute information to replace the PII to be removed, this statement
must explain in detail the specific threat to the individual's personal
safety or personal security, or other circumstances, supporting the
request.
(vii) The statement, ``I declare under penalty of perjury that the
foregoing is true and correct.''
(viii) If the submission is by an authorized representative of the
author or claimant of record, an additional statement, ``I am authorized
to make this request on behalf of [name of author or claimant of
record].''
(ix) The signature of the author, claimant of record, or the
authorized representative of the author or claimant of record.
(x) The date on which the request was signed.
(xi) A physical mailing address to which the Office's response may
be sent (if no email is provided).
(xii) A telephone number.
(xiii) An email address (if available).
(4) Requests under this paragraph (e) must be sent to the Office as
prescribed in Sec.201.1(c).
(5) A properly submitted request will be reviewed by the Associate
Register of Copyrights and Director of the Office Public Information and
Education or his or her designee(s) to determine whether the request
should be granted or denied. The Office will send its decision to either
grant or deny the request to the physical mail address or email address
indicated in the request.
(6) If the request is granted, the Office will remove the
information from the online public catalog. Where substitute information
has been provided, the Office will add that information to the online
public catalog. In addition, a note indicating that the online record
has been modified will be added to the online registration record. A new
certificate of registration will be issued that reflects the modified
information. The Office will maintain a copy of the original
registration record on file in the Copyright Office, and such records
shall be open to public inspection and copying pursuant to paragraphs
(b), (c), and (d) of this section. The Office will also maintain in its
offline records the correspondence related to the request to remove PII.
(7) Requests for reconsideration of denied requests to remove PII
from the online public catalog must be made in writing within 30 days
from the date of the denial letter. The request for reconsideration, and
a non-refundable fee in the amount specified in Sec.201.3(c), must be
sent to the Office as prescribed in Sec.201.1(c). The request must
specifically address the grounds for denial of the initial request. Only
one request for reconsideration will be considered per denial.
(f) Requests for removal of extraneous PII from the public record.
Upon written request, the Office will remove driver's license numbers,
social security numbers, banking information, credit card information,
and other extraneous PII that was erroneously included on a registration
application from the public record. There is no fee for this service. To
make a request, the author, claimant, or the authorized representative
of the author or claimant, must submit the request in writing using the
contact information listed in Sec.201.1(c). Such a request must name
the author and/or claimant, provide the registration number(s)
associated for the record in question, and give a description of the
extraneous PII that is to be removed. Once the request is received, the
Office will remove the extraneous information from both its online and
offline public records. The Office will
[[Page 569]]
not include any notation of this action in its records.
[50 FR 30170, July 24, 1985, as amended at 51 FR 30062, Aug. 22, 1986;
62 FR 35421, July 1, 1997; 64 FR 29520, June 1, 1999; 69 FR 39332, June
30, 2004; 69 FR 70377, Dec. 6, 2004; 73 FR 37838, July 2, 2008; 78 FR
42873, July 18, 2013; 82 FR 9007, Feb. 2, 2017; 82 FR 9355, Feb. 6,
2017; 82 FR 21697, May 10, 2017; 85 FR 19667, Apr. 8, 2020]
Sec.201.3 Fees for registration, recordation, and related services,
special services, and services performed by the Licensing Division.
(a) General. This section prescribes the fees for registration,
recordation, and related services, special services, and services
performed by the Licensing Division.
(b) Definitions. For purposes of this section, the following
definitions apply:
(1) Registration, recordation, and related service fee. This is the
fee for a registration or recordation service that the Office is
required to perform under 17 U.S.C., or a directly related service. It
includes those services described in section 708(a)(1)-(9) and
authorized by Pub. L. 105-80.
(2) Special service fee. This is a fee for a special service not
specified in title 17, which the Register of Copyrights may fix at any
time on the basis of the cost of providing the service, as provided by
17 U.S.C. 708(a).
(3) Licensing Division service fee. This is a fee for a service
performed by the Licensing Division.
(c) Registration, recordation, and related service fees. The
Copyright Office has established fees for these services. To calculate
the fee specified by paragraph (c)(20) of this section, for each work
identified in a document: The first title and/or first registration
number provided for that particular work constitutes a work; and each
additional title and registration number provided for that particular
work beyond the first constitutes an alternate identifier. The fees are
as follows:
Table 1 to Paragraph (c)
------------------------------------------------------------------------
Registration, recordation, and related services Fees ($)
------------------------------------------------------------------------
(1) Registration of a claim in an original work of
authorship:
(i) Electronic filing:
(A) Single author, same claimant, one work, not 45
for hire.......................................
(B) All other filings........................... 65
(ii) Paper Filing (Forms PA, SR, TX, VA, SE, SR).... 125
(2) Registration of a claim in a group of contributions 85
to periodicals.........................................
(3) Registration of updates or revisions to a database 500
that predominantly consists of non-photographic works..
(4) Registration of a claim in a group of published 55
photographs or a claim in a group of unpublished
photographs............................................
(5) Registration for a database that predominantly
consists of photographs and updates thereto:
(i) Electronic filing............................... 250
(ii) Paper filing................................... 250
(6) Registration of a renewal claim (Form RE):
(i) Claim without addendum.......................... 125
(ii) Addendum (in addition to the fee for the claim) 100
(7) Registration of a claim in a group of serials (per
issue, minimum two issues):
(i) Electronic filing............................... 35
(ii) Paper filing................................... 70
(8) Registration of a claim in a group of newspapers or 95
a group of newsletters.................................
(9) Registration of a group of works on an album........ 65
(10) Registration of a claim in a group of unpublished 85
works..................................................
(11) Registration of a claim in a group of short online 65
literary works.........................................
(12) Registration of a claim in a restored copyright 100
(Form GATT)............................................
(13) Preregistration of certain unpublished works....... 200
(14) Registration of a correction or amplification to a
claim:
(i) Supplementary registration:
(A) Electronic filing........................... 100
(B) Paper Filing for correction or amplification 150
of renewal registrations, GATT registrations,
and group registrations for non-photographic
databases (Form CA)............................
(ii) Correction of a design registration: Form DC... 100
(15) Registration of a claim in a mask work (Form MW)... 150
(16) Registration of a claim in a vessel design (Form D/ 500
VH)....................................................
(17) Provision of an additional certificate of 55
registration...........................................
(18) Certification of other Copyright Office records, 200
including search reports (per hour)....................
(19) Search report prepared from official records other 200
than Licensing Division records (per hour, 2 hour
minimum)...............................................
(20) Estimate of retrieval or search fee (credited to 200
retrieval or search fee)...............................
[[Page 570]]
(21) Retrieval of in-process or completed Copyright
Office records or other Copyright Office materials:
(i) Retrieval of paper records (per hour, 1 hour 200
minimum)...........................................
(ii) Retrieval of digital records (per hour, half 200
hour minimum, quarter hour increments).............
(22) Recordation of a document, including a notice of
termination and a notice of intention to enforce a
restored copyright:
(i) Base fee (includes 1 work identified by 1 title
and/or registration number):
(A) Paper....................................... 125
(B) Electronic.................................. 95
(ii) Additional transfer (per transfer) (for 95
documents recorded under 17 U.S.C. 205)............
(iii) Additional works and alternate identifiers:
(A) Paper (per group of 10 or fewer additional 60
works and alternate identifiers)...............
(B) Electronic:
(1) 1 to 50 additional works and alternate 60
identifiers................................
(2) 51 to 500 additional works and alternate 225
identifiers................................
(3) 501 to 1,000 additional works and 390
alternate identifiers......................
(4) 1,001 to 10,000 additional works and 555
alternate identifiers......................
(5) 10,001 or more additional works and 5,500
alternate identifiers......................
(iv) Correction of online Public Catalog data due to 7
erroneous electronic title submission (per title)..
(23) Designation of agent under 17 U.S.C. 512(c)(2) to 6
receive notification of claimed infringement, or
amendment or resubmission of designation...............
(24)(i) Schedule of pre-1972 sound recordings, or 75
supplemental schedule of pre-1972 sound recordings
(single sound recording)...............................
(ii) Additional sound recordings (per group of 1 to 10
100 sound recordings)..............................
(25) Removal of pre-1972 sound recording from Office's 75
database of indexed schedules (single sound recording).
(26) Notice of noncommercial use of pre-1972 sound 50
recording..............................................
(27) Opt-out notice of noncommercial use of pre-1972 50
sound recording........................................
(28) Issuance of a receipt for a section 407 deposit.... 30
(29) Removal of PII from Registration Records:
(i) Initial request, per registration record........ 100
(ii) Reconsideration of denied requests, flat fee... 60
------------------------------------------------------------------------
(d) Special service fees. The Copyright Office has established the
following fees for special services of the Office:
Table 1 to Paragraph (d)
------------------------------------------------------------------------
Special services Fees ($)
------------------------------------------------------------------------
(1) Service charge for deposit account overdraft........ 285
(2) Service charge for dishonored deposit account 500
replenishment check....................................
(3) Service charge for an uncollectible or non- 115
negotiable payment.....................................
(4) Appeals:
(i) First appeal (per claim)........................ 350
(ii) Second appeal (per claim)...................... 700
(5) Secure test examining fee (per staff member per 250
hour)..................................................
(6) Copying of Copyright Office records by staff........ 12
(7)(i) Special handling fee for a claim................. 800
(ii) Handling fee for each non-special handling 50
claim using the same deposit.......................
(8) Special handling fee for recordation of a document.. 550
(9) Handling fee for extra deposit copy for 50
certification..........................................
(10) Full-term retention of a published deposit:
(i) Physical deposit................................ 540
(ii) Electronic deposit............................. 220
(11) Voluntary cancellation of registration............. 150
(12) Matching unidentified deposit to deposit ticket 40
claim..................................................
(13) Special handling fee for records retrieval, search, 500
and certification services (per hour, 1 hour minimum)..
(14) Litigation statement (Form LS)..................... 100
(15)(i) Notice to libraries and archives................ 50
(ii) Each additional title.......................... 20
(16) Service charge for Federal Express mailing......... 45
(17) Service charge for delivery of documents via 1
facsimile (per page, 7 page maximum)...................
------------------------------------------------------------------------
[[Page 571]]
(e) Licensing Division service fees. The Copyright Office has
established the following fees for specific services of the Licensing
Division:
Table 1 to Paragraph (e)
------------------------------------------------------------------------
Licensing division services Fees ($)
------------------------------------------------------------------------
(1)(i) Recordation of a notice of intention to make and 75
distribute phonorecords (17 U.S.C. 115)................
(ii) Additional titles (per group of 1 to 10 titles) 20
(paper filing).....................................
(iii) Additional titles (per group of 1 to 100 10
titles) (online filing)............................
(2) Statement of account amendment (cable television 50
systems and satellite carriers, 17 U.S.C. 111 and 119;
digital audio recording devices or media, 17 U.S.C.
1003)..................................................
(3) Recordation of certain contracts by cable TV systems 50
located outside the 48 contiguous states...............
(4) Initial or amended notice of digital transmission of 50
sound recording (17 U.S.C. 112, 114)...................
(5) Processing of a statement of account based on
secondary transmissions of primary transmissions
pursuant to 17 U.S.C. 111:
(i) Form SA1........................................ 15
(ii) Form SA2....................................... 20
(iii) Form SA3...................................... 725
(6) Processing of a statement of account based on 725
secondary transmissions of primary transmissions
pursuant to 17 U.S.C. 119 or 122.......................
(7) Search report prepared from Licensing Division 200
records (per hour, 2 hour minimum).....................
------------------------------------------------------------------------
(f) Fees for travel in connection with educational activities. For
travel expenses in connection with Copyright Office educational
activities when participation by Copyright Office personnel has been
requested by another organization or person and that organization or
person has agreed to pay such expenses, collection of the fee shall be
subject to, and the amount of the fee shall be no greater than, the
amount authorized under the Federal Travel Regulations found in Chapters
300 through 304 of Title 41.
[64 FR 29520, June 1, 1999, as amended at 64 FR 36574, July 7, 1999; 65
FR 39819, June 28, 2000; 67 FR 38005, May 31, 2002; 71 FR 31090, June 1,
2006; 71 FR 46402, Aug. 14, 2006; 72 FR 33691, June 19, 2007; 74 FR
12556, Mar. 25, 2009, 74 FR 32807, July 9, 2009; 77 FR 18705, Mar. 28,
2012; 77 FR 18707, Mar. 28, 2012; 78 FR 71501, Nov. 29, 2013; 79 FR
15918, Mar. 24, 2014; 79 FR 24334, Apr. 30, 2014; 79 FR 68623, Nov. 18,
2014; 81 FR 75707, Nov. 1, 2016; 82 FR 9008, Feb. 2, 2017; 82 FR 9356,
Feb. 6, 2017; 82 FR 26853, June 12, 2017; 82 FR 29413, June 29, 2017; 82
FR 52223, Nov. 13, 2017; 83 FR 2547, Jan. 18, 2018; 83 FR 4146, Jan. 30,
2018; 83 FR 52153, Oct. 16, 2018; 83 FR 61549, Nov. 30, 2018; 83 FR
66628, Dec. 27, 2018; 84 FR 3697, Feb. 13, 2019; 84 FR 10684, Mar. 22,
2019; 84 FR 14255, Apr. 9, 2019; 84 FR 20273, May 9, 2019; 85 FR 9386,
Feb. 19, 2020; 85 FR 37346, June 22, 2020; 86 FR 10825, Feb. 23, 2021]
Effective Date Note: At 86 FR 32641, June 22, 2021, Sec.201.3 was
amended by
a. Revising the section heading.
b. In paragraphs (a) and (b)(3), removing ``Licensing Division''
from each place it appears and adding in its place ``Licensing
Section''.
c. Revising paragraph (c)(19).
d. In paragraph (e):
i. In the paragraph heading and introductory text, removing
``Licensing Division'' and adding in its place ``Licensing Section''.
ii. In the table, revising the heading for the first column and
entry (7). These revisions are effective July 22, 2021. For the
convenience of the user, the revised text is set forth as follows:
Sec.201.3 Fees for registration, recordation, and related services,
special services, and services performed by the Licensing
Section.
* * * * *
(c) * * *
Table 1 to Paragraph (c)
------------------------------------------------------------------------
Registration, recordation, and related services Fees ($)
------------------------------------------------------------------------
* * * * * * *
(19) Search report prepared from official records other 200
than Licensing Section records (per hour, 2 hour minimum).
[[Page 572]]
* * * * * * *
------------------------------------------------------------------------
* * * * *
(e) * * *
Table 1 to Paragraph (e)
------------------------------------------------------------------------
Licensing section services Fees ($)
------------------------------------------------------------------------
* * * * * * *
(7) Search report prepared from Licensing Section records 200
(per hour, 2 hour minimum)................................
------------------------------------------------------------------------
* * * * *
Sec.201.4 Recordation of transfers and other documents pertaining to copyright.
(a) General. This section prescribes conditions for the recordation
of transfers of copyright ownership and other documents pertaining to a
copyright under 17 U.S.C. 205. Except as otherwise provided pursuant to
paragraph (h) of this section, a document is eligible for recordation
under this section if it meets the requirements of paragraph (d) of this
section, if it is submitted in accordance with the submission procedure
described in paragraph (e) of this section, and if it is accompanied by
the fee specified in Sec.201.3(c). The date of recordation is the date
when all of the elements required for recordation, including a proper
document, fee, and any additional required information, are received in
the Copyright Office. After recordation the document is returned to the
sender with a certificate of recordation. The Office may reject any
document submitted for recordation that fails to comply with 17 U.S.C.
205, the requirements of this section, or any relevant instructions or
guidance provided by the Office.
(b) Documents not recordable under this section. This section does
not govern the filing or recordation of the following documents:
(1) Certain contracts entered into by cable systems located outside
of the 48 contiguous States (17 U.S.C. 111(e); see Sec.201.12);
(2) Notices of identity and signal carriage complement, and
statements of account of cable systems and satellite carriers and for
digital audio recording devices and media (17 U.S.C. 111(d), 119(b), and
1003(c); see Sec. Sec.201.11, 201.17, 201.28);
(3) Notices of use of sound recordings under statutory license and
notices of intention to obtain a compulsory license to make and
distribute phonorecords of nondramatic musical works (17 U.S.C. 112(e),
114, and 115(b); see Sec. Sec.201.18 and 370.2);
(4) Notices of termination (17 U.S.C. 203, 304(c) and (d); see Sec.
201.10);
(5) Statements regarding the identity of authors of anonymous and
pseudonymous works, and statements relating to the death of authors (17
U.S.C. 302);
(6) Documents pertaining to computer shareware and donation of
public domain software (Pub. L. 101-650, sec. 805; see Sec.201.26);
(7) Notifications from the clerks of the courts of the United States
concerning actions brought under title 17, United States Code (17 U.S.C.
508);
(8) Notices to libraries and archives of normal commercial
exploitation or availability at reasonable prices (17 U.S.C.
108(h)(2)(C); see Sec.201.39);
(9) Submission of Visual Arts Registry Statements (17 U.S.C. 113;
see Sec.201.25);
(10) Notices and correction notices of intent to enforce restored
copyrights (17 U.S.C. 104A(e); see Sec. Sec.201.33, 201.34);
[[Page 573]]
(11) Designations of agents to receive notifications of claimed
infringement (17 U.S.C. 512(c)(2); see Sec.201.38);
(12) Notices of contact information for transmitting entities
publicly performing pre-1972 sound recordings by means of digital audio
transmission (17 U.S.C. 1401(f)(5)(B); see Sec.201.36);
(13) Schedules of pre-1972 sound recordings (17 U.S.C.
1401(f)(5)(A); see Sec.201.35);
(14) Notices of noncommercial use of pre-1972 sound recordings (17
U.S.C. 1401(c)(1)(B); see Sec.201.37); and
(15) Opt-out notices of noncommercial use of pre-1972 sound
recordings (17 U.S.C. 1401(c)(1)(C); see Sec.201.37).
(c) Definitions. For purposes of this section:
(1) A transfer of copyright ownership has the meaning set forth in
17 U.S.C. 101.
(2) A document pertaining to a copyright is any document that has a
direct or indirect relationship to the existence, scope, duration, or
identification of a copyright, or to the ownership, division,
allocation, licensing, or exercise of rights under a copyright. That
relationship may be past, present, future, or potential.
(3) An actual signature is any legally binding signature, including
an electronic signature as defined in 15 U.S.C. 7006.
(4) A sworn certification is a statement made in accordance with 28
U.S.C. 1746 that the copy of the document submitted for recordation is,
to the best of the certifier's knowledge, a true copy of the original,
signed document. A sworn certification must be signed by one of the
parties to the signed document, a successor-in-interest to one of the
parties to the signed document, or the authorized representative of such
a party or successor. Authorized representatives must state who they
represent and successors-in-interest must describe their relationship to
the document or the original parties to the document. An authorized
representative of a successor-in-interest must describe the successor's
relationship to the document or the original parties to the document. A
sworn certification may be signed electronically.
(5) An official certification is a certification, by the appropriate
governmental official, that the original of the document is on file in a
public office and that the copy of the document submitted for
recordation is a true copy of the original. An official certification
may be signed electronically.
(d) Document requirements--(1) Original or certified copy. The
remitter must submit either the original document that bears the actual
signature(s) of the person(s) who executed it, or a copy of the
original, signed document accompanied by a sworn certification or an
official certification. Each document submitted for recordation must be
certified to either have the actual signature(s) (if it is an original
document) or reproduce the actual signature(s) (in the case of a copy of
the original document). All documents lacking a handwritten, wet
signature (including all documents bearing an electronic signature) are
considered to be copies of the original, signed document, and must be
accompanied by a sworn certification or an official certification. Where
an actual signature on the relevant document is not a handwritten or
typewritten name, such as when an individual clicks a button on a Web
site or application to indicate agreement to contractual terms, the
remitter must submit a description of the nature of the signature and
documentation evidencing the existence of the signature (e.g., a
database entry or confirmation email showing that a particular user
agreed to the terms by clicking ``yes'' on a particular date). Where
such description and evidence are provided, the Office will make them
available for public inspection and may presume that the signature
requirement for recordation has been satisfied, without prejudice to any
party claiming otherwise, including before a court of competent
jurisdiction.
(2) Completeness. Each document submitted for recordation must be,
and be certified to be, complete by its terms, but need only include
referenced schedules, appendices, exhibits, addenda, or other material
essential to understanding the copyright-related aspects of the
document.
(3) Legibility. Each document submitted for recordation must be, and
be certified to be, legible.
[[Page 574]]
(4) Redactions. The Office will accept and make available for public
inspection redacted documents certified to be redacted in accordance
with this paragraph (d)(4), provided that all of the following
conditions are satisfied:
(i) The redactions must be limited to financial terms, trade secret
information, Social Security or taxpayer-identification numbers, and
financial account numbers. Additional types of information may be
redacted on a case-by-case basis if the need for any such redactions is
justified to the Office in writing and approved by the Office; such
written requests should be included in the remitter's recordation
submission to the Office.
(ii) The blank or blocked-out portions of the document must be
labeled ``redacted'' or the equivalent.
(iii) Each portion of the document required by paragraph (d)(2) of
this section must be included.
(5) English language requirement. The Office will accept and record
non-English language documents and indexing information only if
accompanied by an English translation that is either signed by the
individual making the translation or, if a publicly available commercial
or consumer translation software product or automated service is used,
by the individual using such product or service and accompanied by the
name of the product or service. All translations will be made available
for public inspection and may be redacted in accordance with paragraph
(d)(4) of this section.
(e) Paper submission procedure--(1) Process. A document may be
submitted for recordation by sending it to the appropriate address in
Sec.201.1(b) or to such other address as the Office may specify,
accompanied by a cover sheet, the proper fee, and, if applicable, any
electronic title list. Absent special arrangement with the Office, the
Office reserves the right to not process the submission unless all of
the items necessary for processing are received together.
(2) Cover sheet required. Submission of a document must include a
completed Recordation Document Cover Sheet (Form DCS), available on the
Copyright Office Web site. Remitters must follow all instructions
provided by the Office in completing Form DCS, including by providing
all requested indexing information. Form DCS may be used to provide a
sworn certification, if appropriate, and to make any of the other
certifications required by this section. Form DCS will not be considered
part of the recorded document, but will be used by the Office for
examination, indexing, and other administrative purposes. The Office may
reject any document submitted for recordation that includes an
improperly prepared cover sheet.
(3) Electronic title list. (i) In addition to identifying the works
to which a document pertains in the paper submission, the remitter may
also submit an electronic list setting forth each such work. The
electronic list will not be considered part of the recorded document,
but will be used by the Office for indexing purposes. Absent special
arrangement with the Office, the electronic list must be included in the
same package as the paper document to be recorded. The electronic list
must be prepared and submitted to the Office in the manner specified by
the Copyright Office in instructions made available on its Web site. The
Office may reject any document submitted for recordation that includes
an improperly prepared electronic title list.
(ii) If a remitter of a recorded document finds that an error or
omission in an electronic title list has led to the inaccurate indexing
of the document in the public catalog, the remitter may request that the
record be corrected by following the instructions provided by the Office
on its Web site. Upon receipt of a properly prepared corrective filing
and the appropriate fee, the Office will proceed to correct the
information in the public catalog, and will make a note in the record
indicating that the corrections were made and the date they were made.
(4) Return receipt. If a remitter includes two copies of a properly
completed Form DCS indicating that a return receipt is requested, as
well as a self-addressed, postage-paid envelope, the remitter will
receive a date-stamped return receipt attached to the extra copy
acknowledging the Copyright Office's receipt of the enclosed submission.
The completed copies of
[[Page 575]]
Form DCS and the self-addressed, postage-paid envelope must be included
in the same package as the submitted document. A return receipt confirms
the Office's receipt of the submission as of the date indicated, but
does not establish eligibility for, or the date of, recordation.
(5) Remitter certification. The remitter must certify that he or she
has appropriate authority to submit the document for recordation and
that all information submitted to the Office by the remitter is true,
accurate, and complete to the best of the remitter's knowledge.
(f) Reliance on remitter-provided information. The Copyright Office
will rely on the certifications submitted with a document and the
information provided by the remitter on Form DCS and, if provided, in an
accompanying electronic title list. The Office will not necessarily
confirm the accuracy of such certifications or information against the
submitted document.
(g) Effect of recordation. The fact that the Office has recorded a
document is not a determination by the Office of the document's validity
or legal effect. Recordation of a document by the Copyright Office is
without prejudice to any party claiming that the legal or formal
requirements for recordation have not been met, including before a court
of competent jurisdiction.
(h) Pilot program for electronic submission. The Copyright Office is
implementing a limited pilot program through which certain types of
documents may be electronically submitted for recordation online by
certain remitters (``pilot remitters''). This paragraph (h) shall govern
such submissions to the extent they are permitted under the pilot
program.
(1) Electronic submission. Pilot remitters may submit permitted
types of documents for recordation using the Copyright Office's
electronic system pursuant to this section and special pilot program
rules provided to pilot remitters by the Office.
(2) Participation. No remitter may participate in the pilot program
without the permission of the Copyright Office. Participation in the
pilot program is optional and pilot remitters may continue to submit
documents for recordation pursuant to paragraph (e) of this section.
(3) Conflicting rules. To the extent any special pilot program rule
conflicts with this section or any other regulation, rule, instruction,
or guidance issued by the Copyright Office, such pilot program rule
shall govern submissions made pursuant to the pilot program.
(4) Reliance on remitter-provided information. Paragraph (f) of this
section shall apply to all certifications and information provided to
the Office through the electronic system.
(5) Date of recordation. In any situation where the date of
recordation for a submission cannot be established or, if established,
would ordinarily be changed, if due to an issue with the electronic
system, the Office may assign an equitable date as the date of
recordation.
[82 FR 52219, Nov. 13, 2017, as amended at 83 FR 52153, Oct. 16, 2018;
84 FR 14255, Apr. 9, 2019; 85 FR 3855, Jan. 23, 2020]
Sec.201.5 [Reserved]
Sec.201.6 Payment and refund of Copyright Office fees.
(a) In general. All fees sent to the Copyright Office should be in
the form of a money order, check or bank draft payable to the U.S.
Copyright Office. Coin or currency sent to the Office in letters or
packages will be at the remitter's risk. Remittances from foreign
countries should be in the form of an International Money Order or Bank
Draft payable and immediately negotiable in the United States for the
full amount of the fee required. Uncertified checks are accepted subject
to collection. Where the statutory fee is submitted in the form of a
check, the registration of the copyright claim or other record made by
the Office is provisional until payment in money is received. In the
event the fee is not paid, the registration or other record shall be
expunged.
(b) Deposit accounts. (1) Persons or firms having 12 or more
transactions a year with the Copyright Office may prepay copyright
expenses by establishing a Deposit Account. The Office and the Deposit
Account holder will cooperatively determine an appropriate
[[Page 576]]
minimum balance for the Deposit Account which, in no case, can be less
than $450, and the Office will automatically notify the Deposit Account
holder when the account goes below that balance.
(2) The Copyright Office will close a Deposit Account the second
time the Deposit Account holder overdraws his or her account within any
12-month period. An account closed for this reason can be re-opened only
if the holder elects to fund it through automatic replenishment.
(3) In order to ensure that a Deposit Account's funds are
sufficiently maintained, a Deposit Account holder may authorize the
Copyright Office to automatically replenish the account from the
holder's bank account or credit card. The amount by which a Deposit
Account will be replenished will be determined by the deposit account
holder. Automatic replenishment will be triggered when the Deposit
Account goes below the minimum level of funding established pursuant to
paragraph (b)(1) of this section, and Deposit Account holders will be
automatically notified that their accounts will be replenished.
(c) Refunds. (1) Money remitted to the Copyright Office for basic,
supplementary or renewal registration, including mask works and vessel
designs, will not be refunded if the claim is rejected because the
material deposited does not constitute copyrightable subject matter or
because the claim is invalid for any other reason. Payments made by
mistake or in excess of the fee will be refunded, but amounts of $50 or
less will not be refunded unless specifically requested. Except for
services specified in paragraphs (c)(2) and (3) of this section, before
making any refund for fees remitted in relation to non-registration
copyright services, the Copyright Office shall deduct an administrative
processing fee in an amount equivalent to one hour of the requested
service, or the minimum charge for the service.
(2) In instances where money has been remitted to pay for
recordation of a document, and it is determined that the document cannot
be recorded, the basic recordation fee covering one title will be
retained as a filing fee. Any additional money over the basic fee for
one title will be refunded, but amounts of $50 or less will not be
refunded unless specifically requested.
(3) For services where fees are calculated on an hourly basis, such
as preparation of a search report, certification of certain Copyright
Office records, or location and retrieval of records, in instances where
the request is withdrawn before work is begun by the staff member
responsible for providing the service, the Copyright Office will retain
half of the hourly charge for administrative expenses, and refund the
remaining portion of the fee subject to paragraph (c)(1) of this
section. In addition, the fee for an estimate of a search fee is non-
refundable. This policy applies to requests to the Records Research and
Certification Section, and requests to the Licensing Division.
(d) Return of deposit copies. Copies of works deposited in the
Copyright Office pursuant to law are either retained in the Copyright
Office, transferred for use in the permanent collections or other uses
of the Library of Congress, or disposed of according to law. When an
application is rejected, the Copyright Office reserves the right to
retain the deposited copies.
(17 U.S.C. 702, 708(c))
[24 FR 4955, June 18, 1959, as amended at 46 FR 25442, May 7, 1981; 56
FR 7813, Feb. 26, 1991; 59 FR 38371, July 28, 1994; 74 FR 32809, July 9,
2009; 76 FR 9231, Feb. 17, 2011; 82 FR 9356, Feb. 6, 2017]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.
201.6(c)(3) was amended by removing ``Licensing Division'' and adding in
its place ``Licensing Section'', effective July 22, 2021.
Sec.201.7 Cancellation of completed registrations.
(a) Definition. Cancellation is an action taken by the Copyright
Office whereby either the registration is eliminated on the ground that
the registration is invalid under the applicable law and regulations, or
the registration number is eliminated and a new registration is made
under a different class and number.
(b) General policy. The Copyright Office will cancel a completed
registration only in those cases where:
[[Page 577]]
(1) It is clear that no registration should have been made because
the work does not constitute copyrightable subject matter or fails to
satisfy the other legal and formal requirements for obtaining copyright;
(2) Registration may be authorized but the application, deposit
material, or fee does not meet the requirements of the law and Copyright
Office regulations, and the Office is unable to get the defect
corrected; or
(3) An existing registration in the wrong class is to be replaced by
a new registration in the correct class.
(c) Circumstances under which a registration will be cancelled. (1)
Where the Copyright Office becomes aware after registration that a work
is not copyrightable, either because the authorship is insufficiently
creative or the work does not contain authorship subject to copyright,
the registration will be cancelled. The copyright claimant will be
notified by correspondence of the proposed cancellation and the reasons
therefor, and be given 30 days, from the date the Copyright Office
letter is sent, to show cause in writing why the cancellation should not
be made. If the claimant fails to respond within the 30 day period, or
if the Office after considering the response, determines that the
registration was made in error and not in accordance with U.S. copyright
law, the registration will be cancelled.
(2) When a check received in payment of a registration fee is
returned to the Copyright Office marked ``insufficient funds'' or is
otherwise uncollectible the Copyright Office will immediately cancel any
registration(s) for which the dishonored check was submitted and will
notify the applicant the registration has been cancelled because the
check was returned as uncollectible.
(3) Where registration is made in the wrong class, the Copyright
Office will cancel the first registration, replace it with a new
registration in the correct class, and issue a corrected certificate.
(4) Where registration has been made for a work which appears to be
copyrightable but after registration the Copyright Office becomes aware
that, on the administrative record before the Office, the statutory
requirements have apparently not been satisfied, or that information
essential to registration has been omitted entirely from the application
or is questionable, or correct deposit material has not been deposited,
the Office will correspond with the copyright claimant in an attempt to
secure the required information or deposit material or to clarify the
information previously given on the application. If the Copyright Office
receives no reply to its correspondence within 30 days of the date the
letter is sent, or the response does not resolve the substantive defect,
the registration will be cancelled. The correspondence will include the
reason for the cancellation. The following are examples of instances
where a completed registration will be cancelled unless the substantive
defect in the registration can be cured:
(i) Eligibility for registration has not been established.
(ii) A work published before March 1, 1989 was registered more than
5 years after the date of first publication and the deposit copy or
phonorecord does not contain a statutory copyright notice.
(iii) The deposit copies or phonorecords of a work published before
January 1, 1978 do not contain a copyright notice or the notice is
defective.
(iv) A renewal claim was registered after the statutory time limits
for registration had apparently expired.
(v) The application and copy(s) or phonorecord(s) do not match each
other and the Office cannot locate a copy or phonorecord as described in
the application elsewhere in the Copyright Office or the Library of
Congress.
(vi) The application for registration does not identify a copyright
claimant or it appears from the transfer statement on the application or
elsewhere that the ``claimant'' named in the application does not have
the right to claim copyright.
(vii) A claim to copyright is based on material added to a
preexisting work and a reading of the application in its totality
indicates that there is no copyrightable new material on which to base a
claim.
(viii) A work subject to the manufacturing provisions of the Act of
1909 was
[[Page 578]]
apparently published in violation of those provisions.
(ix) A work is not anonymous or pseudonymous and statements on the
application and/or copy vary so much that the author cannot be
identified.
(x) Statements on the application conflict or are so unclear that
the claimant cannot be adequately identified.
(xi) The requirements for registering a group of related works under
section 408(c) of title 17 of the United States Code have not been met.
(d) Minor substantive errors. Where a registration includes minor
substantive errors or omissions which would generally have been
rectified before registration, the Copyright Office will attempt to
rectify the error through correspondence with the applicant. Except in
those cases enumerated in paragraph (c) of this section, if the Office
is unable for any reason to obtain the correct information or deposit
copy, the registration record will be annotated to state the nature of
the informality and show that the Copyright Office attempted to correct
the registration.
[50 FR 40835, Oct. 7, 1985, as amended at 60 FR 34168, June 30, 1995; 65
FR 39819, June 28, 2000; 66 FR 34372, June 28, 2001; 82 FR 9356, Feb. 6,
2017; 82 FR 29413, June 29, 2017; 85 FR 19667, Apr. 8, 2020]
Sec.201.8 Disruption of postal or other transportation or
communication services.
(a) Declaration of disruption. For purposes of 17 U.S.C. 709, when
the Register has determined that there is or has been a general
disruption or suspension of postal or other transportation or
communications services, including a disruption or suspension of a
Copyright Office electronic system, that has delayed the receipt by the
Copyright Office of applications, fees, deposits, or any other
materials, the Register shall publish an announcement of that
determination, stating the date on which the disruption or suspension
commenced. The announcement may, if appropriate, limit the means of
delivery that are subject to relief pursuant to section 709. Following
the cessation of the disruption or suspension of services, the Register
shall publish an announcement stating the date on which the disruption
or suspension has terminated, and may provide specific instructions on
how to make a request under paragraph (b)(1) of this section.
(b) Request for earlier filing date due to disruption--(1) When the
Register has declared a disruption. When the Register has made a
declaration of disruption under paragraph (a) of this section, any
person who, in compliance with any instructions provided by the
Register, provides satisfactory evidence as described in paragraph (e)
of this section that he or she attempted to deliver an application, fee,
deposit, or other material to the Copyright Office, but that receipt by
the Copyright Office was delayed due to a general disruption or
suspension of postal or other transportation or communications services
announced under paragraph (a), shall be assigned, as the date of receipt
of the application, fee, deposit, or other material, the date on which
the Register determines the material would have been received but for
the disruption or suspension of services, so long as the application,
fee, deposit, or other material was actually received in the Copyright
Office within one month after the date the Register identifies pursuant
to paragraph (a) of this section that disruption or suspension of
services has terminated. Such requests should be mailed to the address
specified in Sec.201.1(c)(1), or through any other delivery method the
Register specifies in a published announcement under paragraph (a) of
this section.
[[Page 579]]
(2) With respect to disruption affecting specific submission. In the
absence of a declaration of disruption under paragraph (a) of this
section, any person who provides satisfactory evidence as described in
paragraph (e) of this section that he or she physically delivered or
attempted to physically deliver an application, fee, deposit, or other
material to the Copyright Office, but that the Office did not receive
that material or that it was lost or misplaced by the Office after its
delivery to the Office, shall be assigned, as the date of receipt, the
date that the Register determines that the material was received or
would have been received. Such requests may be mailed to the address
specified in Sec.201.1(c)(1), or through any other delivery method
specified by the Copyright Office.
(c) Timing. (1) A request under paragraph (b)(1) of this section
shall be made no earlier than the date on which the Register publishes
the announcement under paragraph (a) of this section declaring that the
disruption or suspension has terminated, and no later than one year
after the publication of that announcement.
(2) A request under paragraph (b)(2) of this section shall be made
no later than one year after the person physically delivered or
attempted to physically deliver the application, fee, deposit, or other
material to the Copyright Office.
(d) Return of certificate. In cases where a certificate of
registration or a certificate of recordation has already been issued,
the original certificate must be returned to the Copyright Office along
with the request under paragraph (b) of this section.
(e) Satisfactory evidence. In all cases the Register shall have
discretion in determining whether materials submitted with a request
under paragraph (b) of this section constitute satisfactory evidence.
For purposes of paragraph (b) of this section, satisfactory evidence may
include:
(1) A receipt from the United States Postal Service indicating the
date on which the United States Postal Service received material for
delivery to the Copyright Office by means of first class mail, Priority
Mail, or Express Mail;
(2) A receipt from a delivery service such as, or comparable to,
United Parcel Service, Federal Express, or Airborne Express, indicating
the date on which the delivery service received material for delivery to
the Copyright Office; and
(i) The date on which delivery was to be made to the Copyright
Office, or
(ii) The period of time (e.g., overnight, or two days) from receipt
by the delivery service to the date on which delivery was to be made to
the Copyright Office;
(3) A statement under penalty of perjury, pursuant to 28 U.S.C.
1746, from a person with actual knowledge of the facts relating to the
attempt to deliver the material to the Copyright Office, setting forth
with particularity facts which satisfy the Register that in the absence
of the general disruption or suspension of postal or other
transportation or communications services, including a disruption or
suspension of a Copyright Office electronic system, or but for the
misdelivery, misplacement, or loss of materials sent to the Copyright
Office, the material would have been received by the Copyright Office by
a particular date; or
(4) Other documentary evidence which the Register deems equivalent
to the evidence set forth in paragraphs (e)(1) and (2) of this section.
(f) Presumption of receipt. For purposes of paragraph (b) of this
section, the Register shall presume that but for the general disruption
or suspension of postal or other transportation or communications
services, including a disruption or suspension of a Copyright Office
electronic system, or but for the misdelivery, misplacement, or loss of
materials sent to the Copyright Office:
(1) Materials deposited with the United States Postal Service for
delivery by means of first class mail would have been received in the
Copyright Office seven days after deposit with the United States Postal
Service;
(2) Materials deposited with the United States Postal Service for
delivery by means of Priority Mail would have been received in the
Copyright Office three days after deposit with the United States Postal
Service;
[[Page 580]]
(3) Materials deposited with the United States Postal Service for
delivery by means of Express Mail would have been received in the
Copyright Office one day after deposit with the United States Postal
Service;
(4) Materials deposited with a delivery service such as, or
comparable to, United Parcel Service, Federal Express, or Airborne
Express, would have been received in the Copyright Office on the date
indicated on the receipt from the delivery service;
(5) Materials submitted or attempted to be submitted through a
Copyright Office electronic system would have been received in the
Copyright Office on the date the attempt was made. If it is unclear when
an attempt was made, the Register will determine the effective date of
receipt on a case-by-case basis.
[66 FR 62944, Dec. 4, 2001; 66 FR 63920, Dec. 11, 2001; 73 FR 37838,
July 2, 2008; 78 FR 42874, July 18, 2013; 82 FR 9356, Feb. 6, 2017; 82
FR 22887, May 19, 2017]
Sec.201.9 [Reserved]
Sec.201.10 Notices of termination of transfers and licenses.
This section covers notices of termination of transfers and licenses
under 17 U.S.C. 203, 304(c), and 304(d). A termination under section
304(d) is possible only if no termination was made under section 304(c),
and federal copyright was originally secured on or between January 1,
1923, and October 26, 1939.
(a) Form. The Copyright Office does not provide printed forms for
the use of persons serving notices of termination.
(b) Contents. (1) A notice of termination covering the extended
renewal term under 17 U.S.C. 304(c) and 304(d) must include a clear
identification of each of the following:
(i) Whether the termination is made under section 304(c) or under
section 304(d);
(ii) The name of each grantee whose rights are being terminated, or
the grantee's successor in title, and each address at which service of
the notice is being made;
(iii) The title and the name of at least one author of, and the date
copyright was originally secured in, each work to which the notice of
termination applies; and, if possible and practicable, the original
copyright registration number;
(iv) A brief statement reasonably identifying the grant to which the
notice of termination applies;
(v) The effective date of termination;
(vi) If termination is made under section 304(d), a statement that
termination of renewal term rights under section 304(c) has not been
previously exercised; and
(vii) In the case of a termination of a grant executed by a person
or persons other than the author, a listing of the surviving person or
persons who executed the grant. In the case of a termination of a grant
executed by one or more of the authors of the work where the termination
is exercised by the successors of a deceased author, a listing of the
names and relationships to that deceased author of all of the following,
together with specific indication of the person or persons executing the
notice who constitute more than one-half of that author's termination
interest: That author's surviving widow or widower; and all of that
author's surviving children; and, where any of that author's children
are dead, all of the surviving children of any such deceased child of
that author; however, instead of the information required by this
paragraph (vii), the notice may contain both of the following:
(A) A statement of as much of such information as is currently
available to the person or persons signing the notice, with a brief
explanation of the reasons why full information is or may be lacking;
together with
(B) A statement that, to the best knowledge and belief of the person
or persons signing the notice, the notice has been signed by all persons
whose signature is necessary to terminate the grant under 17 U.S.C. 304,
or by their duly authorized agents.
(2) A notice of termination of an exclusive or nonexclusive grant of
a transfer or license of copyright or of any right under a copyright,
executed by the author on or after January 1, 1978, under 17 U.S.C. 203,
must include a clear identification of each of the following:
(i) A statement that the termination is made under section 203;
[[Page 581]]
(ii) The name of each grantee whose rights are being terminated, or
the grantee's successor in title, and each address at which service of
the notice is being made;
(iii) The date of execution of the grant being terminated and, if
the grant covered the right of publication of a work, the date of
publication of the work under the grant;
(iv) For each work to which the notice of termination applies, the
title of the work and the name of the author or, in the case of a joint
work, the authors who executed the grant being terminated; and, if
possible and practicable, the original copyright registration number;
(v) A brief statement reasonably identifying the grant to which the
notice of termination applies;
(vi) The effective date of termination; and
(vii) In the case of a termination of a grant executed by one or
more of the authors of the work where the termination is exercised by
the successors of a deceased author, a listing of the names and
relationships to that deceased author of all of the following, together
with specific indication of the person or persons executing the notice
who constitute more than one-half of that author's termination interest:
That author's surviving widow or widower; and all of that author's
surviving children; and, where any of that author's children are dead,
all of the surviving children of any such deceased child of that author;
however, instead of the information required by this paragraph
(b)(2)(vii), the notice may contain both of the following:
(A) A statement of as much of such information as is currently
available to the person or persons signing the notice, with a brief
explanation of the reasons why full information is or may be lacking;
together with
(B) A statement that, to the best knowledge and belief of the person
or persons signing the notice, the notice has been signed by all persons
whose signature is necessary to terminate the grant under 17 U.S.C. 203,
or by their duly authorized agents.
(3) Clear identification of the information specified by paragraphs
(b)(1) and (b)(2) of this section requires a complete and unambiguous
statement of facts in the notice itself, without incorporation by
reference of information in other documents or records.
(c) Signature. (1) In the case of a termination of a grant under
section 304(c) or section 304(d) executed by a person or persons other
than the author, the notice shall be signed by all of the surviving
person or persons who executed the grant, or by their duly authorized
agents.
(2) In the case of a termination of a grant under section 304(c) or
section 304(d) executed by one or more of the authors of the work, the
notice as to any one author's share shall be signed by that author or by
his or her duly authorized agent. If that author is dead, the notice
shall be signed by the number and proportion of the owners of that
author's termination interest required under 17 U.S.C. 304(c) or 304(d),
whichever applies, or by their duly authorized agents, and shall contain
a brief statement of their relationship or relationships to that author.
(3) In the case of a termination of a grant under section 203
executed by one or more of the authors of the work, the notice shall be
signed by each author who is terminating the grant or by his or her duly
authorized agent. If that author is dead, the notice shall be signed by
the number and proportion of the owners of that author's termination
interest required under 17 U.S.C. 203, or by their duly authorized
agents, and shall contain a brief statement of their relationship or
relationships to that author.
(4) Where a signature is by a duly authorized agent, it shall
clearly identify the person or persons on whose behalf the agent is
acting.
(5) The handwritten signature of each person effecting the
termination shall either be accompanied by a statement of the full name
and address of that person, typewritten or printed legibly by hand, or
shall clearly correspond to such a statement elsewhere in the notice.
(d) Service. (1) The notice of termination shall be served upon each
grantee whose rights are being terminated, or the grantee's successor in
title, by:
(i) Personal service;
[[Page 582]]
(ii) First class mail sent or by reputable courier service delivered
to an address which, after a reasonable investigation, is found to be
the last known address of the grantee or successor in title; or
(iii) Means of electronic transmission to:
(A) An email address designated for service of notices of
termination and/or legal process that is listed as such on the website
of the grantee or successor in title in a location accessible to the
public;
(B) An email address provided to the terminating party by the
grantee or successor in title, provided that the grantee, successor in
title, or an agent thereof who is duly authorized to accept service on
behalf of the grantee or successor in title expressly consents in
writing to accept service at the address provided within thirty days
before such service is made; or
(C) An email address for the grantee or successor in title provided
in accordance with instructions provided on the Office's website in a
public directory that the Office in its discretion may establish and
maintain.
(2) The service provision of 17 U.S.C. 203, 304(c), or 304(d),
whichever applies, will be satisfied if, before the notice of
termination is served, a reasonable investigation is made by the person
or persons executing the notice as to the current ownership of the
rights being terminated, and based on such investigation:
(i) If there is no reason to believe that such rights have been
transferred by the grantee to a successor in title, the notice is served
on the grantee; or
(ii) If there is reason to believe that such rights have been
transferred by the grantee to a particular successor in title, the
notice is served on such successor in title.
(3) For purposes of paragraph (d)(2) of this section, a reasonable
investigation includes, but is not limited to, a search of the records
in the Copyright Office; in the case of a musical composition with
respect to which performing rights are licensed by a performing rights
society, a reasonable investigation also includes a report from that
performing rights society identifying the person or persons claiming
current ownership of the rights being terminated.
(4) Compliance with the provisions of paragraphs (d)(2) and (d)(3)
of this section will satisfy the service requirements of 17 U.S.C. 203,
304(c), or 304(d), whichever applies. However, as long as the statutory
requirements have been met, the failure to comply with the regulatory
provisions of paragraph (d)(2) or (d)(3) of this section will not affect
the validity of the service.
(e) Harmless errors. (1) Harmless errors in a notice, statement of
service, or indexing information provided electronically or in a cover
sheet shall not render the notice invalid. For purposes of this
paragraph, an error is ``harmless'' if it does not materially affect the
adequacy of the information required to serve the purposes of 17 U.S.C.
203, 304(c), or 304(d), whichever applies.
(2) Without prejudice to the general rule provided by paragraph
(e)(1) of this section, errors made in giving the date or registration
number referred to in paragraph (b)(1)(iii), (b)(2)(iii), or (b)(2)(iv)
of this section, or in complying with the provisions of paragraph
(b)(1)(vii) or (b)(2)(vii) of this section, or in describing the precise
relationships under paragraph (c)(2) or (c)(3) of this section, shall
not affect the validity of the notice if the errors were made in good
faith and without any intention to deceive, mislead, or conceal relevant
information.
(f) Recordation. Except as otherwise provided pursuant to paragraph
(f)(6) of this section, a copy of a notice of termination shall be
recorded in the Copyright Office as required by 17 U.S.C. 203(a)(4)(A),
17 U.S.C. 304(c)(4)(A), or 17 U.S.C. 304(d)(1) if it meets the
requirements of paragraph (f)(1) of this section, is submitted in
compliance with paragraph (f)(2) of this section, and is accompanied by
the fee specified in Sec.201.3(c). The Office may reject any notice
submitted for recordation that fails to comply with 17 U.S.C. 203(a), 17
U.S.C. 304(c), 17 U.S.C. 304(d), the requirements of this section, or
any relevant instructions or guidance provided by the Office.
(1) Requirements. The following requirements must be met before a
copy
[[Page 583]]
of a notice of termination may be recorded in the Copyright Office.
(i) What must be submitted--(A) Copy of notice of termination. A
copy of a notice of termination submitted for recordation must be, and
be certified to be, a true, correct, complete, and legible copy of the
signed notice of termination as served. Where separate copies of the
same notice were served on more than one grantee or successor-in-title,
only one copy need be submitted for recordation.
(B) Statement of service. The copy submitted for recordation must be
accompanied by a statement setting forth the date on which the notice
was served and the manner of service, unless such information is
contained in the notice. In instances where service is made by first
class mail, the date of service shall be the day the notice of
termination was deposited with the United States Postal Service.
(ii) Timeliness. (A) The Copyright Office may refuse recordation of
a notice of termination as such if, in the judgment of the Copyright
Office, such notice of termination is untimely. Conditions under which a
notice of termination may be considered untimely include: the effective
date of termination does not fall within the five-year period described
in section 203(a)(3) or section 304(c)(3), as applicable, of title 17,
United States Code; the documents submitted indicate that the notice of
termination was served less than two or more than ten years before the
effective date of termination; or the date of recordation is on or after
the effective date of termination.
(B) If a notice of termination is untimely, the Office will offer to
record the document as a ``document pertaining to a copyright'' pursuant
to Sec.201.4, but the Office will not index the document as a notice
of termination.
(C) In any case where an author agreed, prior to January 1, 1978, to
a grant of a transfer or license of rights in a work that was not
created until on or after January 1, 1978, a notice of termination of a
grant under section 203 of title 17 may be recorded if it recites, as
the date of execution, the date on which the work was created.
(2) Paper submission procedure--(i) Process. A copy of a notice of
termination may be submitted for recordation by sending it to the
appropriate address in Sec.201.1(c) or to such other address as the
Office may specify, accompanied by a cover sheet, the statement of
service, and the proper fee.
(ii) Cover sheet required. Submission of a copy of a notice of
termination must be accompanied by a completed Recordation Notice of
Termination Cover Sheet (Form TCS), available on the Copyright Office
Web site. Remitters must follow all instructions provided by the Office
in completing Form TCS, including by providing all requested indexing
information. Form TCS may be used to provide the statement of service
and to make any of the certifications required by this paragraph (f).
Form TCS will not be considered part of the recorded notice, but will be
used by the Office for examination, indexing, and other administrative
purposes. The Office may reject any notice submitted for recordation
that includes an improperly prepared cover sheet.
(iii) Return receipt. If a remitter includes two copies of a
properly completed Form TCS indicating that a return receipt is
requested, as well as a self-addressed, postage-paid envelope, the
remitter will receive a date-stamped return receipt attached to the
extra copy acknowledging the Copyright Office's receipt of the enclosed
submission. The completed copies of Form TCS and the self-addressed,
postage-paid envelope must be included in the same package as the
submitted notice. A return receipt confirms the Office's receipt of the
submission as of the date indicated, but does not establish eligibility
for, or the date of, recordation.
(iv) Remitter certification. The remitter must certify that he or
she has appropriate authority to submit the notice for recordation and
that all information submitted to the Office by the remitter is true,
accurate, and complete to the best of the remitter's knowledge.
(3) Date of recordation. The date of recordation is the date when a
copy of the notice of termination is received in the Copyright Office.
After recordation, the notice, including any accompanying statement, is
returned to the
[[Page 584]]
sender with a certificate of recordation.
(4) Effect of recordation. The fact that the Office has recorded a
notice is not a determination by the Office of the notice's validity or
legal effect. Recordation of a notice of termination by the Copyright
Office is without prejudice to any party claiming that the legal or
formal requirements for effectuating termination (including the
requirements pertaining to service and recordation of the notice of
termination) have not been met, including before a court of competent
jurisdiction.
(5) Reliance on remitter-provided information. The Copyright Office
will rely on the certifications submitted with a notice and the
information provided by the remitter on Form TCS and, if provided, in an
accompanying statement of service. The Office will not necessarily
confirm the accuracy of such certifications or information against the
submitted notice.
(6) Pilot program for electronic submission. The Copyright Office is
implementing a limited pilot program through which certain types of
documents may be electronically submitted for recordation online by
certain remitters (``pilot remitters''). This paragraph (f)(6) shall
govern such submissions for notices of termination to the extent they
are permitted under the pilot program.
(i) Electronic submission. Pilot remitters may submit permitted
types of notices for recordation using the Copyright Office's electronic
system pursuant to this section and special pilot program rules provided
to pilot remitters by the Office.
(ii) Participation. No remitter may participate in the pilot program
without the permission of the Copyright Office. Participation in the
pilot program is optional and pilot remitters may continue to submit
notices for recordation pursuant to paragraph (f)(2) of this section.
(iii) Conflicting rules. To the extent any special pilot program
rule conflicts with this section or any other regulation, rule,
instruction, or guidance issued by the Copyright Office, such pilot
program rule shall govern submissions made pursuant to the pilot
program.
(iv) Reliance on remitter-provided information. Paragraph (f)(5) of
this section shall apply to all certifications and information provided
to the Office through the electronic system.
(v) Date of recordation. In any situation where the date of
recordation for a submission cannot be established or, if established,
would ordinarily be changed, if due to an issue with the electronic
system, the Office may assign an equitable date as the date of
recordation.
(Pub. L. 94-553; 17 U.S.C. 304(c), 702, 708(11))
[42 FR 45920, Sept. 13, 1977, as amended at 56 FR 59885, Nov. 26, 1991;
60 FR 34168, June 30, 1995; 64 FR 29521, June 1, 1999; 64 FR 36574, July
7, 1999; 66 FR 34372, June 28, 2001; 67 FR 69136, Nov. 15, 2002; 67 FR
78176, Dec. 23, 2002; 68 FR 16959, Apr. 8, 2003; 71 FR 36486, June 27,
2006; 74 FR 12556, Mar. 25, 2009; 76 FR 32320, June 6, 2011; 78 FR
42874, July 18, 2013; 82 FR 9356, Feb. 6, 2017; 82 FR 52220, Nov. 13,
2017; 85 FR 3855, Jan. 23, 2020; 86 FR 11641, Feb. 26, 2021]
Sec.201.11 Satellite carrier statements of account covering statutory
licenses for secondary transmissions.
(a) General. This section prescribes rules pertaining to the deposit
of Statements of Account and royalty fees in the Copyright Office as
required by the satellite carrier license of 17 U.S.C. 119(b)(1), as
amended by Public Law 111-175, in order for certain secondary
transmissions by satellite carriers for private home viewing to be
subject to statutory licensing.
(b) Definitions. (1) The terms distributor, network station, private
home viewing, satellite carrier, subscribe, subscriber, non-network
station, unserved household, primary stream, and multicast stream, have
the meanings set forth in 17 U.S.C. 119(d), as amended by Public Law
111-175.
(2) The terms primary transmission and secondary transmission have
the meanings set forth in section 111(f) of title 17 of the United
States Code.
(c) Accounting periods and deposit. (1) Statements of Account shall
cover semiannual accounting periods of January 1 through June 30, and
July 1 through December 31, and shall be deposited in the Copyright
Office, together with the total statutory royalty
[[Page 585]]
fee or the confirmed arbitration royalty fee for such accounting periods
as prescribed by 17 U.S.C. 119(b)(1)(B), by no later than July 30, if
the Statement of Account covers the January 1 through June 30 accounting
period, and by no later than the immediately following January 30, if
the Statement of Account covers the July 1 through December 31
accounting period.
(2) Upon receiving a Statement of Account and royalty fee, the
Copyright Office will make an official record of the actual date when
such statement and fee were physically received in the Copyright Office.
Thereafter, the Licensing Division of the Copyright Office will examine
the statement and fee for obvious errors or omissions appearing on the
face of the documents, and will require that any such obvious errors or
omissions be corrected before final processing of the documents is
completed. If, as the result of communications between the Copyright
Office and the satellite carrier, an additional fee is deposited or
changes or additions are made in the Statement of Account, the date that
additional deposit or information was actually received in the Office
will be added to the official record of the case. However, completion by
the Copyright Office of the final processing of a Statement of Account
and royalty fee deposit shall establish only the fact of such completion
and the date or dates of receipt shown in the official record. It shall
in no case be considered a determination that the Statement of Account
was, in fact, properly prepared and accurate, that the correct amount of
the royalty fee had been deposited, that the statutory time limits for
filing had been met, or that any other requirements to qualify for a
statutory license have been satisfied.
(3) Statements of Account and royalty fees received before the end
of the particular accounting period they purport to cover will not be
processed by the Copyright Office. Statements of Account and royalty
fees received after the filing deadlines of July 30 or January 30,
respectively, will be accepted for whatever legal effect they may have,
if any.
(4) In the Register's discretion, four years after the close of any
calendar year, the Register may close out the royalty payments account
for that calendar year, and may treat any funds remaining in such
account and any subsequent deposits that would otherwise be attributable
to that calendar year as attributable to the succeeding calendar year.
(d) Forms. (1) Each Statement of Account shall be furnished on an
appropriate form prescribed by the Copyright Office, and shall contain
the information required by that form and its accompanying instructions.
Computation of the copyright royalty fee shall be in accordance with the
procedures set forth in the forms. Copies of Statement of Account forms
are available free from the Copyright Office website.
(2) The form prescribed by the Copyright Office is designated ``
Form SC (Statement of Account for Secondary Transmissions by Satellite
Carriers of Distant Television Signals).''
(e) Contents. Each Statement of Account shall contain the following
information:
(1) A clear designation of the accounting period covered by the
Statement.
(2) The designation ``Owner'' followed by:
(i) The full legal name of the satellite carrier. If the owner is a
partnership, the name of the partnership is to be followed by the name
of at least one individual partner;
(ii) Any other name or names under which the owner conducts the
business of the satellite carrier; and
(iii) The full mailing address of the owner. Ownership, other names
under which the owner conducts the business of the satellite carrier,
and the owner's mailing address shall reflect facts existing on the last
day of the accounting period covered by the Statement of Account.
(3) The designation ``Primary Transmitters,'' followed by the call
signs, broadcast channel numbers, station locations (city and state of
license), and a notation whether that primary transmitter is a ``non-
network station'' or ``network station'' transmitted to any or all of
the subscribers of the satellite carrier during any portion of the
period covered by the Statement of Account.
[[Page 586]]
(4) The designation ``non-network station,'' followed by:
(i) The call sign of each non-network station signal carried for
each month of the period covered by the Statement, and
(ii) The total number of subscribers to each non-network station for
each month of the period covered by the Statement. This number is the
number of subscribers to each non-network station receiving the
retransmission on the last day of each month.
(5) The designation ``Network Stations,'' followed by:
(i) The call sign of each network station carried for each month of
the period covered by the Statement, and
(ii) The total number of subscribers to each network station for
each month of the period covered by the Statement. This number is the
number of subscribers to each network station receiving the
retransmission on the last day of each month.
(6) The total number of subscribers to each non-network station for
the six-month period covered by the Statement multiplied by the
statutory royalty rate prescribed in Sec.386.2 of this chapter.
(7) The total number of subscribers to each network station for the
six-month period covered by the Statement multiplied by the statutory
royalty rate prescribed in Sec.386.2 of this chapter.
(8) The name, address, business title, and telephone number of the
individual or individuals to be contacted for information or questions
concerning the content of the Statement of Account.
(9) A legally binding signature, including an electronic signature
as defined in 15 U.S.C. 7006, of:
(i) The owner of the satellite carrier or a duly authorized agent of
the owner, if the owner is not a partnership or a corporation; or
(ii) A partner, if the owner is a partnership; or
(iii) An officer of the corporation, if the owner is a corporation.
The signature shall be accompanied by:
(A) The printed or typewritten name of the person signing the
Statement of Account;
(B) The date of signature;
(C) If the owner of the satellite carrier is a partnership or a
corporation, by the title or official position held in the partnership
or corporation by the person signing the Statement of Account;
(D) A certification of the capacity of the person signing; and
(E) The following statement:
I, the undersigned Owner or Agent of the Satellite Carrier, or
Officer or Partner, if the Satellite Carrier is a Corporation or
Partnership, have examined this Statement of Account and hereby declare
under penalty of law that all statements of fact contained herein are
true, complete, and correct to the best of my knowledge, information,
and belief, and are made in good faith.
(18 U.S.C., section 1001 (1986))
(f) Royalty fee payment. (1) All royalty fees shall be paid by
electronic funds transfer and payment must be received in the designated
bank by the filing deadline for the relevant accounting period. The
following information shall be provided as part of the EFT and/or as
part of the remittance advice as provided for in circulars issued by the
Copyright Office:
(i) Remitter's name and address;
(ii) Name of a contact person, telephone number and extension, and
email address;
(iii) The actual or anticipated date that the EFT will be
transmitted;
(iv) Type of royalty payment (i.e., satellite);
(v) Total amount submitted via the EFT;
(vi) Total amount to be paid by year and period;
(vii) Number of Statements of Account that the EFT covers;
(viii) ID numbers assigned by the Licensing Division;
(ix) Legal name of the owner for each Statement of Account.
(2) The remittance advice shall be attached to the Statement(s) of
Account. In addition, a copy of the remittance advice shall be emailed
or sent by facsimile to the Licensing Division.
(3) The Office may waive the requirement for payment by electronic
funds transfer as set forth in paragraph (f)(1) of this section. To
obtain a waiver, the remitter shall submit to the Licensing Division at
least 60 days prior to the royalty fee due date a certified statement
setting forth the reasons explaining why payment by an electronic
[[Page 587]]
funds transfer would be virtually impossible or, alternatively, why it
would impose a financial or other hardship on the remitter. The
certified statement must be signed by a duly authorized representative
of the entity making the payment. A waiver shall cover only a single
payment period. Failure to obtain a waiver may result in the remittance
being returned to the remitter.
(g) Copies of statements of account. A licensee shall file an
original and one copy of the statement of account with the Licensing
Division of the Copyright Office.
(h) Corrections, supplemental payments, and refunds. (1) Upon
compliance with the procedures and within the time limits set forth in
paragraph (h)(3) of this section, corrections to Statements of Account
will be placed on record, supplemental royalty fee payments will be
received for deposit, or refunds will be issued, in the following cases:
(i) Where, with respect to the accounting period covered by a
Statement of Account, any of the information given in the Statement
filed in the Copyright Office is incorrect or incomplete; or
(ii) Where calculation of the royalty fee payable for a particular
accounting period was incorrect, and the amount deposited in the
Copyright Office for that period was either too high or too low.
(2) Corrections to Statements of Account will not be placed on
record, supplemental royalty fee payments will not be received for
deposit, and refunds will not be issued, where the information in the
Statements of Account, the royalty fee calculations, or the payments
were correct as of the date on which the accounting period ended, but
changes (for example, addition or deletion of a signal) took place
later.
(3) Requests that corrections to a Statement of Account be placed on
record, that fee payments be accepted, or requests for the issuance of
refunds, shall be made only in the cases mentioned in paragraph (h)(1)
of this section. Such requests shall be addressed to the Licensing
Division of the Copyright Office, and shall meet the following
conditions:
(i) The request must be in writing, must clearly identify its
purpose, and, in the case of a request for a refund, must be received in
the Copyright Office before the expiration of 30 days from the last day
of the applicable Statement of Account filing period, or before the
expiration of 30 days from the date of receipt at the Copyright Office
of the royalty payment that is the subject of the request, whichever
time period is longer. Telephone or similar unsigned requests that meet
these conditions may be permitted, where a follow-up written request
detailing the same information is received by the Copyright Office
within fourteen days after the required thirty-day period.
(ii) The Statement of Account to which the request pertains must be
sufficiently identified in the request (by inclusion of the name of the
owner of the satellite carrier and the accounting period in question) so
that it can be readily located in the records of the Copyright Office.
(iii) The request must contain a clear statement of the facts on
which it is based and provide a clear basis on which a refund may be
granted, in accordance with the following procedures:
(A) In the case of a request filed under paragraph (h)(1)(i) of this
section, where the information given in the Statement of Account is
incorrect or incomplete, the request must clearly identify the erroneous
or incomplete information and provide the correct or additional
information; or
(B) In the case of a request filed under paragraph (h)(1)(ii) of
this section, where the royalty fee was miscalculated and the amount
deposited in the Copyright Office was either too high or too low, the
request must be accompanied by an affidavit under the official seal of
any officer authorized to administer oaths within the United States, or
a statement in accordance with section 1746 of title 28 of the United
States Code, made and signed in accordance with paragraph (e)(9) of this
section. The affidavit or statement shall describe the reasons why the
royalty fee was improperly calculated and include a detailed analysis of
the proper royalty calculation.
(iv)(A) All requests filed under this paragraph (h) must be
accompanied by a filing fee in the amount prescribed in
[[Page 588]]
Sec.201.3(e) of this part for each Statement of Account involved.
Payment of this fee may be in the form of a personal or company check,
or of a certified check, cashier's check or money order, payable to:
Register of Copyrights. No request will be processed until the
appropriate filing fees are received.
(B) All requests that a supplemental royalty fee payment be received
for deposit under this paragraph (h) must be accompanied by a remittance
in the full amount of such fee. Payment of the supplemental royalty fee
must be in the form of certified check, cashier's check, or money order,
payable to: Register of Copyrights; or electronic payment. No such
request will be processed until an acceptable remittance in the full
amount of the supplemental royalty fee has been received.
(v) All requests submitted under this paragraph (h) must be signed
by the satellite carrier owner named in the Statement of Account, or the
duly authorized agent of the owner, in accordance with paragraph (e)(9)
of this section.
(vi) A request for a refund is not necessary where the Licensing
Division, during its examination of a Statement of Account or related
document, discovers an error that has resulted in a royalty overpayment.
In this case, the Licensing Division will forward the royalty refund to
the satellite carrier owner named in the Statement of Account without
regard to the time limitations provided for in paragraph (h)(3)(i) of
this section.
(4) Following final processing, all requests submitted under this
paragraph (h) will be filed with the original Statement of Account in
the records of the Copyright Office. Nothing contained in this paragraph
shall be considered to relieve satellite carriers from their full
obligations under title 17 of the United States Code, and the filing of
a correction or supplemental payment shall have only such effect as may
be attributed to it by a court of competent jurisdiction.
(i) Interest. (1) Royalty fee payments submitted as a result of late
or amended filings will include interest. Interest will begin to accrue
beginning on the first day after the close of the period for filing
statements of account for all underpayments or late payments of
royalties for the satellite carrier statutory license for secondary
transmissions for private home viewing and viewing in commercial
establishments occurring within that accounting period. The accrual
period shall end on the date the electronic payment submitted by a
satellite carrier is received by the Copyright Office. In cases where a
waiver of the electronic funds transfer requirement is approved by the
Copyright Office, and royalties payments are either late or underpaid,
the accrual period shall end on the date the payment is postmarked. If
the payment is not received by the Copyright Office within five business
days of its date, then the accrual period shall end on the date of the
actual receipt by the Copyright Office.
(2)(i) The interest rate applicable to a specific accounting period
beginning with the 1992/2 period shall be the Current Value of Funds
Rate, as established by section 8025.40 of the Treasury Financial Manual
and published in the Federal Register, in effect on the first business
day after the close of the filing deadline for that accounting period.
Satellite carriers wishing to obtain the interest rate for a specific
accounting period may do so by consulting the Federal Register for the
applicable Current Value of Funds Rate, or by contacting the Licensing
Division of the Copyright Office.
(ii) The interest rate applicable to a specific accounting period
earlier than the 1992/2 period shall be the rate fixed by the Licensing
Division of the Copyright Office pursuant to 37 CFR 201.11(h) in effect
on June 30, 1992.
(3) Interest is not required to be paid on any royalty underpayment
or late payment from a particular accounting
[[Page 589]]
period if the interest charge is less than or equal to five dollars
($5.00).
[54 FR 27877, July 3, 1989, as amended at 55 FR 49998, Dec. 4, 1990; 56
FR 29589, June 28, 1991; 57 FR 61834, Dec. 29, 1992; 59 FR 67635, Dec.
30, 1994; 60 FR 34168, June 30, 1995; 60 FR 57937, Nov. 24, 1995; 63 FR
30635, June 5, 1998; 64 FR 36574, July 7, 1999; 70 FR 30366, May 26,
2005; 70 FR 38022, July 1, 2005; 71 FR 45739, Aug. 10, 2006; 72 FR
33691, June 19, 2007; 73 FR 29072, May 20, 2008; 75 FR 56872, Sept. 17,
2010; 78 FR 42874, July 18, 2013; 82 FR 9357, Feb. 6, 2017; 83 FR 51841,
Oct. 15, 2018; 85 FR 19667, Apr. 8, 2020]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.201.11 was
amended by removing ``Licensing Division'' from each place it appears
and adding in its place ``Licensing Section'', effective July 22, 2021.
Sec.201.12 Recordation of certain contracts by cable systems located
outside of the forty-eight contiguous States.
(a) Written, nonprofit contracts providing for the equitable sharing
of costs of videotapes and their transfer, as identified in 17 U.S.C.
111(e)(2), will be filed in the Copyright Office Licensing Division by
recordation upon payment of the prescribed fee. The document submitted
for recordation shall meet the following requirements:
(1) It shall be an original instrument of contract; or it shall be a
copy of an original, accompanied by a certification that shall include a
legally binding signature, including an electronic signature as defined
in 15 U.S.C. 7006, of at least one of the parties to the contract, or an
authorized representative of that party, that the reproduction is a true
copy;
(2) It shall bear the signatures of all persons identified as
parties to the contract, or of their authorized agents or
representatives;
(3) It shall be complete on its face, and shall include any
schedules, appendixes, or other attachments referred to in the
instrument as being part of it; and
(4) It shall be clearly identified, in its body or a covering
transmittal letter, as being submitted for recordation under 17 U.S.C.
111(e).
(b) The fee for recordation of a document is prescribed in Sec.
201.3(e).
(c) The date of recordation is the date when all of the elements
required for recordation, including the prescribed fee, have been
received in the Copyright Office. A document is filed in the Copyright
Office and a filing in the Copyright Office takes place on the date of
recordation. After recordation the document is returned to the sender
with a certificate of recordation.
(Pub. L. 94-553; 17 U.S.C. 111, 702, 708(11))
[42 FR 53961, Oct. 4, 1977, as amended at 56 FR 59885, Nov. 26, 1991; 64
FR 29521, June 1, 1999; 82 FR 9357, Feb. 6, 2017; 85 FR 19667, Apr. 8,
2020]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.201.12(a)
was amended by removing ``Licensing Division'' from each place it
appears and adding in its place ``Licensing Section'', effective July
22, 2021.
Sec.201.13 Notices of objection to certain noncommercial performances
of nondramatic literary or musical works.
(a) Definitions. (1) A Notice of Objection is a notice, as required
by 17 U.S.C. 110(4), to be served as a condition of preventing the
noncommercial performance of a nondramatic literary or musical work
under certain circumstances.
(2) For purposes of this section, the copyright owner of a
nondramatic literary or musical work is the author of the work
(including, in the case of a work made for hire, the employer or other
person for whom the work was prepared), or a person or organization that
has obtained ownership of the exclusive right, initially owned by the
author of performance of the type referred to in 17 U.S.C. 110(4). If
the other requirements of this section are met, a Notice of Objection
may cover the works of more than one copyright owner.
(b) Form. The Copyright Office does not provide printed forms for
the use of persons serving Notices of Objection.
(c) Contents. (1) A Notice of Objection must clearly state that the
copyright owner objects to the performance, and must include all of the
following:
(i) Reference to the statutory authority on which the Notice of
Objection is based, either by citation of 17 U.S.C. 110(4) or by a more
general characterization or description of that statutory provision;
[[Page 590]]
(ii) The date and place of the performance to which an objection is
being made; however, if the exact date or place of a particular
performance, or both, are not known to the copyright owner, it is
sufficient if the Notice describes whatever information the copyright
owner has about the date and place of a particular performance, and the
source of that information unless the source was considered private or
confidential;
(iii) Clear identification, by title and at least one author, of the
particular nondramatic literary or musical work or works, to the
performance of which the copyright owner thereof is lodging objection; a
Notice may cover any number of separately identified copyrighted works
owned by the copyright owner or owners serving the objection.
Alternatively, a blanket notice, with or without separate identification
of certain copyrighted works, and purporting to cover one or more groups
of copyrighted works not separately identified by title and author,
shall have effect if the conditions specified in paragraph (c)(2) of
this section are met; and
(iv) A concise statement of the reasons for the objection.
(2) A blanket notice purporting to cover one or more groups of
copyrighted works not separately identified by title and author shall be
valid only if all of the following conditions are met:
(i) The Notice shall identify each group of works covered by the
blanket notice by a description of any common characteristics
distinguishing them from other copyrighted works, such as common author,
common copyright owner, common publisher, or common licensing agent;
(ii) The Notice shall identify a particular individual whom the
person responsible for the performance can contact for more detailed
information about the works covered by the blanket notice and to
determine whether a particular work planned for performance is in fact
covered by the Notice. Such identification shall include the full name
and business and residence addresses of the individual, telephone
numbers at which the individual can be reached throughout the period
between service of the notice and the performance, and name, addresses,
and telephone numbers of another individual to contact during that
period in case the first cannot be reached.
(iii) If the copyright owner or owners of all works covered by the
blanket notice is not identified in the Notice, the Notice shall include
an offer to identify, by name and last known address, the owner or
owners of any and all such works, upon request made to the individual
referred to in paragraph (c)(2)(ii) of this section.
(3) A Notice of Objection must also include clear and prominent
statements explaining that:
(i) A failure to exclude the works identified in the Notice from the
performance in question may subject the person responsible for the
performance to liability for copyright infringement; and
(ii) The objection is without legal effect if there is no direct or
indirect admission charge for the performance, and if the other
conditions of 17 U.S.C. 110(4) are met.
(d) Signature and identification. (1) A Notice of Objection shall be
in writing and signed by each copyright owner, or such owner's duly
authorized agent, as required by 17 U.S.C. 110(4)(B)(i).
(2) The signature of each owner or agent shall be an actual
handwritten signature of an individual, accompanied by the date of
signature and the full name, address, and telephone number of that
person, typewritten or printed legibly by hand.
(3) If a Notice of Objection is initially served in the form of an
email, fax, or similar communication, as provided by paragraph (e) of
this section, the requirement for an individual's handwritten signature
shall be considered waived if the further conditions of paragraph (e)
are met.
(e) Service. (1) A Notice of Objection shall be served on the person
responsible for the performance at least seven days before the date of
the performance, as provided by 17 U.S.C. 110 (4)(B)(ii).
(2) Service of the Notice may be effected by any of the following
methods:
(i) Personal service;
(ii) First-class mail;
(iii) Email, fax, or similar form of communication, if:
[[Page 591]]
(A) The Notice meets all of the other conditions provided by this
section; and
(B) Before the performance takes place, the person responsible for
the performance receives written confirmation of the Notice, bearing the
actual handwritten signature of each copyright owner or duly authorized
agent.
(3) The date of service is the date the Notice of Objection is
received by the person responsible for the performance or any agent or
employee of that person.
(Pub. L. 94-553; 17 U.S.C. 110(4), 702)
[42 FR 64684, Dec. 28, 1977, as amended at 82 FR 9357, Feb. 6, 2017]
Sec.201.14 Warnings of copyright for use by certain libraries and
archives.
(a) Definitions. (1) A Display Warning of Copyright is a notice
under paragraphs (d)(2) and (e)(2) of section 108 of title 17 of the
United States Code. As required by those sections the ``Display Warning
of Copyright'' is to be displayed at the place where orders for copies
or phonorecords are accepted by certain libraries and archives.
(2) An Order Warning of Copyright is a notice under paragraphs
(d)(2) and (e)(2) of section 108 of title 17 of the United States Code.
As required by those sections the ``Order Warning of Copyright'' is to
be included on printed forms supplied by certain libraries and archives
and used by their patrons for ordering copies or phonorecords.
(b) Contents. A Display Warning of Copyright and an Order Warning of
Copyright shall consist of a verbatim reproduction of the following
notice, printed in such size and form and displayed in such manner as to
comply with paragraph (c) of this section:
notice warning concerning copyright restrictions
The copyright law of the United States (title 17, United States
Code) governs the making of photocopies or other reproductions of
copyrighted material.
Under certain conditions specified in the law, libraries and
archives are authorized to furnish a photocopy or other reproduction.
One of these specific conditions is that the photocopy or reproduction
is not to be ``used for any purpose other than private study,
scholarship, or research.'' If a user makes a request for, or later
uses, a photocopy or reproduction for purposes in excess of ``fair
use,'' that user may be liable for copyright infringement.
This institution reserves the right to refuse to accept a copying
order if, in its judgment, fulfillment of the order would involve
violation of copyright law.
(c) Form and manner of use. (1) A Display Warning of Copyright shall
be printed on heavy paper or other durable material in type at least 18
points in size, and shall be displayed prominently, in such manner and
location as to be clearly visible, legible, and comprehensible to a
casual observer within the immediate vicinity of the place where orders
are accepted.
(2) An Order Warning of Copyright shall be printed within a box
located prominently on the order form itself, either on the front side
of the form or immediately adjacent to the space calling for the name or
signature of the person using the form. The notice shall be printed in
type size no smaller than that used predominantly throughout the form,
and in no case shall the type size be smaller than eight points. The
notice shall be printed in such manner as to be clearly legible,
comprehensible, and readily apparent to a casual reader of the form.
(Pub. L. 94-553; 17 U.S.C. 108, 702)
[42 FR 59265, Nov. 16, 1977, as amended at 82 FR 9357, Feb. 6, 2017]
Sec.201.15 [Reserved]
Sec.201.16 Verification of a Statement of Account for secondary
transmissions made by cable systems and satellite carriers.
(a) General. This section prescribes procedures pertaining to the
verification of a Statement of Account filed with the Copyright Office
pursuant to sections 111(d)(1) or 119(b)(1) of title 17 of the United
States Code.
(b) Definitions. As used in this section:
(1) The term cable system has the meaning set forth in Sec.
201.17(b)(2).
(2) Copyright owner means any person or entity that owns the
copyright in a work embodied in a secondary transmission made by a
statutory licensee that filed a Statement of Account with the Copyright
Office for an accounting
[[Page 592]]
period beginning on or after January 1, 2010, or a designated agent or
representative of such person or entity.
(3) Multiple system operator or MSO means an entity that owns,
controls, or operates more than one cable system.
(4) Net aggregate underpayment means the aggregate amount of
underpayments found by the auditor less the aggregate amount of any
overpayments found by the auditor, as measured against the total amount
of royalties reflected on the Statements of Account examined by the
auditor.
(5) Participating copyright owner means a copyright owner that filed
a notice of intent to audit a Statement of Account pursuant to paragraph
(c)(1) or (2) of this section and any other copyright owner that has
given notice of its intent to participate in such audit pursuant to
paragraph (c)(3) of this section.
(6) The term satellite carrier has the meaning set forth in 17
U.S.C. 119(d)(6).
(7) The term secondary transmission has the meaning set forth in 17
U.S.C. 111(f)(2).
(8) Statement of Account or Statement means a semiannual Statement
of Account filed with the Copyright Office under 17 U.S.C. 111(d)(1) or
119(b)(1) or an amended Statement of Account filed with the Office
pursuant to Sec. Sec.201.11(h) or 201.17(m).
(9) Statutory licensee or licensee means a cable system or satellite
carrier that filed a Statement of Account with the Office under 17
U.S.C. 111(d)(1) or 119(b)(1).
(c) Notice of intent to audit. (1) Any copyright owner that intends
to audit a Statement of Account for an accounting period beginning on or
after January 1, 2010 must provide written notice to the Register of
Copyrights no later than three years after the last day of the year in
which the Statement was filed with the Office. The notice must be
received in the Office on or after December 1st and no later than
December 31st, and a copy of the notice must be provided to the
statutory licensee on the same day that it is filed with the Office.
Between January 1st and January 31st of the next calendar year the
Office will publish a notice in the Federal Register announcing the
receipt of the notice of intent to audit. A notice of intent to audit
may be filed by an individual copyright owner or a designated agent that
represents a group or multiple groups of copyright owners. The notice
shall include a statement indicating that it is a ``notice of intent to
audit'' and it shall contain the following information:
(i) It shall identify the licensee that filed the Statement(s) with
the Office, and the Statement(s) and accounting period(s) that will be
subject to the audit.
(ii) It shall identify the party that filed the notice, including
its name, address, telephone number, and email address, and it shall
include a statement that the party owns or represents one or more
copyright owners that own a work that was embodied in a secondary
transmission made by the statutory licensee during one or more of the
accounting period(s) specified in the Statement(s) that will be subject
to the audit.
(2) Notwithstanding the schedule set forth in paragraph (c)(1) of
this section, any copyright owner that intends to audit a Statement of
Account pursuant to an expanded audit under paragraph (n) of this
section may provide written notice of such to the Register of Copyrights
during any month, but no later than three years after the last day of
the year in which the Statement was filed with the Office. A copy of the
notice must be provided to the licensee on the same day that the notice
is filed with the Office. Within thirty days after the notice has been
received, the Office will publish a notice in the Federal Register
announcing the receipt of the notice of intent to conduct an expanded
audit. A notice given pursuant to this paragraph may be provided by an
individual copyright owner or a designated agent that represents a group
or multiple groups of copyright owners. The notice shall include a
statement indicating that it is a ``notice of intent to conduct an
expanded audit'' and it shall contain the information specified in
paragraphs (c)(1)(i) and (ii) of this section.
(3) Within thirty days after a notice is published in the Federal
Register pursuant to paragraphs (c)(1) or (2) of this section, any other
copyright owner that owns a work that was embodied in
[[Page 593]]
a secondary transmission made by that statutory licensee during an
accounting period covered by the Statement(s) of Account referenced in
the Federal Register notice and that wishes to participate in the audit
of such Statement(s) must provide written notice of such participation
to the Copyright Office as well as to the licensee and party that filed
the notice of intent to audit. A notice given pursuant to this paragraph
may be provided by an individual copyright owner or a designated agent
that represents a group or multiple groups of copyright owners, and
shall include the information specified in paragraphs (c)(1)(i) and (ii)
of this section.
(4) Notices submitted to the Office under paragraphs (c)(1) through
(3) of this section should be addressed to the ``U.S. Copyright Office,
Office of the General Counsel'' and should be sent to the address for
time-sensitive requests set forth in Sec.201.1(c)(1).
(5) Once the Office has received a notice of intent to audit a
Statement of Account under paragraphs (c)(1) or (2) of this section, a
notice of intent to audit that same Statement will not be accepted for
publication in the Federal Register.
(6) Once the Office has received a notice of intent to audit two
Statements of Account filed by a particular satellite carrier or a
particular cable system, a notice of intent to audit that same carrier
or that same system under paragraph (c)(1) of this section will not be
accepted for publication in the Federal Register until the following
calendar year.
(d) Selection of the auditor. (1) Within forty-five days after a
notice is published in the Federal Register pursuant to paragraph (c)(1)
of this section, the participating copyright owners shall provide the
statutory licensee with a list of three independent and qualified
auditors, along with information reasonably sufficient for the licensee
to evaluate the proposed auditors' independence and qualifications,
including:
(i) The auditor's curriculum vitae and a list of audits that the
auditor has conducted pursuant to 17 U.S.C. 111(d)(6) or 119(b)(2);
(ii) A list and, subject to any confidentiality or other legal
restrictions, a brief description of any other work the auditor has
performed for any of the participating copyright owners during the prior
two calendar years;
(iii) A list identifying the participating copyright owners for whom
the auditor's firm has been engaged during the prior two calendar years;
and,
(iv) A copy of the engagement letter that would govern the auditor's
performance of the audit and that provides for the auditor to be
compensated on a non-contingent flat fee or hourly basis that does not
take into account the results of the audit.
(2) Within five business days after receiving the list of auditors
from the participating copyright owners, the licensee shall select one
of the proposed auditors and shall notify the participating copyright
owners of its selection. That auditor shall be retained by the
participating copyright owners and shall conduct the audit on behalf of
all copyright owners who own a work that was embodied in a secondary
transmission made by the licensee during the accounting period(s)
specified in the Statement(s) of Account identified in the notice of
intent to audit.
(3) The auditor shall be independent and qualified as defined in
this section. An auditor shall be considered independent and qualified
if:
(i) He or she is a certified public accountant and a member in good
standing with the American Institute of Certified Public Accountants
(``AICPA'') and the licensing authority for the jurisdiction(s) where
the auditor is licensed to practice;
(ii) He or she is not, for any purpose other than the audit, an
officer, employee, or agent of any participating copyright owner;
(iii) He or she is independent as that term is used in the Code of
Professional Conduct of the AICPA, including the Principles, Rules, and
Interpretations of such Code; and
(iv) He or she is independent as that term is used in the Statements
on Auditing Standards promulgated by the Auditing Standards Board of the
AICPA and Interpretations thereof issued by the Auditing Standards
Division of the AICPA.
[[Page 594]]
(e) Commencement of the audit. (1) Within ten days after the
selection of the auditor, the auditor shall meet by telephone or in
person with designated representatives of the participating copyright
owners and the statutory licensee to review the scope of the audit,
audit methodology, applicable auditing standard, and schedule for
conducting and completing the audit.
(2) Within thirty days after the selection of the auditor, the
licensee shall provide the auditor and a representative of the
participating copyright owners with a list of all broadcast signals
retransmitted pursuant to the statutory license in each community
covered by each of the Statements of Account subject to the audit,
including the call sign for each broadcast signal and each multicast
signal. In the case of an audit involving a cable system or MSO, the
list must include the classification of each signal on a community-by-
community basis pursuant to Sec.201.17(e)(9)(iv) through (v) and
201.17(h). The list shall be signed by a duly authorized agent of the
licensee and the signature shall be accompanied by the following
statement ``I, the undersigned agent of the statutory licensee, hereby
declare under penalty of law that all statements of fact contained
herein are true, complete, and correct to the best of my knowledge,
information, and belief, and are made in good faith.''
(f) Failure to proceed with a noticed audit. If the participating
copyright owners fail to provide the statutory licensee with a list of
auditors or fail to retain the auditor selected by the licensee pursuant
to paragraph (d)(2) of this section, the Statement(s) of Account
identified in the notice of intent to audit shall not be subject to
audit under this section.
(g) Ex parte communications. Following the initial consultation
pursuant to paragraph (e)(1) of this section and until the distribution
of the auditor's final report to the participating copyright owners
pursuant to paragraph (i)(3) of this section, there shall be no ex parte
communications regarding the audit between the auditor and the
participating copyright owners or their representatives; provided,
however, that the auditor may engage in such ex parte communications
where either:
(1) Subject to paragraph (i)(4) of this section, the auditor has a
reasonable basis to suspect fraud and that participation by the licensee
in communications regarding the suspected fraud would, in the reasonable
opinion of the auditor, prejudice the investigation of such suspected
fraud; or
(2) The auditor provides the licensee with a reasonable opportunity
to participate in communications with the participating copyright owners
or their representatives and the licensee declines to do so.
(h) Auditor's authority and access. (1) The auditor shall have
exclusive authority to verify all of the information reported on the
Statement(s) of Account subject to the audit in order to confirm the
correctness of the calculations and royalty payments reported therein;
provided, however, that the auditor shall not determine whether any
cable system properly classified any broadcast signal as required by
Sec.201.17(e)(9)(iv) through (v) and 201.17(h) or whether a satellite
carrier properly determined that any subscriber or group of subscribers
is eligible to receive any broadcast signals under 17 U.S.C. 119(a).
(2) The statutory licensee shall provide the auditor with reasonable
access to the licensee's books and records and any other information
that the auditor needs in order to conduct the audit. The licensee shall
provide the auditor with any information the auditor reasonably requests
promptly after receiving such a request.
(3) The audit shall be conducted during regular business hours at a
location designated by the licensee with consideration given to
minimizing the costs and burdens associated with the audit. If the
auditor and the licensee agree, the audit may be conducted in whole or
in part by means of electronic communication.
(4) With the exception of its obligations under paragraphs (d) and
(e) of this section, a licensee may suspend its participation in an
audit for no more than sixty days before the semi-annual due dates for
filing Statements of Account by providing advance written notice to the
auditor and a representative
[[Page 595]]
of the participating copyright owners, provided however, that if the
participating copyright owners notify the licensee within ten days of
receiving such notice of their good-faith belief that the suspension
could prevent the auditor from delivering his or her final report to the
participating copyright owners before the statute of limitations may
expire on any claims under the Copyright Act related to a Statement of
Account covered by that audit, the licensee may not suspend its
participation in the audit unless it first executes a tolling agreement
to extend the statute of limitations by a period of time equal to the
period of the suspension.
(i) Audit report. (1) After reviewing the books, records, and any
other information received from the statutory licensee, the auditor
shall prepare a draft written report setting forth his or her initial
conclusions and shall deliver a copy of that draft report to the
licensee. The auditor shall then consult with a representative of the
licensee regarding the conclusions set forth in the draft report for up
to thirty days. If, upon consulting with the licensee, the auditor
concludes that there are errors in the facts or conclusions set forth in
the draft report, the auditor shall correct those errors.
(2) Within thirty days after the date that the auditor delivered the
draft report to the licensee pursuant to paragraph (i)(1) of this
section, the auditor shall prepare a final version of the written report
setting forth his or her ultimate conclusions and shall deliver a copy
of that final version to the licensee. Within fourteen days thereafter,
the licensee may provide the auditor with a written rebuttal setting
forth its good faith objections to the facts or conclusions set forth in
the final version of the report.
(3) Subject to the confidentiality provisions set forth in paragraph
(l) of this section, the auditor shall attach a copy of any written
rebuttal timely received from the licensee to the final version of the
report and shall deliver a copy of the complete final report to the
participating copyright owners and the licensee. The final report must
be delivered by November 1st of the year in which the notice was
published in the Federal Register pursuant to paragraph (c)(1) of this
section and within five business days after the last day on which the
licensee may provide the auditor with a written rebuttal pursuant to
paragraph (i)(2) of this section. Upon delivery of the complete and
final report, the auditor shall notify the Office that the audit has
been completed. The notice to the Office shall specify the date that the
auditor delivered the final report to the parties; whether, with respect
to each statement examined, the auditor has discovered any underpayment
or overpayment; and whether the auditor has received a written rebuttal
from the licensee. The notice should be addressed to the ``U.S.
Copyright Office, Office of the General Counsel'' and should be sent to
the address for time-sensitive requests specified in Sec.201.1(c)(1).
(4) Prior to the delivery of the final report pursuant to paragraph
(i)(3) of this section the auditor shall not provide any draft of his or
her report to the participating copyright owners or their
representatives; provided, however, that the auditor may deliver a draft
report simultaneously to the licensee and the participating copyright
owners if the auditor has a reasonable basis to suspect fraud.
(j) Corrections, supplemental payments, and refunds. (1) If the
auditor concludes in his or her final report that any of the information
reported on a Statement of Account is incorrect or incomplete, that the
calculation of the royalty fee payable for a particular accounting
period was incorrect, or that the amount deposited in the Office for
that period was too low, a statutory licensee may cure such incorrect or
incomplete information or underpayment by filing an amendment to the
Statement and, in case of a deficiency in payment, by depositing
supplemental royalty fee payments with the Office using the procedures
set forth in Sec. Sec.201.11(h) or 201.17(m); provided, however, that
the amendment and/or payments are received within sixty days after the
delivery of the final report to the participating copyright owners and
the licensee or in the case of an audit of an MSO, within ninety days
after the delivery of such report; and further
[[Page 596]]
provided that the licensee has reimbursed the participating copyright
owners for the licensee's share of the audit costs, if any, determined
to be owing pursuant to paragraph (k)(3) of this section. While
reimbursement of audit costs shall be paid to a representative of the
participating copyright owners, supplemental royalty fee payments made
pursuant to this paragraph shall be delivered to the Office and not to
the participating copyright owners or their representatives.
(2) Notwithstanding Sec. Sec.201.11(h)(3)(i) and 201.17(m)(4)(i),
if the auditor concludes in his or her final report that there was an
overpayment on a particular Statement, the licensee may request a refund
from the Office using the procedures set forth in Sec. Sec.
201.11(h)(3) or 201.17(m)(4), provided that the request is received
within sixty days after the delivery of the final report to the
participating copyright owners and the licensee or within ninety days
after the delivery of the final report in the case of an audit of an
MSO.
(k) Costs of the audit. (1) No later than the fifteenth day of each
month during the course of the audit, the auditor shall provide the
participating copyright owners with an itemized statement of the costs
incurred by the auditor during the previous month, and shall provide a
copy to the licensee that is the subject of the audit.
(2) If the auditor concludes in his or her final report that there
was no net aggregate underpayment or a net aggregate underpayment of
five percent or less, the participating copyright owners shall pay for
the full costs of the auditor. If the auditor concludes in his or her
final report that there was a net aggregate underpayment of more than
five percent but less than ten percent, the costs of the auditor are to
be split evenly between the participating copyright owners and the
licensee that is the subject of the audit. If the auditor concludes in
his or her final report that there was a net aggregate underpayment of
ten percent or more, the licensee will be responsible for the full costs
of the auditor.
(3) If a licensee is responsible for any portion of the costs of the
auditor, a representative of the participating copyright owners shall
provide the licensee with an itemized accounting of the auditor's total
costs, the appropriate share of which should be paid by the licensee to
such representative no later than sixty days after the delivery of the
final report to the participating copyright owners and licensee or
within ninety days after the delivery of such report in the case of an
audit of an MSO.
(4) Notwithstanding anything to the contrary in paragraph (k) of
this section, no portion of the auditor's costs that exceed the amount
of the net aggregate underpayment may be recovered from the licensee.
(l) Confidentiality. (1) For purposes of this section, confidential
information shall include any non-public financial or business
information pertaining to a Statement of Account that is the subject of
an audit under 17 U.S.C. 111(d)(6) or 119(b)(2).
(2) Access to confidential information under this section shall be
limited to:
(i) The auditor; and
(ii) Subject to the execution of a reasonable confidentiality
agreement, outside counsel for the participating copyright owners and
any third party consultants retained by outside counsel, and any
employees, agents, consultants, or independent contractors of the
auditor who are not employees, officers, or agents of a participating
copyright owner for any purpose other than the audit, who are engaged in
the audit of a Statement or activities directly related hereto, and who
require access to the confidential information for the purpose of
performing such duties during the ordinary course of their employment.
(3) The auditor and any person identified in paragraph (l)(2)(ii) of
this section shall implement procedures to safeguard all confidential
information received from any third party in connection with an audit,
using a reasonable standard of care, but no less than the same degree of
security used to protect confidential financial and business information
or similarly sensitive information belonging to the auditor or such
person.
(m) Frequency and scope of the audit. (1) Except as provided in
paragraph
[[Page 597]]
(n)(2) of this section with respect to expanded audits, a cable system,
MSO, or satellite carrier shall be subject to no more than one audit per
calendar year.
(2) Except as provided in paragraph (n)(1) of this section, the
audit of a particular cable system or satellite carrier shall include no
more than two of the Statements of Account filed by that cable system or
satellite carrier that may be timely noticed for audit under paragraph
(c)(1) of this section.
(3) Except as provided in paragraph (n)(3)(ii) of this section, an
audit of an MSO shall be limited to a sample of no more than ten percent
of the MSO's Form 3 cable systems and no more than ten percent of the
MSO's Form 2 systems.
(n) Expanded audits. (1) If the auditor concludes in his or her
final report that there was a net aggregate underpayment of five percent
or more on the Statements of Account examined in an initial audit
involving a cable system or satellite carrier, a copyright owner may
expand the audit to include all previous Statements filed by that cable
system or satellite carrier that may be timely noticed for audit under
paragraph (c)(2) of this section. The expanded audit shall be conducted
using the procedures set forth in paragraphs (d) through (l) of this
section, with the following exceptions:
(i) The expanded audit may be conducted by the same auditor that
performed the initial audit, provided that the participating copyright
owners provide the licensee with updated information reasonably
sufficient to allow the licensee to determine that there has been no
material change in the auditor's independence and qualifications. In the
alternative, the expanded audit may be conducted by an auditor selected
by the licensee using the procedure set forth in paragraph (d) of this
section.
(ii) The auditor shall deliver his or her final report to the
participating copyright owners and the licensee within five business
days following the last day on which the licensee may provide the
auditor with a written rebuttal pursuant to paragraph (i)(2) of this
section, but shall not be required to deliver the report by November 1st
of the year in which the notice was published in the Federal Register
pursuant to paragraph (c) of this section.
(2) An expanded audit of a cable system or a satellite carrier that
is conducted pursuant to paragraph (n)(1) of this section may be
conducted concurrently with another audit involving that same licensee.
(3) If the auditor concludes in his or her final report that there
was a net aggregate underpayment of five percent or more on the
Statements of Account examined in an initial audit involving an MSO:
(i) The cable systems included in the initial audit of that MSO
shall be subject to an expanded audit in accordance with paragraph
(n)(1) of this section; and
(ii) The MSO shall be subject to a new initial audit involving a
sample of no more than thirty percent of its Form 3 cable systems and no
more than thirty percent of its Form 2 cable systems, provided that the
notice of intent to conduct that audit is filed in the same calendar
year as the delivery of such final report.
(o) Retention of records. For each Statement of Account or amended
Statement that a statutory licensee files with the Office for accounting
periods beginning on or after January 1, 2010, the licensee shall
maintain all records necessary to confirm the correctness of the
calculations and royalty payments reported in each Statement or amended
Statement for at least three and one-half years after the last day of
the year in which that Statement or amended Statement was filed with the
Office and, in the event that such Statement or amended Statement is the
subject of an audit conducted pursuant to this section, shall continue
to maintain those records until three years after the auditor delivers
the final report to the participating copyright owners and the licensee
pursuant to paragraph (i)(3) of this section.
[79 FR 68628, Nov. 18, 2014, as amended at 82 FR 9357, Feb. 6, 2017]
[[Page 598]]
Sec.201.17 Statements of Account covering compulsory licenses for
secondary transmissions by cable systems.
(a) General. This section prescribes rules pertaining to the deposit
of Statements of Account and royalty fees in the Copyright Office as
required by 17 U.S.C. 111(d)(1) in order for secondary transmissions of
cable systems to be subject to compulsory licensing.
(b) Definitions. (1) Gross receipts for the ``basic service of
providing secondary transmissions of primary broadcast transmitters''
include the full amount of monthly (or other periodic) service fees for
any and all services or tiers of services which include one or more
secondary transmissions of television or radio broadcast signals, for
additional set fees, and for converter fees. In no case shall gross
receipts be less than the cost of obtaining the signals of primary
broadcast transmitters for subsequent retransmission. All such gross
receipts shall be aggregated and the distant signal equivalent (DSE)
calculations shall be made against the aggregated amount. Gross receipts
for secondary transmission services do not include installation
(including connection, relocation, disconnection, or reconnection) fees,
separate charges for security, alarm or facsimile services, charges for
late payments, or charges for pay cable or other program origination
services: Provided That, the origination services are not offered in
combination with secondary transmission service for a single fee.
(2) A cable system is a facility, located in any State, Territory,
Trust Territory, or Possession, that in whole or in part receives
signals transmitted or programs broadcast by one or more television
broadcast stations licensed by the Federal Communications Commission,
and makes secondary transmissions of such signals or programs by wires,
cables, microwave, or other communications channels to subscribing
members of the public who pay for such service. A system that meets this
definition is considered a ``cable system'' for copyright purposes, even
if the FCC excludes it from being considered a ``cable system'' because
of the number or nature of its subscribers or the nature of its
secondary transmissions. The Statements of Account and royalty fees to
be deposited under this section shall be recorded and deposited by each
individual cable system desiring its secondary transmissions to be
subject to compulsory licensing. The owner of each individual cable
system on the last day of the accounting period covered by a Statement
of Account is responsible for depositing the Statement of Account and
remitting the copyright royalty fees. For these purposes, and the
purpose of this section, an ``individual'' cable system is each cable
system recognized as a distinct entity under the rules, regulations, and
practices of the Federal Communications Commission in effect on the last
day of the accounting period covered by a Statement of Account, in the
case of the preparation and deposit of a Statement of Account and
copyright royalty fee. For these purposes, two or more cable facilities
are considered as one individual cable system if the facilities are
either:
(i) In contiguous communities under common ownership or control or
(ii) Operating from one headend.
(3) FCC means the Federal Communications Commission.
(4) In the case of cable systems which make secondary transmissions
of all available FM radio signals, which signals are not electronically
processed by the system as separate and discrete signals, an FM radio
signal is ``generally receivable'' if:
(i) It is usually carried by the system whenever it is received at
the system's headend, and
(ii) As a result of monitoring at reasonable times and intervals, it
can be expected to be received at the system's headend, with the
system's FM antenna, at least three consecutive hours each day at the
same time each day, five or more days a week, for four or more weeks
during any calendar quarter, with a strength of not less than fifty
microvolts per meter measured at the foot of the tower or pole to which
the antenna is attached.
(5) The terms primary transmission, secondary transmission, local
service area of a primary transmitter, distant signal equivalent,
network station, independent
[[Page 599]]
station, noncommercial educational station, primary stream, multicast
stream, simulcast, primary transmitter, subscriber, and subscribe have
the meanings set forth in 17 U.S.C. 111(f), as amended by Public Laws
94-553, 103-369, and 111-175.
(6) A primary transmitter is a ``distant'' station, for purposes of
this section, if the programming of such transmitter is carried by the
cable system in whole or in part beyond the local service area of such
primary transmitter.
(7) A translator station is, with respect to programs both
originally transmitted and retransmitted by it, a primary transmitter
for the purposes of this section. A translator station which retransmits
the programs of a network station will be considered a network station;
a translator station which retransmits the programs of an independent
station shall be considered an independent station; and a translator
station which retransmits the programs of a noncommercial educational
station shall be considered a noncommercial educational station. The
determination of whether a translator station should be identified as a
``distant'' station depends on the local service area of the translator
station.
(8) For purposes of this section, the ``rules and regulations of the
FCC in effect on October 19, 1976,'' which permitted a cable system, at
its election, to omit the retransmission of a particular program and
substitute another program in its place, refers to that portion of
former 47 CFR 76.61(b)(2), revised June 25, 1981, and Sec.76.63
(referring to Sec.76.61(b)(2)), deleted June 25, 1981, concerning the
substitution of a program that is primarily of local interest to the
distant community (e.g., a local news or public affairs program).
(9) For purposes of this section, the ``rules and regulations of the
FCC,'' which require a cable system to omit the retransmission of a
particular program and substitute another program in its place, refers
to 47 CFR 76.67.
(10) For purposes of this section, a cable system ``lacks the
activated channel capacity to retransmit on a full-time basis all
signals which it is authorized to carry'' only if:
(i) All of its activated television channels are used exclusively
for the secondary transmission of television signals; and
(ii) The number of primary television transmitters secondarily
transmitted by the cable system exceeds the number of its activated
television channels.
(c) Accounting periods and deposit. (1) Statements of Account shall
cover semiannual accounting periods of January 1 through June 30, and
July 1 through December 31, and shall be deposited in the Copyright
Office, together with the total royalty fee for such accounting periods
as prescribed by 17 U.S.C. 111(d)(1)(B) through (F), by no later than
the immediately following August 29, if the Statement of Account covers
the January 1 through June 30 accounting period, and by no later than
the immediately following March 1, if the Statement of Account covers
the July 1 through December 31 accounting period.
(2) Upon receiving a Statement of Account and royalty fee, the
Copyright Office will make an official record of the actual date when
such Statement and fee were received in the Copyright Office.Thereafter,
the Office will examine the Statement and fee for obvious errors or
omissions appearing on the face of the documents, and will require that
any such obvious errors or omissions be corrected before final
processing of the documents is completed. If, as the result of
communications between the Copyright Office and the cable system, an
additional fee is deposited or changes or additions are made in the
Statement of Account, the date that additional deposit or information
was actually received in the Office will be added to the official record
of the case. However, completion by the Copyright Office of the final
processing of a Statement of Account and royalty fee deposit shall
establish only the fact of such completion and the date or dates of
receipt shown in the official record. It shall in no case be considered
a determination that the Statement of Account was, in fact, properly
prepared and accurate, that the correct amount of the royalty fee had
been deposited, that the statutory time limits for filing had been met,
or that any other requirements to qualify for a compulsory license have
been satisfied.
[[Page 600]]
(3) Statements of Account and royalty fees received before the end
of the particular accounting period they purport to cover will not be
processed by the Copyright Office. Statements of Account and royalty
fees received after the filing deadlines of August 29 or March 1,
respectively, will be accepted for whatever legal effect they may have,
if any.
(4) In the Register's discretion, four years after the close of any
calendar year, the Register may, close out the royalty payments account
for that calendar year, and may treat any funds remaining in such
account and any subsequent deposits that would otherwise be attributable
to that calendar year as attributable to the succeeding calendar year.
(d) Statement of Account forms and submission. Cable systems should
submit each Statement of Account using an appropriate form provided by
the Copyright Office on its Web site and following the instructions for
completion and submission provided on the Office's Web site or the form
itself.
(2) The forms prescribed by the Copyright Office are designated
``Statement of Account for Secondary Transmissions By Cable Systems'':
(i) Form SA1-2--``Short Form'' for use by cable systems whose
semiannual gross receipts for secondary transmission total less than
$527,600; and
(ii) Form SA3--``Long Form'' for use by cable systems whose
semiannual gross receipts for secondary transmission total $527,600 or
more.
(e) Contents. Each Statement of Account shall contain the following
information:
(1) A clear designation of the accounting period covered by the
Statement.
(2) The designation ``Owner,'' followed by:
(i) The full legal name of the owner of the cable system. The owner
of the cable system is the individual or entity that provides the
retransmission service and collects payment from the end user either
directly or indirectly through a third party. If the owner is a
partnership, the name of the partnership is to be followed by the name
of at least one individual partner;
(ii) Any other name or names under which the owner conducts the
business of the cable system; and
(iii) The full mailing address of the owner.
Ownership, other names under which the owner conducts the business of
the cable system, and the owner's mailing address shall reflect facts
existing on the last day of the accounting period covered by the
Statement of Account.
(3) The designation ``System,'' followed by:
(i) Any business or trade names used to identify the business and
operation of the system, unless these names have already been given
under the designation ``Owner''; and
(ii) The full mailing address of the system, unless such address is
the same as the address given under the designation ``Owner''.
Business or trade names used to identify the business and operation of
the system, and the system's mailing address, shall reflect the facts
existing on the last day of the accounting period covered by the
Statement of Account.
(4) The designation ``Area Served'', followed by the name of the
community or communities served by the system. For this purpose a
``community'' is the same as a ``community unit'' as defined in FCC
rules and regulations.
(5) The designation ``Channels,'' followed by:
(i) The number of channels, including multicast streams on which the
cable system made secondary transmissions to its subscribers, and
(ii) The cable system's total activated channel capacity, in each
case during the period covered by the Statement.
(iii) A multicast stream is considered a channel for purposes of
this section.
(6) The designation ``Secondary Transmission Service: Subscribers
and Rates'', followed by:
(i) A brief description of each subscriber category for which a
charge is made by the cable system for the basic service of providing
secondary transmissions of primary broadcast transmitters;
(ii) The number of subscribers to the cable system in each such
subscriber category; and
[[Page 601]]
(iii) The charge or charges made per subscriber to each such
subscriber category for the basic service of providing such secondary
transmissions. Standard rate variations within a particular category
should be summarized; discounts allowed for advance payment should not
be included. For these purposes:
(A) The description, the number of subscribers, and the charge or
charges made shall reflect the facts existing on the last day of the
period covered by the Statement; and
(B) Each entity (for example, the owner of a private home, the
resident of an apartment, the owner of a motel, or the owner of an
apartment house) which is charged by the cable system for the basic
service of providing secondary transmissions shall be considered one
subscriber.
(7) The designation ``Gross Receipts'', followed by the gross amount
paid to the cable system by subscribers for the basic service of
providing secondary transmissions of primary broadcast transmissions
during the period covered by the Statement of Account.
(i) If the cable system maintains its revenue accounts on an accrual
basis, gross receipts for any accounting period includes all such
amounts accrued for secondary transmission service furnished during that
period, regardless of when accrued:
(A) Less the amount of any bad debts actually written-off during
that accounting period;
(B) Plus the amount of any previously written-off bad debts for
secondary transmission service which were actually recovered during that
accounting period.
(ii) If the cable system maintains its revenue accounts on a cash
basis, gross receipts of any accounting period includes all such amounts
actually received by the cable system during that accounting period.
(8) The designation ``Services Other Than Secondary Transmissions:
Rates,'' followed by a description of each package of service which
consists solely of services other than secondary transmission services,
for which a separate charge was made or established, and which the cable
system furnished or made available to subscribers during the period
covered by the Statement of Account, together with the amount of such
charge. However, no information need be given concerning services
furnished at cost. Specific amounts charged for pay cable programming
need not be given if the rates are on a variable, per-program basis.
(The fact of such variable charge shall be indicated.)
(9) The designation ``Primary Transmitters: Television'', followed
by an identification of all primary television transmitters whose
signals were carried by the cable system during the period covered by
the Statement of Account, other than primary transmitters of programs
carried by the cable system exclusively pursuant to rules, regulations,
or authorizations of the FCC in effect on October 19, 1976, permitting
the substitution of signals under certain circumstances, and required to
be specially identified by paragraph (e)(11) of this section, together
with the information listed below:
(i) The station call sign of the primary transmitter.
(ii) The name of the community to which that primary transmitter is
licensed by the FCC (in the case of domestic signals) or with which that
primary transmitter is identified (in the case of foreign signals).
(iii) The number of the channel upon which that primary transmitter
broadcasts in the community to which that primary transmitter is
licensed by the FCC (in the case of domestic signals) or with which that
primary transmitter is identified (in the case of foreign signals).
(iv) A designation as to whether that primary transmitter is a
``network station'', an ``independent station'', or a ``noncommercial
educational station''.
(v) A designation as to whether that primary transmitter is a
``distant'' station.
(vi) If that primary transmitter is a ``distant'' station, a
specification of whether the signals of that primary transmitter are
carried:
(A) On a part-time basis where full-time carriage is not possible
because the cable system lacks the activated channel capacity to
retransmit on a
[[Page 602]]
full-time basis all signals which it is authorized to carry; or
(B) On any other basis.
If the signals of that primary transmitter are carried on a part-time
basis because of lack of activated channel capacity, the Statement shall
also include a log showing the dates on which such carriage occurred,
and the hours during which such carriage occurred on those dates. Hours
of carriage shall be accurate to the nearest quarter-hour, except that,
in any case where such part-time carriage extends to the end of the
broadcast day of the primary transmitter, an approximate ending hour may
be given if it is indicated as an estimate.
(vii) A designation as to whether the channel carried is a multicast
stream, and if so, the sub-channel number assigned to that stream by the
television broadcast licensee.
(viii) Simulcasts must be reported and labeled on the Statement of
Accounts form in an easily identifiable manner (e.g., WETA-simulcast).
(ix) The information indicated by paragraph (e)(9), paragraphs (v)
through (viii) of this section, is not required to be given by any cable
system that appropriately completed Form SA1-2 for the period covered by
the Statement.
(x) Notwithstanding the requirements of this section, where a cable
system carried a distant primary transmitter under FCC rules and
regulations in effect on October 19, 1976 which permitted carriage of
specific network programs on a part-time basis in certain circumstances
(former 47 CFR 76.59 (d) (2) and (4), 76.61(e) (2) and (4), and 76.63,
referring to Sec.76.61(e) (2) and (4), all of which were deleted June
25, 1981), carriage of that primary transmitter on that basis need not
be reported, and that carriage is to be excluded in computing the
distant signal equivalent of that primary transmitter.
(10) The designation ``Primary Transmitters: Radio'', followed by an
identification of primary radio transmitters whose signals were carried
by the cable system during the period covered by the Statement of
Account, together with the information listed below:
(i) A designation as to whether each primary transmitter was
electronically processed by the system as a separate and discrete
signal.
(ii) The station call sign of each:
(A) AM primary transmitter;
(B) FM primary transmitter, the signals of which were electronically
processed by the system as separate and discrete signals; and
(C) FM primary transmitter carried on an all-band retransmission
basis, the signals of which were generally receivable by the system.
(iii) A designation as to whether the primary transmitter is AM or
FM.
(iv) The name of the community to which that primary transmitter is
licensed by the FCC (in the case of domestic signals) or with which that
primary transmitter is identified (in the case of foreign signals).
(11) A special statement and program log, which shall consist of the
information indicated below for all nonnetwork television programming
that, during the period covered by the Statement, was carried in whole
or in part beyond the local service area of the primary transmitter of
such programming under (i) rules or regulations of the FCC requiring a
cable system to omit the further transmission of a particular program
and permitting the substitution of another program in place of the
omitted transmission; or (ii) rules, regulations, or authorizations of
the FCC in effect on October 19, 1976, permitting a cable system, at its
election, to omit the further transmission of a particular program and
permitting the substitution of another program in place of the omitted
transmission:
(A) The name or title of the substitute program.
(B) Whether the substitute program was transmitted live by its
primary transmitter.
(C) The station call sign of the primary transmitter of the
substitute program.
(D) The name of the community to which the primary transmitter of
the substitute program is licensed by the FCC (in the case of domestic
signals) or with which that primary transmitter is identified (in the
case of foreign signals).
[[Page 603]]
(E) The date when the secondary transmission of the substitute
program occurred, and the hours during which such secondary transmission
occurred on that date accurate to the nearest 5 minutes.
(F) A designation as to whether deletion of the omitted program was
permitted by the rules, regulations, or authorizations of the FCC in
effect on October 19, 1976, or was required by the rules, regulations,
or authorizations of the FCC.
(12) A statement of the total royalty fee payable for the period
covered by the Statement of Account, together with a royalty fee
analysis which gives a clear, complete, and detailed presentation of the
determination of such fee. This analysis shall present in appropriate
sequence all facts, figures, and mathematical processes used in
determining such fee, and shall do so in such manner as required in the
appropriate form so as to permit the Copyright Office to verify readily,
from the face of the Statement of Account, the accuracy of such
determination and fee. The royalty fee analysis is not required to be
given by any cable system whose gross receipts from subscribers for the
period covered by the Statement of Account, for the basic service of
providing secondary transmissions of primary broadcast transmissions,
total $137,100 or less.
(13) The name, address, and telephone number of an individual who
may be contacted by the Copyright Office for further information about
the Statement of Account.
(14) A legally binding signature, including an electronic signature
as defined in 15 U.S.C. 7006, of:
(i) The owner of the cable system or a duly authorized agent of the
owner, if the owner is not a partnership or a corporation; or
(ii) A partner, if the owner is a partnership; or
(iii) An officer of the corporation, if the owner is a corporation.
The signature shall be accompanied by:
(A) The printed name of the person signing the Statement of Account;
(B) The date of signature;
(C) If the owner of the cable system is a partnership or a
corporation, by the title or official position held in the partnership
or corporation by the person signing the Statement of Account;
(D) A certification of the capacity of the person signing; and
(E) A declaration of the veracity of the statements of fact
contained in the Statement of Account and the good faith of the person
signing in making such statement of fact.
(f) Computation of distant signal equivalents. (1) A cable system
that elects to delete a particular television program and substitute for
that program another television program (``substitute program'') under
rules, regulations, or authorizations of the FCC in effect on October
19, 1976, which permit a cable system, at its election, to omit the
retransmission of a particular program and substitute another program in
its place shall compute the distant signal equivalent (``DSE'') of each
primary transmitter that broadcasts one or more substitute programs by
dividing:
(i) The number of the primary transmitter's live, nonnetwork,
substitute programs that were carried by the cable system, during the
period covered by the Statement of Account, in substitution for programs
deleted at the option of the system; by
(ii) The number of days in the year in which the substitution
occurred.
(2)(i) Where a cable system carries a primary transmitter on a full-
time basis during any portion of an accounting period, the system shall
compute a DSE for that primary transmitter as if it was carried full-
time during the entire accounting period.
(ii) Where a cable system carries a primary transmitter solely on a
substitute or part-time basis, in accordance with paragraph (f)(3) of
this section, the system shall compute a DSE for that primary
transmitter based on its cumulative carriage on a substitute or part-
time basis. If that primary transmitter is carried on a full-time basis
as well as on a substitute or part-time basis, the full DSE for that
primary transmitter shall be the full DSE type value for that primary
transmitter, for the entire accounting period.
(3) In computing the DSE of a primary transmitter in a particular
case of carriage on or after July 1, 1981, the
[[Page 604]]
cable system may make no prorated adjustments other than those specified
in 17 U.S.C. 111(f)(5)(B), and which remain in force under that
provision. Two prorated adjustments, as prescribed in that section, are
permitted under certain conditions where:
(i) A station is carried on a part-time basis where full-time
carriage is not possible because the cable system lacks the activated
channel capacity to retransmit on a full-time basis all signals which it
is authorized to carry; and
(ii) A station is carried on a ``substitute'' basis under rules,
regulations, or authorizations of the FCC in effect on October 19, 1976
(as defined in 17 U.S.C. 111(f)(5)(B)(ii)), which permitted a cable
system, at its election, to omit the retransmission of a particular
program and substitute another program in its place.
(4) In computing a DSE, a cable system may round off to the third
decimal point. If a DSE is rounded off in any case in a Statement of
Account, it must be rounded off throughout the Statement. Where a cable
system has chosen to round off, and the fourth decimal point for a
particular DSE value would, without rounding off, have been 1, 2, 3, or
4, the third decimal point remains unchanged; if, in such a case, the
fourth decimal point would, without rounding off, be 5, 6, 7, 8, or 9,
the third decimal point must be rounded off to the next higher number.
(5) For the purposes of computing DSE values, specialty primary
television transmitters in the United States and all Canadian and
Mexican primary television transmitters shall be assigned a value of
one.
(g) Computation of copyright royalty fee: subscriber groups. (1) If
a cable system provides a secondary transmission of a primary
transmitter to some, but not all, communities served by that cable
system--
(i) The gross receipts and the distant signal equivalent values for
such secondary transmission shall be derived solely on the basis of the
subscribers in those communities where the cable system provides such
secondary transmission; and
(ii) The total royalty fee for the period paid by such system shall
not be less than the minimum fee multiplied by the gross receipts from
all subscribers to the system.
(2) A cable system that, on a statement submitted before the date of
the enactment of the Satellite Television Extension and Localism Act of
2010, computed its royalty fee consistent with the methodology under
paragraph (i)(1) of this section or that amends a statement filed before
such date of enactment to compute the royalty fee due using such
methodology, shall not be subject to an action for infringement, or
eligible for any royalty refund or offset, arising out of the use of
such methodology on such statement.
(3) Any royalty fee payments received by the Copyright Office from
cable systems for the secondary transmission of primary transmissions
that are in addition to the payments calculated and deposited in
accordance with this subsection shall be deemed to have been deposited
for the particular accounting period for which they are received and
shall be distributed as specified under subsection 111(d) of title 17,
United States Code. Such payments shall be considered as part of the
base rate royalty fund.
(4) The royalty fee rates established by the Satellite Television
Extension and Localism Act shall take effect commencing with the first
accounting period occurring in 2010.
(h) Computation of the copyright royalty fee: Partially distant
stations. A cable system located partly within and partly without the
local service area of a primary television transmitter (``partially
distant station'') computes the royalty fee specified in section
111(d)(1)(B) (ii), (iii), and (iv) of the Copyright Act (``DSE fee'') by
excluding gross receipts from subscribers located within that station's
local service area from total gross receipts. A cable system which
carries two or more partially distant stations with local service areas
that do not exactly coincide shall compute a separate DSE fee for each
group of subscribers who are located outside of the local service areas
of exactly the same complement of distant stations. Computation of the
DSE fee for each subscriber group is to be based on:
[[Page 605]]
(1) The total distant signal equivalents of that group's complement
of distant stations, and
(2) The total gross receipts from that group of subscribers. The
copyright royalty fee for that cable system is:
(i) The total of the subscriber group royalty fees thus computed, or
(ii) 1.013 of 1 percent of the system's gross receipts from all
subscribers, whichever is larger.
(i) Computation of the copyright royalty fee pursuant to the 1982
cable rate adjustment. (1) For the purposes of this paragraph, in
addition to the definitions of paragraph (b) of this section, the
following definitions shall also apply:
(i) Current base rate means the applicable royalty rates in effect
on December 31, 1982, as reflected in 37 CFR 256.2(a).
(ii) If the 3.75% rate does not apply to certain DSE's in the case
of a cable system located wholly or in part within a top 100 television
market, the current base rate together with the surcharge shall apply.
However, the surcharge shall not apply for carriage of a particular
signal first carried prior to March 31, 1972. With respect to statements
of account covering the filing period beginning January 1, 1990, and
subsequent filing periods, the current base rate together with the
surcharge shall apply only to those DSE's that represent commercial VHF
signals which place a predicted Grade B contour, in whole or in part,
over a cable system. The surcharge will not apply if the signal is
exempt from the syndicated exclusivity rules in effect on June 24, 1981.
(iii) The 3.75% rate means the rate established by 37 CFR 256.2(c),
in effect on March 15, 1983.
(iv) Top 100 television market means a television market defined or
interpreted as being within either the ``top 50 television markets'' or
``second 50 television markets'' in accordance with 47 CFR 76.51, in
effect on June 24, 1981.
(v) The 1982 cable rate adjustment means the rate adjustment adopted
by the Copyright Royalty Tribunal on October 20, 1982 (CRT Docket No.
81-2, 47 FR 52146, November 19, 1982).
(2) A cable system filing Form SA3 shall compute its royalty fee in
the following manner:
(i) The cable system shall first determine those DSE's to which the
3.75% rate established by 37 CFR 256.2(c) applies.
(ii) If the 3.75% rate does not apply to certain DSE's in the case
of a cable system located wholly or in part within a top 100 television
market, the current base rate together with the surcharge shall apply.
However, the surcharge shall not apply for carriage of a particular
signal first carried prior to March 31, 1972. With respect to statements
of account covering the filing period beginning January 1, 1990, and
subsequent filing periods, the current base rate together with the
surcharge shall apply only to those DSE's that represent commercial VHF
signals which place a predicted Grade B contour, in whole or in part,
over a cable system. The surcharge will not apply if the signal is
exempt from the syndicated exclusivity rules in effect on June 24, 1981.
(iii) If the 3.75% rate does not apply to certain DSE's, in the case
of a cable system located wholly outside a top 100 television market,
the current base rate shall apply.
(iv) Commencing with the semiannual accounting period of January 1,
1998, through June 30, 1998, the 3.75% rate applies to certain DSE's
with respect to the communities within the cable system where carriage
would not have been permitted under the rules and regulations of the
Federal Communications Commission in effect on June 24, 1981, but in all
other communities within the cable system, the current base rate and the
syndicated exclusivity surcharge, where applicable, shall apply. Such
computation shall be made as provided for on Form SA3. The calculations
shall be based upon the gross receipts from all subscribers, within the
relevant communities, for the basic service of providing secondary
transmissions of primary broadcast transmitters, without regard to
whether those subscribers actually received the station in question. For
partially-distant stations, gross receipts shall be the total gross
receipts
[[Page 606]]
from subscribers outside the local service area.
(3) It shall be presumed that the 3.75% rate of 37 CFR 308.2(c)
applies to DSEs accruing from newly added distant signals, carried for
the first time by a cable system after June 24, 1981. The presumption of
this section can be rebutted in whole or in part:
(i) By actual carriage of a particular distant signal prior to June
25, 1981, as reported in Statements of Account duly filed with the
Copyright Office (``actual carriage''), unless the prior carriage was
not permitted by the FCC; or
(ii) By carriage of no more than the number of distant signals which
was or would have been allotted to the cable system under the FCC's
quota for importation of network and nonspecialty independent stations
(47 CFR 76.59(b), 76.61(b) and (c), and 76.63, referring to Sec.
76.61(b) and (c), in effect on June 24, 1981).
(4) To qualify as an FCC-permitted signal on the ground of
individual waiver of the FCC rules (47 CFR 76.7 in effect on June 24,
1981), the waiver must have actually been granted by the FCC, and the
signal must have been first carried by the cable system after April 15,
1976.
(5) Expanded geographic carriage after June 24, 1981, of a signal
previously carried within only certain parts of a cable system is
governed by the current base rate and the surcharge, if applicable.
(6) In cases of expanded temporal carriage of the same signal,
previously carried pursuant to the FCC's former part-time or substitute
carriage rules (47 CFR 76.61(b)(2), 76.61 (e)(1) and (e)(3), and 76.63,
referring to 76.61 (e)(1) and (e)(3), in effect on June 24, 1981), the
3.75% rate shall be applied to any additional fraction of a DSE accruing
from the expanded temporal carriage of that signal. To identify such
additional DSE's, a comparison shall be made of DSE's reported for that
signal in any single accounting period prior to the July 1, 1981, to
December 31, 1981, period (81-2), as designated by the cable system,
with the DSE's for that same signal reported in the current relevant
accounting period.
(7) Substitution of like signals pursuant to 37 CFR 256.2(c) is
possible at the relevant non-3.75% rate (the surcharge together with the
current base rate, or the current base rate alone) only if the
substitution does not exceed the number of distant signals which was or
would have been allotted to the cable system under the FCC's television
market quota for importation of network and nonspecialty independent
stations (47 CFR 76.59(b), 76.61 (b) and (c), and 76.63, referring to
76.61 (b) and (c), in effect on June 24, 1981.
(8) The 3.75% rate does not apply to distant multicast streams
retransmitted by cable systems.
(j) Multicasting. (1) A royalty payment shall be made for the
retransmission of non-network television programming carried on each
multicast stream of a distant digital television signal under the
following circumstances:
(i) If the distant multicast stream was first retransmitted by a
cable system on or after February 27, 2010, or
(ii) If the distant multicast stream is retransmitted by a cable
operator on or after July 1, 2010.
(2) In any case in which a distant multicast stream is the subject
of a written agreement entered into on or before June 30, 2009, between
a cable system or an association representing the cable system and a
primary transmitter or an association representing the primary
transmitter, a distant signal equivalent value shall not be assigned to
a distant multicast stream that is made on or before the date on which
such written agreement expires.
(3) No royalties are due for carrying a distant multicast stream
that ``simulcasts'' (i.e., duplicates) a primary stream or another
multicast stream of the same station that the cable system is carrying.
However, simulcast streams must be reported on the Statement of
Accounts.
(4) Multicast streams of digital broadcast programming shall not be
subject to the 3.75% fee or the syndicated exclusivity surcharge.
(k) Royalty fee payment. (1) All royalty fees must be paid by
electronic funds transfer, and must be received in the designated bank
by the filing deadline for the relevant accounting period.
[[Page 607]]
The following information must be provided as part of the EFT and/or as
part of the remittance advice as provided for in circulars issued by the
Copyright Office:
(i) Remitter's name and address;
(ii) Name of a contact person, telephone number and extension, and
e-mail address;
(iii) The actual or anticipated date that the EFT will be
transmitted;
(iv) Type of royalty payment (i.e., cable);
(v) Total amount submitted via the EFT;
(vi) Total amount to be paid by year and period;
(vii) Number of Statements of Account that the EFT covers;
(viii) ID numbers assigned by the Licensing Division;
(ix) Legal name of the owner for each Statement of Account;
(x) Identification of the first community served (city and state).
(2) The remittance advice shall be attached to the Statement(s) of
Account. In addition, a copy of the remittance advice shall be emailed
or sent by facsimile to the Licensing Division.
(3) The Office may waive the requirement for payment by electronic
funds transfer as set forth in paragraph (i)(1) of this section. To
obtain a waiver, the remitter shall submit to the Licensing Division at
least 60 days prior to the royalty fee due date a certified statement
setting forth the reasons explaining why payment by an electronic funds
transfer would be virtually impossible or, alternatively, why it would
impose a financial or other hardship on the remitter. The certified
statement must be signed by a duly authorized representative of the
entity making the payment. A waiver shall cover only a single payment
period. Failure to obtain a waiver may result in the remittance being
returned to the remitter.
(4) Royalty fee payments submitted as a result of late or amended
filings shall include interest. Interest shall begin to accrue beginning
on the first day after the close of the period for filing statements of
account for all late payments and underpayments of royalties for the
cable statutory license occurring within that accounting period. The
accrual period shall end on the date the electronic payment submitted by
a cable operator is received. The accrual period shall end on the date
the electronic payment submitted by a satellite carrier is received by
the Copyright Office. In cases where a waiver of the electronic funds
transfer requirement is approved by the Copyright Office, and royalties
payments are either late or underpaid, the accrual period shall end on
the date the payment is postmarked. If the payment is not received by
the Copyright Office within five business days of its date, then the
accrual period shall end on the date of the actual receipt by the
Copyright Office. Interest is not required to be paid on any royalty
underpayment or late payment from a particular accounting period if the
interest charge is less than or equal to five dollars.
(l) Corrections, supplemental payments, and refunds. (1) Royalty fee
obligations under 17 U.S.C. 111 prior to the effective date of the
Satellite Television Extension and Localism Act of 2010, Public Law 111-
175, are determined based on carriage of each distant signal on a
system-wide basis. Refunds for an overpayment of royalty fees for an
accounting period prior to January 1, 2010, shall be made only when all
outstanding royalty fee obligations have been met, including those for
carriage of each distant signal on a system-wide basis.
(2) Upon compliance with the procedures and within the time limits
set forth in paragraph (m)(4) of this section, corrections to Statements
of Account will be placed on record, supplemental royalty fee payments
will be received for deposit, or refunds will be issued, in the
following cases:
(i) Where, with respect to the accounting period covered by a
Statement of Account, any of the information given in the Statement
filed in the Copyright Office is incorrect or incomplete; or
(ii) Where, for any reason except that mentioned in paragraph
(m)(2)(iii) of this section, calculation of the royalty fee payable for
a particular accounting period was incorrect, and the amount deposited
in the Copyright Office for that period was either too high or too low.
[[Page 608]]
(3) Corrections to Statements of Account will not be placed on
record, supplemental royalty fee payments will not be received for
deposit, and refunds will not be issued, where the information in the
Statements of Account, the royalty fee calculations, or the payments
were correct as of the date on which the accounting period ended, but
changes (for example, addition or deletion of a distant signal) took
place later.
(4) Requests that corrections to a Statement of Account be placed on
record, that fee payments be accepted, or requests for the issuance of
refunds, shall be made only in the cases mentioned in paragraph (m)(2)
of this section. Such requests shall be addressed to the Licensing
Division of the Copyright Office, and shall meet the following
conditions:
(i) The request must be in writing, must clearly identify its
purpose, and, in the case of a request for a refund, must be received in
the Copyright Office before the expiration of 60 days from the last day
of the applicable Statement of Account filing period, or before the
expiration of 60 days from the date of receipt at the Copyright Office
of the royalty payment that is the subject of the request, whichever
time period is longer. Telephone or similar unsigned requests that meet
these conditions may be permitted, where a follow-up written request
detailing the same information is received by the Copyright Office
within fourteen days after the required sixty-day period.
(ii) The Statement of Account to which the request pertains must be
sufficiently identified in the request (by inclusion of the name of the
owner of the cable system, the community or communities served, and the
accounting period in question) so that it can be readily located in the
records of the Copyright Office.
(iii) The request must contain a clear statement of the facts on
which it is based and provide a clear basis on which a refund may be
granted, in accordance with the following procedures:
(A) In the case of a request filed under paragraph (m)(2)(i) of this
section, where the information given in the Statement of Account is
incorrect or incomplete, the request must clearly identify the erroneous
or incomplete information and provide the correct or additional
information;
(B) In the case of a request filed under paragraph (m)(2)(ii) of
this section, where the royalty fee was miscalculated and the amount
deposited in the Copyright Office was either too high or too low, the
request must be accompanied by an amended Statement of Account. The
amended Statement shall include an explanation of why the royalty fee
was improperly calculated and a detailed analysis of the proper royalty
calculations.
(iv)(A) All requests filed under this paragraph (m) must be
accompanied by a filing fee in the amount prescribed in Sec.201.3(e)
of this part for each Statement of Account involved. Payment of this fee
may be in the form of a personal or company check, or of a certified
check, cashier's check or money order, payable to: Register of
Copyrights. No request will be processed until the appropriate filing
fees are received; and
(B) All requests that a supplemental royalty fee payment be received
for deposit under this paragraph (m) must be accompanied by a remittance
in the full amount of such fee. Payment of the supplemental royalty fee
must be in the form of a certified check, cashier's check, or money
order, payable to: Register of Copyrights; or an electronic payment. No
such request will be processed until an acceptable remittance in the
full amount of the supplemental royalty fee has been received.
(v) All requests submitted under this paragraph (m) must be signed
by the cable system owner named in the Statement of Account, or the duly
authorized agent of the owner, in accordance with paragraph (e)(14) of
this section.
(vi) A request for a refund is not necessary where the Licensing
Division, during its examination of a Statement of Account or related
document, discovers an error that has resulted in a royalty overpayment.
In this case, the Licensing Division will forward the royalty refund to
the cable system
[[Page 609]]
owner named in the Statement of Account without regard to the time
limitations provided for in paragraph (m)(4)(i) of this section.
(5) Following final processing, all requests submitted under this
paragraph (m) will be filed with the original Statement of Account in
the records of the Copyright Office. Nothing contained in this paragraph
shall be considered to relieve cable systems from their full obligations
under title 17 of the United States Code, and the filing of a correction
or supplemental payment shall have only such effect as may be attributed
to it by a court of competent jurisdiction.
(m) Satellite carriers not eligible. Satellite carriers and
satellite resale carriers are not eligible for the cable compulsory
license based upon an interpretation of the whole of section 111 of
title 17 of the United States Code.
(17 U.S.C. 111, 702, 708)
[43 FR 27832, June 27, 1978]
Editorial Note: For Federal Register citations affecting Sec.
201.17, see the List of CFR Sections Affected, which appears in the
Finding Aids section of the printed volume and at www.govinfo.gov.
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.201.17 was
amended by removing ``Licensing Division'' from each place it appears
and adding in its place ``Licensing Section'', effective July 22, 2021.
Sec.201.18 Notice of intention to obtain a compulsory license for
making and distributing phonorecords of nondramatic musical works.
(a) General. (1) A ``Notice of Intention'' is a Notice identified in
section 115(b) of title 17 of the United States Code. If the eligibility
requirements of 17 U.S.C. 115(a) are satisfied, then, subject to 17
U.S.C. 115(b), a person may serve on a copyright owner or file with the
Copyright Office, as applicable, a Notice of Intention and thereby
obtain a compulsory license pursuant to 17 U.S.C. 115.
(2)(i) To obtain a compulsory license to make and distribute
phonorecords of a musical work other than by means of digital
phonorecord delivery, a Notice must be served on the copyright owner or,
if the registration or other public records of the Copyright Office do
not identify the copyright owner and include an address at which Notice
can be served, filed with the Copyright Office, before, or not later
than 30 calendar days after, making, and before distributing, any
phonorecord of the work.
(ii) Prior to the license availability date, as defined in 17 U.S.C.
115(e), to obtain a compulsory license to make and distribute
phonorecords of a musical work by means of digital phonorecord delivery,
a Notice must be served on the copyright owner, before, or not later
than 30 calendar days after, first making any such digital phonorecord
delivery. On and after the license availability date, as defined in 17
U.S.C. 115(e), to obtain such a compulsory license, the procedure
described in 17 U.S.C. 115(d)(2) must be followed. As of October 11,
2018, the Copyright Office does not accept Notices that pertain to
digital phonorecord deliveries, regardless of whether such a Notice also
pertains to phonorecords that are not digital phonorecord deliveries.
(iii) Notwithstanding paragraph (a)(2)(ii) of this section, a record
company, as defined in 17 U.S.C. 115(e), may, on or after the license
availability date, as defined in 17 U.S.C. 115(e), obtain an individual
download license, as described in 17 U.S.C. 115(b)(3) and defined in 17
U.S.C. 115(e), by serving a Notice on the copyright owner, before, or
not later than 30 calendar days after, first making any digital
phonorecord delivery in the form of a permanent download.
(3) For the purposes of this section, a ``digital phonorecord
delivery'' means each individual delivery of a phonorecord by digital
transmission of a sound recording that results in a specifically
identifiable reproduction by or for any transmission recipient of a
phonorecord of that sound recording, regardless of whether the digital
transmission is also a public performance of the sound recording or any
musical work embodied therein. The reproduction of the phonorecord must
be sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more than
transitory duration. Such a phonorecord may be permanent or it
[[Page 610]]
may be made available to the transmission recipient for a limited period
of time or for a specified number of performances. A digital phonorecord
delivery includes all phonorecords that are made for the purpose of
making the digital phonorecord delivery. Notwithstanding the foregoing,
a permanent download, a limited download, or an interactive stream, as
defined in 17 U.S.C. 115(e), is a digital phonorecord delivery. A
digital phonorecord delivery does not include the digital transmission
of sounds accompanying a motion picture or other audiovisual work as
defined in 17 U.S.C. 101.
(4) As eligible under paragraph (a)(2) of this section, a Notice of
Intention shall be served or filed for nondramatic musical works
embodied, or intended to be embodied, in phonorecords made under the
compulsory license. For purposes of this section and subject to
paragraphs (a)(4)(ii) and (iii) of this section, a Notice filed with the
Copyright Office which lists multiple works shall be considered a single
Notice and fees shall be paid in accordance with the fee schedule set
forth in Sec.201.3(e)(1) if filed in the Copyright Office under
paragraph (f)(2) or (3) of this section. Payment of the applicable fees
for a Notice submitted electronically under this paragraph shall be made
through a deposit account established under Sec.201.6(b).
(i) Except as provided for in paragraph (a)(7), a Notice of
Intention served on a copyright owner or agent of a copyright owner may
designate any number of nondramatic musical works provided that the
information required under paragraphs (d)(1)(i) through (iv) of this
section does not vary and that the copyright owner of each designated
work is the same, or in the case of any work having more than one
copyright owner, that any one of the copyright owners is the same and is
the copyright owner served.
(ii) A Notice of Intention filed in the Copyright Office in paper
form may designate any number of nondramatic musical works provided that
the information required under paragraphs (d)(1)(i) through (iv) of this
section does not vary, and that the copyright owner of each designated
work (or, in the case of works having more than one copyright owner, any
one of the copyright owners) is the same and the registration records or
other public records of the Copyright Office do not identify the
copyright owner(s) of such work(s) and include an address for any such
owner(s) at which notice can be served. For purposes of this
subparagraph, in the case of works having more than one copyright owner,
a single Notice must identify an actual person or entity as the common
copyright owner; the common copyright owner may not be identified as
``unknown.'' However, a single Notice may include multiple works for
which no copyright owners can be identified for any of the listed works.
(iii) A Notice of Intention filed in the Copyright Office through
its electronic filing system may designate multiple nondramatic musical
works, regardless of whether the copyright owner of each designated work
(or, in the case of any work having more than one copyright owner, any
one of the copyright owners) is the same, provided that the information
required under paragraphs (d)(1)(i) through (iv) of this section does
not vary, and that for any designated work, the records of the Copyright
Office do not include an address at which notice can be served.
(5) For the purposes of this section, the term ``copyright owner,''
in the case of any work having more than one copyright owner, means any
one of the co-owners.
(6) For the purposes of this section, service of a Notice of
Intention on a copyright owner may be accomplished by means of service
of the Notice on either the copyright owner or an agent of the copyright
owner with authority to receive the Notice. In the case where the work
has more than one copyright owner, the service of the Notice on any one
of the co-owners of the nondramatic musical work or upon an authorized
agent of one of the co-owners identified in the Notice of Intention
shall be sufficient with respect to all co-owners. A single Notice may
designate works not owned by the same copyright owner in the case where
the Notice is served on a common agent of multiple copyright owners, and
where each of the works designated in the Notice is owned by any of the
copyright
[[Page 611]]
owners who have authorized that agent to receive Notices.
(7) For purposes of this section, a copyright owner or an agent of a
copyright owner with authority to receive Notices of Intention may make
public a written policy that it will accept Notices of Intention to make
and distribute phonorecords pursuant to 17 U.S.C. 115 which include less
than all of the information required by this section, in a form
different than required by this section, or delivered by means
(including electronic transmission) other than those required by this
section. Any Notice provided in accordance with such policy shall not be
rendered invalid for failing to comply with the specific requirements of
this section.
(8) For the purposes of this section, a digital phonorecord delivery
shall be treated as a type of phonorecord configuration, and a digital
phonorecord delivery shall be treated as a phonorecord manufactured,
made, and distributed on the date the phonorecord is digitally
transmitted.
(b) Agent. An agent who has been authorized to accept Notices of
Intention in accordance with paragraph (a)(6) of this section and who
has received a Notice of Intention on behalf of a copyright owner shall
provide within two weeks of the receipt of that Notice of Intention the
name and address of the copyright owner or its agent upon whom the
person or entity intending to obtain the compulsory license shall serve
Statements of Account and the monthly royalty in accordance with Sec.
210.6(g) of this chapter.
(c) Form. The Copyright Office does not provide physical printed
forms for the use of persons serving or filing Notices of Intention, but
Notices filed electronically must be submitted to the Office in the form
and manner prescribed in instructions on the Office's website.
(d) Content. (1) A Notice of Intention shall be clearly and
prominently designated, at the head of the notice, as a ``Notice of
Intention to Obtain a Compulsory License for Making and Distributing
Phonorecords,'' and shall include a clear statement of the following
information:
(i) The full legal name of the person or entity intending to obtain
the compulsory license, together with all fictitious or assumed names
used by such person or entity for the purpose of conducting the business
of making and distributing phonorecords;
(ii) The telephone number, the full address, including a specific
number and street name or rural route of the place of business, and an
e-mail address, if available, of the person or entity intending to
obtain the compulsory license, and if a business organization intends to
obtain the compulsory license, the name and title of the chief executive
officer, managing partner, sole proprietor or other person similarly
responsible for the management of such entity. A post office box or
similar designation will not be sufficient for this purpose except where
it is the only address that can be used in that geographic location.
(iii) The information specified in paragraphs (d)(1)(i) and (ii) of
this section for the primary entity expected to be engaged in the
business of making and distributing phonorecords under the license or of
authorizing such making and distribution, if an entity intending to
obtain the compulsory license is a holding company, trust or other
entity that is not expected to be actively engaged in the business of
making and distributing phonorecords under the license or of authorizing
such making and distribution;
(iv) The fiscal year of the person or entity intending to obtain the
compulsory license. If that fiscal year is a calendar year, the Notice
shall state that this is the case;
(v) For each nondramatic musical work embodied or intended to be
embodied in phonorecords made under the compulsory license:
(A) The title of the nondramatic musical work;
(B) The name of the author or authors, if known;
(C) A copyright owner of the work, if known;
(D) The types of all phonorecord configurations already made (if
any) and expected to be made under the compulsory license (for example:
single disk, long-playing disk, cassette, cartridge,
[[Page 612]]
reel-to-reel, a digital phonorecord delivery (if eligible under
paragraph (a)(2) of this section), or a combination of them);
(E) The expected date of initial distribution of phonorecords
already made (if any) or expected to be made under the compulsory
license;
(F) The name of the principal recording artist or group actually
engaged or expected to be engaged in rendering the performances fixed on
phonorecords already made (if any) or expected to be made under the
compulsory license;
(G) The catalog number or numbers, and label name or names, used or
expected to be used on phonorecords already made (if any) or expected to
be made under the compulsory license; and
(H) In the case of phonorecords already made (if any) under the
compulsory license, the date or dates of such manufacture.
(vi) In the case where the Notice will be filed with the Copyright
Office pursuant to paragraph (f)(3) of this section, the Notice shall
include an affirmative statement that with respect to the nondramatic
musical work named in the Notice of Intention, the registration records
or other public records of the Copyright Office have been searched and
found not to identify the name and address of the copyright owner of
such work.
(2) A ``clear statement'' of the information listed in paragraph
(d)(1) of this section requires a clearly intelligible, legible, and
unambiguous statement in the Notice itself and without incorporation by
reference of facts or information contained in other documents or
records.
(3) Where information is required to be given by paragraph (d)(1) of
this section ``if known'' or as ``expected,'' such information shall be
given in good faith and on the basis of the best knowledge, information,
and belief of the person signing the Notice. If so given, later
developments affecting the accuracy of such information shall not affect
the validity of the Notice.
(e) Signature. The Notice shall be signed by the person or entity
intending to obtain the compulsory license or by a duly authorized agent
of such person or entity.
(1) If the person or entity intending to obtain the compulsory
license is a corporation, the signature shall be that of a duly
authorized officer or agent of the corporation.
(2) If the person or entity intending to obtain the compulsory
license is a partnership, the signature shall be that of a partner or of
a duly authorized agent of the partnership.
(3) If the Notice is signed by a duly authorized agent for the
person or entity intending to obtain the compulsory license, the Notice
shall include an affirmative statement that the agent is authorized to
execute the Notice of Intention on behalf of the person or entity
intending to obtain the compulsory license.
(4) If the Notice is served electronically, the person or entity
intending to obtain the compulsory license and the copyright owner shall
establish a procedure to verify that the Notice is being submitted upon
the authority of the person or entity intending to obtain the compulsory
license.
(5) If the Notice is filed in the Office electronically, the person
or entity intending to obtain the compulsory license or a duly
authorized agent of such person or entity shall, rather than signing the
Notice, attest that he or she has the appropriate authority of the
licensee, including any related entities listed, if applicable, to
submit the electronically filed Notice on behalf of the licensee.
(f) Filing and service. (1) As eligible under paragraph (a)(2) of
this section, if the registration records or other public records of the
Copyright Office identify the copyright owner of the nondramatic musical
works named in the Notice of Intention and include an address for such
owner, the Notice may be served on such owner by mail sent to, or by
reputable courier service at, the last address for such owner shown by
the records of the Office.
(2) If a Notice of Intention seeking a compulsory license to make
and distribute phonorecords of a musical work other than by means of
digital phonorecord delivery is sent by mail or delivered by reputable
courier service to the last address for the copyright owner shown by the
records of the Copyright Office and the Notice is returned to the
[[Page 613]]
sender because the copyright owner is no longer located at the address
or has refused to accept delivery, the original Notice as sent shall be
filed in the Copyright Office. Notices of Intention submitted for filing
under this paragraph (f)(2) shall be submitted to the Licensing Division
of the Copyright Office, shall be accompanied by the fee specified in
Sec.201.3(e) and a brief statement that the Notice was sent to the
last address for the copyright owner shown by the records of the
Copyright Office but was returned, and may be accompanied by appropriate
evidence that it was mailed to, or that delivery by reputable courier
service was attempted at, that address. In these cases, the Copyright
Office will specially mark its records to consider the date the original
Notice was mailed, or the date delivery by courier service was
attempted, if shown by the evidence mentioned above, as the date of
filing. An acknowledgment of receipt and filing will be provided to the
sender.
(3) If, with respect to the nondramatic musical works named in a
Notice of Intention seeking a compulsory license to make and distribute
phonorecords of a musical work other than by means of digital
phonorecord delivery, the registration records or other public records
of the Copyright Office do not identify the copyright owner of such work
and include an address for such owner, the Notice may be filed in the
Copyright Office. Notices of Intention submitted for filing shall be
accompanied by the fee specified in Sec.201.3(e). A separate fee shall
be assessed for each title listed in the Notice. Notices of Intention
will be placed in the appropriate public records of the Licensing
Division of the Copyright Office. The date of filing will be the date
when the Notice and fee are both received in the Copyright Office. An
acknowledgment of receipt and filing will be provided to the sender.
(4) Alternatively, if the person or entity intending to obtain the
compulsory license knows the name and address of the copyright owner of
the nondramatic musical work, or the agent of the copyright owner as
described in paragraph (b) of this section, the Notice of Intention may
be served on the copyright owner or the agent of the copyright owner by
sending the Notice by mail or delivering it by reputable courier service
to the address of the copyright owner or agent of the copyright owner.
For purposes of 17 U.S.C. 115(b), the Notice will not be considered
properly served if the Notice is not sent to the copyright owner or the
agent of the copyright owner as described in paragraph (b) of this
section, or if the Notice is sent to an incorrect address.
(5) If a Notice of Intention is sent by certified mail or registered
mail, a mailing receipt shall be sufficient to prove that service was
timely. If a Notice of Intention is delivered by a reputable courier,
documentation from the courier showing the first date of attempted
delivery shall also be sufficient to prove that service was timely. In
the absence of a receipt from the United States Postal Service showing
the date of delivery or documentation showing the first date of
attempted delivery by a reputable courier, the compulsory licensee shall
bear the burden of proving that the Notice of Intention was served in a
timely manner.
(6) If a Notice served upon a copyright owner or an authorized agent
of a copyright owner identifies more than 50 works that are embodied or
intended to be embodied in phonorecords made under the compulsory
license, the copyright owner or the authorized agent may send the person
who served the Notice a demand that a list of each of the works so
identified be resubmitted in an electronic format, along with a copy of
the original Notice. The person who served the Notice must submit such a
list, which shall include all of the information required in paragraph
(d)(1)(v) of this section, within 30 days after receipt of the demand
from the copyright owner or authorized agent. The list shall be
submitted on magnetic disk or another medium widely used at the time for
electronic storage of data, in the form of a flat file, word processing
document or spreadsheet readable with computer software in wide use at
such time, with the required information identified and/or delimited so
as to be readily discernible. The list may be submitted by means of
electronic transmission (such
[[Page 614]]
as e-mail) if the demand from the copyright owner or authorized agent
states that such submission will be accepted.
(g) Filing date and legal sufficiency of Notices. The Copyright
Office will notify a prospective licensee when a Notice was not
accompanied by payment of the required fee. Notices shall be deemed
filed as of the date the Office receives both the Notice and the fee, if
applicable. If the prospective licensee fails to remit the required fee,
the Notice will be deemed not to have been filed with the Office.
However, the Copyright Office does not review Notices for legal
sufficiency or interpret the content of any Notice filed with the
Copyright Office under this section. Furthermore, the Copyright Office
does not screen Notices for errors or discrepancies and it does not
generally correspond with a prospective licensee about the sufficiency
of a Notice. If any issue (other than an issue related to fees) arises
as to whether a Notice filed in the Copyright Office is sufficient as a
matter of law under this section, that issue shall be determined not by
the Copyright Office, but shall be subject to a determination of legal
sufficiency by a court of competent jurisdiction. Prospective licensees
are therefore cautioned to review and scrutinize Notices to assure their
legal sufficiency before filing them in the Copyright Office.
Notwithstanding the foregoing, the Copyright Office will examine Notices
to ensure that they do not pertain to digital phonorecord deliveries.
Any Notice submitted to the Office that does pertain to digital
phonorecord deliveries, regardless of whether such a Notice also
pertains to phonorecords that are not digital phonorecord deliveries,
will be rejected. The Office's decision to accept or reject such a
Notice is without prejudice to any party claiming that the Notice does
or does not pertain to digital phonorecord deliveries, including before
a court of competent jurisdiction.
(h) Harmless errors. Harmless errors in a Notice that do not
materially affect the adequacy of the information required to serve the
purposes of 17 U.S.C. 115(b), shall not render the Notice invalid.
(i) Privacy Act Advisory Statement. The authority for receiving the
personally identifying information included within a Notice of Intention
to obtain a compulsory license is found in 17 U.S.C. 115 and Sec.
201.18. Personally identifying information is any personal information
that can be used to identify or trace an individual, such as name,
address or telephone numbers. Furnishing the information set forth in
Sec.201.18 is voluntary. However, if the information is not furnished,
it may affect the sufficiency of Notice of Intention to obtain a
compulsory license and may not entitle the prospective licensee to the
benefits available under 17 U.S.C. 115. The principal uses of the
requested information are the establishment and maintenance of a public
record of the Notices of Intention to obtain a compulsory license
received in the Licensing Division of the Copyright Office. Other
routine uses include public inspection and copying, preparation of
public indexes, preparation of public catalogs of copyright records
including online catalogs, and preparation of search reports upon
request.
[69 FR 34582, June 22, 2004, as amended at 73 FR 66181, Nov. 7, 2008; 77
FR 71103, Nov. 29, 2012; 79 FR 56206, Sept. 18, 2014; 82 FR 9358, Feb.
6, 2017; 83 FR 63064, Dec. 7, 2018]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.201.18 was
amended by removing ``Licensing Division'' from each place it appears
and adding in its place ``Licensing Section'', effective July 22, 2021.
Sec. Sec.201.19-201.21 [Reserved]
Sec.201.22 Advance notices of potential infringement of works
consisting of sounds, images, or both.
(a) Definitions. (1) An Advance Notice of Potential Infringement is
a notice which, if served in accordance with section 411(c) of title 17
of the United States Code, and in accordance with the provisions of this
section, enables a copyright owner to institute an action for copyright
infringement either before or after the first fixation of a work
consisting of sounds, images, or both that is first fixed simultaneously
with its transmission, and to enjoy the full remedies of said title 17
for copyright infringement, provided registration for the work is made
within three months after its first transmission.
(2) For purposes of this section, the copyright owner of a work
consisting of
[[Page 615]]
sounds, images, or both, the first fixation of which is made
simultaneously with its transmission, is the person or entity that will
be considered the author of the work upon its fixation (including, in
the case of a work made for hire, the employer or other person or entity
for whom the work was prepared), or a person or organization that has
obtained ownership of an exclusive right, initially owned by the person
or entity that will be considered the author of the work upon its
fixation.
(3) A transmission program is a body of material that, as an
aggregate, has been produced for the sole purpose of transmission to the
public in sequence and as a unit.
(b) Form. The Copyright Office does not provide printed forms for
the use of persons serving Advance Notices of Potential Infringement.
(c) Contents. (1) An Advance Notice of Potential Infringement shall
be clearly and prominently captioned ``ADVANCE NOTICE OF POTENTIAL
INFRINGEMENT'' and must clearly state that the copyright owner objects
to the relevant activities of the person responsible for the potential
infringement, and must include all of the following:
(i) Reference to title 17 U.S.C. section 411(c) as the statutory
authority on which the Advance Notice of Potential Infringement is
based;
(ii) The date, specific time, and expected duration of the intended
first transmission of the work or works contained in the specific
transmission program;
(iii) The source of the intended first transmission of the work or
works;
(iv) Clear identification, by title, of the work or works. A single
Advance Notice of Potential Infringement may cover all of the works of
the copyright owner embodied in a specific transmission program. If any
work is untitled, the Advance Notice of Potential Infringement shall
include a detailed description of that work;
(v) The name of at least one person or entity that will be
considered the author of the work upon its fixation;
(vi) The identity of the copyright owner, as defined in paragraph
(a)(2) of this section. If the copyright owner is not the person or
entity that will be considered the author of the work upon its fixation,
the Advance Notice of Potential Infringement also shall include a brief,
general statement summarizing the means by which the copyright owner
obtained ownership of the copyright and the particular rights that are
owned; and
(vii) A description of the relevant activities of the person
responsible for the potential infringement which would, if carried out,
result in an infringement of the copyright.
(2) An Advance Notice of Potential Infringement must also include
clear and prominent statements:
(i) Explaining that the relevant activities may, if carried out,
subject the person responsible to liability for copyright infringement;
and
(ii) Declaring that the copyright owner intends to secure copyright
in the work upon its fixation.
(d) Signature and identification. (1) An Advance Notice of Potential
Infringement shall be in writing and signed by the copyright owner, or
such owner's duly authorized agent.
(2) The signature of the owner or agent shall be an actual
handwritten signature of an individual, accompanied by the date of
signature and the full name, address, and telephone number of that
person, typewritten or printed legibly by hand.
(3) If an Advance Notice of Potential Infringement is initially
served in the form of an email, fax, or similar communication, as
provided by paragraph (e)(2)(iii) of this section, the requirement for
an individual's handwritten signature shall be considered waived if the
further conditions of said paragraph (e) are met.
(e) Service. (1) An Advance Notice of Potential Infringement shall
be served on the person responsible for the potential infringement not
less than 48 hours before the first fixation and simultaneous
transmission of the work as provided by 17 U.S.C. 411(c)(1).
(2) Service of the Advance Notice may be effected by any of the
following methods:
(i) Personal service;
(ii) First-class mail; or
(iii) Email, fax, or similar form of communication, if:
[[Page 616]]
(A) The Advance Notice meets all of the other conditions provided by
this section; and
(B) Before the first fixation and simultaneous transmission take
place, the person responsible for the potential infringement receives
written confirmation of the Advance Notice, bearing the actual
handwritten signature of the copyright owner or duly authorized agent.
(3) The date of service is the date the Advance Notice of Potential
Infringement is received by the person responsible for the potential
infringement or by any agent or employee of that person.
(17 U.S.C. 411, 702)
[46 FR 28849, May 29, 1981, as amended at 63 FR 66042, Dec. 1, 1998; 66
FR 34373, June 28, 2001; 82 FR 9358, Feb. 6, 2017]
Sec.201.23 Transfer of unpublished copyright deposits to the Library
of Congress.
(a) General. This section prescribes rules governing the transfer of
unpublished copyright deposits in the custody of the Copyright Office to
the Library of Congress. The copyright deposits may consist of copies,
phonorecords, or identifying material deposited in connection with
registration of claims to copyright under section 408 of title 17 of the
United States Code. These rules establish the conditions under which the
Library of Congress is entitled to select deposits of unpublished works
for its collections or for permanent transfer to the National Archives
of the United States or to a Federal records center in accordance with
section 704(b) of title 17 of the United States Code.
(b) Selection by the Library of Congress. The Library of Congress
may select any deposits of unpublished works for the purposes stated in
paragraph (a) of this section at the time of registration or at any time
thereafter; provided that:
(1) A facsimile reproduction of the entire copyrightable content of
the deposit shall be made a part of the Copyright Office records before
transfer to the Library of Congress as provided by section 704(c) of
title 17 of the United States Code, unless, within the discretion of the
Register of Copyrights, it is considered impractical or too expensive to
make the reproduction;
(2) All unpublished copyright deposits retained by the Library of
Congress in its collections shall be maintained under the control of the
Library of Congress with appropriate safeguards against unauthorized
copying or other unauthorized use of the deposits which would be
contrary to the rights of the copyright owner in the work under title 17
of the United States Code; and
(3) At the time selection is made a request for full term retention
of the deposit under the control of the Copyright Office has not been
granted by the Register of Copyrights, in accordance with section 704(e)
of title 17 of the United States Code.
(17 U.S.C. 702, 704)
[45 FR 41414, June 19, 1980, as amended at 82 FR 9358, Feb. 6, 2017]
Sec.201.24 Warning of copyright for software lending by nonprofit
libraries.
(a) Definition. A Warning of Copyright for Software Rental is a
notice under paragraph (b)(2)(A) of section 109 of the Copyright Act,
title 17 of the United States Code, as amended by the Computer Software
Rental Amendments Act of 1990, Public Law 101-650. As required by that
paragraph, the ``Warning of Copyright for Software Rental'' shall be
affixed to the packaging that contains the computer program which is
lent by a nonprofit library for nonprofit purposes.
(b) Contents. A Warning of Copyright for Software Rental shall
consist of a verbatim reproduction of the following notice, printed in
such size and form and affixed in such manner as to comply with
paragraph (c) of this section.
Notice: Warning of Copyright Restrictions
The copyright law of the United States (title 17, United States
Code) governs the reproduction, distribution, adaptation, public
performance, and public display of copyrighted material.
Under certain conditions specified in law, nonprofit libraries are
authorized to lend, lease, or rent copies of computer programs to
patrons on a nonprofit basis and for nonprofit purposes. Any person who
makes an unauthorized copy or adaptation of the computer program, or
redistributes the loan
[[Page 617]]
copy, or publicly performs or displays the computer program, except as
permitted by title 17 of the United States Code, may be liable for
copyright infringement.
This institution reserves the right to refuse to fulfill a loan
request if, in its judgement, fulfillment of the request would lead to
violation of the copyright law.
(c) Form and manner of use. A Warning of Copyright for Software
Rental shall be affixed to the packaging that contains the copy of the
computer program, which is the subject of a library loan to patrons, by
means of a label cemented, gummed, or otherwise durably attached to the
copies or to a box, reel, cartridge, cassette, or other container used
as a permanent receptacle for the copy of the computer program. The
notice shall be printed in such manner as to be clearly legible,
comprehensible, and readily apparent to a casual user of the computer
program.
[56 FR 7812, Feb. 26, 1991, as amended at 66 FR 34373, June 28, 2001]
Sec.201.25 Visual Arts Registry.
(a) General. This section prescribes the procedures relating to the
submission of Visual Arts Registry Statements by visual artists and
owners of buildings, or their duly authorized representatives, for
recordation in the Copyright Office under section 113(d)(3) of title 17
of the United States Code, as amended by Public Law 101-650, effective
June 1, 1991. Statements recorded in the Copyright Office under this
regulation will establish a public record of information relevant to an
artist's integrity right to prevent destruction or injury to works of
visual art incorporated in or made part of a building.
(b) Forms. The Copyright Office does not provide forms for the use
of persons recording statements regarding works of visual art that have
been incorporated in or made part of a building.
(c) Recordable statements--(1) General. Any statement designated as
a ``Visual Arts Registry Statement'' and which pertains to a work of
visual art that has been incorporated in or made part of a building may
be recorded in the Copyright Office provided the statement is
accompanied by the fee for recordation of documents specified in section
708(a)(4) of title 17 of the United States Code. Upon their submission,
the statements and an accompanying documentation or photographs become
the property of the United States Government and will not be returned.
Photocopies are acceptable if they are clear and legible. Information
contained in the Visual Arts Registry Statement should be as complete as
possible since the information may affect the enforceability of valuable
rights under the copyright law. Visual Arts Registry Statements which
are illegible or fall outside of the scope of section 113(d)(3) of title
17 may be refused recordation by the Copyright Office.
(2) Statements by artists. Statements by artists regarding a work of
visual art incorporated or made part of a building should be filed in a
document containing the head: ``Registry of Visual Art Incorporated in a
Building--Artist's Statement.'' The statement should contain the
following information:
(i) Identification of the artist, including name, current address,
age, and telephone number, if publicly listed.
(ii) Identification of the work or works, including the title,
dimensions, and physical description of the work and the copyright
registration number, if known. Additionally, it is recommended that one
or more 8 x 10 photographs of the work on good quality photographic
paper be included in the submission; the images should be clear and in
focus.
(iii) Identification of the building, including its name and
address. This identification may additionally include 8 x 10 photographs
of the building and the location of the artist's work in the building.
(iv) Identification of the owner of the building, if known.
(3) Statements by the owner of the building. Statements of owners of
a building which incorporates a work of visual art should be filed in a
document containing the heading: ``Registry of Visual Art Incorporated
in a Building--Building Owner's Statement.'' The statement should
contain the following information:
(i) Identification of the ownership of the building, the name of a
person who represents the owner, and a telephone number, if publicly
listed.
[[Page 618]]
(ii) Identification of the building, including the building's name
and address. This identification may additionally include 8 x 10
photographs of the building and of the works of visual art which are
incorporated in the building.
(iii) Identification of the work or works of visual art incorporated
in the building, including the works' title(s), if known, and the
dimensions and physical description of the work(s). This identification
may include one or more 8 x 10 photographs of the work(s) on high
quality photographic paper; the images should be clear and in focus.
(iv) Identification of the artist(s) who have works incorporated in
the building, including the current address of each artist, if known.
(v) Photocopy of contracts, if any, between the artist and owners of
the building regarding the rights of attribution and integrity.
(vi) Statement as to the measures taken by the owner to notify the
artist(s) of the removal or pending removal of the work of visual art,
and photocopies of any accompanying documents.
(4) Updating statements. Either the artist or owner of the building
or both may record statements updating previously recorded information
by submitting an updated statement and paying the recording fee
specified in paragraph (d) of this section. Such statements should
repeat the information disclosed in the previous filing as regarding the
name of the artist(s), the name of the work(s) of visual art, the name
and address of the building, and the name of the owner(s) of the
building. The remaining portion of the statement should correct or
supplement the information disclosed in the previously recorded
statement.
(d) Fee. The fee for recording a Visual Arts Registry Statement, a
Building Owner's Statement, or an updating statement is the recordation
fee for a document, as prescribed in Sec.201.3(c).
(e) Date of recordation. The date of recordation is the date when
all of the elements required for recordation, including the prescribed
fee have been received in the Copyright Office. After recordation of the
statement, the sender will receive a certificate of recordation from the
Copyright Office. Any documentation or photographs accompanying any
submission will be retained and filed by the Copyright Office. They may
also be transferred to the Library of Congress, or destroyed after
preparing suitable copies, in accordance with usual procedures.
(f) Effect of recordation. The Copyright Office will record
statements in the Visual Arts Registry without examination or
verification of the accuracy or completeness of the statement, if the
statement is designated as a ``Visual Arts Registry Statement'' and
pertains to a work of visual art incorporated in or made part of a
building. Recordation of the statement and payment of the recording fee
shall establish only the fact of recordation in the official record.
Acceptance for recordation shall not be considered a determination that
the statement is accurate, complete, and otherwise in compliance with
section 113(d), title 17, U.S. Code. The accuracy and completeness of
the statement is the responsibility of the artist or building owner who
submits it for recordation. Artists and building owners are encouraged
to submit accurate and complete statements. Omission of any information,
however, shall not itself invalidate the recordation, unless a court of
competent jurisdiction finds the statement is materially deficient and
fails to meet the minimum requirements of section 113(d) of title 17,
U.S. Code.
[56 FR 38341, Aug. 13, 1991, as amended at 64 FR 29522, June 1, 1999; 65
FR 39819, June 28, 2000; 82 FR 9358, Feb. 6, 2017]
Sec.201.26 Recordation of documents pertaining to computer shareware
and donation of public domain computer software.
(a) General. This section prescribes the procedures for submission
of legal documents pertaining to computer shareware and the deposit of
public domain computer software under section 805 of Public Law 101-650,
104 Stat. 5089 (1990). Documents recorded in the Copyright Office under
this regulation will be included in the Computer Shareware Registry.
Recordation in this Registry will establish a public
[[Page 619]]
record of licenses or other legal documents governing the relationship
between copyright owners of computer shareware and persons associated
with the dissemination or other use of computer shareware. Documents
transferring the ownership of some or all rights under the copyright law
of computer shareware and security interests in such software should be
recorded under 17 U.S.C. 205, as implemented by Sec.201.4.
(b) Definitions. (1) The term computer shareware is accorded its
customary meaning within the software industry. In general, shareware is
copyrighted software which is distributed for the purposes of testing
and review, subject to the condition that payment to the copyright owner
is required after a person who has secured a copy decides to use the
software.
(2) A document designated as pertaining to computer shareware means
licenses or other legal documents governing the relationship between
copyright owners of computer shareware and persons associated with the
dissemination or other use of computer shareware.
(3) Public domain computer software means software which has been
publicly distributed with an explicit disclaimer of copyright protection
by the copyright owner.
(c) Forms. The Copyright Office does not provide forms for the use
of persons recording documents designated as pertaining to computer
shareware or for the deposit of public domain computer software.
(d) Recordable documents. (1) Any document clearly designated as a
``Document Pertaining to Computer Shareware'' and which governs the
legal relationship between owners of computer shareware and persons
associated with the dissemination or other use of computer shareware may
be recorded in the Computer Shareware Registry.
(2) Submitted documents may be a duplicate original, a legible
photocopy, or other legible facsimile reproduction of the document, and
must be complete on its face.
(3) Submitted documents will not be returned, and the Copyright
Office requests that if the document is considered valuable, that only
copies of that document be submitted for recordation.
(e) Fee. The fee for recording a document pertaining to computer
shareware is the recordation fee for a document, as prescribed in Sec.
201.3(c).
(f) Date of recordation. The date of recordation is the date when
all of the elements required for recordation, including the prescribed
fee have been received in the Copyright Office. After recordation of the
statement, the sender will receive a certificate of recordation from the
Copyright Office. The submission will be retained and filed by the
Copyright Office, and may be destroyed at a later date after preparing
suitable copies, in accordance with usual procedures.
(g) Donation of public domain computer software. (1) Any person may
donate a copy of public domain computer software for the benefit of the
Machine-Readable Collections Reading Room of the Library of Congress.
Decision as to whether any public domain computer software is suitable
for accession to the collections rests solely with the Library of
Congress. Materials not selected will be disposed of in accordance with
usual procedures, including transfer to other libraries, sale, or
destruction. Donation of public domain software may be made regardless
of whether a document has been recorded pertaining to the software.
(2) In order to donate public domain software, the following
conditions must be met:
(i) The copy of the public domain software must contain an explicit
disclaimer of copyright protection from the copyright owner.
(ii) The submission should contain documentation regarding the
software. If the documentation is in machine-readable form, a print-out
of the documentation should be included in the donation.
(iii) If the public domain software is marketed in a box or other
packaging, the entire work as distributed, including the packaging,
should be deposited.
(iv) If the public domain software is copy protected, two copies of
the software must be submitted.
(3) Donations of public domain software with an accompanying letter
of
[[Page 620]]
explanation must be sent to the following address: Gift Section,
Exchange & Gift Division, Library of Congress, Washington, DC 20540-
4260.
[58 FR 29107, May 19, 1993, as amended at 60 FR 34168, June 30, 1995; 64
FR 29522, June 1, 1999; 65 FR 39819, June 28, 2000; 82 FR 9358, Feb. 6,
2017]
Sec.201.27 Initial notice of distribution of digital audio recording
devices or media.
(a) General. This section prescribes rules pertaining to the filing
of an Initial Notice of Distribution in the Copyright Office as required
by section 1003(b) of the Audio Home Recording Act of 1992, Public Law
102-563, title 17 of the United States Code, to obtain a statutory
license to import and distribute, or manufacture and distribute, any
digital audio recording device or digital audio recording medium in the
United States.
(b) Definitions. (1) An Initial Notice of Distribution of Digital
Audio Recording Devices or Media or Initial Notice is a notice under
section 1003(b) of the Audio Home Recording Act of 1992, Public Law 102-
563, title 17 of the United States Code, which is required by that
section to be filed in the Copyright Office by an importer or
manufacturer of a digital audio recording device or digital audio
recording medium who has not previously filed notice of the importation
or manufacture for distribution of such device or medium in the United
States.
(2) The product category of a device or medium is a general class of
products made up of functionally equivalent digital audio recording
devices or media with substantially the same use in substantially the
same environment, including, for example, hand-held portable integrated
combination units (``boomboxes''); portable personal recorders; stand-
alone home recorders (``tape decks''); home combination systems (``rack
systems''); automobile recorders; configurations of tape media (standard
cassettes or microcassettes); and configurations of disc media such as
2\1/2\, 3 and 5 discs.
(3) The technology of a device or medium is a product type
distinguished by different technical processes for digitally recording
musical sounds, such as digital audio tape recorders (DAT), digital
compact cassette (DCC), or recordable compact discs, including minidiscs
(MD).
(4) The terms digital audio recording device, digital audio
recording medium, distribute, manufacture, and transfer price, have the
meanings of the same terms as they are used in section 1001 of the
Copyright Act, title 17 of the United States Code, as amended by Public
Law 102-563.
(c) Forms. An Initial Notice form may be obtained from the U.S.
Copyright Office free of charge by contacting the address specified in
Sec.201.1.
(d) Filing Deadline. Initial Notices shall be filed in the Copyright
Office no later than 45 days after the commencement of the first
distribution of digital audio recording devices or digital audio
recording media in the United States, on or after October 28, 1992. A
manufacturer or importer shall file an Initial Notice within 45 days of
the first distribution for each new product category and each new
technology that the manufacturer or importer has not reported in a
previous Initial Notice.
(e) Content of Initial Notices. An Initial Notice of Distribution of
Digital Audio Recording Devices or Media shall be identified as such by
prominent caption or heading, and shall include the following:
(1) The designation ``Importer'' or ``Manufacturer,'' or both,
whichever is applicable, followed by the full legal name of the importer
or manufacturer of the digital audio recording device or medium, or if
the party named is a partnership, the name of the partnership followed
by the name of at least one individual partner;
(2) Any trade or business name or names, trademarks, or other
indicia of origin that the importer or manufacturer uses or intends to
use in connection with the importation, manufacture, or distribution of
such digital audio recording device or medium in the United States;
(3) The full United States mailing address of the importer or
manufacturer, and the full business address, if different;
(4) The product category and technology of the devices or media
imported or manufactured;
[[Page 621]]
(5) The first date (day, month, and year) that distribution
commenced, or is to commence;
(6) The signature of an appropriate officer, partner, or agent of
the importer or manufacturer, as specified by the Initial Notice form;
and
(7) Other information relevant to the importation or manufacture for
distribution of digital audio recording devices or media as prescribed
on the Initial Notice form provided by the Copyright Office.
(f) Amendments. (1) The Copyright Office will record amendments to
Initial Notices submitted to correct an error or omission in the
information given in an earlier Initial Notice. An amendment is not
appropriate to reflect developments or changes in facts occurring after
the date of signature of an Initial Notice.
(2) An amendment shall:
(i) Be clearly and prominently identified as an ``Amendment to an
Initial Notice of Distribution of Digital Audio Recording Devices or
Media;''
(ii) Identify the specific Initial Notice intended to be amended so
that it may be readily located in the records of the Copyright Office;
(iii) Clearly specify the nature of the amendment to be made; and
(iv) Be signed and dated in accordance with this section.
(3) The recordation of an amendment under this paragraph shall have
only such effect as may be attributed to it by a court of competent
jurisdiction.
(g) Recordation. (1) The Copyright Office will record the Initial
Notices and amendments submitted in accordance with this section by
placing them in the appropriate public files of the Office. The
Copyright Office will advise manufacturers and importers of errors or
omissions appearing on the face of documents submitted to it, and will
require that any such obvious errors or omissions be corrected before
the documents will be recorded. However, recordation by the Copyright
Office shall establish only the fact and date thereof; such recordation
shall in no case be considered a determination that the document was, in
fact, properly prepared or that all of the regulatory requirements to
satisfy section 1003 of title 17 have been met.
(2) No fee shall be required for the recording of Initial Notices.
The fee for filing an Amendment to an Initial Notice of Distribution of
Digital Audio Recording Devices or Media is prescribed in Sec.
201.3(e).
[57 FR 55465, Nov. 25, 1992, as amended at 64 FR 36575, July 7, 1999; 72
FR 33692, June 19, 2007; 78 FR 42874, July 18, 2013; 82 FR 9358, Feb. 6,
2017]
Sec.201.28 Statements of Account for digital audio recording devices
or media.
(a) General. This section prescribes rules pertaining to the filing
of Statements of Account and royalty fees in the Copyright Office as
required by 17 U.S.C. 1003(c) and 1004, in order to import and
distribute, or manufacture and distribute, in the United States any
digital audio recording device or digital audio recording medium.
(b) Definitions. For purposes of this section, the following
definitions apply:
(1) Annual statement of account is the statement required under 17
U.S.C. 1003, to be filed no later than two months after the close of the
accounting period covered by the annual statement.
(2) Device and medium have the same meaning as digital audio
recording device and digital audio recording medium, respectively, have
in 17 U.S.C. 1001.
(3) Digital audio recording product means digital audio recording
devices and digital audio recording media.
(4) Generally accepted auditing standards (GAAS), means the auditing
standards promulgated by the American Institute of Certified Public
Accountants.
(5) Manufacturing or importing party refers to any person or entity
that manufactures and distributes, and/or imports and distributes, any
digital audio recording device or digital audio recording medium in the
United States, and is required under 17 U.S.C. 1003 to file with the
Copyright Office quarterly and annual Statements of Account.
(6) Product category of a device or medium is a general class of
products
[[Page 622]]
made up of functionally equivalent digital audio recording products with
substantially the same use in substantially the same environment,
including, for example, hand-held portable integrated combination units
(``boomboxes''); portable personal recorders; stand-alone home recorders
(``tape decks''); home combination systems (``rack systems'');
automobile recorders; configurations of tape media (standard cassettes
or microcassettes); and configurations of disc media, such as 2\1/2\
inch, 3 inch, or 5 inch discs.
(7) Primary auditor is the certified public accountant retained by
the manufacturing or importing party to audit the amounts reported in
the annual Statement of Account submitted to the Copyright Office. The
primary auditor may be the certified public accountant engaged by the
manufacturing or importing party to perform the annual audit of the
party's financial statement.
(8) Quarterly statement of account is the statement accompanying
royalty payments required under 17 U.S.C. 1003, to be filed for each of
the first three quarters of the accounting year, and no later than 45
days after the close of the quarterly period covered by the statement.
(9) Technology of a device or medium is a digital audio recording
product-type distinguished by different technical processes for
digitally recording musical sounds, such as digital audio tape recorders
(DAT), digital compact cassettes (DCC), or recordable compact discs,
including minidiscs (MD).
(10) Distribute, manufacture, transfer price, and serial copying
have the meanings set forth in 17 U.S.C. 1001.
(c) Accounting periods and filing deadlines--(1) Election of filing
basis. Statements of Account may be filed on either a calendar or fiscal
year basis at the election of the manufacturing party. The election of a
calendar or fiscal year basis must be made when the manufacturing or
importing party files its first quarterly Statement of Account by
appropriate designation on the Form DART/Q submitted. Thereafter the
specific calendar or fiscal-year accounting period must be designated on
each quarterly Statement of Account. The filing basis may be changed at
any time upon notification in writing to the Register of Copyrights,
accompanied by a statement of reasons as to why the change is to be made
and a statement that such change will not affect the aggregate royalties
due under the earlier basis. The notification of change in filing basis
must be made at least two months before the date the next quarterly
Statement of Account is due to be filed.
(2) Quarterly filings. Quarterly Statements of Account shall be
filed on Form DART/Q and shall cover a three-month period corresponding
to the calendar or fiscal year of the filing party. A quarterly
statement shall be filed no later than 45 days after the close of the
period it covers.
(3) Annual filings. Annual Statements of Account shall be filed on
Form DART/A and shall cover both the fourth quarter of an accounting
year and the aggregate of the entire year corresponding to the calendar
or fiscal accounting year elected. An annual statement shall be filed no
later than two months after the close of the period it covers. The
appropriate royalty payment, calculated according to the instructions
contained in Form DART/A, shall accompany the annual Statement of
Account covering royalties due for the filing year: that is, royalties
for the fourth quarter and any additional royalties that are due because
of adjustments in the aggregate amounts of devices or media distributed.
(4) Early or late filings. Statements of Account and royalty fees
received before the end of the particular accounting period covered by
the statement will not be processed by the Office. The statement must be
filed after the close of the relevant accounting period. Statements of
Account and royalty fees received after the 45-day deadline for
quarterly statements or the two-month deadline for annual statements
will be accepted for whatever legal effect they may have and will be
assessed the appropriate interest charge for the late filing.
(d) Forms. (1) Each quarterly or annual Statement of Account shall
be submitted on the appropriate form prescribed by the Copyright Office.
Computation of the royalty fee shall be in
[[Page 623]]
accordance with the procedures set forth in the forms and this section.
Statement of Account forms are available free from the Copyright Office
website. Copies of Statement of Account forms transmitted to the Office
by fax will not be accepted.
(2) Forms prescribed by the Copyright Office are designated
Quarterly Statement of Account for Digital Audio Recording Products
(Form DART/Q) and Annual Statement of Account for Digital Audio
Recording Products (Form DART/A).
(e) Contents of quarterly Statements of Account--(1) Quarterly
period and filing. Any quarterly Statement of Account shall cover the
full quarter of the calendar or fiscal accounting year for the
particular quarter for which it is filed. A separate quarterly statement
shall be filed for each quarter of the first three quarters of the
accounting year during which there is any activity relevant to the
payment of royalties under 17 U.S.C. 1004. The annual Statement of
Account identified in paragraph (f) of this section incorporates the
fourth quarter of the accounting year.
(2) General content. Each quarterly Statement of Account shall be
filed on Form DART/Q, the ``Quarterly Statement of Account for Digital
Audio Recording Products,'' and shall include a clear statement of the
following information:
(i) A designation of the calendar or fiscal year of the annual
reporting period;
(ii) A designation of the period, including the beginning and ending
day, month, and year of the period covered by the quarter;
(iii) The full legal name of the manufacturing and/or importing
party, together with any ``doing-business-as'' names used by such person
or entity for the purpose of conducting the business of manufacturing,
importing, or distributing digital audio recording products;
(iv) The full mailing address of the manufacturing or importing
party, including a specific number and street name, or rural route and
box number, of the place of business of the person or entity. A post
office box or similar designation will not be sufficient for this
purpose except where it is the only address that can be used in that
geographic location;
(v) A designation of the manufacturing or importing party status,
i.e., ``Manufacturer,'' ``Importer,'' or ``Manufacturer and Importer;''
(vi) The designation ``Product Categories'' together with the
product categories of the digital audio recording products manufactured
or imported and distributed during the quarter covered by the statement;
(vii) The designation ``Technologies'' together with the
technologies of the digital audio recording products manufactured or
imported and distributed under the AHRA during the quarter covered by
the statement;
(viii) The designation ``Series or Model Number'' followed by the
model or series numbers of the digital audio recording products
manufactured or imported and distributed under the AHRA during the
quarter covered by the statement;
(ix) The ``fee code'' associated with the product;
(x) The ``source code'' for the product category;
(xi) The ``transfer price'' of the product;
(xii) The ``number of units distributed'' for each product;
(xiii) The ``minimum fee per unit'' for each product;
(xiv) The statutory royalty ``rate'' for digital audio recording
devices or media;
(xv) The ``rate fee'' for each product;
(xvi) The appropriate ``maximum fee per unit'' for each product;
(xvii) The ``maximum fee'' for each product; and
(xviii) A computation of the total royalty payable for the quarter
covered by the statement. Filing parties may not round off the figures
they list in Space C, the computation section of the form, except for
the figure representing the total royalty fee due; in that case, numbers
ending in 50 to 99 cents may be rounded up to the next dollar, and
numbers ending in one to 49 cents may be rounded down to the next
dollar;
(3) Royalty payments and accounting. (i) The royalty specified in 17
U.S.C. 1004 shall accompany the quarterly and
[[Page 624]]
annual Statements of Account. No royalty is payable for redistribution
of the same product item unless a credit has been taken for such items.
Where royalties are payable for the period covered by the statement, the
Statement of Account shall contain the following information for each
unique combination of product category, technology, series or model
number, fee code, source code, and transfer price:
(A) The total number of digital audio recording media distributed,
multiplied by the statutory royalty rate of three percent (3%) of the
transfer price;
(B) The total number of digital audio recording devices distributed
for which the statutory royalty rate of two percent (2%) of the transfer
price is payable, multiplied by such percentage rate of the transfer
price;
(C) The total number of digital audio recording devices distributed
for which the statutory maximum royalty is limited to eight dollars
($8.00), multiplied by such eight dollar amount;
(D) The total number of digital audio recording devices distributed
for which the statutory maximum royalty is limited to twelve dollars
($12.00), multiplied by such twelve dollar amount; and
(E) The total number of digital audio recording devices distributed
for which the statutory minimum royalty is limited to one dollar
($1.00), multiplied by such one dollar amount.
(ii) The amount of the royalty payment shall be calculated in
accordance with the instructions specified in the quarterly Statement of
Account form. Payment shall be made as specified in Sec.201.28(h).
(4) Reduction of royalty fee. (i) Section 1004(a)(2)(A) of title 17
of the United States Code, provides an instance in which royalty
payments may be reduced if the digital audio recording device and such
other devices are part of a physically integrated unit, the royalty
payment shall be based on the transfer price of the unit, but shall be
reduced by any royalty payment made on any digital audio recording
device included within the unit that was not first distributed in
combination with the unit.
(ii) Notice of this provision together with directions for possible
application to a product is contained in the DART/Q Form.
(5) Contact party. Each Statement of Account shall include the name,
address, and telephone and fax numbers of an individual whom the
Copyright Office can write or call about the Statement of Account.
(6) Credits for returned or exported products. When digital audio
recording products first distributed in the United States for ultimate
transfer to United States consumers are returned to the manufacturer or
importer as unsold or defective merchandise, or are exported, the
manufacturing or importing party may take a credit to be deducted from
the royalties payable for the period when the products were returned or
exported. The credit may be taken only for returns or exports made
within two years following the date royalties were paid for the
products. This credit must be reflected in the manufacturing or
importing party's quarterly or annual Statement of Account. If the
manufacturer or importer later redistributes in the United States any
products for which a credit has been taken, these products must be
listed on the Statement of Account, and a new computation of the royalty
fee must be made based on the transfer price of the products at the time
of the new distribution.
(7) Oath and signature. Each Statement of Account shall include a
legally binding signature, including an electronic signature as defined
in 15 U.S.C. 7006, of an authorized officer, principal, or agent of the
filing party. The signature shall be accompanied by:
(i) The printed or typewritten name of the person signing the
quarterly Statement of Account;
(ii) The date the document is signed;
(iii) The following certification:
I, the undersigned, hereby certify that I am an authorized officer,
principal, or agent of the ``manufacturing or importing party''
identified in Space B.
Penalties for fraud and false statements are provided under 18 U.S.C.
1001 et. seq.
(f) Contents of annual Statements of Account--(1) General contents.
Each annual Statement of Account shall be
[[Page 625]]
filed on form DART/A, ``Annual Statement of Account for Digital Audio
Recording Products.'' It must be filed by any importer or manufacturer
that distributed in the United States, during a given calendar or fiscal
year, any digital audio recording device or digital audio recording
medium. The annual statement shall cover the aggregate of the
distribution of devices and media for the entire year corresponding to
the calendar or fiscal year elected. The annual Statement of Account
shall contain the information, oath, and certification prescribed in
paragraphs (e)(2)(i) through (e)(7)(iii) of this section, and shall
cover the entire accounting year, including the fourth quarter
distribution, and shall also provide for the reconciliation of the
aggregated accounting of digital audio recording devices and media for
the reported accounting year.
(2) Reconciliation. Any royalty payment due under sections 1003 and
1004 of title 17 that was not previously paid with the filing party's
first three quarterly Statements of Account, shall be reconciled in the
annual statement. Reconciliation in the annual Statement of Account
provides for adjustments for reductions, refunds, underpayments,
overpayments, credits, and royalty payments paid in Quarters 1, 2, and
3, and shall be computed in accordance with the instructions included in
the annual Statement of Account. Errors that require reconciliation
shall be corrected immediately upon discovery.
(3) Accountant's opinion. Each annual Statement of Account or any
amended annual Statement of Account shall be audited by the primary
auditor as defined in paragraph (b)(7) of this section. An amendment may
be submitted to the Office either as a result of responses to questions
raised by a Licensing Division examiner or on the initiative of the
manufacturing or importing party to correct an error in the original
Statement of Account.
(i) The audit shall be performed in accordance with generally
accepted auditing standards (GAAS). The audit may be performed in
conjunction with an annual audit of the manufacturing or importing
party's financial statements.
(ii) The CPA shall issue a report, the ``primary auditor's report,''
reflecting his or her opinion as to whether the annual statement
presents fairly, in all material respects, the number of digital audio
recording devices and media that were imported and distributed, or
manufactured and distributed, by the manufacturing or importing party
during the relevant year, and the amount of royalty payments applicable
to them under 17 U.S.C. chapter 10, in accordance with that law and
these regulations.
(iii) The primary auditor's report shall be filed with the Copyright
Office together with the annual Statement of Account, within two months
after the end of the annual period for which the annual Statement of
Account is prepared. The report may be qualified to the extent necessary
and appropriate.
(iv) The Copyright Office does not provide a specific form, or
require a specific format, for the CPA's review; however, in addition to
the above, certain items must be named as audited items. These include
the variables necessary to complete Space C of the Statement of Account
form. The CPA may place his or her opinion, which will serve as the
``primary auditor's report,'' in the space provided on Form DART/A, or
may attach a separate sheet or sheets containing the opinion.
(v) The auditor's report shall be signed by an individual, or in the
name of a partnership or a corporation, and shall include city and state
of execution, certificate number, jurisdiction of certificate, and date
of opinion. The certificate number and jurisdiction are not required if
the report is signed in the name of a partnership or a corporation.
(g) Copies of statements of account. A licensee shall file an
original and one copy of the statement of account with the Licensing
Division of the Copyright Office.
(h) Royalty fee payment. (1) All royalty fees must be paid by
electronic funds transfer, and must be received in the designated bank
by the filing deadline for the relevant accounting period. The following
information must be provided as part of the EFT and/or as part of the
remittance advice as provided
[[Page 626]]
for in circulars issued by the Copyright Office:
(i) Remitter's name and address;
(ii) Name of a contact person, telephone number and extension, and
email address;
(iii) The actual or anticipated date that the EFT will be
transmitted;
(iv) Type of royalty payment (i.e., DART);
(v) Total amount submitted via the EFT;
(vi) Total amount to be paid by year and period;
(vii) Number of Statements of Account that the EFT covers;
(viii) ID numbers assigned by the Licensing Division;
(ix) Legal name of the owner for each Statement of Account.
(2) The remittance advice shall be attached to the Statement(s) of
Account. In addition, a copy of the remittance advice shall be emailed
or sent by facsimile to the Licensing Division.
(3) The Office may waive the requirement for payment by electronic
funds transfer as set forth in paragraph (1) of this section. To obtain
a waiver, the remitter shall submit to the Licensing Division at least
60 days prior to the royalty fee due date a certified statement setting
forth the reasons explaining why payment by an electronic funds transfer
would be virtually impossible or, alternatively, why it would impose a
financial or other hardship on the remitter. The certified statement
must be signed by a duly authorized representative of the entity making
the payment. A waiver shall cover only a single payment period. Failure
to obtain a waiver may result in the remittance being returned to the
remitter.
(i) Documentation. All filing parties shall keep and retain in their
possession, for at least three years from the date of filing, all
records and documents necessary and appropriate to support fully the
information set forth in quarterly and annual statements that they file.
(j) Corrections, supplemental payments, and refunds--(1) General.
Upon compliance with the procedures and within the time limits set forth
in this paragraph (i), corrections to quarterly and annual Statements of
Account will be placed on record, and supplemental royalty fee payments
will be received for deposit, or refunds without interest will be
issued, in the following cases:
(i) Where, with respect to the accounting period covered by the
quarterly or annual Statement of Account, any of the information given
in the statement filed in the Copyright Office is incorrect or
incomplete; or
(ii) Where, for any reason except that mentioned in paragraph (j)(2)
of this section, calculation of the royalty fee payable for a particular
accounting period was incorrect, and the amount deposited in the
Copyright Office for that period was either too high or too low.
(2) Corrections to quarterly or annual Statements of Account will
not be placed on file, supplemental royalty fee payments will not be
received for deposit, and refunds will not be issued, where the
information in the Statements of Account, the royalty fee calculations,
or the payments were correct as of the date on which the accounting
period ended, but changes (for example, cases where digital audio
recording media were exported) took place later.
(3) Requests that corrections to annual or quarterly Statements of
Account be accepted, that fee payments be accepted, or that refunds be
issued shall be addressed to the Licensing Division of the Copyright
Office, and shall meet the following conditions:
(i) The request shall be made in writing and must clearly identify
the manufacturing or importing party making the request, the accounting
period in question, and the purpose of the request. A request for a
refund must be received in the Copyright Office before the expiration of
two months from the last day of the applicable Statement of Account
filing period. Telephone or similar unsigned requests that meet these
conditions may be permitted, where a follow-up written request detailing
the same information is received by the Copyright Office within 14 days
after the required 60-day period.
(ii) The request must clearly identify the incorrect or incomplete
information formerly filed and must provide the correct or additional
information.
[[Page 627]]
(iii) In the case where a royalty fee was miscalculated and the
amount deposited with the Copyright Office was too large or too small,
the request must be accompanied by an affidavit under the official seal
of any officer authorized to administer oaths within the United States,
or a statement in accordance with 28 U.S.C. 1746, made and signed in
accordance with paragraph (e)(7) of this section. The affidavit or
statement shall describe the reasons why the royalty fee was improperly
calculated and include a detailed analysis of the proper royalty
calculation.
(iv) Following final processing, all requests will be filed with the
original Statement of Account in the records of the Copyright Office.
Nothing contained in this paragraph shall be considered to relieve
manufacturing or importing parties of their full obligations under title
17 of the United States Code, and the filing of a correction or
supplemental payment shall have only such effect as may be attributed to
it by a court of competent jurisdiction.
(v)(A) The request must be accompanied by a filing fee in the amount
prescribed in Sec.201.3(e) for each Statement of Account involved.
Payment of this fee may be in the form of a personal or company check,
or a certified check, cashier's check, or money order, payable to the
Register of Copyrights. No request will be processed until the
appropriate filing fees are received.
(B) Requests that a supplemental royalty fee payment be deposited
must be accompanied by a remittance in the full amount of such fee.
Payment of the supplemental royalty fee must be in the form of a
certified check, cashier's check, money order, or electronic payment
payable to the Register of Copyrights. No such request will be processed
until an acceptable remittance in the full amount of the supplemental
royalty fee has been received.
(vi) All requests submitted under paragraph (j) of this section must
be signed by the manufacturing or importing party named in the Statement
of Account, or the duly authorized agent of that party in accordance
with paragraph (e)(7) of this section.
(vii) A request for a refund is not necessary where the Licensing
Division, during its examination of a Statement of Account or related
document, discovers an error that has resulted in a royalty overpayment.
In this case, the Licensing Division will forward the royalty refund to
the manufacturing or importing party named in the Statement of Account.
The Copyright Office will not pay interest on any royalty refunds.
(k) Examination of Statements of Account by the Copyright Office.
(1) Upon receiving a Statement of Account and royalty fee, the Copyright
Office will make an official record of the actual date when such
statement and fee were physically received in the Copyright Office.
Thereafter, the Licensing Division will examine the statement for
obvious errors or omissions appearing on the face of the documents and
will require that any such obvious errors or omissions be corrected
before final processing of the document is completed. If, as the result
of communications between the Copyright Office and the manufacturer or
importer, an additional fee is deposited or changes or additions are
made in the Statement of Account, the date that additional deposit or
information was actually received in the Office will be added to the
official record.
(2) Completion by the Copyright Office of the final processing of a
Statement of Account and royalty fee deposit shall establish only the
fact of such completion and the date or dates of receipt shown in the
official record. It shall not be considered a determination that the
Statement of Account was, in fact, properly prepared and accurate, that
the correct amount of the royalty was deposited, that the statutory time
limits for filing had been met, or that any other requirements of 17
U.S.C. 1001 et. seq. were fulfilled.
(l) Interest on late payments or underpayments. (1) Royalty payments
submitted as a result of late payments or underpayments shall include
interest, which shall begin to accrue on the first day after the close
of the period for filing Statements of Account for all late payments or
underpayments of royalties for the digital audio recording obligation
occurring within that accounting period. The accrual period shall end on
the date the electronic payment submitted by the remitter is received.
[[Page 628]]
In cases where a waiver of the electronic funds transfer requirement is
approved by the Copyright Office, and royalties payments are either late
or underpaid, the accrual period shall end on the date the payment is
postmarked. If the payment is not received by the Copyright Office
within five business days of its date, then the accrual period shall end
on the date of the actual receipt by the Copyright Office.
(2) The interest rate applicable to a specific accounting period
shall be the Current Value of Funds rate in accordance with the Treasury
Financial Manual, at 1 TFM 6-8025.40, in effect on the first business
day after the close of the filing deadline for the relevant accounting
period. The interest rate for a particular accounting period may be
obtained by consulting the Federal Register for the applicable Current
Value of Funds Rate, or by contacting the Licensing Division of the
Copyright Office.
(3) Interest is not required to be paid on any royalty underpayment
or late payment from a particular accounting period if the interest
charge is five dollars ($5.00) or less.
(m) Confidentiality of Statements of Account. Public access to the
Copyright Office files of Statements of Account for digital audio
recording products shall not be provided. Access will only be granted to
interested copyright parties in accordance with regulations prescribed
by the Register of Copyrights pursuant to 17 U.S.C. 1003(c).
[59 FR 4589, Feb. 1, 1994, as amended at 64 FR 36575, July 7, 1999; 65
FR 48914, Aug. 10, 2000; 70 FR 30367, May 26, 2005; 70 FR 38022, July 1,
2005; 71 FR 45740, Aug. 10, 2006; 72 FR 33692, June 19, 2007; 73 FR
29073, May 20, 2008; 82 FR 9358, Feb. 6, 2017; 83 FR 51841, Oct. 15,
2018; 85 FR 19667, Apr. 8, 2020]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.201.28 was
amended by removing ``Licensing Division'' from each place it appears
and adding in its place ``Licensing Section'', effective July 22, 2021.
Sec.201.29 Access to, and confidentiality of, Statements of Account,
Verification Auditor's Reports, and other verification information
filed in the Copyright Office for digital audio recording devices
or media.
(a) General. This section prescribes rules covering access to DART
Statements of Account, including the Primary Auditor's Reports, filed
under 17 U.S.C. 1003(c) and access to a Verifying Auditor's Report or
other information that may be filed in the Office in a DART verification
procedure as set out in Sec.201.30. It also prescribes rules to ensure
confidential disclosure of these materials to appropriate parties.
(b) Definitions. (1) Access includes inspection of and supervised
making of notes on information contained in Statements of Account
including Primary Auditor's Reports, Verification Auditor's Reports, and
any other verification information.
(2) Audit and Verification Information means the reports of the
Primary Auditor and Verifying Auditor filed with the Copyright Office
under Sec. Sec.201.28 and 201.30, and all information relating to a
manufacturing or importing party.
(3) DART Access Form means the form provided by the Copyright Office
that must be completed and signed by any appropriate party seeking
access to DART confidential material.
(4) DART confidential material means the Quarterly and Annual
Statements of Account, including the Primary Auditor's Report that is
part of the Annual Statements of Account, and the Verifying Auditor's
Report and any other verification information filed with the Copyright
Office. It also includes photocopies of notes made by requestors who
have had access to these materials that are retained by the Copyright
Office.
(5) Interested copyright party means a party as defined in 17 U.S.C.
1001(7).
(6) A Representative is someone, such as a lawyer or accountant, who
is not an employee or officer of an interested copyright party or a
manufacturing or importing party but is authorized to act on that
party's behalf.
(7) Statements of Account means Quarterly and Annual Statements of
Account as required under 17 U.S.C. 1003(c) and defined in Sec.201.28.
[[Page 629]]
(c) Confidentiality. The Copyright Office will keep all DART
confidential materials in locked files and disclose them only in
accordance with this section. Any person or entity provided with access
to DART confidential material by the Copyright Office shall receive such
information in confidence and shall use and disclose it only as
authorized in 17 U.S.C. 1001 et. seq.
(d) Persons allowed access to DART confidential material. Access to
DART Statements of Account filed under 17 U.S.C. 1003(c) and to
Verification Auditor's Reports or other verification information is
limited to:
(1) An interested copyright party as defined in Sec.201.29(b)(5)
or an authorized representative of an interested copyright party, who
has been qualified for access pursuant to paragraph (f)(2) of this
section;
(2) The Verifying Auditor authorized to conduct verification
procedures under Sec.201.30;
(3) The manufacturing or importing party who filed that Statement of
Account or that party's authorized representative(s); and
(4) Staff of the Copyright Office or the Library of Congress who
require access in the performance of their duties under title 17 U.S.C.
1001 et seq.;
(e) Requests for access. An interested copyright party,
manufacturing party, importing party, representative, or Verifying
Auditor seeking access to any DART confidential material must complete
and sign a ``DART Access Form.'' The requestor must submit a copy of the
completed DART Access Form to the Licensing Specialist, Licensing
Division. The form must be received in the Licensing Division at least
five working days before the date an appointment is requested. The form
may be faxed to the Licensing Division to expedite scheduling, but a
copy of the form with the original signature must be filed with the
Office.
(1) A representative of an interested copyright party, a
manufacturing party or an importing party shall submit an affidavit of
his or her authority (e.g., in the form of a letter of authorization
from the interested copyright party or the manufacturing or importing
party).
(2) An auditor selected to conduct a verification procedure under
Sec.201.30 shall submit an affidavit of his or her selection to
conduct the verification procedure.
(3) DART Access Forms may be requested from, and upon completion
returned to the address specified in Sec.201.1.
(f) Criteria for access to DART confidential material. (1) A
Verifying Auditor will be allowed access to any particular Statement of
Account and Primary Auditor's Report required to perform his or her
verification function;
(2) Interested copyright parties as defined in paragraph (b)(5) of
this section will be allowed access to any DART confidential material as
defined in paragraph (b)(4) of this section for verification purposes,
except that no interested copyright party owned or controlled by a
manufacturing or importing party subject to royalty payment obligations
under the Audio Home Recording Act, or who owns or controls such a
manufacturing or importing party, may have access to DART confidential
material relating to any other manufacturing or importing party. In such
cases, a representative of the interested copyright party as defined in
paragraph (b)(6) of this section may have access for that party,
provided that these representatives do not disclose the confidential
information contained in the Statement of Account or Primary Auditor's
Report to his or her client.
(3) Access to a Verifying Auditor's Report and any other
verification material filed in the Office shall be limited to the
interested copyright party(s) requesting the verification procedure and
to the manufacturing or importing party whose Statement of Account was
the subject of the verification procedure.
(g) Denial of access. Any party who does not meet the criteria
described in Sec.201.29(f) shall be denied access.
(h) Content of DART Access Form. The DART Access Form shall include
the following information:
(1) Identification of the Statement of Account and Primary Auditor's
Report, the Verification Auditor's Report and other verification
materials, or
[[Page 630]]
notes prepared by requestors who earlier accessed the same items, to be
accessed, by both the name of the manufacturing party or importing party
and the quarter(s) and year(s) to be accessed.
(2) The name of the interested copyright party, manufacturing party,
importing party, or verification auditor on whose behalf the request is
made, plus this party's complete address, including a street address
(not a post office box number), a telephone number, and a fax number, if
any.
(3) If the request for access is by or for an interested copyright
party, a statement indicating whether the copyright party is owned or
controlled by a manufacturing or importing party subject to a royalty
payment obligation, or whether the interested copyright party owns or
controls a manufacturing or importing party subject to royalty payments.
(4) The name, address, and telephone number of the person making the
request for access and his/her relationship to the party on whose behalf
the request is made.
(5) The specific purpose for the request for access, for example,
access is requested in order to verify a Statement of Account; in order
to review the results of a verification audit; for the resolution of a
dispute arising from such an audit; or in order for a manufacturing or
importing party to review its own Statement of Account, Primary
Auditor's Report, Verification Auditor's Report, or related information.
(6) A statement that the information obtained from access to
Statements of Account, Primary Auditor's Report, Verification Auditor's
Report, and any other verification audit filings will be used only for a
purpose permitted under the Audio Home Recording Act and the DART
regulations.
(7) The actual signature of the party or the representative of the
party requesting access certifying that the information will be held in
confidence and used only for the purpose specified by the Audio Home
Recording Act and these regulations.
[60 FR 25998, May 16, 1995, as amended at 63 FR 30635, June 5, 1998; 64
FR 36575, July 7, 1999; 73 FR 37839, July 2, 2008; 78 FR 42874, July 18,
2013; 82 FR 9358, Feb. 6, 2017]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.201.29(e)
introductory text was amended by removing ``Licensing Division'' from
each place it appears and adding in its place ``Licensing Section'',
effective July 22, 2021.
Sec.201.30 Verification of Statements of Account.
(a) General. This section prescribes rules pertaining to the
verification of information contained in the Statements of Account by
interested copyright parties pursuant to section 1003(c) of title 17 of
the United States Code.
(b) Definitions--(1) Annual Statement of Account, generally accepted
auditing standards (GAAS), and primary auditor have the same meaning as
the definition in Sec.201.28 of this part.
(2) Filer is a manufacturer or importer of digital devices or media
who is required by 17 U.S.C. 1003 to file with the Copyright Office
Quarterly and Annual Statements of Account and a primary auditor's
report on the Annual Statement of Account.
(3) Interested copyright party has the same meaning as the
definition in Sec.201.29 of this part.
(4) Verifying auditor is the person retained by interested copyright
parties to perform a verification procedure. He or she is independent
and qualified as defined in paragraphs (j)(2) and (j)(3) of this
section.
(5) Verification procedure is the process followed by the verifying
auditor to verify the information reported on an Annual Statement of
Account.
(c) Purpose of verification. The purpose of verification is to
determine whether there was any failure of the primary auditor to
conduct the primary audit properly or to obtain a reliable result, or
whether there was any error in the Annual Statement of Account.
(d) Timing of verification procedure--(1) Requesting a verification
procedure. No sooner than three months nor later
[[Page 631]]
than three years after the filing deadline of the Annual Statement of
Account to be verified, any interested copyright party shall notify the
Register of Copyrights of its interest in instituting a verification
procedure. Such notification of interest shall also be served at the
same time on the filer and the primary auditor identified in the Annual
Statement of Account. Such notification shall include the year of the
Annual Statement of Account to be verified, the name of the filer,
information on how other interested copyright parties may contact the
party interested in the verification including name, address, telephone
number, facsimile number and electronic mail address, if any, and a
statement establishing the party filing the notification as an
interested copyright party. The notification of interest may apply to
more than one Annual Statement of Account and more than one filer.
(2) Coordination and selection of verifying auditor. The Copyright
Office will publish in the Federal Register notice of having received a
notification of interest to institute a verification procedure.
Interested copyright parties have one month from the date of publication
of the Federal Register notice to notify the party interested in
instituting the verification procedure of their intent to join with it
and to participate in the selection of the verifying auditor. Any
dispute about the selection of the verifying auditor shall be resolved
by the parties themselves.
(3) Notification of the filer and primary auditor. As soon as the
verifying auditor has been selected, and in no case later than two
months after the publication in the Federal Register of the notice
described in paragraph (d)(2) of this section, the joint interested
copyright parties shall notify the Register of Copyrights, the filer,
and the primary auditor identified in the Annual Statement of Account to
be verified, that they intend or do not intend to initiate a
verification procedure.
(4) Commencement of the verification procedure. The verification
procedure shall begin no sooner than one month after notice of intent to
initiate a verification procedure was given to the filer and the primary
auditor by the joint interested copyright parties. The joint interested
copyright parties shall grant the filer or the primary auditor a
postponement of the beginning of the verification procedure of up to one
additional month if either one requests it. Verification procedures
shall be conducted at reasonable times during normal business hours.
(5) Anti-duplication rules. A filer shall be subject to no more than
one verification procedure per calendar year. An Annual Statement of
Account shall be subject to a verification procedure only once.
(e) Scope of verification. The verifying auditor shall limit his or
her examination to verifying the information required in the Annual
Statement of Account. To the extent possible, the verifying auditor
shall inspect the information contained in the primary auditor's report
and the primary auditor's working papers. If the verifying auditor
believes that access to the records, files, or other materials in the
control of the filer is required according to GAAS, he or she may, after
consultation with the primary auditor, require the production of these
documents as well. The verifying auditor and the primary auditor shall
act in good faith using reasonable professional judgment, with the
intention of reaching a reasonable accommodation as to the necessity and
scope of examination of any additional documents, but the decision to
require the production of additional documents is solely that of the
verifying auditor.
(f) Verification report. Upon concluding the verification procedure,
the verifying auditor shall render a report enumerating in reasonable
detail the procedures performed by the verifying auditor and his or her
findings. Such findings shall state whether there was any failure of the
primary auditor to conduct properly the primary audit or obtain a
reliable result, and whether there was any error in the Annual Statement
of Account, itemized by amount and by the filer's elected fiscal year.
If there was such failure or error, the report shall specify all
evidence from which the verifying auditor reached such conclusions. Such
evidence shall be listed and identified in
[[Page 632]]
an appendix to the report in sufficient detail to enable a third party
to reasonably understand or interpret the evidence on which the
verifying auditor based his or her conclusion. If there was no such
failure or error, the report shall so state.
(g) Distribution of report. Copies of the verifying auditor's report
shall be subject to the confidentiality provisions of Sec.201.29 and
shall be distributed as follows:
(1) One copy, excluding the appendix, if applicable, shall be filed
with the Register of Copyrights.
(2) One copy, with the appendix, if applicable, shall be submitted
to each of the interested copyright parties who retained the services of
the verifying auditor and who are authorized to receive such information
according to Sec.201.29.
(3) One copy, with the appendix, if applicable, shall be submitted
to the filer of the Annual Statement of Account.
(4) One copy, with the appendix, if applicable, shall be submitted
to the primary auditor.
(h) Retention of report. The Register of Copyrights will retain his
or her copy of the verifying auditor's report for three years following
the date the copy of the verifying auditor's report is filed.
(i) Costs of verification. The joint interested copyright parties
who requested the verification procedure shall pay the fees of the
verifying auditor and the primary auditor for their work performed in
connection with the verification procedure, except, if the verification
procedure results in a judicial determination or the filer's agreement
that royalty payments were understated on the Annual Statement of
Account, then,
(1) if the amount is less than five percent (5%) of the amount
stated on the Annual Statement of Account, that amount shall first be
used to pay the fees of the verifying auditor and the primary auditor,
and any remaining amount plus any applicable interest on the total
amount shall be deposited, allocated by the filer's elected fiscal year,
with the Register of Copyrights, or
(2) if the amount is equal to or greater than five percent (5%) of
the amount stated on the Annual Statement of Account, the filer shall
pay the fees of the verifying auditor and the primary auditor, and, in
addition, shall deposit the amount found to be due plus any applicable
interest on the total amount, allocated by the filer's elected fiscal
year, with the Register of Copyrights.
(j) Independence and qualifications of verifying auditor. (1) The
verifying auditor shall be qualified and independent as defined in this
section. If the filer has reason to believe that the verifying auditor
is not qualified or independent, it shall raise the matter with the
joint interested copyright parties before the commencement of the
verification procedure, and if the matter is not resolved, it may raise
the issue with the American Institute of Certified Public Accountants'
Professional Ethics Division and/or the verifying auditor's State Board
of Accountancy while the verification procedure is being performed.
(2) A verifying auditor shall be considered qualified if he or she
is a certified public accountant or works under the supervision of a
certified public accounting firm.
(3) A verifying auditor shall be considered independent if:
(i) He or she is independent as that term is used in the Code of
Professional Conduct of the American Institute of Certified Public
Accountants, including the Principles, Rules and Interpretations of such
Code applicable generally to attest engagements (collectively, the
``AICPA Code''); and
(ii) He or she is independent as that term is used in the Statements
on Auditing Standards promulgated by the Auditing Standards Board of the
AICPA and Interpretations thereof issued by the Auditing Standards
Division of the AICPA.
[61 FR 30813, June 18, 1996]
Sec.201.31 Procedures for closing out royalty payments accounts in
accordance with the Audio Home Recording Act.
(a) General. This section prescribes rules pertaining to the close
out of royalty payments accounts in accordance with 17 U.S.C. 1005.
(b) In the Register's discretion, four years after the close of any
calendar
[[Page 633]]
year, the Register of Copyrights may close out the royalty payments
account for that calendar year, including any sub-accounts, that are
subject to a final distribution order under which royalty payments have
been disbursed. Following closure of an account, the Register will treat
any funds remaining in that account, or subsequent deposits that would
otherwise be attributable to that calendar year, as attributable to the
succeeding calendar year.
[83 FR 51841, Oct. 15, 2018]
Sec.201.32 [Reserved]
Sec.201.33 Procedures for filing Notices of Intent to Enforce a
restored copyright under the Uruguay Round Agreements Act.
(a) General. This section prescribes the procedures for submission
of Notices of Intent to Enforce a Restored Copyright under the Uruguay
Round Agreements Act, as required in 17 U.S.C. 104A(a). On or before May
1, 1996, and every four months thereafter, the Copyright Office will
publish in the Federal Register a list of works for which Notices of
Intent to Enforce have been filed. It will maintain a list of these
works. The Office will also make a more complete version of the
information contained in the Notice of Intent to Enforce available on
its website.
(b) Definitions. (1) NAFTA work means a work restored to copyright
on January 1, 1995, as a result of compliance with procedures contained
in the North American Free Trade Agreement Implementation Act of
December 8, 1993, Public Law No. 103-182.
(2) Reliance party means any person who--
(i) With respect to a particular work, engages in acts, before the
source country of that work becomes an eligible country under the URAA,
which would have violated 17 U.S.C. 106 if the restored work had been
subject to copyright protection and who, after the source country
becomes an eligible country, continues to engage in such acts;
(ii) Before the source country of a particular work becomes an
eligible country, makes or acquires one or more copies or phonorecords
of that work; or
(iii) As the result of the sale or other disposition of a derivative
work, covered under 17 U.S.C. 104A(d)(3), or of significant assets of a
person, described in 17 U.S.C. 104 A(d)(3) (A) or (B), is a successor,
assignee or licensee of that person.
(3) Restored work means an original work of authorship that--
(i) Is protected under 17 U.S.C. 104A(a);
(ii) Is not in the public domain in its source country through
expiration of term of protection;
(iii) Is in the public domain in the United States due to--
(A) Noncompliance with formalities imposed at any time by U.S.
copyright law, including failure of renewal, lack of proper notice, or
failure to comply with any manufacturing requirements;
(B) Lack of subject matter protection in the case of sound
recordings fixed before February 15, 1972; or
(C) Lack of national eligibility; and
(iv) Has at least one author or rightholder who was, at the time the
work was created, a national or domiciliary of an eligible country, and
if published, was first published in an eligible country and not
published in the United States during the 30-day period following
publication in such eligible country.
(4) Source country of a restored work is--
(i) A nation other than the United States; and
(ii) In the case of an unpublished work--
(A) The eligible country in which the author or rightholder is a
national or domiciliary, or, if a restored work has more than one author
or rightholder, the majority of foreign authors or rightholders are
nationals or domiciliaries of eligible countries; or
(B) If the majority of authors or rightholders are not foreign, the
nation other than the United States which has the most significant
contacts with the work; and
(iii) In the case of a published work--
(A) The eligible country in which the work is first published; or
(B) If the restored work is published on the same day in two or more
eligible
[[Page 634]]
countries, the eligible country which has the most significant contacts
with the work.
(c) Forms. The Copyright Office does not provide forms for Notices
of Intent to Enforce filed with the Copyright Office. It requests that
filers of such notices follow the format set out in Appendix A of this
section and give all of the information listed in paragraph (d) of this
section. Notices of Intent to Enforce must be in English, legible, and
submitted in a letter-sized document format.
(d) Requirements for Notice of Intent to Enforce a Copyright
Restored under the Uruguay Round Agreements Act. (1) Notices of Intent
to Enforce should be mailed to the address specified in Sec.201.1.
(2) The document should be clearly designated as ``Notice of Intent
to Enforce a Copyright Restored under the Uruguay Round Agreements
Act''.
(3) Notices of Intent to Enforce must include:
(i) Required information:
(A) The title of the work, or if untitled, a brief description of
the work;
(B) An English translation of the title if title is in a foreign
language;
(C) Alternative titles if any;
(D) Name of the copyright owner of the restored work, or of an owner
of an exclusive right therein;
(E) The address and telephone number where the owner of copyright or
the exclusive right therein can be reached; and
(F) The following certification signed and dated by the owner of
copyright, or the owner of an exclusive right therein, or the owner's
authorized agent:
I hereby certify that for each of the work(s) listed above, I am the
copyright owner, or the owner of an exclusive right, or the owner's
authorized agent, the agency relationship having been constituted in a
writing signed by the owner before the filing of this notice, and that
the information given herein is true and correct to the best of my
knowledge.
Signature_______________________________________________________________
Name (printed or typed)_________________________________________________
As agent for (if applicable)____________________________________________
Date:___________________________________________________________________
(ii) Optional but essential information:
(A) Type of work (painting, sculpture, music, motion picture, sound
recording, book, etc.);
(B) Name of author(s);
(C) Source country;
(D) Approximate year of publication;
(E) Additional identifying information (e.g., for movies: director,
leading actors, screenwriter, animator; for photographs or books:
subject matter; for books: editor, publisher, contributors);
(F) Rights owned by the party on whose behalf the Notice of Intent
to Enforce is filed (e.g., the right to reproduce/distribute/publicly
display/publicly perform the work, or to prepare a derivative work based
on the work, etc.); and
(G) Email address at which owner, exclusive rights holder, or agent
thereof can be reached.
(4) Notices of Intent to Enforce may cover multiple works provided
that each work is identified by title, all the works are by the same
author, all the works are owned by the identified copyright owner or
owner of an exclusive right, and the rights owned by the party on whose
behalf the Notice of Intent is filed are the same. In the case of
Notices of Intent to Enforce covering multiple works, the notice must
separately designate for each work covered the title of the work, or if
untitled, a brief description of the work; an English translation of the
title if the title is in a foreign language; alternative titles, if any;
the type of work; the source country; the approximate year of
publication; and additional identifying information.
(5) Notices of Intent to Enforce works restored on January 1, 1996,
may be submitted to the Copyright Office on or after January 1, 1996,
through December 31, 1997.
(e) Fee--(1) Amount. The filing fee for recording Notices of Intent
to Enforce is prescribed in Sec.201.3(c).
(2) Method of payment--(i) Checks, money orders, or bank drafts. The
Copyright Office will accept checks, money orders, or bank drafts made
payable to the U.S. Copyright Office. Remittances must be redeemable
without service or exchange fees through a United States institution,
must be payable in United States dollars, and must be imprinted with
American Banking Association
[[Page 635]]
routing numbers. International money orders, and postal money orders
that are negotiable only at a post office are not acceptable. CURRENCY
WILL NOT BE ACCEPTED.
(ii) Copyright Office Deposit Account. The Copyright Office
maintains a system of Deposit Accounts for the convenience of those who
frequently use its services. The system allows an individual or firm to
establish a Deposit Account in the Copyright Office and to make advance
deposits into that account. Deposit Account holders can charge copyright
fees against the balance in their accounts instead of sending separate
remittances with each request for service. For information on Deposit
Accounts, see Circular 5 on the Copyright Office's website, or request a
copy at the address specified in Sec.201.1(b).
(iii) Credit cards. For URAA filings the Copyright Office will
accept most major credit cards. Debit cards cannot be accepted for
payment. With the NIE, a filer using a credit card must submit a
separate cover letter stating the name of the credit card, the credit
card number, the expiration date of the credit card, the total amount,
and a signature authorizing the Office to charge the fees to the
account. To protect the security of the credit card number, the filer
must not write the credit card number on the Notice of Intent to
Enforce.
(f) Public access. Notices of Intent to Enforce filed with the
Copyright Office are available for public inspection and copying in the
Records Research and Certification Section. Some of the information
contained in these records is available on the Office's website,
including the title of the work or a brief description if the work is
untitled and the name of the copyright owner or owner of an exclusive
right.
(g) NAFTA work. The copyright owner of a work restored under NAFTA
by the filing of a NAFTA Statement of Intent to Restore with the
Copyright Office prior to January 1, 1995, is not required to file a
Notice of Intent to Enforce under this regulation.
Appendix A to Sec.201.33--Notice of Intent To Enforce a Copyright
Restored under the Uruguay Round Agreements Act (URAA)
1. Title:_______________________________________________________________
(If this work does not have a title, state ``No title.'') OR
Brief description of work (for untitled works only): ________
________________________________________________________________________
2. English translation of title (if applicable):________________________
3. Alternative title(s) (if any):_______________________________________
4. Type of work:________________________________________________________
(e.g. painting, sculpture, music, motion picture, sound recording,
book)
5. Name of author(s):___________________________________________________
6. Source country:______________________________________________________
7. Approximate year of publication:_____________________________________
8. Additional identifying information:__________________________________
(e.g. for movies; director, leading actors, screenwriter, animator,
for photographs: subject matter; for books; editor, publisher,
contributors, subject matter).
9. Name of copyright owner:_____________________________________________
(Statements may be filed in the name of the owner of the restored
copyright or the owner of an exclusive right therein.)
10. If you are not the owner of all rights, specify the rights you own:
________________________________________________________________________
(e.g. the right to reproduce/distribute publicly display/publicly
perform the work, or to prepare a derivative work based on the work)
11. Address at which copyright owner may be contacted:
________________________________________________________________________
________________________________________________________________________
(Give the complete address, including the country and an
``attention'' line, or ``in care of'' name, if necessary.)
12. Telephone number of owner:__________________________________________
13. Fax number of owner:________________________________________________
14. Certification and Signature:
I hereby certify that, for each of the work(s) listed above, I am
the copyright owner, or the owner of an exclusive right, or the owner's
authorized agent, the agency relationship having been constituted in a
writing signed by the owner before the filing of this notice, and that
the information given herein is true and correct to the best of my
knowledge.
Signature:______________________________________________________________
Name (printed or typed):________________________________________________
As agent for (if applicable):___________________________________________
Date:___________________________________________________________________
Note: Notices of Intent to Enforce must be in English, except for
the original title, and either typed or printed by hand legibly in dark,
preferably black, ink. They should be
[[Page 636]]
on 8\1/2\ by 11 white paper of good quality, with
at least a 1-inch (or 3 cm) margin.
[60 FR 50420, Sept. 29, 1995, as amended at 63 FR 30635, June 5, 1998;
64 FR 12902, Mar. 16, 1999; 71 FR 31092, June 1, 2006; 73 FR 37839, July
1, 2008; 78 FR 42874, July 18, 2013; 82 FR 9358, Feb. 6, 2017; 85 FR
19667, Apr. 8, 2020]
Sec.201.34 Procedures for filing Correction Notices of Intent to
Enforce a Copyright Restored under the Uruguay Round Agreements Act.
(a) General. This section prescribes the procedures for submission
of corrections of Notices of Intent to Enforce a Copyright (NIEs)
Restored under the Uruguay Round Agreements Act of December 8, 1994, as
required by 17 U.S.C. 104A(e), as amended by Pub. L. 103-465, 108 Stat.
4809, 4976 (1994).
(b) Definitions. For purposes of this section, the following
definitions apply.
(1) Major error. A major error in filing a Notice of Intent to
Enforce a Copyright Restored under the Uruguay Round Agreements Act is
an error in the name of the copyright owner or rightholder, or in the
title of the work (as opposed to its translation, if any) where such
error fails to adequately identify the restored work or its owner
through a reasonable search of the Copyright Office NIE records.
Omission of, or incorrect information regarding, a written agency
relationship also constitutes a major error.
(2) Minor error. A minor error in filing a Notice of Intent to
Enforce a Copyright Restored under the Uruguay Round Agreements Act is
any error that is not a major error.
(3) Restored work. For the definition of works restored under the
URAA, see 37 CFR 201.33.
(c) Forms. The Copyright Office does not provide forms for
Correction Notices of Intent to Enforce filed with the Copyright Office.
It requests that filers of such Correction NIEs follow the format set
out in Appendix A of this section and give all information listed in
paragraph (d) of this section. Correction NIEs must be in English, and
should be typed or legibly printed by hand in dark, preferably black
ink, on 8\1/2\ by 11 white paper of good quality
with at least a 1 (or three cm) margin.
(d) Requirements for Correction Notice of Intent to Enforce a
Copyright Restored under the Uruguay Round Agreements Act. (1) A
correction for a Notice of Intent to Enforce should be clearly
designated as a ``Correction Notice of Intent to Enforce'' or
``Correction NIE.''
(2) Correction Notices of Intent to Enforce should be addressed to
Attn: URAA/GATT, NIE and Registrations and mailed to the address
specified in Sec.201.1.
(3) A Correction NIE shall contain the following information:
(i) The volume and document number of the previous NIE which is to
be corrected;
(ii) The title of the work as it appears on the previous NIE,
including alternative titles, if they appear;
(iii) The English translation of the title, if any, as it appears on
the previous NIE;
(iv) A statement of the erroneous information as it appears on the
previous NIE;
(v) A statement of the correct information as it should have
appeared and an optional explanation of its correction; or
(vi) A statement of the information to be added. This includes
optional information such as:
(A) Type of work;
(B) Rights owned by the party on whose behalf the Correction Notice
is filed;
(C) Name of author;
(D) Source country;
(E) Year of publication;
(F) Alternative titles;
(G) An optional explanation of the added information.
(vii) The name and address:
(A) To which correspondence concerning the document should be sent;
and
(B) To which the acknowledgment of the recordation of the Correction
NIE should be mailed; and
(viii) A certification. The certification shall consist of:
(A) A statement that, for each of the works named above, the person
signing the Correction NIE is the copyright owner, or the owner of an
exclusive right, or the owner's authorized agent, and that the
information is correct to the best of that person's knowledge;
(B) The typed or printed name of the person whose signature appears;
[[Page 637]]
(C) The signature and date of signature; and
(D) The telephone and fax number at which the owner, rightholder, or
agent thereof can be reached.
(4) A Correction NIE may cover multiple works in multiple NIE
documents for one fee provided that: each work is identified by title;
all the works are by the same author; all the works are owned by the
same copyright owner or owner of an exclusive right. In the case of
Correction NIEs, the notice must separately designate each title to be
corrected, noting the incorrect information as it appeared on the
previously filed NIE, as well as the corrected information. A single
notice covering multiple titles need bear only a single certification.
(5) Copies, phonorecords or supporting documents cannot be made part
of the record of a Correction NIE and should not be submitted with the
document.
(6) Time for submitting Correction NIEs. (i) Major errors. The
Copyright Office will accept a Correction NIE for a major error
concerning a restored work during the 24-month period beginning on the
date of restoration of the work, as provided for original NIEs in
section 104A(d)(2)(A) of title 17.
(ii) Minor errors. The Office will accept a Correction NIE for a
minor error or omission concerning a restored work at any time after the
original NIE has been filed, as provided in section 104A(e)(1)(A)(iii)
of title 17.
(e) Fee--(1) Amount. The filing fee for recording Correction NIEs is
prescribed in Sec.201.3(c).
(2) Method of payment. See 37 CFR 201.33(e)(1),(2).
(f) Public access. Correction Notices of Intent to Enforce filed
with the Copyright Office are available for public inspection and
copying in the Records Research and Certification Section.
Appendix A to Sec.201.34--Correction Notice of Intent To Enforce
Correction of Notice of Intent To Enforce
1. Name of Copyright Owner (or owner of exclusive right) If this
correction notice is to cover multiple works, the author and
the rights owner must be the same for all works covered by the
notice.)
________________________________________________________________________
2. Title(s) (or brief description)
(a) Work No. 1--______
Volume and Document Number: ______
English Translation: ______
(b) Work No. 2 (if applicable)--______
Volume and Document Number: ______
English Translation: ______
(c) Work No. 3 (if applicable)--______
Volume and Document Number: ______
English Translation: ______
(d) Work No. 4 (if applicable)--______
Volume and Document Number: ______
English Translation: ______
3. Statement of incorrect information on earlier NIE:
________________________________________________________________________
4. Statement of correct (or previously omitted) information:
________________________________________________________________________
Give the following only if incorrect or omitted on earlier NIE:
(a) Type of work ______
(b) Rights owned ______
(c) Name of author (of entire work) ______
(d) Source Country ______
(e) Year of Publication (Approximate if precise year is unknown)
______
(f) Alternative titles ______
5. Explanation of error:
________________________________________________________________________
6. Certification and Signature: I hereby certify that for each of the
work(s) listed above, I am the copyright owner, or the owner
of an exclusive right, or the owner's authorized agent, the
agency relationship having been constituted in a writing
signed by the owner before the filing of this notice, and that
the information given herein is true and correct to the best
of my knowledge.
________________________________________________________________________
Name and Address (typed or printed):
________________________________________________________________________
Telephone/Fax:
As agent for:
________________________________________________________________________
Date and Signature:
________________________________________________________________________
[62 FR 55739, Oct. 28, 1997, as amended at 71 FR 31092, June 1, 2006; 73
FR 37839, July 2, 2008; 78 FR 42874, July 18, 2013; 82 FR 9359, Feb. 6,
2017]
Sec.201.35 Schedules of pre-1972 sound recordings.
(a) General. This section prescribes the rules under which rights
owners, pursuant to 17 U.S.C. 1401(f)(5)(A), may file schedules listing
their pre-1972 sound recordings with the Copyright Office to be eligible
for statutory damages and/or attorneys' fees for violations of 17 U.S.C.
1401(a). This section
[[Page 638]]
also prescribes the rules for recordation of documents pertaining to the
transfer of ownership of pre-1972 sound recordings.
(b) Definitions. For purposes of this section:
(1) Unless otherwise specified, the terms used have the meanings set
forth in 17 U.S.C. 1401.
(2) A pre-1972 sound recording is a sound recording fixed before
February 15, 1972.
(3) For pre-1972 sound recordings of classical music, including
opera:
(i) The title of the pre-1972 sound recording means, to the extent
applicable and known by the rights owner, any and all title(s) of the
sound recording and underlying musical composition known to the rights
owner, and the composer and opus or catalogue number(s) of the
underlying musical composition; and
(ii) The featured artist(s) of the pre-1972 sound recording means,
to the extent applicable and known by the rights owner, the featured
soloist(s), featured ensemble(s), featured conductor, and any other
featured performer(s).
(c) Form and submission. A rights owner seeking to comply with 17
U.S.C. 1401(f)(5)(A) (or her authorized agent) must submit a schedule
listing the owner's pre-1972 sound recordings, or amend such a schedule,
using an appropriate form provided by the Copyright Office on its
website and following the instructions for completion and submission
provided on the Office's website or the form itself. The Office may
reject any submission that fails to comply with these requirements.
(d) Amendment or supplementation. A rights owner (or her authorized
agent) may amend or supplement information regarding a pre-1972 sound
recording included in a schedule filed under paragraph (c) of this
section by or on behalf of the same rights owner. Information may be
corrected if it was incorrect at the time the pre-1972 schedule was
submitted to the Office, or supplemented to include information that was
omitted at the time the schedule was submitted to the Office. For each
recording included in a schedule filed under this paragraph, where the
information specified in paragraph (f)(1) of this section does not
change from the previously-filed schedule, the date the previously-filed
schedule was indexed into the Office's public records remains operative
for purposes of 17 U.S.C. 1401(f)(5)(A)(i)(II).
(e) Removal of record. A rights owner (or her authorized agent) may
remove information regarding a pre-1972 sound recording from the
Office's database of schedules if the sound recording was included in a
schedule filed under paragraph (c) of this section by or on behalf of
the same rights owner, using an appropriate form provided by the
Copyright Office on its website and following the instructions for
completion and submission provided on the Office's website or the form
itself. Removal may be made if there was a substantive defect in the
pre-1972 schedule regarding the specific sound recording at the time the
schedule was submitted to the Office, or, upon a showing of good cause,
at the discretion of the Copyright Office. Once a pre-1972 sound
recording has been removed from the Office's database of schedules of
pre-1972 sound recordings, the sound recording is no longer considered
indexed into the Office's records.
(f) Content. A schedule of pre-1972 sound recordings filed under
paragraphs (c) or (d) of this section shall contain the following:
(1) For each sound recording listed, the right's owner name, sound
recording title, and featured artist(s);
(2) If known and practicable, for each sound recording listed, the
International Standard Recording Code (``ISRC'');
(3) A certification that the individual submitting the schedule of
pre-1972 sound recordings has appropriate authority to submit the
schedule and that all information submitted to the Office is true,
accurate, and complete to the best of the individual's knowledge,
information, and belief, and is made in good faith; and
(4) For each sound recording listed, the rights owner may opt to
include additional information as permitted and in the format specified
by the Office's form or instructions, such as the alternate title,
alternate artist name(s), album, version, label, or publication date.
[[Page 639]]
(g) Transfer of rights ownership. If ownership of a pre-1972 sound
recording changes after its inclusion in a schedule filed with the
Office under this section, the Office will consider the schedule to be
effective as to any successor in interest. A successor in interest may,
but is not required, to file a new schedule under this section.
(h) Legal sufficiency of schedules. The Copyright Office does not
review schedules submitted under paragraphs (c) or (d) of this section
for legal sufficiency, interpret their content, or screen them for
errors or discrepancies. The Office's review is limited to whether the
procedural requirements established by the Office (including payment of
the proper filing fee) have been met. Rights owners are therefore
cautioned to review and scrutinize schedules to assure their legal
sufficiency before submitting them to the Office.
(i) Filing date. The date of filing of a schedule of pre-1972 sound
recordings is the date when a proper submission, including the
prescribed fee, is received in the Copyright Office. The filing date may
not necessarily be the same date that the schedule, for purposes of 17
U.S.C. 1401(f)(5)(A)(i)(II), is indexed into the Office's public
records.
(j) Fee. The filing fee to submit a schedule of pre-1972 sound
recordings pursuant to this section is prescribed in Sec.201.3(c).
(k) Third-party notification. A person may request timely
notification of filings made under this section by following the
instructions provided by the Copyright Office on its website.
(l) Recordation of transfers. The conditions prescribed in Sec.
201.4 of this chapter for recordation of transfers of copyright
ownership are applicable to the recordation of documents relating to the
transfer of ownership of pre-1972 sound recordings under 17 U.S.C.
chapter 14.
[83 FR 52153, Oct. 16, 2018, as amended at 84 FR 10684, Mar. 22, 2019]
Sec.201.36 Notices of contact information for transmitting entities
publicly performing pre-1972 sound recordings.
(a) General. This section prescribes the rules under which
transmitting entities may file contact information with the Copyright
Office pursuant to 17 U.S.C. 1401(f)(5)(B).
(b) Definitions. For purposes of this section:
(1) Unless otherwise specified, the terms used have the meanings set
forth in 17 U.S.C. 1401.
(2) A pre-1972 sound recording is a sound recording fixed before
February 15, 1972.
(3) A transmitting entity is an entity that, as of October 11, 2018,
publicly performs pre-1972 sound recordings by means of digital audio
transmission.
(c) Form and submission. A transmitting entity seeking to comply
with 17 U.S.C. 1401(f)(5)(B) must submit contact information using an
appropriate form specified by the Copyright Office on its website and
following the instructions for completion and submission provided on the
Office's website or the form itself. The Office may reject any
submission that fails to comply with these requirements. No notice or
amended notice received after April 9, 2019 will be accepted by the
Office.
(d) Content. A notice submitted under paragraph (c) of this section
shall contain the following, in addition to any other information
required on the Office's form or website:
(1) The full legal name, email address, and physical street address
of the transmitting entity to which rights owners should send
notifications of claimed violations of 17 U.S.C. 1401(a). A post office
box may not be substituted for the street address of a transmitting
entity. Related or affiliated transmitting entities that are separate
legal entities (e.g., corporate parents and subsidiaries) are considered
separate transmitting entities, and each must file its own separate
notice of contact information.
(2) The website(s) and/or application(s) through which the
transmitting entity publicly performs pre-1972 sound recordings by means
of digital audio transmission.
(3) A certification that the transmitting entity was publicly
performing pre-1972 sound recordings by means of digital audio
transmission as of October 11, 2018.
(4) A certification that the individual submitting the notice has
appropriate authority to submit the notice and
[[Page 640]]
that all information submitted to the Office is true, accurate, and
complete to the best of the individual's knowledge, information, and
belief, and is made in good faith.
(5) The transmitting entity may opt to include alternate names for
which the transmitting entity seeks application of 17 U.S.C.
1401(f)(5)(B)(iii), such as names that the public would be likely to use
to search for the transmitting entity in the Copyright Office's online
directory of transmitting entities publicly performing pre-1972 sound
recordings by means of digital audio transmission, including names under
which the transmitting entity is doing business and other commonly used
names. Separate legal entities are not considered alternate names.
(e) Filing Date. The date of filing of a notice of contact
information pursuant to this section is the date when a proper
submission, including the prescribed fee, is received in the Copyright
Office.
(f) Fee. The filing fee to submit a notice of contact information
pursuant to this section is prescribed in Sec.201.3(c).
[83 FR 52154, Oct. 16, 2018, as amended at 84 FR 10685, Mar. 22, 2019]
Sec.201.37 Noncommercial use of pre-1972 sound recordings.
(a) General. This section prescribes the rules under which a user,
desiring to make noncommercial use of a pre-1972 sound recording
pursuant to 17 U.S.C. 1401(c), conducts a good faith, reasonable search
to determine whether the sound recording is being commercially
exploited, and if not, files a notice of noncommercial use with the
Copyright Office. This section also prescribes the rules under which a
rights owner of a pre-1972 sound recording identified in a notice of
noncommercial use may file an opt-out notice opposing a proposed use of
the sound recording, pursuant to 17 U.S.C. 1401(c)(1)(C).
(b) Definitions. For purposes of this section:
(1) Unless otherwise specified, the terms used have the meanings set
forth in 17 U.S.C. 1401.
(2) A pre-1972 sound recording is a sound recording fixed before
February 15, 1972. A post-1972 remastered version of a pre-1972 sound
recording that consists of mechanical contributions or contributions
that are too minimal to be copyrightable qualifies as a pre-1972 sound
recording for purposes of this section.
(3) For pre-1972 sound recordings of classical music, including
opera:
(i) The title of the pre-1972 sound recording means, to the extent
applicable and known by the user, any and all title(s) of the sound
recording and underlying musical composition known to the user, and the
composer and opus or catalogue number(s) of the underlying musical
composition; and
(ii) The featured artist(s) of the pre-1972 sound recording means,
to the extent applicable and known by the user, the featured soloist(s);
featured ensemble(s); featured conductor; and any other featured
performer(s).
(4) An Alaska Native or American Indian tribe is a tribe included in
the U.S. Department of the Interior's list of federally recognized
tribes, as published annually in the Federal Register.
(c) Conducting a good faith, reasonable search. (1) Pursuant to 17
U.S.C. 1401(c)(3)(A), a user desiring to make noncommercial use of a
pre-1972 sound recording should progressively search for the sound
recording in each of the categories below until the user finds the sound
recording. If the user finds the sound recording in a search category,
the user need not search the subsequent search categories. If the user
does not find the pre-1972 sound recording after searching each of the
categories below, her search is sufficient for purposes of the safe
harbor in 17 U.S.C. 1401(c)(4), establishing that she made a good faith,
reasonable search without finding commercial exploitation of the sound
recording by or under the authority of the rights owner. The categories
are:
(i) Searching the Copyright Office's database of indexed schedules
listing right owners' pre-1972 sound recordings (https://
www.copyright.gov/music-modernization/pre1972-soundrecordings/search-
soundrecordings.htmn( �
(ii) Searching at least one major search engine, namely Google,
Yahoo!, or Bing, to determine whether the pre-1972 sound recording is
being offered for sale in download form or as a new (not resale)
physical product, or is available through a streaming service;
[[Page 641]]
(iii) Searching at least one of the following streaming services:
Amazon Music Unlimited, Apple Music, Spotify, or TIDAL;
(iv) Searching YouTube, to determine whether the pre-1972 sound
recording is offered under license by the sound recording rights owner
(e.g., record label or distribution service);
(v) Searching SoundExchange's repertoire database through the
SoundExchange ISRC lookup tool (https://isrc.soundexchange.com/!/
search);
(vi) Searching at least one major seller of physical product, namely
Amazon.com, and if the pre-1972 sound recording is of classical music or
jazz, searching a smaller online music store that specializes in product
relative to that niche genre, namely: ArkivJazz, ArkivMusic, Classical
Archives, or Presto; in either case, to determine whether the pre-1972
sound recording is being offered for sale in download form or as a new
(not resale) physical product; and
(vii) For pre-1972 ethnographic sound recordings of Alaska Native or
American Indian tribes, searching, if such contact information is known
to the user, by contacting the relevant Alaska Native or American Indian
tribe and the holding institution of the sound recording (such as a
library or archive) to gather information to determine whether the sound
recording is being commercially exploited. If this contact information
is not previously known to the prospective user, the user should use the
information provided by the U.S. Department of the Interior's Bureau of
Indian Affairs' Tribal Leaders directory, which provides contact
information for each federally recognized tribe.
(2) A search under paragraph (c)(1) of this section must include
searching the title of the pre-1972 sound recording and its featured
artist(s). If the user knows any of the following attributes of the
sound recording, and the source being searched has the capability to
search any of these attributes, the search must also include searching:
alternate artist name(s), alternate title(s), album title, and the
International Standard Recording Code (``ISRC''). A user is encouraged,
but not required, to search additional known attributes, such as the
label or version. A user searching using a search engine should draw
reasonable inferences from the search results, including following those
links whose name or accompanying text suggest that commercial
exploitation might be found there, and reading additional pages of
results until two consecutive pages return no such suggestive links. A
user need not read every web page returned in a search result.
(3) A search under paragraph (c)(1) of this section must be
conducted no later than 90 days of the user (or her authorized agent)
filing a notice of noncommercial use under paragraph (d)(1) of this
section to be sufficient for purposes of the safe harbor in 17 U.S.C.
1401(c)(4).
(4) For purposes of the safe harbor in 17 U.S.C. 1401(c)(4), a user
cannot rely on:
(i) A search conducted under paragraph (c)(1) of this section by a
third party who is not the user's authorized agent; or
(ii) A notice of noncommercial use filed under paragraph (d)(1) of
this section by a third party (who is not the user's authorized agent).
(5) A user is encouraged to save documentation (e.g., screenshots,
list of search terms) of her search under paragraph (c)(1) of this
section for at least three years in case her search is challenged.
(d) Notices of noncommercial use--(1) Form and submission. A user
seeking to comply with 17 U.S.C. 1401(c)(1) (or her authorized agent)
must submit a notice of noncommercial use identifying the pre-1972 sound
recording that the user intends to use and the nature of such use using
an appropriate form and instructions provided by the Copyright Office on
its website. The Office may reject any submission that fails to comply
with the requirements of this section.
(2) Content. A notice of noncommercial use shall contain the
following:
(i) The user's full legal name, and whether the user is an
individual person or corporate entity, including whether the entity is a
tax-exempt organization as defined under the Internal Revenue Code.
Additional contact
[[Page 642]]
information, including an email address, may be optionally provided.
(ii) The title and featured artist(s) of the pre-1972 sound
recording desiring to be used.
(iii) If any are known to the user, the current or last-known rights
owner (e.g., record label), alternate artist name(s), alternate
title(s), album title, and International Standard Recording Code
(``ISRC'').
(iv) The user may include additional optional information about the
pre-1972 sound recording as permitted by the Office's form or
instructions, such as the year of release.
(v) A description of the proposed noncommercial use, including a
summary of the project and its purpose, how the pre-1972 sound recording
will be used in the project, the start and end dates of the use, and
where the proposed use will occur (i.e., the U.S.-based territory of the
use). The user may include additional optional information detailing the
proposed use, such as the tentative title of the project, the playing
time of the pre-1972 sound recording to be used as well as total playing
time of the project, a description of corresponding visuals in the case
of audiovisual uses, and whether and how the user will credit the sound
recording title, featured artist, and/or rights owner in connection with
the project.
(vi) A certification that the user searched but did not find the
pre-1972 sound recording in a search conducted under paragraph (c) of
this section, or else conducted a good faith, reasonable search for, but
did not find, the sound recording in the Copyright Office's database of
indexed schedules listing right owners' pre-1972 sound recordings, or on
services offering a comprehensive set of sound recordings for sale or
streaming.
(vii) A certification that the individual submitting the notice of
noncommercial use has appropriate authority to submit the notice, that
the user desiring to make noncommercial use of the pre-1972 sound
recording (or the user's authorized agent) conducted a search under
paragraph (c) of this section or else conducted a good faith, reasonable
search under 17 U.S.C. 1401(c)(4), within the last 90 days without
finding commercial exploitation of the sound recording, and that all
information submitted to the Office is true, accurate, and complete to
the best of the individual's knowledge, information, and belief, and is
made in good faith.
(3) Noncommercial use of a pre-1972 recording under this section is
limited to use within the United States.
(4) A notice of noncommercial use may not include proposed use for
more than one pre-1972 sound recording unless all of the sound
recordings include the same featured artist(s) and were released on the
same pre-1972 album or other unit of publication. In the case of
``greatest hits'' or compilation albums, all of the sound recordings
listed on a notice must also share the same record label or other rights
owner information, as listed on the notice.
(5) The Copyright Office will assign each indexed notice of
noncommercial use a unique identifier to identify the notice in the
Office's public records.
(6) Legal sufficiency. (i) The Copyright Office does not review
notices of noncommercial use submitted under paragraph (d)(1) of this
section for legal sufficiency. The Office's review is limited to whether
the procedural requirements established by the Office (including payment
of the proper filing fee) have been met. The fact that the Office has
indexed a notice is not a determination by the Office of the notice's
validity or legal effect. Indexing by the Copyright Office is without
prejudice to any party claiming that the legal or formal requirements
for making a noncommercial use of a pre-1972 sound recording have not
been met, including before a court of competent jurisdiction. Users are
therefore cautioned to review and scrutinize notices of noncommercial
use to assure their legal sufficiency before submitting them to the
Office.
(ii) If a rights owner does not file an opt-out notice under
paragraph (e) of this section, when the term of use specified in the
notice of noncommercial use ends, the user must cease noncommercial use
of the pre-1972 sound recording for purposes of remaining in the safe
harbor in 17 U.S.C. 1401(c)(4). Should the user desire to requalify for
the safe harbor with respect to that same recording, the user must
conduct
[[Page 643]]
a new search and file a new notice of noncommercial use under paragraphs
(c) and (d) of this section, respectively.
(7) Filing date. The date of filing of a notice of noncommercial use
is the date when a proper submission, including the prescribed fee, is
received in the Copyright Office. The filing date may not necessarily be
the same date that the notice, for purposes of 17 U.S.C. 1401(c)(1)(C),
is indexed into the Office's public records.
(8) Fees. The filing fee to submit a notice of noncommercial use
pursuant to this section is prescribed in Sec.201.3(c).
(9) Third-party notification. A person may request timely
notification of filings made under paragraph (d)(1) of this section by
following the instructions provided by the Copyright Office on its
website.
(e) Opt-out notices--(1) Form and submission. A rights owner seeking
to comply with 17 U.S.C. 1401(c)(1)(C) (or her authorized agent) must
file a notice opting out of a proposed noncommercial use of a pre-1972
sound recording filed under paragraph (d)(1) of this section using an
appropriate form provided by the Copyright Office on its website and
following the instructions for completion and submission provided on the
Office's website or the form itself. The Office may reject any
submission that fails to comply with the requirements of this section,
or any relevant instructions or guidance provided by the Office.
(2) Content. An opt-out notice use shall contain the following:
(i) The user's name, rights owner's name, sound recording title,
featured artist(s), an affirmative ``yes'' statement that the rights
owner is opting out of the proposed use, and the unique identifier
assigned to the notice of noncommercial use by the Copyright Office.
Additional contact information for the rights owner, including an email
address, may be optionally provided.
(ii) A certification that the individual submitting the opt-out
notice has appropriate authority to submit the notice and that all
information submitted to the Office is true, accurate, and complete to
the best of the individual's knowledge, information, and belief, and is
made in good faith.
(iii) Submission of an opt-out notice does not constitute agreement
by the rights owner or the individual submitting the opt-out notice that
the proposed use is in fact noncommercial. The submitter may choose to
comment upon whether the rights owner agrees that the proposed use is
noncommercial use, but failure to do so does not constitute agreement
that the proposed use is in fact noncommercial.
(3) Where a pre-1972 sound recording has multiple rights owners,
only one rights owner must file an opt-out notice for purposes of 17
U.S.C. 1401(c)(5).
(4) If a rights owner files a timely opt-out notice under paragraph
(e)(1) of this section, a user must wait one year before filing another
notice of noncommercial use proposing the same or similar use of the
same pre-1972 sound recording(s).
(5) Legal sufficiency. The Copyright Office does not review opt-out
notices submitted under paragraph (e)(1) of this section for legal
sufficiency. The Office's review is limited to whether the procedural
requirements established by the Office (including payment of the proper
filing fee) have been met. Rights owners are therefore cautioned to
review and scrutinize opt-out notices to assure their legal sufficiency
before submitting them to the Office.
(6) Filing date. The date of filing of an opt-out notice is the date
when a proper submission, including the prescribed fee, is received in
the Copyright Office.
(7) Fee. The filing fee to submit an opt-out notice pursuant to this
section is prescribed in Sec.201.3(c).
(f) Fraudulent filings. If the Register becomes aware of abuse or
fraudulent filings under this section by or from a certain filer or
user, she shall have the discretion to impose civil penalties up to
$1,000 per instance of fraud or abuse, and/or other penalties to deter
additional false or fraudulent filings from that filer, including
potentially rejecting future submissions from that filer for up to one
year.
[84 FR 14255, Apr. 9, 2019]
Sec.201.38 Designation of agent to receive notification of claimed
infringement.
(a) General. This section prescribes the rules pursuant to which
service
[[Page 644]]
providers may designate agents to receive notifications of claimed
infringement pursuant to section 512 of title 17 of the United States
Code. Any service provider seeking to comply with section 512(c)(2) of
the statute must:
(1) Designate an agent by making available through its service,
including on its website in a location accessible to the public, and by
providing to the Copyright Office, the service provider and designated
agent information required by paragraph (b) of this section;
(2) Maintain the currency and accuracy of the information required
by paragraph (b) both on its website and with the Office by timely
updating such information when it has changed; and
(3) Comply with the electronic registration requirements in
paragraph (c) to designate an agent with the Office.
(b) Information required to designate an agent. To designate an
agent, a service provider must make available through its service,
including on its website in a location accessible to the public, and
provide to the Copyright Office in accordance with paragraph (c) of this
section, the following information:
(1)(i) The full legal name and physical street address of the
service provider. Related or affiliated service providers that are
separate legal entities (e.g., corporate parents and subsidiaries) are
considered separate service providers, and each must have its own
separate designation.
(ii) A post office box may not be substituted for the street address
for the service provider, except in exceptional circumstances (e.g.,
where there is a demonstrable threat to an individual's personal safety
or security, such that it may be dangerous to publicly publish a street
address where such individual can be located) and, upon written request
by the service provider, the Register of Copyrights determines that the
circumstances warrant a waiver of this requirement. To obtain a waiver,
the service provider must make a written request submitted either by
email, to [email protected], or by signed letter, addressed to
the ``U.S. Copyright Office, Office of the General Counsel'' and sent to
the address for time-sensitive requests set forth in Sec.201.1(c)(1).
Requests must contain the following information: The name of the service
provider; the post office box address that the service provider wishes
to use; a detailed statement providing the reasons supporting the
request, with explanation of the specific threat(s) to an individual's
personal safety or security; and an email address for any responsive
correspondence from the Office. There is no fee associated with making
this request. If the request is approved, the service provider may
display the post office box address on its website and will receive
instructions from the Office as to how to complete the Office's
electronic registration process.
(2) All alternate names that the public would be likely to use to
search for the service provider's designated agent in the Copyright
Office's online directory of designated agents, including all names
under which the service provider is doing business, website names and
addresses (i.e., URLs), software application names, and other commonly
used names. Separate legal entities are not considered alternate names.
(3) The name of the agent designated to receive notifications of
claimed infringement and, if applicable, the name of the agent's
organization. The designated agent may be an individual (e.g., ``Jane
Doe''), a specific position or title held by an individual (e.g.,
``Copyright Manager''), a specific department within the service
provider's organization or within a third-party entity (e.g.,
``Copyright Compliance Department''), or a third-party entity generally
(e.g., ``ACME Takedown Service''). Only a single agent may be designated
for each service provider.
(4) The physical mail address (street address or post office box),
telephone number, and email address of the agent designated to receive
notifications of claimed infringement.
(c) Electronic registration with the Copyright Office. Service
providers designating an agent with the Copyright Office must do so
electronically by establishing an account with and then utilizing the
applicable online registration system made available through the
Copyright Office's website. Designations, amendments, and resubmissions
submitted to the Office in paper or any other form will not be accepted.
[[Page 645]]
All electronic registrations must adhere to the following requirements:
(1) Registration information. All required fields in the online
registration system must be completed in order for the designation to be
registered with the Copyright Office. In addition to the information
required by paragraph (b) of this section, the person designating the
agent with the Office must provide the following for administrative
purposes, and which will not be displayed in the Office's public
directory and need not be displayed by the service provider on its
website:
(i) The first name, last name, telephone number, and email address
of a representative of the service provider who will serve as the
primary point of contact for communications with the Office.
(ii) A telephone number and email address for the service provider
for communications with the Office.
(2) Attestation. For each designation and any subsequent amendment
or resubmission of such designation, the person designating the agent,
or amending or resubmitting such designation, must attest that:
(i) The information provided to the Office is true, accurate, and
complete to the best of his or her knowledge; and
(ii) He or she has been given authority to make the designation,
amendment, or resubmission on behalf of the service provider.
(3) Amendment. All service providers must ensure the currency and
accuracy of the information contained in designations submitted to the
Office by timely updating information when it has changed. A service
provider may amend a designation previously registered with the Office
at any time to correct or update information.
(4) Periodic renewal. A service provider's designation will expire
and become invalid three years after it is registered with the Office,
unless the service provider renews such designation by either amending
it to correct or update information or resubmitting it without
amendment. Either amending or resubmitting a designation, as
appropriate, begins a new three-year period before such designation must
be renewed.
(d) Fees. The Copyright Office's general fee schedule, located at
section 201.3 of title 37 of the Code of Federal Regulations, sets forth
the applicable fee for a service provider to designate an agent with the
Copyright Office to receive notifications of claimed infringement and to
amend or resubmit such a designation.
(e) Transitional provisions. (1) As of December 1, 2016, any
designation of an agent pursuant to 17 U.S.C. 512(c)(2) must be made
electronically through the Copyright Office's online registration
system.
(2) A service provider that has designated an agent with the Office
under the previous version of this section, which was effective between
November 3, 1998 and November 30, 2016, and desires to remain in
compliance with section 512(c)(2) of title 17, United States Code, must
submit a new designation electronically using the online registration
system by December 31, 2017. Any designation not made through the online
registration system will expire and become invalid after December 31,
2017.
(3) During the period beginning with the effective date of this
section, December 1, 2016, through December 31, 2017 (the ``transition
period''), the Copyright Office will maintain two directories of
designated agents: the directory consisting of paper designations made
pursuant to the prior interim regulations (the ``old directory''), and
the directory consisting of designations made electronically through the
online registration system (the ``new directory''). During the
transition period, a compliant designation in either the old directory
or the new directory will satisfy the service provider's obligation
under section 512(c)(2) of title 17, United States Code to designate an
agent with the Copyright Office.
[81 FR 75707, Nov. 1, 2016, as amended at 82 FR 9358, Feb. 6, 2017; 82
FR 21697, May 10, 2017; 85 FR 11295, Feb. 27, 2020]
Sec.201.39 Notice to Libraries and Archives of Normal Commercial
Exploitation or Availability at Reasonable Price.
(a) General. This section prescribes rules under which copyright
owners or
[[Page 646]]
their agents may provide notice to qualified libraries and archives
(including a nonprofit educational institution that functions as such)
that a published work in its last 20 years of copyright protection is
subject to normal commercial exploitation, or that a copy or phonorecord
of the work can be obtained at a reasonable price, for purposes of
section 108(h)(2) of title 17 of the United States Code.
(b) Format. The Copyright Office provides a required format for a
Notice to Libraries and Archives of Normal Commercial Exploitation or
Availability at Reasonable Price, and for continuation sheets for group
notices. The required format is set out in Appendix A to this section,
and is available from the Copyright Office website (http://lcweb.loc.gov
/copyright). The Copyright Office does not provide printed forms. The
Notice shall be in English (except for an original title, which may be
in another language), typed or printed legibly in dark ink, and shall be
provided on 8\1/2\ x 11 inch white paper with a one-inch margin.
(c) Required content. A ``Notice to Libraries and Archives of Normal
Commercial Exploitation or Availability at Reasonable Price'' shall be
identified as such by prominent caption or heading, and shall include
the following:
(1) The acronym NLA in capital, and preferably bold, letters in the
top right-hand corner of the page;
(2) A check-box just below the acronym NLA indicating whether
continuation sheets for additional works are attached;
(3) The title of the work, or if untitled, a brief description of
the work;
(4) The author(s) of the work;
(5) The type of work (e.g., music, motion picture, book, photograph,
illustration, map, article in a periodical, painting, sculpture, sound
recording, etc.);
(6) The edition, if any (e.g., first edition, second edition,
teacher's edition) or version, if any (e.g., orchestral arrangement,
translation, French version). If there is no information relating to the
edition or version of the work, the notice should so state;
(7) The year of first publication;
(8) The year the work first secured federal copyright through
publication with notice or registration as an unpublished work;
(9) The copyright renewal registration number (except this
information is not required for foreign works in which copyright is
restored pursuant to 17 U.S.C. 104A);
(10) The name of the copyright owner (or the owner of exclusive
rights);
(11) If the copyright owner is not the owner of all rights, a
specification of the rights owned (e.g., the right to reproduce/
distribute/publicly display/publicly perform the work or to prepare a
derivative work);
(12) The name, address, telephone number, fax number (if any) and e-
mail address (if any) of the person or entity that the Copyright Office
should contact concerning the Notice;
(13) The full legal name, address, telephone number, fax number (if
any) and e-mail address (if any) of the person or entity that Libraries
and Archives may contact concerning the work's normal commercial
exploitation or availability at reasonable price; and
(14) A declaration made under penalty of perjury that the work
identified is subject to normal commercial exploitation, or that a copy
or phonorecord of the work is available at a reasonable price.
(d) Additional content. A Notice to Libraries and Archives of Normal
Commercial Exploitation or Availability at Reasonable Price may include
the following:
(1) The original copyright registration number of the work; and
(2) Additional information concerning the work's normal commercial
exploitation or availability at a reasonable price.
(e) Signature. The Notice to Libraries and Archives of Normal
Commercial Exploitation or Availability at Reasonable Price shall
include the signature of the copyright owner or its agent. The signature
shall be accompanied by the printed or typewritten name and title of the
person signing the Notice, and by the date of signature.
(f) Multiple works. A Notice to Libraries and Archives may be filed
for more than one work. The first work shall be identified using the
format required for all Notices to Libraries and Archives.
[[Page 647]]
Each additional work in the group must be identified on a separate
continuation sheet. The required format for the continuation sheet is
set out in Appendix B to this section, and is available from the
Copyright Office website (http://lcweb.loc.gov/ copyright). A group
filing is permitted provided that:
(1) All the works are by the same author;
(2) All the works are owned by the same copyright owner or owner of
the exclusive rights therein. If the claimant is not owner of all
rights, the claimant must own the same rights with respect to all works
in the group;
(3) All the works first secured federal copyright in the same year,
through either publication with notice or registration as unpublished
works;
(4) All the works were first published in the same year;
(5) The person or entity that the Copyright Office should contact
concerning the Notice is the same for all the works; and
(6) The person or entity that Libraries and Archives may contact
concerning the work's normal commercial exploitation or availability at
reasonable price is the same for all the works.
(g) Filing--(1) Method of filing. The Notice to Libraries and
Archives of Normal Commercial Exploitation or Availability at Reasonable
Price should be addressed to NLA, in the manner prescribed in Sec.
201.1.
(2) Amount. The filing fee for recording Notice to Libraries and
Archives is prescribed in Sec.201.3(d).
(3) Method of payment--(i) Checks, money orders, or bank drafts. The
Copyright Office will accept checks, money orders, or bank drafts made
payable to the U.S. Copyright Office. Remittances must be redeemable
without service or exchange fees through a United States institution,
must be payable in United States dollars, and must be imprinted with
American Banking Association routing numbers. Postal money orders that
are negotiable only at a post office and international money orders are
not acceptable. CURRENCY IS NOT ACCEPTED.
(ii) Copyright Office Deposit Account. The Copyright Office
maintains a system of Deposit Accounts for the convenience of those who
frequently use its services. The system allows an individual or firm to
establish a Deposit Account in the Copyright Office and to make advance
deposits into that account. Deposit Account holders can charge copyright
fees against the balance in their accounts instead of sending separate
remittances with each request for service. For information on Deposit
Accounts, see Circular 5 on the Copyright Office's website, or request a
copy at the address specified in Sec.201.1(b).
Appendix A to Sec.201.39--Required Format of Notice to Libraries and
Archives of Normal Commercial Exploitation or Availability at Reasonable
Price
NLA
[squ] Check box if continuation sheets for additional works are
attached.
Notice to Libraries and Archives of Normal Commercial Exploitation or
Availability at Reasonable Price
1. Title of the work (or, if untitled, a brief description of the
work): ____________________.
2. Author(s) of the work: ____________________.
3. Type of work (e.g. music, motion picture, book, photograph,
illustration, map, article in a periodical, painting, sculpture, sound
recording, etc.): ____________________.
4. Edition, if any (e.g., first edition, second edition, teacher's
edition) or version, if any (e.g., orchestral arrangement, English
translation of French text). If there is no information available
relating to the edition or version of the work, the Notice should state,
``No information available'': ____________________.
5. Year of first publication: __________.
6. Year the work first secured federal copyright through publication
with notice or registration as an unpublished work: __________.
7. Copyright renewal registration number (not required for foreign
works restored under 17 U.S.C. 104A): __________.
8. Full legal name of the copyright owner (or the owner of exclusive
rights): __________.
9. The person or entity identified in space 8 owns:
[squ] all rights.
[squ] the following rights (e.g., the right to reproduce/distribute/
publicly display/publicly perform the work or to prepare a
derivative work): __________.
10. Person or entity that the Copyright Office should contact
concerning the Notice:
[squ] Name:_____________________________________________________________
[squ] Address:__________________________________________________________
[squ] Telephone:________________________________________________________
[squ] Fax number (if any):______________________________________________
[squ] E-mail address (if any):__________________________________________
[[Page 648]]
11. Person or entity that libraries and archives may contact
concerning the work's normal commercial exploitation or availability at
a reasonable price:
[squ] Name:_____________________________________________________________
[squ] Address:__________________________________________________________
[squ] Telephone:________________________________________________________
[squ] Fax number (if any):______________________________________________
[squ] E-mail address (if any):__________________________________________
Additional Content (OPTIONAN( �
12. Original copyright registration number: ____________________
13. Additional information concerning the work's normal commercial
exploitation or availability at a reasonable price: ____________________
Declaration:
I declare under penalty of perjury under the laws of the United
States:
[squ] that each work identified in this notice is subject to normal
commercial exploitation.
[squ] that a copy or phonorecord of each work identified in this notice
is available at a reasonable price.
Signature:______________________________________________________________
Date:___________________________________________________________________
[squ] Typed or printed name:____________________________________________
[squ] Title:____________________________________________________________
Appendix B to Sec.201.39--Required Format for Continuation Sheet
NLA CON
Page ____of ____Pages.
Continuation Sheet for NLA Notice to Libraries and Archives of Normal
Commercial Exploitation or Availability at Reasonable Price
1. Title of the work (or, if untitled, a brief description of the
work): ____________________.
2. Type of work (e.g. music, motion picture, book, photograph,
illustration, map, article in a periodical, painting, sculpture, sound
recording, etc.): ____________________.
3. Edition, if any (e.g., first edition, second edition, teacher's
edition) or version, if any (e.g., orchestral arrangement, English
translation of French text). If there is no information available
relating to the edition or version of the work, the Notice should state,
``No information available'': ____________________.
4. Copyright renewal registration number (not required for foreign
works restored under 17 U.S.C. 104A): ____________________.
Additional Content (OPTIONAN( �
5. Original copyright registration number: ____________________.
6. Additional information concerning the work's normal commercial
exploitation or availability at a reasonable price:
____________________.
[63 FR 71787, Dec. 30, 1998, as amended at 66 FR 34373, June 28, 2001;
71 FR 31092, June 1, 2006; 73 FR 37839, July 2, 2008; 78 FR 42874, July
18, 2013; 82 FR 9359, Feb. 6, 2017; 85 FR 19667, Apr. 8, 2020]
Sec.201.40 Exemptions to prohibition against circumvention.
(a) General. This section prescribes the classes of copyrighted
works for which the Librarian of Congress has determined, pursuant to 17
U.S.C. 1201(a)(1)(C) and (D), that noninfringing uses by persons who are
users of such works are, or are likely to be, adversely affected. The
prohibition against circumvention of technological measures that control
access to copyrighted works set forth in 17 U.S.C. 1201(a)(1)(A) shall
not apply to such users of the prescribed classes of copyrighted works.
(b) Classes of copyrighted works. Pursuant to the authority set
forth in 17 U.S.C. 1201(a)(1)(C) and (D), and upon the recommendation of
the Register of Copyrights, the Librarian has determined that the
prohibition against circumvention of technological measures that
effectively control access to copyrighted works set forth in 17 U.S.C.
1201(a)(1)(A) shall not apply to persons who engage in noninfringing
uses of the following classes of copyrighted works:
(1) Motion pictures (including television shows and videos), as
defined in 17 U.S.C. 101, where the motion picture is lawfully made and
acquired on a DVD protected by the Content Scramble System, on a Blu-ray
disc protected by the Advanced Access Content System, or via a digital
transmission protected by a technological measure, and the person
engaging in circumvention under paragraph (b)(1)(i) and (b)(1)(ii)(A)
and (B) of this section reasonably believes that non-circumventing
alternatives are unable to produce the required level of high-quality
content, or the circumvention is undertaken using screen-capture
technology that appears to be offered to the public as enabling the
reproduction of motion pictures after content has been lawfully acquired
and decrypted, where circumvention is undertaken solely in order to make
use of short portions of
[[Page 649]]
the motion pictures in the following instances:
(i) For the purpose of criticism or comment:
(A) For use in documentary filmmaking, or other films where the
motion picture clip is used in parody or for its biographical or
historically significant nature;
(B) For use in noncommercial videos (including videos produced for a
paid commission if the commissioning entity's use is noncommercian( � or
(C) For use in nonfiction multimedia e-books.
(ii) For educational purposes:
(A) By college and university faculty and students or kindergarten
through twelfth-grade (K-12) educators and students (where the K-12
student is circumventing under the direct supervision of an educator),
including of accredited general educational development (GED) programs,
for the purpose of criticism, comment, teaching, or scholarship;
(B) By faculty of massive open online courses (MOOCs) offered by
accredited nonprofit educational institutions to officially enrolled
students through online platforms (which platforms themselves may be
operated for profit), in film studies or other courses requiring close
analysis of film and media excerpts, for the purpose of criticism or
comment, where the MOOC provider through the online platform limits
transmissions to the extent technologically feasible to such officially
enrolled students, institutes copyright policies and provides copyright
informational materials to faculty, students, and relevant staff
members, and applies technological measures that reasonably prevent
unauthorized further dissemination of a work in accessible form to
others or retention of the work for longer than the course session by
recipients of a transmission through the platform, as contemplated by 17
U.S.C. 110(2); or
(C) By educators and participants in nonprofit digital and media
literacy programs offered by libraries, museums, and other nonprofit
entities with an educational mission, in the course of face-to-face
instructional activities, for the purpose of criticism or comment,
except that such users may only circumvent using screen-capture
technology that appears to be offered to the public as enabling the
reproduction of motion pictures after content has been lawfully acquired
and decrypted.
(2)(i) Motion pictures (including television shows and videos), as
defined in 17 U.S.C. 101, where the motion picture is lawfully acquired
on a DVD protected by the Content Scramble System, on a Blu-ray disc
protected by the Advanced Access Content System, or via a digital
transmission protected by a technological measure, where:
(A) Circumvention is undertaken by a disability services office or
other unit of a kindergarten through twelfth-grade educational
institution, college, or university engaged in and/or responsible for
the provision of accessibility services to students, for the purpose of
adding captions and/or audio description to a motion picture to create
an accessible version as a necessary accommodation for a student or
students with disabilities under an applicable disability law, such as
the Americans With Disabilities Act, the Individuals with Disabilities
Education Act, or Section 504 of the Rehabilitation Act;
(B) The educational institution unit in paragraph (b)(2)(i)(A) of
this section has, after a reasonable effort, determined that an
accessible version cannot be obtained at a fair price or in a timely
manner; and
(C) The accessible versions are provided to students or educators
and stored by the educational institution in a manner intended to
reasonably prevent unauthorized further dissemination of a work.
(ii) For purposes of this paragraph (b)(2), ``audio description''
means an oral narration that provides an accurate rendering of the
motion picture.
(3) Literary works, distributed electronically, that are protected
by technological measures that either prevent the enabling of read-aloud
functionality or interfere with screen readers or other applications or
assistive technologies:
(i) When a copy of such a work is lawfully obtained by a blind or
other person with a disability, as such a person is defined in 17 U.S.C.
121; provided, however, that the rights owner is remunerated, as
appropriate, for the
[[Page 650]]
price of the mainstream copy of the work as made available to the
general public through customary channels; or
(ii) When such work is a nondramatic literary work, lawfully
obtained and used by an authorized entity pursuant to 17 U.S.C. 121.
(4) Literary works consisting of compilations of data generated by
medical devices that are wholly or partially implanted in the body or by
their corresponding personal monitoring systems, where such
circumvention is undertaken by a patient for the sole purpose of
lawfully accessing the data generated by his or her own device or
monitoring system and does not constitute a violation of applicable law,
including without limitation the Health Insurance Portability and
Accountability Act of 1996, the Computer Fraud and Abuse Act of 1986 or
regulations of the Food and Drug Administration, and is accomplished
through the passive monitoring of wireless transmissions that are
already being produced by such device or monitoring system.
(5) Computer programs that enable the following types of lawfully
acquired wireless devices to connect to a wireless telecommunications
network, when circumvention is undertaken solely in order to connect to
a wireless telecommunications network and such connection is authorized
by the operator of such network:
(i) Wireless telephone handsets (i.e., cellphones);
(ii) All-purpose tablet computers;
(iii) Portable mobile connectivity devices, such as mobile hotspots,
removable wireless broadband modems, and similar devices; and
(iv) Wearable wireless devices designed to be worn on the body, such
as smartwatches or fitness devices.
(6) Computer programs that enable smartphones and portable all-
purpose mobile computing devices to execute lawfully obtained software
applications, where circumvention is accomplished for the sole purpose
of enabling interoperability of such applications with computer programs
on the smartphone or device, or to permit removal of software from the
smartphone or device. For purposes of this paragraph (b)(6), a
``portable all-purpose mobile computing device'' is a device that is
primarily designed to run a wide variety of programs rather than for
consumption of a particular type of media content, is equipped with an
operating system primarily designed for mobile use, and is intended to
be carried or worn by an individual.
(7) Computer programs that enable smart televisions to execute
lawfully obtained software applications, where circumvention is
accomplished for the sole purpose of enabling interoperability of such
applications with computer programs on the smart television.
(8) Computer programs that enable voice assistant devices to execute
lawfully obtained software applications, where circumvention is
accomplished for the sole purpose of enabling interoperability of such
applications with computer programs on the device, or to permit removal
of software from the device, and is not accomplished for the purpose of
gaining unauthorized access to other copyrighted works. For purposes of
this paragraph (b)(8), a ``voice assistant device'' is a device that is
primarily designed to run a wide variety of programs rather than for
consumption of a particular type of media content, is designed to take
user input primarily by voice, and is designed to be installed in a home
or office.
(9) Computer programs that are contained in and control the
functioning of a lawfully acquired motorized land vehicle such as a
personal automobile, commercial vehicle, or mechanized agricultural
vehicle, except for programs accessed through a separate subscription
service, when circumvention is a necessary step to allow the diagnosis,
repair, or lawful modification of a vehicle function, where such
circumvention does not constitute a violation of applicable law,
including without limitation regulations promulgated by the Department
of Transportation or the Environmental Protection Agency, and is not
accomplished for the purpose of gaining unauthorized access to other
copyrighted works.
(10) Computer programs that are contained in and control the
functioning of a lawfully acquired smartphone or home appliance or home
system, such as a refrigerator, thermostat, HVAC, or electrical system,
when circumvention
[[Page 651]]
is a necessary step to allow the diagnosis, maintenance, or repair of
such a device or system, and is not accomplished for the purpose of
gaining access to other copyrighted works. For purposes of this
paragraph (b)(10):
(i) The ``maintenance'' of a device or system is the servicing of
the device or system in order to make it work in accordance with its
original specifications and any changes to those specifications
authorized for that device or system; and
(ii) The ``repair'' of a device or system is the restoring of the
device or system to the state of working in accordance with its original
specifications and any changes to those specifications authorized for
that device or system.
(11)(i) Computer programs, where the circumvention is undertaken on
a lawfully acquired device or machine on which the computer program
operates, or is undertaken on a computer, computer system, or computer
network on which the computer program operates with the authorization of
the owner or operator of such computer, computer system, or computer
network, solely for the purpose of good-faith security research and does
not violate any applicable law, including without limitation the
Computer Fraud and Abuse Act of 1986.
(ii) For purposes of this paragraph (b)(11), ``good-faith security
research'' means accessing a computer program solely for purposes of
good-faith testing, investigation, and/or correction of a security flaw
or vulnerability, where such activity is carried out in an environment
designed to avoid any harm to individuals or the public, and where the
information derived from the activity is used primarily to promote the
security or safety of the class of devices or machines on which the
computer program operates, or those who use such devices or machines,
and is not used or maintained in a manner that facilitates copyright
infringement.
(12)(i) Video games in the form of computer programs embodied in
physical or downloaded formats that have been lawfully acquired as
complete games, when the copyright owner or its authorized
representative has ceased to provide access to an external computer
server necessary to facilitate an authentication process to enable
gameplay, solely for the purpose of:
(A) Permitting access to the video game to allow copying and
modification of the computer program to restore access to the game for
personal, local gameplay on a personal computer or video game console;
or
(B) Permitting access to the video game to allow copying and
modification of the computer program to restore access to the game on a
personal computer or video game console when necessary to allow
preservation of the game in a playable form by an eligible library,
archives, or museum, where such activities are carried out without any
purpose of direct or indirect commercial advantage and the video game is
not distributed or made available outside of the physical premises of
the eligible library, archives, or museum.
(ii) Video games in the form of computer programs embodied in
physical or downloaded formats that have been lawfully acquired as
complete games, that do not require access to an external computer
server for gameplay, and that are no longer reasonably available in the
commercial marketplace, solely for the purpose of preservation of the
game in a playable form by an eligible library, archives, or museum,
where such activities are carried out without any purpose of direct or
indirect commercial advantage and the video game is not distributed or
made available outside of the physical premises of the eligible library,
archives, or museum.
(iii) Computer programs used to operate video game consoles solely
to the extent necessary for an eligible library, archives, or museum to
engage in the preservation activities described in paragraph
(b)(12)(i)(B) or (b)(12)(ii) of this section.
(iv) For purposes of this paragraph (b)(12), the following
definitions shall apply:
(A) For purposes of paragraph (b)(12)(i)(A) and (b)(12)(ii) of this
section, ``complete games'' means video games that can be played by
users without accessing or reproducing copyrightable content stored or
previously stored on an external computer server.
(B) For purposes of paragraph (b)(12)(i)(B) of this section,
``complete
[[Page 652]]
games'' means video games that meet the definition in paragraph
(b)(12)(iv)(A) of this section, or that consist of both a copy of a game
intended for a personal computer or video game console and a copy of the
game's code that was stored or previously stored on an external computer
server.
(C) ``Ceased to provide access'' means that the copyright owner or
its authorized representative has either issued an affirmative statement
indicating that external server support for the video game has ended and
such support is in fact no longer available or, alternatively, server
support has been discontinued for a period of at least six months;
provided, however, that server support has not since been restored.
(D) ``Local gameplay'' means gameplay conducted on a personal
computer or video game console, or locally connected personal computers
or consoles, and not through an online service or facility.
(E) A library, archives, or museum is considered ``eligible'' when
the collections of the library, archives, or museum are open to the
public and/or are routinely made available to researchers who are not
affiliated with the library, archives, or museum.
(13)(i) Computer programs, except video games, that have been
lawfully acquired and that are no longer reasonably available in the
commercial marketplace, solely for the purpose of lawful preservation of
a computer program, or of digital materials dependent upon a computer
program as a condition of access, by an eligible library, archives, or
museum, where such activities are carried out without any purpose of
direct or indirect commercial advantage and the program is not
distributed or made available outside of the physical premises of the
eligible library, archives, or museum.
(ii) For purposes of the exemption in paragraph (b)(13)(i) of this
section, a library, archives, or museum is considered ``eligible'' if--
(A) The collections of the library, archives, or museum are open to
the public and/or are routinely made available to researchers who are
not affiliated with the library, archives, or museum;
(B) The library, archives, or museum has a public service mission;
(C) The library, archives, or museum's trained staff or volunteers
provide professional services normally associated with libraries,
archives, or museums;
(D) The collections of the library, archives, or museum are composed
of lawfully acquired and/or licensed materials; and
(E) The library, archives, or museum implements reasonable digital
security measures as appropriate for the activities permitted by this
paragraph (b)(13).
(14) Computer programs that operate 3D printers that employ
microchip-reliant technological measures to limit the use of feedstock,
when circumvention is accomplished solely for the purpose of using
alternative feedstock and not for the purpose of accessing design
software, design files, or proprietary data.
(c) Persons who may initiate circumvention. To the extent authorized
under paragraph (b) of this section, the circumvention of a
technological measure that restricts wireless telephone handsets or
other wireless devices from connecting to a wireless telecommunications
network may be initiated by the owner of any such handset or other
device, by another person at the direction of the owner, or by a
provider of a commercial mobile radio service or a commercial mobile
data service at the direction of such owner or other person, solely in
order to enable such owner or a family member of such owner to connect
to a wireless telecommunications network, when such connection is
authorized by the operator of such network.
[65 FR 64574, Oct. 27, 2000, as amended at 68 FR 62018, Oct. 31, 2003;
71 FR 68479, Nov. 27, 2006; 74 FR 55139, Oct. 27, 2009; 75 FR 43839,
July 27, 2010; 75 FR 47465, Aug. 6, 2010; 77 FR 65278, Oct. 26, 2012; 79
FR 50553, Aug. 25, 2014; 80 FR 65961, Oct. 28, 2015; 83 FR 54028, Oct.
26, 2018]
PART 202_PREREGISTRATION AND REGISTRATION OF CLAIMS TO COPYRIGHT--
Table of Contents
Sec.
202.1 Material not subject to copyright.
[[Page 653]]
202.2 Copyright notice.
202.3 Registration of copyright.
202.4 Group registration.
202.5 Reconsideration Procedure for Refusals to Register.
202.6 Supplementary registration.
202.7-202.9 [Reserved]
202.10 Pictorial, graphic, and sculptural works.
202.11 Architectural works
202.12 Restored copyrights.
202.13 Secure tests.
202.14-202.15 [Reserved]
202.16 Preregistration of copyrights.
202.17 Renewals.
202.18 Access to electronic works.
202.19 Deposit of published copies or phonorecords for the Library of
Congress.
202.20 Deposit of copies and phonorecords for copyright registration.
202.21 Deposit of identifying material instead of copies.
202.22 Acquisition and deposit of unpublished audio and audiovisual
transmission programs.
202.23 Full-term retention of copyright deposits.
202.24 Deposit of published electronic works available only online.
Appendix A to Part 202--Technical Guidelines Regarding Sound Physical
Condition
Appendix B to Part 202--``Best Edition'' of Published Copyrighted Works
for the Collections of the Library of Congress
Authority: 17 U.S.C. 408(f), 702
Editorial Note: Nomenclature changes to part 202 appear at 76 FR
27898, May 13, 2011.
Sec.202.1 Material not subject to copyright.
The following are examples of works not subject to copyright and
applications for registration of such works cannot be entertained:
(a) Words and short phrases such as names, titles, and slogans;
familiar symbols or designs; mere variations of typographic
ornamentation, lettering or coloring; mere listing of ingredients or
contents;
(b) Ideas, plans, methods, systems, or devices, as distinguished
from the particular manner in which they are expressed or described in a
writing;
(c) Blank forms, such as time cards, graph paper, account books,
diaries, bank checks, scorecards, address books, report forms, order
forms and the like, which are designed for recording information and do
not in themselves convey information;
(d) Works consisting entirely of information that is common property
containing no original authorship, such as, for example: Standard
calendars, height and weight charts, tape measures and rulers, schedules
of sporting events, and lists or tables taken from public documents or
other common sources.
(e) Typeface as typeface.
[24 FR 4956, June 18, 1959, as amended at 38 FR 3045, Feb. 1, 1973; 57
FR 6202, Feb. 21, 1992]
Sec.202.2 Copyright notice.
(a) General. (1) With respect to a work published before January 1,
1978, copyright was secured, or the right to secure it was lost, except
for works seeking ad interim copyright, at the date of publication,
i.e., the date on which copies are first placed on sale, sold, or
publicly distributed, depending upon the adequacy of the notice of
copyright on the work at that time. The adequacy of the copyright notice
for such a work is determined by the copyright statute as it existed on
the date of first publication.
(2) If before January 1, 1978, publication occurred by distribution
of copies or in some other manner, without the statutory notice or with
an inadequate notice, as determined by the copyright statute as it
existed on the date of first publication, the right to secure copyright
was lost. In such cases, copyright cannot be secured by adding the
notice to copies distributed at a later date.
(3) Works first published abroad before January 1, 1978, other than
works for which ad interim copyright has been obtained, must have borne
an adequate copyright notice. The adequacy of the copyright notice for
such works is determined by the copyright statute as it existed on the
date of first publication abroad.
(b) Defects in notice. Where the copyright notice on a work
published before January 1, 1978, does not meet the requirements of
title 17 of the United States Code as it existed on December 31, 1977,
the Copyright Office will reject an application for copyright
registration. Common defects in the notice include, among others the
following:
[[Page 654]]
(1) The notice lacks one or more of the necessary elements (i.e.,
the word ``Copyright,'' the abbreviation ``Copr.'', or the symbol
(copyright), or, in the case of a sound recording, the symbol [copysr] ;
the name of the copyright proprietor, or, in the case of a sound
recording, the name, a recognizable abbreviation of the name, or a
generally known alternative designation, of the copyright owner; and,
when required, the year date of publication);
(2) The elements of the notice are so dispersed that a necessary
element is not identified as a part of the notice; in the case of a
sound recording, however, if the producer is named on the label or
container, and if no other name appears in conjunction with the notice,
the producer's name will be considered a part of the notice;
(3) The notice is not in one of the positions prescribed by law;
(4) The notice is in a foreign language;
(5) The name in the notice is that of someone who had no authority
to secure copyright in that person's name;
(6)(i) The year date in the copyright notice is later than the date
of the year in which copyright was actually secured, including the
following cases:
(A) Where the year date in the notice is later than the date of
actual publication;
(B) Where copyright was first secured by registration of a work in
unpublished form, and copies of the same work as later published without
change in substance bear a copyright notice containing a year date later
than the year of unpublished registration; or
(C) Where a book or periodical published abroad, for which ad
interim copyright has been obtained, is later published in the United
States without change in substance and contains a year date in the
copyright notice later than the year of first publication abroad.
(ii) Provided, however, that in each of the three types of cases
described in paragraphs (b)(6)(i)(A) through (C) of this section, if the
copyright was actually secured not more than one year earlier than the
year date in the notice, registration may be considered as a doubtful
case;
(7) A notice is permanently covered so that it cannot be seen
without tearing the work apart;
(8) A notice is illegible or so small that it cannot be read without
the aid of a magnifying glass: Provided, however, That where the work
itself requires magnification for its ordinary use (e.g., a microfilm,
microcard or motion picture) a notice which will be readable when so
magnified, will not constitute a reason for rejection of the claim;
(9) A notice is on a detachable tag and will eventually be detached
and discarded when the work is put in use;
(10) A notice is on the wrapper or container which is not a part of
the work and which will eventually be removed and discarded when the
work is put to use; the notice may be on a container which is designed
and can be expected to remain with the work; and
(11) The notice is restricted or limited exclusively to an
uncopyrightable element, either by virtue of its position on the work,
by the use of asterisks, or by other means.
(c) Methods of affixation and positions of the copyright notice on
various types of works--(1) General. (i) This paragraph specifies
examples of methods of affixation and positions of the copyright notice
on various types of works that will satisfy the notice requirement of
section 401(c) of title 17 of the United States Code, as amended by
Public Law 94-553. A notice considered ``acceptable'' under this
regulation shall be considered to satisfy the requirement of that
section that it be ``affixed to the copies in such manner and location
as to give reasonable notice of the claim of copyright.'' As provided by
that section, the examples specified in this regulation shall not be
considered exhaustive of methods of affixation and positions giving
reasonable notice of the claim of copyright.
(ii) The provisions of this paragraph are applicable to copies
publicly distributed on or after December 1, 1981. This paragraph does
not establish any rules concerning the form of the notice or the legal
sufficiency of particular notices, except with respect to methods of
affixation and positions of notice. The adequacy or legal sufficiency of
a copyright notice is determined by the
[[Page 655]]
law in effect at the time of first publication of the work.
(2) Definitions. For the purposes of this paragraph:
(i) In the case of a work consisting preponderantly of leaves on
which the work is printed or otherwise reproduced on both sides, a
``page'' is one side of a leaf; where the preponderance of the leaves
are printed on one side only, the terms ``page'' and ``leaf'' mean the
same.
(ii) A work is published in book form if the copies embodying it
consist of multiple leaves bound, fastened, or assembled in a
predetermined order, as, for example, a volume, booklet, pamphlet, or
multipage folder. For the purpose of this paragraph, a work need not
consist of textual matter in order to be considered published in ``book
form.''
(iii) A title page is a page, or two consecutive pages facing each
other, appearing at or near the front of the copies of a work published
in book form, on which the complete title of the work is prominently
stated and on which the names of the author or authors, the name of the
publisher, the place of publication, or some combination of them, are
given.
(iv) The meaning of the terms front, back, first, last, and
following, when used in connection with works published in book form,
will vary in relation to the physical form of the copies, depending upon
the particular language in which the work is written.
(v) In the case of a work published in book form with a hard or soft
cover, the front page and back page of the copies are the outsides of
the front and back covers; where there is no cover, the ``front page,''
and ``back page'' are the pages visible at the front and back of the
copies before they are opened.
(vi) A masthead is a body of information appearing in approximately
the same location in most issues of a newspaper, magazine, journal,
review, or other periodical or serial, typically containing the title of
the periodical or serial, information about the staff, periodicity of
issues, operation, and subscription and editorial policies, of the
publication.
(vii) A single-leaf work is a work published in copies consisting of
a single leaf, including copies on which the work is printed or
otherwise reproduced on either one side or on both sides of the leaf,
and also folders which, without cutting or tearing the copies, can be
opened out to form a single leaf. For the purpose of this paragraph, a
work need not consist of textual matter in order to be considered a
``single-leaf work.''
(viii) A machine-readable copy is a copy from which the work cannot
ordinarily be visually perceived except with the aid of a machine or
device, such as magnetic tapes or disks, punched cards, or the like.
Works published in a form requiring the use of a machine or device for
purposes of optical enlargement (such as film, filmstrips, slide films,
and works published in any variety of microform) and works published in
visually perceptible form but used in connection with optical scanning
devices, are not within this category.
(3) Manner of affixation and position generally. (i) In all cases
dealt with in this paragraph, the acceptability of a notice depends upon
its being permanently legible to an ordinary user of the work under
normal conditions of use, and affixed to the copies in such manner and
position that, when affixed, it is not concealed from view upon
reasonable examination.
(ii) Where, in a particular case, a notice does not appear in one of
the precise locations prescribed in this paragraph but a person looking
in one of those locations would be reasonably certain to find a notice
in another somewhat different location, that notice will be acceptable
under this paragraph.
(4) Works published in book form. In the case of works published in
book form, a notice reproduced on the copies in any of the following
positions is acceptable:
(i) The title page, if any;
(ii) The page immediately following the title page, if any;
(iii) Either side of the front cover, if any; or, if there is no
front cover, either side of the front leaf of the copies;
(iv) Either side of the back cover, if any; or, if there is no back
cover, either side of the back leaf of the copies;
(v) The first page of the main body of the work;
[[Page 656]]
(vi) The last page of the main body of the work;
(vii) Any page between the front page and the first page of the main
body of the work, if:
(A) There are no more than ten pages between the front page and the
first page of the main body of the work; and
(B) The notice is reproduced prominently and is set apart from other
matter on the page where it appears;
(viii) Any page between the last page of the main body of the work
and back page, if:
(A) There are no more than ten pages between the last page of the
main body of the work and the back page; and
(B) The notice is reproduced prominently and is set apart from the
other matter on the page where it appears.
(ix) In the case of a work published as an issue of a periodical or
serial, in addition to any of the locations listed in paragraphs
(c)(4)(i) through (viii) of this section, a notice is acceptable if it
is located:
(A) As a part of, or adjacent to, the masthead;
(B) On the page containing the masthead if the notice is reproduced
prominently and is set apart from the other matter appearing on the
page; or
(C) Adjacent to a prominent heading, appearing at or near the front
of the issue, containing the title of the periodical or serial and any
combination of the volume and issue number and date of the issue.
(x) In the case of a musical work, in addition to any of the
locations listed in paragraphs (c)(4)(i) through (ix) of this section, a
notice is acceptable if it is located on the first page of music.
(5) Single-leaf works. In the case of single-leaf works, a notice
reproduced on the copies anywhere on the front or back of the leaf is
acceptable.
(6) Contributions to collective works. For a separate contribution
to a collective work to be considered to ``bear its own notice of
copyright,'' as provided by 17 U.S.C. 404, a notice reproduced on the
copies in any of the following positions is acceptable:
(i) Where the separate contribution is reproduced on a single page,
a notice is acceptable if it appears:
(A) Under the title of the contribution on that page;
(B) Adjacent to the contribution; or
(C) On the same page if, through format, wording, or both, the
application of the notice to the particular contribution is made clear;
(ii) Where the separate contribution is reproduced on more than one
page of the collective work, a notice is acceptable if it appears:
(A) Under a title appearing at or near the beginning of the
contribution;
(B) On the first page of the main body of the contribution;
(C) Immediately following the end of the contribution; or
(D) On any of the pages where the contribution appears, if:
(1) The contribution is reproduced on no more than twenty pages of
the collective work;
(2) The notice is reproduced prominently and is set apart from other
matter on the page where it appears; and
(3) Through format, wording, or both, the application of the notice
to the particular contribution is made clear;
(iii) Where the separate contribution is a musical work, in addition
to any of the locations listed in paragraphs (c)(6)(i) and (ii) of this
section, a notice is acceptable if it is located on the first page of
music of the contribution;
(iv) As an alternative to placing the notice on one of the pages
where a separate contribution itself appears, the contribution is
considered to ``bear its own notice'' if the notice appears clearly in
juxtaposition with a separate listing of the contribution by title, or
if the contribution is untitled, by a description reasonably identifying
the contribution:
(A) On the page bearing the copyright notice for the collective work
as a whole, if any; or
(B) In a clearly identified and readily-accessible table of contents
or listing of acknowledgements appearing near the front or back of the
collective work as a whole.
(7) Works reproduced in machine-readable copies. For works
reproduced in machine-readable copies, each of the following constitutes
an example of acceptable methods of affixation and position of notice:
[[Page 657]]
(i) A notice embodied in the copies in machine-readable form in such
a manner that on visually perceptible printouts it appears either with
or near the title, or at the end of the work;
(ii) A notice that is displayed at the user's terminal at sign on;
(iii) A notice that is continuously on terminal display; or
(iv) A legible notice reproduced durably, so as to withstand normal
use, on a gummed or other label securely affixed to the copies or to a
box, reel, cartridge, cassette, or other container used as a permanent
receptacle for the copies.
(8) Motion pictures and other audiovisual works. (i) The following
constitute examples of acceptable methods of affixation and positions of
the copyright notice on motion pictures and other audiovisual works: A
notice that is embodied in the copies by a photomechanical or electronic
process, in such a position that it ordinarily would appear whenever the
work is performed in its entirety, and that is located:
(A) With or near the title;
(B) With the cast, credits, and similar information;
(C) At or immediately following the beginning of the work; or
(D) At or immediately preceding the end of the work.
(ii) In the case of an untitled motion picture or other audiovisual
work whose duration is sixty seconds or less, in addition to any of the
locations listed in paragraph (c)(8)(i) of this section, a notice that
is embodied in the copies by a photomechanical or electronic process, in
such a position that it ordinarily would appear to the projectionist or
broadcaster when preparing the work for performance, is acceptable if it
is located on the leader of the film or tape immediately preceding the
beginning of the work.
(iii) In the case of a motion picture or other audiovisual work that
is distributed to the public for private use, the notice may be affixed,
in addition to the locations specified in paragraph (c)(8)(i) of this
section, on the housing or container, if it is a permanent receptacle
for the work.
(9) Pictorial, graphic, and sculptural works. The following
constitute examples of acceptable methods of affixation and positions of
the copyright notice on various forms of pictorial, graphic, and
sculptural works:
(i) Where a work is reproduced in two-dimensional copies, a notice
affixed directly or by means of a label cemented, sewn, or otherwise
attached durably, so as to withstand normal use, of the front or back of
the copies, or to any backing, mounting, matting, framing, or other
material to which the copies are durably attached, so as to withstand
normal use, or in which they are permanently housed, is acceptable.
(ii) Where a work is reproduced in three-dimensional copies, a
notice affixed directly or by means of a label cemented, sewn, or
otherwise attached durably, so as to withstand normal use, to any
visible portion of the work, or to any base, mounting, framing, or other
material on which the copies are durably attached, so as to withstand
normal use, or in which they are permanently housed, is acceptable.
(iii) Where, because of the size or physical characteristics of the
material in which the work is reproduced in copies, it is impossible or
extremely impracticable to affix a notice to the copies directly or by
means of a durable label, a notice is acceptable if it appears on a tag
that is of durable material, so as to withstand normal use, and that is
attached to the copy with sufficient durability that it will remain with
the copy while it is passing through its normal channels of commerce.
(iv) Where a work is reproduced in copies consisting of sheet-like
or strip material bearing multiple or continuous reproductions of the
work, the notice may be applied:
(A) To the reproduction itself;
(B) To the margin, selvage, or reverse side of the material at
frequent and regular intervals; or
(C) If the material contains neither a selvage nor a reverse side,
to tags or labels, attached to the copies and to any spools, reels, or
containers housing them in such a way that a notice is visible while the
copies are passing through their normal channels of commerce.
[[Page 658]]
(v) If the work is permanently housed in a container, such as a game
or puzzle box, a notice reproduced on the permanent container is
acceptable.
[24 FR 4956, June 18, 1959; 24 FR 6163, July 31, 1959, as amended at 37
FR 3055, Feb. 11, 1972; 46 FR 33249, June 29, 1981; 46 FR 34329, July 1,
1981; 60 FR 34168, June 30, 1995; 66 FR 34373, June 28, 2001; 66 FR
40322, Aug. 2, 2001; 77 FR 18707, Mar. 28, 2012; 77 FR 20988, Apr. 9,
2012; 82 FR 9359, Feb. 6, 2017; 82 FR 42736, Sept. 12, 2017]
Sec.202.3 Registration of copyright.
(a) General. (1) This section prescribes conditions for the
registration of copyright, and the application to be made for
registration under sections 408 and 409 of title 17 of the United States
Code.
(2) For the purposes of this section, the terms audiovisual work,
compilation, copy, derivative work, device, fixation, literary work,
motion picture, phonorecord, pictorial, graphic and sculptural works,
process, sound recording, and their variant forms, have the meanings set
forth in section 101 of title 17. The term author includes an employer
or other person for whom a work is ``made for hire'' under section 101
of title 17.
(3) For the purposes of this section, a copyright claimant is
either:
(i) The author of a work;
(ii) A person or organization that has obtained ownership of all
rights under the copyright initially belonging to the author. \1\
---------------------------------------------------------------------------
\1\ This category includes a person or organization that has
obtained, from the author or from an entity that has obtained ownership
of all rights under the copyright initially belonging to the author, the
contractual right to claim legal title to the copyright in an
application for copyright registration.
---------------------------------------------------------------------------
(b) Administrative classification and application forms--(1) Classes
of works. For the purpose of registration, the Register of Copyrights
has prescribed the classes of works in which copyright may be claimed.
These classes, and examples of works which they include, are as follows:
(i) Class TX: Nondramatic literary works. This class includes all
published and unpublished nondramatic literary works. Examples: Fiction;
nonfiction; poetry; textbooks; reference works; directories; catalogs;
advertising copy; and compilations of information.
(ii) Class PA: Works of the performing arts. This class includes all
published and unpublished works prepared for the purpose of being
performed directly before an audience or indirectly by means of a device
or process. Examples: Musical works, including any accompanying words;
dramatic works, including any accompanying music; pantomimes and
choreographic works; and motion pictures and other audiovisual works.
(iii) Class VA: Works of the visual arts. This class includes all
published and unpublished pictorial, graphic, and sculptural works.
Examples: Two dimensional and three dimensional works of the fine,
graphic, and applied arts; photographs; prints and art reproductions;
maps, globes, and charts; technical drawings, diagrams, and models; and
pictorial or graphic labels and advertisements. This class also includes
published and unpublished architectural works.
(iv) Class SR: Sound recordings. This class includes all published
and unpublished sound recordings fixed on and after February 15, 1972.
Claims to copyright in literary, dramatic, and musical works embodied in
phonorecords may also be registered in this class under paragraph (b)(4)
of this section if:
(A) Registration is sought on the same application for both a
recorded literary, dramatic, or musical work and a sound recording;
(B) The recorded literary, dramatic, or musical work and the sound
recording are embodied in the same phonorecord; and
(C) The same claimant is seeking registration of both the recorded
literary, dramatic, or musical work and the sound recording.
(v) Class SE: Serials. A serial is a work issued or intended to be
issued in successive parts bearing numerical or chronological
designations and intended to be continued indefinitely. This class
includes periodicals (including newspapers); annuals; and the journals,
proceedings, transactions, etc. of societies.
(2) Submission of application for registration. For purposes of
registration,
[[Page 659]]
an applicant may submit an application for registration of individual
works and certain groups of works electronically through the Copyright
Office's website, or by using the printed forms prescribed by the
Register of Copyrights.
(i) Online applications. An applicant may submit a claim through the
Office's electronic registration system using the Standard Application,
the Single Application, or the applications designated in Sec.202.4.
(A) The Standard Application may be used to register a work under
sections 408(a) and 409 of title 17, including a work by one author, a
joint work, a work made for hire, a derivative work, a collective work,
or a compilation. The Standard Application may also be used to register
a unit of publication under paragraph (b)(4) of this section, or a sound
recording and a literary, dramatic, or musical work under paragraphs
(b)(1)(iv)(A) through (C) of this section.
(B)(1) The Single Application may be used only to register one work
by one author. All of the content appearing in the work must be created
by the same individual. The work must be owned by the author who created
it, and the author and the claimant must be the same individual.
(2) The Single Application may be used to register one sound
recording and one musical work, dramatic work, or literary work if the
conditions set forth in paragraphs (b)(1)(iv)(A) through (C) and
(b)(2)(i)(B)(1) of this section have been met.
(3) The following categories of works may not be registered using
the Single Application: collective works, databases, websites,
architectural works, choreographic works, works made for hire, works by
more than one author, works with more than one owner, or works eligible
for registration under Sec.202.4 or paragraph (b)(4) or (5) of this
section.
(C) An online application requires a payment of the filing fee
through an electronic funds transfer, credit or debit card, or through a
Copyright Office deposit account.
(D) Deposit materials in support of an online application may be
submitted electronically in a digital format (if eligible) along with
the application and filing fee, or an applicant may send physical copies
or phonorecords as necessary to satisfy the best edition requirements,
by mail to the Copyright Office, using the required shipping slip
generated during the online registration process.
(ii) Paper applications. (A) An applicant may submit an application
using one of the printed forms prescribed by the Register of Copyrights.
Each form corresponds to one of the administrative classes set forth in
paragraph (b)(1) of this section. These forms are designated ``Form
TX,'' ``Form PA,'' ``Form VA,'' ``Form SR,'' and ``Form SE.'' These
forms may be used to register a work under sections 408(a) and 409 of
title 17, including a work by one author, a joint work, a work made for
hire, a derivative work, a collective work, or a compilation.
(B) Copies of the printed forms are available on the Copyright
Office's website (www.copyright.gov) and upon request to the Copyright
Public Information Office, Library of Congress. Printed form
applications may be completed and submitted by completing a printed
version or using a PDF version of the applicable Copyright Office
application form and mailing it together with the other required
elements, i.e., physically tangible deposit copies and/or materials, and
the required filing fee, all elements being placed in the same package
and sent by mail or hand-delivered to the Copyright Office.
(C) A continuation sheet (Form CON) is appropriate only in the case
when a printed form application is used and where additional space is
needed by the applicant to provide all relevant information concerning a
claim to copyright. An application may include more than one
continuation sheet.
(iii) Application class. Applications should be submitted in the
class most appropriate to the nature of the authorship in which
copyright is claimed. In the case of contributions to collective works,
applications should be submitted in the class representing the
copyrightable authorship in the contribution. In the case of derivative
works, applications should be submitted in the class most appropriately
[[Page 660]]
representing the copyrightable authorship involved in recasting,
transforming, adapting, or otherwise modifying the preexisting work. In
cases where a work contains elements of authorship in which copyright is
claimed that fall into two or more classes, the application should be
submitted in the class most appropriate to the predominant type of
authorship in the work as a whole. However, in any case where
registration is sought for a work consisting of or including a sound
recording in which copyright is claimed, the application shall be
submitted for registration in Class SR.
(3) [Reserved]
(4) Registration as one work. For the purpose of registration on one
application and upon the payment of one filing fee, the following shall
be considered one work: In the case of published works, all
copyrightable elements that are otherwise recognizable as self-contained
works, that are included in the same unit of publication, and in which
the copyright claimant is the same.
(5) Group registration of related works: Automated databases. (i)
Pursuant to the authority granted by section 408(c)(1) of title 17 of
the United States Code, the Register of Copyrights has determined that,
on the basis of one application, deposit, and filing fee, a group
registration may be made for automated databases and their updates or
other derivative versions that are original works of authorship, if,
where a database (or updates or other revisions thereof), if
unpublished, is (or are) fixed, or if published is (or are) published
only in the form of machine-readable copies, all of the following
conditions are met:
(A) All of the updates or other revisions are owned by the same
copyright claimant;
(B) All of the updates or other revisions have the same general
title;
(C) All of the updates or other revisions are similar in their
general content, including their subject;
(D) All of the updates or other revisions are similar in their
organization;
(E) Each of the updates or other revisions as a whole, if published
before March 1, 1989, bears a statutory copyright notice as first
published and the name of the owner of copyright in each work (or an
abbreviation by which the name can be recognized, or a generally known
alternative designation of the owner) was the same in each notice;
(F) Each of the updates or other revisions if published was first
published, or if unpublished was first created, within a three-month
period in the same calendar year; and
(G) The deposit accompanying the application complies with Sec.
202.20(c)(2)(vii)(D).
(ii) A group registration may be made on one application for both a
database published on one date, or if unpublished, created on one date,
and also for its copyrightable revisions, including updates covering a
three-month period in the same calendar year. An application for group
registration of automated databases under section 408(c)(1) of title 17
and this subsection shall consist of:
(A) A form that best reflects the subject matter of the material in
the database as set forth in paragraph (b)(2)(ii)(A) of this section,
completed in accordance with the instructions provided by the Copyright
Office on its website or in materials published by the Office.
Applications for group registration of an automated database consisting
predominantly of photographs may be submitted electronically only after
consultation and with the permission and under the direction of the
Visual Arts Division.
(B) The appropriate filing fee, as required in Sec.201.3(c); and
(C) The deposit required by Sec.202.20(c)(2)(vii)(D).
(6)-(10) [Reserved]
(11) One registration per work. As a general rule only one copyright
registration can be made for the same version of a particular work.
However:
(i) Where a work has been registered as unpublished, another
registration may be made for the first published edition of the work,
even if it does not represent a new version;
(ii) Where someone other than the author is identified as copyright
claimant in a registration, another registration for the same version
may be made
[[Page 661]]
by the author in his or her own name as copyright claimant;\2\
---------------------------------------------------------------------------
\2\ An author includes an employer or other person for whom a work
is ``made for hire'' under 17 U.S.C. 101. This paragraph does not permit
an employee or other person working ``for hire'' under that section to
make a later registration in his or her own name. In the case of authors
of a joint work, this paragraph does permit a later registration by one
author in his or her own name as copyright claimant, where an earlier
registration identifies only another author as claimant.
---------------------------------------------------------------------------
(iii) Where an applicant for registration alleges that an earlier
registration for the same version is unauthorized and legally invalid, a
registration may be made by that applicant.
(c) Application for registration. (1) As a general rule, an
application for copyright registration may be submitted by any author or
other copyright claimant of a work, the owner of any exclusive right in
a work, or the duly authorized agent of any such author, other claimant,
or owner. A Single Application, however, may be submitted only by the
author/claimant or by a duly authorized agent of the author/claimant,
provided that the agent is identified in the application as the
correspondent.
(2) All applications shall include the information required by the
particular form, and shall be accompanied by the appropriate filing fee,
as required in Sec.201.3(c) of this chapter, and the deposit required
under 17 U.S.C. 408 and Sec.202.20, Sec.202.21, or Sec.202.4, as
appropriate.
(3) All applications submitted for registration shall include a
certification.
(i) As a general rule, the application may be certified by an
author, claimant, an owner of exclusive rights, or a duly authorized
agent of the author, claimant, or owner of exclusive rights. A Single
Application, however, may be certified only by the author/claimant or by
a duly authorized agent of the author/claimant.
(ii) For online applications, the certification shall include the
typed name of a party identified in paragraph (c)(3)(i) of this section.
For paper applications, the certification shall include the typed,
printed, or handwritten signature of a party identified in paragraph
(c)(3)(i) of this section, and if the signature is handwritten it shall
be accompanied by the typed or printed name of that party.
(iii) The declaration shall state that the information provided
within the application is correct to the best of the certifying party's
knowledge.
(iv) For online applications, the date of the certification shall be
automatically assigned by the electronic registration system on the date
the application is received by the Copyright Office. For paper
applications, the certification shall include the month, day, and year
that the certification was signed by the certifying party.
(v) An application for registration of a published work will not be
accepted if the date of certification is earlier than the date of
publication given in the application.
(4) In the case of applications for registration made under
paragraphs (b)(4) through (5) of this section or under Sec.202.4, the
``year of creation,'' ``year of completion,'' or ``year in which
creation of this work was completed'' means the latest year in which the
creation of any copyrightable element was completed.
(Pub. L. 94-553; secs. 408, 409, 410, 702)
[43 FR 966, Jan. 5, 1978]
Editorial Note: For Federal Register citations affecting Sec.
202.3, see the List of CFR Sections Affected, which appears in the
Finding Aids section of the printed volume and at www.govinfo.gov.
Sec.202.4 Group registration.
(a) General. This section prescribes conditions for issuing a
registration for a group of related works under section 408(c) of title
17 of the United States Code.
(b) Definitions. (1) For purposes of this section, unless otherwise
specified, the terms used have the meanings set forth in Sec. Sec.
202.3, 202.13, and 202.20.
(2) For purposes of this section, the term Library means the Library
of Congress.
(3) For purposes of this section, a periodical is a collective work
that is issued or intended to be issued on an established schedule in
successive issues that are intended to be continued indefinitely. In
most cases, each
[[Page 662]]
issue will bear the same title, as well as numerical or chronological
designations.
(c) Group registration of unpublished works. Pursuant to the
authority granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has
determined that a group of unpublished works may be registered in Class
TX, PA, VA, or SR with one application, the required deposit, and the
filing fee required by Sec.201.3(c) of this chapter, if the following
conditions are met:
(1) All the works in the group must be unpublished, and they must be
registered in the same administrative class.
(2) Generally, the applicant may include up to ten works in the
group. If the conditions set forth in Sec.202.3(b)(1)(iv)(A) through
(C) have been met, the applicant may include up to ten sound recordings
and ten musical works, literary works, or dramatic works in the group.
(3) The group may include individual works, joint works, or
derivative works, but may not include compilations, collective works,
databases, or websites.
(4) The applicant must provide a title for each work in the group.
(5) All the works must be created by the same author or the same
joint authors, and the author and claimant information for each work
must be the same.
(6) The works may be registered as anonymous works, pseudonymous
works, or works made for hire if they are identified in the application
as such.
(7) The applicant must identify the authorship that each author or
joint author contributed to the works, and the authorship statement for
each author or joint author must be the same. Claims in the selection,
coordination, or arrangement of the group as a whole will not be
permitted on the application.
(8) The applicant must complete and submit the online application
designated for a group of unpublished works. The application may be
submitted by any of the parties listed in Sec.202.3(c)(1).
(9) The applicant must submit one complete copy or phonorecord of
each work. Each work must be contained in a separate electronic file
that complies with Sec.202.20(b)(2)(iii). The files must be submitted
in one of the electronic formats approved by the Office, they must be
assembled in an orderly form, and they must be uploaded to the
electronic registration system. The file size for each uploaded file
must not exceed 500 megabytes; the files may be compressed to comply
with this requirement.
(10) In an exceptional case, the Copyright Office may waive the
online filing requirement set forth in paragraph (c)(8) of this section
or may grant special relief from the deposit requirement under Sec.
202.20(d), subject to such conditions as the Associate Register and
Director of the Office of Registration Policy and Practice may impose on
the applicant.
(d) Group registration of serials. Pursuant to the authority granted
by 17 U.S.C. 408(c)(1), the Register of Copyrights has determined that a
group of serial issues may be registered with one application, the
required deposit, and the filing fee required by Sec.201.3(c) of this
chapter, if the following conditions are met:
(1) Eligible works. (i) All the issues in the group must be serials.
(ii) The group must include at least two issues.
(iii) Each issue in the group must be an all-new collective work
that has not been previously published, each issue must be fixed and
distributed as a discrete, self-contained collective work, and the claim
in each issue must be limited to the collective work.
(iv) Each issue in the group must be a work made for hire, and the
author and claimant for each issue must be the same person or
organization.
(v) The serial generally must be published at intervals of a week or
longer. All of the issues must be published within three months, under
the same continuing title, within the same calendar year, and the
applicant must specify the date of publication for each issue in the
group.
(2) Application. The applicant must complete and submit the online
application designated for a group of serial
[[Page 663]]
issues. The application may be submitted by any of the parties listed in
Sec.202.3(c)(1).
(3) Deposit. The applicant must submit one complete copy of each
issue that is included in the group. Copies submitted under this
paragraph (d)(3) will be considered solely for the purpose of
registration under 17 U.S.C. 408, and will not satisfy the mandatory
deposit requirement under 17 U.S.C. 407. The issues must be submitted in
digital form, and each issue must be contained in a separate electronic
file. The applicant must use the file-naming convention and submit
digital files in accordance with instructions specified on the Copyright
Office's website. The files must be submitted in Portable Document
Format (PDF), they must be assembled in an orderly form, and they must
be uploaded to the electronic registration system as individual
electronic files (i.e., not .zip files). The files must be viewable and
searchable, contain embedded fonts, and be free from any access
restrictions (such as those implemented through digital rights
management) that prevent the viewing and examination of the work. The
file size for each uploaded file must not exceed 500 megabytes, but
files may be compressed to comply with the requirement in this paragraph
(d)(3).
(4) Exceptional cases. In an exceptional case, the Copyright Office
may waive the online filing requirement set forth in paragraph (d)(2) of
this section or may grant special relief from the deposit requirement
under Sec.202.20(d), subject to such conditions as the Associate
Register of Copyrights and Director of the Office of Registration Policy
and Practice may impose on the applicant.
(e) Group registration of newspapers. Pursuant to the authority
granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has
determined that a group of newspaper issues may be registered with one
application, the required deposit, and the filing fee required by Sec.
201.3(c) of this chapter, if the following conditions are met:
(1) Issues must be newspapers. All the issues in the group must be
newspapers. For purposes of this section, a newspaper is a periodical
(as defined in paragraph (b)(3) of this section) that is mainly designed
to be a primary source of written information on current events, either
local, national, or international in scope. A newspaper contains a broad
range of news on all subjects and activities and is not limited to any
specific subject matter. Newspapers are intended either for the general
public or for a particular ethnic, cultural, or national group.
(2) Requirements for newspaper issues. Each issue in the group must
be an all-new collective work that has not been previously published
(except where earlier editions of the same newspaper are included in the
deposit together with the final edition), each issue must be fixed and
distributed as a discrete, self-contained collective work, and the claim
in each issue must be limited to the collective work.
(3) Author and claimant. Each issue in the group must be a work made
for hire, and the author and claimant for each issue must be the same
person or organization.
(4) Time period covered. All the issues in the group must be
published under the same continuing title, and they must be published
within the same calendar month and bear issue dates within that month.
The applicant must identify the earliest and latest date that the issues
were published.
(5) Application. The applicant must complete and submit the online
application designated for a group of newspaper issues. The application
may be submitted by any of the parties listed in Sec.202.3(c)(1).
(6) Deposit. (i) The applicant must submit one complete copy of the
final edition of each issue published in the calendar month designated
in the application. Each submission may also include earlier editions of
the same newspaper issue, provided that they were published on the same
date as the final edition. Each submission may also include local
editions of the newspaper issue that were published within the same
metropolitan area, but may not include national or regional editions
that were distributed outside that metropolitan area.
(ii) The issues must be submitted in a digital form, and each issue
must be contained in a separate electronic file. The applicant must use
the file-naming convention and submit digital files in
[[Page 664]]
accordance with instructions specified on the Copyright Office's
website. The files must be submitted in Portable Document Format (PDF),
they must be assembled in an orderly form, and they must be uploaded to
the electronic registration system as individual electronic files (i.e.,
not .zip files). The files must be viewable and searchable, contain
embedded fonts, and be free from any access restrictions (such as those
implemented through Digital Rights Management (DRM)). The file size for
each uploaded file must not exceed 500 megabytes, but files may be
compressed to comply with this requirement.
(f) Group registration of newsletters. Pursuant to the authority
granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has
determined that a group of newsletter issues may be registered with one
application, the required deposit, and the filing fee required by Sec.
201.3(c) of this chapter, if the following conditions are met:
(1) Eligible works. (i) All the issues in the group must be
newsletters. For purposes of this section, a newsletter is a serial that
is published and distributed by mail, electronic media, or other medium,
including paper, email, or download. The newsletter must contain news or
information that is chiefly of interest to a special group, such as
trade and professional associations, colleges, schools, or churches.
Newsletters are typically distributed through subscriptions, but are not
distributed through newsstands or other retail outlets.
(ii) The group must include at least two issues.
(iii) Each issue in the group must be an all-new issue or an all-new
collective work that has not been previously published, and each issue
must be fixed and distributed as a discrete, self-contained work.
(iv) The author and claimant for each issue must be the same person
or organization.
(v) All the issues in the group must be published under the same
continuing title, they must be published within the same calendar month
and bear issue dates within that month, and the applicant must identify
the earliest and latest date that the issues were published during that
month.
(2) Application. The applicant must complete and submit the online
application designated for a group of newsletter issues. The application
may be submitted by any of the parties listed in Sec.202.3(c)(1).
(3) Deposit. The applicant must submit one complete copy of each
issue that is included in the group. The issues must be submitted in
digital form, and each issue must be contained in a separate electronic
file. The applicant must use the file-naming convention and submit
digital files in accordance with instructions specified on the Copyright
Office's website. The files must be submitted in Portable Document
Format (PDF), they must be assembled in an orderly form, and they must
be uploaded to the electronic registration system as individual
electronic files (i.e., not .zip files). The files must be viewable and
searchable, contain embedded fonts, and be free from any access
restrictions (such as those implemented through digital rights
management) that prevent the viewing and examination of the work. The
file size for each uploaded file must not exceed 500 megabytes, but
files may be compressed to comply with this requirement. Copies
submitted under this paragraph will be considered solely for the purpose
of registration under 17 U.S.C. 408, and will not satisfy the mandatory
deposit requirement under 17 U.S.C. 407.
(4) Exceptional cases. In an exceptional case, the Copyright Office
may waive the online filing requirement set forth in paragraph (f)(2) of
this section or may grant special relief from the deposit requirement
under Sec.202.20(d), subject to such conditions as the Associate
Register of Copyrights and Director of the Office of Registration Policy
and Practice may impose on the applicant.
(g) Group registration of contributions to periodicals. Pursuant to
the authority granted by 17 U.S.C. 408(c)(2), the Register of Copyrights
has determined that a group of contributions to periodicals may be
registered in Class TX or Class VA with one application, one filing fee,
and the required deposit, if the following conditions are met:
[[Page 665]]
(1) All the contributions in the group must be created by the same
individual.
(2) The copyright claimant must be the same person or organization
for all the contributions.
(3) The contributions must not be works made for hire.
(4) Each work must be first published as a contribution to a
periodical, and all the contributions must be first published within a
twelve-month period (e.g., January 1, 2015 through December 31, 2015;
February 1, 2015 through January 31, 2016).
(5) If any of the contributions were first published before March 1,
1989, those works must bear a separate copyright notice, the notice must
contain the copyright owner's name (or an abbreviation by which the name
can be recognized, or a generally known alternative designation for the
owner), and the name that appears in each notice must be the same.
(6) The applicant must complete and submit the online application
designated for a group of contributions to periodicals. The application
must identify each contribution that is included in the group, including
the date of publication for each contribution and the periodical in
which it was first published. The application may be submitted by any of
the parties listed in Sec.202.3(c)(1). The application should be filed
in Class TX if a majority of the contributions predominantly consist of
text, and the application should be filed in Class VA if a majority of
the contributions predominantly consist of photographs, illustrations,
artwork, or other works of the visual arts.
(7) The appropriate filing fee, as required by Sec.201.3(c) of
this chapter, must be included with the application or charged to an
active deposit account.
(8) The applicant must submit one copy of each contribution that is
included in the group, either by submitting the entire issue of the
periodical where the contribution was first published, the entire
section of the newspaper where it was first published, or the specific
page(s) from the periodical where the contribution was first published.
The contributions must be contained in separate electronic files that
comply with Sec.202.20(b)(2)(iii). The files must be submitted in a
PDF, JPG, or other electronic format approved by the Office, and they
must be uploaded to the electronic registration system, preferably in a
.zip file containing all the files. The file size for each uploaded file
must not exceed 500 megabytes; the files may be compressed to comply
with this requirement.
(9) In an exceptional case, the Copyright Office may waive the
online filing requirement set forth in paragraph (g)(6) of this section
or may grant special relief from the deposit requirement under Sec.
202.20(d), subject to such conditions as the Associate Register of
Copyrights and Director of the Office of Registration Policy and
Practice may impose on the applicant.
(h) Group registration of unpublished photographs. Pursuant to the
authority granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has
determined that a group of unpublished photographs may be registered in
Class VA with one application, the required deposit, and the filing fee
required by Sec.201.3(c) of this chapter, if the following conditions
are met:
(1) All the works in the group must be photographs.
(2) The group must include no more than 750 photographs, and the
application must specify the total number of photographs that are
included in the group.
(3) All the photographs must be created by the same author.
(4) The copyright claimant for all the photographs must be the same
person or organization.
(5) The photographs may be registered as works made for hire if all
the photographs are identified in the application as such.
(6) All the photographs must be unpublished.
(7) The applicant must provide a title for the group as a whole
(8) The applicant must complete and submit the online application
designated for a group of unpublished photographs. The application may
be submitted by any of the parties listed in Sec.202.3(c)(1).
(9) The applicant must submit one copy of each photograph in one of
the following formats: JPEG, GIF, or
[[Page 666]]
TIFF. The photographs may be uploaded to the electronic registration
system together with the required numbered list, preferably in a .zip
file containing all the photographs. The file size for each uploaded
file must not exceed 500 megabytes; the photographs may be compressed to
comply with this requirement. Alternatively, the photographs and the
required numbered list may be saved on a physical storage device, such
as a flash drive, CD-R, or DVD-R, and delivered to the Copyright Office
together with the required shipping slip generated by the electronic
registration system.
(10) The applicant must submit a sequentially numbered list
containing a title and file name for each photograph in the group
(matching the corresponding file names for each photograph specified in
paragraph (h)(9) of this section). The title and file name for a
particular photograph may be the same. The numbered list must be
contained in an electronic file in Excel format (.xls), Portable
Document Format (PDF), or other electronic format approved by the
Office, and the file name for the list must contain the title of the
group and the case number assigned to the application by the electronic
registration system (e.g., ``Title Of Group Case Number
16283927239.xls'').
(11) In an exceptional case, the Copyright Office may waive the
online filing requirement set forth in paragraph (h)(8) of this section
or may grant special relief from the deposit requirement under Sec.
202.20(d), subject to such conditions as the Associate Register of
Copyrights and Director of the Office of Registration Policy and
Practice may impose on the applicant.
(i) Group registration of published photographs. Pursuant to the
authority granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has
determined that a group of published photographs may be registered in
Class VA with one application, the required deposit, and the filing fee
required by Sec.201.3(c) of this chapter, if the following conditions
are met:
(1) All the works in the group must be photographs.
(2) The group must include no more than 750 photographs, and the
application must specify the total number of photographs that are
included in the group.
(3) All the photographs must be created by the same author.
(4) The copyright claimant for all the photographs must be the same
person or organization.
(5) The photographs may be registered as works made for hire if all
the photographs are identified in the application as such.
(6) All the photographs must be published within the same calendar
year, and the applicant must specify the earliest and latest date that
the photographs were published during the year.
(7) The applicant must provide a title for the group as a whole.
(8) The applicant must complete and submit the online application
designated for a group of published photographs. The application may be
submitted by any of the parties listed in Sec.202.3(c)(1).
(9) The applicant must submit one copy of each photograph in one of
the following formats: JPEG, GIF, or TIFF. The photographs may be
uploaded to the electronic registration system together with the
required numbered list, preferably in a .zip file containing all the
photographs. The file size for each uploaded file must not exceed 500
megabytes; the photographs may be compressed to comply with this
requirement. Alternatively, the photographs and the required numbered
list may be saved on a physical storage device, such as a flash drive,
CD-R, or DVD-R, and delivered to the Copyright Office together with the
required shipping slip generated by the electronic registration system.
(10) The applicant must submit a sequentially numbered list
containing the title, file name, and month and year of publication for
each photograph in the group (matching the corresponding file names for
each photograph specified in paragraph (i)(9) of this section). The
title and file name for a particular photograph may be the same. The
numbered list must be contained in an electronic file in Excel format
(.xls), Portable Document Format (PDF), or other electronic format
approved by the Office, and the file name for the list must contain the
title of
[[Page 667]]
the group and the case number assigned to the application by the
electronic registration system (e.g., ``Title Of Group Case Number
16283927239.xls'').
(11) In an exceptional case, the Copyright Office may waive the
online filing requirement set forth in paragraph (i)(8) of this section
or may grant special relief from the deposit requirement under Sec.
202.20(d), subject to such conditions as the Associate Register of
Copyrights and Director of the Office of Registration Policy and
Practice may impose on the applicant.
(j) Group registration of short online literary works. Pursuant to
the authority granted by 17 U.S.C. 408(c)(2), the Register of Copyrights
has determined that a group of literary works may be registered in Class
TX with one application, the required deposit, and the filing fee
required by Sec.201.3(c) if the following conditions are met:
(1) The group may include up to 50 short online literary works, and
the application must specify the total number of short online literary
works that are included in the group. For purposes of this section, a
short online literary work is a work consisting of text that contains at
least 50 words and no more than 17,500 words, such as a poem, short
story, article, essay, column, blog entry, or social media post. The
work must be published as part of a website or online platform,
including online newspapers, social media websites, and social
networking platforms. The group may not include computer programs,
audiobooks, podcasts, or emails. Claims in any form of authorship other
than ``text'' or claims in the selection, coordination, or arrangement
of the group as a whole will not be permitted on the application.
(2) All of the works must be published within a three-calendar-month
period, and the application must identify the earliest and latest date
that the works were published.
(3) All the works must be created by the same individual, or jointly
by the same individuals, and each creator must be named as the copyright
claimant or claimants for each work in the group.
(4) The works must not be works made for hire.
(5) The applicant must provide a title for each work and a title for
the group as a whole.
(6) The applicant must complete and submit the online application
designated for a group of short online literary works. The application
may be submitted by any of the parties listed in Sec.202.3(c)(1).
(7) The applicant must submit one complete copy of each work. The
works must be assembled in an orderly form with each work in a separate
digital file. The file name for each work must match the title as
submitted on the application. All of the works must be submitted in one
of the electronic formats approved by the Office, and must be uploaded
to the electronic registration system in a .ZIP file. The file size for
each uploaded .ZIP file must not exceed 500 megabytes.
(8) The applicant must submit a sequentially numbered list
containing a title/file name for each work in the group. The list must
also include the publication date and word count for each work. The
numbered list must be contained in an electronic file in Excel format
(.xls), Portable Document Format (PDF), or other electronic format
approved by the Office, and the file name for the list must contain the
title of the group and the case number assigned to the application by
the electronic registration system (e.g., ``Title Of Group Case Number
16283927239.xls'').
(9) In an exceptional case, the Copyright Office may waive the
online filing requirement set forth in paragraph (j)(6) of this section
or may grant special relief from the deposit requirement under Sec.
202.20(d), subject to such conditions as the Associate Register of
Copyrights and Director of the Office of Registration Policy and
Practice may impose on the applicant.
(k) Group registration of works on an album. Pursuant to the
authority granted by 17 U.S.C. 408(c)(1), the Register of Copyrights has
determined that a group of two or more musical works, or two or more
sound recordings and any associated literary, pictorial, or graphic
works, may be registered with one application, the required deposit, and
the filing fee required by Sec.201.3 of
[[Page 668]]
this chapter, if the following conditions are met:
(1) Eligible works. (i) All of the works in the group must be
contained on the same album. For the purposes of this section, an album
is a single physical or electronic unit of distribution containing at
least two musical works and/or sound recordings embodied in a
phonorecord, including any associated literary, pictorial, or graphic
works distributed with the unit.
(ii) The group may include:
(A) Up to twenty musical works; or
(B) Up to twenty sound recordings and any associated literary,
pictorial, or graphic works included with the same album.
(iii) The applicant must provide a title for the album and a title
for each musical work or sound recording claimed in the group.
(iv) All of the works in the group must be created by the same
author or the works must have a common joint author, and the copyright
claimant or co-claimants for each work must all be the same person(s) or
organization. The works may be registered as works made for hire if they
are identified in the application as such.
(v) As a general rule, all of the works must be first published on
the same album, the date and nation of publication for each work must be
specified in the application, and the nation of publication for each
work must be the same. A musical work or sound recording that was
previously published as an individual work only (e.g., as a single) may
be included in the claim if the date of first publication for that work
is listed separately in the application.
(2) Application. If the group consists of sound recordings and, as
applicable, any associated literary, pictorial, or graphic works, the
applicant must complete and submit the application designated for
``sound recordings from an album.'' If the group consists of musical
works, the applicant must complete and submit the application designated
for ``musical works from an album.'' The application may be submitted by
any of the parties listed in Sec.202.3(c)(1).
(3) Deposit. (i) For claims in works first published in the United
States submitted with the application for ``sound recordings from an
album,'' the applicant must submit two complete phonorecords containing
the best edition of each recording, and two complete copies of any
associated literary, pictorial, or graphic works that are included in
the group. For claims in works first published outside the United States
submitted with this application, the applicant must submit one complete
phonorecord of the work either as first published or of the best
edition. A phonorecord will be considered complete if it satisfies the
requirements set forth in Sec.202.19(b)(2). The deposit may be
submitted in a digital form if the album has been distributed solely in
a digital format, and if the requirements set forth in paragraph
(k)(3)(iii) of this section have been met.
(ii) For claims submitted with the application for ``musical works
from an album,'' the applicant must submit one complete phonorecord of
each musical work that is included in the group.
(iii) The deposit may be submitted in a digital form if the
following requirements have been met. Each work must be contained in a
separate electronic file. The files must be assembled in an orderly
form, they must be submitted in one of the electronic formats approved
by the Office, and they must be uploaded to the electronic registration
system as individual electronic files (not .zip files). The file size
for each uploaded file must not exceed 500 megabytes; the files may be
compressed to comply with this requirement. The file name for each work
must match the title as submitted on the application.
(4) Special relief. In an exceptional case, the Copyright Office may
waive the online filing requirement set forth in paragraph (k)(2) of
this section or may grant special relief from the deposit requirement
under Sec.202.20(d), subject to such conditions as the Associate
Register of Copyrights and Director of the Office of Registration Policy
and Practice may impose on the applicant.
(l)-(n) [Reserved]
(o) Secure test items. Pursuant to the authority granted by 17
U.S.C. 408(c)(1), the Register of Copyrights has determined that a group
of test items may
[[Page 669]]
be registered in Class TX with one application, one filing fee, and
identifying material, if the conditions set forth in Sec.202.13(c) and
(d) have been met.
(p) Refusal to register. The Copyright Office may refuse
registration if the applicant fails to satisfy the requirements for
registering a group of related works under this section or Sec.
202.3(b)(5).
(q) Cancellation. If the Copyright Office issues a registration for
a group of related works and subsequently determines that the
requirements for that group option have not been met, and if the
claimant fails to cure the deficiency after being notified by the
Office, the registration may be cancelled in accordance with Sec.201.7
of this chapter.
(r) The scope of a group registration. When the Office issues a
group registration under paragraph (d), (e), or (f) of this section, the
registration covers each issue in the group and each issue is registered
as a separate work or a separate collective work (as the case may be).
When the Office issues a group registration under paragraph (c), (g),
(h), (i), (j), (k), or (o) of this section, the registration covers each
work in the group and each work is registered as a separate work. For
purposes of registration, the group as a whole is not considered a
compilation, a collective work, or a derivative work under section 101,
103(b), or 504(c)(1) of title 17 of the United States Code.
[82 FR 29413, June 29, 2017, as amended at 82 FR 52228, Nov. 13, 2017;
83 FR 2547, Jan. 18, 2018; 83 FR 4146, Jan. 30, 2018; 83 FR 61549, Nov.
30, 2018; 84 FR 3699, Feb. 13, 2019; 84 FR 3698, Feb. 13, 2019; 84 FR
60918, 60919, Nov. 12, 2019; 85 FR 31982, May 28, 2020; 85 FR 37346,
June 22, 2020; 86 FR 10825, Feb. 23, 2021]
Sec.202.5 Reconsideration Procedure for Refusals to Register.
(a) General. This section prescribes rules pertaining to procedures
for administrative review of the Copyright Office's refusal to register
a claim to copyright, a mask work, or a vessel design upon a finding by
the Office that the application for registration does not satisfy the
legal requirements of title 17 of the United States Code. If an
applicant's initial claim is refused, the applicant is entitled to
request that the initial refusal to register be reconsidered.
(b) First reconsideration. Upon receiving a written notification
from the Registration Program explaining the reasons for a refusal to
register, an applicant may request that the Registration Program
reconsider its initial decision to refuse registration, subject to the
following requirements:
(1) An applicant must request in writing that the Registration
Program reconsider its decision. A request for reconsideration must
include the reasons the applicant believes registration was improperly
refused, including any legal arguments in support of those reasons and
any supplementary information. The Registration Program will base its
decision on the applicant's written submissions.
(2) The fee set forth in Sec.201.3(d) of this chapter must
accompany the first request for reconsideration.
(3) The first request for reconsideration and the applicable fee
must be postmarked, dispatched by a commercial carrier, courier, or
messenger, or otherwise received by the Office, no later than three
months from the date that appears in the written notice from the
Registration Program of its decision to refuse registration. When the
ending date for the three-month time period falls on a weekend or a
Federal holiday, the ending day of the three-month period shall be
extended to the next Federal work day.
(4) If the Registration Program decides to register an applicant's
work in response to the first request for reconsideration, it will
notify the applicant in writing of the decision and the work will be
registered. However, if the Registration Program again refuses to
register the work, it will send the applicant a written notification
stating the reasons for refusal within four months of the date on which
the first request for reconsideration is received by the Registration
Program. When the ending date for the four-month time period falls on a
weekend or a Federal holiday, the ending day of the four-month period
shall be extended to the next Federal work day. Failure by the
Registration Program to send the written
[[Page 670]]
notification within the four-month period shall not result in
registration of the applicant's work.
(c) Second reconsideration. Upon receiving written notification of
the Registration Program's decision to refuse registration in response
to the first request for reconsideration, an applicant may request that
the Review Board reconsider the Registration Program's refusal to
register, subject to the following requirements:
(1) An applicant must request in writing that the Review Board
reconsider the Registration Program's decision to refuse registration.
The second request for reconsideration must include the reasons the
applicant believes registration was improperly refused, including any
legal arguments in support of those reasons and any supplementary
information, and must address the reasons stated by the Registration
Program for refusing registration upon first reconsideration. The Board
will base its decision on the applicant's written submissions.
(2) The fee set forth in Sec.201.3(d) of this chapter must
accompany the second request for reconsideration.
(3) The second request for reconsideration and the applicable fee
must be postmarked, dispatched by a commercial carrier, courier, or
messenger, or otherwise received by the Office no later than three
months from the date that appears in the Registration Program's written
notice of its decision to refuse registration after the first request
for reconsideration. When the ending date for the three-month time
period falls on a weekend or a Federal holiday, the ending day of the
three-month period shall be extended to the next Federal work day.
(4) If the Review Board decides to register an applicant's work in
response to a second request for reconsideration, it will notify the
applicant in writing of the decision and the work will be registered. If
the Review Board upholds the refusal to register the work, it will send
the applicant a written notification stating the reasons for refusal.
(d) Submission of reconsiderations. (1) All submissions for
reconsideration should be mailed to the address specified in Sec.
201.1(c) of this chapter.
(2) The first page of the written request must contain the Copyright
Office control number and clearly indicate either ``FIRST
RECONSIDERATION'' or ``SECOND RECONSIDERATION,'' as appropriate, on the
subject line.
(e) Suspension or waiver of time requirements. For any particular
request for reconsideration, the provisions relating to the time
requirements for submitting a request under this section may be
suspended or waived, in whole or in part, by the Register of Copyrights
upon a showing of good cause. Such suspension or waiver shall apply only
to the request at issue and shall not be relevant with respect to any
other request for reconsideration from that applicant or any other
applicant.
(f) Composition of the Review Board. The Review Board shall consist
of three members; the first two members are the Register of Copyrights
and the General Counsel or their respective designees. The third member
will be designated by the Register.
(g) Final agency action. A decision by the Review Board in response
to a second request for reconsideration constitutes final agency action.
[69 FR 77636, Dec. 28, 2004, as amended at 70 FR 7177, Feb. 11, 2005; 73
FR 37839, July 2, 2008; 78 FR 42875, July 18, 2013; 81 FR 62373, Sept.
9, 2016; 82 FR 9359, Feb. 6, 2017; 82 FR 21697, May 10, 2017; 85 FR
19668, Apr. 8, 2020]
Sec.202.6 Supplementary registration.
(a) General. This section prescribes conditions relating to the
filing of an application for supplementary registration under section
408(d) of title 17 of the United States Code to correct an error in a
copyright registration or to amplify the information given in a
registration. No correction or amplification of the information in a
basic registration will be made except pursuant to the provisions of
this section. As an exception, where it is discovered that a basic
registration contains an error caused by the Copyright Office's own
action, the Office will take appropriate measures to rectify its
mistake.
(b) Definitions. (1) A basic registration means any of the
following:
(i) A copyright registration made under sections 408, 409, and 410
of title 17 of the United States Code;
[[Page 671]]
(ii) A renewal registration made under section 304 of title 17 of
the United States Code; or
(iii) A copyright registration or a renewal registration made under
title 17 of the United States Code as it existed before January 1, 1978.
(2) A supplementary registration means a registration issued under
section 408(d) of title 17 of the United States Code and the provisions
of this section.
(c) Persons entitled to file an application for supplementary
registration. Supplementary registration can be made only if a basic
copyright registration for the same work has already been completed.
After a basic registration has been completed, any author or other
copyright claimant of the work, or the owner of any exclusive right in
the work, or the duly authorized agent of any such author, other
claimant, or owner, who wishes to correct or amplify the information
given in the basic registration for the work may file an application for
supplementary registration.
(d) Basis for issuing a supplementary registration. (1)
Supplementary registration may be made either to correct or to amplify
the information in a basic registration.
(2) A correction is appropriate if information in the basic
registration was incorrect at the time that basic registration was made.
(3) An amplification is appropriate:
(i) To supplement or clarify the information that was required by
the application for the basic registration and should have been
provided, such as the identity of a co-author or co-claimant, but was
omitted at the time the basic registration was made; or
(ii) To reflect changes in facts, other than those relating to
transfer, license, or ownership of rights in the work, that occurred
since the basic registration was made.
(4) Supplementary registration is not appropriate:
(i) To reflect a change in ownership that occurred on or after the
effective date of the basic registration or to reflect the division,
allocation, licensing, or transfer of rights in a work;
(ii) To correct errors in statements or notices on the copies or
phonorecords of a work, or to reflect changes in the content of a work;
or
(iii) To correct or amplify the information set forth in a basic
registration that has been cancelled under Sec.201.7 of this chapter.
(5) If an error or omission in a basic renewal registration is
extremely minor, and does not involve the identity of the renewal
claimant or the legal basis of the claim, supplementary registration may
be made at any time. In an exceptional case, however, supplementary
registration may be made to correct the name of the renewal claimant and
the legal basis of the claim if clear, convincing, and objective
documentation is submitted to the Copyright Office which proves that an
inadvertent error was made in failing to designate the correct living
statutory renewal claimant in the basic renewal registration.
(6) In general, the Copyright Office will not issue a supplementary
registration for a basic registration made under title 17 of the United
States Code as it existed before January 1, 1978. In an exceptional
case, the Copyright Office may issue a supplementary registration for
such a registration, if the correction or amplification is supported by
clear, convincing, and objective documentation.
(e) Application for supplementary registration. (1) To seek a
supplementary registration for a work registered in Class TX, PA, VA,
SR, or SE, an unpublished collection, or a unit of publication
registered under Sec.202.3, or a group of related works registered
under Sec.202.4, an applicant must complete and submit the online
application designated for supplementary registration.
(2) To seek a supplementary registration for a group of unpublished
works registered under Sec.202.4(c), a group of short online literary
works registered under Sec.202.4(j), or a group of works published on
the same album registered under Sec.202.4(k), an applicant must
complete and submit the online application designated for supplementary
registration after consultation with and under the direction of the
Office of Registration Policy & Practice.
[[Page 672]]
(3) To seek a supplementary registration for a database that
consists predominantly of photographs registered under Sec.
202.3(b)(5), an applicant must complete and submit the online
application designated for supplementary registration after consultation
with and under the direction of the Visual Arts Division.
(4) To seek a supplementary registration for a restored work
registered under Sec.202.12, a database that does not consist
predominantly of photographs registered under Sec.202.3(b)(5), or a
renewal registration, an applicant must complete and submit an
application using Form CA.
(5) Before submitting the application, the applicant must sign a
certification stating that the applicant reviewed a copy of the
certificate of registration for the basic registration that will be
corrected or amplified by the supplementary registration. To obtain a
copy of the certificate, the applicant may submit a written request to
the Records Research and Certification Section using the procedure set
forth in Chapter 2400 of the Compendium of U.S. Copyright Office
Practices, Third Edition.
(6) The appropriate filing fee, as required by Sec.201.3(c) of
this chapter, must be included with the application or charged to an
active deposit account. At the Office's discretion, the applicant may be
required to pay an additional fee to make a copy of the certificate of
registration for the basic registration that will be corrected or
amplified by the supplementary registration.
(7) Copies, phonorecords, or supporting documents cannot be made
part of the record for a supplementary registration and should not be
submitted with the application.
(8) In an exceptional case, the Copyright Office may waive the
requirements set forth in paragraph (e)(1) or (2)of this section,
subject to such conditions as the Associate Register and Director of the
Office of Registration Policy and Practice may impose on the applicant.
(f) Effect of supplementary registration. (1) When the Copyright
Office completes a supplementary registration, it will issue a
certificate of supplementary registration bearing a new registration
number in the appropriate class. The Office will cross-reference the
records for the basic registration and the supplementary registration by
placing a note in each record that identifies the registration number
and effective date of registration for the related registration.
(2) As provided in section 408(d) of title 17 of the United States
Code, the information contained in a supplementary registration augments
but does not supersede that contained in the basic registration. The
basic registration will not be expunged or cancelled.
[82 FR 27427, June 15, 2017, as amended at 82 FR 42738, Sept. 12, 2017;
83 FR 61550, Nov. 30, 2018; 85 FR 19668, Apr. 8, 2020; 85 FR 37347, June
22, 2020; 86 FR 10826, Feb. 23, 2021]
Sec. Sec.202.7-202.9 [Reserved]
Sec.202.10 Pictorial, graphic, and sculptural works.
(a) In order to be acceptable as a pictorial, graphic, or sculptural
work, the work must embody some creative authorship in its delineation
or form. The registrability of such a work is not affected by the
intention of the author as to the use of the work or the number of
copies reproduced. The availability of protection or grant of protection
under the law for a utility or design patent will not affect the
registrability of a claim in an original work of pictorial, graphic, or
sculptural authorship.
(b) A claim to copyright cannot be registered in a print or label
consisting solely of trademark subject matter and lacking copyrightable
matter. While the Copyright Office will not investigate whether the
matter has been or can be registered at the Patent and Trademark Office,
it will register a properly filed copyright claim in a print or label
that contains the requisite qualifications for copyright even though
there is a trademark on it. However, registration of a claim to
copyright does not give the claimant rights available by trademark
registrations at the Patent and Trademark Office.
[46 FR 33249, June 29, 1981, as amended at 60 FR 15606, Mar. 24, 1995;
61 FR 5445, Feb. 12, 1996]
[[Page 673]]
Sec.202.11 Architectural works.
(a) General. This section prescribes rules pertaining to the
registration of architectural works.
(b) Definitions. (1) For the purposes of this section, the term
building means humanly habitable structures that are intended to be both
permanent and stationary, such as houses and office buildings, and other
permanent and stationary structures designed for human occupancy,
including but not limited to churches, museums, gazebos, and garden
pavilions.
(2) Unless otherwise specified, all other terms have the meanings
set forth in Sec. Sec.202.3 and 202.20.
(c) Registration--(1) Original design. In general, an original
design of a building embodied in any tangible medium of expression,
including a building, architectural plans, or drawings, may be
registered as an architectural work.
(2) Publication. Publication of an architectural work occurs when
underlying plans or drawings of the building or other copies of the
building design are distributed or made available to the general public
by sale or other transfer of ownership, or by rental, lease, or lending.
Construction of a building does not itself constitute publication for
purposes of registration, unless multiple copies are constructed.
(3) Registration limited to one architectural work. For published
and unpublished architectural works, an application may cover only one
architectural work. Multiple architectural works may not be registered
using one application. For works such as tract housing, one house model
constitutes one work, including all accompanying floor plan options,
elevations, and styles that are applicable to that particular model.
Where dual copyright claims exist in technical drawings and the
architectural work depicted in the drawings, any claims with respect to
the technical drawings and architectural work must be registered
separately.
(4) Online application. (i) The applicant must complete and submit
the Standard Application. The application should identify the title of
the building. If the architectural work was embodied in unpublished
plans or drawings on or before December 1, 1990, and if the building was
constructed before January 1, 2003, the application should also provide
the date that the construction was completed.
(ii) In an exceptional case, the Copyright Office may waive the
online filing requirement set forth in paragraph (c)(4)(i) of this
section, subject to such conditions as the Associate Register and
Director of the Office of Registration Policy and Practice may impose on
the applicant.
(5) Deposit requirements. (i) For designs of constructed or
unconstructed buildings, the applicant must submit one complete copy in
visually perceptible form of the most finished form of an architectural
drawing showing the overall form of the building (i.e., exterior
elevations of the building when viewed from the front, rear, and sides),
and any interior arrangements of spaces and/or design elements in which
copyright is claimed (i.e., walls or other permanent structures that
divide the interior into separate rooms and spaces). The deposit should
disclose the name(s) of the architect(s) and draftsperson(s) and the
building site, if known. For designs of constructed buildings, the
applicant also must submit identifying material in the form of
photographs complying with Sec.202.21, which clearly show several
exterior and interior views of the architectural work being registered.
(ii) The deposit may be submitted in any form that allows the
Copyright Office to access, perceive, and examine the entire
copyrightable content of the work being registered, including by
uploading the complete copy and identifying material in an acceptable
file format to the Office's electronic registration system. Deposits
uploaded to the electronic registration system will be considered solely
for the purpose of registration under section 408 of title 17 of the
United States Code, and will not satisfy the mandatory deposit
requirement under section 407 of title 17 of the United States Code.
(d) Works excluded. The following structures, features, or works
cannot be registered:
(1) Structures other than buildings. Structures other than
buildings, such as bridges, cloverleafs, dams, walkways, tents,
recreational vehicles, mobile homes, and boats.
[[Page 674]]
(2) Standard features. Standard configurations of spaces, and
individual standard features, such as windows, doors, and other staple
building components.
(3) Pre-December 1, 1990 building designs--(i) Published building
designs. The designs of buildings where the plans or drawings of the
building were published before December 1, 1990, or the buildings were
constructed or otherwise published before December 1, 1990.
(ii) Unpublished building designs. The designs of buildings that
were unconstructed and embodied in unpublished plans or drawings on
December 1, 1990, and remained unconstructed on December 31, 2002.
[57 FR 45310, Oct. 1, 1992, as amended at 68 FR 38630, June 30, 2003; 84
FR 16785, Apr. 23, 2019]
Sec.202.12 Restored copyrights.
(a) General. This section prescribes rules pertaining to the
registration of foreign copyright claims which have been restored to
copyright protection under section 104A of 17 U.S.C., as amended by the
Uruguay Round Agreements Act, Public Law 103-465.
(b) Definitions. (1) For the purposes of this section, restored work
and source country, have the definition given in 17 U.S.C. 104(A)(g)(6)
and (8) and Sec.201.33(b) of this chapter.
(2) Descriptive statement for a work embodied solely in machine-
readable format is a separate written statement giving the title of the
work, nature of the work (for example: computer program, database,
videogame, etc.), plus a brief description of the contents or subject
matter of the work.
(c) Registration--(1) Application. Applications for registration for
single works restored to copyright protection under the URAA should be
made on Form GATT. Copies of this form may be obtained from the Office's
website or by contacting the Public Information Office at (202) 707-
3000. Applicants should submit the completed application with the
appropriate filing fee and deposit copies and materials required by
paragraph (c)(3) of this section in the same package by mail or
electronically, in accordance with instructions for submission and
payment provided on the Office's website or Form GATT itself.
(2) Fee--(i) Amount. The filing fee for registering a copyright
claim in a restored work is prescribed in Sec.201.3(c).
(ii) Method of payment--(A) Checks, money orders, or bank drafts.
The Copyright Office will accept checks, money orders, or bank drafts
made payable to the U.S. Copyright Office. Remittances must be
redeemable without service or exchange fees through a United States
institution, must be payable in United States dollars, and must be
imprinted with American Banking Association routing numbers. In
addition, international money orders, and postal money orders that are
negotiable only at a post office are not acceptable. CURRENCY WILL NOT
BE ACCEPTED.
(B) Copyright Office Deposit Account. The Copyright Office maintains
a system of Deposit Accounts for the convenience of those who frequently
use its services. The system allows an individual or firm to establish a
Deposit Account in the Copyright Office and to make advance deposits
into that account. Deposit Account holders can charge copyright fees
against the balance in their accounts instead of sending separate
remittances with each request for service. For information on Deposit
Accounts, visit the Copyright Office website or write to the address
specified in Sec.201.1 of this chapter and request a copy of Circular
5.
(C) Credit cards. For GATT registrations the Copyright Office will
accept most major credit cards. Debit cards cannot be accepted for
payment. With the registration application, an applicant using a credit
card must submit a separate cover letter stating the name of the credit
card, the credit card number, the expiration date of the credit card,
the total amount authorized and a signature authorizing the Office to
charge the fees to the account. To protect the security of the credit
card number, the applicant must not write the credit card number on the
registration application.
(3) Deposit--(i) General. The deposit for a work registered as a
restored work under 17 U.S.C. 104A, except for those works listed in
paragraphs (c)(3)(ii) through (iv) of this section,
[[Page 675]]
should consist of one copy or phonorecord which best represents the
copyrightable content of the restored work. In descending order of
preference, the deposit should be:
(A) The work as first published;
(B) A reprint or re-release of the work as first published;
(C) A photocopy or identical reproduction of the work as first
published; or
(D) A revised version which includes a substantial amount of the
copyrightable content of the restored work with an indication in writing
of the percentage of the restored work appearing in the revision.
(ii) Previously registered works. No deposit is needed for works
previously registered in the Copyright Office.
(iii) Works embodied solely in machine-readable format. For works
embodied only in machine-readable formats, the deposit requirements are
as follows:
(A) One machine-readable copy and a descriptive statement of the
work; or
(B) Representative excerpts of the work, such as printouts; or, if
the claim extends to audiovisual elements in the work, a videotape of
what appears on the screen.
(iv) Pictorial, graphic and sculptural works. With the exception of
3-dimensional works of art, the general deposit preferences specified
under paragraph (c)(3)(i) of this section shall govern. For 3-
dimensional works of art, the preferred deposit is one or more
photographs of the work, preferably in color.
(v) Special relief. An applicant who is unable to submit any of the
preferred deposits may submit an alternative deposit under a grant of
special relief under Sec.202.20(d). In such a case, the applicant
should indicate in writing why the deposit preferences cannot be met,
and submit alternative identifying materials clearly showing some
portion of the copyrightable contents of the restored work which is the
subject of registration.
(vi) Motion pictures. If the deposit is a film print (16 or 35 mm),
the applicant should contact the Performing Arts Division of the
Registration Program for delivery instructions. The telephone number is:
(202) 707-6040; the fax number is: (202) 707-1236.
(d) Works excluded. Works which are not copyrightable subject matter
under title 17 of the U.S. Code, other than sound recordings fixed
before February 15, 1972, shall not be registered as restored works.
[60 FR 50422, Sept. 29, 1995, as amended at 64 FR 12902, Mar. 16, 1999;
64 FR 29522, June 1, 1999; 71 FR 31092, June 1, 2006; 72 FR 36888, July
6, 2007; 73 FR 37839, July 2, 2008; 78 FR 42875, July 18, 2013; 82 FR
9359, Feb. 6, 2017; 85 FR 19668, Apr. 8, 2020]
Sec.202.13 Secure tests.
(a) General. This section prescribes rules pertaining to the
registration of secure tests or a group of test items prepared for use
in a secure test.
(b) Definitions. For purposes of this section--
(1) A secure test is a nonmarketed test administered under
supervision at specified centers on scheduled dates, all copies of which
are accounted for and either destroyed or returned to restricted locked
storage or secure electronic storage following each administration. A
test otherwise meeting the requirements of this paragraph shall be
considered a secure test if it normally is administered at specified
centers but is being administered online during the national emergency
concerning the COVID-19 pandemic, provided the test administrator
employs measures to maintain the security and integrity of the test that
it reasonably determines to be substantially equivalent to the security
and integrity provided by in-person proctors.
(2) A test is nonmarketed if copies of the test are not sold, but
instead are distributed and used in such a manner that the test sponsor
or publisher retains ownership and control of the copies.
(3) A test is administered under supervision if test proctors or the
equivalent supervise the administration of the test.
(4) A specified center is a place where test takers are physically
assembled at the same time.
(5) A test item is comprised of a question (or ``stem''), the
correct answer to that question, any incorrect answer choices (or
``distractors''), and any associated material, such as a narrative
passage or diagram, and each item
[[Page 676]]
shall be considered one work. A single narrative, diagram, or other
prefatory material, followed by multiple sets of related questions and
correct or incorrect answers shall together be considered one item.
(c) Deposit requirements. Pursuant to the authority granted by 17
U.S.C. 408(c)(1), the Register of Copyrights has determined that a
secure test or a group of test items prepared for use in a secure test
may be registered with identifying material, and the filing and
examination fees required by Sec.201.3(c) and (d), if the following
conditions are met:
(1) The applicant must complete and submit a Standard Application.
The application may be submitted by any of the parties listed in Sec.
202.3(c)(1).
(2) In case of a secure test, the applicant must submit a redacted
copy of the entire test. In the case of a group of test items prepared
for use in a secure test, the applicant must submit a redacted copy of
each test item. In all cases the redacted copy must contain a sufficient
amount of visible content to reasonably identify the work(s). In
addition, the applicant must complete and submit the secure test
questionnaire that is posted on the Copyright Office's website. The
questionnaire and the redacted copy must be contained in separate
electronic files, and each file must be uploaded to the electronic
registration system in Portable Document Format (PDF). The Copyright
Office will review these materials to determine if the work(s) qualify
for an examination under secure conditions. If they appear to be
eligible, the Copyright Office will contact the applicant to schedule an
appointment to examine an unredacted copy of the work(s). The
examination may be conducted in-person or through remote access as
directed by the instructions provided on the Office's website.
(3) On the appointed date, the applicant must provide the following
materials to the Copyright Office:
(i) A copy of the completed application.
(ii) The appropriate examination fee, as required by Sec.201.3(d)
of this chapter.
(iii) A copy of the redacted version of the work(s) that was
uploaded to the electronic registration system.
(iv) A signed declaration confirming that the redacted copy
specified in paragraph (c)(3)(iii) of this section is identical to the
redacted copy that was uploaded to the electronic registration system.
(v) In the case of a secure test, the applicant must provide an
unredacted copy of the entire test. In the case of a group of test items
prepared for use in a secure test, the applicant must provide an
unredacted copy of all the test items. The applicant shall include the
following information in the metadata of an unredacted electronic file:
(A) The date of the examination; and
(B) The service request number generated by the electronic
registration system.
(4) The Copyright Office will examine the copies specified in
paragraphs (c)(3)(iii) and (v) of this section under secure conditions.
The Office will retain the signed declaration and the redacted copy that
was uploaded to the electronic registration system. If the examination
is conducted in-person, the Office will stamp the date of the
appointment on the copies and will return them to the applicant when the
examination is complete.
(d) Group registration requirements. The Copyright Office may
register a group of test items if the following conditions have been
met:
(1) All the test items must be prepared for use in a secure test,
and the name of the secure test must be identified in the title of the
group.
(2) The group may contain an unlimited amount of works, but the
applicant must identify the individual works included within the group
by numbering each test item in the deposit.
(3) The applicant must provide a title for the group as a whole, and
must append the term ``GRSTQ'' to the beginning of the title.
(4) The group must contain only unpublished works, or works
published within the same three-calendar-month period and the
application must identify the earliest date that the works were
published.
(5) All the works in the group must have the same author or authors,
and the copyright claimant for each work
[[Page 677]]
must be the same. Claims in the selection, coordination, or arrangement
of the group as a whole will not be permitted on the application. Each
item in the group must be separately copyrightable or must be excluded
from the group.
[82 FR 26854, June 12, 2017, as amended at 82 FR 52228, Nov. 13, 2017;
85 FR 27298, May 8, 2020; 86 FR 10177, Feb. 19, 2021]
Sec. Sec.202.14-202.15 [Reserved]
Sec.202.16 Preregistration of copyrights.
(a) General. This section prescribes rules pertaining to the
preregistration of copyright claims in works eligible for
preregistration under 17 U.S.C. 408(f).
(b) Definitions. For the purposes of this section--
(1) A work is in a class of works that the Register of Copyrights
has determined has had a history of infringement prior to authorized
commercial release if it falls within one of the following classes of
works:
(i) Motion pictures;
(ii) Sound recordings;
(iii) Musical compositions;
(iv) Literary works being prepared for publication in book form;
(v) Computer programs (including videogames); or
(vi) Advertising or marketing photographs.
(2) A work is being prepared for commercial distribution if:
(i) The claimant, in a statement certified by the authorized
preregistering party, has a reasonable expectation that the work will be
commercially distributed to the public; and
(ii) Preparation of the work has commenced and at least some portion
of the work has been fixed in a tangible medium of expression, as
follows:
(A) For a motion picture, filming of the motion picture must have
commenced;
(B) For a sound recording, recording of the sounds must have
commenced;
(C) For a musical composition, at least some of the musical
composition must have been fixed either in the form of musical notation
or in a copy or phonorecord embodying a performance of some or all of
the work;
(D) For a literary work being prepared for publication in book form,
the actual writing of the text of the work must have commenced;
(E) For a computer program, at least some of the computer code
(either source code or object code) must have been fixed; and
(F) For an advertising or marketing photograph, the photograph (or,
in the case of a group of photographs intended for simultaneous
publication, at least one of the photographs) must have been taken.
(3) A work eligible for preregistration is a work that is:
(i) Unpublished;
(ii) Being prepared for commercial distribution; and
(iii) In a class of works that the Register of Copyrights has
determined has had a history of infringement prior to authorized
commercial release.
(c) Preregistration--(1) General. A work eligible for
preregistration may be preregistered by submitting an application and
fee to the Copyright Office pursuant to the requirements set forth in
this section.
(2) Works excluded. Works that are not copyrightable subject matter
under title 17 of the U.S. Code may not be preregistered in the
Copyright Office.
(3) Application. An application for preregistration must be
submitted electronically on the Copyright Office website at: http://
www.copyright.gov.
(4) Unit of publication. For the purpose of preregistration on one
application and upon payment of one filing fee, all copyrightable
elements that are otherwise recognizable as self-contained works, that
are to be included and first published in the same unit of publication,
and in which the copyright claimant is the same, shall be considered one
work eligible for preregistration.
(5) Fee--(i) Amount. The filing fee for preregistration is
prescribed in Sec.201.3(c).
(ii) Method of payment--(A) Copyright Office deposit account. The
Copyright Office maintains a system of Deposit Accounts for the
convenience of those who frequently use its services and for those who
file applications electronically. The system allows an individual or
firm to establish a Deposit Account
[[Page 678]]
in the Copyright Office and to make advance deposits in that account.
Deposit Account holders can charge preregistration fees against the
balance in their accounts instead of using credit cards for each request
of service. For information on Deposit Accounts, please download a copy
of Circular 5, ``How to Open and Maintain a Deposit Account in the
Copyright Office,'' or write the Register of Copyrights, Copyright
Office, Library of Congress, Washington, D.C. 20559.
(B) Credit cards, debit cards and electronic funds transfer. The
online preregistration filing system will provide options for payment by
means of credit or debit cards and by means of electronic funds
transfers. Applicants will be redirected to the Department of Treasury's
Pay.gov website to make payments with credit or debit cards, or directly
from their bank accounts by means of ACH debit transactions.
(C) No refunds. The preregistration filing fee is not refundable.
(6) Description. No deposit of the work being preregistered should
be submitted with an application for preregistration. The
preregistration applicant should submit a detailed description, of not
more than 2,000 characters (approximately 330 words), of the work as
part of the application. The description should be based on information
available at the time of the application sufficient to reasonably
identify the work. Generally, the Copyright Office will not review
descriptions for adequacy, but in an action for infringement of a
preregistered work, the court may evaluate the adequacy of the
description to determine whether the preregistration actually describes
the work that is alleged to be infringed, taking into account the
information available to the applicant at the time of preregistration
and taking into account the legitimate interest of the applicant in
protecting confidential information.
(i) For motion pictures, the identifying description should include
the following information to the extent known at the time of filing: The
subject matter, a summary or outline, the director, the primary actors,
the principal location of filming, and any other information that would
assist in identifying the particular work being preregistered.
(ii) For sound recordings, the identifying description should
include the following information to the extent known at the time of
filing: the subject matter of the work or works recorded, the performer
or performing group, the genre of the work recorded (e.g., classical,
pop, musical comedy, soft rock, heavy metal, gospel, rap, hip-hop,
blues, jazz), the titles of the musical compositions being recorded, the
principal recording location, the composer(s) of the recorded musical
compositions embodied on the sound recording, and any other information
that would assist in identifying the particular work being
preregistered.
(iii) For musical compositions, the identifying description should
include the following information to the extent known at the time of
filing: The subject matter of the lyrics, if any; the genre of the work
(e.g., classical, pop, musical comedy, soft rock, heavy metal, gospel,
rap, hip-hop, blues, jazz); the performer, principal recording location,
record label, motion picture, or other information relating to any sound
recordings or motion pictures that are being prepared for commercial
distribution and will include the musical composition; and any other
detail or characteristic that may assist in identifying the particular
musical composition.
(iv) For literary works in book form, the identifying description
should include to the extent known at the time of filing: The genre of
the book (e.g., biography, novel, history, etc.), and should include a
brief summary of the work including, the subject matter (e.g., a
biography of President Bush, a history of the war in Iraq, a fantasy
noven( � a description (where applicable) of the plot, primary
characters, events, or other key elements of the content of the work;
and any other salient characteristics of the book (e.g., whether it is a
later edition or revision of a previous work, as well as any other
detail which may assist in identifying the literary work in book form).
(v) For computer programs (including videogames), the identifying
description should include to the extent
[[Page 679]]
known at the time of filing: The nature, purpose and function of the
computer program, including the programming language in which it is
written and any particular organization or structure in which the
program has been created; the form in which it is expected to be
published (e.g., as an online-only product; whether there have been
previous versions and identification of such previous versions); the
identities of persons involved in the creation of the computer program;
and, if the work is a videogame, also the subject matter of the
videogame and the overall object, goal, or purpose of the game, its
characters, if any, and the general setting and surrounding found in the
game.
(vi) For advertising or marketing photographs, the description
should include the subject matter depicted in the photograph or
photographs, including information such as the particular product,
event, public figure, or other item or occurrence which the photograph
is intended to advertise or market. To the extent possible and
applicable, the description for photographs should give additional
details which will assist in identifying the particular photographs,
such as the party for whom such advertising photographs are taken; the
approximate time periods during which the photographs are taken; the
approximate number of photos which may be included in the grouping; any
events associated with the photographs; and the location and physical
setting or surrounding depicted in the photographs. The description may
also explain the general presentation (e.g., the lighting, background
scenery, positioning of elements of the subject matter as it is seen in
the photographs), and should provide any locations and events, if
applicable, associated with the photographs.
(7) Review of preregistration information. The Copyright Office will
conduct a limited review of applications for preregistration, in order
to ascertain whether the application describes a work that is in a class
of works that the Register of Copyrights has determined has had a
history of infringement prior to authorized commercial release. However,
a work will not be preregistered unless an applicant has provided all of
the information requested on the application and has certified that all
of the information provided on the application is correct to the best of
the applicant's knowledge.
(8) Certification. The person submitting an application for
preregistration must certify on the application that he or she is the
author, copyright claimant, or owner of exclusive rights, or the
authorized agent of the author, copyright claimant, or owner of
exclusive rights, of the work submitted for this preregistration; that
the information given in this application is correct to the best of his
or her knowledge; that the work is being prepared for commercial
distribution; and that he or she has a reasonable expectation that the
work will be commercially distributed to the public.
(9) Effective date of preregistration. The effective date of a
preregistration is the day on which an application and fee for
preregistration of a work, which the Copyright Office later notifies the
claimant has been preregistered or which a court of competent
jurisdiction has concluded was acceptable for preregistration, have been
received in the Copyright Office.
(10) Notification of preregistration. Upon completion of the
preregistration, the Copyright Office will email an official
notification of the preregistration to the person who submitted the
application.
(11) Certification of preregistration. A certified copy of the
official notification may be obtained in physical form from the Records
Research and Certification Section of the Office of Public Information
and Education at the address specified in Sec.201.1 of this chapter.
(12) Public record of preregistration. The preregistration record
also will be made available to the public on the Copyright Office
website at: http://www.copyright.gov.
(13) Effect of preregistration. Preregistration of a work offers
certain advantages to a copyright owner pursuant to 17 U.S.C. 408(f),
411 and 412. However, preregistration of a work does not constitute
prima facie evidence of the validity of the copyright or of the facts
stated in the application for preregistration or in the preregistration
record. The fact that a
[[Page 680]]
work has been preregistered does not create any presumption that the
Copyright Office will register the work upon submission of an
application for registration.
(14) Petition for recognition of a new class of works. At any time
an interested party may petition the Register of Copyrights for a
determination as to whether a particular class of works has had a
history of copyright infringement prior to authorized release that would
justify inclusion of that class of works among the classes of works
eligible for preregistration.
[70 FR 61906, Oct. 27, 2005, as amended at 71 FR 31092, June 1, 2006; 73
FR 37839, July 2, 2008; 78 FR 42875, July 18, 2013; 82 FR 9360, Feb. 6,
2017; 83 FR 66629, Dec. 27, 2018]
Sec.202.17 Renewals.
(a) General. (1) This section concerns renewal for copyrights
originally secured from January 1, 1964, through December 31, 1977,
either by publication with the required copyright notice or by
registration as an unpublished work. Renewal registration for these
works is optional. As provided in Pub. L. No. 102-307, 106 Stat. 264,
enacted June 26, 1992, renewal registration made during the last year of
the original 28-year term of copyright differs in legal effect from
renewal registration made during the 67-year extended renewal term. In
the latter instance, the copyright is renewed automatically at the
expiration of the original 28-year term. In the former instance, renewal
by registration during the last year of the original 28-year term vested
the renewal copyright in the statutory claimant living on the date of
registration.
(2) Works for which copyright was secured before 1964 are governed
by the provisions of 17 U.S.C. 304(a) in effect prior to the 1992 date
of enactment of Pub. L. No. 102-307. The copyrights in such works could
have been renewed by registration only within the last calendar year of
the original 28-year term of copyright protection. If renewal
registration was not made during that period of time, copyright
protection was lost when the original term of copyright expired and
cannot be regained.
(3) Works restored to copyright by the Uruguay Round Agreements Act
are governed in their copyright term of protection by Pub. L. No. 103-
465, 108 Stat. 4809, 4976 (December 8, 1994). Under 17 U.S.C.
104A(a)(1)(A) and (B), as amended, any work in which copyright is
restored subsists for the remainder of the term of copyright that the
work would have been otherwise granted in the United States. Such term
includes the remainder of any applicable renewal term.
(4) Automatic restoration of copyright in certain foreign works that
were in the public domain in the United States may have occurred under
the Uruguay Round Agreements Act and may be protected by copyright or
neighboring rights in their ``source country,'' as defined at 17 U.S.C.
104A(h)(8).
(b) Definitions. (1) For purposes of this section, the terms
assignee and successor, as they pertain to 17 U.S.C. 304(a)(3)(A)(ii),
refer to a party which has acquired the renewal copyright in a work by
assignment or by other means of legal succession from the statutory
claimant (as that claimant is defined in 17 U.S.C. 304(a)(1)(B) and (C))
in whom the renewal copyright vested but in whose name no renewal
registration was previously made.
(2) For purposes of this section, a work has been copyrighted when
it has been published with a proper copyright notice or, in the case of
an unpublished work, when it has been registered for copyright.
(3) For purposes of this section, the term posthumous work means a
work that was unpublished on the date of the death of the author and
with respect to which no copyright assignment or other contract for
exploitation of the work occurred during the author's lifetime.
(4) For purposes of this section, the term statutory claimant means:
(i) A party who was entitled to claim copyright for the renewal term
at the time renewal registration was made either as a proprietary
claimant, 17 U.S.C. 304(a)(2)(A)(i), or as a personal claimant, 17
U.S.C. 304(a)(2)(B)(i), if registration was made during the original
term of copyright; or
(ii) If the original copyright term expired, a party who was
entitled to claim copyright for the renewal term
[[Page 681]]
as of the last day of the original term of copyright as either a
proprietary or a personal claimant, 17 U.S.C. 304(a)(2)(A)(ii) and
(a)(2)(B)(ii).
(5) For purposes of this section, the term to vest means to give a
fixed, non-contingent right of present or future enjoyment of the
renewal copyright in a work. If renewal registration was made during the
28th year of the original term of copyright, the renewal copyright
vested in the party or parties entitled to claim such copyright at the
time of registration as provided by 17 U.S.C. 304(a)(1)(B) and (C).
Although the vested right may have been determined by registration
during the 28th year of the original term, the exercise of such right
did not commence until the beginning of the renewal term, as provided in
17 U.S.C. 304(a)(2). If renewal registration was not made during the
28th year, the renewal copyright automatically vested upon the beginning
of the renewal term in the party or parties entitled to claim such
copyright on the last day of the original term as provided by 17 U.S.C.
304(a)(2)(A)(ii) and (B)(ii).
(c) Time limits: original term and renewal term registration. (1)
Under 17 U.S.C. 304(a), prior to its amendment of June 26, 1992, a
registration for the original term of copyright must have been made
during the 28 years of that original term, and a renewal registration
must also have been made during the 28th year of that term. Pub. L. No.
102-307, 106 Stat. 264 (June 26, 1992) amended section 304(a) for works
originally copyrighted from January 1, 1964, through December 31, 1977,
and provided for optional original-term registration and optional
renewal registration. 17 U.S.C. 304(a)(2), (a)(3) and 409(11). For such
works, claims to renewal copyright could have been registered during the
last year of the original term but such registration was not required in
order to enjoy statutory protection during the renewal term. 17 U.S.C.
304(a)(3)(B).
(2) A renewal registration can be made at any time during the
renewal term. 17 U.S.C. 304(a)(3)(A)(ii). If no original-term
registration was made, renewal registration remains possible; but the
Register may request information, under 17 U.S.C. 409(10), regarding the
original term of copyright. Such information must demonstrate that the
work complies with all requirements of the 1909 Act with respect to the
existence, ownership, or duration of the copyright for the original term
of the work. The Form RE/Addendum is used to provide this information.
(3) Renewal registration is currently available for works
copyrighted from January 1, 1964, through December 31, 1977. Under the
provisions of 17 U.S.C. 304(a)(3)(A)(ii), renewal registration may be
made any time during the 67-year renewal term for such works according
to the procedure indicated in paragraph (h) of this section. Such
renewal registration is optional and is not a condition of the
subsistence of the copyright for the 67-year renewal term. 17 U.S.C.
304(a)(3)(B). In the case of such works for which no registration was
made during the original term of copyright, renewal registration may be
made by submission of a Form RE/Addendum. The Addendum, an adjunct to
the renewal form, concerns the facts of first publication for a work and
assures the Copyright Office that the work as it existed in its original
term of copyright was in compliance with the 1909 copyright law, 17
U.S.C. 1, et. seq. (1909 Act, in effect through December 31, 1977),
whose provisions govern such works.
(d) Benefits of 28th-year renewal registration. Prior to January 1,
2006, renewal registration was available during the 28th year of the
original term of copyright for works copyrighted from January 1, 1964,
through December 31, 1977. As provided in Pub. L. No. 102-307, 106 Stat.
264, registration made during the 28th year of the original term of
copyright provided the following benefits to the registrant:
(1) The certificate of registration constituted prima facie evidence
as to the validity of the copyright during its renewal term and of the
facts stated in the certificate. 17 U.S.C. 304(a)(4)(B).
(2) A derivative work prepared under the authority of a grant of a
transfer or license of copyright in a work made before the expiration of
the original term of copyright could not continue to be
[[Page 682]]
used under the terms of the grant during the renewal term without the
authority of the owner of the renewal copyright. 17 U.S.C. 304(a)(4)(A).
(3) The renewal copyright vested upon the beginning of the renewal
term in the party entitled to claim the renewal of copyright at the time
the application was made as provided under 17 U.S.C. 304(a)(2)(A)(i) and
(B)(i).
(e) Statutory parties entitled to claim copyright for the renewal
term under section 304(a). (1) Renewal claims must be registered in the
name of the party or parties entitled to claim copyright for the renewal
term as provided in paragraphs (e)(2) through (4) of this section and as
specified in 17 U.S.C. 304(a). If a work was a new version of a
previously published or registered work, renewal registration may be
claimed only in the new matter.
(2) If the renewal claim was submitted during the last, i.e., the
28th, year of the original term of copyright, the claim had to be
registered in the name(s) of the statutory claimant(s) entitled to claim
the renewal copyright on the date on which the claim was submitted to
the Copyright Office. If the renewal claim is submitted during the 67-
year extended renewal term, the renewal claim can be registered only in
the name(s) of the statutory claimant(s) entitled to claim the renewal
on the last day (December 31) of the original term of copyright. These
eligible renewal claimants are listed below:
(i) The person who, on the applicable day, was the copyright
proprietor is the appropriate renewal claimant in any posthumous work or
any periodical, encyclopedia, or other composite work upon which the
copyright was originally secured by the proprietor;
(ii) The person who, on the applicable day, was the copyright
proprietor is the appropriate claimant in any work copyrighted by a
corporate body (otherwise than as assignees or licensees of the
individual author), or by an employer for whom such work was made for
hire;
(iii) For any other copyrighted work, including a contribution by an
individual author to a periodical or to a cyclopedic or other composite
work, the appropriate claimants, in descending order of eligibility, are
the person who, on the applicable day, was:
(A) The author(s) of the work, if still living;
(B) The widow(er) and/or child(ren) of the author, if the author was
deceased on the applicable day;
(C) The author's executor(s), if still acting in that capacity on
the applicable day, provided the author had a will and neither the
author, nor any widow(er) or child of the author is still living; or
(D) The author's next of kin, in the absence of a will and if
neither the author nor any widow, widower or child of the author is
living.
(3) The provisions of paragraphs (e)(1) and (2) of this section are
subject to the following qualification: Notwithstanding the definition
of ``posthumous work'' in paragraph (b)(3) of this section, a renewal
claim may be registered in the name of the proprietor of a work, as well
as in the name of the appropriate claimant under paragraph (e)(2)(iii)
of this section, in any case in which a contract for exploitation of the
work but no copyright assignment in the work has occurred during the
author's lifetime. However, registration by the Copyright Office in this
case should not be interpreted as evidencing the validity of either
claim.
(4) The provisions of paragraphs (e)(2)(iii)(C) and (D) of this
section are subject to the following qualifications:
(i) In any case where:
(A) The author has left a will which names no executor;
(B) The author has left a will which names an executor who cannot or
will not serve in that capacity; or
(C) The author has left a will which names an executor who has been
discharged upon settlement of the estate, removed before the estate has
been completely administered, or is deceased at the time of the renewal
registration submission, the renewal claim may be registered either in
the name of an administrator cum testamento annexo (administrator
c.t.a.) or an administrator de bonis non cum testamento annexo
(administrator d.b.n.c.t.a.) so appointed by a court of competent
jurisdiction.
(ii) In any case described in paragraph (e) of this section, except
in the
[[Page 683]]
case where the author has left a will without naming an executor and a
court-appointed administrator c.t.a. or administrator d.b.n.c.t.a. is in
existence at the time of renewal registration, the renewal claim also
may be registered in the name of the author's next of kin. However,
registration by the Copyright Office of conflicting renewal claims in
such a case should not be interpreted as evidencing the validity of
either claim.
(f) Successors/assignees entitled to file an application for the
renewal term under Section 304(a). The provisions of paragraph (e) of
this section are subject to the following qualifications:
(1) Where no renewal registration has been made in the name of a
person or entity identified in paragraphs (e)(2)(i), (ii) and (iii) of
this section, a renewal application may be filed at any time during the
renewal term by any successor or assignee of such person or entity.
(2) In such cases described in paragraph (f)(1) of this section, the
renewal application must identify the party in whom the renewal
copyright vested; must indicate the basis upon which copyright for the
renewal term vested in that party; must identify the party who is the
successor or assignee of the statutory claimant under 17 U.S.C.
304(a)(3); and, must give the manner by which such successor/assignee
secured the renewal copyright.
(3) When such a claim has been filed by a successor or assignee in
the name of the statutory claimant as described in paragraph (e)(2)(i),
(ii) and (iii) of this section, generally no subsequent claims may be
filed by other successors or assignees whose rights are derived from the
same statutory claimant. If a public record of renewal ownership is
sought by other successors or assignees of the same statutory claimant,
the document of transfer of the renewal copyright, either the renewal in
its entirety or in part, may be recorded in the Copyright Office.
(4) Where a successor or assignee claims the renewal right from the
same statutory claimant as does another successor or assignee, the
Copyright Office may inquire concerning the situation and, if
appropriate, may allow adverse renewal claims from the successors/
assignees to be placed on the public record. In such cases,
correspondence between the parties filing competing renewal claims and
the Copyright Office will be, as always, maintained within Office
records and subject to public inspection according to regulations found
at 37 CFR 201.2.
(g) Application for renewal registration for a work registered in
its original 28-year term. (1) Each application for renewal registration
shall be submitted on Form RE. All forms are available free of charge
via the Internet by accessing the Copyright Office website at: http://
www.copyright.gov. Copies of Form RE are also available free upon
request. Requests should be sent in the manner prescribed in Sec.
201.1(b) of this chapter.
(2)(i) An application for renewal registration may be submitted by
any eligible statutory renewal claimant as specified in paragraph (e) of
this section or by the duly authorized agent of such claimant, or by the
successor or assignee of such claimant as provided under paragraph (f)
of this section or by the duly authorized agent of such successor or
assignee.
(ii) An application for renewal registration shall be accompanied by
the required fee as set forth in 37 CFR 201.3. The application shall
contain the information required by the form and its accompanying
instructions, and shall include a certification. The certification shall
consist of:
(A) A designation of whether the applicant is the renewal claimant,
or a successor or assignee, or the duly authorized agent of such
claimant or of such successor or assignee (whose identity shall also be
given);
(B) The typed, printed, or handwritten signature of such claimant,
successor or assignee, or agent, accompanied by the typed or printed
name of that person if the signature is handwritten;
(C) A declaration that the statements made in the application are
correct to the best of that person's knowledge; and
(D) The date of certification.
(3) Once a renewal registration has been made, the Copyright Office
will
[[Page 684]]
not accept another application for renewal registration on behalf of the
same renewal claimant.
(h) Renewal with addendum registration for an unregistered work--(1)
General. For published works copyrighted from January 1, 1964, through
December 31, 1977, where no registration was made during the original
term of copyright and where renewal registration is sought during the
67-year renewal term, the Form RE/Addendum must be used to provide
information concerning the original term of copyright. The Form RE/
Addendum requires a separate fee and the deposit of one copy or
phonorecord of the work as first published (or identifying material in
lieu of a copy or phonorecord). The effective date of registration for a
renewal claim submitted on a Form RE/Addendum is the date the Copyright
Office receives an acceptable completed application, the required fees,
and an acceptable deposit for the work.
(2) Time Limits. A renewal claim accompanied by an Addendum to Form
RE may be filed at any time during the 67-year renewal term.
(3) Content. The Form RE/Addendum must contain the following
information:
(i) The title of the work;
(ii) The name of the author(s);
(iii) The date of first publication of the work;
(iv) The nation of first publication of the work;
(v) The citizenship of the author(s) on the date of first
publication of the work;
(vi) The domicile of the author(s) on the date of first publication
of the work;
(vii) An averment that, at the time of first publication, and
thereafter until March 1, 1989 (effective date of the Berne
Implementation Act of 1988), all the copies or phonorecords of the work,
including reprints of the work, published, i.e., publicly distributed in
the United States or elsewhere, under the authority of the author or
other copyright proprietor, bore the copyright notice required by the
Copyright Act of 1909 and that United States copyright subsists in the
work;
(viii) For works of United States origin which were subject to the
manufacturing provisions of section 16 of the Copyright Act of 1909 as
it existed at the time the work was published, the Form RE/Addendum must
also contain information about the country of manufacture and the
manufacturing processes; and
(ix) The handwritten signature of the renewal claimant or successor
or assignee, or the duly authorized agent of the claimant or of the
successor or assignee. The signature shall be accompanied by the printed
or typewritten name of the person signing the Addendum and by the date
of the signature; and shall be immediately preceded by a declaration
that the statements made in the application are correct to the best of
that person's knowledge.
(4) Fees. Form RE and Form RE/Addendum must be accompanied by the
required fee for each form as required in 37 CFR 201.3.
(5) Deposit requirement. One copy or phonorecord or identifying
material of the work as first published in accordance with the deposit
requirements set out in 37 CFR 202.20 and 202.21 is required.
(6) Waiver of the deposit requirement. Where the renewal applicant
asserts that it is either impossible or otherwise an undue hardship to
satisfy the deposit requirements of 37 CFR 202.20 and 202.21, the
Copyright Office, at its discretion, may, upon receipt of an acceptable
explanation of the inability to submit such copy or identifying
material, permit the deposit of the following in descending order of
preference. In every case, however, proof of the copyright notice
showing the content and location of the notice as it appeared on copies
or phonorecords of the work as first published must be included.
(i) A reproduction of the entire work as first published (e.g.,
photocopy, videotape, audiotape, CD-ROM, DVD are examples of physical
media which may hold reproductions of a work as first published). If the
work is a contribution to a periodical, a reproduction of only the
contribution (including the relevant copyright notice) will suffice.
(ii) A reprint of the work (e.g., a later edition, a later release
of a phonorecord, or the like). The reprint must
[[Page 685]]
show the copyright notice as it appeared in the same location within the
first published copy of the work as well as the exact content of the
copyright notice appearing in the first published edition. If the
copyrightable content of the reprint differs from that of the first
published edition, an explanation of the differences between the two
editions is required.
(iii) Identifying material including a reproduction of the greatest
feasible portion of the copyrightable content of a work including a
photocopy or photograph of the title page, title screen, record label or
the like, as first published, and a photocopy or photograph showing the
copyright notice content and location as first published. The Copyright
Office may request deposit of additional material if the initial
submission is inadequate for examination purposes.
[72 FR 61803, Nov. 1, 2007, as amended at 73 FR 37839, July 2, 2008; 78
FR 42875, July 18, 2013; 82 FR 9360, Feb. 6, 2017; 83 FR 66629, Dec. 27,
2018; 85 FR 19668, Apr. 8, 2020]
Sec.202.18 Access to electronic works.
(a) Access to electronic works received under Sec.202.4(e) and
Sec.202.19, and transferred into the Library of Congress's
collections, will be available only to authorized users at Library of
Congress premises in accordance with the policies listed below. Library
staff may access such content off-site as part of their assigned duties
via a secure connection.
(b) Access to each individual electronic work received under Sec.
202.4(e) and Sec.202.19 will be limited, at any one time, to two
Library of Congress authorized users via a secure server over a secure
network that serves Library of Congress premises.
(c) The Library of Congress will not make electronic works received
under Sec.202.4(e) and Sec.202.19 available to the public over the
internet without rightsholders' permissions.
(d) ``Authorized user'' means Library of Congress staff,
contractors, and registered researchers, and Members, staff and officers
of the U.S. House of Representatives and the U.S. Senate for the
purposes of this section.
(e) ``Library of Congress premises'' means all Library of Congress
premises in Washington, DC, and the Library of Congress Packard Campus
for Audio-Visual Conservation in Culpeper, VA.
(f) Except as provided under special relief agreements entered into
pursuant to Sec.202.19(e) or Sec.202.20(d), electronic works will be
transferred to the Library of Congress for its collections and made
available only under the conditions specified by this section.
[83 FR 4147, Jan. 30, 2018, as amended at 85 FR 71837, Nov. 12, 2020]
Sec.202.19 Deposit of published copies or phonorecords for the
Library of Congress.
(a) General. This section prescribes rules pertaining to the deposit
of copies and phonorecords of published works for the Library of
Congress under section 407 of title 17 of the United States Code. The
provisions of this section are not applicable to the deposit of copies
and phonorecords for purposes of copyright registration under section
408 of title 17, except as expressly adopted in Sec.202.20.
(b) Definitions. For the purposes of this section:
(1)(i) The best edition of a work is the edition, published in the
United States at any time before the date of deposit, that the Library
of Congress determines to be most suitable for its purposes. The ``best
edition'' requirement is described in detail at Appendix B to this part.
(ii) Criteria for selection of the ``best edition'' from among two
or more published editions of the same version of the same work are set
forth in the statement entitled ``Best Edition of Published Copyrighted
Works for the Collections of the Library of Congress'' (hereafter
referred to as the ``Best Edition Statement'') in effect at the time of
deposit.
(iii) Where no specific criteria for the selection of the ``best
edition'' are established in the Best Edition Statement, that edition
which, in the judgment of the Library of Congress, represents the
highest quality for its purposes shall be considered the ``best
edition.'' In such cases:
(A) When the Copyright Office is aware that two or more editions of
a work have been published it will consult with other appropriate
officials of
[[Page 686]]
the Library of Congress to obtain instructions as to the ``best
edition'' and (except in cases for which special relief is granted) will
require deposit of that edition; and
(B) When a potential depositor is uncertain which of two or more
published editions comprises the ``best edition'', inquiry should be
made to the Copyright Acquisitions Division.
(iv) Where differences between two or more ``editions'' of a work
represent variations in copyrightable content, each edition is
considered a separate version, and hence a different work, for the
purpose of this section, and criteria of ``best edition'' based on such
differences do not apply.
(2) A complete copy includes all elements comprising the unit of
publication of the best edition of the work, including elements that, if
considered separately, would not be copyrightable subject matter or
would otherwise be exempt from the mandatory deposit requirement under
paragraph (c) of this section.
(i) In the case of sound recordings, a ``complete'' phonorecord
includes the phonorecord, together with any printed or other visually
perceptible material published with such phonorecord (such as textual or
pictorial matter appearing on record sleeves or album covers, or
embodied in leaflets or booklets included in a sleeve, album, or other
container).
(ii) In the case of a musical composition published in copies only,
or in both copies and phonorecords:
(A) If the only publication of copies in the United States took
place by the rental, lease, or lending of a full score and parts, a full
score is a ``complete'' copy; and
(B) If the only publication of copies in the United States took
place by the rental, lease, or lending of a conductor's score and parts,
a conductor's score is a ``complete'' copy.
(iii) In the case of a motion picture, a copy is ``complete'' if the
reproduction of all of the visual and aural elements comprising the
copyrightable subject matter in the work is clean, undamaged,
undeteriorated, and free of splices, and if the copy itself and its
physical housing are free of any defects that would interfere with the
performance of the work or that would cause mechanical, visual, or
audible defects or distortions.
(iv) In the case of an electronic work published in the United
States and available only online, a copy is ``complete'' if it includes
all elements constituting the work in its published form, i.e., the
complete work as published, including metadata and formatting codes
otherwise exempt from mandatory deposit.
(3) The terms architectural works, copies, collective work, device,
fixed, literary work, machine, motion picture, phonorecord, publication,
sound recording, useful article, and their variant forms, have the
meanings given to them in 17 U.S.C. 101.
(4) For purposes of paragraph (c)(5) of this section:
(i) An electronic-only serial is a serial as defined in Sec.
202.3(b)(1)(v) that is published in electronic form in the United States
and available only online.
(ii) An electronic-only book is an electronic literary work
published in one volume or a finite number of volumes published in the
United States and available only online. This class excludes literary
works distributed solely in phonorecords (e.g., audiobooks), serials (as
defined in Sec.202.3(b)(1)(v)), computer programs, websites, blogs,
emails, and short online literary works such as social media posts.
(iii) A work shall be deemed to be available only online even if
copies have been made available to individual consumers or other end
users to print on demand, so long as the work is otherwise available
only online. A work also shall be deemed to be available only online
even if copies have been loaded onto electronic devices, such as tablets
or e-readers, in advance of sale to individual consumers, so long as the
work is otherwise available only online.
(5) The term literary monograph means a literary work published in
one volume or a finite number of volumes. This category does not include
serials, nor does it include legal publications that are published in
one volume or a finite number of volumes that contain legislative
enactments, judicial decisions, or other edicts of government.
[[Page 687]]
(c) Exemptions from deposit requirements. The following categories
of material are exempt from the deposit requirements of section 407(a)
of title 17:
(1) Diagrams and models illustrating scientific or technical works
or formulating scientific or technical information in linear or three-
dimensional form, such as an architectural or engineering blueprint,
plan, or design, a mechanical drawing, or an anatomical model.
(2) Greeting cards, picture postcards, and stationery.
(3) Lectures, sermons, speeches, and addresses when published
individually and not as a collection of the works of one or more
authors.
(4) Literary, dramatic, and musical works published only as embodied
in phonorecords. This category does not exempt the owner of copyright,
or of the exclusive right of publication, in a sound recording resulting
from the fixation of such works in a phonorecord from the applicable
deposit requirements for the sound recording.
(5) Electronic works published in the United States and available
only online. This exemption includes electronic-only books and
electronic serials available only online only until such time as a
demand is issued by the Copyright Office under the regulations set forth
in Sec.202.24. This exemption does not apply to works that are
published in both online, electronic formats and in physical formats,
which remain subject to the appropriate mandatory deposit requirements.
(6) Three-dimensional sculptural works, and any works published only
as reproduced in or on jewelry, dolls, toys, games, plaques, floor
coverings, wallpaper and similar commercial wall coverings, textiles and
other fabrics, packaging material, or any useful article. Globes, relief
models, and similar cartographic representations of area are not within
this category and are subject to the applicable deposit requirements.
(7) Prints, labels, and other advertising matter, including
catalogs, published in connection with the rental lease, lending,
licensing, or sale of articles of merchandise, works of authorship, or
services.
(8) Tests, and answer material for tests when published separately
from other literary works.
(9) Works first published as individual contributions to collective
works. This category does not exempt the owner of copyright, or of the
exclusive right of publication, in the collective work as a whole, from
the applicable deposit requirements for the collective work.
(10) Works first published outside the United States and later
published in the United States without change in copyrightable content,
if:
(i) Registration for the work was made under 17 U.S.C. 408 before
the work was published in the United States; or
(ii) Registration for the work was made under 17 U.S.C. 408 after
the work was published in the United States but before a demand for
deposit is made under 17 U.S.C. 407(d).
(11) Works published only as embodied in a soundtrack that is an
integral part of a motion picture. This category does not exempt the
owner of copyright, or of the exclusive right of publication, in the
motion picture, from the applicable deposit requirements for the motion
picture.
(12) Motion pictures that consist of television transmission
programs and that have been published, if at all, only by reason of a
license or other grant to a nonprofit institution of the right to make a
fixation of such programs directly from a transmission to the public,
with or without the right to make further uses of such fixations.
(d) Nature of required deposit. (1) Subject to the provisions of
paragraph (d)(2) of this section, the deposit required to satisfy the
provisions of section 407(a) of title 17 shall consist of:
(i) In the case of published works other than sound recordings, two
complete copies of the best edition; and
(ii) In the case of published sound recordings, two complete
phonorecords of the best edition.
(2) In the case of certain published works not exempt from deposit
requirements under paragraph (c) of this section, the following special
provisions shall apply:
[[Page 688]]
(i) In the case of published three-dimensional cartographic
representations of area, such as globes and relief models, the deposit
of one complete copy of the best edition of the work will suffice in
lieu of the two copies required by paragraph (d)(1) of this section.
(ii) In the case of published motion pictures, the deposit of one
complete copy of the best edition of the work will suffice in lieu of
the two copies required by paragraph (d)(1) of this section. Any deposit
of a published motion picture must be accompanied by a separate
description of its contents, such as a continuity, pressbook, or
synopsis. The Library of Congress may, at its sole discretion, enter
into an agreement permitting the return of copies of published motion
pictures to the depositor under certain conditions and establishing
certain rights and obligations of the Library with respect to such
copies. In the event of termination of such an agreement by the Library
it shall not be subject to reinstatement, nor shall the depositor or any
successor in interest of the depositor be entitled to any similar or
subsequent agreement with the Library, unless at the sole discretion of
the Library it would be in the best interests of the Library to
reinstate the agreement or enter into a new agreement.
(iii) In the case of any published work deposited in the form of a
hologram, the deposit shall be accompanied by:
(A) Two sets of precise instructions for displaying the image fixed
in the hologram; and
(B) Two sets of identifying material in compliance with Sec.202.21
and clearly showing the displayed image.
(iv) In any case where an individual author is the owner of
copyright in a published pictorial or graphic work and:
(A) Less than five copies of the work have been published; or
(B) The work has been published and sold or offered for sale in a
limited edition consisting of no more than three hundred numbered
copies, the deposit of one complete copy of the best edition of the work
or, alternatively, the deposit of photographs or other identifying
material in compliance with Sec.202.21, will suffice in lieu of the
two copies required by paragraph (d)(1) of this section.
(v) In the case of a musical composition published solely in copies,
or in both copies and phonorecords, the deposit of one complete copy of
the best edition will suffice in lieu of the two copies required by
paragraph (d)(1) of this section.
(vi) In the case of published multimedia kits that include literary
works, audiovisual works, sound recordings, or any combination of such
works, the deposit of one complete copy of the best edition will suffice
in lieu of the two copies required by paragraph (d)(1) of this section.
(vii) In the case of published computer programs and published
computerized information works, such as statistical compendia, serials,
and reference works that are not copy-protected, the deposit of one
complete copy of the best edition as specified in the current Library of
Congress Best Edition Statement will suffice in lieu of the two copies
required by paragraph (d)(1) of this section. If the works are copy-
protected, two copies of the best edition are required.
(viii) In the case of published architectural works, the deposit
shall consist of the most finished form of presentation drawings in the
following descending order of preference:
(A) Original format, or best quality form of reproduction, including
offset or silk screen printing;
(B) Xerographic or photographic copies on good quality paper;
(C) Positive photostat or photodirect positive;
(D) Blue line copies (diazo or ozalid process). If photographs are
submitted, they should be 8 x 10 inches and should clearly show several
exterior and interior views. The deposit should disclose the name(s) of
the architect(s) and draftsperson(s) and the building site.
(ix) In the case of published literary monographs, the deposit of
one complete copy of the best edition of the work will suffice in lieu
of the two copies required by paragraph (d)(1) of this section, unless
the Copyright Office issues a demand for a second copy pursuant to 17
U.S.C. 407(d).
[[Page 689]]
(x) In the case of published newspapers, a deposit submitted
pursuant to and in compliance with the group registration option under
Sec.202.4(e) shall be deemed to satisfy the mandatory deposit
obligation under this section.
(xi) In the case of serials (as defined in Sec.202.3(b)(1)(v), but
excluding newspapers) published in the United States in a physical
format, or in both a physical and an electronic format, the copyright
owner or the owner of the exclusive right of publication must provide
the Library of Congress with two complimentary subscriptions to the
serial, unless the Copyright Acquisitions Division informs the owner
that the serial is not needed for the Library's collections.
Subscription copies must be physically mailed to the Copyright Office,
at the address for mandatory deposit copies specified in Sec.201.1(c)
of this chapter, promptly after the publication of each issue, and the
subscription(s) must be maintained on an ongoing basis. The owner may
cancel the subscription(s) if the serial is no longer published by the
owner, if the serial is no longer published in the United States in a
physical format, or if the Copyright Acquisitions Division informs the
owner that the serial is no longer needed for the Library's collections.
In addition, prior to commencing the subscriptions, the owner must send
a letter to the Copyright Acquisitions Division at the address specified
in Sec.201.1(b) of this chapter confirming that the owner will provide
the requested number of subscriptions for the Library of Congress. The
letter must include the name of the publisher, the title of the serial,
the International Standard Serial Number (``ISSN'') that has been
assigned to the serial (if any), and the issue date and the numerical or
chronological designations that appear on the first issue that will be
provided under the subscriptions.
(e) Special relief. (1) In the case of any published work not exempt
from deposit under paragraph (c) of this section, the Register of
Copyrights may, after consultation with other appropriate officials of
the Library of Congress and upon such conditions as the Register may
determine after such consultation:
(i) Grant an exemption from the deposit requirements of section
407(a) of title 17 on an individual basis for single works or series or
groups of works; or
(ii) Permit the deposit of one copy or phonorecord, or alternative
identifying material, in lieu of the two copies or phonorecords required
by paragraph (d)(1) of this section; or
(iii) Permit the deposit of incomplete copies or phonorecords, or
copies or phonorecords other than those normally comprising the best
edition; or
(iv) Permit the deposit of identifying material which does not
comply with Sec.202.21.
(2) Any decision as to whether to grant such special relief, and the
conditions under which special relief is to be granted, shall be made by
the Register of Copyrights after consultation with other appropriate
officials of the Library of Congress, and shall be based upon the
acquisition policies of the Library of Congress then in force.
(3) Requests for special relief under this paragraph shall be made
in writing to the Associate Register of Copyrights and Director of the
Office of Registration Policy and Practice, shall be signed by or on
behalf of the owner of copyright or of the exclusive right of
publication in the work, and shall set forth specific reasons why the
request should be granted.
(4) The Register of Copyrights may, after consultation with other
appropriate officials of the Library of Congress, terminate any ongoing
or continuous grant of special relief. Notice of termination shall be
given in writing and shall be sent to the individual person or
organization to whom the grant of special relief had been given, at the
last address shown in the records of the Copyright Office. A notice of
termination may be given at any time, but it shall state a specific date
of termination that is at least 30 days later than the date the notice
is mailed. Termination shall not affect the validity of any deposit made
earlier under the grant of special relief.
(f) Submission and receipt of copies and phonorecords. (1) All
copies and
[[Page 690]]
phonorecords deposited in the Copyright Office will be considered to be
deposited only in compliance with section 407 of title 17 unless they
are accompanied by an application for registration of a claim to
copyright in the work represented by the deposit, and either a
registration fee or a deposit account number. Copies or phonorecords
deposited without such an accompanying application and either a fee or a
deposit account notation will not be connected with or held for receipt
of separate applications, and will not satisfy the deposit provisions of
section 408 of title 17 or Sec.202.20.
(2) All copies and phonorecords deposited in the Copyright Office
under section 407 of title 17, unless accompanied by written
instructions to the contrary, will be considered to be deposited by the
person or persons named in the copyright notice on the work.
(3) Upon request by the depositor made at the time of the deposit,
the Copyright Office will issue a certificate of receipt for the deposit
of copies or phonorecords of a work under this section. Certificates of
receipt will be issued in response to requests made after the date of
deposit only if the requesting party is identified in the records of the
Copyright Office as having made the deposit. In either case, requests
for a certificate of receipt must be in writing and accompanied by the
appropriate fee, as required in Sec.201.3(c). A certificate of receipt
will include identification of the depositor, the work deposited, and
the nature and format of the copy or phonorecord deposited, together
with the date of receipt.
[51 FR 6403, Feb. 24, 1986, as amended at 54 FR 42299, Oct. 16, 1989; 56
FR 47403, Sept. 19, 1991; 56 FR 59885, Nov. 26, 1991; 57 FR 45310, Oct.
1, 1992; 60 FR 34168, June 30, 1995; 64 FR 29522, June 1, 1999; 64 FR
62978, Nov. 18, 1999; 66 FR 34373, June 28, 2001; 73 FR 37839, July 2,
2008; 75 FR 3869, Jan. 25, 2010; 82 FR 9360, Feb. 6, 2017; 83 FR 2372,
Jan. 17, 2018; 83 FR 4147, Jan. 30, 2018; 83 FR 25375, June 1, 2018; 83
FR 61550, Nov. 30, 2018; 85 FR 71837, Nov. 12, 2020]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.202.19 was
amended by removing ``the Copyright Acquisitions Division'' from each
place it appears and adding in its place ``Acquisitions and Deposits'',
effective July 22, 2021.
Sec.202.20 Deposit of copies and phonorecords for copyright
registration.
(a) General. This section prescribes rules pertaining to the deposit
of copies and phonorecords of published and unpublished works for the
purpose of copyright registration under section 408 of title 17 of the
United States Code. The provisions of this section are not applicable to
the deposit of copies and phonorecords for the Library of Congress under
section 407 of title 17, except as expressly adopted in Sec.202.19.
(b) Definitions. For the purposes of this section:
(1) The best edition of a work has the meaning set forth in Sec.
202.19(b)(1). For purposes of this section, if a work is first published
in both hard copy, i.e., in a physically tangible format, and also in an
electronic format, the current Library of Congress Best Edition
Statement requirements pertaining to the hard copy format apply.
(2) A complete copy or phonorecord means the following:
(i) Unpublished works. Subject to the requirements of paragraph
(b)(2)(vii) of this section, a ``complete'' copy or phonorecord of an
unpublished work is a copy or phonorecord representing the entire
copyrightable content of the work for which registration is sought;
(ii) Published works. Subject to the requirements of paragraphs
(b)(2)(iv) through (vii) of this section, a ``complete'' copy or
phonorecord of a published work includes all elements comprising the
applicable unit of publication of the work, including elements that, if
considered separately, would not be copyrightable subject matter.
However, even where certain physically separable elements included in
the applicable unit of publication are missing from the deposit, a copy
or phonorecord will be considered ``complete'' for purposes of
registration where:
(A) The copy or phonorecord deposited contains all parts of the work
for which copyright registration is sought; and
(B) The removal of the missing elements did not physically damage
the copy or phonorecord or garble its contents; and
(C) The work is exempt from the mandatory deposit requirements under
[[Page 691]]
section 407 of title 17 of the United States Code and Sec.202.19(c) of
these regulations, or the copy deposited consists entirely of a
container, wrapper, or holder, such as an envelope, sleeve, jacket,
slipcase, box, bag, folder, binder, or other receptacle acceptable for
deposit under paragraph (c)(2) of this section;
(iii) Works submitted for registration in digital formats. A
``complete'' electronically filed work is one which is embodied in a
digital file which contains:
(A) If the work is unpublished, all authorship elements for which
registration is sought; and
(B) If the work is published solely in an electronic format, all
elements constituting the work in its published form, i.e., the complete
work as published, including metadata and authorship for which
registration is not sought. Publication in an electronic only format
requires submission of the digital file(s) in exact first-publication
form and content.
(C) For works submitted electronically, any of the following file
formats are acceptable for registration: PDF, TXT, WPD, DOC, TIF, SVG,
JPG, XML, HTML, WAV, and MPEG family of formats, including MP3. This
list of file formats is non-exhaustive and it may change, or be added to
periodically. Changes will be noted in the list of acceptable formats on
the Copyright Office website.
(D) Contact with the registration applicant may be necessary if the
Copyright Office cannot access, view, or examine the content of any
particular digital file that has been submitted for the registration of
a work. For purposes of 17 U.S.C. 410(d), a deposit has not been
received in the Copyright Office until a copy that can be reviewed by
the Office is received.
(iv) Contributions to collective works. In the case of a published
contribution to a collective work, a ``complete'' copy is one complete
copy of the best edition of the entire collective work, the complete
section containing the contribution if published in a newspaper, the
contribution cut from the paper in which it appeared, or a photocopy of
the contribution itself as it was published in the collective work.
(v) Sound recordings. In the case of published sound recordings, a
``complete'' phonorecord has the meaning set forth in Sec.
202.19(b)(2)(i).
(vi) Musical scores. In the case of a musical composition published
in copies only, or in both copies and phonorecords:
(A) If the only publication of copies took place by the rental,
lease, or lending of a full score and parts, a full score is a
``complete'' copy; and
(B) If the only publication of copies took place by the rental,
lease, or lending of a conductor's score and parts, a conductor's score
is a ``complete'' copy.
(vii) Motion pictures. In the case of a published or unpublished
motion picture, a copy is ``complete'' if the reproduction of all of the
visual and aural elements comprising the copyrightable subject matter in
the work is clean, undamaged, undeteriorated, and free of splices, and
if the copy itself and its physical housing are free of any defects that
would interfere with the performance of the work or that would cause
mechanical, visual, or audible defects or distortions.
(3) The terms secure test and literary monograph have the meanings
set forth in Sec. Sec.202.13(b) and 202.19(b)(5).
(4) For the purposes of determining the applicable deposit
requirements under this section only, the following shall be considered
unpublished motion pictures: motion pictures that consist of television
transmission programs and that have been published, if at all, only by
reason of a license or other grant to a nonprofit institution of the
right to make a fixation of such programs directly from a transmission
to the public, with or without the right to make further uses of such
fixations.
(c) Nature of required deposit. (1) Subject to the provisions of
paragraph (c)(2) of this section, the deposit required to accompany an
application for registration of claim to copyright under section 408 of
title 17 shall consist of:
(i) In the case of unpublished works, one complete copy or
phonorecord.
(ii) In the case of works first published in the United States
before January 1, 1978, two complete copies or phonorecords of the work
as first published.
[[Page 692]]
(iii) In the case of works first published in the United States on
or after January 1, 1978, two complete copies or phonorecords of the
best edition.
(iv) In the case of works first published outside of the United
States, one complete copy or phonorecord of the work either as first
published or of the best edition. For purposes of this section, any
works simultaneously first published within and outside of the United
States shall be considered to be first published in the United States.
(2) In the case of certain works, the special provisions set forth
in this clause shall apply. In any case where this clause specifies that
one copy or phonorecord may be submitted, that copy or phonorecord shall
represent the best edition, or the work as first published, as set forth
in paragraph (c)(1) of this section.
(i) General. In the following cases the deposit of one complete copy
or phonorecord will suffice in lieu of two copies or phonorecords:
(A) Published three-dimensional cartographic representations of
area, such as globes and relief models.
(B) Published diagrams illustrating scientific or technical works or
formulating scientific or technical information in linear or other two-
dimensional form, such as an architectural or engineering blueprint, or
a mechanical drawing.
(C) Published greeting cards, picture postcards, and stationery.
(D) Lectures, sermons, speeches, and addresses published
individually and not as a collection of the works of one or more
authors.
(E) Musical compositions published solely in copies or in both
copies and phonorecords, provided that one complete copy (rather than a
phonorecord) is deposited.
(F) Published multimedia kits or any part thereof.
(G) Works exempted from the requirement of depositing identifying
material under paragraph (c)(2)(xi)(B) of this section.
(H) Literary, dramatic, and musical works published only as embodied
in phonorecords, although this category does not exempt the owner of
copyright in a sound recording.
(I) Choreographic works, pantomimes, literary, dramatic, and musical
works published only as embodied in motion pictures.
(J) Published works in the form of two-dimensional games, decals,
fabric patches or emblems, calendars, instructions for needle work,
needle work and craft kits.
(K) Works reproduced on three-dimensional containers such as boxes,
cases, and cartons.
(L) Published literary monographs.
(M) Architectural works, for which the deposit must comply with the
requirements set forth in Sec.202.11.
(ii) Motion pictures. In the case of published or unpublished motion
pictures, the deposit of one complete copy will suffice. The deposit of
a copy or copies for any published or unpublished motion picture must be
accompanied by a separate description of its contents, such as a
continuity, pressbook, or synopsis. In any case where the deposit copy
or copies required for registration of a motion picture cannot be viewed
for examining purposes on equipment in the Registration Program of the
Copyright Office, the description accompanying the deposit must comply
with Sec.202.21(h). The Library of Congress may, at its sole
discretion, enter into an agreement permitting the return of copies of
published motion pictures to the depositor under certain conditions and
establishing certain rights and obligations of the Library of Congress
with respect to such copies. In the event of termination of such an
agreement by the Library, it shall not be subject to reinstatement, nor
shall the depositor or any successor in interest of the depositor be
entitled to any similar or subsequent agreement with the Library, unless
at the sole discretion of the Library it would be in the best interests
of the Library to reinstate the agreement or enter into a new agreement.
In the case of unpublished motion pictures (including television
transmission programs that have been fixed and transmitted to the
public, but have not been published), the deposit of identifying
material in compliance with Sec.202.21 may be made and will suffice in
lieu of an actual copy. In the case of colorized versions of motion
[[Page 693]]
pictures made from pre-existing black and white motion pictures, in
addition to the deposit of one complete copy of the colorized motion
picture and the separate description of its contents as specified above,
the deposit shall consist of one complete print of the black and white
version of the motion picture from which the colorized version was
prepared. If special relief from this requirement is requested and
granted, the claimant shall make a good faith effort to deposit the best
available, near-archival quality black and white print, as a condition
of any grant of special relief.
(iii) Holograms. In the case of any work deposited in the form of a
three-dimensional hologram, the copy or copies shall be accompanied by:
(A) Precise instructions for displaying the image fixed in the
hologram; and
(B) Photographs or other identifying material complying with Sec.
202.21 and clearly showing the displayed image.
The number of sets of instructions and identifying material shall be the
same as the number of copies required. In the case of a work in the form
of a two-dimensional hologram, the image of which is visible without the
use of a machine or device, one actual copy of the work shall be
deposited.
(iv) Certain pictorial and graphic works. In the case of any
unpublished pictorial or graphic work, deposit of identifying material
in compliance with Sec.202.21 may be made and will suffice in lieu of
deposit of an actual copy. In the case of a published pictorial or
graphic work, deposit of one complete copy, or of identifying material
in compliance with Sec.202.21 , may be made and will suffice in lieu
of deposit of two actual copies where an individual author is the owner
of copyright, and either:
(A) Less than five copies of the work have been published; or
(B) The work has been published and sold or offered for sale in a
limited edition consisting of no more than 300 numbered copies.
(v) Commercial prints and labels. In the case of prints, labels, and
other advertising matter, including catalogs, published in connection
with the rental, lease, lending, licensing, or sale of articles of
merchandise, works of authorship, or services, the deposit of one
complete copy will suffice in lieu of two copies. Where the print or
label is published in a larger work, such as a newspaper or other
periodical, one copy of the entire page or pages upon which it appears
may be submitted in lieu of the entire larger work. In the case of
prints or labels physically inseparable from a three-dimensional object,
identifying material complying with Sec.202.21 must be submitted
rather than an actual copy or copies except under the conditions of
paragraph (c)(2)(xi)(B)(4) of this section.
(vi) Tests. In the case of tests, and answer material for tests,
published separately from other literary works, the deposit of one
complete copy will suffice in lieu of two copies. In the case of any
secure test the applicant may submit identifying material in lieu of one
complete copy if the conditions set forth in Sec.202.13(c) have been
met.
(vii) Computer programs and databases embodied in machine-readable
copies other than CD-ROM format. In cases where a computer program,
database, compilation, statistical compendium, or the like, if
unpublished is fixed, or if published is published only in the form of
machine-readable copies (such as magnetic tape or disks, punched cards,
semiconductor chip products, or the like) other than a CD-ROM format,
from which the work cannot ordinarily be perceived except with the aid
of a machine or device, the deposit shall consist of:
(A) For published or unpublished computer programs, one copy of
identifying portions of the program, reproduced in a form visually
perceptible without the aid of a machine or device, either on paper or
in microform. For these purposes ``identifying portions'' shall mean one
of the following:
(1) The first and last 25 pages or equivalent units of the source
code if reproduced on paper, or at least the first and last 25 pages or
equivalent units of the source code if reproduced in microform, together
with the page or equivalent unit containing the copyright notice, if
any. If the program is 50 pages or less, the required deposit will be
the entire source code. In the case of revised versions of computer
programs,
[[Page 694]]
if the revisions occur throughout the entire program, the deposit of the
page containing the copyright notice and the first and last 25 pages of
source code will suffice; if the revisions do not occur in the first and
last 25 pages, the deposit should consist of the page containing the
copyright notice and any 50 pages of source code representative of the
revised material; or
(2) Where the program contains trade secret material, the page or
equivalent unit containing the copyright notice, if any, plus one of the
following: the first and last 25 pages or equivalent units of source
code with portions of the source code containing trade secrets blocked-
out, provided that the blocked-out portions are proportionately less
than the material remaining, and the deposit reveals an appreciable
amount of original computer code; or the first and last 10 pages or
equivalent units of source code alone with no blocked-out portions; or
the first and last 25 pages of object code, together with any 10 or more
consecutive pages of source code with no blocked-out portions; or for
programs consisting of, or less than, 50 pages or equivalent units, the
entire source code with the trade secret portions blocked-out, provided
that the blocked-out portions are proportionately less than the material
remaining, and the remaining portion reveals an appreciable amount of
original computer code. If the copyright claim is in a revision not
contained in the first and last 25 pages, the deposit shall consist of
either 20 pages of source code representative of the revised material
with no blocked-out portions, or any 50 pages of source code
representative of the revised material with portions of the source code
containing trade secrets blocked-out, provided that the blocked-out
portions are proportionately less than the material remaining and the
deposit reveals an appreciable amount of original computer code.
Whatever method is used to block out trade secret material, at least an
appreciable amount of original computer code must remain visible.
(B) Where registration of a program containing trade secrets is made
on the basis of an object code deposit the Copyright Office will make
registration under its rule of doubt and warn that no determination has
been made concerning the existence of copyrightable authorship.
(C) Where the application to claim copyright in a computer program
includes a specific claim in related computer screen displays, the
deposit, in addition to the identifying portions specified in paragraph
(c)(2)(vii)(A) of this section, shall consist of:
(1) Visual reproductions of the copyrightable expression in the form
of printouts, photographs, or drawings no smaller than 3 x 3 inches and
no larger than 9 x 12 inches; or
(2) If the authorship in the work is predominantly audiovisual, a
one-half inch VHS format videotape reproducing the copyrightable
expression, except that printouts, photographs, or drawings no smaller
than 3 x 3 inches and no larger than 9 x 12 inches must be deposited in
lieu of videotape where the computer screen material simply constitutes
a demonstration of the functioning of the computer program.
(D) For published and unpublished automated databases, compilations,
statistical compendia, and the like, so fixed or published, one copy of
identifying portions of the work, reproduced in a form visually
perceptible without the aid of a machine or device, either on paper or
in microform. For these purposes:
(1) Identifying portions shall generally mean either the first and
last 25 pages or equivalent units of the work if reproduced on paper or
in microform.
(2) Datafile and file shall mean a group of data records pertaining
to a common subject matter regardless of their size or the number of
data items in them.
(3) In the case of individual registration of a revised version of
the works identified in paragraph (c)(2)(vii)(D) of this section, the
identifying portions deposited shall contain 50 representative pages or
data records which have been added or modified.
(4) If the work is an automated database comprising multiple
separate or distinct data files, ``identifying portions'' shall instead
consist of 50 complete data records from each data file or the entire
data file, whichever is
[[Page 695]]
less, and the descriptive statement required by paragraph
(c)(2)(vii)(D)(5) of this section.
(5) In the case of group registration for revised or updated
versions of a database, the claimant shall deposit identifying portions
that contain 50 representative pages or equivalent units, or
representative data records which have been marked to disclose (or do in
fact disclose solely) the new material added on one representative
publication date if published, or on one representative creation date,
if unpublished or in the case of applications for automated databases
that predominantly consist of photographs, the claimant shall deposit
identifying portions that comply with (D)(8) of this section; the
claimant shall, also deposit a brief typed or printed descriptive
statement containing the notice of copyright information required under
paragraphs (c)(2)(vii)(D)(6) or (7) of this section, if the work bears a
notice, and;
(i) The title of the database;
(ii) A subtitle, date of creation or publication, or other
information, to distinguish any separate or distinct data files for
cataloging purposes;
(iii) The name and address of the copyright claimant;
(iv) For each separate file, its name and content, including its
subject, the origin(s) of the data, and the approximate number of data
records it contains; and
(v) In the case of revised or updated versions of an automated
database, information as to the nature and frequency of changes in the
database and some identification of the location within the database or
the separate data files of the revisions.
(6) For a copyright notice embodied in machine-readable form, the
statement shall describe exactly the visually perceptible content of the
notice which appears in or with the database, and the manner and
frequency with which it is displayed (e.g., at user's terminal only at
sign-on, or continuously on terminal display, or on printouts, etc.).
(7) If a visually perceptible copyright notice is placed on any
copies of the work (or on magnetic tape reels or containers therefor), a
sample of such notice must also accompany the statement.
(8) In the case of an application for registration of a database
that consists predominantly of photographs (including a group
registration for revised or updated versions of such a database),
``identifying portions'' shall instead consist of all individual
photographs included in the claim. Photographs must be submitted in
digital form in one of the following formats: JPEG, GIF, or TIFF. In
addition, the applicant must submit a sequentially numbered list
containing the title and file name--and if the photographs have been
published, the month and year of publication--for each photograph in the
group. The numbered list must be contained in an electronic file in
Excel format (.xls), Portable Document Format (PDF), or other electronic
format approved by the Office. The file name for the list must contain
the title of the database, and the case number assigned to the
application by the electronic registration system, if any (e.g., ``Title
Of Database Case Number 162883927239.xls''). The photographs and the
numbered list may be uploaded to the electronic registration system with
the permission and under the direction of the Visual Arts Division,
preferably in a .zip file containing these materials. The file size for
each uploaded file must not exceed 500 megabytes; the photographs may be
compressed to comply with this requirement. Alternatively, the
photographs and the numbered list may be saved on a physical storage
device, such as a flash drive, CD-R, or DVD-R, and delivered to the
Copyright Office together with the required shipping slip generated by
the electronic registration system or with a paper application submitted
on Form VA.
(viii) Machine-readable copies of works other than computer
programs, databases, and works fixed in a CD-ROM format. Where a
literary, musical, pictorial, graphic, or audiovisual work, or a sound
recording, except for works fixed in a CD-ROM format and literary works
which are computer programs, databases, compilations, statistical
compendia or the like, if unpublished has been fixed or, if published,
has been published only in machine-readable
[[Page 696]]
form, the deposit must consist of identifying material. The type of
identifying material submitted should generally be appropriate to the
type of work embodied in machine-readable form, but in all cases should
be that which best represents the copyrightable content of the work. In
all cases the identifying material must include the title of the work. A
synopsis may also be requested in addition to the other deposit
materials as appropriate in the discretion of the Copyright Office. In
the case of any published work subject to this section, the identifying
material must include a representation of the copyright notice, if one
exists. Identifying material requirements for certain types of works are
specified below. In the case of the types of works listed below, the
requirements specified shall apply except that, in any case where the
specific requirements are not appropriate for a given work the form of
the identifying material required will be determined by the Copyright
Office in consultation with the applicant, but the Copyright Office will
make the final determination of the acceptability of the identifying
material.
(A) For pictorial or graphic works, the deposit shall consist of
identifying material in compliance with Sec.202.21.
(B) For audiovisual works, the deposit shall consist of either a
videotape of the work depicting representative portions of the
copyrightable content, or a series of photographs or drawings, depicting
representative portions of the work, plus in all cases a separate
synopsis of the work.
(C) For musical compositions, the deposit shall consist of a
transcription of the entire work such as a score, or a reproduction of
the entire work on a phonorecord.
(D) For sound recordings, the deposit shall consist of a
reproduction of the entire work on a phonorecord.
(E) For literary works, the deposit shall consist of a transcription
of representative portions of the work including the first and last 25
pages or equivalent units, and five or more pages indicative of the
remainder.
(ix) Copies containing both visually-perceptible and machine-
readable material other than a CD-ROM format. Where a published literary
work is embodied in copies containing both visually-perceptible and
machine-readable material, except in the case of a CD-ROM format, the
deposit shall consist of the visually-perceptible material and
identifying portions of the machine-readable material.
(x) Works reproduced in or on sheetlike materials. In the case of
any unpublished work that is fixed, or any published work that is
published, only in the form of a two-dimensional reproduction on
sheetlike materials such as textiles and other fabrics, wallpaper and
similar commercial wall coverings, carpeting, floor tile, and similar
commercial floor coverings, and wrapping paper and similar packaging
material, the deposit shall consist of one copy in the form of an actual
swatch or piece of such material sufficient to show all elements of the
work in which copyright is claimed and the copyright notice appearing on
the work, if any. If the work consists of a repeated pictorial or
graphic design, the complete design and at least part of one repetition
must be shown. If the sheetlike material in or on which a published work
has been reproduced has been embodied in or attached to a three-
dimensional object, such as furniture, or any other three-dimensional
manufactured article, and the work has been published only in that form,
the deposit must consist of identifying material complying with Sec.
202.21 instead of a copy. If the sheet-like material in or on which a
published work has been reproduced has been embodied in or attached to a
two-dimensional object such as wearing apparel, bed linen, or a similar
item, and the work has been published only in that form, the deposit
must consist of identifying material complying with Sec.202.21 instead
of a copy unless the copy can be folded for storage in a form that does
not exceed four inches in thickness.
(xi) Works reproduced in or on three-dimensional objects. (A) In the
following cases the deposit must consist of identifying material
complying with Sec.201.21 of this chapter instead of a copy or copies:
[[Page 697]]
(1) Any three-dimensional sculptural work, including any
illustration or formulation of artistic expression or information in
three-dimensional form. Examples of such works include statues,
carvings, ceramics, moldings, constructions, models, and maquettes; and
(2) Any two-dimensional or three-dimensional work that, if
unpublished, has been fixed, or, if published, has been published only
in or on jewelry, dolls, toys, games, except as provided in paragraph
(c)(2)(xi)(B)(3) of this section, or any three-dimensional useful
article.
(B) In the following cases the requirements of paragraph
(c)(2)(xi)(A) of this section for the deposit of identifying material
shall not apply:
(1) Three-dimensional cartographic representations of area, such as
globes and relief models;
(2) Works that have been fixed or published in or on a useful
article that comprises one of the elements of the unit of publication of
an educational or instructional kit which also includes a literary or
audiovisual work, a sound recording, or any combination of such works;
(3) Published games consisting of multiple parts that are packaged
and published in a box or similar container with flat sides and with
dimensions of no more than 12 x 24 x 6 inches;
(4) Works reproduced on three-dimensional containers or holders such
as boxes, cases, and cartons, where the container or holder can be
readily opened out, unfolded, slit at the corners, or in some other way
made adaptable for flat storage, and the copy, when flattened, does not
exceed 96 inches in any dimension; or
(5) Any three-dimensional sculptural work that, if unpublished, has
been fixed, or, if published, has been published only in the form of
jewelry cast in base metal which does not exceed four inches in any
dimension.
(xii) Soundtracks. For separate registration of an unpublished work
that is fixed, or a published work that is published, only as embodied
in a soundtrack that is an integral part of a motion picture, the
deposit of identifying material in compliance with Sec.202.21 will
suffice in lieu of an actual copy of the motion picture.
(xiii) Oversize deposits. In any case where the deposit otherwise
required by this section exceeds 96 inches in any dimension, identifying
material complying with Sec.202.21 must be submitted instead of an
actual copy or copies.
(xiv) Pictorial advertising material. In the case of published
pictorial advertising material, except for advertising material
published in connection with motion pictures, the deposit of either one
copy as published or prepublication material consisting of camera-ready
copy is acceptable.
(xv) Contributions to collective works. In the case of published
contributions to collective works, the deposit of either one complete
copy of the best edition of the entire collective work, the complete
section containing the contribution if published in a newspaper, the
entire page containing the contribution, the contribution cut from the
paper in which it appeared, or a photocopy of the contribution itself as
it was published in the collective work, will suffice in lieu of two
complete copies of the entire collective work.
(xvi) Phonorecords. In any case where the phonorecord or
phonorecords submitted for registration of a claim to copyright is
inaudible on audio playback devices in the Registration Program of the
Copyright Office, the Office will seek an appropriate deposit in
accordance with paragraph (d) of this section.
(xvii)-(xviii) [Reserved]
(xix) Works fixed in a CD-ROM format. (A) Where a work is fixed in a
CD-ROM format, the deposit must consist of one complete copy of the
entire CD-ROM package, including a complete copy of any accompanying
operating software and instructional manual, and a printed version of
the work embodied in the CD-ROM, if the work is fixed in print as well
as a CD-ROM. A complete copy of a published CD-ROM package includes all
of the elements comprising the applicable unit of publication, including
elements that if considered separately would not be copyrightable
subject matter or could be the subject of a separate registration.
(B) In any case where the work fixed in a CD-ROM package cannot be
viewed
[[Page 698]]
on equipment available in the Registration Program of the Copyright
Office, the Office will seek an appropriate deposit in accordance with
paragraph (d) of this section, in addition to the deposit of the CD-ROM
package.
(d) Special relief. (1) In any case the Register of Copyrights may,
after consultation with other appropriate officials of the Library of
Congress and upon such conditions as the Register may determine after
such consultation:
(i) Permit the deposit of one copy or phonorecord, or alternative
identifying material, in lieu of the one or two copies or phonorecords
otherwise required by paragraph (c)(1) of this section or;
(ii) Permit the deposit of incomplete copies or phonorecords, or
copies or phonorecords other than those normally comprising the best
edition; or
(iii) Permit the deposit of an actual copy or copies, in lieu of the
identifying material otherwise required by this section or Sec.202.4;
or
(iv) Permit the deposit of identifying material which does not
comply with Sec.202.4 or Sec.202.21.
(2) Any decision as to whether to grant such special relief, and the
conditions under which special relief is to be granted, shall be made by
the Register of Copyrights after consultation with other appropriate
officials of the Library of Congress, and shall be based upon the
acquisition policies of the Library of Congress then in force and the
archival and examining requirements of the Copyright Office.
(3) Requests for special relief under this paragraph may be combined
with requests for special relief under Sec.202.19(e). Whether so
combined or made solely under this paragraph, such requests shall be
made in writing to the Associate Register of Copyrights and Director of
the Office of Registration Policy and Practice, shall be signed by or on
behalf of the person signing the application for registration, and shall
set forth specific reasons why the request should be granted.
(4) The Register of Copyrights may, after consultation with other
appropriate officials of the Library of Congress, terminate any ongoing
or continuous grant of special relief. Notice of termination shall be
given in writing and shall be sent to the individual person or
organization to whom the grant of special relief had been given, at the
last address shown in the records of the Copyright Office. A notice of
termination may be given at any time, but it shall state a specific date
of termination that is at least 30 days later than the date the notice
is mailed. Termination shall not affect the validity of any deposit or
registration made earlier under the grant of special relief.
(e) Use of copies and phonorecords deposited for the Library of
Congress. Copies and phonorecords deposited for the Library of Congress
under 17 U.S.C. 407 and Sec.202.19 may be used to satisfy the deposit
provisions of this section if they are accompanied by an application for
registration of a claim to copyright in the work represented by the
deposit, and either a registration fee or a deposit account number.
[51 FR 6405, Feb. 24, 1986]
Editorial Note: For Federal Register citations affecting Sec.
202.20, see the List of CFR Sections Affected, which appears in the
Finding Aids section of the printed volume and at www.govinfo.gov.
Sec.202.21 Deposit of identifying material instead of copies.
(a) General. Subject to the specific provisions of paragraphs (f)
and (g) of this section, and Sec. Sec.202.19(e)(1)(iv) and
202.20(d)(1)(iv), in any case where the deposit of identifying material
is permitted or required under Sec.202.19 or Sec.202.20 for
published or unpublished works, the material shall consist of
photographic prints, transparencies, photostats, drawings, or similar
two-dimensional reproductions or renderings of the work, in a form
visually perceivable without the aid of a machine or device. In the case
of pictorial or graphic works, such material should reproduce the actual
colors employed in the work. In all other cases, such material may be in
black and white or may consist of a reproduction of the actual colors.
(b) Completeness; number of sets. As many pieces of identifying
material as are necessary to show the entire copyrightable content in
the ordinary case, but in no case less than an adequate representation
of such content, of the work for which deposit is being made,
[[Page 699]]
or for which registration is being sought shall be submitted. Except in
cases falling under the provisions of Sec.202.19(d)(2)(iii) or Sec.
202.20(c)(2)(iii) with respect to holograms, only one set of such
complete identifying material is required.
(c) Size. Photographic transparencies must be at least 35mm in size
and, if such transparencies are 3 x 3 inches or less, must be fixed in
cardboard, plastic, or similar mounts to facilitate identification,
handling, and storage. The Copyright Office prefers that transparencies
larger than 3 x 3 inches be mounted in a way that facilitates their
handling and preservation, and reserves the right to require such
mounting in particular cases. All types of identifying material other
than photographic transparencies must be not less than 3 x 3 inches and
not more than 9 x 12 inches, but preferably 8 x 10 inches. Except in the
case of transparencies, the image of the work must be either lifesize or
larger, or if less than lifesize must be large enough to show clearly
the entire copyrightable content of the work.
(d) Title and dimensions. At least one piece of identifying material
must, on its front, back, or mount, indicate the title of the work; and
the indication of an exact measurement of one or more dimensions of the
work is preferred.
(e) Copyright notice. In the case of works published with notice of
copyright, the notice and its position on the work must be clearly shown
on at least one piece of identifying material. Where necessary because
of the size or position of the notice, a separate drawing or similar
reproduction shall be submitted. Such reproduction shall be no smaller
than 3 x 3 inches and no larger than 9 x 12 inches, and shall show the
exact appearance and content of the notice, and its specific position on
the work.
(f) For separate registration of an unpublished work that is fixed,
or a published work that is published, only as embodied in a soundtrack
that is an integral part of a motion picture, identifying material
deposited in lieu of an actual copy of the motion picture shall consist
of:
(1) A transcription of the entire work, or a reproduction of the
entire work on a phonorecord; and
(2) Photographs or other reproductions from the motion picture
showing the title of the motion picture, the soundtrack credits, and the
copyright notice for the soundtrack, if any.
The provisions of paragraphs (b), (c), (d), and (e) of this section do
not apply to identifying material deposited under this paragraph (f).
(g)(1) In the case of unpublished motion pictures (including
transmission programs that have been fixed and transmitted to the
public, but have not been published), identifying material deposited in
lieu of an actual copy shall consist of either:
(i) An audio cassette or other phonorecord reproducing the entire
soundtrack or other sound portion of the motion picture, and a
description of the motion picture; or
(ii) A set consisting of one frame enlargement or similar visual
reproduction from each 10-minute segment of the motion picture, and a
description of the motion picture.
(2) In either case the ``description'' may be a continuity, a
pressbook, or a synopsis but in all cases it must include:
(i) The title or continuing title of the work, and the episode
title, if any;
(ii) The nature and general content of the program;
(iii) The date when the work was first fixed and whether or not
fixation was simultaneous with first transmission;
(iv) The date of first transmission, if any;
(v) The running time; and
(vi) The credits appearing on the work, if any.
(3) The provisions of paragraphs (b), (c), (d), and (e) of this
section do not apply to identifying material submitted under this
paragraph (g).
(h) In the case where the deposit copy or copies of a motion picture
cannot be viewed for examining purposes on equipment in the Registration
Program of the Copyright Office, the ``description'' required by Sec.
202.20(c)(2)(ii) may be a continuity, a press-book, a synopsis, or a
final shooting script but
[[Page 700]]
in all cases must be sufficient to indicate the copyrightable material
in the work and include
(1) The continuing title of the work and the episode title, if any;
(2) The nature and general content of the program and of its
dialogue or narration, if any;
(3) The running time; and
(4) All credits appearing on the work including the copyright
notice, if any.
The provisions of paragraphs (b), (c), and (d) of this section do not
apply to identifying material submitted under this paragraph (h).
[51 FR 6409, Feb. 24, 1986, as amended at 73 FR 37839, July 2, 2008; 82
FR 9362, Feb. 6, 2017]
Sec.202.22 Acquisition and deposit of unpublished audio and
audiovisual transmission programs.
(a) General. This section prescribes rules pertaining to the
acquisition of phonorecords and copies of unpublished audio and
audiovisual transmission programs by the Library of Congress under
section 407(e) of title 17 of the United States Code, as amended. It
also prescribes rules pertaining to the use of such phonorecords and
copies in the registration of claims to copyright, under section 408(b).
(b) Definitions. For purposes of this section:
(1) The terms copies, fixed, phonorecords, publication, and
transmission program and their variant forms, have the meanings given to
them in section 101 of title 17. The term network station has the
meaning given it in section 111(f) of title 17. For the purpose of this
section, the term transmission includes transmission via the Internet,
cable, broadcasting, and satellite systems, and via any other existing
or future devices or processes for the communication of a performance or
display whereby images or sounds are received beyond the place from
which they are sent.
(2) Title 17 means title 17 of the United States Code, as amended.
(c) Recording of transmission programs. (1) Library of Congress
employees, including Library of Congress contractors, acting under the
general authority of the Librarian of Congress, may make a fixation of
an unpublished audio or audiovisual transmission program directly from a
transmission to the public in the United States, in accordance with
subsections 407(e)(1) and (4) of title 17 of the United States Code. The
choice of programs selected for fixation shall be based on the Library
of Congress's acquisition policies in effect at the time of fixation.
Specific notice of an intent to record a transmission program will
ordinarily not be given. In general, the Library of Congress will seek
to record a substantial portion of the television programming
transmitted by noncommercial educational broadcast stations as defined
in section 397 of title 47 of the United States Code, and will record
selected programming transmitted by commercial television broadcast
stations, both network and independent. The Library will also record a
selected portion of the radio programming transmitted by commercial and
noncommercial broadcast stations. Additionally, the Library will record
a selected portion of unpublished Internet, cable and satellite
programming transmitted to the public in the United States.
(2) Upon written request addressed to the Chief, Motion Picture,
Broadcasting and Recorded Sound Division by a broadcast station or other
owner of the right of transmission, the Library of Congress will inform
the requestor whether a particular transmission program has been
recorded by the Library.
(3) The Library of Congress will not knowingly record any unfixed or
published transmission program under the recording authority of section
407(e) of title 17 of the United States Code.
(4) The Library of Congress is entitled under this paragraph (c) to
presume that a radio program transmitted to the public in the United
States has been fixed but not published at the time of transmission, and
that a television program transmitted to the public in the United States
by a noncommercial educational broadcast station as defined in section
397 of title 47 of the United States Code has been fixed but not
published.
(5) The presumption established by paragraph (c)(4) of this section
may be overcome by written declaration and submission of appropriate
documentary evidence to the Chief, Motion Picture,
[[Page 701]]
Broadcasting and Recorded Sound Division, either before or after
recording of the particular transmission program by the Library of
Congress. Such written submission shall contain:
(i) The identification, by title and time of broadcast, of the
transmission program in question;
(ii) A brief statement declaring either that the program was not
fixed or that it was published at the time of transmission;
(iii) If it is declared that the program was published at the time
of transmission, a brief statement of the facts of publication,
including the date and place thereof, the method of publication, the
name of the owner of the right of first publication, and whether the
work was published in the United States; and
(iv) The actual handwritten signature of an officer or other duly
authorized agent of the organization which transmitted the program in
question.
(6) A declaration that the program was unfixed at the time of
transmission shall be accepted by the Library of Congress, unless the
Library can cite evidence to the contrary, and the copy or phonorecord
will either be
(i) Erased; or
(ii) Retained, if requested by the owner of copyright or of any
exclusive right, to satisfy the deposit provision of section 408 of
title 17 of the United States Code.
(7) If it is declared that the program was published at the time of
transmission, the Library of Congress is entitled under this section to
retain the copy or phonorecord to satisfy the deposit requirement of
section 407(a) of title 17 of the United States Code.
(8) The Library of Congress shall maintain a list of the radio,
cable, Internet and satellite transmission programs that the Library has
recorded on the Motion Picture, Broadcasting and Recorded Sound Division
website at http://www.loc.gov /rr/record/ for audio transmission
programs, or http://www.loc.gov /rr/mopic/ for audiovisual transmission
programs, and, in making fixations of such unpublished transmission
programs, shall identify a program that the Library has recorded by
including that transmission program on the list no later than fourteen
days after such fixation has occurred. The Library of Congress in making
fixations of unpublished television transmission programs transmitted by
commercial broadcast stations shall not do so without notifying the
transmitting organization or its agent that such activity is taking
place. In the case of television network stations, the notification will
be sent to the particular network. In the case of any other commercial
television broadcasting station, the notification will be sent to the
particular broadcast station that has transmitted, or will transmit, the
program. Such notice shall, if possible, be given by the Library of
Congress prior to the time of broadcast. In every case, the Library of
Congress shall transmit such notice no later than fourteen days after
such fixation has occurred. Such notice shall contain:
(i) The identification, by title and time of broadcast, of the
transmission program in question;
(ii) A brief statement asserting the Library of Congress' belief
that the transmission program has been, or will be by the date of
transmission, fixed and is unpublished, together with language
converting the notice to a demand for deposit under section 407 (a) and
(b) of title 17 of the United States Code, if the transmission program
has been published in the United States.
(9) The notice required by paragraph (c)(8) of this section shall
not cover more than one transmission program except that the notice may
cover up to thirteen episodes of one title if such episodes are
generally scheduled to be broadcast at the same time period on a regular
basis, or may cover all the episodes comprising the title if they are
scheduled to be broadcast within a period of not more than two months.
(d) Demands for deposit of a transmission program. (1) The Register
of Copyrights may make a written demand upon the owner of the right of
transmission in the United States to deposit a copy or phonorecord of a
specific transmission program for the benefit of the Library of Congress
under the authority of section 407(e)(2) of title 17 of the United
States Code.
(2) The Register of Copyrights is entitled to presume, unless clear
evidence to the contrary is proffered, that the
[[Page 702]]
transmitting organization is the owner of the United States transmission
right.
(3) Notices of demand shall be in writing and shall contain:
(i) The identification, by title and time of broadcast, of the work
in question;
(ii) An explanation of the optional forms of compliance, including
transfer of ownership of a copy or phonorecord to the Library, lending a
copy or phonorecord to the Library for reproduction, or selling a copy
or phonorecord to the Library at a price not to exceed the cost of
reproducing and supplying the copy or phonorecord;
(iii) A ninety-day deadline by which time either compliance or a
request for an extension of a request to adjust the scope of the demand
or the method for fulfilling it shall have been received by the Register
of Copyrights;
(iv) A brief description of the controls which are placed on the use
of the copies or phonorecords;
(v) A statement concerning the Register's perception of the
publication status of the program, together with language converting
this demand to a demand for a deposit, under 17 U.S.C. 407, if the
recipient takes the position that the work is published; and
(vi) A statement that a compliance copy, or in the case of an audio
transmission program, a compliance phonorecord, must be made and
retained if the notice is received prior to transmission.
(4) With respect to paragraph (d)(3)(ii) of this section, the sale
of a copy or phonorecord in compliance with a demand of this nature
shall be at a price not to exceed the cost to the Library of reproducing
and supplying the copy or phonorecord. The notice of demand should
therefore inform the recipient of that cost and set that cost, plus
reasonable shipping charges, as the maximum price for such a sale.
(5) Copies and phonorecords transferred, lent, or sold under
paragraph (d) of this section shall be of sound physical condition as
described in Appendix A to this section.
(6) Special relief. In the case of any demand made under paragraph
(d) of this section the Register of Copyrights may, after consultation
with other appropriate officials of the Library of Congress and upon
such conditions as the Register may determine after such consultation,
(i) Extend the time period provided in subparagraph (d)(3)(iii);
(ii) Make adjustments in the scope of the demand; or
(iii) Make adjustments in the method of fulfilling the demand. Any
decision as to whether to allow such extension or adjustments shall be
made by the Register of Copyrights after consultation with other
appropriate officials of the Library of Congress and shall be made as
reasonably warranted by the circumstances. Requests for special relief
under paragraph (d) of this section shall be made in writing to the
Copyright Acquisitions Division, shall be signed by or on behalf of the
owner of the right of transmission in the United States and shall set
forth the specific reasons why the request should be granted.
(e) Disposition and use of copies and phonorecords. (1) All copies
and phonorecords acquired under this section shall be maintained by the
Motion Picture, Broadcasting and Recorded Sound Division of the Library
of Congress. The Library may make one archival copy or phonorecord of a
program which it has fixed under the provisions of section 407(e)(1) of
title 17 of the United States Code and paragraph (c) of this section.
(2) All copies and phonorecords acquired or made under this section,
except copies and phonorecords of transmission programs consisting of a
regularly scheduled newscast or on-the-spot coverage of news events,
shall be subject to the following restrictions concerning copying and
access: in the case of television or other audiovisual transmission
programs, copying and access are governed by Library of Congress
Regulation 818-17, Policies Governing the Use and Availability of Motion
Pictures and Other Audiovisual Works in the Collections of the Library
of Congress, or its successors; in the case of audio transmission
programs, copying and access are governed by Library of Congress
Regulation 818-18.1,
[[Page 703]]
Recorded Sound Listening and Duplication Services, or its successors.
Transmission programs consisting of regularly scheduled newscasts or on-
the-spot coverage of news events are subject to the provisions of the
``American Television and Radio Archives Act,'' 2 U.S.C. 170, and such
regulations as the Librarian of Congress shall prescribe.
(f) Registration of claims to copyright. (1) Copies and phonorecords
fixed by the Library of Congress under the provisions of paragraph (c)
of this section may be used as the deposit for copyright registration
provided that:
(i) The application and fee, in a form acceptable for registration,
is received by the Copyright Office no later than ninety days after
transmission of the program, and
(ii) Correspondence received by the Copyright Office in the envelope
containing the application and fee states that a fixation of the instant
work was made by the Library of Congress and requests that the copy or
phonorecord so fixed be used to satisfy the registration deposit
provisions.
(2) Copies and phonorecords transferred, lent, or sold to the
Library of Congress under the provisions of paragraph (d) of this
section may be used as the deposit for copyright registration purposes
only when the application and fee, in a form acceptable for
registration, accompany, in the same container, the copy or phonorecord
lent, transferred, or sold, and there is an explanation that the copy or
phonorecord is intended to satisfy both the demand issued under section
407(e)(2) of title 17 of the United States Code and the registration
deposit provisions.
(g) Agreements modifying the terms of this section. (1) The Library
of Congress may, at its sole discretion, enter into an agreement whereby
the provision of copies or phonorecords of unpublished audio or
audiovisual transmission programs on terms different from those
contained in this section is authorized.
(2) Any such agreement may be terminated without notice by the
Library of Congress.
(17 U.S.C. 407, 408, 702)
[48 FR 37208, Aug. 17, 1983, as amended at 56 FR 7815, Feb. 26, 1991; 60
FR 34168, June 30, 1995; 64 FR 36575, July 7, 1999; 66 FR 34373, June
28, 2001; 69 FR 62411, Oct. 26, 2004; 82 FR 9362, Feb. 6, 2017]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.
202.22(d)(6)(iii) was amended by removing ``the Copyright Acquisitions
Division'' and adding in its place ``Acquisitions and Deposits'',
effective July 22, 2021.
Sec.202.23 Full term retention of copyright deposits.
(a) General. (1) This section prescribes conditions under which a
request for full term retention, under the control of the Copyright
Office, of copyright deposits (copies, phonorecords, or identifying
material) of published works may be made and granted or denied pursuant
to section 704(e) of title 17 of the United States Code. Only copies,
phonorecords, or identifying material deposited in connection with
registration of a claim to copyright under title 17 of the United States
Code are within the provisions of this section. Only the depositor or
the copyright owner of record of the work identified by the copyright
deposit, or a duly authorized agent of the depositor or copyright owner,
may request full term retention. A fee for this service is fixed by this
section pursuant to section 708(a) of title 17 of the United States
Code.
(2) For purposes of this section, under the control of the Copyright
Office shall mean within the confines of Copyright Office buildings and
under the control of Copyright Office employees, including retention in
a Federal records center, but does not include transfer to the Library
of Congress collections.
(3) For purposes of this section, full term retention means
retention for a period of 75 years from the date of publication of the
work identified by the particular copyright deposit which is retained.
(4) For purposes of this section, copyright deposit or its plural
means the copy, phonorecord, or identifying material submitted to the
Copyright Office in connection with a published work that is
subsequently registered
[[Page 704]]
and made part of the records of the Office.
(b) Form and content of request for full term retention--(1) Forms.
The Copyright Office does not provide printed forms for the use of
persons requesting full term retention of copyright deposits.
(2) Requests for full term retention must be made in writing
addressed to the Director of the Office of Public Records and
Repositories in the manner prescribed specified in Sec.201.1(b)(1) of
this chapter, and shall include a legally binding signature, including
an electronic signature as defined in 15 U.S.C. 7006, of or on behalf of
the depositor or copyright owner of record, and clearly indicate that
full term retention is desired.
(3) The request for full term retention must adequately identify the
particular copyright deposit to be retained, preferably by including the
title used in the registration application, the name of the depositor or
copyright owner of record, the publication date, and, if registration
was completed earlier, the registration number.
(c) Conditions under which requests will be granted or denied--(1)
General. A request that meets the requirements of paragraph (b) of this
section will generally be granted if the copyright deposit for which
full term retention is requested has been continuously in the custody of
the Copyright Office and the Library of Congress has not, by the date of
the request, selected the copyright deposit for its collections.
(2) Time of request. The request for full term retention of a
particular copyright deposit may be made at the time of deposit or at
any time thereafter; however, the request will be granted only if at
least one copy, phonorecord, or set of identifying material is in the
custody of the Copyright Office at the time of the request. Where the
request is made concurrent with the initial deposit of the work for
registration, the requestor must submit one copy or phonorecord more
than the number specified in Sec.202.20 for the particular work.
(3) One deposit retained. The Copyright Office will retain no more
than one copy, phonorecord, or set of identifying material for a given
registered work.
(4) Denial of request for full term retention. The Copyright Office
reserves the right to deny the request for full term retention where:
(i) The excessive size, fragility, or weight of the deposit would,
in the sole discretion of the Register of Copyrights, constitute an
unreasonable storage burden. The request may nevertheless be granted if,
within 60 calendar days of the original denial of the request, the
requestor pays the reasonable administrative costs, as fixed in the
particular case by the Register of Copyrights, of preparing acceptable
identifying materials for retention in lieu of the actual copyright
deposit;
(ii) The Library of Congress has selected for its collections the
single copyright deposit, or both, if two copies or phonorecords were
deposited; or
(iii) Retention would result in a health or safety hazard, in the
sole judgment of the Register of Copyrights. The request may
nevertheless be granted if, within 60 calendar days of the original
denial of the request, the requestor pays the reasonable administrative
costs, as fixed in the particular case by the Register of Copyrights of
preparing acceptable identifying materials for retention in lieu of the
actual copyright deposit.
(d) Form of copyright deposit. If full term retention is granted,
the Copyright Office will retain under its control the particular
copyright deposit used to make registration for the work. Any deposit
made on or after September 19, 1978, shall satisfy the requirements of
Sec. Sec.202.20 and 202.21.
(e) Fee for full term retention. (1) Pursuant to section 708(a) of
title 17 of the United States Code, the Register of Copyrights has fixed
the fee for full term retention, as prescribed in Sec.201.3(d) of this
chapter, for each copyright deposit granted full term retention.
(2) A check or money order in the amount prescribed in Sec.
201.3(d) of this chapter payable to the U.S. Copyright Office, must be
received in the Copyright Office within 60 calendar days from the date
of mailing of the Copyright Office's notification to the requestor that
full term retention has been granted for a particular copyright deposit.
[[Page 705]]
(3) The Copyright Office will issue a receipt acknowledging payment
of the fee and identifying the copyright deposit for which full term
retention has been granted.
(f) Selection by Library of Congress--(1) General. All published
copyright deposits are available for selection by the Library of
Congress until the Copyright Office has formally granted a request for
full term retention. Unless the requestor has deposited the additional
copy or phonorecord specified by paragraph (c)(2) of this section, the
Copyright Office will not process a request for full term retention
submitted concurrent with a copyright registration application and
deposit, until the Library of Congress has had a reasonable amount of
time to make its selection determination.
(2) A request for full term retention made at the time of deposit of
a published work does not affect the right of the Library to select one
or both of the copyright deposits.
(3) If one copyright deposit is selected, the second deposit, if
any, will be used for full term retention.
(4) If both copyright deposits are selected, or, in the case where
the single deposit made is selected, full term retention will be granted
only if the additional copy or phonorecord specified by paragraph (c)(2)
was deposited.
(g) Termination of full term storage. Full term storage will cease
75 years after the date of publication of the work identified by the
copyright deposit retained, and the copyright deposit will be disposed
of in accordance with section 704, paragraphs (b) through (d), of title
17 of the United States Code.
[52 FR 28822, Aug. 4, 1987, as amended at 60 FR 34168, June 30, 1995; 63
FR 29139, May 28, 1998; 64 FR 29522, June 1, 1999; 64 FR 36575, July 7,
1999; 65 FR 39819, June 28, 2000; 73 FR 37839, July 2, 2008; 82 FR 9362,
Feb. 6, 2017; 85 FR 19668, Apr. 8, 2020]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.
202.23(b)(2) was amended by removing ``Office of Public Records and
Repositories'' and adding in its place ``Office of Copyright Records''
effective July 22, 2021.
Sec.202.24 Deposit of published electronic works available only
online.
(a) Pursuant to authority under 17 U.S.C. 407(d), the Register of
Copyrights may make written demand to deposit one complete copy or a
phonorecord of an electronic work published in the United States and
available only online upon the owner of copyright or of the exclusive
right of publication in the work, under the following conditions:
(1) Demands may be made only for works in those categories
identified in Sec.202.19(c)(5) as being subject to demand.
(2) Demands may be made only for electronic-only serials published
on or after February 24, 2010.
(3) Demands may be made only for electronic-only books published on
or after December 14, 2020.
(4) The owner of copyright or of the exclusive right of publication
must deposit the demanded work within three months of the date the
demand notice is received.
(5) Copies or phonorecords deposited in response to a demand must be
able to be accessed and reviewed by the Copyright Office, Library of
Congress, and the Library's authorized users on an ongoing basis.
(b) Technical standards. Technical standards for the transmission of
copies of electronic-only works to the Copyright Office in response to a
demand will be available on the Copyright Office website
(www.copyright.gov).
(c) Definitions. (1) ``Best edition'' has the meaning set forth in
Sec.202.19(b)(1).
(2) ``Complete copy'' has the meaning set forth in Sec.
202.19(b)(2).
(3) ``Electronic-only'' works are electronic works that are
published and available only online.
(d) Special relief. (1) In the case of any demand made under
paragraph (a) of this section, the Register of Copyrights may, after
consultation with other appropriate officials of the Library of Congress
and upon such conditions as the Register may determine after such
consultation,
(i) Extend the time period provided in 17 U.S.C. 407(d);
(ii) Permit the deposit of incomplete copies or phonorecords; or
[[Page 706]]
(iii) Permit the deposit of copies or phonorecords other than those
normally comprising the best edition.
(2) Any decision as to whether to grant such special relief, and the
conditions under which special relief is to be granted, shall be made by
the Register of Copyrights after consultation with other appropriate
officials of the Library of Congress, and shall be based upon the
acquisition policies of the Library of Congress then in force.
(3) Requests for special relief under this section shall be made in
writing to the Copyright Acquisitions Division, shall be signed by or on
behalf of the owner of copyright or of the exclusive right of
publication in the work, and shall set forth specific reasons why the
request should be granted.
[75 FR 3869, Jan. 25, 2010, as amended at 82 FR 9362, Feb. 6, 2017; 85
FR 71837, Nov. 12, 2020]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.
202.24(d)(3) was amended by removing ``the Copyright Acquisitions
Division'' and adding in its place ``Acquisitions and Deposits'',
effective July 22, 2021.
Sec. Appendix A to Part 202--Technical Guidelines Regarding Sound
Physical Condition
To be considered a copy ``of sound physical condition'' within the
meaning of 37 CFR 202.22(d)(5), a copy shall conform to all the
technical guidelines set out in this Appendix.
A. Physical Condition. All portions of the copy that reproduce the
transmission program must be:
1. Clean: Free from dirt, marks, spots, fungus, or other smudges,
blotches, blemishes, or distortions;
2. Undamaged: Free from burns, blisters, tears, cuts, scratches,
breaks, erasure, or other physical damage. The copies must also be free
from:
(i) Any damage that interferes with performance from the tape or
other reproduction, including physical damage resulting from earlier
mechanical difficulties such as cassette jamming, breaks, tangles, or
tape overflow; and
(ii) Any erasures, damage causing visual or audible defects or
distortions or any material remaining from incomplete erasure of
previously recorded works.
3. Unspliced: Free from splices in any part of the copy reproducing
the transmission program, regardless of whether the splice involves the
addition or deletion of material or is intended to repair a break or
cut.
4. Undeteriorated: Free from any visual or aural deterioration
resulting from aging or exposure to climatic, atmospheric, or other
chemical or physical conditions, including heat, cold, humidity,
electromagnetic fields, or radiation. The copy shall also be free from
excessive brittleness or stretching, from any visible flaking of oxide
from the tape base or other medium, and from other visible signs of
physical deterioration or excessive wear.
B. Physical Appurtenances of Deposit Copy.
1. Physical Housing of Video Tape Copy. (a) In the case of video
tape reproduced for reel-to-reel performance, the deposit copy shall
consist of reels of uniform size and length. The length of the reels
will depend on both the size of the tape and its running time (the last
reel may be shorter). (b) In the case of video tape reproduced for
cassette, cartridge, or similar performance, the tape drive mechanism
shall be fully operable and free from any mechanical defects.
2. ``Leader'' or Equivalent. The copy, whether housed in reels,
cassettes, or cartridges, shall have a leader segment both preceding the
beginning and following the end of the recording.
C. Visual and Aural Quality of Copy:
1. Visual Quality. The copy should be equivalent to an evaluated
first generation copy from an edited master tape and must reproduce a
flawless and consistent electronic signal that meets industry standards
for television screening.
2. Aural Quality. The sound channels or other portions must
reproduce a flawless and consistent electronic signal without any
audible defects.
(17 U.S.C. 407, 408, 702)
[48 FR 37209, Aug. 17, 1983, as amended at 60 FR 34168, June 30, 1995]
Sec. Appendix B to Part 202--``Best Edition'' of Published Copyrighted
Works for the Collections of the Library of Congress
a. The copyright law (title 17, United States Code) requires that
copies or phonorecords deposited in the Copyright Office be of the
``best edition'' of the work. The law states that ``The `best edition'
of a work is the edition, published in the United States at any time
before the date of deposit, that the Library of Congress determines to
be most suitable for its purposes.'' (For works first published only in
a country other than the United States, the law requires the deposit of
the work as first published.)
b. When two or more editions of the same version of a work have been
published, the one of the highest quality is generally considered to be
the best edition. In judging quality, the Library of Congress will
adhere to the criteria set forth below in all but exceptional
circumstances.
[[Page 707]]
c. Where differences between editions represent variations in
copyrightable content, each edition is a separate version and ``best
edition'' standards based on such differences do not apply. Each such
version is a separate work for the purpose of the copyright law.
d. The criteria to be applied in determining the best edition of
each of several types of material are listed below in descending order
of importance. In deciding between two editions, a criterion-by-
criterion comparison should be made. The edition which first fails to
satisfy a criterion is to be considered of inferior quality and will not
be an acceptable deposit. Example: If a comparison is made between two
hardbound editions of a book, one a trade edition printed on acid-free
paper, and the other a specially bound edition printed on average paper,
the former will be the best edition because the type of paper is a more
important criterion than the binding.
e. Under regulations of the Copyright Office, potential depositors
may request authorization to deposit copies or phonorecords of other
than the best edition of a specific work (e.g., a microform rather than
a printed edition of a serial), by requesting ``special relief'' from
the deposit requirements. All requests for special relief should be in
writing and should state the reason(s) why the applicant cannot send the
required deposit and what the applicant wishes to submit instead of the
required deposit.
I. Printed Textual Matter
A. Paper, Binding, and Packaging:
1. Archival-quality rather than less-permanent paper.
2. Hard cover rather than soft cover.
3. Library binding rather than commercial binding.
4. Trade edition rather than book club edition.
5. Sewn rather than glue-only binding.
6. Sewn or glued rather than stapled or spiral-bound.
7. Stapled rather than spiral-bound or plastic-bound.
8. Bound rather than looseleaf, except when future looseleaf
insertions are to be issued. In the case of looseleaf materials, this
includes the submission of all binders and indexes when they are part of
the unit as published and offered for sale or distribution.
Additionally, the regular and timely receipt of all appropriate
looseleaf updates, supplements, and releases including supplemental
binders issued to handle these expanded versions, is part of the
requirement to properly maintain these publications.
9. Slip-cased rather than nonslip-cased.
10. With protective folders rather than without (for broadsides).
11. Rolled rather than folded (for broadsides).
12. With protective coatings rather than without (except broadsides,
which should not be coated).
B. Rarity:
1. Special limited edition having the greatest number of special
features.
2. Other limited edition rather than trade edition.
3. Special binding rather than trade binding.
C. Illustrations:
1. Illustrated rather than unillustrated.
2. Illustrations in color rather than black and white.
D. Special Features:
1. With thumb notches or index tabs rather than without.
2. With aids to use such as overlays and magnifiers rather than
without.
E. Size:
1. Larger rather than smaller sizes. (Except that large-type
editions for the partially-sighted are not required in place of editions
employing type of more conventional size.)
II. Photographs
A. Size and finish, in descending order of preference:
1. The most widely distributed edition.
2. 8 x 10-inch glossy print.
3. Other size or finish.
B. Unmounted rather than mounted.
C. Archival-quality rather than less-permanent paper stock or
printing process.
III. Motion Pictures
Film medium is considered a better quality than any other medium.
The formats under ``film'' and ``video formats'' are listed in
descending order of preference:
A. Film:
1. Preprint material, by special arrangement.
2. 70 mm positive print, if original production negative is greater
than 35 mm.
3. 35 mm positive prints.
4. 16 mm positive prints.
B. Video Formats:
1. Betacam SP.
2. Digital Beta (Digibeta).
3. DVD.
4. VHS Cassette.
IV. Other Graphic Matter
A. Paper and Printing:
1. Archival quality rather than less-permanent paper.
2. Color rather than black and white.
B. Size and Content:
1. Larger rather than smaller size.
2. In the case of cartographic works, editions with the greatest
amount of information rather than those with less detail.
C. Rarity:
1. The most widely distributed edition rather than one of limited
distribution.
[[Page 708]]
2. In the case of a work published only in a limited, numbered
edition, one copy outside the numbered series but otherwise identical.
3. A photographic reproduction of the original, by special
arrangement only.
D. Text and Other Materials:
1. Works with annotations, accompanying tabular or textual matter,
or other interpretative aids rather than those without them.
E. Binding and Packaging:
1. Bound rather than unbound.
2. If editions have different binding, apply the criteria in I.A.2-
I.A.7, above.
3. Rolled rather than folded.
4. With protective coatings rather than without.
V. Phonorecords
A. Compact digital disc rather than a vinyl disc.
B. Vinyl disc rather than tape.
C. With special enclosures rather than without.
D. Open-reel rather than cartridge.
E. Cartridge rather than cassette.
F. Quadraphonic rather than stereophonic.
G. True stereophonic rather than monaural.
H. Monaural rather than electronically rechanneled stereo.
VI. Musical Compositions
A. Fullness of Score:
1. Vocal music:
a. With orchestral accompaniment:
i. Full score and parts, if any, rather than conductor's score and
parts, if any. (In cases of compositions published only by rental,
lease, or lending, this requirement is reduced to full score only.)
ii. Conductor's score and parts, if any, rather than condensed score
and parts, if any. (In cases of compositions published only by rental,
lease, or lending, this requirement is reduced to conductor's score
only.)
b. Unaccompanied: Open score (each part on separate staff) rather
than closed score (all parts condensed to two staves).
2. Instrumental music:
a. Full score and parts, if any, rather than conductor's score and
parts, if any. (In cases of compositions published only by rental,
lease, or lending, this requirement is reduced to full score only.)
b. Conductor's score and parts, if any, rather than condensed score
and parts, if any. (In cases of compositions published only by rental,
lease, or lending, this requirement is reduced to conductor's score
only.)
B. Printing and Paper:
1. Archival-quality rather than less-permanent paper.
C. Binding and Packaging:
1. Special limited editions rather than trade editions.
2. Bound rather than unbound.
3. If editions have different binding, apply the criteria in I.A.2-
I.A.12, above.
4. With protective folders rather than without.
VII. Microforms
A. Related Materials:
1. With indexes, study guides, or other printed matter rather than
without.
B. Permanence and Appearance:
1. Silver halide rather than any other emulsion.
2. Positive rather than negative.
3. Color rather than black and white.
C. Format (newspapers and newspaper-formatted serials):
1. Reel microfilm rather than any other microform.
D. Format (all other materials):
1. Microfiche rather than reel microfilm.
2. Reel microfilm rather than microform cassetes.
3. Microfilm cassettes rather than micro-opaque prints.
E. Size:
1. 35 mm rather than 16 mm.
VIII. Machine-Readable Copies
A. Computer Programs:
1. With documents and other accompanying material rather than
without.
2. Not copy-protected rather than copy-protected (if copy-protected
then with a backup copy of the disk(s)).
3. Format:
a. PC-DOS or MS-DOS (or other IBM compatible formats, such as
XENIX):
(i) 5\1/4\ Diskette(s).
(ii) 3\1/2\ Diskette(s).
(iii) Optical media, such as CD-ROM--best edition should adhere to
prevailing NISO standards.
b. Apple Macintosh:
(i) 3\1/2\ Diskette(s).
(ii) Optical media, such as CD-ROM--best edition should adhere to
prevailing NISO standards.
B. Computerized Information Works, Including Statistical Compendia,
Serials, or Reference Works:
1. With documentation and other accompanying material rather than
without.
2. With best edition of accompanying program rather than without.
3. Not copy-protected rather than copy-protected (if copy-protected
then with a backup copy of the disk(s)).
4. Format:
a. PC-DOS or MS-DOS (or other IBM compatible formats, such as
XENIX):
(i) Optical media, such as CD-ROM--best edition should adhere to
prevailing NISO standards.
(ii) 5\1/4\ Diskette(s).
(iii) 3\1/2\ Diskette(s).
[[Page 709]]
b. Apple Macintosh:
(i) Optical media, such as CD-ROM--best edition should adhere to
prevailing NISO standards.
(ii) 3\1/2\ Diskette(s).
IX. Electronic-Only Works Published in the United States and Available
Only Online
The following encodings are listed in descending order of preference
for all deposits in all categories below:
1. UTF-8.
2. UTF-16 (with BOM).
3. US-ASCII.
4. ISO 8859.
5. All other character encodings.
A. Electronic-Only Serials:
1. Content Format:
a. Serials-specific structured/markup format:
i. Content compliant with the NLM Journal Archiving (XML) Document
Type Definition (DTD), with presentation stylesheet(s), rather than
without NISO JATS: Journal Article Tag Suite (NISO Z39.96-201x) with
XSD/XSL presentation stylesheet(s) and explicitly stated character
encoding.
ii. Other widely used serials or journal XML DTDs/schemas, with
presentation stylesheet(s), rather than without.
iii. Proprietary XML format for serials or journals (with
documentation), with DTD/schema and presentation stylesheet(s), rather
than without.
b. Page-oriented rendition:
i. PDF/UA (Portable Document Format/Universal Accessibility;
compliant with ISO 14289-1).
ii. PDF/A (Portable Document Format/Archival; compliant with ISO
19005).
iii. PDF (Portable Document Format, with searchable text, rather
than without; highest quality available, with features such as
searchable text, embedded fonts, lossless compression, high resolution
images, device-independent specification of colorspace; content tagging;
includes document formats such as PDF/X).
c. Other structured or markup formats:
i. Widely-used serials or journal non-proprietary XML-based DTDs/
schemas with presentation stylesheet(s).
ii. Proprietary XML-based format for serials or journals (with
documentation) with DTD/schema and presentation stylesheet(s).
iii. XHTML or HTML, with DOCTYPE declaration and presentation
stylesheet(s).
iv. XML-based document formats (widely used and publicly
documented). With presentation stylesheets, if applicable. Includes ODF
(ISO/IEC 26300) and OOXML (ISO/IEC 29500).
d. PDF (web-optimized with searchable text).
e. Other formats:
i. Rich text format.
ii. Plain text.
iii. Widely-used proprietary word processing or page-layout formats.
iv. Other text formats not listed here.
2. Metadata Elements: If included with published version of work,
descriptive data (metadata) as described below should accompany the
deposited material:
a. Title level metadata: serial or journal title, ISSN, publisher,
frequency, place of publication.
b. Article level metadata, as relevant/or applicable: volume(s),
number(s), issue dates(s), article title(s), article author(s), article
identifier (DOI, etc.).
c. With other descriptive metadata (e.g., subject heading(s),
descriptor(s), abstract(s)), rather than without.
3. Completeness:
a. All elements considered integral to the publication and offered
for sale or distribution must be deposited--e.g., articles, table(s) of
contents, front matter, back matter, etc. Includes all associated
external files and fonts considered integral to or necessary to view the
work as published.
b. All updates, supplements, releases, and supersessions published
as part of the work and offered for sale or distribution must be
deposited and received in a regular and timely manner for proper
maintenance of the deposit.
4. Technological measures that control access to or use of the work
should be removed.
B. Electronic-Only Books:
1. Content Format:
a. Book-specific structured/markup format, i.e., XML-based markup
formats, with included or accessible DTD/schema, XSD/XSL presentation
stylesheet(s), and explicitly stated character encoding:
i. BITS-compliant (NLM Book DTD).
ii. EPUB-compliant.
iii. Other widely-used book DTD/schemas (e.g., TEI, DocBook, etc.).
b. Page-oriented rendition:
i. PDF/UA (Portable Document Format/Universal Accessibility;
compliant with ISO 14289-1).
ii. PDF/A (Portable Document Format/Archival; compliant with ISO
19005).
ii. PDF (Portable Document Format; highest quality available, with
features such as searchable text, embedded fonts, lossless compression,
high resolution images, device-independent specification of colorspace;
content tagging; includes document formats such as PDF/X).
c. Other structured markup formats:
i. XHTML or HTML, with DOCTYPE declaration and presentation
stylesheet(s).
ii. XML-based document formats (widely-used and publicly-
documented), with presentation style sheet(s) if applicable. Includes
ODF (ISO/IEC 26300) and OOXML (ISO/IEC 29500).
iii. SGML, with included or accessible DTD.
[[Page 710]]
iv. Other XML-based non-proprietary formats, with presentation
stylesheet(s).
v. XML-based formats that use proprietary DTDs or schemas, with
presentation stylesheet(s).
d. PDF (web-optimized with searchable text).
e. Other formats:
i. Rich text format.
ii. Plain text.
iii. Widely-used proprietary word processing formats.
iv. Other text formats not listed here.
2. Metadata Elements: If included with published version of work,
descriptive data (metadata) as described below should accompany the
deposited material:
a. As supported by format (e.g., standards-based formats such as
ONIX, XMP, MODS, or MARCXML either embedded in or accompanying the
digital item): title, creator, creation date, place of publication,
publisher/producer/distributor, ISBN, contact information.
b. Include if part of published version of work: language of work,
other relevant identifiers (e.g., DOI, LCCN, etc.), edition, subject
descriptors, abstracts.
3. Rarity and Special Features:
a. Limited editions (including those with special features such as
high resolution images.)
b. Editions with the greatest number of unique features (such as
additional content, multimedia, interactive elements.)
4. Completeness:
a. For items published in a finite number of separate components,
all elements published as part of the work and offered for sale or
distribution must be deposited. Includes all associated external files
and fonts considered integral to or necessary to view the work as
published.
b. All updates, supplements, releases, and supersessions published
as part of the work and offered for sale or distribution must be
submitted and received in a regular and timely manner for proper
maintenance of the deposit.
5. Technological Protection Measures:
a. Copies published in formats that do not contain technological
measures controlling access to or use of the work.
b. Copies published with technological measures that control access
to or use of the work, and for which the owner has elected to remove
such technological measures.
c. Copies otherwise provided in a manner that meets the requirements
of Sec.202.24(a)(5).
X. Works Existing in More Than One Medium
Editions are listed below in descending order of preference.
A. Newspapers, dissertations and theses, newspaper-formatted
serials:
1. Microform.
2. Printed matter.
B. All other materials:
1. Printed matter.
2. Microform.
3. Phonorecord.
[54 FR 42299, Oct. 16, 1989, as amended at 62 FR 51603, Oct. 2, 1997; 69
FR 8822, Feb. 26, 2004; 75 FR 3869, Jan. 25, 2010; 82 FR 9362, Feb. 6,
2017; 83 FR 61550, Nov. 30, 2018; 85 FR 71837, Nov. 12, 2020]
PART 203_FREEDOM OF INFORMATION ACT: POLICIES AND PROCEDURES--
Table of Contents
Organization
Sec.
203.1 General.
203.2 Authority and functions.
203.3 Organization.
Procedures
203.4 Proactive disclosure of Office records.
203.5 Requirements for making requests.
203.6 Responsibility for responding to requests.
203.7 Timing of responses to requests.
203.8 Responses to requests.
203.9 Administrative appeals.
203.10 Preservation of records.
Charges for Responding to FOIA Requests
203.11 Fees.
Authority: 5 U.S.C. 552.
Source: 43 FR 774, Jan. 4, 1978, unless otherwise noted.
Organization
Sec.203.1 General.
This information is furnished for the guidance of the public and in
compliance with the requirements of the Freedom of Information Act
(``FOIA''), 5 U.S.C. 552. The rules contained in this part should be
read in conjunction with the text of FOIA and the Uniform Freedom of
Information Fee Schedule and Guidelines published by the Office of
Management and Budget (``OMB Guidelines''). Requests made by individuals
for records pertaining to themselves under the Privacy Act of 1974, 5
U.S.C. 552a, are processed under part 204 of this chapter. Requests for
services for which the Copyright Act of 1976, title 17 of the United
States Code, requires a fee are not processed under this part, but will
be processed under the applicable regulations governing that service
(including Sec.201.2 of this chapter). If the
[[Page 711]]
Copyright Office receives a request for services for which the Copyright
Act requires a fee to be charged, the Office will notify the requester
of the procedure established to obtain such services, and the applicable
fees under Sec.201.3 of this chapter. Section 706(b) of the Copyright
Act and the regulations issued under section 706(b) are not subject to
FOIA.
[82 FR 9506, Feb. 7, 2017]
Sec.203.2 Authority and functions.
The administration of the copyright law was entrusted to the Library
of Congress by an act of Congress in 1870, and the Copyright Office has
been a separate department of the Library since 1897. The statutory
functions of the Copyright Office are contained in and carried out in
accordance with the Copyright Act.
[82 FR 9362, Feb. 6, 2017]
Sec.203.3 Organization.
(a) The Office of the Register of Copyrights has overall
responsibility for the Copyright Office and its statutory mandate,
specifically: For legal interpretation of the copyright law;
administering the provisions of title 17 of the U.S.C.; promulgating
copyright regulations; advising Congress and other government officials
on domestic and international copyright policy and other intellectual
property issues; determining personnel and other resource requirements
for the Office; organizing strategic and annual program planning; and
preparing budget estimates for inclusion in the budget of the Library of
Congress and U.S. Government.
(b) The Office of the Chief of Operations is headed by the Chief of
Operations (``COO''), who advises the Register on core business
functions and coordinates and directs the day-to-day operations of the
Copyright Office. The Office of the COO supervises human capital, the
administration of certain statutory licenses, mandatory deposits and
acquisitions, and strategic planning functions. This Office interacts
with every other senior management office that reports to the Register
and frequently coordinates and assesses institutional projects. The COO
chairs the Copyright Office's operations committee. The following
divisions fall under the oversight of the COO:
(1) The Receipt Analysis and Control Division is responsible for
sorting, analyzing, and scanning incoming mail; creating initial
records; labeling materials; and searching, assembling, and dispatching
electronic and hardcopy materials and deposits to the appropriate
service areas. The Division is responsible for operating the Copyright
Office's central print room, mail functions, and temporary storage. The
Division also processes all incoming fees and maintains accounts,
related records, and reports involving fees received.
(2) The Copyright Acquisitions Division administers the mandatory
deposit requirements of the Copyright Act, acting as an intermediary
between copyright owners of certain published works and the acquisitions
staff in the Library of Congress. 17 U.S.C. 407. This Office creates and
updates records for the copies received by the Copyright Office; demands
particular works or particular formats of works as necessary; and
administers deposit agreements between the Library and copyright owners.
(c) The Office of the General Counsel is headed by the General
Counsel and Associate Register of Copyrights, who is an expert copyright
attorney and one of four legal advisors to the Register. This Office
assists the Register in carrying out critical work of the Copyright
Office regarding the legal interpretation of the copyright law. The
General Counsel liaises with the Department of Justice, other federal
departments, and the legal community on a wide range of copyright
matters including litigation and the administration of title 17 of the
U.S.C. The General Counsel also has primary responsibility for the
formulation and promulgation of regulations and the adoption of legal
positions governing policy matters and the practices of the Copyright
Office.
(d) The Office of Policy and International Affairs is headed by the
Associate Register of Copyrights and Director of Policy and
International Affairs, who is an expert copyright attorney and one of
four legal advisors to the
[[Page 712]]
Register. This Office assists the Register with critical policy
functions of the Copyright Office, including domestic and international
policy analyses, legislative support, and trade negotiations. Policy and
International Affairs represents the Copyright Office at meetings of
government officials concerned with the international aspects of
intellectual property protection, and provides regular support to
Congress and its committees on statutory amendments and construction.
(e) The Office of Registration Policy and Practice is headed by the
Associate Register of Copyrights and Director of Registration Policy and
Practice, who is an expert copyright attorney and one of four legal
advisors to the Register. This Office administers the U.S. copyright
registration system and advises the Register of Copyrights on questions
of registration policy and related regulations and interpretations of
copyright law. This Office has three divisions: Literary, Performing
Arts, and Visual Arts. It also has a number of specialized sections, for
example, in the area of motion pictures. This Office executes major
sections of the Compendium of Copyright Office Practices, particularly
with respect to the examination of claims and related principles of law.
(f) The Office of Public Information and Education is headed by the
Associate Register for Public Information and Education, who is an
expert copyright attorney and one of four legal advisors to the
Register. This Office informs and helps carry out the work of the
Register and the Copyright Office in providing authoritative information
about the copyright law to the public and establishing educational
programs. The Office publishes the copyright law and other provisions of
title 17 of the U.S.C.; maintains a robust and accurate public website;
creates and distributes a variety of circulars, information sheets, and
newsletters, including NewsNet; responds to public inquiries regarding
provisions of the law, explaining registration policies, procedures, and
other copyright-related topics upon request; plans and executes a
variety of educational activities; and engages in outreach with various
copyright community stakeholders.
(g) The Office of Public Records and Repositories is headed by the
Director, who is an expert in public administration and one of the
Register's top business advisors. This Office is responsible for
carrying out major provisions of title 17 of the U.S.C., including
establishing records policies; ensuring the storage and security of
copyright deposits, both analog and digital; recording licenses and
transfers of copyright ownership; preserving, maintaining, and servicing
copyright related records; researching and providing certified and non-
certified reproductions of copyright deposits; and maintaining the
official records of the Copyright Office. Additionally, the Office
engages regularly in discussions with leaders in the private and public
sectors regarding issues of metadata, interoperability, data management,
and open government.
(h) The Copyright Modernization Office (``CMO'') is headed by the
Director, who is the Register's top advisor on Copyright Office
modernization and oversees the development and implementation of
technology initiatives affecting registration and recordation. This
Office directs and coordinates all modernization activities on behalf of
the U.S. Copyright Office, including resources, communications,
stakeholder engagement, and business project management. The CMO ensures
that modernization activities are continuously aligned with the Office's
and the Library of Congress's strategic goals, and collaborates with the
Office and the Library to drive modernization efforts. The CMO provides
project management, data management/analytics, and business analysis. It
also serves as the primary liaison with the Library of Congress's Office
and Chief Information Officer (``OCIO'') and serves in a leadership
function on the Office's Modernization Governance Board.
(i) The Chief Financial Officer (``CFO'') is a senior staff position
that serves under the Register and oversees all fiscal, financial, and
budgetary activities for the Copyright Office. The CFO also oversees the
Licensing Division, which administers certain statutory licenses set
forth in the Copyright
[[Page 713]]
Act. The Division collects royalty payments and examines statements of
account for the cable statutory license (17 U.S.C. 111), the satellite
statutory license for retransmission of distant television broadcast
stations (17 U.S.C. 119), and the statutory license for digital audio
recording technology (17 U.S.C. chapter 10). The Division also accepts
and records certain documents associated with the use of the mechanical
statutory license for making and distributing phonorecords of
nondramatic musical works (17 U.S.C. 115) and the statutory licenses for
publicly performing sound recordings by means of digital audio
transmission (17 U.S.C. 112, 114).
(j) The Office has no field organization.
(k) The Office is located in The James Madison Memorial Building of
the Library of Congress, 1st and Independence Avenue SE., Washington,
DC. 20559-6000. The Public Information Office is located in Room LM-401.
Its hours are 8:30 a.m. to 5 p.m., Monday through Friday except legal
holidays. The phone number of the Public Information Office is (202)
707-3000. Informational material regarding the copyright law, the
registration process, fees, and related information about the Copyright
Office and its functions may be obtained free of charge from the Public
Information Office upon request.
(l) All Copyright Office forms may be obtained free of charge from
the Public Information Office or by calling the Copyright Office Hotline
anytime day or night at (202) 707-9100.
[60 FR 34168, June 30, 1995, as amended at 62 FR 55742, Oct. 28, 1997;
64 FR 36575, July 7, 1999; 65 FR 39819, June 28, 2000; 66 FR 34373, June
28, 2001; 73 FR 37839, July 2, 2008; 76 FR 27898, May 13, 2011; 82 FR
9362, Feb. 6, 2017; 82 FR 9507, Feb. 7, 2017; 83 FR 63064, Dec. 7, 2018]
Effective Date Note: At 86 FR 32642, June 22, 2021, Sec.203.3 was
amended by
a. Revising paragraph (b).
b. In paragraph (c):
i. Removing ``also'' from the fourth sentence.
ii. Adding a sentence at the end of the paragraph.
iii. Adding paragraph (c)(1) and reserve paragraph (c)(2).
c. In paragraph (f), adding a sentence at the end of the paragraph.
d. In paragraph (g):
i. Removing ``Public Records and Repositories'' and adding in its
place ``Copyright Records''.
ii. Adding a sentence before the last sentence.
e. Removing and reserving paragraphs (h) and (i), effective July 22,
2021. For the convenience of the user, the added and revised text is set
forth as follows:
Sec.203.3 Organization.
* * * * *
(b) The Office of the Director of Operations is headed by the
Assistant Register and Director of Operations (``ARDO''), who advises
the Register on core business functions and coordinates and directs the
day-to-day operations of the Copyright Office. This Office supervises
human capital, finances, the administration of certain statutory
licenses, mandatory acquisitions and deposits, product management, and
materials control and analysis functions. It interacts with other senior
management offices that report to the Register and frequently
coordinates and assesses institutional projects. This Office has five
divisions: Acquisitions and Deposits; Administrative Services; Financial
Management; Materials Control and Analysis; and Product Management.
(1) Acquisitions and Deposits (``A&D'') administers the mandatory
deposit requirements of the Copyright Act, acting as an intermediary
between copyright owners of certain published works and the acquisitions
staff in the Library of Congress (17 U.S.C. 407). It creates and updates
records for copies received by the Copyright Office, demands particular
works or particular formats of works as necessary, and administers
deposit agreements between the Library and copyright owners.
(2) The Administrative Services Division (``ASD'') manages human
capital and physical space issues for the Copyright Office, and serves
as the liaison with other components of the Library for those matters.
(3) The Financial Management Division (``FMD'') oversees fiscal,
financial, and budgetary activities for the Copyright Office. It
contains the Licensing Section, which administers certain statutory
licenses set forth in the Copyright Act. The Licensing Section collects
royalty payments and examines statements of account for the cable
statutory license (17 U.S.C. 111), the satellite statutory license for
retransmission of distant television broadcast stations (17 U.S.C. 119),
and the statutory license for digital audio recording technology (17
U.S.C. chapter 10). The Licensing Section also accepts and records
certain documents associated with the use of the mechanical statutory
license for making and distributing phonorecords of
[[Page 714]]
nondramatic musical works (17 U.S.C. 115) and the statutory licenses for
publicly performing sound recordings by means of digital audio
transmission (17 U.S.C. 112, 114).
(4) The Materials Control and Analysis Division (``MCA'') processes
incoming mail, creates initial records, and dispatches electronic and
hardcopy materials and deposits to the appropriate service areas. It
operates the Copyright Office's central print room and outgoing mail
functions.
(5) The Product Management Division (``PMD'') advises on business
process integration and improvements in connection with technology
initiatives affecting the Copyright Office. It coordinates business
activities, including resource planning, stakeholder engagement
activities, and project management. The PMD oversees the Office's data
management, performance statistics, and business intelligence
capabilities.
(c) * * * The Office of the General Counsel also supervises the
Copyright Claims Board (``CCB'') as it discharges its statutory mandate.
(1) The CCB is a voluntary, alternative forum to Federal court for
parties to seek resolution of copyright disputes that have a low
economic value. The CCB is headed by three Copyright Claims Officers who
ensure that claims are properly asserted and appropriate for resolution;
manage proceedings; render determinations and award monetary relief;
provide public information; certify and maintain CCB records, including
making proceeding records publicly available; and other related duties.
(2) [Reserved]
* * * * *
(f) * * * This Office is comprised of two sections: The Public
Information Office and the Outreach and Education section.
(g) * * * It contains three divisions: Recordation; Records
Management; and Records, Research and Certification. * * *
* * * * *
Procedures
Sec.203.4 Proactive disclosure of Office records.
Records that are required by FOIA to be made available for public
inspection in electronic format may be accessed through the Office's Web
site at www.copyright.gov. The Office is responsible for determining
which of its records must be made publicly available, for identifying
additional records of interest to the public that are appropriate for
public disclosure, and for posting and indexing such records. The Office
must ensure that its Web site of posted records and indices is reviewed
and updated on an ongoing basis. The Office has a FOIA Public Liaison
who can assist individuals in locating records particular to the Office.
The Office's FOIA Public Liaison contact information may be found at
www.copyright.gov/foia.
[82 FR 9507, Feb. 7, 2017]
Sec.203.5 Requirements for making requests.
(a) General information. To be proper, a request must be made in
accordance with the rules established under this part.
(1) To make a request for records, a requester should write directly
by email to [email protected], by postal mail to the FOIA Requester
Service Center, Copyright Office, PIE, P.O. Box 70400, Washington, DC
20024, or submit the request in person between the hours of 8:30 a.m.
and 5 p.m. on any working day except legal holidays at Room LM-401, The
James Madison Memorial Building, 101 Independence Avenue SE.,
Washington, DC. If a request is made by mail, both the request and the
envelope containing it should include ``Freedom of Information Act
Request''. A request will receive the quickest possible response if it
is clearly marked and addressed to the FOIA Requester Service Center.
Guidelines for submitting a request can be found at www.copyright.gov/
foia.
(2) A requester who is making a request for records about himself or
herself must comply with part 204 of this chapter.
(3) Where a request for records pertains to a third party, a
requester may receive greater access by submitting either a notarized
authorization signed by that individual or a declaration made in
compliance with the requirements set forth in 28 U.S.C. 1746 by that
individual authorizing disclosure of the records to the requestor, or by
submitting proof that the individual is deceased (e.g., a copy of a
death certificate or obituary). As an exercise of administrative
discretion, the Office can require a requester to supply additional
information if necessary in order to verify that a particular individual
has consented to disclosure.
[[Page 715]]
(b) Description of records sought. The request must reasonably
describe the records sought. A request reasonably describes records if
it enables the Office to identify the records requested in such a way
that is not unreasonably burdensome or disruptive to Office operations.
To the extent possible, requesters should include specific information
that may help the agency identify the requested records, such as the
date, title or name, author, recipient, subject matter of the record,
registration, recordation, or reference number. Before submitting their
requests, requesters may contact the FOIA Public Liaison to discuss the
records they seek and to receive assistance in describing the records.
If after receiving a request the Office determines that it does not
reasonably describe the records sought, the Office will inform the
requester what additional information is needed or why the request is
insufficient. The requester may discuss with the FOIA Public Liaison how
to reformulate or modify a request. If a request does not reasonably
describe the records sought, the agency's response to the request may be
delayed.
(c) Formats. Requests may specify the preferred form or format
(including electronic formats) for the records identified. The Office
will accommodate the request if the record is readily reproducible in
that form or format.
(d) Contact information. Requesters must provide contact
information, such as a phone number, email address, and/or mailing
address, to assist the Office in communicating with a requester and
providing released records.
[82 FR 9507, Feb. 7, 2017]
Sec.203.6 Responsibility for responding to requests.
(a) In general. The Office is responsible for responding to a
request. In determining which records are responsive to a request, the
Office ordinarily will include only records in its possession as of the
date that it begins its search. If any other date is used, the Office
will inform the requester of that date.
(b) Authority to grant or deny requests. The Register of Copyrights,
and the Associate Register of Copyrights and Director of Public
Information and Education are authorized to grant or to deny any
requests for records.
(c) Consultation, referral, and coordination. When reviewing records
located by the Office in response to a request, the Office will
determine whether another agency of the Federal Government is better
able to determine whether the record is exempt from disclosure under
FOIA. As to any such record, the Office will proceed in one of the
following ways:
(1) Consultation. When records originated with the Office, but
contain within them information of interest to another agency or Federal
Government office, the Office may consult with the other entity prior to
making a release determination.
(2) Referral. (i) When the Office believes that a different agency
is best able to determine whether to disclose the record, the Office
will refer the responsibility for responding to the request regarding
that record to that agency. Ordinarily, the Office that originated the
record is presumed to be the best agency to make the disclosure
determination. If, however, the Office and the originating agency
jointly agree that the Office is in the best position to respond, then
the record may be handled as a consultation.
(ii) Whenever the Office refers any responsibility for responding to
a request to another agency, it will document the referral, maintain a
copy of the record that it refers, and notify the requester of the
referral. The notification will include the name(s) of the agency to
which the record was referred and that agency's FOIA contact
information.
(3) Coordination. When the Office believes that a different agency
is best able to determine whether to disclose the record, but disclosure
of the identity of the different agency could harm an interest protected
by an applicable exemption, the Office will coordinate with the
originating agency to seek its views of disclosability of the record.
The release determination for the record that is the subject of the
coordination will then be conveyed to the requester by the Office.
(d) Timing of responses to consultations and referrals. All
consultations and referrals received by the Office will be
[[Page 716]]
handled according to the date that the first agency received the
perfected FOIA request.
(e) Agreements regarding consultations and referrals. The Office may
establish agreements with other agencies to eliminate the need for
consultations or referrals with respect to particular types of records.
[82 FR 9507, Feb. 7, 2017]
Sec.203.7 Timing of responses to requests.
(a) In general. The Office will respond to all properly addressed
emailed and mailed requests and all personally delivered written
requests for records within 20 working days of receipt. The Office
ordinarily will respond to requests according to their order of receipt.
In instances involving a misdirected request rerouted to the Office, the
response time will commence on the date that the request is received by
the Office, but in any event not later than 10 working days after the
request is first received by the Library of Congress.
(b) Multitrack processing. The Office will designate a specific
track for requests that are granted expedited processing, in accordance
with the standards set forth in paragraph (e) of this section. The
Office may also designate additional processing tracks that distinguish
between simple and more complex requests based on the estimated amount
of work or time needed to process the request. Among the factors the
Office may consider are the number of records requested, the number of
pages involved in processing the request, and the need for consultations
or referrals. The Office will advise a requester of the track into which
their request falls and, when appropriate, will offer the requester an
opportunity to narrow or modify their request so that it can be placed
in a different processing track.(1)(i) Whenever the Office cannot meet
the statutory time limit for processing a request because of ``unusual
circumstances,'' as defined in paragraph (c)(2) of this section, the
Office will notify the requester in writing of the unusual circumstances
and the estimated date of determination, and alert requesters to the
availability of the Office of Government Information Services (OGIS) to
provide dispute resolution services. Where an extension of time greater
than 10 days is required, the Office will give the requester the
opportunity to:
(A) Limit the scope of the request so that it may be processed
within 20 working days; or
(B) Arrange with the Office an alternative time frame for processing
the request or a modified request.
(ii) The Office will make available the FOIA Public Liaison to
assist the requester in modifying the request.
(2) As used in this paragraph (c), ``unusual circumstances'' means,
only to the extent reasonably necessary to the proper processing of the
particular request:
(i) The need to search for and collect the requested records from
establishments that are physically separate from the Office;
(ii) The need to search for, collect, and examine a voluminous
amount of separate and distinct records which are demanded in a single
request; or,
(iii) The need for consultation, which shall be conducted with all
practicable speed, with another agency having a substantial interest in
the determination of the request or among two or more components of the
Copyright Office which have a substantial subject matter interest
therein.
(d) Aggregating requests. To satisfy unusual circumstances under the
FOIA, the Office may aggregate requests in cases where it reasonably
appears that multiple requests, submitted either by a requester or by a
group of requesters acting in concert, constitute a single request that
would otherwise involve unusual circumstances. The Office will not
aggregate multiple requests that involve unrelated matters.
(e) Expedited processing. (1) The Office will process requests and
appeals on an expedited basis whenever it is determined that the request
or appeal involves:
(i) Circumstances in which the lack of expedited processing could
reasonably be expected to pose an imminent threat to the life or
physical safety of an individual; or,
[[Page 717]]
(ii) An urgency to inform the public about an actual or alleged
Federal Government activity, if the request or appeal is made by a
person who is primarily engaged in disseminating information.
(2) A request for expedited processing may be made at any time.
Requests for expedited processing of initial requests should be made to
the FOIA Requester Service Center. Requests for expedited processing of
an administrative appeal should be submitted to the Office of the
Register of Copyrights.
(3) A requester who seeks expedited processing must submit a
statement, certified to be true and correct, setting forth the basis for
the claim that a ``compelling need'' exists for the requested
information.
(4) The Office will notify the requester within 10 calendar days of
the receipt of a request for expedited processing of its decision
whether to grant or deny expedited processing. If expedited processing
is granted, the request will be given priority and processed as soon as
is practicable. If a request for expedited processing is denied, the
requester may submit an appeal to the Office of the Register of
Copyrights. The Office will act expeditiously on any appeal of a denial
of expedited processing.
[82 FR 9508, Feb. 7, 2017, as amended at 84 FR 3700, Feb. 13, 2019]
Sec.203.8 Responses to requests.
(a) In general. The Office, to the extent practicable, will
communicate with requesters having access to the Internet
electronically, such as email or web portal.
(b) Acknowledgement of requests. The Office will acknowledge a
request in writing and assign it an individualized tracking number if it
will take longer than 10 working days to process. The Office will
include in the acknowledgement a brief description of the records
sought.
(c) Estimated dates of completion and interim responses. Upon
request, the Office will provide an estimated date by which the Office
expects to provide a response to the requester. If a request involves a
voluminous amount of material, or searches in multiple locations, the
agency may provide interim responses, releasing the records on a rolling
basis.
(d) Grants of requests. Once the Office determines it will grant a
request in full or in part, it will notify the requester in writing. The
Office will also inform the requester of any fees charged under Sec.
203.11 and will disclose the requested records to the requester promptly
upon payment of any applicable fees. The Office will inform the
requester of the availability of the FOIA Public Liaison to offer
assistance.
(e) Adverse determinations. If the Office makes an adverse
determination denying a request in any respect, it will notify the
requester of that determination in writing. Adverse determinations, or
denials of requests, include decisions that: The requested record is
exempt, in whole or in part; the requested record does not exist, cannot
be located, or has been destroyed; or the requested record is not
readily reproducible in the form or format sought by the requester.
Adverse determinations also include denials involving fees or fee waiver
matters or denials of requests for expedited processing.
(f) Content of denial. The denial shall be signed by the Associate
Register of Copyrights and Director of Public Information and Education
or a designee and shall include:
(1) The name and title or position of the person responsible for the
denial;
(2) A brief statement of the reasons for the denial, including any
FOIA exemption applied by the agency in denying the request;
(3) When applicable, an estimate of the volume of any records or
information withheld, such as the number of pages or some other
reasonable form of estimation, although such an estimate is not required
if the volume is otherwise indicated by deletions marked on records that
are disclosed in part or if providing an estimate would harm an interest
protected by an applicable exemption;
(4) A statement that the denial may be appealed under Sec.203.9,
and a description of the appeal requirements; and,
(5) A statement notifying the requester of the assistance available
from the Office's FOIA Public Liaison
[[Page 718]]
and the dispute resolution services offered by the Office of Government
Information Services.
(g) Markings on released documents. Records disclosed in part shall
be marked clearly to show the amount of information deleted and the
exemption under which the deletion was made unless doing so would harm
an interest protected by an applicable exemption. The location of the
information deleted must also be indicated on the record, if technically
feasible.
[82 FR 9508, Feb. 7, 2017]
Sec.203.9 Administrative appeals.
(a) Requirements for making an appeal. A requester may appeal any
adverse determination to the Register of Copyrights. Examples of adverse
determinations are provided in Sec.203.8(e). Requesters can submit
appeals by mail to the Register of Copyrights, Copyright Office, P.O.
Box 70400, Washington, DC 20024. The requester must make the appeal in
writing and to be considered timely it must be postmarked within 90
calendar days after the date of the Office's response. The appeal should
clearly identify the agency determination that is being appealed,
include the assigned docket number, and include a statement explaining
the basis for the appeal. To facilitate handling, the requester should
include on both the appeal letter and envelope ``Freedom of Information
Act Appeal.''
(b) Adjudication of appeals. (1) The Register of Copyrights or a
designee will adjudicate all appeals under this section.
(2) An appeal ordinarily will not be adjudicated if the request
becomes a matter of FOIA litigation.
(c) Decisions on appeals. The Office shall provide its decision on
an appeal in writing. A decision that upholds the Office's determination
in whole or in part will contain a statement that identifies the reasons
for the affirmance, including any FOIA exemptions applied. The decision
will provide the requester with notification of the statutory right to
file a lawsuit and will inform the requester of the mediation services
offered by the Office of Government Information Services (OGIS) of the
National Archives and Records Administration as a non-exclusive
alternative to litigation. If the Office's decision is remanded or
modified on appeal, the Agency will notify the requester of that
determination in writing. The Office will then further process the
request in accordance with the appeal determination and will respond
directly to the requester.
(d) Engaging in dispute resolution. Mediation is a voluntary
process. If the Office agrees to participate in the mediation services
provided by OGIS, it will actively engage as a partner to the process in
an attempt to resolve the dispute.
(e) When an appeal is required. Before seeking review by a court of
an agency's adverse determination, a requester must first submit a
timely administrative appeal.
[82 FR 9508, Feb. 7, 2017]
Sec.203.10 Preservation of records.
The Office must preserve all correspondence pertaining to the
requests that it receives under this part, as well as copies of all
requested records, until disposition or destruction is authorized
pursuant to title 44 of the United States Code or the General Records
Schedule 4.2of the National Archives and Records Administration. The
Office shall not dispose of or destroy records while they are the
subject of a pending request, appeal, or lawsuit under FOIA.
[82 FR 9508, Feb. 7, 2017, as amended at 84 FR 3701, Feb. 13, 2019]
Charges for Responding to FOIA Requests
Sec.203.11 Fees.
(a) In general. (1) The fee schedule of this section does not apply
with respect to the charging of fees for those records for which the
Copyright Act requires a fee to be charged. The fees required to be
charged are contained in Sec.201.3 of this chapter, or have been
established by the Register of Copyrights or Library of Congress
pursuant to the requirements of that section. The Copyright Office will
charge for processing requests under FOIA in accordance with the
provisions of this section and with the OMB Guidelines. For purposes of
assessing fees for processing
[[Page 719]]
requests, FOIA establishes three categories of requesters:
(i) Commercial use requesters;
(ii) Non-commercial scientific or educational institutions or news
media requesters; and
(iii) All other requesters.
(2) Different fees are assessed depending on the category.
Requesters may seek a fee waiver, which the Office will consider in
accordance with paragraph (k) of this section. To resolve any fee issues
that arise under this section, an agency may contact a requester for
additional information. The Office shall ensure that searches, review,
and duplication are conducted in the most efficient and the least
expensive manner. The Office will ordinarily collect all applicable fees
before sending copies of records to a requester. Requesters must pay
fees by check or money order made payable to the United States Copyright
Office.
(b) Definitions. For the purpose of this section:
(1) Commercial use request is a request that asks for information
for a use or purpose that furthers a commercial, trade, or profit
interest, which can include furthering those interests through
litigation. The Office's decision to place a requester in the commercial
use category will be made on a case-by-case basis based on the
requester's intended use of the information. The Office will notify
requesters of their placement in this category.
(2) Direct costs are those expenses that the Office incurs in
searching for, duplicating, and/or reviewing records in order to respond
to a FOIA request. Direct costs do not include overhead expenses such as
the costs of space, and of heating or lighting a facility.
(3) Duplication is reproducing a copy of a record, or of the
information contained in it, necessary to respond to a FOIA request.
Copies can take the form of paper, audiovisual materials, or electronic
records, among others.
(4) Educational institution is any school that operates a program of
scholarly research. A requester in this fee category must show that the
request is made in connection with his or her role at the educational
institution. The Office may seek verification from the requester that
the request is in furtherance of scholarly research and the Office will
advise requesters of their placement in this category.
(5) Noncommercial scientific institution is an institution that is
not operated on a commercial basis and is operated solely for the
purpose of conducting scientific research the results of which are not
intended to promote any particular product or industry. A requester in
this category must show that the request is authorized by and is made
under the auspices of a qualifying institution that the records are
sought to further scientific research and are not for a commercial use.
The Office will advise requesters of their placement in this category.
(6) Representative of the news media is any person or entity that
gathers information of potential interest to a segment of the public,
uses its editorial skills to turn the raw materials into a distinct
work, and distributes that work to an audience. The term ``news'' means
information that is about current events or that would be of current
interest to the public. A request for records supporting the news-
dissemination function of the requester will not be considered to be for
a commercial use. ``Freelance'' journalists who demonstrate a solid
basis for expecting publication through a news media entity will be
considered as a representative of the news media. A publishing contract
would provide the clearest evidence that publication is expected;
however, the Office can also consider a requester's past publication
record in making this determination. The Office will advise requesters
of their placement in this category.
(7) Review is the examination of a record located in response to a
request in order to determine whether any portion of it is exempt from
disclosure. Review includes taking all necessary steps to prepare a
record for disclosure, including the process of redacting the record and
marking the appropriate exemptions and time spent obtaining and
considering any formal objection to disclosure made by a confidential
commercial information submitter under Sec.203.9. Review does not
include time spent resolving general legal or policy issues regarding
the application of exemptions. Review costs are properly
[[Page 720]]
charged even if a record ultimately is not disclosed.
(8) Search is the process of looking for and retrieving records or
information responsive to a request. Search includes page-by-page or
line-by-line identification of information within records and the
reasonable efforts expended to locate and retrieve information from
electronic records.
(c) Charging fees. In responding to FOIA requests, the Office will
charge the following fees unless a waiver or reduction of fees has been
granted under paragraph (k) of this section.
(1) Search. (i) Requests made by educational institutions,
noncommercial scientific institutions, or representatives of the news
media are not subject to search fees. The Office will charge search fees
for all other requesters, subject to the restrictions of paragraph (d)
of this section. Fees may be assessed for time spent searching even if
the search fails to locate any responsive records or where the records
located are subsequently determined to be entirely exempt from
disclosure.
(ii) For each quarter hour spent by administrative staff in
searching for a requested record, $7.50; for each quarter hour spent by
professional staff in searching for a requested record, $17.50, with a
half hour minimum in both cases.
(iii) For computer searches of records, which may be undertaken
through the use of existing programming, the actual direct costs of
conducting the search including the cost of operating a central
processing unit for that portion of operating time that is directly
attributable to searching for records responsive to a request, as well
as the direct costs of operator/programmer salary apportionable to
search (at no less than $65 per hour or fraction thereof).
(iv) For requests that require the retrieval of records stored by an
agency at a Federal records center operated by the National Archives and
Records Administration (NARA), agencies will charge additional costs in
accordance with the Transactional Billing Rate Schedule established by
NARA.
(2) Duplication. The Office will charge duplication fees to all
requesters, subject to the restrictions of paragraph (d) of this
section. The Office will honor a requester's preference for receiving a
record in a particular form or format when the Office can readily
reproduce it in the form or format requested. For copies of the public
records, deposits, or indexes of the Office, the Office will charge fees
according to Sec.201.3 of this chapter. For copies of all other
Copyright Office records not otherwise provided for in this section, a
minimum fee of $15.00 for up to 15 pages and $.50 per page over 15.
(3) Review. The Office will charge review fees to requesters who
make commercial use requests. Review fees will be assessed in connection
with the initial review of the record to determine whether an exemption
applies to a particular record or portion of a record. No charge will be
made for review at the administrative appeal stage of exemptions applied
at the initial review stage. If a particular exemption is deemed to no
longer apply on appeal, any costs associated with the Office's re-review
of the records may be assessed as review fees. Review fees will be
charged at the same rates as described in paragraph (c)(1)(ii) of this
section.
(4) Other direct costs. Other costs incurred by the Copyright Office
in fulfilling a request will be chargeable at the actual cost to the
Office.
(d) Restrictions on charging fees. (1)(i) If the Copyright Office
fails to comply with FOIA's time limits in which to respond to a
request, it may not charge search fees or, in the instances of requests
from educational institutions, non-commercial scientific institutions,
or representatives of the news media, may not charge duplication fees,
except as described in this paragraph (d).
(ii) If the Office has determined that unusual circumstances, as
defined by FOIA, apply and the agency provides timely written notice to
the requester, a failure to comply with the time limit shall be excused
for an additional 10 days.
(iii) If the Office has determined that unusual circumstances, as
defined by FOIA, apply and more than 5,000 pages are necessary to
respond to the request, the Office may charge fees if the Office has
provided timely written notice of the unusual circumstances to
[[Page 721]]
the requester in accordance with FOIA and the Office has discussed with
the requester (or made not less than three good-faith attempts to do so)
how the requester could effectively limit the scope of the request in
accordance with 5 U.S.C. 552(a)(6)(B)(ii).
(iv) If a court has determined that exceptional circumstances exist,
as defined by the FOIA, a failure to comply with the time limits shall
be excused for the length of time provided by the court order.
(2) No search or review fees will be charged for a quarter-hour
period unless more than half of that period is required for search or
review.
(3) Except for requesters seeking records for a commercial use, the
Office will provide without charge:
(i) The first 100 pages of duplication (or the cost equivalent for
other media); and
(ii) The first two hours of search.
(4) No fee will be charged when the total fee, after deducting the
first 100 pages (or its cost equivalent) and the first two hours of
search, is equal to or less than $25.00.
(5) No fees will be charged for ordinary packaging and mailing
costs.
(e) Notice of anticipated fees in excess of $25.00. (1) When the
Office determines or estimates that the fees to be assessed will exceed
$25.00, the Office shall notify the requester of the actual or estimated
amount of the fees, including a breakdown of the fees for search, review
or duplication, unless the requester has indicated a willingness to pay
fees as high as those anticipated. If only a portion of the fee can be
estimated readily, the Office will advise the requester accordingly. If
the request is a noncommercial use requester, the notice shall include
the services provided without charge indicated in paragraph (d)(3) of
this section, and shall advise the requester whether those entitlements
have been provided.
(2) When a requester has been provided notice of anticipated fees in
excess of $25.00, the request shall not be considered received and
further work will not be completed until the requester commits in
writing to pay the actual or estimated total fee, to designate which
fees the requester is willing to pay, or, for noncommercial requests, to
indicate that the requester seeks only the services that can be provided
in paragraph (d)(3) of this section without charge. The Office is not
required to accept payment in installments.
(3) When the requester has committed to pay some designated amount
of fees, but the Office estimates that the total fee will exceed that
amount, the Office shall toll processing of the request when it notifies
the requester of the estimated fees in excess of the requester's
commitment. The Office shall inquire whether the requester wishes to
revise the amount of fees the requester is willing to pay or modify the
request. Once the requester responds, the time to respond will resume
from where it was at the date of the notification.
(4) The Office shall make available the FOIA Public Liaison to
assist the requester in reformulating a request to meet the requester's
needs at a lower cost.
(f) Charges for other services. Although not required to provide
special services, if the Office chooses to do so as a matter of
administrative discretion, the direct costs of providing the service
shall be charged.
(g) Charging interest. The Office may charge interest on any unpaid
bill starting on the 31st day following the date of billing the
requester. Interest charges will be assessed at the rate provided in 31
U.S.C. 3717 and will accrue from the billing date until payment is
received by the Office.
(h) Aggregating requests. When the Office reasonably believes that a
requester or group of requesters acting in concert is attempting to
divide a single request into a series of requests for the purpose of
avoiding fees, the Office may aggregate those requests and charge
accordingly. The Office may presume that multiple requests of this type
made within a 30-day period have been made in order to avoid fees. For
requests separated by a longer period, agencies will aggregate them only
where there is a reasonable basis for determining that aggregation is
warranted in view of all the circumstances involved. Multiple requests
involving
[[Page 722]]
unrelated matters cannot be aggregated.
(i) Advance payments. (1) For requests other than those described in
paragraph (i)(2) or (3) of this section, the Copyright Office cannot
require the requester to make an advance payment before work is
commenced or continued on a request. Payment owed for work already
completed is not an advance payment.
(2) When the Office determines or estimates that a total fee to be
charged under this section will exceed $250.00, it may require that the
requester make an advance payment up to the amount of the entire
anticipated fee before beginning to process the request. The Office may
elect to process the request prior to collecting fees when it receives a
satisfactory assurance of full payment from a requester with a history
of prompt payment.
(3) Where a requester has previously failed to pay a properly
charged FOIA fee to any agency within 30 calendar days of the billing
date, the Office may require that the requester pay the full amount due,
plus any applicable interest on that prior request, and the Office may
require that the requester make an advance payment of the full amount of
any anticipated fee before the Office begins to process a new request or
continues to process a pending request or any pending appeal. Where the
Office has a reasonable basis to believe that a requester has
misrepresented the requester's identity in order to avoid paying
outstanding fees, it may require that the requester provide proof of
identity.
(4) In cases in which the Office requires advance payment, the
request will not be considered received and further work will not be
completed until the required payment is received. If the requester does
not pay the advance payment within 30 calendar days after the date of
the Office's fee determination, the request will be closed.
(j) Other statutes specifically providing for fees. The provisions
of this section do not apply with respect to the charging of fees for
which the copyright law requires a fee to be charged. Requests processed
under the Privacy Act of 1974, 5 U.S.C. 552a, shall be subject to the
fee schedule found in Sec.204.6 of this chapter. Fees for services by
the Office in the administration of the copyright law are contained in
Sec.201.3 of this chapter. In instances where records responsive to a
request are subject to the statutorily-based fee schedule, the Office
will inform the requester of the service and appropriate fee.
(k) Requirements for waiver or reduction of fees. (1) Requesters may
seek a waiver of fees by submitting a written application demonstrating
how disclosure of the requested information is in the public interest
because it is likely to contribute significantly to public understanding
of the operations or activities of the government and is not primarily
in the commercial interest of the requester.
(2) The Office shall furnish records responsive to a request without
charge or at a reduced rate when it determines, based on all available
information, that the factors described in paragraphs (k)(2)(i) through
(iii) of this section are satisfied:
(i) Disclosure of the requested information would shed light on the
operations or activities of the government. The subject of the request
must concern identifiable operations or activities of the Federal
Government with a connection that is direct and clear, not remote or
attenuated.
(ii) Disclosure of the requested information is likely to contribute
significantly to public understanding of those operations or activities.
This factor is satisfied when the following criteria are met:
(A) Disclosure of the requested records must be meaningfully
informative about government operations or activities. The disclosure of
information that already is in the public domain, in either the same or
a substantially identical form, would not be meaningfully informative if
nothing new would be added to the public's understanding.
(B) The disclosure must contribute to the understanding of a
reasonably broad audience of persons interested in the subject, as
opposed to the individual understanding of the requester. A requester's
expertise in the subject area as well as the requester's ability
[[Page 723]]
and intention to effectively convey information to the public will be
considered. The Office will presume that a representative of the news
media will satisfy this consideration.
(iii) The disclosure must not be primarily in the commercial
interest of the requester. To determine whether disclosure of the
requested information is primarily in the commercial interest of the
requester, the Office will consider the following criteria:
(A) The Office shall identify whether the requester has any
commercial interest that would be furthered by the requested disclosure.
A commercial interest includes any commercial, trade, or profit
interest. Requesters shall be given an opportunity to provide
explanatory information regarding this consideration.
(B) If there is an identified commercial interest, the Office shall
determine whether that is the primary interest furthered by the request.
A waiver or reduction of fees is justified when the requirements of
paragraphs (k)(2)(i) and (ii) of this section are satisfied and any
commercial interest is not the primary interest furthered by the
request. The Office ordinarily will presume that when a news media
requester has satisfied factors in paragraphs (k)(2)(i) and (ii) of this
section, the request is not primarily in the commercial interest of the
requester. Disclosure to data brokers or others who merely compile and
market government information for direct economic return will not be
presumed to primarily serve the public interest.
(3) Where only some of the records to be released satisfy the
requirements for a waiver of fees, a waiver shall be granted for those
records.
(4) Requests for a waiver or reduction of fees should be made when
the request is first submitted to the Office and should address the
criteria referenced above. A requester may submit a fee waiver request
at a later time so long as the underlying record request is pending or
on administrative appeal. When a requester who has committed to pay fees
subsequently asks for a waiver of those fees and that waiver is denied,
the requester shall be required to pay any costs incurred up to the date
the fee waiver request was received.
[82 FR 9508, Feb. 7, 2017, as amended at 84 FR 3701, Feb. 13, 2019]
PART 204_PRIVACY ACT: POLICIES AND PROCEDURES--Table of Contents
Sec.
204.1 Purposes and scope.
204.2 Definitions.
204.3 General policy.
204.4 Procedure for notification of the existence of records pertaining
to individuals.
204.5 Procedures for requesting access to records.
204.6 Fees.
204.7 Request for correction or amendment of records.
204.8 Appeal of refusal to correct or amend an individual's record.
204.9 Judicial review.
Authority: 17 U.S.C. 702; 5 U.S.C. 552(a).
Source: 43 FR 776, Jan. 4, 1978, unless otherwise noted.
Sec.204.1 Purposes and scope.
The purposes of these regulations are:
(a) The establishment of procedures by which an individual can
determine if the Copyright Office maintains a system of records in which
there is a record pertaining to the individual; and
(b) The establishment of procedures by which an individual may gain
access to a record or information maintained on that individual and have
such record or information disclosed for the purpose of review, copying,
correction, or amendment.
Sec.204.2 Definitions.
For purposes of this part:
(a) The term individual means a citizen of the United States or an
alien lawfully admitted for permanent residence;
(b) The term maintain includes maintain, collect, use, or
disseminate;
(c) The term record means any item, collection, or grouping of
information about an individual that is maintained by an agency,
including, but not limited to, his education, financial transactions,
medical history, and criminal
[[Page 724]]
or employment history, and that contains his or her name, or the
identifying number, symbol, or other identifying particular assigned to
the individual, such as a finger or voice print or a photograph;
(d) The term system of records means a group of any records under
the control of any agency from which information is retrieved by the
name of the individual; and
(e) The term routine use means, with respect to the disclosure of a
record, the use of such record for a purpose which is compatible with
the purpose for which it was collected.
Sec.204.3 General policy.
The Copyright Office serves primarily as an office of public record.
Section 705 of title 17, United States Code, requires the Copyright
Office to open for public inspection all records of copyright deposits,
registrations, recordations, and other actions taken under title 17.
Therefore, a routine use of all Copyright Office systems of records
created under section 705 of title 17 is disclosure to the public. All
Copyright Office systems of records created under section 705 of title
17 are also available for public copying as required by section 706(a),
with the exception of copyright deposits, whose reproduction is governed
by section 706(b) and the regulations issued under that section. In
addition to the records mandated by section 705 of title 17, the
Copyright Office maintains other systems of records which are necessary
for the Office effectively to carry out its mission. These systems of
records are routinely consulted and otherwise used by Copyright Office
employees in the performance of their duties. The Copyright Office will
not sell, rent, or otherwise make publicly available any mailing list
prepared by the Office.
[47 FR 36821, Aug. 24, 1982]
Sec.204.4 Procedure for notification of the existence of records
pertaining to individuals.
(a) The Copyright Office will publish in the Federal Register, upon
the establishment or revision of the system of records, notices of all
Copyright Office systems of records subject to the Privacy Act, as
provided by 5 U.S.C., section 552a(e)(4). Individuals desiring to know
if a Copyright Office system of records contains a record pertaining to
them should submit a written request to that effect either by mail to
the Supervisory Copyright Information Specialist, U.S. Copyright Office,
P.O. Box 70400, Washington, DC 20024-0400, or in person between the
hours of 8:30 a.m. and 5 p.m. on any working day except legal holidays
at Room LM-401, The James Madison Memorial Building, 1st and
Independence Avenue, SE, Washington, DC.
(b) The written request should identify clearly the system of
records which is the subject of inquiry, by reference, whenever
possible, to the system number and title as given in the notices of
systems of records in the Federal Register. Both the written request and
the envelope carrying it should be plainly marked ``Privacy Act
Request.'' Failure to so mark the request may delay the Office's
response.
(c) The Office will acknowledge all properly marked requests made by
individuals wishing to gain access to view or copy their records or any
information pertaining to the individual, within a reasonable time. The
Office will acknowledge in writing an individual's request to amend a
record pertaining to him or her within ten business days.
(d) Since all Copyright Office records created under section 705 of
title 17 are open to public inspection, no identity verification is
necessary for individuals who wish to know whether a system of records
created under section 705 pertains to them.
[43 FR 776, Jan. 4, 1978, as amended at 47 FR 36821, Aug. 24, 1982; 50
FR 697, Aug. 14, 1985; 60 FR 34169, June 30, 1995; 64 FR 36575, July 7,
1999; 65 FR 39820, June 28, 2000; 73 FR 37839, July 2, 2008; 82 FR 9364,
Feb. 6, 2017]
Sec.204.5 Procedures for requesting access to records.
(a) Individuals desiring to obtain access to Copyright Office
information pertaining to them in a system of records other than those
created under section 705 of title 17 should make a written request,
signed by themselves or their duly authorized agent, to that
[[Page 725]]
effect either by mail to the Supervisory Copyright Information
Specialist, U.S. Copyright Office, P.O. Box 70400, Washington, DC 20024-
0400, or in person between the hours of 8:30 a.m. and 5 p.m. on any
working day except legal holidays at Room LM-401, The James Madison
Memorial Building, 1st and Independence Avenue SE., Washington, DC.
(b) The written request should identify clearly the system of
records which is the subject of inquiry, by reference, whenever
possible, to the system number and title as given in the notices of
systems of records in the Federal Register. Both the written request and
the envelope carrying it should be plainly marked ``Privacy Act
Request.'' Failure to so mark the request may delay the Office's
response.
(c) The Office will acknowledge all properly marked requests within
20 working days of receipt; and will notify the requester within 30
working days of receipt when and where access to the record will be
granted. If the individual requested a copy of the record, the copy will
accompany such notification.
[43 FR 776, Jan. 4, 1978, as amended at 47 FR 36821, Aug. 24, 1982; 60
FR 34169, June 30, 1995; 64 FR 36575, July 7, 1999; 65 FR 39820, June
28, 2000; 73 FR 37839, July 2, 2008; 82 FR 9364, Feb. 6, 2017]
Sec.204.6 Fees.
(a) The Copyright Office will provide, free of charge, one copy to
an individual of any record pertaining to that individual contained in a
Copyright Office system of records, except where the request is for a
copy of a record for which a specific fee is required and identified in
Sec.201.3 of this chapter, in which case that fee shall be charged.
For additional copies of records not covered by section 708 the fee will
be a minimum of $15.00 for up to 15 pages and $.50 per page over 15. The
Office will require prepayment of fees estimated to exceed $25.00 and
will remit any excess paid or bill an additional amount according to the
differences between the final fee charged and the amount prepaid. When
prepayment is required, a request is not deemed ``received'' until
prepayment has been made.
(b) The Copyright Office may waive the fee requirement whenever it
determines that such waiver would be in the public interest.
[43 FR 776, Jan. 4, 1978, as amended at 47 FR 36821, Aug. 24, 1982; 56
FR 59886, Nov. 26, 1991; 63 FR 29139, May 28, 1998; 64 FR 29522, June 1,
1999]
Sec.204.7 Request for correction or amendment of records.
(a) Any individual may request the correction or amendment of a
record pertaining to her or him. Requests for the removal of personally
identifiable information requested by the Copyright Office as part of an
application for copyright registration are governed by Sec.201.2(e) of
this chapter. Requests for the removal of extraneous personally
identifiable information, such as driver's license numbers, social
security numbers, banking information, and credit card information from
registration records are governed by Sec.201.2(f) of this chapter.
With respect to the correction or amendment of all other information
contained in a copyright registration, the set of procedures and related
fees are governed by 17 U.S.C. 408(d) and Sec.201.5 of this chapter.
With respect to requests to amend any other record that an individual
believes is incomplete, inaccurate, irrelevant or untimely, the request
shall be in writing and delivered either by mail addressed to the U.S.
Copyright Office, Supervisory Copyright Information Specialist,
Copyright Information Section, Attn: Privacy Act Request, P.O. Box
70400, Washington, DC 20024-0400, or in person Monday through Friday
between the hours of 8:30 a.m. and 5 p.m., eastern time, except legal
holidays, at Room LM-401, Library of Congress, U.S. Copyright Office,
101 Independence Avenue SE., Washington, DC 20559-6000. The request
shall explain why the individual believes the record to be incomplete,
inaccurate, irrelevant, or untimely.
(b) With respect to requests for the correction or amendment of
records that are governed by this section, the Office will respond
within 10 working days indicating to the requester that the requested
correction or amendment has been made or that it has been refused.If the
requested correction or
[[Page 726]]
amendment is refused, the Office's response will indicate the reason for
the refusal and the procedure available to the individual to appeal the
refusal.
[82 FR 9009, Feb. 2, 2017]
Sec.204.8 Appeal of refusal to correct or amend an individual's record.
(a) An individual who disagrees with a refusal of the Copyright
Office to amend his or her record may request a review of the denial.
The individual should submit a written appeal to the General Counsel of
the United States Copyright Office at the address specified in Sec.
201.1(c)(1) of this chapter. Appeals, and the envelopes containing them,
should be plainly marked ``Privacy Act Appeal.'' Failure to so mark the
appeal may delay the General Counsel's response. An appeal should
contain a copy of the request for amendment or correction and a copy of
the record alleged to be untimely, inaccurate, incomplete, or
irrelevant.
(b) The General Counsel will issue a written decision granting or
denying the appeal within 30 working days after receipt of the appeal
unless, after showing good cause, the General Counsel extends the 30-day
period. If the appeal is granted, the requested amendment or correction
will be made promptly. If the appeal is denied, in whole or in part, the
General Counsel's decision will set forth reasons for the denial.
Additionally, the decision will advise the requester that he or she has
the right to file with the Copyright Office a concise statement of his
or her reasons for disagreeing with the refusal to amend the record and
that such statement will be attached to the requester's record and
included in any future disclosure of such record. If the requester is
dissatisfied with the agency's final determination, the individual may
bring a civil action against the Office in the appropriate United States
district court.
[82 FR 9364, Feb. 6, 2017]
Sec.204.9 Judicial review.
Within two years of the receipt of a final adverse administrative
determination, an individual may seek judicial review of that
determination as provided in 5 U.S.C. 552a(g)(1).
PART 205_LEGAL PROCESSES--Table of Contents
Subpart A_General Provisions
Sec.
205.1 Definitions.
205.2 Address for mail and service; telephone number.
205.3 Waiver of rules.
205.4 Relationship of this part to the Federal Rules of Civil and
Criminal Procedure.
205.5 Scope of this part related to Copyright Office duties under title
17 of the U.S. Code.
205.6-205.10 [Reserved]
Subpart B_Service of Process
205.11 Scope and purpose.
205.12 Process served on the Register of Copyrights or an employee in
his or her official capacity.
205.13 Complaints served on the Register of Copyrights pursuant to 17
U.S.C. 411(a).
205.14 Court requests to the Register of Copyrights pursuant to 17
U.S.C. 411(b)(2).
205.15 Court notices to the Register of Copyrights pursuant to 17 U.S.C.
508.
205.16-205.20 [Reserved]
Subpart C_Testimony by Employees and Production of Documents in Legal
Proceedings in Which the Office is Not a Party
205.21 Scope and purpose.
205.22 Production of documents and testimony.
205.23 Scope of testimony.
Authority: 17 U.S.C. 702.
Source: 69 FR 39334, June 30, 2004, unless otherwise noted.
Subpart A_General Provisions
Sec.205.1 Definitions.
For the purpose of this part:
Demand means an order, subpoena or any other request for documents
or testimony for use in a legal proceeding.
Document means any record or paper held by the Copyright Office,
including, without limitation, official letters, deposits, recordations,
registrations, publications, or other material submitted in connection
with a claim for registration of a copyrighted work.
Employee means any current or former officer or employee of the
Copyright Office, as well as any individual
[[Page 727]]
subject to the jurisdiction, supervision, or control of the Copyright
Office.
General Counsel, unless otherwise specified, means the General
Counsel and Associate Register of Copyrights or his or her designee.
Legal proceeding means any pretrial, trial, and post-trial stages of
existing or reasonably anticipated judicial or administrative actions,
hearings, investigations, or similar proceedings before courts,
commissions, boards or other tribunals, foreign or domestic. This phrase
includes all phases of discovery as well as responses to formal or
informal requests by attorneys or others involved in legal proceedings.
This phrase also includes state court proceedings (including grand jury
proceedings) and any other state or local legislative and administrative
proceedings.
Office means the Copyright Office, including any division, section,
or operating unit within the Copyright Office.
Official business means the authorized business of the Copyright
Office.
Testimony means a statement in any form, including a personal
appearance before a court or other legal tribunal, an interview, a
deposition, an affidavit or declaration under penalty of perjury
pursuant to 28 U.S.C. 1746, a telephonic, televised, or videotaped
statement or any response given during discovery or similar proceeding,
which response would involve more than the production of documents,
including a declaration under 35 U.S.C. 25 or a declaration under
penalty of perjury pursuant to 28 U.S.C. 1746.
United States means the Federal Government, its departments and
agencies, individuals acting on behalf of the Federal Government, and
parties to the extent they are represented by the United States.
[82 FR 9364, Feb. 6, 2017]
Sec.205.2 Address for mail and service; telephone number.
(a) Mail under this part should be addressed to the General Counsel
at the address specified in Sec.201.1(c)(1) of this chapter.
(b) Service by hand shall be made upon an authorized person from
8:30 a.m. to 5 p.m., Monday through Friday in the Copyright Information
Section, U.S. Copyright Office, Library of Congress, James Madison
Memorial Building, Room LM-401, 101 Independence Avenue SE., Washington,
DC. Persons authorized to accept service of process are the General
Counsel of the Copyright Office and his or her designees.
(c) The Office of the General Counsel may be reached by telephone
during normal business hours specified in paragraph (b) of this section
at 202-707-8380.
[69 FR 39334, June 30, 2004, as amended at 73 FR 37840, July 2, 2008; 82
FR 9365, Feb. 6, 2017]
Sec.205.3 Waiver of rules.
In extraordinary situations, when the interest of justice requires,
the General Counsel may waive or suspend the rules of this part, sua
sponte or on petition of an interested party, subject to such
requirements as the General Counsel may impose on the parties. However,
the inclusion of certain legal processes within the scope of these
rules, e.g., state legal proceedings, does not represent a waiver of any
claim of immunity, privilege, or other defense by the Office in a legal
proceeding, including but not limited to, sovereign immunity,
preemption, or lack of relevance. This rule does not create any right or
benefit, substantive or procedural, enforceable at law by a party
against the Copyright Office, the Library of Congress, or the United
States.
Sec.205.4 Relationship of this part to the Federal Rules of Civil
and Criminal Procedure.
Nothing in this part waives any requirement under the Federal Rules
of Civil or Criminal Procedure.
Sec.205.5 Scope of this part related to Copyright Office duties under
title 17 of the U.S. Code.
This part relates only to legal proceedings, process, requests and
demands relating to the Copyright Office's performance of its duties
pursuant to title 17 of the United States Code. Legal proceedings,
process, requests and demands relating to other matters (e.g., personal
injuries, employment matters, etc.) are the responsibility of the
General Counsel of the
[[Page 728]]
Library of Congress and are governed by 36 CFR part 703.
Sec. Sec.205.6-205.10 [Reserved]
Subpart B_Service of Process
Sec.205.11 Scope and purpose.
(a) This subpart provides the procedures governing service of
process on the Copyright Office and its employees in their official
capacity. These regulations provide the identity of Copyright Office
officials who are authorized to accept service of process. The purpose
of this subpart is to provide a centralized location for receipt of
service of process to the Office. Such centralization will provide
timely notification of legal process and expedite the Office's response.
Litigants also must comply with all requirements pertaining to service
of process that are established by statute, court rule and rule of
procedure including the applicable provisions of the Federal Rules of
Civil Procedure governing service upon the United States.
(b) This subpart does not apply to service of process made on an
employee personally for matters not related to official business of the
Office. Process served upon a Copyright Office employee in his or her
individual capacity must be served in compliance with the applicable
requirements for service of process established by statute, court rule,
or rule of procedure.
[69 FR 39334, June 30, 2004, as amended at 82 FR 9365, Feb. 6, 2017]
Sec.205.12 Process served on the Register of Copyrights or an
employee in his or her official capacity.
(a) Summonses, complaints and all other process directed to the
Copyright Office, the Register of Copyrights or any other Copyright
Office employee in his or her official capacity should be served on the
General Counsel of the Copyright Office or his or her designee as
indicated in Sec.205.2 of this part. To effect proper service, the
requirements of Rule 4(i) of the Federal Rules of Civil Procedure must
also be satisfied by effecting service on both the United States
Attorney for the district in which the action is brought and the
Attorney General, Attn: Director of Intellectual Property Staff,
Commercial Litigation Branch, Civil Division, Department of Justice,
Washington, DC 20530.
(b) If, notwithstanding paragraph (a) of this section, any employee
of the Office is served with a summons or complaint in connection with
the conduct of official business, that employee shall immediately notify
and deliver the summons or complaint to the Office of the General
Counsel of the Copyright Office.
(c) Any employee receiving a summons or complaint shall note on the
summons or complaint the date, hour, and place of service and mode of
service.
(d) The Office will accept service of process for an employee only
when the legal proceeding is brought in connection with the conduct of
official business carried out in the employee's official capacity.
(e) When a legal proceeding is brought to hold an employee
personally liable in connection with an action taken in the conduct of
official business, rather than liable in an official capacity, the
employee is to be served in accordance with any applicable statute,
court rule, or rule of procedure. Service of process in this case is
inadequate when made only on the General Counsel. An employee sued
personally for an action taken in the conduct of official business shall
immediately notify and deliver a copy of the summons or complaint to the
General Counsel of the Copyright Office.
Sec.205.13 Complaints served on the Register of Copyrights pursuant
to 17 U.S.C. 411(a).
When an action has been instituted pursuant to 17 U.S.C. 411(a) for
infringement of the copyright of a work for which registration has been
refused, notice of the institution of the action and a copy of the
complaint must be served on the Register of Copyrights by sending such
documents to the General Counsel of the Copyright Office to the General
Counsel of the Copyright Office via email to [email protected]
The notice must be in the form of a letter, as an attached file, that is
clearly identified as a 411(a) notice. Both the letter and
[[Page 729]]
the email's subject line should state: ``Section 411(a) Notice to the
Register of Copyrights.'' Attachments must be submitted in Portable
Document Format (PDF), assembled in an orderly form, and uploaded as
individual electronic files (i.e., not .zip files). Attachments to a
single email should be no greater than 20 MB in total. The files must be
viewable, contain embedded fonts, and be free from any access
restrictions (such as those implemented through digital rights
management) that prevent the viewing and examination of the file. If
submission of a notice via email is not feasible, please contact the
Office of the General Counsel by telephone during normal business hours
at 202-707-8380. In compliance with Fed. R. Civ. P. Sec. 4(i), a notice
of the institution of the action and a copy of the complaint must also
be served on both the United States Attorney for the district in which
the action is brought and the United States Department of Justice,
directed to the Attorney General, Attn: Director of Intellectual
Property Staff, Civil Division, Department of Justice, Washington, DC
20530.
[69 FR 39334, June 30, 2004, as amended at 73 FR 37840, July 2, 2008; 82
FR 9365, Feb. 6, 2017; 85 FR 10604, Feb. 25, 2020]
Sec.205.14 Court requests to the Register of Copyrights pursuant
to 17 U.S.C. 411(b)(2).
Where there is an allegation that a copyright registration
certificate includes inaccurate information with knowledge that it was
inaccurate and the inaccuracy of the information, if known, would have
caused the Register of Copyrights to refuse registration, pursuant to 17
U.S.C. 411(b)(2), the court shall request the opinion of the Register of
Copyrights to advise the court whether the inaccurate information, if
known, would have caused the Register of Copyrights to refuse
registration. The request should be sent to the General Counsel of the
Copyright Office via email to [email protected] Attachments to a
single email should be no greater than 20 MB in total. If submission of
a request via email is not feasible, please contact the Office of the
General Counsel by telephone during normal business hours at 202-707-
8380.
[85 FR 10605, Feb. 25, 2020]
Sec.205.15 Court notices to the Register of Copyrights pursuant to 17 U.S.C. 508.
Pursuant to 17 U.S.C. 508, within one month after the filing of any
action under title 17, notice of the names and addresses of the parties
and the title, author, and registration number of each work involved in
the action, including any other copyrighted work later included by
subsequent amendment, answer, or other pleading, must be served by the
clerk of the court on the Register of Copyrights. Further, the clerk of
the court must notify the Register within one month after any final
order or judgment is issued in the case, sending with the notification a
copy of the order or judgment together with the written opinion, if any,
of the court. These notices must be sent to the General Counsel of the
Copyright Office via email to [email protected] Notices must
include a fully completed PDF version of the Administrative Office of
the U.S. Courts' form AO-121, ``Report on the Filing or Determination of
an Action or Appeal Regarding a Copyright,'' available at the U.S.
Courts' website: https://www.uscourts.gov/forms/other-forms/report-
filing-or-determination-action-or-appeal-regarding-copyright. If
submission of a notice via email is not feasible, please contact the
Office of the General Counsel by telephone during normal business hours
at 202-707-8380.
[85 FR 10605, Feb. 25, 2020]
Sec. Sec.205.16-205.20 [Reserved]
Subpart C_Testimony By Employees and Production of Documents in Legal
Proceedings in Which the Office Is Not a Party
Sec.205.21 Scope and purpose.
(a) This subpart prescribes policies and procedures of the Copyright
Office governing testimony, in legal proceedings in which the Office is
not a
[[Page 730]]
party, by Office employees in their official capacities and the
production of Office documents for use in legal proceedings pursuant to
a demand, request, subpoena or order.
(b) The purpose of this subpart is:
(1) To conserve the time of Office employees for conducting official
business;
(2) To minimize the possibility of involving the Office in the
matters of private parties or other issues which are not related to the
mission of the Office;
(3) To prevent the public from confusing personal opinions of Office
employees with Office policy;
(4) To avoid spending the time and money of the United States for
private purposes;
(5) To preserve the integrity of the administrative process,
minimize disruption of the decision-making process, and prevent
interference with the Office's administrative functions.
(c) An employee of the Office may not voluntarily appear as a
witness or voluntarily testify in a legal proceeding relating to his or
her official capacity without proper authorization under this subpart.
(d) This subpart does not apply to any legal proceeding in which:
(1) An employee is to testify regarding facts or events that are
unrelated to official business; or
(2) A former employee is asked to testify as an expert on a matter
in which that employee did not personally participate while at the
Office so long as the former employee testifies concerning his or her
personal opinion and does not purport to speak for or on behalf of the
Copyright Office.
Sec.205.22 Production of documents and testimony.
(a) Generally, all documents and material submitted to the Copyright
Office as part of an application to register a claim to copyright are
available for public inspection and copying. It is possible, therefore,
to obtain those materials without use of a legal process. Anyone seeking
such documents must contact the Records Research and Certification
Section of the Office. 37 CFR 201.2(b)(1). Certified copies of public
documents and public records are self-authenticating. FED. R. EVID. 902
and 1005; see also, FED. R. CIV. p. 44(a)(1). In certain specified
circumstances, information contained in the in-process files may be
obtained by complying with the procedures of 37 CFR 201.2(b)(3).
Correspondence between a copyright claimant or his or her agent and the
Copyright Office in a completed registration, recordation, or refusal to
register is also available for public inspection. Section 201.2(d) of
this chapter prescribes the method for requesting copies of copyright
registration records. An attorney engaged in actual or prospective
litigation who submits a court order or a completed Litigation Statement
may obtain a copy of the deposit if his or her request is found to
comply with the requirements set out in 37 CFR 201.2(d)(2). The fees
associated with various document requests, searches, copies, and
expedited handling are listed in 37 CFR 201.3. Other publications
containing Copyright Office procedures and practices are available to
the public without charge from the Copyright Office or its website:
http://www.copyright.gov. The Office website also allows online
searching of copyright registration information and information
pertaining to documents recorded with the Copyright Office beginning
January 1, 1978. Pre-1978 copyright registration information and
document recordation information is available to the public in the
Copyright Office during regular business hours. If the information
sought to be obtained from the Office is not available through these
Office services, demands and subpoenas for testimony or documents may be
served as follows:
(1) Demands for testimony or documents. All demands, requests,
subpoenas or orders for production of documents or testimony in a legal
proceeding directed to the Copyright Office, the Register of Copyrights
or any other Copyright Office employee in his or her official capacity
must be in writing and should be served on the General Counsel of the
Copyright Office as indicated in Sec.205.2 of this part and in
accordance with the Federal Rules of Civil or Criminal Procedure.
[[Page 731]]
(2) Affidavits. Except when the Copyright Office is a party to the
legal proceeding, every demand, request or subpoena shall be accompanied
by an affidavit or declaration under penalty of perjury pursuant to 28
U.S.C. 1746. Such affidavit or declaration shall contain a written
statement setting forth the title of the legal proceeding; the forum;
the requesting party's interest in the legal proceeding; the reasons for
the demand, request, or subpoena; a showing that the desired testimony
or document is not reasonably available from any published or other
written source, (e.g., 37 CFR, Chapter II; Compendium of U.S. Copyright
Office Practices, Third Edition; other written practices of the Office;
circulars; the Copyright Office website) and is not available by other
established procedure, e.g., 37 CFR 201.2, 201.3. If testimony is
requested in the affidavit or declaration, it shall include the intended
use of the testimony, a detailed summary of the testimony desired, and a
showing that no document could be provided and used in lieu of the
requested testimony. The purpose of these requirements is to permit the
General Counsel of the Copyright Office to make an informed decision as
to whether testimony or production of a document should be authorized.
The decision by the General Counsel will be based on consideration of
the purposes set forth in Sec.205.21(b) of this part, on the
evaluation of the requesting party's need for the testimony and any
other factor warranted by the circumstances. Typically, when the
information requested is available through other existing Office
procedures or materials, the General Counsel will not authorize
production of documents or testimony.
(b) No Copyright Office employee shall give testimony concerning the
official business of the Office or produce any document in a legal
proceeding other than those made available by the Records Research and
Certification Section under existing regulations without the prior
authorization of the General Counsel. Without prior approval from the
General Counsel of the Copyright Office, no Office employee shall answer
inquiries from a person not employed by the Library of Congress or the
Department of Justice regarding testimony or documents in connection
with a demand, subpoena or order. All inquiries involving demands,
subpoenas, or orders shall be directed to the General Counsel of the
Copyright Office.
(c) Any Office employee who receives a demand, request, subpoena or
order for testimony or the production of documents in a legal proceeding
shall immediately notify the General Counsel of the Copyright Office at
the phone number indicated in Sec.205.2 of this part and shall
immediately forward the demand to the General Counsel.
(d) The General Counsel may consult or negotiate with an attorney
for a party or the party, if not represented by an attorney, to refine
or limit a demand, request or subpoena to address interests or concerns
of the Office. Failure of the attorney or party to cooperate in good
faith under this part may serve as the basis for the General Counsel to
deny authorization for the testimony or production of documents sought
in the demand.
(e) A determination under this part regarding authorization to
respond to a demand is not an assertion or waiver of privilege, lack of
relevance, technical deficiency or any other ground for noncompliance.
The Copyright Office reserves the right to oppose any demand on any
appropriate legal ground independent of any determination under this
part, including but not limited to, sovereign immunity, preemption,
privilege, lack of relevance, or technical deficiency.
(f) Office procedures when an employee receives a demand or
subpoena. (1) If the General Counsel has not acted by the return date,
the employee must appear at the time and place set forth in the subpoena
(unless otherwise advised by the General Counsel) and inform the court
(or other legal authority) that the demand has been referred for the
prompt consideration of the General Counsel and shall request the court
(or other legal authority) to stay the demand pending receipt of the
requested instructions.
(2) If the General Counsel makes a determination not to authorize
testimony or the production of documents, but the subpoena is not
withdrawn or modified and Department of Justice
[[Page 732]]
representation cannot be arranged, the employee should appear at the
time and place set forth in the subpoena unless advised otherwise by the
General Counsel. If legal counsel cannot appear on behalf of the
employee, the employee should produce a copy of these rules and state
that the General Counsel has advised the employee not to provide the
requested testimony or to produce the requested document. If a court (or
other legal authority) rules that the demand in the subpoena must be
complied with, the employee shall respectfully decline to comply with
the demand, citing United States ex rel.Touhy v. Ragen, 340 U.S. 462
(1951).
[69 FR 39334, June 30, 2004, as amended at 73 FR 37840, July 2, 2008; 82
FR 9365, Feb. 6, 2017]
Sec.205.23 Scope of testimony.
(a)(1) If a Copyright Office employee is authorized to give
testimony in a legal proceeding, the testimony, if otherwise proper,
shall be limited to facts within the personal knowledge of the Office
employee. An Office employee is prohibited from giving expert testimony,
or opinion, answering hypothetical or speculative questions, or giving
testimony with respect to subject matter which is privileged. If an
Office employee is authorized to testify in connection with his or her
involvement or assistance in a proceeding or matter before the Office,
that employee is further prohibited from giving testimony in response to
an inquiry about the bases, reasons, mental processes, analyses, or
conclusions of that employee in the performance of his or her official
functions.
(2) The General Counsel may authorize an employee to appear and give
expert testimony or opinion testimony upon the showing, pursuant to
Sec.205.3 of this part, that exceptional circumstances warrant such
testimony and that the anticipated testimony will not be adverse to the
interest of the Copyright Office or the United States.
(b) If an Office employee is authorized to testify, the employee
will generally be prohibited from providing testimony in response to
questions which seek, for example:
(1) To elicit information about the employee's:
(i) Qualifications to examine or otherwise consider a particular
copyright application.
(ii) Usual practice or whether the employee followed a procedure set
out in any Office manual of practice in a particular case.
(iii) Consultation with another Office employee.
(iv) Familiarity with:
(A) Preexisting works that are similar.
(B) Registered works, works sought to be registered, a copyright
application, registration, denial of registration, or request for
reconsideration.
(C) Copyright law or other law.
(D) The actions of another Office employee.
(v) Reliance on particular facts or arguments.
(2) To inquire into the manner in and extent to which the employee
considered or studied material in performing the function.
(3) To inquire into the bases, reasons, mental processes, analyses,
or conclusions of that Office employee in performing the function.
(c) In exceptional circumstances, the General Counsel may waive the
limitations set forth in paragraph (b) of this section pursuant to Sec.
205.3.
[69 FR 39334, June 30, 2004, as amended at 82 FR 9365, Feb. 6, 2017]
PART 210_COMPULSORY LICENSE FOR MAKING AND DISTRIBUTING PHYSICAL AND
DIGITAL PHONORECORDS OF NONDRAMATIC MUSICAL WORKS--Table of Contents
Subpart A_Royalties and Statements of Account Under Non-Blanket
Compulsory License
210.1 General.
210.2 Definitions.
210.3 Accounting requirements where sales revenue is ``recognized.''
210.4 Accounting requirements for offsetting phonorecord reserves with
returned phonorecords.
210.5 Situations in which a compulsory licensee is barred from
maintaining reserves.
210.6 Monthly statements of account.
210.7 Annual statements of account.
210.8 Documentation.
210.9 Harmless errors.
[[Page 733]]
210.10 Statements required for limitation on liability for digital music
providers for the transition period prior to the license
availability date.
210.11 Record companies using individual download licenses.
210.12-210.20 [Reserved]
Subpart B_Blanket Compulsory License for Digital Uses, Mechanical
Licensing Collective, and Digital Licensee Coordinator
210.21 General.
210.22 Definitions.
210.23 Designation of the mechanical licensing collective and digital
licensee coordinator.
210.24 Notices of blanket license.
210.25 Notices of nonblanket activity.
210.26 Data collection and delivery efforts by digital music providers
and musical work copyright owners.
210.27 Reports of usage and payment for blanket licensees.
210.28 Reports of usage for significant nonblanket licensees.
210.29 Reporting and distribution of royalties to copyright owners by
the mechanical licensing collective.
210.30 Temporary exception to certain reporting requirements about
certain permanent download licenses.
210.31 Musical works database information.
210.32 Musical works database usability, interoperability, and usage
restrictions.
210.33 Annual reporting by the mechanical licensing collective.
210.34 Treatment of confidential and other sensitive information.
Authority: 17 U.S.C. 115, 702.
Source: 79 FR 56206, Sept. 18, 2014, unless otherwise noted.
Subpart A_Royalties and Statements of Account Under Non-Blanket
Compulsory License
Source: 79 FR 56206, Sept. 18, 2014. Redesignated at 85 FR 58143,
Sept. 17, 2020.
Sec.210.1 General.
This subpart prescribes rules for the payment of royalties and the
preparation and service of statements of account under the compulsory
license for the making and distribution of phonorecords of nondramatic
musical works, including by means of a digital phonorecord delivery,
pursuant to 17 U.S.C. 115 and the rates and terms in part 385 of this
title. Rules governing notices of intention to obtain a compulsory
license for making and distributing phonorecords of nondramatic musical
works are located in Sec.201.18. On and after the license availability
date, this subpart shall not apply with respect to any digital
phonorecord delivery made pursuant to the compulsory license unless such
digital phonorecord delivery is made by a record company under an
individual download license under 17 U.S.C. 115(b)(3), which must be
reported and paid for in accordance with Sec.210.11; that is, this
subpart shall not apply where a digital music provider reports and pays
royalties under a blanket license under 17 U.S.C. 115(d)(4)(A)(i).
[79 FR 56206, Sept. 18, 2014, as amended at 83 FR 63065, Dec. 7, 2018.
Redesignated and amended at 85 FR 58143, Sept. 17, 2020]
Sec.210.2 Definitions.
As used in this subpart:
(a) A Monthly Statement of Account or Monthly Statement is a
statement accompanying monthly royalty payments identified in 17 U.S.C.
115(c)(2)(I), and required by that section to be filed under the
compulsory license to make and distribute phonorecords of nondramatic
musical works, including by means of a digital phonorecord delivery.
(b) An Annual Statement of Account or Annual Statement is a
statement identified in 17 U.S.C 115(c)(2)(I), and required by that
section to be filed under the compulsory license to make and distribute
phonorecords of nondramatic musical works, including by means of a
digital phonorecord delivery. Such term, when used in this rule,
includes an Amended Annual Statement of Account filed pursuant to Sec.
210.7(d)(2)(iii).
(c) A digital phonorecord delivery means each individual delivery of
a phonorecord by digital transmission of a sound recording that results
in a specifically identifiable reproduction by or for any transmission
recipient of a phonorecord of that sound recording, regardless of
whether the digital transmission is also a public performance of the
sound recording or any musical work embodied therein. The reproduction
of the phonorecord must be sufficiently permanent or stable to permit it
to be perceived, reproduced, or otherwise communicated for a period of
[[Page 734]]
more than transitory duration. Such a phonorecord may be permanent or it
may be made available to the transmission recipient for a limited period
of time or for a specified number of performances. A digital phonorecord
delivery includes all phonorecords that are made for the purpose of
making the digital phonorecord delivery. A digital phonorecord delivery
does not include any transmission that did not result in a specifically
identifiable reproduction of the entire product being transmitted, and
for which the distributor did not charge, or fully refunded, any monies
that would otherwise be due for the relevant transmission.
Notwithstanding the foregoing, a permanent download, a limited download,
or an interactive stream, as defined in 17 U.S.C. 115(e), is a digital
phonorecord delivery. A digital phonorecord delivery does not include
the digital transmission of sounds accompanying a motion picture or
other audiovisual work as defined in 17 U.S.C. 101.
(d) Ringtone shall have the meaning given in Sec.385.2 of this
title.
(e) The term copyright owner, in the case of any work having more
than one copyright owner, means any one of the co-owners.
(f) A compulsory licensee is a person or entity exercising the
compulsory license to make and distribute phonorecords of nondramatic
musical works as provided under 17 U.S.C. 115, including by means of a
digital phonorecord delivery.
(g) A phonorecord is considered distributed if the compulsory
licensee has voluntarily and permanently parted with possession of the
phonorecord, which shall occur as follows:
(1) In the case of physical phonorecords relinquished from
possession for purposes other than sale, at the time at which the
compulsory licensee actually first parts with possession;
(2) In the case of physical phonorecords relinquished from
possession for purposes of sale without a privilege of returning unsold
phonorecords for credit or exchange, at the time at which the compulsory
licensee actually first parts with possession;
(3) In the case of physical phonorecords relinquished from
possession for purposes of sale accompanied by a privilege of returning
unsold phonorecords for credit or exchange:
(i) At the time when revenue from a sale of the phonorecord is
``recognized'' by the compulsory licensee; or
(ii) Nine months from the month in which the compulsory licensee
actually first parted with possession, whichever occurs first. For these
purposes, a compulsory licensee shall be considered to ``recognize''
revenue from the sale of a phonorecord when sales revenue would be
recognized in accordance with GAAP.
(4) In the case of a digital phonorecord delivery, on the date that
the phonorecord is digitally transmitted.
(h) A phonorecord reserve comprises the number of phonorecords made
under a particular compulsory license, if any, that have been
relinquished from possession for purposes of sale in a given month
accompanied by a privilege of return, as described in paragraph (g)(3)
of this section, and that have not been considered distributed during
the month in which the compulsory licensee actually first parted with
their possession. The initial number of phonorecords comprising a
phonorecord reserve shall be determined in accordance with GAAP.
(i) A negative reserve balance comprises the aggregate number of
phonorecords made under a particular compulsory license, if any, that
have been relinquished from possession for purposes of sale accompanied
by a privilege of return, as described in paragraph (g)(3) of this
section, and that have been returned to the compulsory licensee, but
because all available phonorecord reserves have been eliminated, have
not been used to reduce a phonorecord reserve.
(j) GAAP means U.S. Generally Accepted Accounting Principles, except
that if the U.S. Securities and Exchange Commission permits or requires
entities with securities that are publicly traded in the U.S. to employ
International Financial Reporting Standards, as issued by the
International Accounting Standards Board, or as accepted by the
Securities and Exchange Commission if different from
[[Page 735]]
that issued by the International Accounting Standards Board, in lieu of
Generally Accepted Accounting Principles, then an entity may employ
International Financial Reporting Standards as ``GAAP'' for purposes of
this subpart.
(k) Any terms not otherwise defined in this section shall have the
meanings set forth in 17 U.S.C. 115(e).
[79 FR 56206, Sept. 18, 2014, as amended at 83 FR 63065, Dec. 7, 2018.
Redesignated at 85 FR 58143, Sept. 17, 2020. Amended at 86 FR 2203, Jan.
11, 2021]
Sec.210.3 Accounting requirements where sales revenue is ``recognized.''
Where under Sec.210.2(g)(3)(i), revenue from the sale of
phonorecords is ``recognized'' during any month after the month in which
the compulsory licensee actually first parted with their possession,
said compulsory licensee shall reduce particular phonorecord reserves by
the number of phonorecords for which revenue is being ``recognized,'' as
follows:
(a) If the number of phonorecords for which revenue is being
``recognized'' is smaller than the number of phonorecords comprising the
earliest eligible phonorecord reserve, this phonorecord reserve shall be
reduced by the number of phonorecords for which revenue is being
``recognized.'' Subject to the time limitations of Sec.
210.2(g)(3)(ii), the number of phonorecords remaining in this reserve
shall be available for use in subsequent months.
(b) If the number of phonorecords for which revenue is being
``recognized'' is greater than the number of phonorecords comprising the
earliest eligible phonorecord reserve but less than the total number of
phonorecords comprising all eligible phonorecord reserves, the
compulsory licensee shall first eliminate those phonorecord reserves,
beginning with the earliest eligible phonorecord reserve and continuing
to the next succeeding phonorecord reserves, that are completely offset
by phonorecords for which revenue is being ``recognized.'' Said
compulsory licensee shall then reduce the next succeeding phonorecord
reserve by the number of phonorecords for which revenue is being
``recognized'' that have not been used to eliminate a phonorecord
reserve. Subject to the time limitations of Sec.210.2(g)(3)(ii), the
number of phonorecords remaining in this reserve shall be available for
use in subsequent months.
(c) If the number of phonorecords for which revenue is being
``recognized'' equals the number of phonorecords comprising all eligible
phonorecord reserves, the person or entity exercising the compulsory
license shall eliminate all of the phonorecord reserves.
(d) Digital phonorecord deliveries shall not be considered as
accompanied by a privilege of return as described in Sec.210.2(g)(3),
and the compulsory licensee shall not take digital phonorecord
deliveries into account in establishing phonorecord reserves.
[79 FR 56206, Sept. 18, 2014. Redesignated at 85 FR 58143, Sept. 17,
2020]
Sec.210.4 Accounting requirements for offsetting phonorecord reserves
with returned phonorecords.
(a) In the case of a phonorecord that has been relinquished from
possession for purposes of sale accompanied by a privilege of return, as
described in Sec.210.2(g)(3), where the phonorecord is returned to the
compulsory licensee for credit or exchange before said compulsory
licensee is considered to have ``voluntarily and permanently parted with
possession'' of the phonorecord as described in Sec.210.2(g), the
compulsory licensee may use such phonorecord to reduce a ``phonorecord
reserve,'' as defined in Sec.210.2(h).
(b) In such cases, the compulsory licensee shall reduce particular
phonorecord reserves by the number of phonorecords that are returned
during the month covered by the Monthly Statement of Account in the
following manner:
(1) If the number of phonorecords that are returned during the month
covered by the Monthly Statement is smaller than the number comprising
the earliest eligible phonorecord reserve, the compulsory licensee shall
reduce this phonorecord reserve by the total number of returned
phonorecords. Subject to the time limitations in Sec.210.2(g)(3)(ii),
the number of phonorecords remaining in this reserve
[[Page 736]]
shall be available for use in subsequent months.
(2) If the number of phonorecords that are returned during the month
covered by the Monthly Statement is greater than the number of
phonorecords comprising the earliest eligible phonorecord reserve but
less than the total number of phonorecords comprising all eligible
phonorecord reserves, the compulsory licensee shall first eliminate
those phonorecord reserves, beginning with the earliest eligible
phonorecord reserve, and continuing to the next succeeding phonorecord
reserves, that are completely offset by returned phonorecords. Said
compulsory licensee shall then reduce the next succeeding phonorecord
reserve by the number of returned phonorecords that have not been used
to eliminate a phonorecord reserve. Subject to the time limitations in
Sec.210.2(g)(3)(ii), the number of phonorecords remaining in this
reserve shall be available for use in subsequent months.
(3) If the number of phonorecords that are returned during the month
covered by the Monthly Statement is equal to or is greater than the
total number of phonorecords comprising all eligible phonorecord
reserves, the compulsory licensee shall eliminate all eligible
phonorecord reserves. Where said number is greater than the total number
of phonorecords comprising all eligible phonorecord reserves, said
compulsory licensee shall establish a ``negative reserve balance,'' as
defined in Sec.210.2(i).
(c) Except where a negative reserve balance exists, a separate and
distinct phonorecord reserve shall be established for each month during
which the compulsory licensee relinquishes phonorecords from possession
for purposes of sale accompanied by a privilege of return, as described
in Sec.210.2(g)(3). In accordance with Sec.210.2(g)(3)(ii), any
phonorecord remaining in a particular phonorecord reserve nine months
from the month in which the particular reserve was established shall be
considered ``distributed''; at that point, the particular monthly
phonorecord reserve shall lapse and royalties for the phonorecords
remaining in it shall be paid as provided in Sec.210.6(d)(2).
(d) Where a negative reserve balance exists, the aggregate total of
phonorecords comprising it shall be accumulated into a single balance
rather than being separated into distinct monthly balances. Following
the establishment of a negative reserve balance, any phonorecords
relinquished from possession by the compulsory licensee for purposes of
sale or otherwise, shall be credited against such negative balance, and
the negative reserve balance shall be reduced accordingly. Digital
phonorecord deliveries may be credited against such negative reserve
balance, but only if such digital phonorecord deliveries have the same
royalty rate as physical phonorecords under part 385 of this title. The
nine-month limit provided in Sec.210.2(g)(3)(ii) shall have no effect
upon a negative reserve balance; where a negative reserve balance
exists, relinquishment from possession of a phonorecord by the
compulsory licensee at any time shall be used to reduce such balance,
and such phonorecord shall not be considered ``distributed'' within the
meaning of Sec.210.2(g).
(e) In no case shall a phonorecord reserve be established while a
negative reserve balance is in existence; conversely, in no case shall a
negative reserve balance be established before all available phonorecord
reserves have been eliminated.
[79 FR 56206, Sept. 18, 2014. Redesignated and amended at 85 FR 58143,
Sept. 17, 2020]
Sec.210.5 Situations in which a compulsory licensee is barred from
maintaining reserves.
Notwithstanding any other provisions of this section, in any case
where, within three years before the phonorecord was relinquished from
possession, the compulsory licensee has had final judgment entered
against it for failure to pay royalties for the reproduction of
copyrighted music on phonorecords, or within such period has been
definitively found in any proceeding involving bankruptcy, insolvency,
receivership, assignment for the benefit of creditors, or similar
action, to have failed to pay such royalties,
[[Page 737]]
that compulsory licensee shall be considered to have ``permanently
parted with possession'' of a phonorecord made under the license at the
time at which that compulsory licensee actually first parts with
possession. For these purposes the compulsory licensee shall include:
(a) In the case of any corporation, the corporation or any director,
officer, or beneficial owner of twenty-five percent (25%) or more of the
outstanding securities of the corporation;
(b) In all other cases, any entity or individual owning a beneficial
interest of twenty-five percent (25%) or more in the entity exercising
the compulsory license.
[79 FR 56206, Sept. 18, 2014, as amended at 82 FR 9365, Feb. 6, 2017.
Redesignated at 85 FR 58143, Sept. 17, 2020]
Sec.210.6 Monthly statements of account.
(a) Forms. The Copyright Office does not provide printed forms for
the use of persons serving Monthly Statements of Account.
(b) General content. A Monthly Statement of Account shall be clearly
and prominently identified as a ``Monthly Statement of Account Under
Compulsory License for Making and Distributing Phonorecords,'' and shall
include a clear statement of the following information:
(1) The period (month and year) covered by the Monthly Statement.
(2) The full legal name of the compulsory licensee, together with
all fictitious or assumed names used by such person or entity for the
purpose of conducting the business of making and distributing
phonorecords.
(3) The full address, including a specific number and street name or
rural route, of the place of business of the compulsory licensee. A post
office box or similar designation will not be sufficient for this
purpose, except where it is the only address that can be used in that
geographic location.
(4) For each nondramatic musical work that is owned by the same
copyright owner being served with the Monthly Statement and that is
embodied in phonorecords covered by the compulsory license, a detailed
statement of all of the information called for in paragraph (c) of this
section.
(5) The total royalty payable to the relevant copyright owner for
the month covered by the Monthly Statement, computed in accordance with
the requirements of this section and the formula specified in paragraph
(d) of this section, including detailed information regarding how the
royalty was computed.
(6) The amount of late fees, if applicable, included in the payment
associated with the Monthly Statement.
(7) In any case where the compulsory licensee falls within the
provisions of Sec.210.5, a clear description of the action or
proceeding involved, including the date of the final judgment or
definitive finding described in that section.
(8) Detailed instructions on how to request records of any
promotional or free trial uses of the copyright owner's works that are
required to be maintained or provided under applicable provisions of
part 385 of this title, or any other provisions, including, where
applicable, records required to be maintained or provided by any third
parties that were authorized by the compulsory licensee to engage in
such uses during any part of the month. If this information is provided,
Monthly Statements need not reflect phonorecords subject to any
promotional or free trial royalty rate of zero that may be provided in
part 385 of this title.
(c) Specific content of monthly statements--(1) Accounting of
phonorecords subject to a cents rate royalty structure. The information
called for by paragraph (b)(4) of this section shall, with respect to
each nondramatic musical work as to which the compulsory licensee has
made and distributed phonorecords subject to applicable provisions of
part 385 of this title, or any other provisions, requiring computation
of applicable royalties on a cents-per-unit basis, include a separate
listing of each of the following items of information:
(i) The number of phonorecords made during the month covered by the
Monthly Statement.
(ii) The number of phonorecords that, during the month covered by
the Monthly Statement and regardless of when made, were either:
[[Page 738]]
(A) Relinquished from possession for purposes other than sale;
(B) Relinquished from possession for purposes of sale without any
privilege of returning unsold phonorecords for credit or exchange;
(C) Relinquished from possession for purposes of sale accompanied by
a privilege of returning unsold phonorecords for credit or exchange;
(D) Returned to the compulsory licensee for credit or exchange; or
(E) Placed in a phonorecord reserve (except that if a negative
reserve balance exists give either the number of phonorecords added to
the negative reserve balance, or the number of phonorecords relinquished
from possession that have been used to reduce the negative reserve
balance).
(iii) The number of phonorecords, regardless of when made, that were
relinquished from possession during a month earlier than the month
covered by the Monthly Statement but that, during the month covered by
the Monthly Statement either have had revenue from their sale
``recognized'' under Sec.210.2(g)(3)(i), or were comprised in a
phonorecord reserve that lapsed after nine months under Sec.
210.2(g)(3)(ii).
(iv) The per unit statutory royalty rate applicable to the relevant
configuration; and
(v) The total royalty payable for the month covered by the Monthly
Statement (i.e., the result in paragraph (d)(2)(v) of this section) for
the item described by the set of information called for, and broken down
as required, by paragraph (c)(1) of this section.
(vi) The phonorecord identification information required by
paragraph (c)(3) of this section.
(2) Accounting of phonorecords subject to a percentage rate royalty
structure. The information called for by paragraph (b)(4) of this
section shall, with respect to each nondramatic musical work as to which
the compulsory licensee has made and distributed phonorecords subject to
applicable provisions of part 385 of this title, or any other
provisions, requiring computation of applicable royalties on a
percentage-rate basis, include a detailed and step-by-step accounting of
the calculation of royalties under applicable provisions of part 385 of
this title, sufficient to allow the copyright owner to assess the manner
in which the licensee determined the royalty owed and the accuracy of
the royalty calculations, including but not limited to the following
information:
(i) The number of plays, constructive plays, or other payable units,
of the relevant sound recording for the month covered by the Monthly
Statement for the relevant offering.
(ii) The total royalty payable for the month for the item described
by the set of information called for, and broken down as required, by
paragraph (c)(3) of this section (i.e., the per-work royalty allocation
for the relevant sound recording and offering).
(iii) The phonorecord identification information required by
paragraph (c)(3) of this section.
(3) Identification of phonorecords in monthly statements. The
information required by this paragraph shall include, and if necessary
shall be broken down to identify separately, the following:
(i) The title of the nondramatic musical work subject to compulsory
license.
(ii) A reference number or code identifying the relevant Notice of
Intention, if the compulsory licensee chose to include such a number or
code on its relevant Notice of Intention for the compulsory license.
(iii) The International Standard Recording Code (ISRC) associated
with the relevant sound recording, if known, and at least one of the
following, as applicable and available for tracking sales and/or usage:
(A) The catalog number or numbers and label name or names,
associated with the phonorecords;
(B) The Universal Product Code (UPC) or similar code used on or
associated with the phonorecords; or
(C) The sound recording identification number assigned by the
compulsory licensee or a third-party distributor to the relevant sound
recording.
(iv) The names of the principal recording artist or group engaged in
rendering the performances fixed on the phonorecords.
(v) The playing time of the relevant sound recording, except that
playing time is not required in the case of
[[Page 739]]
ringtones or licensed activity to which no overtime adjustment is
applicable.
(vi) If the compulsory licensee chooses to allocate its payment
between co-owners of the copyright in the nondramatic musical work, as
described in paragraph (g)(1) of this section, and thus pays the
copyright owner (or agent) receiving the statement less than one hundred
percent of the applicable royalty, the percentage share paid.
(vii) The names of the writer or writers of the nondramatic musical
work, or the International Standard Name Identifiers (ISNIs) or other
unique identifier of the writer or writers, if known.
(viii) The International Standard Musical Work Code (ISWC) or other
unique identifier for the nondramatic musical work, if known.
(ix) Identification of the relevant phonorecord configuration (for
example: compact disc, permanent digital download, ringtone) or offering
(for example: limited download, music bundle) for which the royalty was
calculated, including, if applicable and except for physical
phonorecords, the name of the third-party distributor of the
configuration or offering.
(d) Royalty payment and accounting--(1) In general. The total
royalty called for by paragraph (b)(5) of this section shall be computed
so as to include every phonorecord ``distributed'' during the month
covered by the Monthly Statement.
(2) Phonorecords subject to a cents rate royalty structure. For
phonorecords subject to applicable provisions of part 385 of this title,
or any other provisions, requiring computation of applicable royalties
on a cents-per-unit basis, the amount of the royalty payment shall be
calculated as follows:
(i) Step 1: Compute the number of phonorecords shipped for sale with
a privilege of return. This is the total of phonorecords that, during
the month covered by the Monthly Statement, were relinquished from
possession by the compulsory licensee, accompanied by the privilege of
returning unsold phonorecords to the compulsory licensee for credit or
exchange. This total does not include:
(A) Any phonorecords relinquished from possession by the compulsory
licensee for purposes of sale without the privilege of return; and
(B) Any phonorecords relinquished from possession for purposes other
than sale.
(ii) Step 2: Subtract the number of phonorecords reserved. This
involves deducting, from the subtotal arrived at in Step 1, the number
of phonorecords that have been placed in the phonorecord reserve for the
month covered by the Monthly Statement. The number of phonorecords
reserved is determined by multiplying the subtotal from Step 1 by the
percentage reserve level established under GAAP. This step should be
skipped by a compulsory licensee barred from maintaining reserves under
Sec.210.5.
(iii) Step 3: Add the total of all phonorecords that were shipped
during the month and were not counted in Step 1. This total is the sum
of two figures:
(A) The number of phonorecords that, during the month covered by the
Monthly Statement, were relinquished from possession by the compulsory
licensee for purposes of sale, without the privilege of returning unsold
phonorecords to the compulsory licensee for credit or exchange; and
(B) The number of phonorecords relinquished from possession by the
compulsory licensee, during the month covered by the Monthly Statement,
for purposes other than sale.
(iv) Step 4: Make any necessary adjustments for sales revenue
``recognized,'' lapsed reserves, or reduction of negative reserve
balance during the month. If necessary, this step involves adding to or
subtracting from the subtotal arrived at in Step 3 on the basis of three
possible types of adjustments:
(A) Sales revenue ``recognized.'' If, in the month covered by the
Monthly Statement, the compulsory licensee ``recognized'' revenue from
the sale of phonorecords that had been relinquished from possession in
an earlier month, the number of such phonorecords is added to the Step 3
subtotal.
(B) Lapsed reserves. If, in the month covered by the Monthly
Statement, there are any phonorecords remaining in the phonorecord
reserve for the
[[Page 740]]
ninth previous month (that is, any phonorecord reserves from the ninth
previous month that have not been offset under FOFI, the first-out-
first-in accounting convention, by actual returns during the intervening
months), the reserve lapses and the number of phonorecords in it is
added to the Step 3 subtotal.
(C) Reduction of negative reserve balance. If, in the month covered
by the Monthly Statement, the aggregate reserve balance for all previous
months is a negative amount, the number of phonorecords relinquished
from possession by the compulsory licensee during that month and used to
reduce the negative reserve balance is subtracted from the Step 3
subtotal.
(v) Step 5: Multiply by the statutory royalty rate. The total
monthly royalty payment is obtained by multiplying the subtotal from
Step 3, as adjusted if necessary by Step 4, by the statutory royalty
rate set forth in applicable provisions of part 385 of this title.
(3) Phonorecords subject to a percentage rate royalty structure. For
phonorecords subject to applicable provisions of part 385 of this title,
or any other provisions, requiring computation of applicable royalties
on a percentage-rate basis, the amount of the royalty payment shall be
calculated as provided in applicable provisions of part 385 of this
title. The calculations shall be made in good faith and on the basis of
the best knowledge, information, and belief of the licensee at the time
payment is due, and subject to the additional accounting and
certification requirements of 17 U.S.C. 115(c)(2)(I) and this section.
The following additional provisions shall also apply:
(i) A licensee may, in cases where the final public performance
royalty has not yet been determined, compute the public performance
royalty component based on the interim public performance royalty rate,
if established; or alternatively, on a reasonable estimation of the
expected royalties to be paid in accordance with GAAP. Royalty payments
based on anticipated payments or interim public performance royalty
rates must be reconciled on the Annual Statement of Account, or by
complying with Sec.210.7(d)(2)(iii) governing Amended Annual
Statements of Account.
(ii) When calculating the per-work royalty allocation for each work,
as described in applicable provisions of part 385 of this title, an
actual or constructive per-play allocation is to be calculated to at
least the hundredth of a cent (i.e., to at least four decimal places).
(e) Clear statements. The information required by paragraphs (b) and
(c) of this section requires intelligible, legible, and unambiguous
statements in the Monthly Statements of Account without incorporation of
facts or information contained in other documents or records.
(f) Certification. (1) Each Monthly Statement of Account shall be
accompanied by:
(i) The printed or typewritten name of the person who is signing and
certifying the Monthly Statement of Account.
(ii) A signature, which in the case of a compulsory licensee that is
a corporation or partnership, shall be the signature of a duly
authorized officer of the corporation or of a partner.
(iii) The date of signature and certification.
(iv) If the compulsory licensee is a corporation or partnership, the
title or official position held in the partnership or corporation by the
person who is signing and certifying the Monthly Statement of Account.
(v) One of the following statements:
(A) I certify that (1) I am duly authorized to sign this Monthly
Statement of Account on behalf of the compulsory licensee; (2) I have
examined this Monthly Statement of Account; and (3) all statements of
fact contained herein are true, complete, and correct to the best of my
knowledge, information, and belief, and are made in good faith; or
(B) I certify that (1) I am duly authorized to sign this Monthly
Statement of Account on behalf of the compulsory licensee, (2) I have
prepared or supervised the preparation of the data used by the
compulsory licensee and/or its agent to generate this Monthly Statement
of Account, (3) such data is true, complete, and correct to the best of
my knowledge, information, and belief, and was prepared in good faith,
[[Page 741]]
and (4) this Monthly Statement of Account was prepared by the compulsory
licensee and/or its agent using processes and internal controls that
were subject to an examination, during the past year, by a licensed
Certified Public Accountant in accordance with the attestation standards
established by the American Institute of Certified Public Accountants,
the opinion of whom was that the processes and internal controls were
suitably designed to generate monthly statements that accurately
reflect, in all material respects, the compulsory licensee's usage of
musical works, the statutory royalties applicable thereto, and any other
data that is necessary for the proper calculation of the statutory
royalties in accordance with 17 U.S.C. 115 and applicable regulations.
(2) If the Monthly Statement of Account is served by mail or by
reputable courier service, certification of the Monthly Statement of
Account by the compulsory licensee shall be made by handwritten
signature. If the Monthly Statement of Account is served electronically,
certification of the Monthly Statement of Account by the compulsory
licensee shall be made by electronic signature as defined in section
7006(5) of title 15 of the United States Code.
(g) Service. (1) The service of a Monthly Statement of Account on a
copyright owner under this subpart may be accomplished by means of
service on either the copyright owner or an agent of the copyright owner
with authority to receive Statements of Account on behalf of the
copyright owner. In the case where the work has more than one copyright
owner, the service of a Statement of Account on at least one co-owner or
upon an agent of at least one of the co-owners shall be sufficient with
respect to all co-owners. The compulsory licensee may choose to allocate
its payment between co-owners. In such a case the compulsory licensee
shall provide each co-owner (or its agent) a Monthly Statement
reflecting the percentage share paid to that co-owner. Each Monthly
Statement of Account shall be served on the copyright owner or the agent
to whom or which it is directed by mail, by reputable courier service,
or by electronic delivery as set forth in paragraph (g)(2) of this
section on or before the 20th day of the immediately succeeding month.
The royalty payment for a month also shall be served on or before the
20th day of the immediately succeeding month. The Monthly Statement and
payment may be sent together or separately, but if sent separately, the
payment must include information reasonably sufficient to allow the
payee to match the Monthly Statement to the payment. However, in the
case where the compulsory licensee has served its Notice of Intention
upon an agent of the copyright owner pursuant to Sec.201.18 of this
chapter, the compulsory licensee is not required to serve Monthly
Statements of Account or make any royalty payments until the compulsory
licensee receives from the agent with authority to receive the Notice of
Intention notice of the name and address of the copyright owner or its
agent upon whom the compulsory licensee shall serve Monthly Statements
of Account and the monthly royalty fees. Upon receipt of this
information, the compulsory licensee shall serve Monthly Statements of
Account and all royalty fees covering the intervening period upon the
person or entity identified by the agent with authority to receive the
Notice of Intention by or before the 20th day of the month following
receipt of the notification. It shall not be necessary to file a copy of
the Monthly Statement in the Copyright Office.
(2) A copyright owner or authorized agent may send a licensee a
demand that Monthly Statements of Account be submitted in a readily
accessible electronic format consistent with prevailing industry
practices applicable to comparable electronic delivery of comparable
financial information.
(3) When a compulsory licensee receives a request to deliver or make
available Monthly Statements of Account in electronic form, or a request
to revert back to service by mail or reputable courier service, the
compulsory licensee shall make such a change effective with the first
accounting period ending at least 30 days after the compulsory
licensee's receipt of the request and any information (such as a postal
or email address, as the case
[[Page 742]]
may be) that is necessary for the compulsory licensee to make the
change.
(4)(i) In any case where a Monthly Statement of Account is sent by
mail or reputable courier service and the Monthly Statement of Account
is returned to the sender because the copyright owner or agent is no
longer located at that address or has refused to accept delivery, or the
Monthly Statement of Account is sent by electronic mail and is
undeliverable, or in any case where an address for the copyright owner
is not known, the Monthly Statement of Account, together with any
evidence of mailing or attempted delivery by courier service or
electronic mail, may be filed in the Licensing Division of the Copyright
Office. Any Monthly Statement of Account submitted for filing in the
Copyright Office shall be accompanied by a brief statement of the reason
why it was not served on the copyright owner. A written acknowledgment
of receipt and filing will be provided to the sender.
(ii) The Copyright Office will not accept any royalty fees submitted
with Monthly Statements of Account under this section.
(iii) Neither the filing of a Monthly Statement of Account in the
Copyright Office, nor the failure to file such Monthly Statement, shall
have effect other than that which may be attributed to it by a court of
competent jurisdiction.
(iv) No filing fee will be required in the case of Monthly
Statements of Account submitted to the Copyright Office under this
section. Upon request and payment of the fee specified in Sec.201.3(e)
of this chapter, a Certificate of Filing will be provided to the sender.
(5) Subject to paragraph (g)(6) of this section, a separate Monthly
Statement of Account shall be served for each month during which there
is any activity relevant to the payment of royalties under 17 U.S.C.
115. The Annual Statement of Account described in Sec.210.7 of this
subpart does not replace any Monthly Statement of Account.
(6) Royalties under 17 U.S.C. 115 shall not be considered payable,
and no Monthly Statement of Account shall be required, until the
compulsory licensee's cumulative unpaid royalties for the copyright
owner equal at least one cent. Moreover, in any case in which the
cumulative unpaid royalties under 17 U.S.C. 115 that would otherwise be
payable by the compulsory licensee to the copyright owner are less than
$5, and the copyright owner has not notified the compulsory licensee in
writing that it wishes to receive Monthly Statements of Account
reflecting payments of less than $5, the compulsory licensee may choose
to defer the payment date for such royalties and provide no Monthly
Statements of Account until the earlier of the time for rendering the
Monthly Statement of Account for the month in which the compulsory
licensee's cumulative unpaid royalties under section 17 U.S.C. 115 for
the copyright owner exceed $5 or the time for rendering the Annual
Statement of Account, at which time the compulsory licensee may provide
one statement and payment covering the entire period for which royalty
payments were deferred.
(7) If the compulsory licensee is required, under applicable tax law
and regulations, to make backup withholding from its payments required
hereunder, the compulsory licensee shall indicate the amount of such
withholding on the Monthly Statement or on or with the payment.
(8) If a Monthly Statement of Account is sent by certified mail or
registered mail, a mailing receipt shall be sufficient to prove that
service was timely. If a Monthly Statement of Account is sent by a
reputable courier, documentation from the courier showing the first date
of attempted delivery shall be sufficient to prove that service was
timely. If a Monthly Statement of Account or a link thereto is sent by
electronic mail, a return receipt shall be sufficient to prove that
service was timely. In the absence of the foregoing, the compulsory
licensee shall bear the burden of proving that the Monthly Statement of
Account was served in a timely manner.
[79 FR 56206, Sept. 18, 2014, as amended at 79 FR 60978, Oct. 9, 2014;
83 FR 63065, Dec. 7, 2018; 84 FR 10686, Mar. 22, 2019. Redesignated at
85 FR 58143, Sept. 17, 2020]
Effective Date Note: At 86 FR 32643, June 22, 2021, Sec.
210.6(g)(4)(i) was amended by removing ``Licensing Division'' and adding
in
[[Page 743]]
its place ``Licensing Section'', effective July 22, 2021.
Sec.210.7 Annual statements of account.
(a) Forms. The Copyright Office does not provide printed forms for
the use of persons serving Annual Statements of Account.
(b) Annual period. Any Annual Statement of Account shall cover the
full fiscal year of the compulsory licensee.
(c) General content. An Annual Statement of Account shall be clearly
and prominently identified as an ``Annual Statement of Account Under
Compulsory License for Making and Distributing Phonorecords,'' and shall
include a clear statement of the following information:
(1) The fiscal year covered by the Annual Statement of Account.
(2) The full legal name of the compulsory licensee, together with
all fictitious or assumed names used by such person or entity for the
purpose of conducting the business of making and distributing
phonorecords.
(3) If the compulsory licensee is a business organization, the name
and title of the chief executive officer, managing partner, sole
proprietor or other person similarly responsible for the management of
such entity.
(4) The full address, including a specific number and street name or
rural route, or the place of business of the compulsory licensee (a post
office box or similar designation will not be sufficient for this
purpose except where it is the only address that can be used in that
geographic location).
(5) For each nondramatic musical work that is owned by the same
copyright owner being served with the Annual Statement and that is
embodied in phonorecords covered by the compulsory license, a detailed
statement of all of the information called for in paragraph (d) of this
section.
(6) The total royalty payable for the fiscal year covered by the
Annual Statement computed in accordance with the requirements of Sec.
210.6, and, in the case of offerings for which royalties are calculated
pursuant to applicable provisions of part 385 of this title, or any
other provisions, requiring computation of applicable royalties on a
percentage-rate basis, calculations showing in detail how the royalty
was computed (for these purposes, the applicable royalty as specified in
applicable provisions of part 385 of this title, or any other
provisions, requiring computation of applicable royalties on a cents-
per-unit basis shall be payable for every phonorecord ``distributed''
during the fiscal year covered by the Annual Statement).
(7) The total sum paid under Monthly Statements of Account by the
compulsory licensee to the copyright owner being served with the Annual
Statement during the fiscal year covered by the Annual Statement.
(8) In any case where the compulsory license falls within the
provisions of Sec.210.5, a clear description of the action or
proceeding involved, including the date of the final judgment or
definitive finding described in that section.
(9) Any late fees, if applicable, included in any payment associated
with the Annual Statement.
(d) Specific content of annual statements--(1) Accounting of
phonorecords subject to a cents rate royalty structure. The information
called for by paragraph (c)(5) of this section shall, with respect to
each nondramatic musical work as to which the compulsory licensee has
made and distributed phonorecords subject to applicable provisions of
part 385 of this title, or any other provisions, requiring computation
of applicable royalties on a cents-per-unit basis, include a separate
listing of each of the following items of information:
(i) The number of phonorecords made through the end of the fiscal
year covered by the Annual Statement, including any made during earlier
years.
(ii) The number of phonorecords which have never been relinquished
from possession of the compulsory licensee through the end of the fiscal
year covered by the Annual Statement.
(iii) The number of phonorecords involuntarily relinquished from
possession (as through fire or theft) of the compulsory licensee during
the fiscal year covered by the Annual Statement and any earlier years,
together with a description of the facts of such involuntary
relinquishment.
[[Page 744]]
(iv) The number of phonorecords ``distributed'' by the compulsory
licensee during all years before the fiscal year covered by the Annual
Statement.
(v) The number of phonorecords relinquished from possession of the
compulsory licensee for purposes of sale during the fiscal year covered
by the Annual Statement accompanied by a privilege of returning unsold
records for credit or exchange, but not ``distributed'' by the end of
that year.
(vi) The number of phonorecords ``distributed'' by the compulsory
licensee during the fiscal year covered by the Annual Statement.
(vii) The per unit statutory royalty rate applicable to the relevant
configuration.
(viii) The total royalty payable for the fiscal year covered by the
Annual Statement for the item described by the set of information called
for, and broken down as required, by this paragraph (d)(1).
(ix) The phonorecord identification information required by
paragraph (d)(3) of this section.
(2) Accounting of phonorecords subject to a percentage rate royalty
structure. (i) The information called for by paragraph (c)(5) of this
section shall identify each offering for which royalties are to be
calculated separately and, with respect to each nondramatic musical work
as to which the compulsory licensee has made and distributed
phonorecords subject to applicable provisions of part 385 of this title,
or any other provisions, requiring computation of applicable royalties
on a percentage-rate basis, include the number of plays, constructive
plays, or other payable units during the fiscal year covered by the
Annual Statement, together with, and which if necessary shall be broken
down to identify separately, the following:
(A) The total royalty payable for the fiscal year for the item
described by the set of information called for, and broken down as
required, by paragraph (d)(3) of this section (i.e., the per-work
royalty allocation for the relevant sound recording and offering).
(B) The phonorecord identification information required by paragraph
(d)(3) of this section.
(ii) If the information given under paragraph (d)(2)(i) of this
section does not reconcile, the Annual Statement shall also include a
clear and detailed explanation of the difference.
(iii) In any case where a licensee serves an Annual Statement of
Account based on anticipated payments or interim public performance
royalty rates prior to the final determination of final public
performance royalties for all musical works used by the service in the
relevant fiscal year, the licensee shall serve an Amended Annual
Statement of Account within six months from the date such public
performance royalties have been established. The Amended Annual
Statement of Account shall recalculate the royalty fees reported on the
relevant Annual Statement of Account to adjust for any change to the
public performance rate used to calculate the royalties reported.
Service shall be made in accordance with paragraph (g) of this section.
Certification of the Amended Annual Statement shall be made in
accordance with paragraph (f) of this section, except that the CPA
examination under paragraph (f)(2) of this section may be limited to the
licensee's recalculation of royalty fees in accordance with this
paragraph.
(3) Identification of phonorecords in annual statements. The
information required by this paragraph shall include, and if necessary
shall be broken down to identify separately, the following:
(i) The title of the nondramatic musical work subject to compulsory
license.
(ii) A reference number or code identifying the relevant Notice of
Intention, if the compulsory licensee chose to include such a number or
code on its relevant Notice of Intention for the compulsory license.
(iii) The International Standard Recording Code (ISRC) associated
with the relevant sound recording, if known; and at least one of the
following, as applicable and available for tracking sales and/or usage:
(A) The catalog number or numbers and label name or names, used on
or associated with the phonorecords;
(B) The Universal Product Code (UPC) or similar code used on or
associated with the phonorecords; or
[[Page 745]]
(C) The sound recording identification number assigned by the
compulsory licensee or a third-party distributor to the relevant sound
recording;
(iv) The names of the principal recording artist or group engaged in
rendering the performances fixed on the phonorecords.
(v) The playing time of the relevant sound recording, except that
playing time is not required in the case of ringtones or licensed
activity to which no overtime adjustment is applicable.
(vi) If the compulsory licensee chooses to allocate its payments
between co-owners of the copyright in the nondramatic musical work as
described in paragraph (g)(1) of Sec.210.6, and thus pays the
copyright owner (or agent) receiving the statement less than one hundred
percent of the applicable royalty, the percentage share paid.
(vii) The names for the writer or writers of the nondramatic musical
work, or the International Standard Name Identifiers (ISNIs) or other
unique identifier of the writer or writers, if known.
(viii) The International Standard Work Code (ISWC) or other unique
identifier for the nondramatic musical work, if known.
(ix) Identification of the relevant phonorecord configuration (for
example: compact disc, permanent digital download, ringtone) or offering
(for example: limited download, music bundle) for which the royalty was
calculated, including, if applicable and except for physical
phonorecords, the name of the third-party distributor of the
configuration or offering.
(e) Clear statement. The information required by paragraph (c) of
this section requires intelligible, legible, and unambiguous statements
in the Annual Statement of Account without incorporation by reference of
facts or information contained in other documents or records.
(f) Certification. (1) Each Annual Statement of Account shall be
accompanied by:
(i) The printed or typewritten name of the person who is signing the
Annual Statement of Account on behalf of the compulsory licensee.
(ii) A signature, which in the case of a compulsory licensee that is
a corporation or partnership, shall be the signature of a duly
authorized officer of the corporation or of a partner.
(iii) The date of signature.
(iv) If the compulsory licensee is a corporation or partnership, the
title or official position held in the partnership or corporation by the
person signing the Annual Statement of Account.
(v) The following statement: I am duly authorized to sign this
Annual Statement of Account on behalf of the compulsory licensee.
(2) Each Annual Statement of Account shall also be certified by a
licensed Certified Public Accountant. Such certification shall comply
with the following requirements:
(i) Except as provided in paragraph (f)(2)(ii) of this section, the
accountant shall certify that it has conducted an examination of the
Annual Statement of Account prepared by the compulsory licensee in
accordance with the attestation standards established by the American
Institute of Certified Public Accountants, and has rendered an opinion
based on such examination that the Annual Statement conforms with the
standards in paragraph (f)(2)(iv) of this section.
(ii) If such accountant determines in its professional judgment that
the volume of data attributable to a particular compulsory licensee
renders it impracticable to certify the Annual Statement of Account as
required by paragraph (f)(2)(i) of this section, the accountant may
instead certify the following:
(A) That the accountant has conducted an examination in accordance
with the attestation standards established by the American Institute of
Certified Public Accountants of the following assertions by the
compulsory licensee's management:
(1) That the processes used by or on behalf of the compulsory
licensee, including calculation of statutory royalties, generated Annual
Statements that conform with the standards in paragraph (f)(2)(iv) of
this section; and
(2) That the internal controls relevant to the processes used by or
on behalf of the compulsory licensee to generate Annual Statements were
suitably
[[Page 746]]
designed and operated effectively during the period covered by the
Annual Statements.
(B) That such examination included examining, either on a test basis
or otherwise as the accountant considered necessary under the
circumstances and in its professional judgment, evidence supporting the
management assertions in paragraph (f)(2)(ii)(A) of this section,
including data relevant to the calculation of statutory royalties, and
performing such other procedures as the accountant considered necessary
in the circumstances.
(C) That the accountant has rendered an opinion based on such
examination that the processes used to generate the Annual Statement
were designed and operated effectively to generate Annual Statements
that conform with the standards in paragraph (f)(2)(iv) of this section,
and that the internal controls relevant to the processes used to
generate Annual Statements were suitably designed and operated
effectively during the period covered by the Annual Statements.
(iii) In the event a third party or third parties acting on behalf
of the compulsory licensee provided services related to the Annual
Statement, the accountant making a certification under either paragraph
(f)(2)(i) or paragraph (f)(2)(ii) of this section may, as the accountant
considers necessary under the circumstances and in its professional
judgment, rely on a report and opinion rendered by a licensed Certified
Public Accountant in accordance with the attestation standards
established by the American Institute of Certified Public Accountants
that the processes and/or internal controls of the third party or third
parties relevant to the generation of the compulsory licensee's Annual
Statements were suitably designed and operated effectively during the
period covered by the Annual Statements, if such reliance is disclosed
in the certification.
(iv) An Annual Statement of Account conforms with the standards of
this paragraph if it presents fairly, in all material respects, the
compulsory licensee's usage of the copyright owner's musical works under
compulsory license during the period covered by the Annual Statement,
the statutory royalties applicable thereto, and such other data as are
relevant to the calculation of statutory royalties in accordance with 17
U.S.C. 115 and applicable regulations.
(v) Each certificate shall be signed by an individual, or in the
name of a partnership or a professional corporation with two or more
shareholders. The certificate number and jurisdiction are not required
if the certificate is signed in the name of a partnership or a
professional corporation with two or more shareholders.
(3) If the Annual Statement of Account is served by mail or by
reputable courier service, the Annual Statement of Account shall be
signed by handwritten signature. If the Annual Statement of Account is
served electronically, the Annual Statement of Account shall be signed
by electronic signature as defined in section 7006(5) of title 15 of the
United States Code.
(4) If the Annual Statement of Account is served electronically, the
compulsory licensee may serve an electronic facsimile of the original
certification of the Annual Statement of Account signed by the licensed
Certified Public Accountant. The compulsory licensee shall retain the
original certification of the Annual Statement of Account signed by the
licensed Certified Public Accountant for the period identified in Sec.
210.8, which shall be made available to the copyright owner upon demand.
(g) Service. (1) The service of an Annual Statement of Account on a
copyright owner under this subpart may be accomplished by means of
service on either the copyright owner or an agent of the copyright owner
with authority to receive Statements of Account on behalf of the
copyright owner. In the case where the work has more than one copyright
owner, the service of the Statement of Account on one co-owner or upon
an agent of one of the co-owners shall be sufficient with respect to all
co-owners. Each Annual Statement of Account shall be served on the
copyright owner or the agent to whom or which it is directed by mail, by
reputable courier service, or by electronic delivery as set forth in
paragraph (g)(2) of this section on or before the 20th day of the sixth
month following the end of
[[Page 747]]
the fiscal year covered by the Annual Statement. It shall not be
necessary to file a copy of the Annual Statement in the Copyright
Office. An Annual Statement of Account shall be served for each fiscal
year during which at least one Monthly Statement of Account was required
to have been served under Sec.210.6(g).
(2) If an Annual Statement of Account is being sent electronically,
it may be sent or made available to a copyright owner or its agent in a
readily accessible electronic format consistent with prevailing industry
practices applicable to comparable electronic delivery of comparable
financial information.
(3) If the copyright owner or agent has made a request pursuant to
Sec.210.6(g)(3) to receive statements in electronic or paper form,
such request shall also apply to Annual Statements to be rendered on or
after the date that the request is effective with respect to Monthly
Statements.
(4) In any case where the amount required to be stated in the Annual
Statement of Account under paragraph (c)(6) of this section (i.e., the
total royalty payable) is greater than the amount stated in that Annual
Statement under paragraph (c)(7) of this section (i.e., the total sum
paid), the difference between such amounts shall also be served on or
before the 20th day of the sixth month following the end of the fiscal
year covered by the Annual Statement. The Annual Statement and payment
may be sent together or separately, but if sent separately, the payment
must include information reasonably sufficient to allow the payee to
match the Annual Statement and the payment. The delivery of such sum
does not require the copyright owner to accept such sum, or to forego
any right, relief, or remedy which may be available under law. In any
case where the amount required to be stated in the Annual Statement of
Account under paragraph (c)(6) of this section is less than the amount
stated in that Annual Statement under paragraph (c)(7) of this section,
the difference between such amounts shall be available to the compulsory
licensee as a credit.
(5)(i) In any case where an Annual Statement of Account is sent by
mail or by reputable courier service and is returned to the sender
because the copyright owner or agent is no longer located at that
address or has refused to accept delivery, or the Annual Statement of
Account is sent by electronic mail and is undeliverable, or in any case
where an address for the copyright owner is not known, the Annual
Statement of Account, together with any evidence of mailing or attempted
delivery by courier service or electronic mail, may be filed in the
Licensing Division of the Copyright Office. Any Annual Statement of
Account submitted for filing shall be accompanied by a brief statement
of the reason why it was not served on the copyright owner. A written
acknowledgment of receipt and filing will be provided to the sender.
(ii) The Copyright Office will not accept any royalty fees submitted
with Annual Statements of Account under paragraph (g)(5)(i) of this
section.
(iii) Neither the filing of an Annual Statement of Account in the
Copyright Office, nor the failure to file such Annual Statement, shall
have any effect other than that which may be attributed to it by a court
of competent jurisdiction.
(iv) No filing fee will be required in the case of Annual Statements
of Account submitted to the Copyright Office under paragraph (g)(5)(i)
of this section. Upon request and payment of the fee specified in Sec.
201.3(e) of this chapter, a Certificate of Filing will be provided to
the sender.
(6) If an Annual Statement of Account is sent by certified mail or
registered mail, a mailing receipt shall be sufficient to prove that
service was timely. If an Annual Statement of Account is sent by a
reputable courier, documentation from the courier showing the first date
of attempted delivery shall be sufficient to prove that service was
timely. If an Annual Statement of Account or a link thereto is sent by
electronic mail, a return receipt shall be sufficient to prove that
service was timely. In the absence of the foregoing, the compulsory
licensee shall bear the burden of proving that the Annual Statement of
Account was served in a timely manner.
[[Page 748]]
(h) Annual Statements for periods before the effective date of this
regulation. If a copyright owner did not receive an Annual Statement of
Account from a compulsory licensee for any fiscal year ending after
March 1, 2009 and before November 17, 2014, the copyright owner may, at
any time before May 17, 2015, make a request in writing to that
compulsory licensee requesting an Annual Statement of Account for the
relevant fiscal year conforming to the requirements of this section. If
such a request is made, the compulsory licensee shall provide the Annual
Statement of Account within six months after receiving the request. If
such a circumstance and request applies to more than one of the
compulsory licensee's fiscal years, such years may be combined on a
single statement.
[79 FR 56206, Sept. 18, 2014, as amended at 79 FR 60978, Oct. 9, 2014;
82 FR 9365, Feb. 6, 2017; 84 FR 10686, Mar. 22, 2019. Redesignated at 85
FR 58143, Sept. 17, 2020]
Effective Date Note: At 86 FR 32643, June 22, 2021, Sec.
210.7(g)(5)(i) was amended by removing ``Licensing Division'' and adding
in its place ``Licensing Section'', effective July 22, 2021.
Sec.210.8 Documentation.
All compulsory licensees shall, for a period of at least five years
from the date of service of an Annual Statement of Account or Amended
Annual Statement of Account, keep and retain in their possession all
records and documents necessary and appropriate to support fully the
information set forth in such Annual Statement or Amended Annual
Statement and in Monthly Statements served during the fiscal year
covered by such Annual Statement or Amended Annual Statement.
[79 FR 56206, Sept. 18, 2014. Redesignated at 85 FR 58143, Sept. 17,
2020]
Sec.210.9 Harmless errors.
Errors in a Monthly or Annual Statement of Account that do not
materially prejudice the rights of the copyright owner shall be deemed
harmless, and shall not render that statement of account invalid or
provide a basis for the exercise of the remedies set forth in 17 U.S.C.
115(c)(2)(J).
[79 FR 56206, Sept. 18, 2014, as amended at 83 FR 63065, Dec. 7, 2018.
Redesignated at 85 FR 58143, Sept. 17, 2020]
Sec.210.10 Statements required for limitation on liability for
digital music providers for the transition period prior to the license
availability date.
This section specifies the requirements for a digital music provider
to report and pay royalties for purposes of being eligible for the
limitation on liability described in 17 U.S.C. 115(d)(10). Terms used in
this section that are defined in 17 U.S.C. 115(e) shall have the meaning
given those terms in 17 U.S.C. 115(e).
(a) If the required matching efforts are successful in identifying
and locating a copyright owner of a musical work (or share thereof) by
the end of the calendar month in which the digital music provider first
makes use of the work, the digital music provider shall provide
statements of account and pay royalties to such copyright owner as a
compulsory licensee in accordance with this subpart.
(b) If the copyright owner is not identified or located by the end
of the calendar month in which the digital music provider first makes
use of the work, the digital music provider shall accrue and hold
royalties calculated under the applicable statutory rate in accordance
with usage of the work, from initial use of the work until the accrued
royalties can be paid to the copyright owner or are required to be
transferred to the mechanical licensing collective, as follows:
(1) Accrued royalties shall be maintained by the digital music
provider in accordance with generally accepted accounting principles,
including those concerning derecognition of liabilities.
(2) If a copyright owner of an unmatched musical work (or share
thereof) is identified and located by or to the digital music provider
before the license availability date, the digital music provider shall,
unless a voluntary license or other relevant agreement entered into
prior to the time period specified in paragraph (b)(2)(i) of
[[Page 749]]
this section applies to such musical work (or share thereof)--
(i) Not later than 45 calendar days after the end of the calendar
month during which the copyright owner was identified and located, pay
the copyright owner all accrued royalties, such payment to be
accompanied by a cumulative statement of account that includes all of
the information that would have been provided to the copyright owner had
the digital music provider been providing Monthly Statements of Account
as a compulsory licensee in accordance with this subpart to the
copyright owner from initial use of the work, and including, in addition
to the information and certification required by Sec.210.6, a clear
identification of the total period covered by the cumulative statement
and the total royalty payable for the period;
(ii) Beginning with the accounting period following the calendar
month in which the copyright owner was identified and located, and for
all other accounting periods prior to the license availability date,
provide Monthly Statements of Account and pay royalties to the copyright
owner as a compulsory licensee in accordance with this subpart; and
(iii) Beginning with the monthly royalty reporting period commencing
on the license availability date, report usage and pay royalties for
such musical work (or share thereof) for such reporting period and
reporting periods thereafter to the mechanical licensing collective, as
required under 17 U.S.C. 115(d) and applicable regulations.
(3) If a copyright owner of an unmatched musical work (or share
thereof) is not identified and located by the license availability date,
the digital music provider shall--
(i) Not later than 45 calendar days after the license availability
date, transfer all accrued royalties to the mechanical licensing
collective (as required by paragraph (i)(2) of this section and subject
to paragraphs (c)(5) and (k) of this section), such payment to be
accompanied by a cumulative statement of account that:
(A) Includes all of the information required by paragraphs (c)
through (e) of this section covering the period starting from initial
use of the work;
(B) Is delivered to the mechanical licensing collective as required
by paragraph (i)(1) of this section; and
(C) Is certified as required by paragraph (j) of this section; and
(ii) Beginning with the monthly royalty reporting period commencing
on the license availability date, report usage and pay royalties for
such musical work (or share thereof) for such period and reporting
periods thereafter to the mechanical licensing collective, as required
under 17 U.S.C. 115(d) and applicable regulations.
(c) Each cumulative statement of account delivered to the mechanical
licensing collective under paragraph (b)(3)(i) of this section shall be
clearly and prominently identified as a ``Cumulative Statement of
Account for Making and Distributing Phonorecords,'' and shall include a
clear statement of the following information:
(1) The period (months and years) covered by the cumulative
statement of account.
(2) The full legal name of the digital music provider and, if
different, the trade or consumer-facing brand name(s) of the service(s),
including any specific offering(s) (including as may be defined in part
385 of this title), through which the digital music provider engages, or
has engaged at any time during the period identified in paragraph (c)(1)
of this section, in covered activities. If the digital music provider
has a unique DDEX identifier number, it must also be provided.
(3) The full address, including a specific number and street name or
rural route, of the place of business of the digital music provider. A
post office box or similar designation will not be sufficient except
where it is the only address that can be used in that geographic
location.
(4) For each sound recording embodying a musical work that is used
by the digital music provider in covered activities during the period
identified in paragraph (c)(1) of this section and for which a copyright
owner of such musical work (or share thereof) is not identified and
located by the license availability date, a detailed cumulative
statement, from which the mechanical
[[Page 750]]
licensing collective may separate reported information for each month
and year for each applicable activity or offering including as may be
defined in part 385 of this title, of all of:
(i) The royalty payment and accounting information required by
paragraph (d) of this section; and
(ii) The sound recording and musical work information required by
paragraph (e) of this section.
(5) The total accrued royalty payable by the digital music provider
for the period identified in paragraph (c)(1) of this section, computed
in accordance with the requirements of this section and part 385 of this
title, and including detailed information regarding how the royalty was
computed, with such total accrued royalty payable broken down by month
and year and by each applicable activity or offering including as may be
defined in part 385 of this title.
(i) Where a digital music provider has a reasonable good-faith
belief that the total accrued royalties payable are less than the total
of the amounts reported under paragraph (c)(4)(i) of this section, and
the precise amount of such accrued royalties cannot be calculated at the
time the cumulative statement of account is delivered to the mechanical
licensing collective because of the unmatched status of relevant musical
works embodied in sound recordings reported under paragraph (c)(4)(ii)
of this section, the total accrued royalties reported and transferred
may make use of reasonable estimations, determined in accordance with
GAAP and broken down by month and year and by each applicable activity
or offering including as may be defined in part 385 of this title. Any
such estimate shall be made in good faith and on the basis of the best
knowledge, information, and belief of the digital music provider at the
time the cumulative statement of account is delivered to the mechanical
licensing collective, and subject to any additional accounting and
certification requirements under 17 U.S.C. 115 and this section. In no
case shall the failure to match a musical work by the license
availability date be construed as prohibiting or limiting a digital
music provider's entitlement to use such an estimate if the digital
music provider has satisfied its obligations under 17 U.S.C.
115(d)(10)(B) to engage in required matching efforts.
(ii) A digital music provider reporting and transferring accrued
royalties that make use of reasonable estimations must provide a
description of any voluntary license or other agreement containing an
appropriate release of royalty claims relied upon by the digital music
provider in making its estimation that is sufficient for the mechanical
licensing collective to engage in efforts to confirm uses of musical
works subject to any such agreement. Such description shall be
sufficient if it includes at least the following information:
(A) An identification of each of the digital music provider's
services, including by reference to any applicable types of activities
or offerings that may be defined in part 385 of this title, relevant to
any such agreement. If such an agreement pertains to all of the digital
music provider's applicable services, it may state so without
identifying each service.
(B) The start and end dates of each covered period of time.
(C) Each applicable musical work copyright owner, identified by name
and any known and appropriate unique identifiers, and appropriate
contact information for each such musical work copyright owner or for an
administrator or other representative who has entered into an applicable
agreement on behalf of the relevant copyright owner.
(D) A satisfactory identification of any applicable catalog
exclusions.
(E) At the digital music provider's option, and in lieu of providing
the information listed in paragraph (c)(5)(ii)(D) of this section, a
list of all covered musical works, identified by appropriate unique
identifiers.
(F) A unique identifier for each such agreement.
(iii)(A) After receiving the information required by paragraph
(c)(5)(ii) of this section, the mechanical licensing collective shall,
among any other actions required of it, engage in efforts to confirm
uses of musical works embodied in sound recordings reported under
paragraph (c)(4)(ii) of this section that are subject to any identified
agreement, and shall promptly notify
[[Page 751]]
relevant copyright owners of the digital music provider's reliance on
such identified agreement(s).
(B)(1) A notified copyright owner may dispute whether a digital
music provider has appropriately relied upon an identified agreement by
delivering a notice of dispute to the mechanical licensing collective no
later than one year after being notified. A notice of dispute must
describe the basis for the copyright owner's dispute with particularity
and specify whether the copyright owner is disputing the digital music
provider's reliance with respect to potential distributions based on
matched usage or of unclaimed accrued royalties under 17 U.S.C.
115(d)(3)(J), or both. The notice must contain a certification by the
copyright owner that its dispute is reasonable and made in good faith.
The mechanical licensing collective shall promptly provide the digital
music provider with a copy of any notice of dispute it receives. Nothing
in this paragraph (c)(5)(iii)(B)(1) shall be construed as prejudicing a
copyright owner's right or ability to otherwise dispute a digital music
provider's reliance on an identified agreement outside of this process.
(2) If the mechanical licensing collective receives a notice of
dispute from an appropriate copyright owner in compliance with paragraph
(c)(5)(iii)(B)(1) of this section, then at or around the point in time
that the mechanical licensing collective would otherwise make a
particular distribution to that copyright owner but for the digital
music provider's reliance on the disputed agreement, the mechanical
licensing collective shall deliver an invoice and/or response file to
the digital music provider consistent with paragraph (h) of this section
that includes the amount that would otherwise be distributed at that
time (which shall include the interest that would have accrued on such
amount had it been held by the mechanical licensing collective pursuant
to 17 U.S.C. 115(d)(3)(H)(ii) from the original date of transfer) and an
explanation of how that amount was determined. Depending on the scope of
the notice of dispute, this may include distributions based on matched
usage and/or distributions of unclaimed accrued royalties under 17
U.S.C. 115(d)(3)(J). In the case of the latter, the relevant approximate
date to deliver the invoice and/or response file to the digital music
provider shall be the date on which the mechanical licensing collective
provides the notice required under 17 U.S.C. 115(d)(3)(J)(iii)(II)(dd).
Where a copyright owner delivers a notice of dispute after the relevant
point in time has passed for a particular distribution, the mechanical
licensing collective shall deliver the invoice and/or response file to
the digital music provider promptly after receiving the notice of
dispute. No later than 14 business days after receipt of the invoice
and/or response file, the digital music provider must pay the invoiced
amount.
(3) All amounts delivered to the mechanical licensing collective by
a digital music provider pursuant to paragraph (c)(5)(iii)(B)(2) of this
section shall be held by the mechanical licensing collective pending
resolution of the dispute, in accordance with 17 U.S.C.
115(d)(3)(H)(ii)(I) without regard for whether or not the funds are in
fact accrued royalties. The mechanical licensing collective shall not
make a distribution of the funds (or any part thereof), treat the funds
(or any part thereof) as an overpayment, or otherwise release the funds
(or any part thereof), unless directed to do so by mutual agreement of
the relevant parties or by order of an adjudicative body with
appropriate authority. If the mechanical licensing collective has not
been so directed within one year after the funds have been received from
the digital music provider, and if there is no active dispute resolution
occurring at that time, the mechanical licensing collective shall treat
the funds as an overpayment which shall be handled in accordance with
paragraph (k)(5) of this section.
(C) The mechanical licensing collective shall presume that a digital
music provider has appropriately relied upon an identified agreement,
except with respect to a relevant copyright owner who has delivered a
valid notice of dispute for such agreement pursuant to paragraph
(c)(5)(iii)(B)(1) of this section. Notwithstanding the preceding
sentence, any resolution of a dispute
[[Page 752]]
shall be reflected in the mechanical licensing collective's ongoing
administration activities.
(iv)(A) Subject to paragraph (c)(5)(iii) of this section, if the
amount transferred to the mechanical licensing collective by a digital
music provider with its cumulative statement of account is insufficient
to cover any required distributions to copyright owners, the mechanical
licensing collective shall deliver an invoice and/or response file to
the digital music provider consistent with paragraph (h) of this section
that includes the amount outstanding (which shall include the interest
that would have accrued on such amount had it been held by the
mechanical licensing collective pursuant to 17 U.S.C. 115(d)(3)(H)(ii)
from the original date of transfer) and the basis for the mechanical
licensing collective's conclusion that such amount is due. No later than
14 business days after receipt of such notice, the digital music
provider must pay the invoiced amount.
(B) In the event a digital music provider is found by an
adjudicative body with appropriate authority to have erroneously, but
not unreasonably or in bad faith, withheld accrued royalties, the
digital music provider may remain in compliance with this section for
purposes of retaining its limitation on liability if the digital music
provider has otherwise satisfied the requirements for the limitation on
liability described in 17 U.S.C. 115(d)(10) and this section and if the
additional amount due is paid in accordance with a relevant order.
(v) Any overpayment of royalties based upon an estimate permitted by
paragraph (c)(5)(i) of this section shall be handled in accordance with
paragraph (k)(5) of this section.
(vi) Any underpayment of royalties shall be remedied by a digital
music provider without regard for the adjusted statute of limitations
described in 17 U.S.C. 115(d)(10)(C). By using an estimate permitted by
either paragraph (c)(5)(i) or (d)(2) of this section, a digital music
provider agrees to waive any statute-of-limitations-based defenses with
respect to any asserted underpayment of royalties connected to the use
of such an estimate.
(vii) Nothing in this section shall be construed as prejudicing a
copyright owner's ability to challenge whether a digital music provider
has satisfied the requirements for the limitation on liability.
(6) If the total accrued royalty reported under paragraph (c)(5) of
this section does not reconcile with the royalties actually transferred
to the mechanical licensing collective, or if the royalties reported
employ an estimate as permitted under paragraph (c)(5)(i) of this
section, a clear and detailed explanation of the difference and the
basis for it.
(d) The royalty payment and accounting information called for by
paragraph (c)(4)(i) of this section shall consist of the following:
(1) A detailed and step-by-step accounting of the calculation of
attributable royalties under applicable provisions of this section and
part 385 of this title, sufficient to allow the mechanical licensing
collective to assess the manner in which the digital music provider
determined the royalty and the accuracy of the royalty calculations,
including but not limited to the number of payable units, including, as
applicable, permanent downloads, plays, and constructive plays, for each
reported sound recording.
(2) Where computation of the attributable royalties depends on an
input that is unable to be finally determined at the time the cumulative
statement of account is delivered to the mechanical licensing collective
and where the reason the input cannot be finally determined is outside
of the digital music provider's control (e.g., the amount of applicable
public performance royalties and the amount of applicable consideration
for sound recording copyright rights), a reasonable estimation of such
input, determined in accordance with GAAP, may be used or provided by
the digital music provider. Royalty payments based on such estimates
shall be adjusted pursuant to paragraph (k) of this section after being
finally determined. A cumulative statement of account containing an
estimate permitted by this paragraph (d)(2) should identify each input
that has been estimated, and provide the reason(s) why such input(s)
needed to be estimated
[[Page 753]]
and an explanation as to the basis for the estimate(s).
(3) All information and calculations provided pursuant to paragraph
(d) of this section shall be made in good faith and on the basis of the
best knowledge, information, and belief of the digital music provider at
the time the cumulative statement of account is delivered to the
mechanical licensing collective, and subject to any additional
accounting and certification requirements under 17 U.S.C. 115 and this
section.
(e) For each sound recording embodying a musical work required to be
reported under paragraph (c)(4)(ii) of this section, the digital music
provider shall provide the information referenced in Sec.210.6(c)(3)
that would have been provided to the copyright owner had the digital
music provider been serving Monthly Statements of Account as a
compulsory licensee in accordance with this subpart on the copyright
owner from initial use of the work, plus the unique identifier assigned
by the digital music provider to the sound recording and a unique
identifier assigned by the digital music provider to each individual
usage line.
(f) The information required by paragraphs (c), (d), (e), (k), and
(o) of this section requires intelligible, legible, and unambiguous
statements in the cumulative statements of account, without
incorporation of facts or information contained in other documents or
records.
(g) References to part 385 of this title, as used in paragraphs (c),
(d), and (k) of this section, refer to the rates and terms of royalty
payments, including any defined activities or offerings, as in effect as
to each particular reported use based on when the use occurred.
(h) If requested by a digital music provider, the mechanical
licensing collective shall deliver an invoice and/or a response file to
the digital music provider within a reasonable period of time after the
cumulative statement of account and related royalties are received. The
response file shall contain such information as is common in the
industry to be reported in response files, backup files, and any other
similar such files provided to digital music providers by applicable
third-party administrators.
(i)(1) To the extent practicable, each cumulative statement of
account delivered to the mechanical licensing collective under paragraph
(b)(3)(i) of this section, and each supplemental metadata report
delivered to the mechanical licensing collective under paragraph (o) of
this section, shall be delivered in a machine-readable format that is
compatible with the information technology systems of the mechanical
licensing collective as reasonably determined by the mechanical
licensing collective and set forth on its website, taking into
consideration relevant industry standards and the potential for
different degrees of sophistication among digital music providers. The
mechanical licensing collective must offer an option that is accessible
to smaller digital music providers that may not be reasonably capable of
complying with the requirements of a sophisticated reporting or data
standard or format. Nothing in this section shall be construed as
prohibiting the mechanical licensing collective from adopting more than
one reporting or data standard or format. A digital music provider may
use an alternative reporting or data standard or format pursuant to an
agreement with the mechanical licensing collective under paragraph (l)
of this section, consent to which shall not be unreasonably withheld by
the mechanical licensing collective.
(2) Royalty payments shall be delivered to the mechanical licensing
collective in such manner and form as the mechanical licensing
collective may reasonably determine and set forth on its website. A
cumulative statement of account and its related royalty payment may be
delivered together or separately, but if delivered separately, the
payment must include information reasonably sufficient to allow the
mechanical licensing collective to match the cumulative statement of
account to the payment.
(j) Each cumulative statement of account delivered to the mechanical
licensing collective under paragraph (b)(3)(i) of this section shall be
accompanied by:
[[Page 754]]
(1) The name of the person who is signing and certifying the
cumulative statement of account.
(2) A signature, which in the case of a digital music provider that
is a corporation or partnership, shall be the signature of a duly
authorized officer of the corporation or of a partner.
(3) The date of signature and certification.
(4) If the digital music provider is a corporation or partnership,
the title or official position held in the partnership or corporation by
the person who is signing and certifying the cumulative statement of
account.
(5) One of the following statements:
(i) Statement one:
I certify that (1) I am duly authorized to sign this cumulative
statement of account on behalf of the digital music provider, (2) I have
examined this cumulative statement of account, and (3) all statements of
fact contained herein are true, complete, and correct to the best of my
knowledge, information, and belief, and are made in good faith.
(ii) Statement two:
I certify that (1) I am duly authorized to sign this cumulative
statement of account on behalf of the digital music provider, (2) I have
prepared or supervised the preparation of the data used by the digital
music provider and/or its agent to generate this cumulative statement of
account, (3) such data is true, complete, and correct to the best of my
knowledge, information, and belief, and was prepared in good faith, and
(4) this cumulative statement of account was prepared by the digital
music provider and/or its agent using processes and internal controls
that were subject to an examination, during the past year, by a licensed
certified public accountant in accordance with the attestation standards
established by the American Institute of Certified Public Accountants,
the opinion of whom was that the processes and internal controls were
suitably designed to generate monthly statements that accurately
reflect, in all material respects, the digital music provider's usage of
musical works, the statutory royalties applicable thereto, and any other
data that is necessary for the proper calculation of the statutory
royalties in accordance with 17 U.S.C. 115 and applicable regulations.
(6) A certification by a duly authorized officer of the digital
music provider that the digital music provider has fulfilled the
requirements of 17 U.S.C. 115(d)(10)(B)(i) and (ii) but has not been
successful in locating or identifying the copyright owner.
(k)(1) A digital music provider may adjust its previously delivered
cumulative statement of account, including related royalty payments, by
delivering to the mechanical licensing collective a statement of
adjustment.
(2) A statement of adjustment shall be clearly and prominently
identified as a ``Statement of Adjustment of a Cumulative Statement of
Account.''
(3) A statement of adjustment shall include a clear statement of the
following information:
(i) The previously delivered cumulative statement of account,
including related royalty payments, to which the adjustment applies.
(ii) The specific change(s) to the previously delivered cumulative
statement of account, including a detailed description of any changes to
any of the inputs upon which computation of the royalties payable by the
digital music provider depends. Such description shall include the
adjusted royalties payable and all information used to compute the
adjusted royalties payable, in accordance with the requirements of this
section and part 385 of this title, such that the mechanical licensing
collective can provide a detailed and step-by-step accounting of the
calculation of the adjustment under applicable provisions of this
section and part 385 of this title, sufficient to allow each applicable
copyright owner to assess the manner in which the digital music provider
determined the adjustment and the accuracy of the adjustment. As
appropriate, an adjustment may be calculated using estimates permitted
under paragraph (d)(2) of this section.
(iii) Where applicable, the particular sound recordings and uses to
which the adjustment applies.
(iv) A description of the reason(s) for the adjustment.
(4) In the case of an underpayment of royalties, the digital music
provider
[[Page 755]]
shall pay the difference to the mechanical licensing collective
contemporaneously with delivery of the statement of adjustment or
promptly after being notified by the mechanical licensing collective of
the amount due. A statement of adjustment and its related royalty
payment may be delivered together or separately, but if delivered
separately, the payment must include information reasonably sufficient
to allow the mechanical licensing collective to match the statement of
adjustment to the payment.
(5) In the case of an overpayment of royalties, the mechanical
licensing collective shall appropriately credit or offset the excess
payment amount and apply it to the digital music provider's account, or
upon request, issue a refund within a reasonable period of time.
(6)(i) A statement of adjustment must be delivered to the mechanical
licensing collective no later than 6 months after the occurrence of any
of the scenarios specified by paragraph (k)(6)(ii) of this section,
where such an event necessitates an adjustment. Where more than one
scenario applies to the same cumulative statement of account at
different points in time, a separate 6-month period runs for each such
triggering event. Where more than one scenario necessitates the same
particular adjustment, the 6-month deadline to make the adjustment
begins to run from the occurrence of the earliest triggering event.
(ii) A statement of adjustment may only be made:
(A) Except as otherwise provided for by paragraph (c)(5) of this
section, where the digital music provider discovers, or is notified of
by the mechanical licensing collective or a copyright owner, licensor,
or author (or their respective representatives, including by an
administrator or a collective management organization) of a relevant
sound recording or musical work that is embodied in such a sound
recording, an inaccuracy in the cumulative statement of account, or in
the amounts of royalties owed, based on information that was not
previously known to the digital music provider despite its good-faith
efforts;
(B) When making an adjustment to a previously estimated input under
paragraph (d)(2) of this section;
(C) Following an audit of a digital music provider that concludes
after the cumulative statement of account is delivered and that has the
result of affecting the computation of the royalties payable by the
digital music provider (e.g., as applicable, an audit by a sound
recording copyright owner concerning the amount of applicable
consideration paid for sound recording copyright rights); or
(D) In response to a change in applicable rates or terms under part
385 of this title.
(E) To ensure consistency with any adjustments made in an Annual
Statement of Account generated under Sec.210.7 for the most recent
fiscal year.
(7) A statement of adjustment must be certified in the same manner
as a cumulative statement of account under paragraph (j) of this
section.
(l)(1) Subject to the provisions of 17 U.S.C. 115, a digital music
provider and the mechanical licensing collective may agree in writing to
vary or supplement the procedures described in this section, including
but not limited to pursuant to an agreement to administer a voluntary
license, provided that any such change does not materially prejudice
copyright owners owed royalties required to be transferred to the
mechanical licensing collective for the digital music provider to be
eligible for the limitation on liability described in 17 U.S.C.
115(d)(10). The procedures surrounding the certification requirements of
paragraph (j) of this section may not be altered by agreement. This
paragraph (l)(1) does not empower the mechanical licensing collective to
agree to alter any substantive requirements described in this section,
including but not limited to the required royalty payment and accounting
information and sound recording and musical work information.
(2) The mechanical licensing collective shall maintain a current,
free, and publicly accessible online list of all agreements made
pursuant to paragraph (l)(1) of this section that includes the name of
the digital music provider (and, if different, the trade or consumer-
facing brand name(s) of the
[[Page 756]]
services(s), including any specific offering(s), through which the
digital music provider engages, or has engaged at any time during the
period identified in paragraph (c)(1) of this section, in covered
activities) and the start and end dates of the agreement. Any such
agreement shall be considered a record that a copyright owner may access
in accordance with 17 U.S.C. 115(d)(3)(M)(ii). Where an agreement made
pursuant to paragraph (l)(1) of this section is made pursuant to an
agreement to administer a voluntary license or any other agreement, only
those portions that vary or supplement the procedures described in this
section and that pertain to the administration of a requesting copyright
owner's musical works must be made available to that copyright owner.
(m) Each digital music provider shall, for a period of at least
seven years from the date of delivery of a cumulative statement of
account or statement of adjustment to the mechanical licensing
collective, keep and retain in its possession all records and documents
necessary and appropriate to support fully the information set forth in
such statement (except that such records and documents that relate to an
estimated input permitted under paragraph (d)(2) of this section must be
kept and retained for a period of at least seven years from the date of
delivery of the statement containing the final adjustment of such
input).
(n) Errors in a cumulative statement of account or statement of
adjustment that do not materially prejudice the rights of the copyright
owner shall be deemed harmless, and shall not render that statement
invalid.
(o)(1) By June 15, 2021, the digital music provider must submit a
supplemental metadata report that includes all of the information
provided in the cumulative statement of account pursuant to paragraph
(c) of this section, as well as, separately or together with such
information, the following information for each sound recording
embodying a musical work that was reported under paragraph (c)(4)(ii) of
this section:
(i) Identifying information for the sound recording, including but
not limited to:
(A) Sound recording name(s), including, to the extent practicable,
all known alternative and parenthetical titles for the sound recording;
(B) Featured artist(s);
(C) Unique identifier assigned by the digital music provider, if
any, including to the extent practicable, any code(s) that can be used
to locate and listen to the sound recording through the digital music
provider's public-facing service;
(D) Actual playing time measured from the sound recording audio
file, where available; and
(E) To the extent acquired by the digital music provider in
connection with its use of sound recordings of musical works to engage
in covered activities, and to the extent practicable:
(1) Sound recording copyright owner(s);
(2) Producer(s);
(3) International standard recording code(s) (ISRC);
(4) Any other unique identifier(s) for or associated with the sound
recording, including any unique identifier(s) for any associated album,
including but not limited to:
(i) Catalog number(s);
(ii) Universal product code(s) (UPC); and
(iii) Unique identifier(s) assigned by any distributor;
(5) Version(s);
(6) Release date(s);
(7) Album title(s);
(8) Label name(s); and
(9) Distributor(s).
(ii) Identifying information for the musical work embodied in the
reported sound recording, to the extent acquired by the digital music
provider in the metadata provided by sound recording copyright owners or
other licensors of sound recordings in connection with the use of sound
recordings of musical works to engage in covered activities, and to the
extent practicable:
(A) Information concerning authorship of the applicable rights in
the musical work embodied in the sound recording, including but not
limited to:
(1) Songwriter(s); and
(2) International standard name identifier(s) (ISNI) and interested
parties information code(s) (IPI) for each such songwriter;
[[Page 757]]
(B) International standard musical work code(s) (ISWC) for the
musical work embodied in the sound recording; and
(C) Musical work name(s) for the musical work embodied in the sound
recording, including any alternative or parenthetical titles for the
musical work.
(iii)(A) For each track for which a share of a musical work has been
matched and for which accrued royalties for such share have been paid,
but for which one or more shares of the musical work remains unmatched
and unpaid, the digital music provider must provide, for each usage line
for such track, a reference to the specific unique identifier for the
usage line reported under paragraph (e) of this section, and a clear
identification of the percentage share(s) that have been matched and
paid and the owner(s) of such matched and paid share(s) (including any
unique party identifiers for such owner(s) that are known by the digital
music provider).
(B) If, for a particular track, a digital music provider cannot
provide a clear identification of the percentage share(s) that have been
matched and paid and the owner(s) of such share(s) because this
information is subject to a contractual confidentiality restriction or
the conditions of paragraph (o)(1)(iii)(C) of this section apply with
respect to such information, the digital music provider must provide
alternate information for the track, namely, a clear identification of
the total aggregate percentage share that has been matched and paid and
the owner(s) of the aggregate matched and paid share (including any
unique party identifiers for such owner(s) that are known by the digital
music provider). If the digital music provider still cannot provide such
alternate information because of the conditions of paragraph
(o)(1)(iii)(C) of this section, the information required by this
paragraph (o)(1)(iii)(B) may be omitted for the track from the
supplemental metadata report. A digital music provider reporting under
this paragraph (o)(1)(iii)(B) must deliver a certification to the
mechanical licensing collective stating that the conditions of being
permitted to report under this paragraph (o)(1)(iii)(B) apply with
respect to the provision of alternate information or omission of
percentage share(s) information entirely, as specified in the
certification.
(C) The conditions referred to in paragraph (o)(1)(iii)(B) of this
section are:
(1) The information is maintained only by a third-party vendor;
(2) The digital music provider does not have any contractual or
other rights to access the information;
(3) The digital music provider is unable to compile the information
from records in its possession using commercially reasonable efforts
within the required reporting timeframe; and
(4) The vendor refuses to make the information available to the
digital music provider on commercially reasonable terms.
(2) Any obligation under paragraph (o)(1) of this section concerning
information about sound recording copyright owners may be satisfied by
reporting the information for applicable sound recordings provided to
the digital music provider by sound recording copyright owners or other
licensors of sound recordings (or their representatives) contained in
each of the following DDEX fields: LabelName and PLine. Where a digital
music provider acquires this information in addition to other
information identifying a relevant sound recording copyright owner, all
such information must be reported to the extent practicable.
(3) As used in this paragraph (o), it is practicable to provide the
enumerated information if:
(i) It belongs to a category of information expressly required to be
reported by the enumerated list of information contained in Sec.
210.6(c)(3);
(ii) It belongs to a category of information that has been reported,
or is required to be reported, by the particular digital music provider
to the mechanical licensing collective under the blanket license; or
(iii) It belongs to a category of information that is reported by
the particular digital music provider to the mechanical licensing
collective under a voluntary license or individual download license.
[[Page 758]]
(4) The supplemental metadata report provided for in this paragraph
(o) is not a condition for eligibility for the limitation on liability
in 17 U.S.C. 115(d)(10), or a condition of the blanket license.
[83 FR 63065, Dec. 7, 2018. Redesignated at 85 FR 58143, Sept. 17, 2020.
Amended at 86 FR 2203, Jan. 11, 2021; 86 FR 7653, Feb. 1, 2021]
Sec.210.11 Record companies using individual download licenses.
A record company that obtains an individual download license under
17 U.S.C. 115(b)(3) shall provide statements of account and pay
royalties as a compulsory licensee in accordance with this subpart.
[83 FR 63065, Dec. 7, 2018. Redesignated at 85 FR 58143, Sept. 17, 2020]
Sec.210.12-210.20 [Reserved]
Subpart B_Blanket Compulsory License for Digital Uses, Mechanical
Licensing Collective, and Digital Licensee Coordinator
Source: 85 FR 58143, Sept. 17, 2020, unless otherwise noted.
Sec.210.21 General.
This subpart prescribes rules for the compulsory blanket license to
make and distribute digital phonorecord deliveries of nondramatic
musical works pursuant to 17 U.S.C. 115(d), including rules for digital
music providers, significant nonblanket licensees, the mechanical
licensing collective, and the digital licensee coordinator.
Sec.210.22 Definitions.
For purposes of this subpart:
(a) Unless otherwise specified, the terms used have the meanings set
forth in 17 U.S.C. 115(e).
(b) The term blanket licensee means a digital music provider
operating under a blanket license.
(c) The term DDEX means Digital Data Exchange, LLC.
(d) The term GAAP means U.S. Generally Accepted Accounting
Principles, except that if the U.S. Securities and Exchange Commission
permits or requires entities with securities that are publicly traded in
the U.S. to employ International Financial Reporting Standards, as
issued by the International Accounting Standards Board, or as accepted
by the Securities and Exchange Commission if different from that issued
by the International Accounting Standards Board, in lieu of Generally
Accepted Accounting Principles, then an entity may employ International
Financial Reporting Standards as ``GAAP'' for purposes of this section.
(e) The term IPI means interested parties information code.
(f) The term ISNI means international standard name identifier.
(g) The term ISRC means international standard recording code.
(h) The term ISWC means international standard musical work code.
(i) The term producer means the primary person(s) contracted by and
accountable to the content owner for the task of delivering the sound
recording as a finished product.
(j) The term UPC means universal product code.
Sec.210.23 Designation of the mechanical licensing collective and
digital licensee coordinator.
The following entities are designated pursuant to 17 U.S.C.
115(d)(3)(B) and (d)(5)(B). Additional information regarding these
entities is available on the Copyright Office's website.
(a) Mechanical Licensing Collective, incorporated in Delaware on
March 5, 2019, is designated as the mechanical licensing collective; and
(b) Digital Licensee Coordinator, Inc., incorporated in Delaware on
March 20, 2019, is designated as the digital licensee coordinator.
Sec.210.24 Notices of blanket license.
(a) General. This section prescribes rules under which a digital
music provider completes and submits a notice of license to the
mechanical licensing collective pursuant to 17 U.S.C. 115(d)(2)(A) for
purposes of obtaining a statutory blanket license.
(b) Form and content. A notice of license shall be prepared in
accordance
[[Page 759]]
with any reasonable formatting instructions established by the
mechanical licensing collective, and shall include all of the following
information:
(1) The full legal name of the digital music provider and, if
different, the trade or consumer-facing brand name(s) of the service(s),
including any specific offering(s), through which the digital music
provider is engaging, or seeks to engage, in any covered activity.
(2) The full address, including a specific number and street name or
rural route, of the place of business of the digital music provider. A
post office box or similar designation will not be sufficient except
where it is the only address that can be used in that geographic
location.
(3) A telephone number and email address for the digital music
provider where an individual responsible for managing the blanket
license can be reached.
(4) Any website(s), software application(s), or other online
locations(s) where the digital music provider's applicable service(s)
is/are, or expected to be, made available.
(5) A description sufficient to reasonably establish the digital
music provider's eligibility for a blanket license and to provide
reasonable notice to the mechanical licensing collective, copyright
owners, and songwriters of the manner in which the digital music
provider is engaging, or seeks to engage, in any covered activity
pursuant to the blanket license. Such description shall be sufficient if
it includes at least the following information:
(i) A statement that the digital music provider has a good-faith
belief, informed by review of relevant law and regulations, that it:
(A) Satisfies all requirements to be eligible for a blanket license,
including that it satisfies the eligibility criteria to be considered a
digital music provider pursuant to 17 U.S.C. 115(e)(8); and
(B) Is, or will be before the date of initial use of musical works
pursuant to the blanket license, able to comply with all payments,
terms, and responsibilities associated with the blanket license.
(ii) A statement that where the digital music provider seeks or
expects to engage in any activity identified in its notice of license,
it has a good-faith intention to do so within a reasonable period of
time.
(iii) A general description of the digital music provider's
service(s), or expected service(s), and the manner in which it uses, or
seeks to use, phonorecords of nondramatic musical works.
(iv) Identification of each of the following digital phonorecord
delivery configurations the digital music provider is, or seeks to be,
making as part of its covered activities:
(A) Permanent downloads.
(B) Limited downloads.
(C) Interactive streams.
(D) Noninteractive streams.
(E) Other configurations, accompanied by a brief description.
(v) Identification of each of the following service types the
digital music provider offers, or seeks to offer, as part of its covered
activities (the digital music provider may, but is not required to,
associate specific service types with specific digital phonorecord
delivery configurations or with particular types of activities or
offerings that may be defined in part 385 of this title):
(A) Subscriptions.
(B) Bundles.
(C) Lockers.
(D) Services available through discounted pricing plans, such as for
families or students.
(E) Free-to-the-user services.
(F) Other applicable services, accompanied by a brief description.
(vi) Any other information the digital music provider wishes to
provide.
(6) The date, or expected date, of initial use of musical works
pursuant to the blanket license.
(7) Identification of any amendment made pursuant to paragraph (f)
of this section, including the submission date of the notice being
amended.
(8) A description of any applicable voluntary license the digital
music provider is, or expects to be, operating under concurrently with
the blanket license that is sufficient for the mechanical licensing
collective to fulfill its obligations under 17 U.S.C.
[[Page 760]]
115(d)(3)(G)(i)(I)(bb). This description should be provided as an
addendum to the rest of the notice of license to help preserve any
confidentiality to which it may be entitled. This paragraph (b)(8) does
not apply to any authority obtained by a digital music provider from
licensors of sound recordings to make and distribute permanent downloads
of musical works embodied in such sound recordings pursuant to an
individual download license or voluntary license. With respect to any
applicable voluntary license executed and in effect before March 31,
2021, the description required by this paragraph (b)(8) must be
delivered to the mechanical licensing collective either no later than 10
business days after such license is executed, or at least 90 calendar
days before delivering a report of usage covering the first reporting
period during which such license is in effect, whichever is later. For
any reporting period ending on or before March 31, 2021, the mechanical
licensing collective shall not be required to undertake any obligations
otherwise imposed on it by this subpart with respect to any voluntary
license for which the collective has not received the description
required by this paragraph (b)(8) at least 90 calendar days prior to the
delivery of a report of usage for such period, but such obligations
attach and are ongoing with respect to such license for subsequent
periods. The rest of the notice of license may be delivered separately
from such description. The description required by this paragraph (b)(8)
shall be sufficient if it includes at least the following information:
(i) An identification of each of the digital music provider's
services, including by reference to any applicable types of activities
or offerings that may be defined in part 385 of this title, through
which musical works are, or are expected to be, used pursuant to any
such voluntary license. If such a license pertains to all of the digital
music provider's applicable services, it may state so without
identifying each service.
(ii) The start and end dates.
(iii) The musical work copyright owner, identified by name and any
known and appropriate unique identifiers, and appropriate contact
information for the musical work copyright owner or for an administrator
or other representative who has entered into an applicable license on
behalf of the relevant copyright owner.
(iv) A satisfactory identification of any applicable catalog
exclusions.
(v) At the digital music provider's option, and in lieu of providing
the information listed in paragraph (b)(8)(iv) of this section, a list
of all covered musical works, identified by appropriate unique
identifiers.
(vi) A unique identifier for each such license.
(9) A description of the extent to which the digital music provider
is operating under authority obtained from licensors of sound recordings
to make and distribute permanent downloads of musical works embodied in
such sound recordings pursuant to an individual download license or
voluntary license. Such description may indicate that such authority
exists for all permanent downloads. Otherwise, such description shall
include a list of all sound recordings for which the digital music
provider has obtained such authority from the respective sound recording
licensors, or a list of any applicable catalog exclusions where the
digital music provider indicates that such authority otherwise exists
for all permanent downloads. Such description shall also include an
identification of the digital music provider's covered activities
operated under such authority.
(c) Certification and signature. The notice of license shall be
signed by an appropriate duly authorized officer or representative of
the digital music provider. The signature shall be accompanied by the
name and title of the person signing the notice and the date of the
signature. The notice may be signed electronically. The person signing
the notice shall certify that he or she has appropriate authority to
submit the notice of license to the mechanical licensing collective on
behalf of the digital music provider and that all information submitted
as part of the notice is true, accurate, and complete to the best of the
signer's knowledge, information, and belief, and is provided in good
faith.
(d) Submission, fees, and acceptance. Except as provided by 17
U.S.C.
[[Page 761]]
115(d)(9)(A), to obtain a blanket license, a digital music provider must
submit a notice of license to the mechanical licensing collective.
Notices of license shall be submitted to the mechanical licensing
collective in a manner reasonably determined by the collective. No fee
may be charged for submitting notices of license. Upon submitting a
notice of license to the mechanical licensing collective, a digital
music provider shall be provided with a prompt response from the
collective confirming receipt of the notice and the date of receipt. The
mechanical licensing collective shall send any rejection of a notice of
license to both the street address and email address provided in the
notice.
(e) Harmless errors. Errors in the submission or content of a notice
of license, including the failure to timely submit an amended notice of
license, that do not materially affect the adequacy of the information
required to serve the purposes of 17 U.S.C. 115(d) shall be deemed
harmless, and shall not render the notice invalid or provide a basis for
the mechanical licensing collective to reject a notice or terminate a
blanket license. This paragraph (e) shall apply only to errors made in
good faith and without any intention to deceive, mislead, or conceal
relevant information.
(f) Amendments. A digital music provider may submit an amended
notice of license to cure any deficiency in a rejected notice pursuant
to 17 U.S.C. 115(d)(2)(A). A digital music provider operating under a
blanket license must submit a new notice of license within 45 calendar
days after any of the information required by paragraphs (b)(1) through
(6) of this section contained in the notice on file with the mechanical
licensing collective has changed. An amended notice shall indicate that
it is an amendment and shall contain the submission date of the notice
being amended. The mechanical licensing collective shall retain copies
of all prior notices of license submitted by a digital music provider.
Where the information required by paragraph (b)(8) of this section has
changed, instead of submitting an amended notice of license, the digital
music provider must promptly deliver updated information to the
mechanical licensing collective in an alternative manner reasonably
determined by the collective. To the extent commercially reasonable, the
digital music provider must deliver such updated information either no
later than 10 business days after such license is executed, or at least
30 calendar days before delivering a report of usage covering the first
reporting period during which such license is in effect, whichever is
later. Except as otherwise provided for by paragraph (b)(8) of this
section, the mechanical licensing collective shall not be required to
undertake any obligations otherwise imposed on it by this subpart with
respect to any voluntary license for which the collective has not
received the description required by paragraph (b)(8) of this section at
least 30 calendar days prior to the delivery of a report of usage for
such period, but such obligations attach and are ongoing with respect to
such license for subsequent periods.
(g) Transition to blanket licenses. Where a digital music provider
obtains a blanket license automatically pursuant to 17 U.S.C.
115(d)(9)(A) and seeks to continue operating under the blanket license,
a notice of license must be submitted to the mechanical licensing
collective within 45 calendar days after the license availability date
and the mechanical licensing collective shall begin accepting such
notices at least 30 calendar days before the license availability date,
provided, however, that any description required by paragraph (b)(8) of
this section must be delivered within the time period described in
paragraph (b)(8). In such cases, the blanket license shall be effective
as of the license availability date, rather than the date on which the
notice is submitted to the collective. Failure to comply with this
paragraph (g), including by failing to timely submit the required notice
or cure a rejected notice, shall not affect an applicable digital music
provider's blanket license, except that such blanket license may become
subject to default and termination under 17 U.S.C. 115(d)(4)(E). The
mechanical licensing collective shall not take any action pursuant to 17
U.S.C. 115(d)(4)(E) before the conclusion of any proceedings under 17
U.S.C.
[[Page 762]]
115(d)(2)(A)(iv) or (v), provided that the digital music provider meets
the blanket license's other required terms and conditions.
(h) Additional information. Nothing in this section shall be
construed to prohibit the mechanical licensing collective from seeking
additional information from a digital music provider that is not
required by this section, which the digital music provider may
voluntarily elect to provide, provided that the collective may not
represent that such information is required to comply with the terms of
this section.
(i) Public access. The mechanical licensing collective shall
maintain a current, free, and publicly accessible and searchable online
list of all blanket licenses that, subject to any confidentiality to
which they may be entitled, includes:
(1) All information contained in each notice of license, including
amended and rejected notices;
(2) Contact information for all blanket licensees;
(3) The effective dates of all blanket licenses;
(4) For any amended or rejected notice, a clear indication of its
amended or rejected status and its relationship to other relevant
notices;
(5) For any rejected notice, the collective's reason(s) for
rejecting it; and
(6) For any terminated blanket license, a clear indication of its
terminated status, the date of termination, and the collective's
reason(s) for terminating it.
[85 FR 58143, Sept. 17, 2020, as amended at 86 FR 12826, Mar. 5, 2021]
Sec.210.25 Notices of nonblanket activity.
(a) General. This section prescribes rules under which a significant
nonblanket licensee completes and submits a notice of nonblanket
activity to the mechanical licensing collective pursuant to 17 U.S.C.
115(d)(6)(A) for purposes of notifying the mechanical licensing
collective that the licensee has been engaging in covered activities.
(b) Form and content. A notice of nonblanket activity shall be
prepared in accordance with any reasonable formatting instructions
established by the mechanical licensing collective, and shall include
all of the following information:
(1) The full legal name of the significant nonblanket licensee and,
if different, the trade or consumer-facing brand name(s) of the
service(s), including any specific offering(s), through which the
significant nonblanket licensee is engaging, or expects to engage, in
any covered activity.
(2) The full address, including a specific number and street name or
rural route, of the place of business of the significant nonblanket
licensee. A post office box or similar designation will not be
sufficient except where it is the only address that can be used in that
geographic location.
(3) A telephone number and email address for the significant
nonblanket licensee where an individual responsible for managing
licenses associated with covered activities can be reached.
(4) Any website(s), software application(s), or other online
locations(s) where the significant nonblanket licensee's applicable
service(s) is/are, or expected to be, made available.
(5) A description sufficient to reasonably establish the licensee's
qualifications as a significant nonblanket licensee and to provide
reasonable notice to the mechanical licensing collective, digital
licensee coordinator, copyright owners, and songwriters of the manner in
which the significant nonblanket licensee is engaging, or expects to
engage, in any covered activity. Such description shall be sufficient if
it includes at least the following information:
(i) A statement that the significant nonblanket licensee has a good-
faith belief, informed by review of relevant law and regulations, that
it satisfies all requirements to qualify as a significant nonblanket
licensee under 17 U.S.C. 115(e)(31).
(ii) A statement that where the significant nonblanket licensee
expects to engage in any activity identified in its notice of nonblanket
activity, it has a good-faith intention to do so within a reasonable
period of time.
(iii) A general description of the significant nonblanket licensee's
service(s), or expected service(s), and the manner in which it uses, or
expects to
[[Page 763]]
use, phonorecords of nondramatic musical works.
(iv) Identification of each of the following digital phonorecord
delivery configurations the significant nonblanket licensee is, or
expects to be, making as part of its covered activities:
(A) Permanent downloads.
(B) Limited downloads.
(C) Interactive streams.
(D) Noninteractive streams.
(E) Other configurations, accompanied by a brief description.
(v) Identification of each of the following service types the
significant nonblanket licensee offers, or expects to offer, as part of
its covered activities (the significant nonblanket licensee may, but is
not required to, associate specific service types with specific digital
phonorecord delivery configurations or with particular types of
activities or offerings that may be defined in part 385 of this title):
(A) Subscriptions.
(B) Bundles.
(C) Lockers.
(D) Services available through discounted pricing plans, such as for
families or students.
(E) Free-to-the-user services.
(F) Other applicable services, accompanied by a brief description.
(vi) Any other information the significant nonblanket licensee
wishes to provide.
(6) Acknowledgement of whether the significant nonblanket licensee
is operating under authority obtained from licensors of sound recordings
to make and distribute permanent downloads of musical works embodied in
such sound recordings pursuant to an individual download license or
voluntary license. Where such authority does not cover all permanent
downloads made available on the service, the significant nonblanket
licensee shall maintain with the mechanical licensing collective a list
of all sound recordings for which it has obtained such authority from
the respective sound recording licensors, or a list of any applicable
catalog exclusions where the significant nonblanket licensee indicates
that such authority otherwise exists for all permanent downloads.
(7) The date of initial use of musical works pursuant to any covered
activity.
(8) Identification of any amendment made pursuant to paragraph (f)
of this section, including the submission date of the notice being
amended.
(c) Certification and signature. The notice of nonblanket activity
shall be signed by an appropriate duly authorized officer or
representative of the significant nonblanket licensee. The signature
shall be accompanied by the name and title of the person signing the
notice and the date of the signature. The notice may be signed
electronically. The person signing the notice shall certify that he or
she has appropriate authority to submit the notice of nonblanket
activity to the mechanical licensing collective on behalf of the
significant nonblanket licensee and that all information submitted as
part of the notice is true, accurate, and complete to the best of the
signer's knowledge, information, and belief, and is provided in good
faith.
(d) Submission, fees, and acceptance. Notices of nonblanket activity
shall be submitted to the mechanical licensing collective in a manner
reasonably determined by the collective. No fee may be charged for
submitting notices of nonblanket activity. Upon submitting a notice of
nonblanket activity to the mechanical licensing collective, a
significant nonblanket licensee shall be provided with a prompt response
from the collective confirming receipt of the notice and the date of
receipt.
(e) Harmless errors. Errors in the submission or content of a notice
of nonblanket activity, including the failure to timely submit an
amended notice of nonblanket activity, that do not materially affect the
adequacy of the information required to serve the purposes of 17 U.S.C.
115(d) shall be deemed harmless, and shall not render the notice invalid
or provide a basis for the mechanical licensing collective or digital
licensee coordinator to engage in legal enforcement efforts under 17
U.S.C. 115(d)(6)(C). This paragraph (e) shall apply only to errors made
in good faith and without any intention to deceive, mislead, or conceal
relevant information.
[[Page 764]]
(f) Amendments. A significant nonblanket licensee must submit a new
notice of nonblanket activity with its report of usage that is next due
after any of the information required by paragraphs (b)(1) through (7)
of this section contained in the notice on file with the mechanical
licensing collective has changed. An amended notice shall indicate that
it is an amendment and shall contain the submission date of the notice
being amended. The mechanical licensing collective shall retain copies
of all prior notices of nonblanket activity submitted by a significant
nonblanket licensee.
(g) Transition to blanket licenses. Where a digital music provider
that would otherwise qualify as a significant nonblanket licensee
obtains a blanket license automatically pursuant to 17 U.S.C.
115(d)(9)(A) and does not seek to operate under the blanket license, if
such licensee submits a valid notice of nonblanket activity within 45
calendar days after the license availability date in accordance with 17
U.S.C. 115(d)(6)(A)(i), such licensee shall not be considered to have
ever operated under the statutory blanket license until such time as the
licensee submits a valid notice of license pursuant to 17 U.S.C.
115(d)(2)(A).
(h) Additional information. Nothing in this section shall be
construed to prohibit the mechanical licensing collective from seeking
additional information from a significant nonblanket licensee that is
not required by this section, which the significant nonblanket licensee
may voluntarily elect to provide, provided that the collective may not
represent that such information is required to comply with the terms of
this section.
(i) Public access. The mechanical licensing collective shall
maintain a current, free, and publicly accessible and searchable online
list of all significant nonblanket licensees that, subject to any
confidentiality to which they may be entitled, includes:
(1) All information contained in each notice of nonblanket activity,
including amended notices;
(2) Contact information for all significant nonblanket licensees;
(3) The date of receipt of each notice of nonblanket activity; and
(4) For any amended notice, a clear indication of its amended status
and its relationship to other relevant notices.
[85 FR 58143, Sept. 17, 2020, as amended at 86 FR 12826, Mar. 5, 2021]
Sec.210.26 Data collection and delivery efforts by digital music
providers and musical work copyright owners.
(a) General. This section prescribes rules under which digital music
providers and musical work copyright owners shall engage in efforts to
collect and provide information to the mechanical licensing collective
that may assist the collective in matching musical works to sound
recordings embodying those works and identifying and locating the
copyright owners of those works.
(b) Digital music providers. (1)(i) Pursuant to 17 U.S.C.
115(d)(4)(B), in addition to obtaining sound recording names and
featured artists and providing them in reports of usage, a digital music
provider operating under a blanket license shall engage in good-faith,
commercially reasonable efforts to obtain from sound recording copyright
owners and other licensors of sound recordings made available through
the service(s) of such digital music provider the information belonging
to the categories identified in Sec.210.27(e)(1)(i)(E) and (e)(1)(ii),
without regard to any limitations that may apply to the reporting of
such information in reports of usage. Such efforts must be undertaken
periodically, and be specific and targeted to obtaining information not
previously obtained from the applicable owner or other licensor for the
specific sound recordings and musical works embodied therein for which
the digital music provider lacks such information. Such efforts must
also solicit updates for any previously obtained information if
reasonably requested by the mechanical licensing collective. The digital
music provider shall keep the mechanical licensing collective reasonably
informed of the efforts it undertakes pursuant to this section.
[[Page 765]]
(ii) Any information required by paragraph (b)(1)(i) of this
section, including any updates to such information, provided to the
digital music provider by sound recording copyright owners or other
licensors of sound recordings (or their representatives) shall be
delivered to the mechanical licensing collective in reports of usage in
accordance with Sec.210.27(e).
(2)(i) Notwithstanding paragraph (b)(1) of this section, a digital
music provider may satisfy its obligations under 17 U.S.C. 115(d)(4)(B)
with respect to a particular sound recording by arranging, or
collectively arranging with others, for the mechanical licensing
collective to receive the information required by paragraph (b)(1)(i) of
this section from an authoritative source of sound recording
information, such as the collective designated by the Copyright Royalty
Judges to collect and distribute royalties under the statutory licenses
established in 17 U.S.C. 112 and 114, provided that:
(A) Such arrangement requires such source to inform, including
through periodic updates, the digital music provider and mechanical
licensing collective about any relevant gaps in its repertoire coverage
known to such source, including but not limited to particular categories
of information identified in Sec.210.27(e)(1)(i)(E) and (e)(1)(ii),
sound recording copyright owners and/or other licensors of sound
recordings (e.g., labels, distributors), genres, and/or countries of
origin, that are either not covered or materially underrepresented as
compared to overall market representation; and
(B) Such digital music provider does not have actual knowledge or
has not been notified by the source, the mechanical licensing
collective, or a copyright owner, licensor, or author (or their
respective representatives, including by an administrator or a
collective management organization) of the relevant sound recording or
musical work that is embodied in such sound recording, that the source
lacks such information for the relevant sound recording or a set of
sound recordings encompassing such sound recording.
(ii) Satisfying the requirements of 17 U.S.C. 115(d)(4)(B) in the
manner set out in paragraph (b)(2)(i) of this section does not excuse a
digital music provider from having to report sound recording and musical
work information in accordance with Sec.210.27(e).
(3) The requirements of paragraph (b) of this section are without
prejudice to what a court of competent jurisdiction may determine
constitutes good-faith, commercially reasonable efforts for purposes of
eligibility for the limitation on liability described in 17 U.S.C.
115(d)(10).
(c) Musical work copyright owners. (1) Pursuant to 17 U.S.C.
115(d)(3)(E)(iv), each musical work copyright owner with any musical
work listed in the musical works database shall engage in commercially
reasonable efforts to deliver to the mechanical licensing collective,
including for use in the musical works database, by providing, to the
extent a musical work copyright owner becomes aware that such
information is not then available in the database and to the extent the
musical work copyright owner has such missing information, information
regarding the names of the sound recordings in which that copyright
owner's musical works (or shares thereof) are embodied, to the extent
practicable.
(2) As used in paragraph (c)(1) of this section, ``information
regarding the names of the sound recordings'' shall include, for each
applicable sound recording:
(i) Sound recording name(s), including any alternative or
parenthetical titles for the sound recording;
(ii) Featured artist(s); and
(iii) ISRC(s).
Sec.210.27 Reports of usage and payment for blanket licensees.
(a) General. This section prescribes rules for the preparation and
delivery of reports of usage and payment of royalties for the making and
distribution of phonorecords of nondramatic musical works to the
mechanical licensing collective by a digital music provider operating
under a blanket license pursuant to 17 U.S.C. 115(d). A blanket licensee
shall report and pay royalties to the mechanical licensing collective on
a monthly basis in accordance with 17 U.S.C. 115(c)(2)(I), 17 U.S.C.
115(d)(4)(A), and this section. A blanket licensee
[[Page 766]]
shall also report to the mechanical licensing collective on an annual
basis in accordance with 17 U.S.C. 115(c)(2)(I) and this section. A
blanket licensee may make adjustments to its reports of usage and
royalty payments in accordance with this section.
(b) Definitions. For purposes of this section, in addition to those
terms defined in Sec.210.22:
(1) The term report of usage, unless otherwise specified, refers to
all reports of usage required to be delivered by a blanket licensee to
the mechanical licensing collective under the blanket license, including
reports of adjustment. As used in this section, it does not refer to
reports required to be delivered by significant nonblanket licensees
under 17 U.S.C. 115(d)(6)(A)(ii) and Sec.210.28.
(2) A monthly report of usage is a report of usage accompanying
monthly royalty payments identified in 17 U.S.C. 115(c)(2)(I) and 17
U.S.C. 115(d)(4)(A), and required to be delivered by a blanket licensee
to the mechanical licensing collective under the blanket license.
(3) An annual report of usage is a statement of account identified
in 17 U.S.C. 115(c)(2)(I), and required to be delivered by a blanket
licensee annually to the mechanical licensing collective under the
blanket license.
(4) A report of adjustment is a report delivered by a blanket
licensee to the mechanical licensing collective under the blanket
license adjusting one or more previously delivered monthly reports of
usage or annual reports of usage, including related royalty payments.
(c) Content of monthly reports of usage. A monthly report of usage
shall be clearly and prominently identified as a ``Monthly Report of
Usage Under Compulsory Blanket License for Making and Distributing
Phonorecords,'' and shall include a clear statement of the following
information:
(1) The period (month and year) covered by the monthly report of
usage.
(2) The full legal name of the blanket licensee and, if different,
the trade or consumer-facing brand name(s) of the service(s), including
any specific offering(s), through which the blanket licensee engages in
covered activities. If the blanket licensee has a unique DDEX identifier
number, it must also be provided.
(3) The full address, including a specific number and street name or
rural route, of the place of business of the blanket licensee. A post
office box or similar designation will not be sufficient except where it
is the only address that can be used in that geographic location.
(4) For each sound recording embodying a musical work that is used
by the blanket licensee in covered activities during the applicable
monthly reporting period, a detailed statement, from which the
mechanical licensing collective may separate reported information for
each applicable activity or offering including as may be defined in part
385 of this title, of all of:
(i) The royalty payment and accounting information required by
paragraph (d) of this section; and
(ii) The sound recording and musical work information required by
paragraph (e) of this section.
(5)(i) For any voluntary license in effect during the applicable
monthly reporting period, the information required under Sec.
210.24(b)(8). If this information has been separately provided to the
mechanical licensing collective, it need not be contained in the monthly
report of usage, provided the report states that the information has
been provided separately and includes the date on which such information
was last provided to the mechanical licensing collective. This paragraph
(c)(5)(i) does not apply to any authority obtained by a digital music
provider from licensors of sound recordings to make and distribute
permanent downloads of musical works embodied in such sound recordings
pursuant to an individual download license or voluntary license.
(ii) For any authority obtained by a digital music provider from
licensors of sound recordings to make and distribute permanent downloads
of musical works embodied in such sound recordings pursuant to an
individual download license or voluntary license, and where such
authority does not cover all permanent downloads made available on the
service, a list of all sound recordings for which the digital
[[Page 767]]
music provider has obtained such authority from the respective sound
recording licensors, or a list of any applicable catalog exclusions
where the digital music provider indicates that such authority otherwise
exists for all permanent downloads, and an identification of the digital
music provider's covered activities operated under such authority. If
this information has been separately provided to the mechanical
licensing collective, it need not be contained in the monthly report of
usage, provided the report states that the information has been provided
separately and includes the date on which such information was last
provided to the mechanical licensing collective.
(6) Where the blanket licensee will not receive an invoice prior to
delivering its royalty payment under paragraph (g)(1) of this section:
(i) The total royalty payable by the blanket licensee under the
blanket license for the applicable monthly reporting period, computed in
accordance with the requirements of this section and part 385 of this
title, and including detailed information regarding how the royalty was
computed, with such total royalty payable broken down by each applicable
activity or offering including as may be defined in part 385 of this
title; and
(ii) The amount of late fees, if applicable, included in the payment
associated with the monthly report of usage.
(d) Royalty payment and accounting information. The royalty payment
and accounting information called for by paragraph (c)(4)(i) of this
section shall consist of the following:
(1) Calculations. (i) Where the blanket licensee will not receive an
invoice prior to delivering its royalty payment under paragraph (g)(1)
of this section, a detailed and step-by-step accounting of the
calculation of royalties payable by the blanket licensee under the
blanket license under applicable provisions of this section and part 385
of this title, sufficient to allow the mechanical licensing collective
to assess the manner in which the blanket licensee determined the
royalty owed and the accuracy of the royalty calculations, including but
not limited to the number of payable units, including, as applicable,
permanent downloads, plays, and constructive plays, for each reported
sound recording, whether pursuant to a blanket license, voluntary
license, or individual download license.
(ii) Where the blanket licensee will receive an invoice prior to
delivering its royalty payment under paragraph (g)(1) of this section,
all information necessary for the mechanical licensing collective to
compute, in accordance with the requirements of this section and part
385 of this title, the royalties payable by the blanket licensee under
the blanket license, and all information necessary to enable the
mechanical licensing collective to provide a detailed and step-by-step
accounting of the calculation of such royalties under applicable
provisions of this section and part 385 of this title, sufficient to
allow each applicable copyright owner to assess the manner in which the
mechanical licensing collective, using the blanket licensee's
information, determined the royalty owed and the accuracy of the royalty
calculations, including but not limited to the number of payable units,
including, as applicable, permanent downloads, plays, and constructive
plays, for each reported sound recording, whether pursuant to a blanket
license, voluntary license, or individual download license.
(2) Estimates. (i) Where computation of the royalties payable by the
blanket licensee under the blanket license depends on an input that is
unable to be finally determined at the time the report of usage is
delivered to the mechanical licensing collective and where the reason
the input cannot be finally determined is outside of the blanket
licensee's control (e.g., as applicable, the amount of applicable public
performance royalties and the amount of applicable consideration for
sound recording copyright rights), a reasonable estimation of such
input, determined in accordance with GAAP, may be used or provided by
the blanket licensee. Royalty payments based on such estimates shall be
adjusted pursuant to paragraph (k) of this section after being finally
determined. A report of usage containing an estimate permitted by this
paragraph (d)(2)(i) should identify each input that has been estimated,
and provide the reason(s) why such input(s) needed to be estimated and
an
[[Page 768]]
explanation as to the basis for the estimate(s).
(ii) Where the blanket licensee will not receive an invoice prior to
delivering its royalty payment under paragraph (g)(1) of this section,
and the blanket licensee is dependent upon the mechanical licensing
collective to confirm usage subject to applicable voluntary licenses and
individual download licenses, the blanket licensee shall compute the
royalties payable by the blanket licensee under the blanket license
using a reasonable estimation of the amount of payment for such non-
blanket usage to be deducted from royalties that would otherwise be due
under the blanket license, determined in accordance with GAAP. Royalty
payments based on such estimates shall be adjusted within 5 calendar
days after the mechanical licensing collective confirms such amount to
be deducted and notifies the blanket licensee under paragraph (g)(2) of
this section. Any overpayment of royalties shall be handled in
accordance with paragraph (k)(5) of this section. Where the blanket
licensee will receive an invoice prior to delivering its royalty payment
under paragraph (g)(1) of this section, the blanket licensee shall not
provide an estimate of or deduct such amount in the information
delivered to the mechanical licensing collective under paragraph
(d)(1)(ii) of this section.
(3) Good faith. All information and calculations provided pursuant
to paragraph (d) of this section shall be made in good faith and on the
basis of the best knowledge, information, and belief of the blanket
licensee at the time the report of usage is delivered to the mechanical
licensing collective, and subject to any additional accounting and
certification requirements under 17 U.S.C. 115 and this section.
(e) Sound recording and musical work information. (1) The following
information must be provided for each sound recording embodying a
musical work required to be reported under paragraph (c)(4)(ii) of this
section:
(i) Identifying information for the sound recording, including but
not limited to:
(A) Sound recording name(s), including all known alternative and
parenthetical titles for the sound recording;
(B) Featured artist(s);
(C) Unique identifier(s) assigned by the blanket licensee, including
unique identifier(s) (such as, if applicable, Uniform Resource Locators
(URLs)) that can be used to locate and listen to the sound recording,
accompanied by clear instructions describing how to do so (such audio
access may be limited to a preview or sample of the sound recording
lasting at least 30 seconds), subject to paragraph (e)(3) of this
section;
(D) Actual playing time measured from the sound recording audio
file; and
(E) To the extent acquired by the blanket licensee in connection
with its use of sound recordings of musical works to engage in covered
activities, including pursuant to 17 U.S.C. 115(d)(4)(B):
(1) Sound recording copyright owner(s);
(2) Producer(s);
(3) ISRC(s);
(4) Any other unique identifier(s) for or associated with the sound
recording, including any unique identifier(s) for any associated album,
including but not limited to:
(i) Catalog number(s);
(ii) UPC(s); and
(iii) Unique identifier(s) assigned by any distributor;
(5) Version(s);
(6) Release date(s);
(7) Album title(s);
(8) Label name(s);
(9) Distributor(s); and
(10) Other information commonly used in the industry to identify
sound recordings and match them to the musical works the sound
recordings embody.
(ii) Identifying information for the musical work embodied in the
reported sound recording, to the extent acquired by the blanket licensee
in the metadata provided by sound recording copyright owners or other
licensors of sound recordings in connection with the use of sound
recordings of musical works to engage in covered activities, including
pursuant to 17 U.S.C. 115(d)(4)(B):
(A) Information concerning authorship and ownership of the
applicable
[[Page 769]]
rights in the musical work embodied in the sound recording, including
but not limited to:
(1) Songwriter(s);
(2) Publisher(s) with applicable U.S. rights;
(3) Musical work copyright owner(s);
(4) ISNI(s) and IPI(s) for each such songwriter, publisher, and
musical work copyright owner; and
(5) Respective ownership shares of each such musical work copyright
owner;
(B) ISWC(s) for the musical work embodied in the sound recording;
and
(C) Musical work name(s) for the musical work embodied in the sound
recording, including any alternative or parenthetical titles for the
musical work.
(iii) Whether the blanket licensee, or any corporate parent,
subsidiary, or affiliate of the blanket licensee, is a copyright owner
of the musical work embodied in the sound recording.
(2) Where any of the information called for by paragraph (e)(1) of
this section, except for playing time, is acquired by the blanket
licensee from sound recording copyright owners or other licensors of
sound recordings (or their representatives), and the blanket licensee
revises, re-titles, or otherwise modifies such information (which, for
avoidance of doubt, does not include the act of filling in or
supplementing empty or blank data fields, to the extent such information
is known to the licensee), the blanket licensee shall report as follows:
(i) It shall be sufficient for the blanket licensee to report either
the licensor-provided version or the modified version of such
information to satisfy its obligations under paragraph (e)(1) of this
section, except for the reporting of any information belonging to a
category of information that was not periodically modified by that
blanket licensee prior to the license availability date, any unique
identifier (including but not limited to ISRC and ISWC), or any release
date. On and after September 17, 2021, it additionally shall not be
sufficient for the blanket licensee to report a modified version of any
sound recording name, featured artist, version, or album title.
(ii) Where the blanket licensee must otherwise report the licensor-
provided version of such information under paragraph (e)(2)(i) of this
section, but to the best of its knowledge, information, and belief no
longer has possession, custody, or control of the licensor-provided
version, reporting the modified version of such information will satisfy
its obligations under paragraph (e)(1) of this section if the blanket
licensee certifies to the mechanical licensing collective that to the
best of the blanket licensee's knowledge, information, and belief: The
information at issue belongs to a category of information called for by
paragraph (e)(1) of this section (each of which must be identified) that
was periodically modified by the particular blanket licensee prior to
October 19, 2020; and that despite engaging in good-faith, commercially
reasonable efforts, the blanket licensee has not located the licensor-
provided version in its records. A certification need not identify
specific sound recordings or musical works, and a single certification
may encompass all licensor-provided information satisfying the
conditions of the preceding sentence. The blanket licensee should
deliver this certification prior to or contemporaneously with the first-
delivered report of usage containing information to which this paragraph
(e)(2)(ii) is applicable and need not provide the same certification to
the mechanical licensing collective more than once.
(3) With respect to the obligation under paragraph (e)(1) of this
section for blanket licensees to report unique identifiers that can be
used to locate and listen to sound recordings accompanied by clear
instructions describing how to do so:
(i) On and after the license availability date, blanket licensees
providing such unique identifiers may not impose conditions that
materially diminish the degree of access to sound recordings in
connection with their potential use by the mechanical licensing
collective or its registered users in connection with their use of the
collective's claiming portal (e.g., if a paid subscription is not
required to listen to a sound recording as of the license availability
date, the blanket licensee
[[Page 770]]
should not later impose a subscription fee for users to access the
recording through the portal). Nothing in this paragraph (e)(3)(i) shall
be construed as restricting a blanket licensee from otherwise imposing
conditions or diminishing access to sound recordings: With respect to
other users or methods of access to its service(s), including the
general public; if required by a relevant agreement with a sound
recording copyright owner or other licensor of sound recordings; or
where such sound recordings are no longer made available through its
service(s).
(ii) Blanket licensees who do not assign such unique identifiers as
of September 17, 2020, may make use of a transition period ending
September 17, 2021, during which the requirement to report such unique
identifiers accompanied by instructions shall be waived upon
notification, including a description of any implementation obstacles,
to the mechanical licensing collective.
(iii)(A) By no later than December 16, 2020, and on a quarterly
basis for the succeeding year, or as otherwise directed by the Copyright
Office, the mechanical licensing collective and digital licensee
coordinator shall report to the Copyright Office regarding the ability
of users to listen to sound recordings for identification purposes
through the collective's claiming portal. In addition to any other
information requested, each report shall:
(1) Identify any implementation obstacles preventing the audio of
any reported sound recording from being accessed directly or indirectly
through the portal without cost to portal users (including any obstacles
described by any blanket licensee pursuant to paragraph (e)(3)(ii) of
this section, along with such licensee's identity), and any other
obstacles to improving the experience of portal users seeking to
identify musical works and their owners;
(2) Identify an implementation strategy for addressing any
identified obstacles, and, as applicable, what progress has been made in
addressing such obstacles; and
(3) Identify any agreements between the mechanical licensing
collective and blanket licensee(s) to provide for access to the relevant
sound recordings for portal users seeking to identify musical works and
their owners through an alternate method rather than by reporting unique
identifiers through reports of usage (e.g., separately licensed
solutions). If such an alternate method is implemented pursuant to any
such agreement, the requirement to report unique identifiers that can be
used to locate and listen to sound recordings accompanied by clear
instructions describing how to do so is lifted for the relevant blanket
licensee(s) for the duration of the agreement.
(B) The mechanical licensing collective and digital licensee
coordinator shall cooperate in good faith to produce the reports
required under paragraph (e)(3)(iii)(A) of this section, and shall
submit joint reports with respect to areas on which they can reach
substantial agreement, but which may contain separate report sections on
areas where they are unable to reach substantial agreement. Such
cooperation may include work through the operations advisory committee.
(4) Any obligation under paragraph (e)(1) of this section concerning
information about sound recording copyright owners may be satisfied by
reporting the information for applicable sound recordings provided to
the blanket licensee by sound recording copyright owners or other
licensors of sound recordings (or their representatives) contained in
each of the following DDEX fields: LabelName and PLine. Where a blanket
licensee acquires this information in addition to other information
identifying a relevant sound recording copyright owner, all such
information should be reported.
(5) A blanket licensee may make use of a transition period ending
September 17, 2021, during which the blanket licensee need not report
information that would otherwise be required by paragraph (e)(1)(i)(E)
or (e)(1)(ii) of this section, unless:
(i) It belongs to a category of information expressly required by
the enumerated list of information contained in 17 U.S.C.
115(d)(4)(A)(ii)(I)(aa) or (bb);
(ii) It belongs to a category of information that is reported by the
particular blanket licensee pursuant to
[[Page 771]]
any voluntary license or individual download license; or
(iii) It belongs to a category of information that was periodically
reported by the particular blanket licensee prior to the license
availability date.
(f) Content of annual reports of usage. An annual report of usage,
covering the full fiscal year of the blanket licensee, shall be clearly
and prominently identified as an ``Annual Report of Usage Under
Compulsory Blanket License for Making and Distributing Phonorecords,''
and shall include a clear statement of the following information:
(1) The fiscal year covered by the annual report of usage.
(2) The full legal name of the blanket licensee and, if different,
the trade or consumer-facing brand name(s) of the service(s), including
any specific offering(s), through which the blanket licensee engages in
covered activities. If the blanket licensee has a unique DDEX identifier
number, it must also be provided.
(3) The full address, including a specific number and street name or
rural route, of the place of business of the blanket licensee. A post
office box or similar designation will not be sufficient except where it
is the only address that can be used in that geographic location.
(4) The following information, cumulative for the applicable annual
reporting period, for each month for each applicable activity or
offering including as may be defined in part 385 of this title, and
broken down by month and by each such applicable activity or offering:
(i) The total royalty payable by the blanket licensee under the
blanket license, computed in accordance with the requirements of this
section and part 385 of this title.
(ii) The total sum paid to the mechanical licensing collective under
the blanket license, including the amount of any adjustment delivered
contemporaneously with the annual report of usage.
(iii) The total adjustment(s) made by any report of adjustment
adjusting any monthly report of usage covered by the applicable annual
reporting period, including any adjustment made in connection with the
annual report of usage as described in paragraph (k)(1) of this section.
(iv) The total number of payable units, including, as applicable,
permanent downloads, plays, and constructive plays, for each sound
recording used, whether pursuant to a blanket license, voluntary
license, or individual download license.
(v) To the extent applicable to the calculation of royalties owed by
the blanket licensee under the blanket license:
(A) Total service provider revenue, as may be defined in part 385 of
this title.
(B) Total costs of content, as may be defined in part 385 of this
title.
(C) Total deductions of performance royalties, as may be defined in
and permitted by part 385 of this title.
(D) Total subscribers, as may be defined in part 385 of this title.
(5) The amount of late fees, if applicable, included in any payment
associated with the annual report of usage.
(g) Processing and timing. (1) Each monthly report of usage and
related royalty payment must be delivered to the mechanical licensing
collective no later than 45 calendar days after the end of the
applicable monthly reporting period. Where a monthly report of usage
satisfying the requirements of 17 U.S.C. 115 and this section is
delivered to the mechanical licensing collective no later than 15
calendar days after the end of the applicable monthly reporting period,
the mechanical licensing collective shall deliver an invoice to the
blanket licensee no later than 40 calendar days after the end of the
applicable monthly reporting period that sets forth the royalties
payable by the blanket licensee under the blanket license for the
applicable monthly reporting period, which shall be broken down by each
applicable activity or offering including as may be defined in part 385
of this title.
(2) After receiving a monthly report of usage, the mechanical
licensing collective shall engage in the following actions, among any
other actions required of it:
(i) The mechanical licensing collective shall engage in efforts to
identify the musical works embodied in sound recordings reflected in
such report, and
[[Page 772]]
the copyright owners of such musical works (and shares thereof).
(ii) The mechanical licensing collective shall engage in efforts to
confirm uses of musical works subject to voluntary licenses and
individual download licenses, and, if applicable, the corresponding
amounts to be deducted from royalties that would otherwise be due under
the blanket license. These efforts may include providing copyright
owners with information on usage of their respective musical works that
was identified by a digital music provider as subject to a voluntary
license or individual download license.
(iii) Where the blanket licensee will not receive an invoice prior
to delivering its royalty payment under paragraph (g)(1) of this
section, the mechanical licensing collective shall engage in efforts to
confirm proper payment of the royalties payable by the blanket licensee
under the blanket license for the applicable monthly reporting period,
computed in accordance with the requirements of this section and part
385 of this title, after accounting for, if applicable, amounts to be
deducted under paragraph (g)(2)(ii) of this section.
(iv) Where the blanket licensee will receive an invoice prior to
delivering its royalty payment under paragraph (g)(1) of this section,
the mechanical licensing collective shall engage in efforts to compute,
in accordance with the requirements of this section and part 385 of this
title, the royalties payable by the blanket licensee under the blanket
license for the applicable monthly reporting period, after accounting
for, if applicable, amounts to be deducted under paragraph (g)(2)(ii) of
this section.
(v) The mechanical licensing collective shall deliver a response
file to the blanket licensee if requested by the blanket licensee, and
the blanket licensee may request an invoice even if not entitled to an
invoice prior to delivering its royalty payment under paragraph (g)(1)
of this section. Such requests may be made in connection with a
particular monthly report of usage or via a one-time request that
applies to future reporting periods. Where the blanket licensee will
receive an invoice prior to delivering its royalty payment under
paragraph (g)(1) of this section, the mechanical licensing collective
shall deliver the response file to the blanket licensee
contemporaneously with such invoice. The mechanical licensing collective
shall otherwise deliver the response file and/or invoice, as applicable,
to the blanket licensee in a reasonably timely manner, but no later than
70 calendar days after the end of the applicable monthly reporting
period if the blanket licensee has delivered its monthly report of usage
and related royalty payment no later than 45 calendar days after the end
of the applicable monthly reporting period. In all cases, the response
file shall contain such information as is common in the industry to be
reported in response files, backup files, and any other similar such
files provided to digital music providers by applicable third-party
administrators, and shall include the results of the process described
in paragraphs (g)(2)(i) through (iv) of this section on a track-by-track
and ownership-share basis, with updates to reflect any new results from
the previous month. Response files shall include the following minimum
information: song title, mechanical licensing collective-assigned song
code, composer(s), publisher name, including top publisher, original
publisher, and admin publisher, publisher split, mechanical licensing
collective-assigned publisher number, publisher/license status (whether
each work share is subject to the blanket license or a voluntary license
or individual download license), royalties per work share, effective
per-play rate, time-adjusted plays, and the unique identifier for each
applicable voluntary license or individual download license provided to
the mechanical licensing collective pursuant to Sec.210.24(b)(8)(vi).
(3) Each annual report of usage and, if any, related royalty payment
must be delivered to the mechanical licensing collective no later than
the 20th day of the sixth month following the end of the fiscal year
covered by the annual report of usage.
(4) The required timing for any report of adjustment and, if any,
related royalty payment shall be as follows:
[[Page 773]]
(i) Where a report of adjustment adjusting a monthly report of usage
is not combined with an annual report of usage, as described in
paragraph (k)(1) of this section, a report of adjustment adjusting a
monthly report of usage must be delivered to the mechanical licensing
collective after delivery of the monthly report of usage being adjusted
and before delivery of the annual report of usage for the annual period
covering such monthly report of usage.
(ii) A report of adjustment adjusting an annual report of usage must
be delivered to the mechanical licensing collective no later than 6
months after the occurrence of any of the scenarios specified by
paragraph (k)(6) of this section, where such an event necessitates an
adjustment. Where more than one scenario applies to the same annual
report of usage at different points in time, a separate 6-month period
runs for each such triggering event.
(h) Format and delivery. (1) Reports of usage shall be delivered to
the mechanical licensing collective in a machine-readable format that is
compatible with the information technology systems of the mechanical
licensing collective as reasonably determined by the mechanical
licensing collective and set forth on its website, taking into
consideration relevant industry standards and the potential for
different degrees of sophistication among blanket licensees. The
mechanical licensing collective must offer at least two options, where
one is dedicated to smaller blanket licensees that may not be reasonably
capable of complying with the requirements of a reporting or data
standard or format that the mechanical licensing collective may see fit
to adopt for larger blanket licensees with more sophisticated
operations. Nothing in this section shall be construed as prohibiting
the mechanical licensing collective from adopting more than two
reporting or data standards or formats.
(2) Royalty payments shall be delivered to the mechanical licensing
collective in such manner and form as the mechanical licensing
collective may reasonably determine and set forth on its website. A
report of usage and its related royalty payment may be delivered
together or separately, but if delivered separately, the payment must
include information reasonably sufficient to allow the mechanical
licensing collective to match the report of usage to the payment.
(3) The mechanical licensing collective may modify the requirements
it adopts under paragraphs (h)(1) and (2) of this section at any time,
after good-faith consultation with the operations advisory committee and
taking into consideration any technological and cost burdens that may
reasonably be expected to result and the proportionality of those
burdens to any reasonably expected benefits, provided that advance
notice of any such change is reflected on its website and delivered to
blanket licensees using the contact information provided in each
respective licensee's notice of license. A blanket licensee shall not be
required to comply with any such change before the first reporting
period ending at least 30 calendar days after delivery of such notice,
unless such change is a significant change, in which case, compliance
shall not be required before the first reporting period ending at least
one year after delivery of such notice. For purposes of this paragraph
(h)(3), a significant change occurs where the mechanical licensing
collective changes any policy requiring information to be provided under
particular reporting or data standards or formats. Where delivery of the
notice required by this paragraph (h)(3) is attempted but unsuccessful
because the contact information in the blanket licensee's notice of
license is not current, the grace periods established by this paragraph
(h)(3) shall begin to run from the date of attempted delivery. Nothing
in this paragraph (h)(3) empowers the mechanical licensing collective to
impose reporting requirements that are otherwise inconsistent with the
regulations prescribed by this section.
(4) The mechanical licensing collective shall, by no later than the
license availability date, establish an appropriate process by which any
blanket licensee may voluntarily make advance deposits of funds with the
mechanical licensing collective against which future royalty payments
may be charged.
(5) A separate monthly report of usage shall be delivered for each
month
[[Page 774]]
during which there is any activity relevant to the payment of mechanical
royalties for covered activities. An annual report of usage shall be
delivered for each fiscal year during which at least one monthly report
of usage was required to have been delivered. An annual report of usage
does not replace any monthly report of usage.
(6)(i) Where a blanket licensee attempts to timely deliver a report
of usage and/or related royalty payment to the mechanical licensing
collective but cannot because of the fault of the collective or an
error, outage, disruption, or other issue with any of the collective's
applicable information technology systems (whether or not such issue is
within the collective's direct control) the occurrence of which the
blanket licensee knew or should have known at the time, if the blanket
licensee attempts to contact the collective about the problem within 2
business days, provides a sworn statement detailing the encountered
problem to the Copyright Office within 5 business days (emailed to the
Office of the General Counsel at [email protected]), and
delivers the report of usage and/or related royalty payment to the
collective within 5 business days after receiving written notice from
the collective that the problem is resolved, then the mechanical
licensing collective shall act as follows:
(A) The mechanical licensing collective shall fully credit the
blanket licensee for any applicable late fee paid by the blanket
licensee as a result of the untimely delivery of the report of usage
and/or related royalty payment.
(B) The mechanical licensing collective shall not use the untimely
delivery of the report of usage and/or related royalty payment as a
basis to terminate the blanket licensee's blanket license.
(ii) In the event of a good-faith dispute regarding whether a
blanket licensee knew or should have known of the occurrence of an
error, outage, disruption, or other issue with any of the mechanical
licensing collective's applicable information technology systems, a
blanket licensee that complies with the requirements of paragraph
(h)(6)(i) of this section within a reasonable period of time shall
receive the protections of paragraphs (h)(6)(i)(A) and (B) of this
section.
(7) The mechanical licensing collective shall provide a blanket
licensee with written confirmation of receipt no later than 2 business
days after receiving a report of usage and no later than 2 business days
after receiving any payment.
(i) Certification of monthly reports of usage. Each monthly report
of usage shall be accompanied by:
(1) The name of the person who is signing and certifying the monthly
report of usage.
(2) A signature, which in the case of a blanket licensee that is a
corporation or partnership, shall be the signature of a duly authorized
officer of the corporation or of a partner.
(3) The date of signature and certification.
(4) If the blanket licensee is a corporation or partnership, the
title or official position held in the partnership or corporation by the
person who is signing and certifying the monthly report of usage.
(5) One of the following statements:
(i) Statement one:
I certify that (1) I am duly authorized to sign this monthly report
of usage on behalf of the blanket licensee, (2) I have examined this
monthly report of usage, and (3) all statements of fact contained herein
are true, complete, and correct to the best of my knowledge,
information, and belief, and are made in good faith.
(ii) Statement two:
I certify that (1) I am duly authorized to sign this monthly report
of usage on behalf of the blanket licensee, (2) I have prepared or
supervised the preparation of the data used by the blanket licensee and/
or its agent to generate this monthly report of usage, (3) such data is
true, complete, and correct to the best of my knowledge, information,
and belief, and was prepared in good faith, and (4) this monthly report
of usage was prepared by the blanket licensee and/or its agent using
processes and internal controls that were subject to an examination,
during the past year, by a licensed certified public accountant in
accordance with the attestation standards established by the American
Institute of Certified Public Accountants, the opinion of whom was that
(A) the processes generated monthly reports of usage that accurately
reflect, in all material respects, the blanket licensee's usage of
musical works,
[[Page 775]]
the statutory royalties applicable thereto (to the extent reported), and
any other data that is necessary for the proper calculation of the
statutory royalties in accordance with 17 U.S.C. 115 and applicable
regulations, and (B) the internal controls relevant to the processes
used by or on behalf of the blanket licensee to generate monthly reports
of usage were suitably designed and operated effectively during the
period covered by the monthly reports of usage.
(6) A certification that the blanket licensee has, for the period
covered by the monthly report of usage, engaged in good-faith,
commercially reasonable efforts to obtain information about applicable
sound recordings and musical works pursuant to 17 U.S.C. 115(d)(4)(B)
and Sec.210.26.
(j) Certification of annual reports of usage. (1) Each annual report
of usage shall be accompanied by:
(i) The name of the person who is signing the annual report of usage
on behalf of the blanket licensee.
(ii) A signature, which in the case of a blanket licensee that is a
corporation or partnership, shall be the signature of a duly authorized
officer of the corporation or of a partner.
(iii) The date of signature.
(iv) If the blanket licensee is a corporation or partnership, the
title or official position held in the partnership or corporation by the
person signing the annual report of usage.
(v) The following statement: I am duly authorized to sign this
annual report of usage on behalf of the blanket licensee.
(vi) A certification that the blanket licensee has, for the period
covered by the annual report of usage, engaged in good-faith,
commercially reasonable efforts to obtain information about applicable
sound recordings and musical works pursuant to 17 U.S.C. 115(d)(4)(B)
and Sec.210.26.
(2) Each annual report of usage shall also be certified by a
licensed certified public accountant. Such certification shall comply
with the following requirements:
(i) Except as provided in paragraph (j)(2)(ii) of this section, the
accountant shall certify that it has conducted an examination of the
annual report of usage prepared by the blanket licensee in accordance
with the attestation standards established by the American Institute of
Certified Public Accountants, and has rendered an opinion based on such
examination that the annual report of usage conforms with the standards
in paragraph (j)(2)(iv) of this section.
(ii) If such accountant determines in its professional judgment that
the volume of data attributable to a particular blanket licensee renders
it impracticable to certify the annual report of usage as required by
paragraph (j)(2)(i) of this section, the accountant may instead certify
the following:
(A) That the accountant has conducted an examination in accordance
with the attestation standards established by the American Institute of
Certified Public Accountants of the following assertions by the blanket
licensee's management:
(1) That the processes used by or on behalf of the blanket licensee
generated annual reports of usage that conform with the standards in
paragraph (j)(2)(iv) of this section; and
(2) That the internal controls relevant to the processes used by or
on behalf of the blanket licensee to generate annual reports of usage
were suitably designed and operated effectively during the period
covered by the annual reports of usage.
(B) That such examination included examining, either on a test basis
or otherwise as the accountant considered necessary under the
circumstances and in its professional judgment, evidence supporting the
management assertions in paragraph (j)(2)(ii)(A) of this section, and
performing such other procedures as the accountant considered necessary
in the circumstances.
(C) That the accountant has rendered an opinion based on such
examination that the processes used to generate the annual report of
usage generated annual reports of usage that conform with the standards
in paragraph (j)(2)(iv) of this section, and that the internal controls
relevant to the processes used to generate annual reports of usage were
suitably designed and operated effectively during the period covered by
the annual reports of usage.
(iii) In the event a third party or third parties acting on behalf
of the blanket licensee provided services related to the annual report
of usage, the
[[Page 776]]
accountant making a certification under either paragraph (j)(2)(i) or
(ii) of this section may, as the accountant considers necessary under
the circumstances and in its professional judgment, rely on a report and
opinion rendered by a licensed certified public accountant in accordance
with the attestation standards established by the American Institute of
Certified Public Accountants that the processes and/or internal controls
of the third party or third parties relevant to the generation of the
blanket licensee's annual reports of usage were suitably designed and
operated effectively during the period covered by the annual reports of
usage, if such reliance is disclosed in the certification.
(iv) An annual report of usage conforms with the standards of this
paragraph (j) if it presents fairly, in all material respects, the
blanket licensee's usage of musical works in covered activities during
the period covered by the annual report of usage, the statutory
royalties applicable thereto (to the extent reported), and such other
data as are relevant to the calculation of statutory royalties in
accordance with 17 U.S.C. 115 and applicable regulations.
(v) Each certificate shall be signed by an individual, or in the
name of a partnership or a professional corporation with two or more
shareholders. The certificate number and jurisdiction are not required
if the certificate is signed in the name of a partnership or a
professional corporation with two or more shareholders.
(3) If the annual report of usage is delivered electronically, the
blanket licensee may deliver an electronic facsimile of the original
certification of the annual report of usage signed by the licensed
certified public accountant. The blanket licensee shall retain the
original certification of the annual report of usage signed by the
licensed certified public accountant for the period identified in
paragraph (m) of this section, which shall be made available to the
mechanical licensing collective upon demand.
(k) Adjustments. (1) A blanket licensee may adjust one or more
previously delivered monthly reports of usage or annual reports of
usage, including related royalty payments, by delivering to the
mechanical licensing collective a report of adjustment. A report of
adjustment adjusting one or more monthly reports of usage may, but need
not, be combined with the annual report of usage for the annual period
covering such monthly reports of usage and related payments. In such
cases, such an annual report of usage shall also be considered a report
of adjustment, and must satisfy the requirements of both paragraphs (f)
and (k) of this section.
(2) A report of adjustment, except when combined with an annual
report of usage, shall be clearly and prominently identified as a
``Report of Adjustment Under Compulsory Blanket License for Making and
Distributing Phonorecords.'' A report of adjustment that is combined
with an annual report of usage shall be identified in the same manner as
any other annual report of usage.
(3) A report of adjustment shall include a clear statement of the
following information:
(i) The previously delivered monthly reports of usage or annual
reports of usage, including related royalty payments, to which the
adjustment applies.
(ii) The specific change(s) to the applicable previously delivered
monthly reports of usage or annual reports of usage, including a
detailed description of any changes to any of the inputs upon which
computation of the royalties payable by the blanket licensee under the
blanket license depends. Such description shall include all information
necessary for the mechanical licensing collective to compute, in
accordance with the requirements of this section and part 385 of this
title, the adjusted royalties payable by the blanket licensee under the
blanket license, and all information necessary to enable the mechanical
licensing collective to provide a detailed and step-by-step accounting
of the calculation of the adjustment under applicable provisions of this
section and part 385 of this title, sufficient to allow each applicable
copyright owner to assess the manner in which the mechanical licensing
collective, using the blanket licensee's
[[Page 777]]
information, determined the adjustment and the accuracy of the
adjustment. As appropriate, an adjustment may be calculated using
estimates permitted under paragraph (d)(2)(i) of this section.
(iii) Where applicable, the particular sound recordings and uses to
which the adjustment applies.
(iv) A description of the reason(s) for the adjustment.
(4) In the case of an underpayment of royalties, the blanket
licensee shall pay the difference to the mechanical licensing collective
contemporaneously with delivery of the report of adjustment or promptly
after being notified by the mechanical licensing collective of the
amount due. A report of adjustment and its related royalty payment may
be delivered together or separately, but if delivered separately, the
payment must include information reasonably sufficient to allow the
mechanical licensing collective to match the report of adjustment to the
payment.
(5) In the case of an overpayment of royalties, the mechanical
licensing collective shall appropriately credit or offset the excess
payment amount and apply it to the blanket licensee's account, or upon
request, issue a refund within a reasonable period of time.
(6) A report of adjustment adjusting an annual report of usage may
only be made:
(i) In exceptional circumstances;
(ii) When making an adjustment to a previously estimated input under
paragraph (d)(2)(i) of this section;
(iii) Following an audit under 17 U.S.C. 115(d)(4)(D);
(iv) Following any other audit of a blanket licensee that concludes
after the annual report of usage is delivered and that has the result of
affecting the computation of the royalties payable by the blanket
licensee under the blanket license (e.g., as applicable, an audit by a
sound recording copyright owner concerning the amount of applicable
consideration paid for sound recording copyright rights); or
(v) In response to a change in applicable rates or terms under part
385 of this title.
(7) A report of adjustment adjusting a monthly report of usage must
be certified in the same manner as a monthly report of usage under
paragraph (i) of this section. A report of adjustment adjusting an
annual report of usage must be certified in the same manner as an annual
report of usage under paragraph (j) of this section, except that the
examination by a certified public accountant under paragraph (j)(2) of
this section may be limited to the adjusted material and related
recalculation of royalties payable. Where a report of adjustment is
combined with an annual report of usage, its content shall be subject to
the certification covering the annual report of usage with which it is
combined.
(l) Clear statements. The information required by this section
requires intelligible, legible, and unambiguous statements in the
reports of usage, without incorporation of facts or information
contained in other documents or records.
(m) Documentation and records of use. (1) Each blanket licensee
shall, for a period of at least seven years from the date of delivery of
a report of usage to the mechanical licensing collective, keep and
retain in its possession all records and documents necessary and
appropriate to support fully the information set forth in such report of
usage (except that such records and documents that relate to an
estimated input permitted under paragraph (d)(2) of this section must be
kept and retained for a period of at least seven years from the date of
delivery of the report of usage containing the final adjustment of such
input), including but not limited to the following:
(i) Records and documents accounting for digital phonorecord
deliveries that do not constitute plays, constructive plays, or other
payable units.
(ii) Records and documents pertaining to any promotional or free
trial uses that are required to be maintained under applicable
provisions of part 385 of this title.
(iii) Records and documents identifying or describing each of the
blanket licensee's applicable activities or offerings including as may
be defined in part 385 of this title, including information sufficient
to reasonably demonstrate whether the activity or offering qualifies as
any particular activity or offering for which specific rates and
[[Page 778]]
terms have been established in part 385 of this title, and which
specific rates and terms apply to such activity or offering.
(iv) Records and documents with information sufficient to reasonably
demonstrate, if applicable, whether service revenue and total cost of
content, as those terms may be defined in part 385 of this title, are
properly calculated in accordance with part 385 of this title.
(v) Records and documents with information sufficient to reasonably
demonstrate whether and how any royalty floor established in part 385 of
this title does or does not apply.
(vi) Records and documents containing such other information as is
necessary to reasonably support and confirm all usage and calculations
(including of any inputs provided to the mechanical licensing collective
to enable further calculations) contained in the report of usage,
including but not limited to, as applicable, relevant information
concerning subscriptions, devices and platforms, discount plans
(including how eligibility was assessed), bundled offerings (including
their constituent components and pricing information), and numbers of
end users and subscribers (including unadjusted numbers and numbers
adjusted as may be permitted by part 385 of this title).
(vii) Any other records or documents that may be appropriately
examined pursuant to an audit under 17 U.S.C. 115(d)(4)(D).
(2) The mechanical licensing collective or its agent shall be
entitled to reasonable access to records and documents described in
paragraph (m)(1) of this section, which shall be provided promptly and
arranged for no later than 30 calendar days after the mechanical
licensing collective's reasonable request, subject to any
confidentiality to which they may be entitled. The mechanical licensing
collective shall be entitled to make one request per quarter covering a
period of up to one quarter in the aggregate. With respect to the total
cost of content, as that term may be defined in part 385 of this title,
the access permitted by this paragraph (m)(2) shall be limited to
accessing the aggregated figure kept by the blanket licensee on its
books for the relevant reporting period(s). Neither the mechanical
licensing collective nor its agent shall be entitled to access any
records or documents retained solely pursuant to paragraph (m)(1)(vii)
of this section outside of an applicable audit. Each report of usage
must include clear instructions on how to request access to records and
documents under this paragraph (m).
(3) Each blanket licensee shall, in accordance with paragraph (m)(4)
of this section, keep and retain in its possession and report the
following information:
(i) With respect to each sound recording, that embodies a musical
work, first licensed or obtained for use in covered activities by the
blanket licensee on or after the effective date of its blanket license:
(A) Each of the following dates to the extent reasonably available:
(1) The date on which the sound recording was first reproduced by
the blanket licensee on its server (``server fixation date'').
(2) The date on which the sound recording was first released on the
blanket licensee's service (``street date'').
(B) If neither of the dates specified in paragraph (m)(3)(i)(A) of
this section is reasonably available, the date that, in the assessment
of the blanket licensee, provides a reasonable estimate of the date the
sound recording was first distributed on its service within the United
States (``estimated first distribution date'').
(ii) A record of materially all sound recordings embodying musical
works in its database or similar electronic system as of a time
reasonably approximate to the effective date of its blanket license. For
each recording, the record shall include the sound recording name(s),
featured artist(s), unique identifier(s) assigned by the blanket
licensee, actual playing time, and, to the extent acquired by the
blanket licensee in connection with its use of sound recordings of
musical works to engage in covered activities, ISRC(s). The blanket
licensee shall use commercially reasonable efforts to make this record
as accurate and complete as reasonably possible in representing the
blanket licensee's repertoire as of immediately
[[Page 779]]
prior to the effective date of its blanket license.
(4)(i) Each blanket licensee must deliver the information described
in paragraph (m)(3)(i) of this section to the mechanical licensing
collective at least annually and keep and retain this information until
delivered. Such reporting must include the following:
(A) For each sound recording, the same categories of information
described in paragraph (m)(3)(ii) of this section.
(B) For each date, an identification of which type of date it is
(i.e., server fixation date, street date, or estimated first
distribution date).
(ii) A blanket licensee must deliver the information described in
paragraph (m)(3)(ii) of this section to the mechanical licensing
collective as soon as commercially reasonable, and no later than
contemporaneously with its first reporting under paragraph (m)(4)(i) of
this section.
(iii) Prior to being delivered to the mechanical licensing
collective, the collective or its agent shall be entitled to reasonable
access to the information kept and retained pursuant to paragraphs
(m)(4)(i) and (ii) of this section if needed in connection with
applicable directions, instructions, or orders concerning the
distribution of royalties.
(5) Nothing in paragraph (m)(3) or (4) of this section, nor the
collection, maintenance, or delivery of information under paragraphs
(m)(3) and (4) of this section, nor the information itself, shall be
interpreted or construed:
(i) To alter, limit, or diminish in any way the ability of an author
or any other person entitled to exercise rights of termination under
section 203 or 304 of title 17 of the United States Code from fully
exercising or benefiting from such rights;
(ii) As determinative of the date of the license grant with respect
to works as it pertains to sections 203 and 304 of title 17 of the
United States Code; or
(iii) To affect in any way the scope or effectiveness of the
exercise of termination rights, including as pertaining to derivative
works, under section 203 or 304 of title 17 of the United States Code.
(n) Voluntary agreements with mechanical licensing collective to
alter process. (1) Subject to the provisions of 17 U.S.C. 115, a blanket
licensee and the mechanical licensing collective may agree in writing to
vary or supplement the procedures described in this section, including
but not limited to pursuant to an agreement to administer a voluntary
license, provided that any such change does not materially prejudice
copyright owners owed royalties due under a blanket license. The
procedures surrounding the certification requirements of paragraphs (i)
and (j) of this section may not be altered by agreement. This paragraph
(n)(1) does not empower the mechanical licensing collective to agree to
alter any substantive requirements described in this section, including
but not limited to the required royalty payment and accounting
information and sound recording and musical work information.
(2) The mechanical licensing collective shall maintain a current,
free, and publicly accessible online list of all agreements made
pursuant to paragraph (n)(1) of this section that includes the name of
the blanket licensee (and, if different, the trade or consumer-facing
brand name(s) of the services(s), including any specific offering(s),
through which the blanket licensee engages in covered activities) and
the start and end dates of the agreement. Any such agreement shall be
considered a record that a copyright owner may access in accordance with
17 U.S.C. 115(d)(3)(M)(ii). Where an agreement made pursuant to
paragraph (n)(1) of this section is made pursuant to an agreement to
administer a voluntary license or any other agreement, only those
portions that vary or supplement the procedures described in this
section and that pertain to the administration of a requesting copyright
owner's musical works must be made available to that copyright owner.
[85 FR 58143, Sept. 17, 2020, as amended at 86 FR 12826, Mar. 5, 2021]
Sec.210.28 Reports of usage for significant nonblanket licensees.
(a) General. This section prescribes rules for the preparation and
delivery of reports of usage for the making and distribution of
phonorecords of nondramatic musical works to the mechanical licensing
collective by a significant
[[Page 780]]
nonblanket licensee pursuant to 17 U.S.C. 115(d)(6)(A)(ii). A
significant nonblanket licensee shall report to the mechanical licensing
collective on a monthly basis in accordance with 17 U.S.C.
115(d)(6)(A)(ii) and this section. A significant nonblanket licensee may
make adjustments to its reports of usage in accordance with this
section.
(b) Definitions. For purposes of this section, in addition to those
terms defined in Sec.210.22:
(1) The term report of usage, unless otherwise specified, refers to
all reports of usage required to be delivered by a significant
nonblanket licensee to the mechanical licensing collective, including
reports of adjustment. As used in this section, it does not refer to
reports required to be delivered by blanket licensees under 17 U.S.C.
115(d)(4)(A) and Sec.210.27.
(2) A monthly report of usage is a report of usage identified in 17
U.S.C. 115(d)(6)(A)(ii), and required to be delivered by a significant
nonblanket licensee to the mechanical licensing collective.
(3) A report of adjustment is a report delivered by a significant
nonblanket licensee to the mechanical licensing collective adjusting one
or more previously delivered monthly reports of usage.
(c) Content of monthly reports of usage. A monthly report of usage
shall be clearly and prominently identified as a ``Significant
Nonblanket Licensee Monthly Report of Usage for Making and Distributing
Phonorecords,'' and shall include a clear statement of the following
information:
(1) The period (month and year) covered by the monthly report of
usage.
(2) The full legal name of the significant nonblanket licensee and,
if different, the trade or consumer-facing brand name(s) of the
service(s), including any specific offering(s), through which the
significant nonblanket licensee engages in covered activities. If the
significant nonblanket licensee has a unique DDEX identifier number, it
must also be provided.
(3) The full address, including a specific number and street name or
rural route, of the place of business of the significant nonblanket
licensee. A post office box or similar designation will not be
sufficient except where it is the only address that can be used in that
geographic location.
(4) For each sound recording embodying a musical work that is used
by the significant nonblanket licensee in covered activities during the
applicable monthly reporting period, a detailed statement, from which
the mechanical licensing collective may separate reported information
for each applicable activity or offering including as may be defined in
part 385 of this title, of all of:
(i) The royalty payment and accounting information required by
paragraph (d) of this section; and
(ii) The sound recording and musical work information required by
paragraph (e) of this section.
(5)(i) For each voluntary license in effect during the applicable
monthly reporting period, the information required under Sec.
210.24(b)(8). If this information has been separately provided to the
mechanical licensing collective, it need not be contained in the monthly
report of usage, provided the report states that the information has
been provided separately and includes the date on which such information
was last provided to the mechanical licensing collective. This paragraph
(c)(5)(i) does not apply to any authority obtained by a significant
nonblanket licensee from licensors of sound recordings to make and
distribute permanent downloads of musical works embodied in such sound
recordings pursuant to an individual download license or voluntary
license.
(ii) For any authority obtained by a significant nonblanket licensee
from licensors of sound recordings to make and distribute permanent
downloads of musical works embodied in such sound recordings pursuant to
an individual download license or voluntary license, and where such
authority does not cover all permanent downloads made available on the
service, a list of all sound recordings for which the significant
nonblanket licensee has obtained such authority from the respective
sound recording licensors, or a list of any applicable catalog
exclusions where the significant nonblanket licensee indicates that such
authority otherwise exists for all permanent
[[Page 781]]
downloads, and identification of the significant nonblanket licensee's
covered activities operated under such authority. If this information
has been separately provided to the mechanical licensing collective, it
need not be contained in the monthly report of usage, provided the
report states that the information has been provided separately and
includes the date on which such information was last provided to the
mechanical licensing collective.
(d) Royalty payment and accounting information. The royalty payment
and accounting information called for by paragraph (c)(4)(i) of this
section shall consist of the following:
(1) The mechanical royalties payable by the significant nonblanket
licensee for the applicable monthly reporting period for engaging in
covered activities pursuant to each applicable voluntary license and
individual download license.
(2) The number of payable units, including, as applicable, permanent
downloads, plays, and constructive plays, for each reported sound
recording.
(e) Sound recording and musical work information. (1) The following
information must be provided for each sound recording embodying a
musical work required to be reported under paragraph (c)(4)(ii) of this
section:
(i) Identifying information for the sound recording, including but
not limited to:
(A) Sound recording name(s), including all known alternative and
parenthetical titles for the sound recording;
(B) Featured artist(s);
(C) Unique identifier(s) assigned by the significant nonblanket
licensee, if any, including any code(s) that can be used to locate and
listen to the sound recording through the significant nonblanket
licensee's public-facing service;
(D) Actual playing time measured from the sound recording audio
file; and
(E) To the extent acquired by the significant nonblanket licensee in
connection with its use of sound recordings of musical works to engage
in covered activities:
(1) Sound recording copyright owner(s);
(2) Producer(s);
(3) ISRC(s);
(4) Any other unique identifier(s) for or associated with the sound
recording, including any unique identifier(s) for any associated album,
including but not limited to:
(i) Catalog number(s);
(ii) UPC(s); and
(iii) Unique identifier(s) assigned by any distributor;
(5) Version(s);
(6) Release date(s);
(7) Album title(s);
(8) Label name(s);
(9) Distributor(s); and
(10) Other information commonly used in the industry to identify
sound recordings and match them to the musical works the sound
recordings embody.
(ii) Identifying information for the musical work embodied in the
reported sound recording, to the extent acquired by the significant
nonblanket licensee in the metadata provided by sound recording
copyright owners or other licensors of sound recordings in connection
with the use of sound recordings of musical works to engage in covered
activities:
(A) Information concerning authorship and ownership of the
applicable rights in the musical work embodied in the sound recording,
including but not limited to:
(1) Songwriter(s);
(2) Publisher(s) with applicable U.S. rights;
(3) Musical work copyright owner(s);
(4) ISNI(s) and IPI(s) for each such songwriter, publisher, and
musical work copyright owner; and
(5) Respective ownership shares of each such musical work copyright
owner;
(B) ISWC(s) for the musical work embodied in the sound recording;
and
(C) Musical work name(s) for the musical work embodied in the sound
recording, including any alternative or parenthetical titles for the
musical work.
[[Page 782]]
(iii) Whether the significant nonblanket licensee, or any corporate
parent, subsidiary, or affiliate of the significant nonblanket licensee,
is a copyright owner of the musical work embodied in the sound
recording.
(2) Where any of the information called for by paragraph (e)(1) of
this section, except for playing time, is acquired by the significant
nonblanket licensee from sound recording copyright owners or other
licensors of sound recordings (or their representatives), and the
significant nonblanket licensee revises, re-titles, or otherwise
modifies such information (which, for avoidance of doubt, does not
include the act of filling in or supplementing empty or blank data
fields, to the extent such information is known to the licensee), the
significant nonblanket licensee shall report as follows:
(i) It shall be sufficient for the significant nonblanket licensee
to report either the licensor-provided version or the modified version
of such information to satisfy its obligations under paragraph (e)(1) of
this section, except that it shall not be sufficient for the significant
nonblanket licensee to report a modified version of any information
belonging to a category of information that was not periodically
modified by that significant nonblanket licensee prior to the license
availability date, any unique identifier (including but not limited to
ISRC and ISWC), or any release date.
(ii) Where the significant nonblanket licensee must otherwise report
the licensor-provided version of such information under paragraph
(e)(2)(i) of this section, but to the best of its knowledge,
information, and belief no longer has possession, custody, or control of
the licensor-provided version, reporting the modified version of such
information will satisfy its obligations under paragraph (e)(1) of this
section if the significant nonblanket licensee certifies to the
mechanical licensing collective that to the best of the significant
nonblanket licensee's knowledge, information, and belief: The
information at issue belongs to a category of information called for by
paragraph (e)(1) of this section (each of which must be identified) that
was periodically modified by the particular significant nonblanket
licensee prior to October 19, 2020; and that despite engaging in good-
faith, commercially reasonable efforts, the significant nonblanket
licensee has not located the licensor-provided version in its records. A
certification need not identify specific sound recordings or musical
works, and a single certification may encompass all licensor-provided
information satisfying the conditions of the preceding sentence. The
significant nonblanket licensee should deliver this certification prior
to or contemporaneously with the first-delivered report of usage
containing information to which this paragraph (e)(2)(ii) is applicable
and need not provide the same certification to the mechanical licensing
collective more than once.
(3) Any obligation under paragraph (e)(1) of this section concerning
information about sound recording copyright owners may be satisfied by
reporting the information for applicable sound recordings provided to
the significant nonblanket licensee by sound recording copyright owners
or other licensors of sound recordings (or their representatives)
contained in each of the following DDEX fields: LabelName and PLine.
Where a significant nonblanket licensee acquires this information in
addition to other information identifying a relevant sound recording
copyright owner, all such information should be reported.
(4) A significant nonblanket licensee may make use of a transition
period ending September 17, 2021, during which the significant
nonblanket licensee need not report information that would otherwise be
required by paragraph (e)(1)(i)(E) or (e)(1)(ii) of this section,
unless:
(i) It belongs to a category of information expressly required by
the enumerated list of information contained in 17 U.S.C.
115(d)(4)(A)(ii)(I)(aa) or (bb);
(ii) It belongs to a category of information that is reported by the
particular significant nonblanket licensee pursuant to any voluntary
license or individual download license; or
(iii) It belongs to a category of information that was periodically
reported
[[Page 783]]
by the particular significant nonblanket licensee prior to the license
availability date.
(f) Timing. (1) An initial report of usage must be delivered to the
mechanical licensing collective contemporaneously with the significant
nonblanket licensee's notice of nonblanket activity. Each subsequent
monthly report of usage must be delivered to the mechanical licensing
collective no later than 45 calendar days after the end of the
applicable monthly reporting period.
(2) A report of adjustment may only be delivered to the mechanical
licensing collective once annually, between the end of the significant
nonblanket licensee's fiscal year and 6 months after the end of its
fiscal year. Such report may only adjust one or more previously
delivered monthly reports of usage from the applicable fiscal year.
(g) Format and delivery. (1) Reports of usage shall be delivered to
the mechanical licensing collective in any format accepted by the
mechanical licensing collective for blanket licensees under Sec.
210.27(h). With respect to any modifications to formatting requirements
that the mechanical licensing collective adopts, the mechanical
licensing collective shall follow the consultation process as under
Sec.210.27(h), and significant nonblanket licensees shall be entitled
to the same advance notice and grace periods as apply to blanket
licensees under Sec.210.27(h), except the mechanical licensing
collective shall use the contact information provided in each respective
significant nonblanket licensee's notice of nonblanket activity. Nothing
in this paragraph (g)(1) empowers the mechanical licensing collective to
impose reporting requirements that are otherwise inconsistent with the
regulations prescribed by this section.
(2) A separate monthly report of usage shall be delivered for each
month during which there is any activity relevant to the payment of
mechanical royalties for covered activities.
(3) Where a significant nonblanket licensee attempts to timely
deliver a report of usage to the mechanical licensing collective but
cannot because of the fault of the collective or an error, outage,
disruption, or other issue with any of the collective's applicable
information technology systems (whether or not such issue is within the
collective's direct control) the occurrence of which the significant
nonblanket licensee knew or should have known at the time, if the
significant nonblanket licensee attempts to contact the collective about
the problem within 2 business days, provides a sworn statement detailing
the encountered problem to the Copyright Office within 5 business days
(emailed to the Office of the General Counsel at
[email protected]), and delivers the report of usage to
the collective within 5 business days after receiving written notice
from the collective that the problem is resolved, then neither the
mechanical licensing collective nor the digital licensee coordinator may
use the untimely delivery of the report of usage as a basis to engage in
legal enforcement efforts under 17 U.S.C. 115(d)(6)(C). In the event of
a good-faith dispute regarding whether a significant nonblanket licensee
knew or should have known of the occurrence of an error, outage,
disruption, or other issue with any of the mechanical licensing
collective's applicable information technology systems, neither the
mechanical licensing collective nor the digital licensee coordinator may
use the untimely delivery of the report of usage as a basis to engage in
legal enforcement efforts under 17 U.S.C. 115(d)(6)(C) as long as the
significant nonblanket licensee complies with the requirements of this
paragraph (g)(3) within a reasonable period of time.
(4) The mechanical licensing collective shall provide a significant
nonblanket licensee with written confirmation of receipt no later than 2
business days after receiving a report of usage.
(h) Certification of monthly reports of usage. Each monthly report
of usage shall be accompanied by:
(1) The name of the person who is signing and certifying the monthly
report of usage.
(2) A signature, which in the case of a significant nonblanket
licensee that is a corporation or partnership, shall be the signature of
a duly authorized officer of the corporation or of a partner.
[[Page 784]]
(3) The date of signature and certification.
(4) If the significant nonblanket licensee is a corporation or
partnership, the title or official position held in the partnership or
corporation by the person who is signing and certifying the monthly
report of usage.
(5) One of the following statements:
(i) Statement one:
I certify that (1) I am duly authorized to sign this monthly report
of usage on behalf of the significant nonblanket licensee, (2) I have
examined this monthly report of usage, and (3) all statements of fact
contained herein are true, complete, and correct to the best of my
knowledge, information, and belief, and are made in good faith.
(ii) Statement two:
I certify that (1) I am duly authorized to sign this monthly report
of usage on behalf of the significant nonblanket licensee, (2) I have
prepared or supervised the preparation of the data used by the
significant nonblanket licensee and/or its agent to generate this
monthly report of usage, (3) such data is true, complete, and correct to
the best of my knowledge, information, and belief, and was prepared in
good faith, and (4) this monthly report of usage was prepared by the
significant nonblanket licensee and/or its agent using processes and
internal controls that were subject to an examination, during the past
year, by a licensed certified public accountant in accordance with the
attestation standards established by the American Institute of Certified
Public Accountants, the opinion of whom was that (A) the processes
generated monthly reports of usage that accurately reflect, in all
material respects, the significant nonblanket licensee's usage of
musical works and the royalties applicable thereto, and (B) the internal
controls relevant to the processes used by or on behalf of the
significant nonblanket licensee to generate monthly reports of usage
were suitably designed and operated effectively during the period
covered by the monthly reports of usage.
(i) Adjustments. (1) A significant nonblanket licensee may adjust
one or more previously delivered monthly reports of usage by delivering
to the mechanical licensing collective a report of adjustment.
(2) A report of adjustment shall be clearly and prominently
identified as a ``Significant Nonblanket Licensee Report of Adjustment
for Making and Distributing Phonorecords.''
(3) A report of adjustment shall include a clear statement of the
following information:
(i) The previously delivered monthly report(s) of usage to which the
adjustment applies.
(ii) The specific change(s) to the applicable previously delivered
monthly report(s) of usage.
(iii) Where applicable, the particular sound recordings and uses to
which the adjustment applies.
(iv) A description of the reason(s) for the adjustment.
(4) A report of adjustment must be certified in the same manner as a
monthly report of usage under paragraph (h) of this section.
(j) Clear statements. The information required by this section
requires intelligible, legible, and unambiguous statements in the
reports of usage, without incorporation of facts or information
contained in other documents or records.
(k) Harmless errors. Errors in the delivery or content of a report
of usage that do not materially affect the adequacy of the information
required to serve the purpose of 17 U.S.C. 115(d) shall be deemed
harmless, and shall not render the report invalid or provide a basis for
the mechanical licensing collective or digital licensee coordinator to
engage in legal enforcement efforts under 17 U.S.C. 115(d)(6)(C). This
paragraph (k) shall apply only to errors made in good faith and without
any intention to deceive, mislead, or conceal relevant information.
(l) Voluntary agreements with mechanical licensing collective to
alter process. (1) Subject to the provisions of 17 U.S.C. 115, a
significant nonblanket licensee and the mechanical licensing collective
may agree in writing to vary or supplement the procedures described in
this section, including but not limited to pursuant to an agreement to
administer a voluntary license, provided that any such change does not
materially prejudice copyright owners owed royalties due under a blanket
license. The procedures surrounding the certification requirements of
paragraph (h) of this section may not be altered by agreement. This
paragraph (l)(1) does not empower the mechanical licensing
[[Page 785]]
collective to agree to alter any substantive requirements described in
this section, including but not limited to the required royalty payment
and accounting information and sound recording and musical work
information.
(2) The mechanical licensing collective shall maintain a current,
free, and publicly accessible online list of all agreements made
pursuant to paragraph (l)(1) of this section that includes the name of
the significant nonblanket licensee (and, if different, the trade or
consumer-facing brand name(s) of the services(s), including any specific
offering(s), through which the significant nonblanket licensee engages
in covered activities) and the start and end dates of the agreement. Any
such agreement shall be considered a record that a copyright owner may
access in accordance with 17 U.S.C. 115(d)(3)(M)(ii). Where an agreement
made pursuant to paragraph (l)(1) of this section is made pursuant to an
agreement to administer a voluntary license or any other agreement, only
those portions that vary or supplement the procedures described in this
section and that pertain to the administration of a requesting copyright
owner's musical works must be made available to that copyright owner.
[85 FR 58143, Sept. 17, 2020, as amended at 86 FR 12827, Mar. 5, 2021]
Sec.210.29 Reporting and distribution of royalties to copyright
owners by the mechanical licensing collective.
(a) General. This section prescribes reporting obligations of the
mechanical licensing collective to copyright owners for the distribution
of royalties for musical works, licensed under the blanket license for
digital uses prescribed in 17 U.S.C. 115(d)(1), that have been matched,
either through the processing by the mechanical licensing collective
upon receipt of a report of usage and royalty payment from a digital
music provider, or during the holding period for unmatched works as
defined in 17 U.S.C. 115(d)(3)(H)(i).
(b) Distribution of royalties and royalty statements. (1) Royalty
distributions shall be made on a monthly basis and shall include,
separately or together:
(i) All royalties payable to a copyright owner for a musical work
matched in the ordinary course under 17 U.S.C. 115(d)(3)(G)(i)(II); and
(ii) All accrued royalties for any particular musical work that has
been matched and a proportionate amount of accrued interest associated
with that work.
(2) Royalty distributions based on adjustments to reports of usage
by digital music providers in prior periods shall be made by the
mechanical licensing collective at least once annually, upon submission
of the annual reports of usage by digital music providers reporting
total adjustments to the mechanical licensing collective pursuant to
Sec.210.27(f) and (g)(3) and (4).
(3) Royalty distributions shall be accompanied by corresponding
royalty statements containing the information set forth in paragraph (c)
of this section for the royalties contained in the distribution.
(c) Content--(1) General content of royalty statements. Accompanying
the distribution of royalties to a copyright owner, the mechanical
licensing collective shall provide to the copyright owner a statement
that includes, at a minimum, the following information:
(i) The period (month and year) covered by the statement, and the
period (month and year) during which the reported activity occurred. For
adjustments, the mechanical licensing collective shall report both the
period (month and year) during which the original reported activity
occurred and the date on which the digital music provider reported the
adjustment.
(ii) The name and address of the mechanical licensing collective.
(iii) The name and mechanical licensing collective identification
number of the copyright owner.
(iv) ISNI and IPI name and identification number for each
songwriter, administrator, and musical work copyright owner, to the
extent it has been provided to the mechanical licensing collective by a
copyright owner.
(v) The name and mechanical licensing collective identification
number of the copyright owner's administrator (if applicable), to the
extent one has been provided to the mechanical licensing collective by a
copyright owner.
(vi) Payment information, such as check number, automated clearing
[[Page 786]]
house (ACH) identification, or wire transfer number.
(vii) The total royalty payable to the relevant copyright owner for
the month covered by the royalty statement.
(2) Musical work information. For each matched musical work owned by
the copyright owner for which accompanying royalties are being
distributed to that copyright owner, the mechanical licensing collective
shall report the following information:
(i) The musical work name, including primary and any alternative and
parenthetical titles for the musical work known to the mechanical
licensing collective.
(ii) ISWC for the musical work, to the extent it is known to the
mechanical licensing collective.
(iii) The mechanical licensing collective's standard identification
number of the musical work.
(iv) The administrator's unique identifier for the musical work, to
the extent one has been provided to the mechanical licensing collective
by a copyright owner or its administrator.
(v) The name(s) of the songwriter(s), to the extent they are known
to the mechanical licensing collective.
(vi) The percentage share of musical work owned or controlled by the
copyright owner.
(vii) For each sound recording embodying the musical work, the
identifying information enumerated in paragraph (c)(3) of this section
and the royalty information enumerated in paragraph (c)(4) of this
section.
(3) Sound recording information. (i) For each sound recording
embodying a musical work included in a royalty statement, the mechanical
licensing collective shall report the following information:
(A) The sound recording name(s), including all known alternative and
parenthetical titles for the sound recording.
(B) The featured artist(s).
(ii) The mechanical licensing collective shall report the following
information to the extent it is known to the mechanical licensing
collective:
(A) The record label name(s).
(B) ISRC(s).
(C) The sound recording copyright owner(s).
(D) Playing time.
(E) Album title(s) or product name(s).
(F) Album or product featured artist(s), if different from sound
recording featured artist(s).
(G) Distributor(s).
(H) UPC(s).
(4) Royalty information. The mechanical licensing collective shall
separately report, for each service, offering, or activity reported by a
blanket licensee, the following royalty information for each sound
recording embodying a musical work included in a royalty statement:
(i) The name of the blanket licensee and, if different, the trade or
consumer facing brand name(s) of the service(s), including any specific
offering(s), through which the blanket licensee engages in covered
activities.
(ii) The service tier or service description.
(iii) The use type (download, limited download, or stream).
(iv) The number of payable units, including, as applicable,
permanent downloads, plays, and constructive plays.
(v) A detailed and step-by-step accounting of the calculation of
royalties under applicable provisions of part 385 of this title,
sufficient to allow the copyright owner to assess the manner in which
the royalty owed was determined and the accuracy of the royalty
calculations, which shall include details on each of the components used
in the calculation of the payable royalty pool.
(vi) The royalty rate and amount.
(vii) The interest amount.
(viii) The distribution amount.
(d) Cumulative statements of account, and adjustments. (1) For
royalties reported under paragraph (b)(1)(ii) of this section, the
mechanical licensing collective shall provide a cumulative statement of
account that includes, in addition to the information in paragraph (c)
of this section, a clear identification of the total period covered and
the total royalty payable for the period.
[[Page 787]]
(2) For adjustments reported under paragraph (b)(2) of this section,
the mechanical licensing collective shall clearly indicate the original
reporting period of the royalties being adjusted.
(e) Delivery of royalty statements. (1) Royalty statements may be
delivered electronically, including by providing access to statements
through an online password protected portal, accompanied by written
notification of the availability of the statement in the portal.
(2) The mechanical licensing collective shall provide by request a
separate, simplified report containing fewer data fields that may be
more understandable for the copyright owner, and may provide royalty
information to copyright owners by request in alternative formats.
(3) Upon written request of the copyright owner, the mechanical
licensing collective may deliver a physical statement by mail where the
statement reports a total royalty payable to the copyright owner for the
period covered that is equal or greater than $100. Royalty statements
delivered by mail are not required to contain all information identified
in paragraph (c) of this section, but may instead provide information in
a simplified or summary format.
(f) Clear statements. The information required by paragraph (c) of
this section requires intelligible, legible, and unambiguous statements
in the royalty statements without incorporation of facts or information
contained in other documents or records.
(g) Certification. (1) Each royalty statement in which the total
royalty payable to the relevant copyright owner for the month covered is
equal to or greater than $100 shall be accompanied by:
(i) The name of the person who is signing and certifying the
statement.
(ii) A signature of a duly authorized officer of the mechanical
licensing collective.
(iii) The date of signature and certification.
(iv) The title or official position held by the person who is
signing and certifying the statement.
(v) The following statement: This statement was prepared by the
Mechanical Licensing Collective and/or its agent using processes and
internal controls that were suitably designed to generate monthly
statements that accurately allocate royalties using usage and royalty
information provided by digital music providers and musical works
information as reflected in the Mechanical Licensing Collective's
musical works database.
(2) Beginning in the first calendar year following the license
availability date, the certification must also include a statement
establishing that such processes and internal controls were subject to
an examination, during the past year, by a licensed Certified Public
Accountant in accordance with the attestation standards established by
the American Institute of Certified Public Accountants, the opinion of
whom was that the processes and internal controls were so suitably
designed.
(h) Reporting threshold. (1) Subject to paragraph (h)(2) of this
section, a separate royalty statement shall be provided for each month
during which there is any activity relevant to the distribution of
royalties under the blanket license.
(2) Royalties under the blanket license shall not be considered
payable, and no royalty statement shall be required, until the
cumulative unpaid royalties collected for the copyright owner equal at
least one cent. Moreover, in any case in which the cumulative unpaid
royalties under the blanket license that would otherwise be distributed
by the mechanical licensing collective to the copyright owner are less
than $5 if the copyright owner receives payment by direct deposit, $100
if the copyright owner receives payment by physical check, or $250 if
the copyright owner receives payment by wire transfer, the mechanical
licensing collective may choose to defer the payment date for such
royalties and provide no royalty statements until the earlier of the
time for rendering the royalty statement for the month in which the
unpaid royalties under the blanket license for the copyright owner
exceed the threshold, at which time the mechanical licensing collective
may provide one statement and payment covering the entire period
[[Page 788]]
for which royalty payments were deferred.
(3) Where the mechanical licensing collective elects to defer the
royalty payment and statement to a copyright owner pursuant to paragraph
(h)(2) of this section because the accrued royalties did not exceed the
applicable threshold, and if a copyright owner submits a written
request, the mechanical licensing collective shall make available to
that copyright owner information detailing the accrued unpaid royalties
processed as of the date of the request.
(4) If the mechanical licensing collective is required, under
applicable tax law and regulations, to make backup withholding from its
payments required hereunder, the mechanical licensing collective shall
indicate the amount of such withholding on the royalty statement or on
or with the distribution.
(i) Annual statement. The mechanical license collective shall
provide an annual statement by electronic means to any copyright owner
who has received at least one royalty statement under paragraph (h)(1)
of this section in the calendar year preceding. The annual statement
shall include a cumulative statement of the information reported in the
monthly royalty statements in the year preceding, as well as a statement
of any adjustments to royalty distributions reported in the year
preceding.
[85 FR 58165, Sept. 17, 2020]
Sec.210.30 Temporary exception to certain reporting requirements
about certain permanent download licenses.
(a) Where a requirement of Sec.210.24(b)(8), Sec.210.25(b)(6),
Sec.210.27(c)(5), or Sec.210.28(c)(5) has not been satisfied with
respect to an individual download license or voluntary pass-through
license before April 5, 2021, in connection with a submission to the
mechanical licensing collective before such date, a submitter may take
additional time to comply with such reporting obligations, as amended,
by no later than May 19, 2021. Taking such additional time shall not
render an otherwise compliant notice of license, notice of nonblanket
activity, or report of usage invalid, or provide a basis for the
mechanical licensing collective to reject an otherwise compliant notice
of license, serve a notice of default on an otherwise compliant blanket
licensee, terminate an otherwise compliant blanket license, or engage in
legal enforcement efforts against an otherwise compliant significant
nonblanket licensee. Any deadline otherwise applicable to any such
action by the mechanical licensing collective shall be tolled with
respect to a submitter permitted to take additional time to comply with
these reporting obligations until May 19, 2021.
(b) For purposes of this section, a voluntary pass-through license
is a voluntary license obtained by a licensor of sound recordings to
make and distribute, or authorize the making and distribution of,
permanent downloads embodying musical works through which a digital
music provider or significant nonblanket licensee has obtained authority
from such licensor of sound recordings to make and distribute permanent
downloads of musical works embodied in such sound recordings.
[85 FR 84245, Dec. 28, 2020, as amended at 86 FR 12827, Mar. 5, 2021]
Sec.210.31 Musical works database information.
(a) General. This section prescribes the rules under which the
mechanical licensing collective will provide information relating to
musical works (and shares of such works), and sound recordings in which
the musical works are embodied, in the public musical works database
prescribed by 17 U.S.C. 115(d)(3)(E), and to increase usability of the
database.
(b) Matched musical works. With respect to musical works (or shares
thereof) where the copyright owners have been identified and located,
the musical works database shall contain, at a minimum, the following:
(1) Information regarding the musical work:
(i) Musical work title(s);
(ii) The copyright owner of the musical work (or share thereof), and
the ownership percentage of that owner. The copyright owner of the
musical work owns any one of the exclusive
[[Page 789]]
rights comprised in the copyright for that work. A copyright owner
includes entities, including foreign collective management organizations
(CMOs), to which copyright ownership has been transferred through an
assignment, mortgage, exclusive license, or any other conveyance,
alienation, or hypothecation of a copyright or of any of the exclusive
rights comprised in a copyright, whether or not it is limited in time or
place of effect, but not including a nonexclusive license;
(iii) Contact information for the copyright owner of the musical
work (or share thereof), which can be a post office box or similar
designation, or a ``care of'' address (e.g., publisher);
(iv) The mechanical licensing collective's standard identifier for
the musical work; and
(v) To the extent reasonably available to the mechanical licensing
collective:
(A) Any alternative or parenthetical titles for the musical work;
(B) ISWC;
(C) Songwriter(s), with the mechanical licensing collective having
the discretion to allow songwriters, or their authorized
representatives, to have songwriter information listed anonymously or
pseudonymously. The mechanical licensing collective shall develop and
make publicly available a policy on how the collective will consider
requests by copyright owners or administrators to change songwriter
names to be listed anonymously or pseudonymously for matched musical
works;
(D) Administrator(s) or other authorized entity(ies) who license the
musical work (or share thereof) and/or collect mechanical royalties for
use of such musical work (or share thereof) in the United States;
(E) ISNI(s) and/or IPI(s) for each musical work copyright owner,
and, if different, songwriter, and administrator;
(F) Unique identifier(s) assigned by the blanket licensee, if
reported by the blanket licensee; and
(G) For classical compositions, opus and catalog numbers.
(2) Information regarding the sound recording(s) in which the
musical work is embodied, to the extent reasonably available to the
mechanical licensing collective:
(i) ISRC;
(ii) Sound recording name(s), including all known alternative and
parenthetical titles for the sound recording;
(iii) Information related to the sound recording copyright owner,
including LabelName and PLine. Should the mechanical licensing
collective decide to include DDEX Party Identifier (DPID) in the public
database, the DPID party's name may be included, but not the numerical
identifier;
(iv) Featured artist(s);
(v) Playing time;
(vi) Version;
(vii) Release date(s);
(viii) Producer;
(ix) UPC; and
(x) Other non-confidential information that the MLC reasonably
believes, based on common usage, would be useful to assist in
associating sound recordings with musical works.
(c) Unmatched musical works. With respect to musical works (or
shares thereof) where the copyright owners have not been identified or
located, the musical works database shall include, to the extent
reasonably available to the mechanical licensing collective:
(1) Information regarding the musical work:
(i) Musical work title(s), including any alternative or
parenthetical titles for the musical work;
(ii) The ownership percentage of the musical work for which an owner
has not been identified;
(iii) If a musical work copyright owner has been identified but not
located, the identity of such owner and the ownership percentage of that
owner. The copyright owner of the musical work owns any one of the
exclusive rights comprised in the copyright for that work. A copyright
owner includes entities, including foreign collective management
organizations (CMOs), to which copyright ownership has been transferred
through an assignment, mortgage, exclusive license, or any other
conveyance, alienation, or hypothecation of a copyright or of any of the
exclusive rights comprised in a copyright, whether or not it is limited
[[Page 790]]
in time or place of effect, but not including a nonexclusive license;
(iv) The mechanical licensing collective's standard identifier for
the musical work;
(v) ISWC;
(vi) Songwriter(s), with the mechanical licensing collective having
the discretion to allow songwriters, or their authorized
representatives, to have songwriter information listed anonymously or
pseudonymously. The mechanical licensing collective shall develop and
make publicly available a policy on how the collective will consider
requests by copyright owners or administrators to change songwriter
names to be listed anonymously or pseudonymously for unmatched musical
works;
(vii) Administrator(s) or other authorized entity(ies) who license
the musical work (or share thereof) and/or collect mechanical royalties
for use of such musical work (or share thereof) in the United States;
(viii) ISNI(s) and/or IPI(s) for each musical work copyright owner,
and, if different, songwriter and administrator;
(ix) Unique identifier(s) assigned by the blanket licensee, if
reported by the blanket licensee; and
(x) For classical compositions, opus and catalog numbers.
(2) Information regarding the sound recording(s) in which the
musical work is embodied:
(i) ISRC;
(ii) Sound recording name(s), including all known alternative and
parenthetical titles for the sound recording;
(iii) Information related to the sound recording copyright owner,
including LabelName and PLine. Should the mechanical licensing
collective decide to include DDEX Party Identifier (DPID) in the public
database, the DPID party's name may be included, but not the numerical
identifier;
(iv) Featured artist(s);
(v) Playing time;
(vi) Version;
(vii) Release date(s);
(viii) Producer;
(ix) UPC; and
(x) Other non-confidential information that the MLC reasonably
believes, based on common usage, would be useful to assist in
associating sound recordings with musical works, and any additional non-
confidential information reported to the mechanical licensing collective
that may assist in identifying musical works.
(d) Field labeling. The mechanical licensing collective shall
consider industry practices when labeling fields in the public database
to reduce the likelihood of user confusion, particularly regarding
information relating to sound recording copyright owner. Fields
displaying PLine, LabelName, or, if applicable, DPID, information may
not on their own be labeled ``sound recording copyright owner.''
(e) Data provenance. For information relating to sound recordings,
the mechanical licensing collective shall identify the source of such
information in the public musical works database. For sound recording
information received from a digital music provider, the MLC shall
include the name of the digital music provider.
(f) Historical data. The mechanical licensing collective shall
maintain at regular intervals historical records of the information
contained in the public musical works database, including a record of
changes to such database information and changes to the source of
information in database fields, in order to allow tracking of changes to
the ownership of musical works in the database over time. The mechanical
licensing collective shall determine, in its reasonable discretion, the
most appropriate method for archiving and maintaining such historical
data to track ownership and other information changes in the database.
(g) Personally identifiable information. The mechanical licensing
collective shall not include in the public musical works database any
individual's Social Security Number (SSN), taxpayer identification
number, financial account number(s), date of birth (DOB), or home
address or personal email to the extent it is not musical work copyright
owner contact information required under 17 U.S.C.
115(d)(3)(E)(ii)(III). The mechanical licensing collective shall also
engage in reasonable, good-faith efforts to ensure that other personally
[[Page 791]]
identifying information (i.e., information that can be used to
distinguish or trace an individual's identity, either alone or when
combined with other information that is linked or linkable to such
specific individual), is not available in the public musical works
database, other than to the extent it is required by law.
(h) Disclaimer. The mechanical licensing collective shall include in
the public-facing version of the musical works database a conspicuous
disclaimer that states that the database is not an authoritative source
for sound recording information, and explains the labeling of
information related to sound recording copyright owner, including the
``LabelName'' and ``PLine'' fields.
(i) Ownership. The data in the public musical works database
prescribed by 17 U.S.C. 115(d)(3)(E) is public data not owned by the
mechanical licensing collective or any of the collective's employees,
agents, consultants, vendors, or independent contractors.
[85 FR 86822, Dec. 31, 2020]
Sec.210.32 Musical works database usability, interoperability,
and usage restrictions.
This section prescribes rules under which the mechanical licensing
collective shall ensure the usability, interoperability, and proper
usage of the public musical works database created pursuant to 17 U.S.C.
115(d)(3)(E).
(a) Database access. (1)(i) The mechanical licensing collective
shall make the musical works database available to members of the public
in a searchable, real-time, online format, free of charge. In addition,
the mechanical licensing collective shall make the musical works
database available in a bulk, real-time, machine-readable format through
a process for bulk data management widely adopted among music rights
administrators to:
(A) Digital music providers operating under the authority of valid
notices of license, and their authorized vendors, free of charge;
(B) Significant nonblanket licensees in compliance with their
obligations under 17 U.S.C. 115(d)(6), and their authorized vendors,
free of charge;
(C) The Register of Copyrights, free of charge; and
(D) Any other person or entity, including agents, consultants,
vendors, and independent contractors of the mechanical licensing
collective for any purpose other than the ordinary course of their work
for the mechanical licensing collective, for a fee not to exceed the
marginal cost to the mechanical licensing collective of providing the
database to such person or entity.
(ii) Starting December 31, 2021, the mechanical licensing collective
shall make the musical works database available at least in a bulk,
real-time, machine-readable format under this paragraph (a)(1) through
application programming interfaces (APIs).
(2) Notwithstanding paragraph (a)(1) of this section, the mechanical
licensing collective shall establish appropriate terms of use or other
policies governing use of the database that allows the mechanical
licensing collective to suspend access to any individual or entity that
appears, in the mechanical licensing collective's reasonable
determination, to be attempting to bypass the mechanical licensing
collective's right to charge a fee to recover its marginal costs for
bulk access outlined in 17 U.S.C. 115(d)(3)(E)(v)(V) through repeated
queries, or to otherwise be engaging in unlawful activity with respect
to the database (including, without limitation, seeking to hack or
unlawfully access confidential, non-public information contained in the
database) or misappropriating or using information from the database for
improper purposes. The mechanical licensing collective's terms of use or
other policies governing use of the database shall comply with this
section.
(b) Point of contact for inquiries and complaints. In accordance
with its obligations under 17 U.S.C. 115(d)(3)(D)(ix)(I)(bb), the
mechanical licensing collective shall designate a point of contact for
inquiries and complaints with timely redress, including complaints
regarding the public musical works database and/or the mechanical
licensing collective's activities. The mechanical licensing collective
must make publicly available, including prominently on its website, the
following information:
[[Page 792]]
(1) The name of the designated point of contact for inquiries and
complaints. The designated point of contact may be an individual (e.g.,
``Jane Doe'') or a specific position or title held by an individual at
the mechanical licensing collective (e.g., ``Customer Relations
Manager''). Only a single point of contact may be designated.
(2) The physical mail address (street address or post office box),
telephone number, and email address of the designated point of contact.
[85 FR 86822, Dec. 31, 2020]
Sec.210.33 Annual reporting by the mechanical licensing collective.
(a) General. This section prescribes the rules under which the
mechanical licensing collective will provide certain information in its
annual report pursuant to 17 U.S.C. 115(d)(3)(D)(vii), and a one-time
written update regarding the collective's operations in 2021.
(b) Contents. Each of the mechanical licensing collective's annual
reports shall contain, at a minimum, the following information:
(1) The operational and licensing practices of the mechanical
licensing collective;
(2) How the mechanical licensing collective collects and distributes
royalties, including the average processing and distribution times for
distributing royalties for the preceding calendar year. The mechanical
licensing collective shall disclose how it calculated processing and
distribution times for distributing royalties for the preceding calendar
year;
(3) Budgeting and expenditures for the mechanical licensing
collective;
(4) The mechanical licensing collective's total costs for the
preceding calendar year;
(5) The projected annual mechanical licensing collective budget;
(6) Aggregated royalty receipts and payments;
(7) Expenses that are more than 10 percent of the annual mechanical
licensing collective budget;
(8) The efforts of the mechanical licensing collective to locate and
identify copyright owners of unmatched musical works (and shares of
works);
(9) The mechanical licensing collective's selection of board members
and criteria used in selecting any new board members during the
preceding calendar year;
(10) The mechanical licensing collective's selection of new vendors
during the preceding calendar year, including the criteria used in
deciding to select such vendors, and key findings from any performance
reviews of the mechanical licensing collective's current vendors. Such
description shall include a general description of any new request for
information (RFI) and/or request for proposals (RFP) process, either
copies of the relevant RFI and/or RFP or a list of the functional
requirements covered in the RFI or RFP, the names of the parties
responding to the RFI and/or RFP. In connection with the disclosure
described in this paragraph (b)(10), the mechanical licensing collective
shall not be required to disclose any confidential or sensitive business
information. For the purposes of this paragraph (b)(10), ``vendor''
means any vendor performing materially significant technology or
operational services related to the mechanical licensing collective's
matching and royalty accounting activities;
(11) Whether during the preceding calendar year the mechanical
licensing collective, pursuant to 17 U.S.C. 115(d)(7)(C), applied any
unclaimed accrued royalties on an interim basis to defray costs in the
event that the administrative assessment is inadequate to cover
collective total costs, including the amount of unclaimed accrued
royalties applied and plans for future reimbursement of such royalties
from future collection of the assessment; and
(12) Whether during the preceding calendar year the mechanical
licensing collective suspended access to the public database to any
individual or entity attempting to bypass the collective's right to
charge a fee to recover its marginal costs for bulk access outlined in
17 U.S.C. 115(d)(3)(E)(v)(V) through repeated queries, or to otherwise
be engaging in unlawful activity with respect to the database
(including, without limitation, seeking to hack or unlawfully access
confidential, non-public information contained in the database) or
misappropriating or using information from the database for improper
[[Page 793]]
purposes. If the mechanical licensing collective so suspended access to
the public database to any individual or entity, the annual report must
identify such individual(s) and entity(ies) and provide the reason(s)
for suspension.
(c) December 31, 2021 Update. No later than December 31, 2021, the
mechanical licensing collective shall post, and make available online
for a period of not less than three years, a one-time written report
that contains, at a minimum, the categories of information required in
paragraph (b) of this section, addressing activities following the
license availability date. If it is not practicable for the mechanical
licensing collective to provide information in this one-time report
regarding a certain category of information required under paragraph (b)
of this section, the MLC may so state but shall explain the reason(s)
for such impracticability and, as appropriate, may address such
categories in an abbreviated fashion.
[85 FR 86822, Dec. 31, 2020]
Sec.210.34 Treatment of confidential and other sensitive information.
(a) General. This section prescribes the rules under which the
mechanical licensing collective and digital licensee coordinator shall
ensure that confidential, private, proprietary, or privileged
information received by the mechanical licensing collective or digital
licensee coordinator or contained in their records is not improperly
disclosed or used, in accordance with 17 U.S.C. 115(d)(12)(C), including
with respect to disclosure or use by the board of directors, committee
members, and personnel of the mechanical licensing collective or digital
licensee coordinator.
(b) Definitions. For purposes of this section:
(1) ``Confidential Information'' means sensitive financial or
business information, including trade secrets or information relating to
financial or business terms that could cause competitive disadvantage or
be used for commercial advantage, disclosed by digital music providers,
significant non-blanket licensees, and copyright owners (or any of their
authorized agents or vendors) to the mechanical licensing collective or
digital licensee coordinator. ``Confidential Information'' also means
sensitive personal information, including but not limited to, an
individual's Social Security number, taxpayer identification number,
financial account number(s), or date of birth.
(i) ``Confidential Information'' specifically includes usage data
and other sensitive data used to compute market shares when distributing
unclaimed accrued royalties, sensitive data provided by digital music
providers related to royalty calculations, sensitive data shared between
the mechanical licensing collective and digital licensee coordinator
regarding any significant nonblanket licensee, sensitive data concerning
voluntary licenses or individual download licenses administered by and/
or disclosed to the mechanical licensing collective, and sensitive data
concerning agreements between sound recording companies and digital
music providers. ``Confidential information'' also includes sensitive
financial or business information disclosed to the mechanical licensing
collective or digital licensee coordinator by a third party that is
reasonably designated as confidential by the party disclosing the
information, subject to the other provisions of this section.
(ii) ``Confidential Information'' does not include:
(A) Information that is public or may be made public by law or
regulation, including but not limited to information made publicly
available through:
(1) Notices of license, excluding any addendum that provides a
description of any applicable voluntary license or individual download
license the digital music provider is, or expects to be, operating under
concurrently with the blanket license.
(2) Notices of nonblanket activity, information in the public
musical works database prescribed by 17 U.S.C. 115(d)(3)(E), and
information disclosable through the mechanical licensing collective's
bylaws, annual report, audit report, or the mechanical licensing
collective's adherence to transparency and accountability with respect
to the collective's policies or practices, including its anti-
commingling policy, pursuant to 17 U.S.C. 115(d)(3)(D)(ii),(vii), and
(ix).
[[Page 794]]
(B) Information that at the time of delivery to the mechanical
licensing collective or digital licensee coordinator is public
knowledge, or is subsequently publicly disclosed by the party to whom
the information would otherwise be considered confidential. The party
seeking information from the mechanical licensing collective or digital
licensee coordinator based on a claim that the information sought is a
matter of public knowledge shall have the burden of proving that fact.
(C) Top-level compilation data presented in anonymized format that
does not allow identification of such data as belonging to any specific
digital music provider, significant nonblanket licensee, or copyright
owner.
(2) ``MLC Internal Information'' means sensitive financial or
business information created by or collected by the mechanical licensing
collective for purposes of its internal operations, such as personnel,
procurement, or technology information. ``MLC Internal Information''
does not include:
(i) Information that is public or may be made public by law or
regulation, information in the public musical works database prescribed
by 17 U.S.C. 115(d)(3)(E), and information in the mechanical licensing
collective's bylaws, annual report, audit report, or the mechanical
licensing collective's adherence to transparency and accountability with
respect to the collective's policies or practices, including its anti-
commingling policy, pursuant to 17 U.S.C. 115(d)(3)(D)(ii), (vii), and
(ix); or
(ii) Information that at the time of delivery to the mechanical
licensing collective is public knowledge, or is subsequently publicly
disclosed by the party to whom the information would otherwise be
considered confidential. The party seeking information from the
mechanical licensing collective based on a claim that the information
sought is a matter of public knowledge shall have the burden of proving
that fact.
(3) ``DLC Internal Information'' means sensitive financial or
business information created by or collected by the digital licensee
coordinator for purposes of its internal operations, such as personnel,
procurement, or technology information. ``DLC Internal Information''
does not include:
(i) Information that is public or may be made public by law or
regulation, information in the public musical works database prescribed
by 17 U.S.C. 115(d)(3)(E), and information disclosable through the
digital licensee coordinator's bylaws; or
(ii) Information that at the time of delivery to the digital
licensee coordinator is public knowledge, or is subsequently publicly
disclosed by the party to whom the information would otherwise be
considered confidential. The party seeking information from the digital
licensee coordinator based on a claim that the information sought is a
matter of public knowledge shall have the burden of proving that fact.
(c) Disclosure of Confidential Information. (1) The mechanical
licensing collective shall limit disclosure of Confidential Information
to employees, agents, consultants, vendors, and independent contractors
of the mechanical licensing collective who are engaged in the
collective's authorized functions under 17 U.S.C. 115(d) and activities
related directly thereto and who require access to Confidential
Information for the purpose of performing their duties during the
ordinary course of their work for the mechanical licensing collective,
subject to an appropriate written confidentiality agreement. The
mechanical licensing collective shall not disclose Confidential
Information to members of the mechanical licensing collective's board of
directors and committees, including the collective's Unclaimed Royalties
Oversight Committee, or the digital licensee coordinator's board of
directors or committees.
(2) Notwithstanding paragraph (c)(1) of this section, the mechanical
licensing collective shall be permitted to fulfill its disclosure
obligations under section 115 including, but not limited to:
(i) Providing monthly reports to the digital licensee coordinator
setting forth any significant nonblanket licensees of which the
collective is aware that have failed to comply with the Office's
regulations regarding submission of a notice of nonblanket activity for
purposes of notifying the mechanical licensing collective that the
licensee
[[Page 795]]
has been engaging in covered activities, or regarding the delivery of
reports of usage for the making and distribution of phonorecords of
nondramatic musical works; and
(ii) Preparing and delivering royalty statements to musical work
copyright owners that include the minimum information required in
accordance with 37 CFR 210.29(c), but without including additional
Confidential Information that does not relate to the recipient copyright
owner or relevant songwriter. Once a copyright owner receives a royalty
statement from the mechanical licensing collective, there are no
restrictions on the copyright owner's ability to use the statement or
disclose its contents.
(A) Members of the mechanical licensing collective's board of
directors and committees shall not have access to musical work copyright
owners' royalty statements, except where a copyright owner discloses
their own royalty statement to the members of the mechanical licensing
collective's board of directors or committees. Notwithstanding this
paragraph, members of the mechanical licensing collective's board and
committees are not restricted in accessing their own royalty statements
from the mechanical licensing collective.
(B) The digital licensee coordinator, including members of the
digital licensee coordinator's board of directors and committees, shall
not have access to musical work copyright owners' royalty statements,
except where a copyright owner discloses their own royalty statement to
the mechanical licensing collective's board of directors or committees.
(3) The digital licensee coordinator shall limit disclosure of
Confidential Information to employees, agents, consultants, vendors, and
independent contractors of the digital licensee coordinator who are
engaged in the digital licensee coordinator's authorized functions under
17 U.S.C. 115(d)(5)(C) and activities related directly thereto and
require access to Confidential Information for the purpose of performing
their duties during the ordinary course of their work for the digital
licensee coordinator, subject to an appropriate written confidentiality
agreement. The digital licensee coordinator shall not disclose
Confidential Information to members of the digital licensee
coordinator's board of directors and committees, or the mechanical
licensing collective's board of directors or committees.
(4) In addition to the permitted disclosure of Confidential
Information in this paragraph (c), the mechanical licensing collective
and digital licensee coordinator may disclose Confidential Information
to:
(i) A qualified auditor or outside counsel, pursuant to 17 U.S.C.
115(d)(4)(D), who is authorized to act on behalf of the mechanical
licensing collective with respect to verification of royalty payments by
a digital music provider operating under the blanket license, subject to
an appropriate written confidentiality agreement;
(ii) A qualified auditor or outside counsel, pursuant to 17 U.S.C.
115(d)(3)(L), who is authorized to act on behalf of a copyright owner or
group of copyright owners with respect to verification of royalty
payments by the mechanical licensing collective, subject to an
appropriate written confidentiality agreement; and
(iii) Attorneys and other authorized agents of parties to
proceedings before federal courts, the Copyright Office, or the
Copyright Royalty Judges, or when such disclosure is required by court
order or subpoena, subject to an appropriate protective order or
agreement.
(5) With the exception of persons receiving information pursuant to
paragraph (c)(4) of this section, anyone to whom the mechanical
licensing collective or digital licensee coordinator discloses
Confidential Information as permitted in section shall not disclose such
Confidential Information to anyone else except as expressly permitted in
this section.
(d) Use of Confidential Information. (1) The mechanical licensing
collective shall not use any Confidential Information for any purpose
other than the collective's authorized functions under 17 U.S.C. 115(d)
and activities related directly thereto. Anyone to whom the mechanical
licensing collective discloses Confidential Information as permitted in
this section shall not use any
[[Page 796]]
Confidential Information for any purpose other than in performing their
duties during the ordinary course of their work for the mechanical
licensing collective or as otherwise permitted under paragraph (c)(4) of
this section.
(2) The digital licensee coordinator shall not use any Confidential
Information for any purpose other than its authorized functions under 17
U.S.C. 115(d)(5)(C) and activities related directly thereto. Anyone to
whom the digital licensee coordinator discloses Confidential Information
as permitted in this section shall not use any Confidential Information
for any purpose other than in performing their duties during the
ordinary course of their work for the digital licensee coordinator or as
otherwise permitted under paragraph (c)(4) of this section.
(e) Disclosure and Use of MLC Internal Information and DLC Internal
Information. (1) The mechanical licensing collective may disclose MLC
Internal Information to members of the mechanical licensing collective's
board of directors and committees, including representatives of the
digital licensee coordinator who serve on the board of directors or
committees of the mechanical licensing collective, subject to an
appropriate written confidentiality agreement. The MLC may also disclose
MLC Internal Information to other individuals in its discretion, subject
to the adoption of reasonable confidentiality policies.
(2) Representatives of the digital licensee coordinator who serve on
the board of directors or committees of the mechanical licensing
collective and receive MLC Internal Information may share such MLC
Internal Information with the following persons:
(i) Employees, agents, consultants, vendors, and independent
contractors of the digital licensing coordinator who require access to
MLC Internal Information for the purpose of performing their duties
during the ordinary course of their work for the digital licensee
coordinator, subject to an appropriate written confidentiality
agreement;
(ii) Individuals serving on the board of directors and committees of
the digital licensee coordinator or mechanical licensing collective who
require access to MLC Internal Information for the purpose of performing
their duties during the ordinary course of their work for the digital
licensee coordinator or mechanical licensing collective, subject to an
appropriate written confidentiality agreement;
(iii) Individuals otherwise employed by members of the digital
licensee coordinator who require access to MLC Internal Information for
the purpose of performing their duties during the ordinary course of
their work for the digital licensee coordinator, subject to an
appropriate written confidentiality agreement.
(3) The digital licensee coordinator may disclose DLC Internal
Information to the following persons:
(i) Members of the digital licensee coordinator's board of directors
and committees, subject to an appropriate written confidentiality
agreement; and
(ii) Members of the mechanical licensing collective's board of
directors and committees, including music publisher representatives,
songwriters, and representatives of the digital licensee coordinator who
serve on the board of directors or committees of the mechanical
licensing collective, subject to an appropriate written confidentiality
agreement.
(iii) The DLC may also disclose DLC Internal Information to other
individuals in its discretion, subject to the adoption of reasonable
confidentiality policies.
(f) Safeguarding Confidential Information. The mechanical licensing
collective, digital licensee coordinator, and any person or entity
authorized to access Confidential Information from either of those
entities as permitted in this section, must implement procedures to
safeguard against unauthorized access to or dissemination of
Confidential Information using a reasonable standard of care, but no
less than the same degree of security that the recipient uses to protect
its own Confidential Information or similarly sensitive information. The
mechanical licensing collective and digital licensee coordinator shall
each implement and enforce reasonable policies governing the
confidentiality of their records, subject to the other provisions of
this section.
[[Page 797]]
(g) Maintenance of records. Any written confidentiality agreements
relating to the use or disclosure of Confidential Information must be
maintained and stored by the relevant parties until at least seven years
after disclosures cease to be made pursuant to them.
(h) Confidentiality agreements. The use of confidentiality
agreements by the mechanical licensing collective and digital licensee
coordinator shall not be inconsistent with the other provisions of this
section.
[86 FR 9019, Feb. 11, 2021]
PART 211_MASK WORK PROTECTION--Table of Contents
Sec.
211.1 General provisions.
211.2 Recordation of documents pertaining to mask works.
211.3 Mask work fees.
211.4 Registration of claims of protection in mask works.
211.5 Deposit of identifying material.
211.6 Methods of affixation and placement of mask work notice.
211.7 Reconsideration procedure for refusals to register.
Authority: 17 U.S.C. 702, 908.
Source: 50 FR 26719, June 28, 1985, unless otherwise noted.
Sec.211.1 General provisions.
(a) Mail and other communications with the Copyright Office
concerning the Semiconductor Chip Protection Act of 1984, Pub. L. 98-
620, chapter 9 of title 17 U.S.C., should be sent to the address
specified in Sec.201.1(b) of this chapter.
(b) Section 201.2 of this chapter relating to the information given
by the Copyright Office, and parts 203 and 204 of this chapter
pertaining to the Freedom of Information Act and Privacy Act, shall
apply, where appropriate, to the administration by the Copyright Office
of the Semiconductor Chip Protection Act of 1984, Pub. L. 98-620.
(c) For purposes of this part, the terms semiconductor chip product,
mask work, fixed, commercially exploited, and owner, shall have the
meanings set forth in section 901 of title 17 U.S.C.
[50 FR 26719, June 28, 1985, as amended at 82 FR 9365, Feb. 6, 2017]
Sec.211.2 Recordation of documents pertaining to mask works.
The conditions prescribed in Sec.201.4 of this chapter for
recordation of transfers of copyright ownership and other documents
pertaining to copyright are applicable to the recordation of documents
pertaining to mask works under section 903 of title 17 U.S.C.
[50 FR 26719, June 28, 1985, as amended at 66 FR 34373, June 28, 2001]
Sec.211.3 Mask work fees.
(a) Section 201.3 of this chapter prescribes the fees or charges
established by the Register of Copyrights for services relating to mask
works.
(b) Section 201.6 of this chapter on the payment and refund of
Copyright Office fees shall apply to mask work fees.
[50 FR 26719, June 28, 1985, as amended at 56 FR 59886, Nov. 26, 1991;
59 FR 38372, July 28, 1994; 63 FR 29139, May 28, 1998; 64 FR 29522, June
1, 1999]
Sec.211.4 Registration of claims of protection in mask works.
(a) General. This section prescribes conditions for the registration
of claims of protection in mask works pursuant to section 908 of title
17 U.S.C.
(b) Application for registration. (1) For purposes of registration
of mask work claims, the Register of Copyrights has designated ``Form
MW'' to be used for all applications. Copies of the form are available
free from the Copyright Office website or upon request to the Copyright
Information Section, U.S. Copyright Office, Library of Congress,
Washington, DC 20559- 6000.
(2) An application for registration of a mask work claim may be
submitted by the owner of the mask work, or the duly authorized agent of
any such owner.
(i) The owner of a mask work includes a party that has obtained the
transfer of all of the exclusive rights in the work, but does not
include the transferee of less than all of the exclusive rights, or the
licensee of all or less than all of these rights.
(ii) For purposes of eligibility to claim mask work protection
pursuant to section 902(a)(1)(A) of 17 U.S.C., the
[[Page 798]]
owner of the mask work must be either the initial owner or a person who
has obtained by transfer the totality of rights in the mask work under
the Act.
(3) An application for registration shall be submitted on Form MW
prescribed by the Register under paragraph (b)(1) of this section, and
shall be accompanied by the registration fee and deposit required under
17 U.S.C. 908 and Sec. Sec.211.3 and 211.5 of these regulations. The
application shall contain the information required by the form and its
accompanying instructions, and shall include a certification. The
certification shall consist of:
(i) A declaration that the applicant is authorized to submit the
application and that the statements made are correct to the best of that
person's knowledge; and
(ii) The typed, printed, or handwritten signature of the applicant,
accompanied by the typed or printed name of that person if the signature
is handwritten.
(c) One registration per mask work. (1) Subject to the exception
specified in paragraph (c)(2) of this section, only one registration can
generally be made for the same version of a mask work fixed in an
intermediate or final form of any semiconductor chip product. However,
where an applicant for registration alleges that an earlier registration
for the same version of the work is unauthorized and legally invalid and
submits for recordation a signed affidavit, a registration may be made
in the applicant's name.
(2) Notwithstanding the general rule permitting only one
registration per work, owners of mask works in final forms of
semiconductor chip products that are produced by adding metal-connection
layers to unpersonalized gate arrays may separately register the entire
unpersonalized gate array and the custom metallization layers.
Applicants seeking to register separately entire unpersonalized gate
arrays or custom metallization layers should make the nature of their
claim clear at Space 8 of application Form MW. For these purposes, an
``unpersonalized gate array'' is an intermediate form chip product that
includes a plurality of circuit elements that are adaptable to be
personalized into a plurality of different final form chip products, in
which some of the circuit elements are, or will be, connected as gates.
(d) Registration for one mask work. Subject to the exceptions
specified in paragraph (c)(2) of this section, for purposes of
registration on one application and upon payment of one filing fee, the
following shall be considered one work:
(1) In the case of a mask work that has not been commercially
exploited: All original mask work elements fixed in a particular form of
a semiconductor chip product at the time an application for registration
is filed and in which the owner or owners of the mask work is or are the
same; and
(2) In the case of a mask work that has been commercially exploited:
All original mask work elements fixed in a semiconductor chip product at
the time that product was first commercially exploited and in which the
owner or owners of the mask work is or are the same.
(e) Registration in most complete form. Owners seeking registration
of a mask work contribution must submit the entire original mask work
contribution in its most complete form as fixed in a semiconductor chip
product. The most complete form means the stage of the manufacturing
process which is closest to completion. In cases where the owner is
unable to register on the basis of the most complete form because he or
she lacks control over the most complete form, an averment of this fact
must be made at Space 2 of Form MW. Where such an averment is made, the
owner may register on the basis of the most complete form in his or her
possession. For applicants seeking to register an unpersonalized gate
array or custom metallization layers under paragraph (c)(2) of this
section, the most complete form is the entire chip on which the
unpersonalized gate array or custom metallization layers reside(s), and
registration covers those elements of the chip in which work protection
is asserted.
(f) Corrections and amplifications of prior registration. Except for
errors or omissions made by the Copyright Office, no corrections or
amplifications can be made to the information contained in the record of
a completed registration after the effective date of the
[[Page 799]]
registration. A document purporting to correct or amplify the
information in a completed registration may be recorded in the Copyright
Office for whatever effect a court of competent jurisdiction may later
give to it, if the document is signed by the owner of the mask work, as
identified in the registration record, or by a duly authorized agent of
the owner.
[50 FR 26719, June 28, 1985, as amended at 56 FR 7818, Feb. 26, 1991; 64
FR 36575, July 7, 1999; 66 FR 34374, June 28, 2001; 73 FR 37840, July 2,
2008; 82 FR 9365, Feb. 6, 2017; 83 FR 66630, Dec. 27, 2018]
Sec.211.5 Deposit of identifying material.
(a) General. This section prescribes rules pertaining to the deposit
of identifying material for registration of a claim of protection in a
mask work under section 908 of title 17 U.S.C.
(b) Nature of required deposit. Subject to the provisions of
paragraph (c) of this section, the deposit of identifying material to
accompany an application for registration of a mask work claim under
Sec.211.4 shall consist of:
(1) In the case of a commercially exploited mask work, four
reproductions of the mask work fixed in the form of the semiconductor
chip product in which it was first commercially exploited. Defective
chips may be deposited under this section provided that the mask work
contribution would be revealed in reverse dissection of the chips. The
four reproductions shall be accompanied by a visually perceptible
representation of each layer of the mask work consisting of:
(i) Sets of plastic color overlay sheets;
(ii) Drawings or plots in composite form on a single sheet or on
separate sheets; or
(iii) A photograph of each layer of the work fixed in a
semiconductor chip product.
(2) The visually perceptible representation of a mask work deposited
under this section shall be reproduced on material which can be readily
stored in an 8\1/2\ x 11 inch format, and shall be reproduced at a
magnification sufficient to reveal the basic circuitry design of the
mask work and which shall in all cases be at least 20 times
magnification.
(3) In the case of a mask work that has not been commercially
exploited, one of the following:
(i) Where the mask work contribution in which registration is sought
represents twenty percent or more of the area of the intended final
form, a visually perceptible representation of the work in accordance
with paragraph (b)(1)(i) or (ii) of this section. In addition to the
deposit of visually perceptible representations of the work, an
applicant may, at his or her option, deposit four reproductions in the
most complete form of the mask work as fixed in a semiconductor product.
(ii) Where the mask work contribution in which registration is
sought represents less than twenty percent of the area of the intended
final form, a visually perceptible representation of the work which
reveals the totality of the mask work contribution to a person trained
in the state of the art. The visually perceptible representations may
consist of any combination of plastic color overlay sheets, drawing or
plots in composite form, or a photograph or photographs of the entire
mask set. If the visually perceptible representation fails to identify
all of the elements of the mask work contribution, they may be
accompanied by additional explanatory material. The visually perceptible
representation of a mask work deposited under this section shall be
reproduced on material which can be readily stored in an 8\1/2\ x 11
inch format and shall be of sufficient magnification and completeness to
reveal all elements of the mask work contribution. In addition to the
deposit of visually perceptible representations of the work, an
applicant may, at his or her option, deposit four reproductions in the
most complete form of the mask work as fixed in a semiconductor chip
product.
(c) Trade secret protection. Where specific layers of a mask work
fixed in a semiconductor chip product contain information in which trade
secret protection is asserted, certain material may be withheld as
follows:
(1) Mask works commercially exploited. For commercially exploited
mask works no more than two layers of each five or more layers in the
work. In lieu
[[Page 800]]
of the visually perceptible representations required under paragraphs
(b)(1) and (2) of this section, identifying portions of the withheld
material must be submitted. For these purposes, ``identifying portions''
shall mean:
(i) A printout of the mask work design data pertaining to each
withheld layer, reproduced in microform; or
(ii) Visually perceptible representations in accordance with
paragraphs (b)(1)(i), (ii), or (iii) and (b)(2) of this section with
those portions containing sensitive information maintained under a claim
of trade secrecy blocked out, provided that the portions remaining are
greater than those which are blocked out.
(2) Mask work not commercially exploited. (i) For mask works not
commercially exploited falling under paragraph (b)(3)(i) of this
section, any layer may be withheld. In lieu of the visually perceptible
representations required under paragraph (b)(3) of this section,
``identifying portions'' shall mean:
(A) A printout of the mask work design data pertaining to each
withheld layer, reproduced in microform, in which sensitive information
maintained under a claim of trade secrecy has been blocked out or
stripped; or
(B) Visually perceptible representations in accordance with
paragraph (b)(3)(i) of this section with those portions containing
sensitive information maintained under a claim of trade secrecy blocked
out, provided that the portions remaining are greater than those which
are blocked out.
(ii) The identifying portions shall be accompanied by a single
photograph of the top or other visible layers of the mask work fixed in
a semiconductor chip product in which the sensitive information
maintained under a claim of trade secrecy has been blocked out, provided
that the blocked out portions do not exceed the remaining portions.
(d) Special relief. The Register of Copyrights may decide to grant
special relief from the deposit requirements of this section, and shall
determine the conditions under which special relief is to be granted.
Requests for special relief under this paragraph shall be made in
writing to the Associate Register of Copyrights and Director of
Registration Policy and Practice, P.O. Box 70400, Washington, DC 20024-
0400, shall be signed by the person signing the application for
registration, shall set forth specific reasons why the request should be
granted and shall propose an alternative form of deposit.
(e) Retention and disposition of deposits. (1) Any identifying
material deposited under this section, including material deposited in
connection with claims that have been refused registration, are the
property of the United States Government.
(2) Where a claim of protection in a mask work is registered in the
Copyright Office, the identifying material deposited in connection with
the claim shall be retained under the control of the Copyright Office,
including retention in Government storage facilities, during the period
of protection. After that period, it is within the joint discretion of
the Register of Copyrights and the Librarian of Congress to order its
destruction or other disposition.
[50 FR 26719, June 28, 1985, as amended at 60 FR 34169, June 30, 1995;
73 FR 37840, July 2, 2008; 76 FR 27898, May 13, 2011; 82 FR 9365, Feb.
6, 2017]
Sec.211.6 Methods of affixation and placement of mask work notice.
(a) General. (1) This section specifies methods of affixation and
placement of the mask work notice that will satisfy the notice
requirement in section 909 of title 17 U.S.C. A notice deemed
``acceptable'' under this regulation shall be considered to satisfy the
requirement of that section that it be affixed ``in such manner and
location as to give reasonable notice'' of protection. As provided in
that section, the examples specified in this regulation shall not be
considered exhaustive of the methods of affixation and positions giving
reasonable notice of the claim of protection in a mask work.
(2) The acceptability of a mask work notice under these regulations
shall depend upon its being legible under normal conditions of use, and
affixed in such manner and position that, when affixed, it may be viewed
upon reasonable examination.
(b) Elements of mask work notice. The elements of a mask work notice
shall consist of:
[[Page 801]]
(1) The words mask work, the symbol ``M'' or the symbol ``[om]''
(the letter M in a circle); and
(2) The name of the owner or owners of the mask work or an
abbreviation by which the name is recognized or is generally known.
(c) Methods of affixation and placement of the notice. In the case
of a mask work fixed in a semiconductor chip product, the following
locations are acceptable:
(1) A gummed or other label securely affixed or imprinted upon the
package or other container used as a permanent receptacle for the
product; or
(2) A notice imprinted or otherwise affixed in or on the top or
other visible layer of the product.
[50 FR 26719, June 28, 1985, as amended at 60 FR 34169, June 30, 1995]
Sec.211.7 Reconsideration procedure for refusals to register.
The requirements prescribed in Sec.202.5 of this chapter for
reconsideration of refusals to register copyright claims are applicable
to requests to reconsider refusals to register mask works under 17
U.S.C. chapter 9, unless otherwise required by this part.
[69 FR 77637, Dec. 28, 2004]
PART 212_PROTECTION OF VESSEL DESIGNS--Table of Contents
Sec.
212.1 Scope.
212.2 Fees.
212.3 Registration of claims for protection of eligible designs.
212.4 Affixation and placement of design notice.
212.5 Recordation of distinctive identification of vessel designer.
212.6 Recordation of transfers and other documents.
212.7 Reconsideration procedure for refusals to register.
212.8 Correction of errors in certificates of registration.
Authority: 17 U.S.C. chapter 13.
Source: 64 FR 36578, July 7, 1999, unless otherwise noted.
Editorial Note: Nomenclature changes to part 212 appear at 82 FR
9366, Feb. 6, 2017.
Sec.212.1 Scope.
The provisions of this part apply to the protection and registration
of original designs of vessels under chapter 13 of title 17, United
States Code. Design protection and registration under this part are
separate from copyright protection and registration. Copyright
registration is governed by the provisions of part 202 of this
subchapter.
[64 FR 36578, July 7, 1999, as amended at 82 FR 9366, Feb. 6, 2017]
Sec.212.2 Fees.
Services related to registration of original designs of vessels are
subject to fees prescribed in Sec. Sec.201.3(c) and (d).
[71 FR 31092, June 1, 2006, as amended at 82 FR 9366, Feb. 6, 2017]
Sec.212.3 Registration of claims for protection of eligible designs.
(a) Limitations. Protection is not available for, and an application
for registration will not be accepted for:
(1) An otherwise eligible design made public prior to October 28,
1998;
(2) An otherwise eligible design made public on a date more than two
years prior to the filing of an application for registration under this
section;
(3) A design ineligible for any of the reasons set forth in 17
U.S.C. 1302.
(b) Required elements of application. An application is considered
filed with the Copyright Office on the date on which the following three
items have been received by the Copyright Office:
(1) Completed Form D-VH;
(2) Deposit material identifying the design or designs for which
registration is sought; and
(3) The appropriate fee.
(c) Application by owner of design. An application for registration
under this section may be made only by the owner or owners of the
design, or by the duly authorized agent or representative of the owner
or owners of the design.
(d) Application form. Registration must be made on Form D-VH. Forms
are available from the Copyright Office and may be reprinted from the
Copyright Office's website (http://www.loc.gov /copyright /forms /
formdvh.pdf).
[[Page 802]]
(e) Deposit material--(1) In General. Identification of the design
to be registered may be made in the form of drawings or photographs. No
more than two drawings or photographs of the design may appear on a
single sheet. Applicants may submit up to three 8\1/2\ x
11 sheets containing drawings or photographs as part of the
basic application fee. An additional fee shall be assessed for each page
beyond the first three pages. No combinations of drawings and
photographs may be submitted on a single sheet. The drawings or
photographs that accompany the application must reveal those aspects of
the design for which protection is claimed. The registration extends
only to those aspects of the design which are adequately shown in the
drawings or photographs.
(2) Views. The drawings or photographs submitted should contain a
sufficient number of views to make an adequate disclosure of the
appearance of the design, i.e., front, rear, right and left sides, top
and bottom. While not required, it is suggested that perspective views
be submitted to show clearly the appearance and shape of the three
dimensional designs.
(3) Drawings. (i) Drawings must be in black ink on white 8\1/
2\ x 11 unruled paper. A drawing of a design
should include appropriate surface shading which shows clearly the
character and contour of all surfaces of any 3-dimensional aspects of
the design. Surface shading is also necessary to distinguish between any
open and solid areas of the design. Solid black surface shading is not
permitted except when used to represent the black color as well as color
contrast.
(ii) The use of broken lines in drawings depicting the design is
understood to be for illustrative purposes only and forms no part of the
claimed design. Structure that is not part of the design, but that is
considered necessary to show the environment in which the design is
used, may be represented in the drawing by broken lines. This includes
any portion of the vessel in which the design is embodied or applied
that is not considered part of the design. When the claimed design is
only surface ornamentation to the vessel, the vessel in which it is
embodied must be shown in broken lines.
(iii) When broken lines are used, they should not intrude upon or
cross the depiction of the design and should not be of heavier weight
than the lines used in depicting the design. Where a broken line showing
of environmental structure must necessarily cross or intrude upon the
representation of the design and obscure a clear understanding of the
design, such an illustration should be included as a separate figure, in
addition to other figures which fully disclose the subject matter of the
design.
(4) Photographs. High quality black and white or color photographs
will be accepted provided that they are mounted on plain white 8\1/
2\ x 11 unlined paper and do not exceed two
photographs per sheet. Photographs must be developed on double weight
photographic paper and must be of sufficient quality so that all the
details of the design are plainly visible and are capable of
reproduction on the registration certificate, if issued.
(f) Multiple claims--(1) In general. Claims for more than one design
may be filed in one of two ways. If multiple designs are contained on
the same make and model of a vessel (and therefore, the information in
Space 1 of Form D-VH--the make and model of the vessel that embodies the
design--is the same for each design), one application form may be used
to register all the designs, provided that the information in spaces 3
through 9 is the same for each design. If multiple designs are contained
on more than one make and model of a vessel, or the information in
spaces 3 through 9 is not the same for each of the multiple designs,
then separate applications must be used for each design.
(2) One application. Where one application for multiple designs is
appropriate, a separate Form D-VH/CON must be used for each design
beyond the first appearing on Form D-VH. Each Form D-VH/CON must be
accompanied by deposit material identifying the design that is the
subject of the Form D-VH/CON, and the deposit material must be attached
to the Form D-VH/CON. The Form D-VH and all the
[[Page 803]]
Form D-VH/CONs for the application must be submitted together.
(3) Multiple applications. Where multiple applications for more than
one design are required, a Form D-VH must be completed for each design.
Deposit material identifying the design must accompany each application.
Multiple applications may be filed separately.
(4) Fees. The basic application fee prescribed in Sec.201.3(c) of
this chapter applies to each design submitted, regardless of whether one
application or multiple applications are used.
(g) Written declaration. In lieu of the oath required by 17 U.S.C.
1312(a), the application shall contain a written declaration, as
permitted by 17 U.S.C. 1312(b), signed by the applicant, or the
applicant's duly authorized agent or representative. If the design has
been made public with the design notice prescribed in 17 U.S.C. 1306,
the written declaration shall also describe the exact form and position
of the design notice. The written declaration shall read as follows:
The undersigned, as the applicant or the applicant's duly appointed
agent or representative, being hereby warned that willful false
statements are punishable by fine or imprisonment, or both, under 18
U.S.C. 1001, and that such willful false statements may jeopardize the
validity of this application or any resulting registration, hereby
declares to the best of his/her knowledge and belief:
(1) That the design has been fixed in a useful article;
(2) That the design is original and was created by the designer(s),
or employer if applicable, named in the application;
(3) That those aspects of the design for which registration is
sought are not protected by a design patent;
(4) That the design has not previously been registered on behalf of
the applicant or the applicant's predecessor in title; and
(5) That the applicant is the person entitled to protection and to
registration under chapter 13 of title 17, United States Code.
(h) Priority claims. An applicant seeking the benefit of 17 U.S.C.
1311 because the applicant has, within the previous six months, filed an
application for protection of the same design in a foreign country, must
provide:
(1) Identification of the filing date of the foreign application;
(2) Identification of the foreign country in which the application
was filed;
(3) The serial number or any other identifying number of the foreign
application;
(4) A certified copy of the foreign application;
(5) A translation of the foreign application and a statement, signed
by the translator, that the translation is accurate, if the foreign
application is in a language other than English; and
(6) If requested by the Copyright Office, proof that the foreign
country in which the prior application was filed extends to designs of
owners who are citizens of the United States, or to applications filed
under chapter 13 of title 17, United States Code, similar protection to
that provided under chapter 13 of title 17, United States Code.
(i) Effective date of registration. The effective date of
registration is the date of publication of the registration by the
Copyright Office.
(j) Publication of registration. Publication of registrations of
vessel designs shall be made on the Copyright Office website (http://
www.loc.gov/ copyright/ vessels).
[64 FR 36578, July 7, 1999, as amended at 72 FR 33692, June 19, 2007; 82
FR 9366, Feb. 6, 2017; 83 FR 66630, Dec. 27, 2018]
Sec.212.4 Affixation and placement of design notice.
(a) General. (1) This section specifies the methods of affixation
and placement of the design notice required by 17 U.S.C. 1306. Sections
1306 and 1307 govern the circumstances under which a design notice must
be used and the effect of omission of a design notice. A notice deemed
acceptable under this part shall be considered to satisfy the
requirements of section 1306 that it be so located and applied as to
give reasonable notice of design protection while the useful article
embodying the design is passing through its normal channels of commerce.
As provided in that section, the examples specified in this part shall
not be considered exhaustive of the methods of affixation and locations
giving reasonable notice of the claim of protection in the design.
(2) The acceptability of a design notice under these regulations
shall depend upon its being legible under normal conditions of use, and
affixed in
[[Page 804]]
such a manner and position that, when affixed, it may be viewed upon
reasonable examination. There is no requirement that a design notice be
permanently embossed or engraved into a vessel hull or deck, but it
should be affixed in such a manner that, under normal conditions of use,
it is not likely to become unattached or illegible.
(b) Elements of a design notice. If the design has been registered,
the registration number may be included in the design notice in place of
the year of the date on which protection for the design commenced and
the name of the owner, an abbreviation by which the name can be
recognized, or a generally accepted alternative designation of the
owner. The elements of a design notice shall consist of:
(1) The words ``Protected Design'', the abbreviation ``Prot'd
Des.'', or the letter ``D'' within a circle, or the symbol *D*;
(2) The year of the date on which protection for the design
commenced; and
(3) The name of the owner, an abbreviation by which the name can be
recognized, or a generally accepted alternative designation of the
owner.
(c) Distinctive identification. Any distinctive identification of an
owner may be used for purposes of paragraph (b)(3) of this section if it
has been recorded by the Register of Copyrights pursuant to Sec.212.5
before the design marked with such identification is registered.
(d) Acceptable locations of notice. The following are acceptable
means of affixing and placement of a design notice:
(1) In close proximity to the identification number required by 33
CFR 181.23;
(2) In close proximity to the driver's console such that it is in
plain view from the console;
(3) If the vessel is twenty feet in length or less and is governed
by 33 CFR 183.21, in close proximity to the capacity marking; and
(4) In close proximity to the make and/or model designation of the
vessel.
[64 FR 36578, July 7, 1999, as amended at 82 FR 9366, Feb. 6, 2017]
Sec.212.5 Recordation of distinctive identification of vessel
designer.
(a) General. Any owner of a vessel design may record a distinctive
identification with the Register of Copyrights for purposes of using
such distinctive identification in a design protection notice required
by 17 U.S.C. 1306. A distinctive identification of an owner may not be
used in a design notice before it has first been recorded with the
Register.
(b) Forms. The Copyright Office does not provide forms for the use
of persons recording distinctive identifications of ownership of a
vessel design. However, persons recording distinctive identifications
are encouraged to use the suggested format available on the Copyright
Office website (http://www.loc.gov/ copyright/vessels).
(c) Recording distinctive identifications. Any distinctive
identification of an owner of a vessel design may be recorded with the
Register of Copyrights provided that a document containing the following
is submitted:
(1) The name and address of the owner;
(2) A statement of the owner that he/she is entitled to use the
distinctive identification;
(3) A statement or depiction of the identification; and
(4) The recordation fee in the amount prescribed in Sec.201.3(c)
of this chapter.
(d) The document should be mailed to the address specified in Sec.
201.1(b)(2) of this chapter.
[64 FR 36578, July 7, 1999, as amended at 67 FR 38005, May 31, 2002; 72
FR 33692, June 19, 2007; 82 FR 9366, Feb. 6, 2017]
Sec.212.6 Recordation of transfers and other documents.
The conditions prescribed in Sec.201.4 of this chapter for
recordation of transfers of copyright ownership and other documents
pertaining to copyright are applicable to the recordation of documents
pertaining to the protection of vessel designs under 17 U.S.C. chapter
13.
[64 FR 36578, July 7, 1999, as amended at 82 FR 9366, Feb. 6, 2017]
[[Page 805]]
Sec.212.7 Reconsideration procedure for refusals to register.
The requirements prescribed in Sec.202.5 of this chapter for
reconsideration of refusals to register copyright claims are applicable
to requests to reconsider refusals to register vessel designs under 17
U.S.C. chapter 13, unless otherwise required by this part.
[69 FR 77637, Dec. 28, 2004]
Sec.212.8 Correction of errors in certificates of registration.
(a) General. (1) This section prescribes conditions relating to the
correction of clerical or typographical errors in a certificate of
registration of a vessel design, under section 1319 of title 17 of the
United States Code, as amended by Public Law 105-304.
(2) For the purposes of this section, a basic registration means
registration of a vessel design made under sections 1310 through 1314 of
title 17 of the United States Code, as amended by Public Law 105-304.
(3) No correction of the information in a basic registration will be
made except pursuant to the provisions of this Sec.212.8. As an
exception, where it is discovered that the record of a vessel design
registration contains a clerical or typographical error made by the
Copyright Office, the Office will take appropriate measures to rectify
its error. Correction will be made only of clerical or typographical
errors; errors of a different nature cannot be corrected and there is no
procedure to amplify the registration record with additional
information.
(b) Application for correction of error in certificate. At any time
after registration of a vessel design, the Copyright Office will correct
a clerical or typographical error in the registration upon the
application of the owner of the registered design or the owner's
authorized agent.
(c) Form and content of application to correct registration. (1) An
application to correct a registration shall be made on a form prescribed
by the Copyright Office, shall be accompanied by the appropriate filing
fee identified in Sec.201.3(c) and shall contain the following
information:
(i) The make and model of the vessel that embodies the registered
design;
(ii) The registration number of the basic registration;
(iii) The year when the basic registration was completed;
(iv) The name or names of the designer or designers of the vessel
design, and the owner or owners of the vessel design, as they appear in
the basic registration;
(v) The space number and heading or description of the part of the
basic registration where the error occurred;
(vi) A transcription of the erroneous information as it appears in
the basic registration;
(vii) A statement of the correct information as it should have
appeared;
(viii) If desired, an explanation of the error or its correction;
(ix) The name and address:
(A) To which the correspondence concerning the application should be
sent; and
(B) To which the certificate of correction should be mailed; and
(x) The certification shall consist of:
(A) The typed, printed, or handwritten signature of the owner of the
registered design or of the duly authorized agent of such owner (who
shall also be identified);
(B) The date of the signature and, if the signature is handwritten,
the typed or printed name of the person whose signature appears; and
(C) A statement that the person signing the application is the owner
of the registered design or of the duly authorized agent of such owner,
and that the statements made in the application are correct to the best
of that person's knowledge.
(2) The form prescribed by the Copyright Office for the foregoing
purposes is designated ``Application to Correct a Design Registration
(Form DC)''. Copies of the form are available free upon request to the
Public Information Office, Library of Congress, Copyright Office, 101
Independence Avenue SE., Washington, DC 20559-6000 or on the Copyright
Office website at http://www.copyright.gov / forms/ formdc.pdf.
(3) Copies, phonorecords or supporting documents cannot be made
[[Page 806]]
part of the record of a corrected certificate of registration and should
not be submitted with the application.
(d) Fee. The filing fee for an application to correct a certificate
of registration of a vessel design is prescribed in Sec.201.3(c).
[71 FR 46402, Aug. 14, 2006, as amended at 82 FR 9366, Feb. 6, 2017; 83
FR 66630, Dec. 27, 2018]
SUBCHAPTER B [RESERVED]
[[Page 807]]
INDEX TO CHAPTER II_COPYRIGHT OFFICE, LIBRARY OF CONGRESS
Editorial Note: This listing is provided for informational purposes
only. It is compiled and kept current by the Library of Congress. This
index is updated as of July 1, 2021.
Section
Auditor's Reports, and other verification information filed in the
Copyright Office for digital audio recording devices or media.....201.29
Access to, and confidentiality of, Statements of Account for
digital audio recording devices or media..........................201.29
Account (Statements of) for digital audio recording devices or
media.............................................................201.28
Accounts, deposit..................................................201.6
Acquisition and deposit of unpublished television transmission
programs..........................................................202.22
Address, general purpose.......................................201.1 (a)
Addresses, special limited......................................201.1(c)
Addresses prescribed for communications with the Copyright Office
201.1, 201.2,
Administrative classification and application forms for
registration.................................................202.3(b)(2)
Form and content of application for supplementary registration.....202.6
Group registration of related serials, letter affirming submission
of copies to Library of Congress................................202.4(d)
Inspection and copying of records............................201.2(b)(5)
Legal processes......................................................205
Advance notices of potential infringement.........................201.22
Affixation (methods of) of copyright notice and positions on works
211.6
Amend or correct individual's record under Privacy Act, Appeal of
refusal to.........................................................204.8
Amendment or correction of records under Privacy Act, Request for
204.7
Annual Statements of Account, Contents of......................201.28(f)
Anti-circumvention, (circumvention), Exemptions to prohibition
against...........................................................201.40
Architectural works...............................................202.11
Architectural works, Deposit of.......................202.20(c)(2)(i)(M)
Archives and libraries, Warnings of copyright for use by..........201.14
Arts (visual), registration of (see Pictorial, graphic &
sculptural works).........................................202.10, 202.20
Arts (visual) registry............................................201.25
Audio (digital) recording devices or media, Initial notice of
distribution of...................................................201.27
Audio (digital) recording devices or media, Statements of Account
for...............................................................201.28
Auditor's Reports filed in Copyright Office for digital audio
recording devices or media (Access to, and confidentiality of)....201.29
Auditor's Reports (In general)............................201.28, 201.29
Best Edition......................202.19, 202.20, Appendix B to Part 202
Cable and satellite statutory licenses.................201.11 and 201.17
Cable compulsory license, Application of the 3.75% rate...........201.17
Cable contracts for systems outside 48 contiguous states,
Recordation of....................................................201.12
[[Page 808]]
Cable systems, Statements of Account covering compulsory licenses
for secondary transmissions by....................................201.17
Cancellation of completed registrations............................201.7
Cartographic (three-dimensional) representations of area, such as
globes and relief models..........................202.20(c)(2)(xi)(B)(1)
Certification and Documents Section, Information and Reference
Division, as address for certain notices and requests...........201.1(c)
Certification of copies or documents, Requests for..............201.2(d)
Certification (official) defined.............................201.4(c)(5)
Circumvention, Exemptions to prohibition against..................201.40
Claimants, Copyright applications..................................202.3
Collective works, Deposit of contributions to...........202.20(c)(2)(xv)
Commercial prints and labels, Deposit of.................202.20(c)(2)(v)
Communications with Copyright Office, Addresses prescribed for
(see Addresses for communication)..................................201.1
Complete copy defined for mandatory deposit only............202.19(b)(2)
Complete copy for purposes of registration, Definition of...202.20(b)(2)
Compulsory license for making/distributing phonorecords of
nondramatic musical works, Notice of intention to obtain..........201.18
Compulsory license for making/distributing phonorecords of
nondramatic musical works, Royalties and statements of account
under...................................................210.11 to 210.19
Compulsory license for secondary transmissions by cable systems,
Statements of Account covering....................................201.17
Computer programs and databases embodied in machine-readable
copies other than CD-ROM format, Deposit of............202.20(c)(2)(vii)
Computer shareware, Recordation of documents pertaining to........201.26
Computer software (public domain), Recordation of documents
regarding donation of.............................................201.26
Confidentiality of, and access to, Statements of Account,
Auditor's Reports, and other verification information filed in the
Copyright Office for digital audio recording devices or media.....201.29
Congress (Library of), Deposit of published copies or phonorecords
for...............................................................202.19
Congress (Library of), Transfer of unpublished copyright deposits
to................................................................201.23
Contents of Statements of Account covering compulsory licenses for
secondary cable transmissions..................................201.17(e)
Contributions to collective works, Deposit of...........202.20(c)(2)(xv)
Copies and phonorecords, Deposit for copyright registration of....202.20
Copies containing both visually perceptible and machine-readable
material other than a CD-ROM format, Deposit of.........202.20(c)(2)(ix)
Copies, Deposit of identifying material instead of................202.21
Copies deposited, Return of.....................................201.6(d)
Copies of records or deposits, Requests for..................201.1(c)(4)
Copies or phonorecords (published) for the Library of Congress,
Deposit of........................................................202.19
Copy (complete) defined for mandatory deposit only..........202.19(b)(2)
Copying of records and indexes (Inspection and).................201.2(b)
Copying of records under Freedom of Information Act [FOIA]
(Inspection and)...................................................203.5
Copyright deposits, Full-term retention of........................202.23
Copyright deposits (unpublished), Transfer to Library of Congress
of................................................................201.23
Copyright, Material not subject to.................................202.1
Copyright notice, General..........................................202.2
Copyright notice, Methods of affixation and position...............211.6
Copyright Office fees. See Fees....................................201.3
Copyright Office, Information given by.............................201.2
[[Page 809]]
Copyright Office, Proper address for mail and other communications
with...............................................................201.1
Copyright, Registration of claims to...............................202.3
Copyright restoration for certain motion pictures and their
contents under NAFTA, \1\ Procedures for..................201.33, 202.12
---------------------------------------------------------------------------
\1\ NAFTA is the acronym for North American Free Trade Agreement.
---------------------------------------------------------------------------
Copyright restoration under Uruguay Round Agreements Act..........201.33
Copyright Warning for software lending by nonprofit libraries.....201.24
Correction or amendment of records under Privacy Act, Request for
204.7
Corrections and amplifications of copyright registrations.......202.6(d)
Correspondence (official), Access and requests for copies of....201.2(c)
& (d)
Databases and computer programs embodied in machine-readable
copies other than CD-ROM format, Deposit of............202.20(c)(2)(vii)
Date of recordation defined..........................201.4(g), 201.26(f)
Definitions:
Advance Notice of Potential Infringement....................201.22(a)(1)
Annual Statement of Account (compulsory license)........210.11 to 210.19
Architectural works............................................202.11(b)
Basic registration...........................................202.6(b)(1)
Best edition..................................202.19(b)(1), 202.20(b)(1)
Cable system................................................201.17(b)(2)
Cancellation....................................................201.7(a)
Certification (official).....................................201.4(c)(5)
Complete copy (deposit for registration)....................202.20(b)(2)
Complete copy (mandatory deposit)...........................202.19(b)(2)
Computer shareware.............................................201.26(b)
Contributions to collective works.......................202.20(b)(2)(iv)
Current base rate (cable systems)........................201.17(h)(1)(i)
Date of recordation............................................201.26(f)
Digital subscription transmissions, Initial notice of use of works
201.35 - 201.37
Display Warning of Copyright................................201.14(a)(1)
Distant signal equivalent...................................201.17(b)(5)
Distributor (satellite carrier)................................201.11(b)
Document designated as pertaining to computer shareware.....201.26(b)(2)
Gross receipts for basic service (cable systems)............201.17(b)(1)
Individual (Privacy Act)........................................204.2(a)
Local service area of a primary transmitter.................201.17(b)(5)
Monthly Statement of Account (compulsory license).................210.16
Motion pictures........................................202.20(b)(2)(vii)
Musical scores..........................................202.20(b)(2)(vi)
NAFTA \1\ work..............................................201.33(b)(1)
Network station (satellite carrier)............................201.11(b)
Notice (initial) of Distribution of Digital Audio Recording
Devices........................................................201.27(b)
Notice of objection to certain noncommercial performances......201.13(a)
Off-the-air copying............................................202.22(c)
Order Warning of Copyright..................................201.14(a)(2)
Posthumous work (renewal)...................................202.17(b)(3)
Pre-1972 sound recordings, noncommercial use......................202.37
Pre-1972 sound recordings, notices of contact information for
transmitting entities.............................................202.36
Pre-1972 sound recordings, schedules..............................202.35
Primary transmission (satellite carrier)....................201.11(b)(2)
Privacy Act........................................................204.2
Private home viewing (satellite carrier).......................201.11(b)
Public domain computer software.............................201.26(b)(3)
Publication (NAFTA) \1\........................................201.33(g)
Record (Privacy Act)............................................204.2(c)
[[Page 810]]
Registration (supplementary).......................................202.6
Registration of claims to copyright, Group registration options
202.3(b)(5)
Reliance party..............................................201.33(b)(2)
Renewal (posthumous work)...................................202.17(b)(3)
Restored work...............................................201.33(b)(3)
Routine use (Privacy Act).......................................204.2(e)
Satellite carrier..............................................201.11(b)
Secondary transmission (satellite carrier)..................201.11(b)(2)
Secure test.................................................202.20(b)(3)
Sound recordings.........................................202.20(b)(2)(v)
Source country..............................................201.33(b)(4)
Subscriber (satellite carrier).................................201.11(b)
Superstation (satellite carrier)...............................201.11(b)
Supplementary registration.........................................202.6
System of records (Privacy Act).................................204.2(d)
Unserved household (satellite carrier).........................201.11(b)
Warning of Copyright for Software Rental.......................201.24(a)
Deposit accounts................................................201.6(b)
Deposit (Acquisition and) of unpublished television transmission
programs..........................................................202.22
Deposit (mandatory) of published copies or phonorecords for
Library of Congress...............................................202.19
Deposit, Nature of required.................................202.20(c)(1)
Deposit of copies for registration by category:
Architectural works......................................202.20(c)(2)(M)
Certain pictorial and graphic works.....................202.20(c)(2)(iv)
Commercial prints and labels.............................202.20(c)(2)(v)
Computer programs and databases embodied in machine-readable
copies other than CD-ROM format........................202.20(c)(2)(vii)
Contributions to collective works.......................202.20(c)(2)(xv)
Generally................................................202.20(c)(2)(i)
Group registration of serials.........................202.20(c)(2)(D)(5)
Holograms..............................................202.20(c)(2)(iii)
Machine-readable copies of works other than computer programs,
databases, and works fixed in a CD-ROM format.........202.20(c)(2)(viii)
Oversize deposits.....................................202.20(c)(2)(xiii)
Phonorecords...........................................202.20(c)(2)(xvi)
Pictorial advertising material.........................202.20(c)(2)(xiv)
Soundtracks............................................202.20(c)(2)(xii)
Tests...................................................202.20(c)(2)(vi)
Works fixed in a CD-ROM format.........................202.20(c)(2)(xix)
Works reproduced in or on sheetlike materials............202.20(c)(2)(x)
Works reproduced in or on three-dimensional objects.....202.20(c)(2)(xi)
Deposit of copies for registration (special relief)............202.20(d)
Deposit of copies under 17 U.S.C. 407, Presumption as to.......202.19(f)
Deposit of identifying material instead of copies.................202.21
Deposit of identifying material (Mask works).......................211.5
Deposit of oversize material..........................202.20(c)(2)(xiii)
Deposit requirements under 17 U.S.C. 407(a), Exemption from....202.19(c)
Deposits (copyright), Full-term retention of......................202.23
Deposits, Requests for copies of.............................201.1(c)(4)
Deposits (unpublished copyright), Transfer to Library of Congress
of................................................................201.23
Designs, Protection of original designs of vessel hulls...212.1 to 212.6
Designation of the Mechanical Licensing Collective and Digital
Licensee Coordinator..............................................210.10
Designation of agent to receive notification of claimed
infringement............................................201.38(b)(1)(ii)
[[Page 811]]
Digital audio recording devices or media (Access to, and
confidentiality of, Statements of Account, Auditor's Reports, and
other verification information filed in the Copyright Office for)
201.29
Digital audio recording devices or media, Initial notice of
distribution of...................................................201.27
Digital audio recording devices or media, Statements of account
for...............................................................201.28
Digital phonorecord deliveries, compulsory license for making and
distributing phonorecords.........................................201.18
Disruption of postal or other transportation or communications
services...........................................................201.8
Documents pertaining to computer shareware, and public domain
computer software, Recordation of.................................201.26
Documents, recordable...........................................201.4(c)
Documents, Recordation of..........................................201.4
Errors corrected by supplementary registration.....................202.6
Errors (minor) or omissions in registration.....................201.7(d)
Exemption from deposit requirements under 17 U.S.C. 407(a).....202.19(c)
Exemption to prohibition on circumvention of copyright protection
systems for access control technologies...........................201.40
Extended renewal term, Notices of termination of transfers and
licenses covering.................................................201.10
Fees, Generally for Copyright Office services......................201.3
Freedom of Information Act...........................................203
Licensing Division service fees.................................201.3(e)
Mask works......................................................201.3(c)
Payment and Refunds................................................201.6
Privacy Act........................................................204.6
Registration, recordation and related services.................201.3 (c)
Special services................................................201.3(d)
Vessel hull designs.........................................212.2, 212.5
Fees, Information on royalty payments or fees. See Royalty or Royalties.
Forms for recordation not provided by Copyright Office..........201.4(b)
Forms, Registration..........................................202.3(b)(2)
Forty-eight contiguous states, Recordation of certain contracts by
cable systems located outside of..................................201.12
Freedom of Information Act (FOIA), Electronic Records, public inspection
and search................................................203.3 to 203.6
Freedom of Information Act (FOIA): Policies and Procedures......Part 203
Authority and functions............................................203.2
In general.........................................................203.1
Inspection and copying.............................................203.5
Methods of operation...............................................203.4
Organization [of the Copyright Office].............................203.3
Schedule of fees and methods of payment for services rendered.....203.11
Full-term retention of copyright deposits.........................202.23
GAP in termination provisions.....................................201.10
Graphic works, Pictorial, sculptural, and.........................202.10
Group registration options.........................................202.4
Holograms, Deposit of..................................202.20(c)(2)(iii)
Identifying material instead of copies, Deposit of................202.21
Identifying material for Mask works, Deposit of....................211.5
Indexes. See Records.
Individual defined for purposes of Privacy Act..................204.2(a)
Information (Freedom of) Act. See Freedom of Information Act (FOIA).
Information given by Copyright Office..............................201.2
Infringement, Advance notices of potential........................201.22
Initial notice of distribution of digital audio recording devices
or media..........................................................201.27
[[Page 812]]
Inquiries by mail, etc.; addresses..............................201.1(b)
Inspection and copying of records...............................201.2(b)
Inspection and copying of records under the Freedom of Information
Act (FOIA).........................................................203.5
Interest payments by cable systems on late-filed and underpaid
royalties.........................................................201.17
Labels, Deposit of commercial prints and.................202.20(c)(2)(v)
Legal processes:
see Service of process
Complaints process on register or employee........................205.12
Complaints served on the Register pursuant to Sec.411(a)........205.13
Court notices to the Register pursuant to Sec.508...............205.15
Court requests to the Register pursuant to Sec.411(b)(2)........205.14
General provisions........................................205.1 to 205.5
Production of documents in proceedings in which the Office is not
a party...........................................................205.22
Scope of testimony in proceedings in which the Office is not a
party.............................................................205.23
Service of Sec.411(a) notice.....................................205.1
Service of process......................................205.11 to 205.13
Lending of software by nonprofit libraries, Warning of copyright
for...............................................................201.24
Library of Congress, Deposit of published copies or phonorecords
for...............................................................202.19
Library of Congress, Transfer of unpublished copyright deposits to
201.23
Libraries and archives, Notice of normal commercial exploitation
or availability at reasonable price...............................201.39
Libraries and archives, Warning of copyright for use by...........201.14
Libraries (Nonprofit), Warning of copyright for software lending
by................................................................201.24
License (compulsory) for making/distributing phonorecords of
nondramatic musical works, Notice of intention to obtain..........201.18
Licenses and transfers covering extended renewal term, Notices of
termination of....................................................201.10
Licenses (compulsory) for secondary transmissions by cable
systems, Statements of account covering...........................201.17
Licenses (statutory) for secondary transmissions for private home
viewing, Satellite carrier statements of account covering.........201.11
Licensing Division; inquiries/address........................201.1(c)(5)
Machine-readable copies of works other than computer programs,
databases, and works fixed in a CD-ROM format, Deposit of
202.20(c)(2)(viii)
Machine-readable copies other than CD-ROM format, Computer
programs and databases embodied in.....................202.20(c)(2)(vii)
Mail and other communications with Copyright Office, Proper
address for........................................................201.1
Mail, disruption of................................................201.8
Mask Work Protection:
Deposit of identifying material....................................211.5
General provisions.................................................211.1
Mask work fees...........................................201.3(c), 211.3
Methods of affixation and placement of mask work notice............211.6
Recordation of documents pertaining to mask works..................211.2
Registration of claims of protection for mask works................211.4
Mandatory deposit copies.....................................201.1(c)(6)
Mandatory deposit of published electronic works available only
online.................................................202.19 and 202.24
Material not subject to copyright..................................202.1
Media, Initial notice of distribution of digital audio recording
devices or........................................................201.27
Motion pictures and their contents, Procedures for copyright
restoration in accordance with NAFTA \1\ for certain...201.33(b), 202.12
[[Page 813]]
Motion pictures, Deposit of.............................202.20(c)(2)(ii)
Musical works (nondramatic), Notice of intention to obtain
compulsory license for making/distributing phonorecords of........201.18
NAFTA, \1\ Procedures for copyright restoration of certain motion
pictures and the contents in accordance with......................201.33
Noncommercial performances of nondramatic literary or musical
works, Notices of objection to certain............................201.13
Nondramatic literary or musical works, Notices of objection to
certain noncommercial performances of.............................201.13
Nondramatic musical works, Notice of intention to obtain
compulsory license for making/distributing phonorecords of........201.18
Nondramatic musical works, Royalties and statements of account
under compulsory license for making/distributing phonorecords of
210.11 to 210.19
Nonprofit libraries, Warning of copyright for lending of software
by................................................................201.24
Notice (Mask work), Method of affixation and placement of..........211.6
Notice of copyright................................................202.2
Notice (initial) of distribution of digital audio recording
devices or media..................................................201.27
Notices of iIntent to eEnforce a restored copyright, Correction
notices, Procedures for filing....................................201.34
Notices of iIntent to eEnforce a restored copyright under the
Uruguay Round Agreements Act, Procedures for filing...............201.33
Notice of intention to obtain compulsory license for making/
distributing phonorecords.........................................201.18
Notices (advance) of potential infringement.......................201.22
Notices of objection to certain noncommercial performances of
nondramatic literary or musical works.............................201.13
Notices of termination of transfers and licenses covering extended
renewal term......................................................201.10
Objection (Notice of) to certain noncommercial performances of
nondramatic literary or musical works.............................201.13
Off-the-air copying of unpublished television transmission
programs.......................................................202.22(c)
Online registration of claims to copyright..............202.3 and 202.20
Oversize deposits.....................................202.20(c)(2)(xiii)
Performances of nondramatic literary or musical works, Notices of
objection to certain noncommercial................................201.13
Phonorecords, Deposit for copyright registration..................202.20
Phonorecords for Library of Congress, Deposit of published........202.19
Phonorecords of nondramatic musical works, Notice of intention to
obtain compulsory license for making/distributing.................201.18
Phonorecords of nondramatic musical works, Royalties and
statements of account under compulsory license for making/
distributing............................................210.11 to 210.19
Photographs, Group Registration of......................202.4(c)(2)(h-i)
Pictorial advertising material, Deposit of.............202.20(c)(2)(xiv)
Pictorial, graphic, and sculptural works..........................202.10
Preregistration of certain unpublished copyright claims...........202.16
Presumption as to deposit of copies under 17 U.S.C. 407........202.19(f)
Prints (commercial) and labels, Deposit of...............202.20(c)(2)(v)
Privacy Act: Policies and Procedures............................Part 204
Appeal of refusal to correct or amend an individual's record.......204.8
Definitions........................................................204.2
Fees...............................................................204.6
General policy.....................................................204.3
Judicial review....................................................204.9
Procedure for notification of the existence of records pertaining
to individuals.....................................................204.4
Procedures for requesting access to records........................204.5
Request for correction or amendment of records.....................204.7
[[Page 814]]
Private home viewing, Satellite carrier statements of account
covering statutory licenses for secondary transmissions for.......201.11
Procedures for copyright restoration in U.S.A. of certain motion
pictures and their contents in accordance with NAFTA \1\..........201.31
Program, registration......202.5, 202.12, 202.19, 202.20, 202.21, 203.3,
211.5
Prohibition on Circumvention of Copyright Protection Systems for
Access Control Technologies....................................201.40(b)
Public domain computer software, Recordation of documents
pertaining to donation of.........................................201.26
Published copies or phonorecords, Deposit (mandatory) for Library
of Congress.......................................................202.19
Published electronic works available only online, Mandatory
deposit of.............................................202.19 and 202.24
Reconsideration procedure..........................................202.5
Record of individual under Privacy Act, Appeal of refusal to
correct or amend...................................................204.8
Recordability of documents (general requirements)...............201.4(c)
Recordation, Date of............................................201.4(e)
Recordation fees...................................................201.3
Recordation forms not necessary.................................201.4(b)
Recordation of cable contracts for systems outside the 48
contiguous states.................................................201.12
Recordation of transfers and other documents.......................201.4
Recording devices (digital audio) or media, Initial notice of
distribution of...................................................201.27
Recording devices (digital audio) or media, Statements of account
for...............................................................201.28
Records and indexes, Inspection and copying of..................201.2(b)
Records; filings; addresses for requests...........................201.1
Records, Request under Privacy Act for amendment or correction of
204.7
Records (System of) under Privacy Act...........................204.2(d)
Records under Freedom of Information Act (FOIA), Inspection and
copying of.........................................................203.5
Reference and Bibliography Section as address for search requests
201.1
Refund of Copyright Office fees....................................201.6
Refusal to correct or amend an individual's record, Appeal of......204.8
Registration (basic), Effect of supplementary registration on......202.6
Registration (copyright), Deposit of copies and phonorecords for
202.20
Registration, Effective date of....................................202.4
Registration of claims to copyright, Group registration options....202.3
Registration of copyright..........................................202.3
Registration of group of related works.......................202.3(b)(5)
Automated databases..........................................202.3(b)(5)
Contributions to periodicals....................................202.4(g)
Daily newsletters...............................................202.4(e)
Daily newspapers................................................202.4(f)
Photographs...................................................202.4(h-i)
Serials......................................................202.3(b)(v)
Registration of original designs of vessel hulls..........212.1 to 212.6
Registration, one registration per work......................202.3(b)(4)
Registration Program.......202.5, 202.12, 202.19, 202.20, 202.21, 203.3,
211.5
Registrations and recordations, Requests for searches of.....201.1(c)(4)
Registrations (completed), Cancellation of.........................201.7
Registrations (supplementary)......................................202.6
Registry (Visual Arts)............................................201.25
Relief (Special)....................................202.19(e), 202.20(d)
Renewal term (extended), Notices of termination of transfers and
licenses covering.................................................201.10
[[Page 815]]
Renewals..........................................................202.17
Restoration of copyright for certain motion pictures and their
contents in accordance with NAFTA, \1\ Procedures for.............201.31
Restoration of copyright under the Uruguay Round Agreement Act...201.33,
202.12
Restored copyrights, Registration of..............................202.12
Retention (Full-term) of copyright deposits.......................202.23
Royalties and statements of account under compulsory license for
making/distributing phonorecords of nondramatic musical works.....210.11
to 210.19
Royalties, Electronic payment of...............201.11, 201.17 and 201.28
Satellite carrier statements of account and royalty fees covering
licenses for secondary transmissions for private home viewing.....201.11
Sculptural works (Pictorial, graphic, and)........................202.10
Search of records, Requests for..............................201.1(c)(4)
Second transmissions by cable systems, Statements of Account
covering compulsory licenses for..................................201.17
Serials, Group registration of..............................202.3(b)(v),
Service of process
See Legal processes......................................205.1 to 205.23
Shareware (computer), Recordation of documents pertaining to......201.26
Software lending by nonprofit libraries, Warning of copyright for
201.24
Software (public domain computer), Recordation of documents
pertaining to donation of.........................................201.26
Sound recordings, Public performance of, Definition of a service
201.35(b)(2)
Sound recordings, Recordkeeping for use of..............201.35 to 201.37
Soundtracks, Deposit of................................202.20(c)(2)(xii)
Special relief (deposit of copies for registration)............202.20(d)
Special relief (mandatory deposit under 17 U.S.C. 407).........202.19(e)
Special Services (Copyright Office), Fees for...................201.3(d)
Statements of account (and royalties) under compulsory license for
making/distributing phonorecords of nondramatic musical works.....210.11
to 210.19
Statements of account and royalty fees (satellite carrier)
covering licenses for secondary transmissions for private home
viewing...........................................................201.11
Statements of Account, Auditor's Reports, etc. filed in Copyright
Office for digital audio recording devices or media, Access to and
confidentiality of................................................201.29
Statements of account covering compulsory licenses for secondary
transmissions by cable systems....................................201.17
Statements of account for digital audio recording devices or media
201.28
Statements of Account (In general)...201.11, 201.17, 201.28, 201.29, and
210.11 to 210.19
States (48 contiguous), Recordation of cable contracts for systems
outside of........................................................201.12
Statutory license, Notice and recordkeeping for use of sound
recordings..............................................201.35 to 201.37
Statutory licenses for secondary transmissions for private home
viewing, Satellite carrier statements of account and royalty fees
covering..........................................................201.11
System of records under Privacy Act.............................204.2(d)
Television transmission programs (unpublished), Acquisition and
deposit of........................................................202.22
Termination of transfers and licenses covering extended renewal
term, Notices of..................................................201.10
Termination provisions, in GAP....................................201.10
Tests, Deposit of.......................................202.20(c)(2)(vi)
Transfer of unpublished copyright deposits to Library of Congress
201.23
Transfers and licenses covering extended renewal term, Notices of
termination of....................................................201.10
Transfers and other documents, Recordation of......................201.4
[[Page 816]]
Transmission programs (television), Acquisition and deposit of
unpublished.......................................................202.22
Unpublished copyright deposits, Transfer to Library of Congress of
201.23
Unpublished television transmission programs, Acquisition and
deposit of........................................................202.22
Use (routine) under Privacy Act.................................204.2(e)
Verification information filed in Copyright Office for digital
audio recording devices or media, Access to and confidentiality of
201.29
Vessel Hulls, Protection of original designs..............212.1 to 212.6
Visual Arts Registry..............................................201.25
Visually perceptible and machine-readable material other than a
CD-ROM format, Deposit of copies containing both........202.20(c)(2)(ix)
Warning of copyright for software lending by nonprofit libraries
201.24
Warnings (display) of copyright for use by certain libraries and
archives..........................................................201.14
Works:
Architectural.....................................................202.11
Nondramatic literary..............................................201.13
Nondramatic musical.................201.13, 201.18, and 210.11 to 210.19
Pictorial, graphic, and sculptural................................202.10
Works consisting of sounds, images, or both, Advance notices of
potential infringement of.........................................201.22
Works fixed in CD-ROM format, Deposit of...............202.20(c)(2)(xix)
Works reproduced in or on sheetlike materials, Deposit of
202.20(c)(2)(x)
Works reproduced in or on three-dimensional objects, Deposit of
202.20(c)(2)(xi)
Xerographic or photographic copies on good quality paper are
acceptable deposits for archival purposes in connection with the
registration of claims to copyright in architectural works
202.19(d)(2)(viii)(B)
[[Page 817]]
CHAPTER III--COPYRIGHT ROYALTY BOARD, LIBRARY OF CONGRESS
--------------------------------------------------------------------
SUBCHAPTER A--GENERAL PROVISIONS
Part Page
300 [Reserved]
301 Organization................................ 819
302 Public access to records.................... 819
303 General administrative provisions........... 819
SUBCHAPTER B--COPYRIGHT ROYALTY JUDGES RULES AND PROCEDURES
350 Scope....................................... 827
351 Proceedings................................. 827
352 Determinations.............................. 833
353 Rehearing................................... 834
354 Submissions to the Register of Copyrights... 835
355 Administrative assessment proceedings....... 836
SUBCHAPTER C--SUBMISSION OF ROYALTY CLAIMS
360 Filing of claims to royalty fees collected
under compulsory license................ 845
SUBCHAPTER D--NOTICE AND RECORDKEEPING REQUIREMENTS FOR STATUTORY
LICENSES
370 Notice and recordkeeping requirements for
statutory licenses...................... 850
SUBCHAPTER E--RATES AND TERMS FOR STATUTORY LICENSES
380 Rates and terms for transmissions by
eligible nonsubscription services and
new subscription services and for the
making of ephemeral reproductions to
facilitate those transmissions.......... 859
381 Use of certain copyrighted works in
connection with noncommercial
educational broadcasting................ 871
[[Page 818]]
382 Rates and terms for transmissions of sound
recordings by preexisting subscription
services and preexisting satellite
digital audio radio services and for the
making of ephemeral reproductions to
facilitate those transmissions.......... 881
383 Rates and terms for subscription
transmissions and the reproduction of
ephemeral recordings by certain new
subscription services................... 888
384 Rates and terms for the making of ephemeral
recordings by business establishment
services................................ 890
385 Rates and terms for use of nondramatic
musical works in the making and
distributing of physical and digital
phonorecords............................ 896
386 Adjustment of royalty fees for secondary
transmissions by satellite carriers..... 906
387 Adjustment of royalty fee for cable
compulsory license...................... 907
388 Adjustment of royalty rate for coin-operated
phonorecord players..................... 910
389 [Reserved]
390 Amounts of and terms for administrative
assessments to fund mechanical licensing
collective.............................. 910
391-399 [Reserved]
[[Page 819]]
SUBCHAPTER A_GENERAL PROVISIONS
PART 300 [RESERVED]
PART 301_ORGANIZATION--Table of Contents
Sec.
301.1 Copyright Royalty Board.
301.2 Official addresses.
Authority: 17 U.S.C. 801.
Source: 70 FR 30905, May 31, 2005, unless otherwise noted.
Sec.301.1 Copyright Royalty Board.
The Copyright Royalty Board is the institutional entity in the
Library of Congress that will house the Copyright Royalty Judges,
appointed pursuant to 17 U.S.C. 801(a), and their staff.
Sec.301.2 Official addresses.
All claims, pleadings, and general correspondence intended for the
Copyright Royalty Board and not submitted by electronic means through
the electronic filing system (``eCRB'') must be addressed as follows:
(a) If sent by mail (including overnight delivery using United
States Postal Service Express Mail), the envelope should be addressed
to: Copyright Royalty Board, P.O. Box 70977, Southwest Station,
Washington, DC 20024-0977.
(b) If hand-delivered by a private party, the envelope must be
brought to the Copyright Office Public Information Office, Room LM-401
in the James Madison Memorial Building, and be addressed as follows:
Copyright Royalty Board, Library of Congress, James Madison Memorial
Building, 101 Independence Avenue SE., Washington, DC 20559-6000.
(c) If hand-delivered by a commercial courier (excluding Federal
Express, United Parcel Service and similar courier services), the
envelope must be delivered to the Congressional Courier Acceptance Site
(CCAS) located at Second and D Street NE., Washington, DC, addressed as
follows: Copyright Royalty Board, Library of Congress, James Madison
Memorial Building, 101 Independence Avenue SE., Washington, DC 20559-
6000.
(d) Subject to paragraph (f) of this section, if sent by electronic
mail, to [email protected]
(e) Correspondence and filings for the Copyright Royalty Board may
not be delivered by means of:
(1) Overnight delivery services such as Federal Express, United
Parcel Service, etc.; or
(2) Fax.
(f) General correspondence for the Copyright Royalty Board may be
sent by electronic mail. Claimants or Parties must not send any claims,
pleadings, or other filings to the Copyright Royalty Board by electronic
mail without specific, advance authorization of the Copyright Royalty
Judges.
[82 FR 18570, Apr. 20, 2017]
PART 302_PUBLIC ACCESS TO RECORDS--Table of Contents
Sec.
302.1 Public records and access.
302.2 Fees.
Authority: 5 U.S.C. 522.
Source: 71 FR 53326, Sept. 11, 2006, unless otherwise noted.
Sec.302.1 Public records and access.
(a) Inspection. Records of proceedings before the Board will be
available for public inspection at the Copyright Royalty Board offices.
(b) Requests. Requests for access to records must be directed to the
Copyright Royalty Board. No requests for information or access to
records shall be directed to or accepted by a Copyright Royalty Judge.
Access to records is only available by appointment.
Sec.302.2 Fees.
For services rendered in connection with document location,
reproduction, etc., fees shall apply in accordance with Sec.201.3 of
this title.
PART 303_GENERAL ADMINISTRATIVE PROVISIONS--Table of Contents
Sec.
303.1 [Reserved]
[[Page 820]]
303.2 Representation.
303.3 Documents: Format and length.
303.4 Content of motion and responsive pleadings.
303.5 Electronic filing system (eCRB).
303.6 Filing and delivery.
303.7 Time.
303.8 Construction and waiver.
Authority: 17 U.S.C. 803.
Source: 84 FR 32304, July 8, 2019, unless otherwise noted.
Sec.303.1 [Reserved]
Sec.303.2 Representation.
Individual parties in proceedings before the Judges may represent
themselves or be represented by an attorney. All other parties must be
represented by an attorney. Cf. Rule 49(c)(11) of the Rules of the
District of Columbia Court of Appeals. The appearance of an attorney on
behalf of any party constitutes a representation that the attorney is a
member of the bar, in one or more states, in good standing.
Sec.303.3 Documents: Format and length.
(a) Format--(1) Caption and description. Parties filing pleadings
and documents in a proceeding before the Copyright Royalty Judges must
include on the first page of each filing a caption that identifies the
proceeding by proceeding type and docket number, and a heading under the
caption describing the nature of the document. In addition, to the
extent technologically feasible using software available to the general
public, Parties must include a footer on each page after the page
bearing the caption that includes the name and posture of the filing
party, e.g., [Party's] Motion, [Party's] Response in Opposition, etc.
(2) Page layout. Parties must submit documents that are typed
(double spaced) using a serif typeface (e.g., Times New Roman) no
smaller than 12 points for text or 10 points for footnotes and formatted
for 8 \1/2\[sec] by 11[sec] pages with no less than 1 inch margins.
Parties must assure that, to the extent technologically feasible using
software available to the general public, any exhibit or attachment to
documents reflects the docket number of the proceeding in which it is
filed and that all pages are numbered appropriately. Any party
submitting a document to the Copyright Royalty Board in paper format
must submit it unfolded and produced on opaque 8 \1/2\ by 11 inch white
paper using clear black text, and color to the extent the document uses
color to convey information or enhance readability.
(3) Binding or securing. Parties submitting any paper document to
the Copyright Royalty Board must bind or secure the document in a manner
that will prevent pages from becoming separated from the document. For
example, acceptable forms of binding or securing include: Ring binders;
spiral binding; comb binding; and for documents of fifty pages or fewer,
a binder clip or single staple in the top left corner of the document.
Rubber bands and paper clips are not acceptable means of securing a
document.
(b) Additional format requirements for electronic documents--(1) In
general. Parties filing documents electronically through eCRB must
follow the requirements of paragraphs (a)(1) and (2) of this section and
the additional requirements in paragraphs (b)(2) through (10) of this
section.
(2) Pleadings; file type. Parties must file all pleadings, such as
motions, responses, replies, briefs, notices, declarations of counsel,
and memoranda, in Portable Document Format (PDF).
(3) Proposed orders; file type. Parties filing a proposed order as
required by Sec.303.4 must prepare the proposed order as a separate
Word document and submit it together with the main pleading.
(4) Exhibits and attachments; file types. Parties must convert
electronically (not scan) to PDF format all exhibits or attachments that
are in electronic form, with the exception of proposed orders and any
exhibits or attachments in electronic form that cannot be converted into
a usable PDF file (such as audio and video files, files that contain
text or images that would not be sufficiently legible after conversion,
or spreadsheets that contain too many columns to be displayed legibly on
an 8 \1/2\[sec] x 11[sec] page). Participants must provide electronic
copies in their native electronic format of any exhibits or attachments
that cannot be converted into a usable PDF file. In addition,
participants may provide copies of other
[[Page 821]]
electronic files in their native format, in addition to PDF versions of
those files, if doing so is likely to assist the Judges in perceiving
the content of those files.
(5) No scanned pleadings. Parties must convert every filed document
directly to PDF format (using ``print to pdf'' or ``save to pdf''),
rather than submitting a scanned PDF image. The Copyright Royalty Board
will NOT accept scanned documents, except in the case of specific
exhibits or attachments that are available to the filing party only in
paper form.
(6) Scanned exhibits. Parties must scan exhibits or other documents
that are only available in paper form at no less than 300 dpi. All
exhibits must be searchable. Parties must scan in color any exhibit that
uses color to convey information or enhance readability.
(7) Bookmarks. Parties must include in all electronic documents
appropriate electronic bookmarks to designate the tabs and/or tables of
contents that would appear in a paper version of the same document.
(8) Page rotation. Parties must ensure that all pages in electronic
documents are right side up, regardless of whether they are formatted
for portrait or landscape printing.
(9) Signature. The signature line of an electronic pleading must
contain ``/s/'' followed by the signer's typed name. The name on the
signature line must match the name of the user logged into eCRB to file
the document.
(10) File size. The eCRB system will not accept PDF or Word files
that exceed 128 MB, or files in any other format that exceed 500 MB.
Parties may divide excessively large files into multiple parts if
necessary to conform to this limitation.
(c) Length of submissions. Whether filing in paper or
electronically, parties must adhere to the following space limitations
or such other space limitations as set forth in subchapter B or as the
Copyright Royalty Judges may direct by order. Any party seeking an
enlargement of the applicable page limit must make the request by a
motion to the Copyright Royalty Judges filed no fewer than three days
prior to the applicable filing deadline. Any order granting an
enlargement of the page limit for a motion or response shall be deemed
to grant the same enlargement of the page limit for a response or reply,
respectively.
(1) Motions. Motions must not exceed 20 pages and must not exceed
5000 words (exclusive of cover pages, tables of contents, tables of
authorities, signature blocks, exhibits, and proof of delivery).
(2) Responses. Responses in support of or opposition to motions must
not exceed 20 pages and must not exceed 5000 words (exclusive of cover
pages, tables of contents, tables of authorities, signature blocks,
exhibits, and proof of delivery).
(3) Replies. Replies in support of motions must not exceed 10 pages
and must not exceed 2500 words (exclusive of cover pages, tables of
contents, tables of authorities, signature blocks, exhibits, and proof
of delivery).
Sec.303.4 Content of motion and responsive pleadings.
A motion, responsive pleading, or reply must, at a minimum, state
concisely the specific relief the party seeks from the Copyright Royalty
Judges, and the legal, factual, and evidentiary basis for granting that
relief (or denying the relief sought by the moving party). A motion, or
a responsive pleading that seeks alternative relief, must be accompanied
by a proposed order.
Sec.303.5 Electronic filing system (eCRB).
(a) Documents to be filed by electronic means. Except as otherwise
provided in this chapter, all attorneys must file documents with the
Copyright Royalty Board through eCRB. Pro se parties may file documents
with the Copyright Royalty Board through eCRB, subject to Sec.
303.4(c)(2).
(b) Official record. The electronic version of a document filed
through and stored in eCRB will be the official record of the Copyright
Royalty Board.
(c) Obtaining an electronic filing password--(1) Attorneys. An
attorney must register for an eCRB account and create an eCRB password
in order to file documents or to receive copies of orders and
determinations of the Copyright Royalty Judges. The attorney's
[[Page 822]]
eCRB account and password will be activated upon approval by the
Copyright Royalty Board of the attorney's completed online application
form available on the eCRB website.
(2) Attorney designees. A person authorized by an attorney to file
documents on behalf of that attorney (an attorney designee) must
register for an eCRB account and create an eCRB password in order to
file documents on the attorney's behalf. The attorney designee's eCRB
account and password will be activated upon approval by the Copyright
Royalty Board of the attorney designee's completed online registration
form available on the eCRB website.
(3) Pro se parties. A party not represented by an attorney (a pro se
party) may register for an eCRB account and create an eCRB password. The
pro se party's eCRB account and password will be activated if the
Copyright Royalty Judges, in their discretion, approve the pro se
party's completed online application form available on the eCRB website.
Once a pro se party's application has been approved, that party must
make all subsequent filings by electronic means through eCRB.
(4) Claimants. Any person desiring to file a claim with the
Copyright Royalty Board for copyright royalties must register for an
eCRB account and create an eCRB password for the limited purpose of
filing claims by completing the registration form available on the eCRB
website.
(d) Use of an eCRB password. An eCRB password may be used only by
the person to whom it is assigned. The person to whom an eCRB password
is assigned is responsible for any document filed using that password,
except that designating attorneys are responsible for any document filed
on the attorney's behalf by an attorney designee.
(e) Signature. The use of an eCRB password to log in and submit
documents creates an electronic record. The password operates and serves
as the signature of the person to whom the password is assigned for all
purposes under this chapter III, except that the password of an attorney
designee serves as the signature of the designating attorney on whose
behalf the document is filed.
(f) Originals of sworn documents. The electronic filing of a
document that contains a sworn declaration, verification, certificate,
statement, oath, or affidavit certifies that the original signed
document is in the possession of the attorney or pro se party
responsible for the filing and that it is available for review upon
request by a party or by the Copyright Royalty Judges. The filer must
file through eCRB a scanned copy of the signature page of the sworn
document together with the document itself.
(g) Consent to delivery by electronic means. An attorney or pro se
party who obtains an eCRB password consents to electronic delivery of
all documents, subsequent to the petition to participate, that are filed
by electronic means through eCRB. Attorneys and pro se parties are
responsible for monitoring their email accounts and, upon receipt of
notice of an electronic filing, for retrieving the noticed filing.
Parties and their counsel bear the responsibility to keep the contact
information in their eCRB profiles current.
(h) Accuracy of docket entry. A person filing a document by
electronic means, or, if the filer is an attorney designee, the
designating attorney, is responsible for ensuring the accuracy of the
official docket entry generated by the eCRB system, including proper
identification of the proceeding, the filing party, and the description
of the document. The Copyright Royalty Board will maintain on its
website (www.loc.gov/crb) appropriate guidance regarding naming
protocols for eCRB filers.
(i) Documents subject to a protective order. A person filing a
document by electronic means must ensure, at the time of filing, that
any documents subject to a protective order are identified to the eCRB
system as ``restricted'' documents. This requirement is in addition to
any requirements detailed in the applicable protective order. Failure to
identify documents as ``restricted'' to the eCRB system may result in
inadvertent publication of sensitive, protected material.
[[Page 823]]
(j) Exceptions to requirement of electronic filing--(1) Certain
exhibits or attachments. Parties may file in paper form any exhibits or
attachments that are not in a format that readily permits electronic
filing, such as oversized documents; or are illegible when scanned into
electronic format. Parties filing paper documents or things pursuant to
this paragraph must deliver legible or usable copies of the documents or
things in accordance with Sec.303.6(a)(2) and must file electronically
a notice of filing that includes a certificate of delivery.
(2) Pro se parties. A pro se party may file documents in paper form
and must deliver and accept delivery of documents in paper form, unless
the pro se party has obtained an eCRB password.
(k) Privacy requirements. (1) Unless otherwise instructed by the
Copyright Royalty Judges, parties must exclude or redact from all
electronically filed documents, whether designated ``restricted'' or
not:
(i) Social Security numbers. If an individual's Social Security
number must be included in a filed document for evidentiary reasons, the
filer must use only the last four digits of that number.
(ii) Names of minor children. If a minor child must be mentioned in
a document for evidentiary reasons, the filer must use only the initials
of that child.
(iii) Dates of birth. If an individual's date of birth must be
included in a pleading for evidentiary reasons, the filer must use only
the year of birth.
(iv) Financial account numbers. If a financial account number must
be included in a pleading for evidentiary reasons, the filer must use
only the last four digits of the account identifier.
(2) Protection of personally identifiable information. If any
information identified in paragraph (k)(1) of this section must be
included in a filed document, the filing party must treat it as
confidential information subject to the applicable protective order. In
addition, parties may treat as confidential, and subject to the
applicable protective order, other personal information that is not
material to the proceeding.
(l) Incorrectly filed documents. (1) The Copyright Royalty Board may
direct an eCRB filer to re-file a document that has been incorrectly
filed, or to correct an erroneous or inaccurate docket entry.
(2) If an attorney or a pro se party who has been issued an eCRB
password inadvertently presents a document for filing in paper form, the
Copyright Royalty Board may direct that person to file the document
electronically. The document will be deemed filed on the date it was
first presented for filing if, no later than the next business day after
being so directed by the Copyright Royalty Board, the attorney or pro se
participant files the document electronically. If the filer fails to
make the electronic filing on the next business day, the document will
be deemed filed on the date of the electronic filing.
(m) Technical difficulties. (1) A filer encountering technical
problems with an eCRB filing must immediately notify the Copyright
Royalty Board of the problem either by email, or by telephone, followed
promptly by written confirmation.
(2) If a filer is unable, due to technical problems, to make a
filing with eCRB by an applicable deadline, and makes the notification
required by paragraph (m)(1) of this section, the filer shall use
electronic mail to make the filing with the Copyright Royalty Board and
deliver the filing to the other parties to the proceeding. The filing
shall be considered to have been made at the time it was filed by
electronic mail. The Copyright Royalty Judges may direct the filer to
refile the document through eCRB when the technical problem has been
resolved, but the document shall retain its original filing date.
(3) The inability to complete an electronic filing because of
technical problems arising in the eCRB system may constitute ``good
cause'' (as used in Sec.303.6(b)(4)) for an order enlarging time or
excusable neglect for the failure to act within the specified time,
provided the filer complies with paragraph (m)(1) of this section. This
section does not provide authority to extend statutory time limits.
[86 FR 9462, Feb. 16, 2021]
[[Page 824]]
Sec.303.6 Filing and delivery.
(a) Filing of pleadings--(1) Electronic filing through eCRB. Except
as described in Sec.303.5(l)(2), any document filed by electronic
means through eCRB in accordance with Sec.303.5 constitutes filing for
all purposes under this chapter, effective as of the date and time the
document is received and timestamped by eCRB.
(2) All other filings. For all filings not submitted by electronic
means through eCRB, the submitting party must deliver an original, five
paper copies, and one electronic copy in Portable Document Format (PDF)
on an optical data storage medium such as a CD or DVD, a flash memory
device, or an external hard disk drive to the Copyright Royalty Board in
accordance with the provisions described in Sec.301.2 of this chapter.
In no case will the Copyright Royalty Board accept any document by
facsimile transmission or electronic mail, except with prior express
authorization of the Copyright Royalty Judges.
(b) Exhibits. Filers must include all exhibits with the pleadings
they support. In the case of exhibits not submitted by electronic means
through eCRB, whose bulk or whose cost of reproduction would
unnecessarily encumber the record or burden the party, the Copyright
Royalty Judges will consider a motion, made in advance of the filing, to
reduce the number of required copies. See Sec.303.5(j).
(c) English language translations. Filers must accompany each
submission that is in a language other than English with an English-
language translation, duly verified under oath to be a true translation.
Any other party to the proceeding may, in response, submit its own
English-language translation, similarly verified, so long as the
responding party's translation proves a substantive, relevant difference
in the document.
(d) Affidavits. The testimony of each witness must be accompanied by
an affidavit or a declaration made pursuant to 28 U.S.C. 1746 supporting
the testimony. See Sec.303.5(f).
(e) Subscription--(1) Parties represented by counsel. Subject to
Sec.303.5(e), all documents filed electronically by counsel must be
signed by at least one attorney of record and must list the attorney's
full name, mailing address, email address (if any), telephone number,
and a state bar identification number. See Sec.303.5(e). Submissions
signed by an attorney for a party need not be verified or accompanied by
an affidavit. The signature of an attorney constitutes certification
that the contents of the document are true and correct, to the best of
the signer's knowledge, information, and belief, formed after an inquiry
reasonable under the circumstances and:
(i) The document is not being presented for any improper purpose,
such as to harass or to cause unnecessary delay or needless increase in
the cost of litigation;
(ii) The claims, defenses, and other legal contentions therein are
warranted by existing law or by a nonfrivolous argument for the
extension, modification, or reversal of existing law or the
establishment of new law;
(iii) The allegations and other factual contentions have evidentiary
support or, if specifically so identified, are likely to have
evidentiary support after a reasonable opportunity for further
investigation or discovery; and
(iv) The denials of factual contentions are warranted by the
evidence or, if specifically so identified, are reasonably based on a
lack of information or belief.
(2) Parties representing themselves. The original of all paper
documents filed by a party not represented by counsel must be signed by
that party and list that party's full name, mailing address, email
address (if any), and telephone number. The party's signature will
constitute the party's certification that, to the best of his or her
knowledge and belief, there is good ground to support the document, and
that it has not been interposed for purposes of delay.
(f) Responses and replies. Responses in support of or opposition to
motions must be filed within ten days of the filing of the motion.
Replies to responses must be filed within five days of the filing of the
response.
(g) Participant list. The Copyright Royalty Judges will compile and
distribute to those parties who have filed
[[Page 825]]
a valid petition to participate the official participant list for each
proceeding, including each participant's mailing address, email address,
and whether the participant is using the eCRB system for filing and
receipt of documents in the proceeding. For all paper filings, a party
must deliver a copy of the document to counsel for all other parties
identified in the participant list, or, if the party is unrepresented by
counsel, to the party itself. Parties must notify the Copyright Royalty
Judges and all parties of any change in the name or address at which
they will accept delivery and must update their eCRB profiles
accordingly.
(h) Delivery method and proof of delivery--(1) Electronic filings
through eCRB. Electronic filing of any document through eCRB operates to
effect delivery of the document to counsel or pro se participants who
have obtained eCRB passwords, and the automatic notice of filing sent by
eCRB to the filer constitutes proof of delivery. Counsel or parties who
have not yet obtained eCRB passwords must deliver and receive delivery
as provided in paragraph (h)(2) of this section. Parties making
electronic filings are responsible for assuring delivery of all filed
documents to parties that do not use the eCRB system.
(2) Other filings. During the course of a proceeding, each party
must deliver all documents that they have filed other than through eCRB
to the other parties or their counsel by means no slower than overnight
express mail sent on the same day they file the documents, or by such
other means as the parties may agree in writing among themselves.
Parties must include a proof of delivery with any document delivered in
accordance with this paragraph.
Sec.303.7 Time.
(a) Computation. To compute the due date for filing and delivering
any document or performing any other act directed by an order of the
Copyright Royalty Judges or the rules of the Copyright Royalty Board:
(1) Exclude the day of the act, event, or default that begins the
period.
(2) Exclude intermediate Saturdays, Sundays, and Federal holidays
when the period is less than 11 days, unless computation of the due date
is stated in calendar days.
(3) Include the last day of the period, unless it is a Saturday,
Sunday, Federal holiday, or a day on which the weather or other
conditions render the Copyright Royalty Board's office inaccessible.
(4) As used in this rule, ``Federal holiday'' means the date
designated for the observance of New Year's Day, Inauguration Day,
Birthday of Martin Luther King, Jr., George Washington's Birthday,
Memorial Day, Independence Day, Labor Day, Columbus Day, Veterans Day,
Thanksgiving Day, Christmas Day, and any other day declared a Federal
holiday by the President or the Congress.
(5) Except as otherwise described in this Chapter or in an order by
the Copyright Royalty Judges, the Copyright Royalty Board will consider
documents to be timely filed only if:
(i) They are filed electronically through eCRB and time-stamped by
11:59:59 p.m. Eastern time on the due date;
(ii) They are sent by U.S. mail, are addressed in accordance with
Sec.301.2(a) of this chapter, have sufficient postage, and bear a USPS
postmark on or before the due date;
(iii) They are hand-delivered by private party to the Copyright
Office Public Information Office in accordance with Sec.301.2(b) of
this chapter and received by 5:00 p.m. Eastern time on the due date; or
(iv) They are hand-delivered by commercial courier to the
Congressional Courier Acceptance Site in accordance with Sec.301.2(c)
of this chapter and received by 4:00 p.m. Eastern time on the due date.
(6) Any document sent by mail and dated only with a business postal
meter will be considered filed on the date it is actually received by
the Library of Congress.
(b) Extensions. A party seeking an extension must do so by written
motion. Prior to filing such a motion, a party must attempt to obtain
consent from the other parties to the proceeding. An extension motion
must state:
(1) The date on which the action or submission is due;
[[Page 826]]
(2) The length of the extension sought;
(3) The date on which the action or submission would be due if the
extension were allowed;
(4) The reason or reasons why there is good cause for the delay;
(5) The justification for the amount of additional time being
sought; and
(6) The attempts that have been made to obtain consent from the
other parties to the proceeding and the position of the other parties on
the motion.
Sec.303.8 Construction and waiver.
The regulations of the Copyright Royalty Judges in this chapter are
intended to provide efficient and just administrative proceedings and
will be construed to advance these purposes. For purposes of an
individual proceeding, the provisions of subchapters A and B may be
suspended or waived, in whole or in part, upon a showing of good cause,
to the extent allowable by law.
[[Page 827]]
SUBCHAPTER B_COPYRIGHT ROYALTY JUDGES RULES AND PROCEDURES
PART 350_SCOPE--Table of Contents
Sec.
350.1 Scope.
350.2-350.4 [Reserved]
Authority: 17 U.S.C. 803.
Source: 84 FR 32308, July 8, 2019, unless otherwise noted.
Sec.350.1 Scope.
This subchapter governs procedures applicable to proceedings before
the Copyright Royalty Judges in making determinations and adjustments
pursuant to 17 U.S.C. 115(d) and 801(b). The procedures set forth in
part 355 of this subchapter shall govern administrative assessment
proceedings pursuant to 17 U.S.C. 115(d) and 801(b)(8), and the
procedures set forth in parts 351 through 354 of this subchapter shall
govern all other proceedings pursuant to 17 U.S.C. 801(b).
Sec.350.2-350.4 [Reserved]
PART 351_PROCEEDINGS--Table of Contents
Sec.
351.1 Initiation of proceedings.
351.2 Voluntary negotiation period; settlement.
351.3 Controversy and further proceedings.
351.4 Written direct statements.
351.5 Discovery in royalty rate proceedings.
351.6 Discovery in distribution proceedings.
351.7 Settlement conference.
351.8 Pre-hearing conference.
351.9 Conduct of hearings.
351.10 Evidence.
351.11 Rebuttal proceedings.
351.12 Closing the record.
351.13 Transcript and record.
351.14 Proposed findings of fact and conclusions of law.
351.15 Remand.
Authority: 17 U.S.C. 803.
Source: 70 FR 30905, May 31, 2005, unless otherwise noted.
Sec.351.1 Initiation of proceedings.
(a) Notice of commencement; solicitation of petitions to
participate. All proceedings before the Copyright Royalty Judges to make
determinations and adjustments of reasonable terms and rates of royalty
payments, and to authorize the distribution of royalty fees, shall be
initiated by publication in the Federal Register of a notice of the
initiation of proceedings calling for the filing of petitions to
participate in the proceeding.
(b) Petitions to participate--(1) Royalty rate proceedings--(i)
Single petition. Each petition to participate filed in a royalty rate
proceeding must include:
(A) The petitioner's full name, address, telephone number, facsimile
number (if any), and e-mail address (if any); and
(B) A description of the petitioner's significant interest in the
subject matter of the proceeding.
(ii) Joint petition. Petitioners with similar interests may, in lieu
of filing individual petitions, file a single petition. Each joint
petition must include:
(A) The full name, address, telephone number, facsimile number (if
any), and e-mail address (if any) of the person filing the petition;
(B) A list identifying all participants to the joint petition;
(C) A description of the participants' significant interest in the
subject matter of the proceeding; and
(D) If the joint petition is filed by counsel or a representative of
one or more of the participants that are named in the joint petition, a
statement from such counsel or representative certifying that, as of the
date of submission of the joint petition, such counsel or representative
has the authority and consent of the participants to represent them in
the royalty rate proceeding.
(2) Distribution proceedings--(i) Single petition. Each petition to
participate filed in a royalty distribution proceeding must include:
(A) The petitioner's full name, address, telephone number, facsimile
number (if any), and e-mail address (if any);
(B) In a cable or satellite royalty distribution proceeding,
identification of whether the petition covers a Phase I
[[Page 828]]
proceeding (the initial part of a distribution proceeding where
royalties are divided among the categories or groups of copyright
owners), a Phase II proceeding (where the money allotted to each
category is subdivided among the various copyright owners within that
category), or both; and
(C) A description of the petitioner's significant interest in the
subject matter of the proceeding.
(ii) Joint petition. Petitioners with similar interests may, in lieu
of filing individual petitions, file a single petition. Each joint
petition must include:
(A) The full name, address, telephone number, facsimile number (if
any), and e-mail address (if any) of the person filing the petition;
(B) A list identifying all participants to the joint petition;
(C) In a cable or satellite royalty distribution proceeding,
identification of whether the petition covers a Phase I proceeding (the
initial part of a distribution proceeding where royalties are divided
among the categories or groups of copyright owners), a Phase II
proceeding (where the money allotted to each category is subdivided
among the various copyright owners within that category), or both;
(D) A description of the participants' significant interest in the
subject matter of the proceeding; and
(E) If the joint petition is filed by counsel or a representative of
one or more of the participants that are named in the joint petition, a
statement from such counsel or representative certifying that, as of the
date of submission of the joint petition, such counsel or representative
has the authority and consent of the participants to represent them in
the royalty distribution proceeding.
(3) Filing deadline. A petition to participate shall be filed by no
later than 30 days after the publication of the notice of commencement
of a proceeding, subject to the qualified exception set forth in
paragraph (d) of this section.
(4) Filing fee. A petition to participate must be accompanied with a
filing fee of $150 or the petition will be rejected. For petitions filed
electronically through eCRB, payment must be made to the Copyright
Royalty Board through the payment portal designated on eCRB. For
petitions filed by other means, payment must be made to the Copyright
Royalty Board by check or by money order. If a check is subsequently
dishonored, the petition will be rejected. If the petitioner believes
that the contested amount of that petitioner's claim will be $1,000 or
less, the petitioner must so state in the petition to participate and
should not include payment of the $150 filing fee. If it becomes
apparent during the course of the proceedings that the contested amount
of the claim is more than $1,000, the Copyright Royalty Judges will
require payment of the filing fee at that time.
(c) Acceptance and rejection of petitions to participate. A petition
to participate will be deemed to have been allowed by the Copyright
Royalty Judges unless the Copyright Royalty Judges determine the
petitioner lacks a significant interest in the proceeding or the
petition is otherwise invalid.
(d) Late petitions to participate. The Copyright Royalty Judges may,
for substantial good cause shown, and if there is no prejudice to the
participants that have already filed petitions, accept late petitions to
participate at any time up to the date that is 90 days before the date
on which participants in the proceeding are to file their written direct
statements. However, petitioners whose petitions are filed more than 30
days after publication of notice of commencement of a proceeding are not
eligible to object to a settlement reached during the voluntary
negotiation period.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53327, Sept. 11, 2006;
81 FR 8650, Feb. 22, 2016; 82 FR 18574, Apr. 20, 2017]
Sec.351.2 Voluntary negotiation period; settlement.
(a) Commencement; duration. After the date for filing petitions to
participate in a proceeding, the Copyright Royalty Judges will announce
the beginning of a voluntary negotiation period and will make a list of
the participants available to the participants in the particular
proceeding. The voluntary negotiation period shall last three months,
after which the parties shall notify the Copyright Royalty Judges in
[[Page 829]]
writing as to whether a settlement has been reached.
(b) Settlement--(1) Distribution proceedings. Pursuant to 17 U.S.C.
801(b)(7)(A), to the extent that a settlement has been reached in a
distribution proceeding, that agreement will provide the basis for the
distribution.
(2) Royalty rate proceedings. If, in a proceeding to determine
statutory terms and rates, the participating parties report that a
settlement has been reached by some or all of the parties, the Copyright
Royalty Judges, pursuant to 17 U.S.C. 801(b)(7)(A), will publish the
settlement in the Federal Register for notice and comment from those
bound by the terms, rates, or other determination set by the agreement.
If an objection to the adoption of an agreement is filed, the Copyright
Royalty Judges may decline to adopt the agreement as a basis for
statutory terms and rates for participants that are not parties to the
agreement if the Copyright Royalty Judges conclude that the agreement
does not provide a reasonable basis for setting statutory terms or
rates.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53328, Sept. 11, 2006]
Sec.351.3 Controversy and further proceedings.
(a) Declaration of controversy. If a settlement has not been reached
within the voluntary negotiation period, the Copyright Royalty Judges
will issue an order declaring that further proceedings are necessary.
The procedures set forth at Sec. Sec.351.5, et seq., for formal
hearings will apply, unless the abbreviated procedures set forth in
paragraphs (b) and (c) of this section are invoked by the Copyright
Royalty Judges.
(b) Small claims in distribution proceedings--(1) General. If, in a
distribution proceeding, the contested amount of a claim is $10,000 or
less, the Copyright Royalty Judges shall decide the controversy on the
basis of the filing of the written direct statement by each participant
(or participant group filing a joint petition), the response by any
opposing participant, and one optional reply by a participant who has
filed a written direct statement.
(2) Bad faith inflation of claim. If the Copyright Royalty Judges
determine that a participant asserts in bad faith an amount in
controversy in excess of $10,000 for the purpose of avoiding a
determination under the procedure set forth in paragraph (b)(1) of this
section, the Copyright Royalty Judges shall impose a fine on that
participant in an amount not to exceed the difference between the actual
amount distributed and the amount asserted by the participant.
(c) Paper proceedings--(1) Standard. The procedure under this
paragraph (c) will be applied in cases in which there is no genuine
issue of material fact, there is no need for evidentiary hearings, and
all participants in the proceeding agree in writing to the procedure. In
the absence of an agreement in writing among all participants, this
procedure may be applied by the Copyright Royalty Judges either on the
motion of a party or by the Copyright Royalty Judges sua sponte.
(2) Procedure. Paper proceedings will be decided on the basis of the
filing of the written direct statement by the participant (or
participant group filing a joint petition), the response by any opposing
participant, and one optional reply by a participant who has filed a
written direct statement.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53328, Sept. 11, 2006]
Sec.351.4 Written direct statements.
(a) Required filing; deadline. All parties who have filed a petition
to participate in the hearing must file a written direct statement. The
deadline for the filing of the written direct statement will be
specified by the Copyright Royalty Judges, not earlier than 4 months,
nor later than 5 months, after the end of the voluntary negotiation
period set forth in Sec.351.2.
(b) Required content--(1) Testimony. The written direct statement
shall include all testimony, including each witness's background and
qualifications, along with all the exhibits.
(2) Designated past records and testimony. Each participating party
may designate a portion of past records, including records of the
Copyright Royalty Tribunal or Copyright Arbitration Royalty Panels, that
it wants included
[[Page 830]]
in its direct statement. If a party intends to rely on any part of the
testimony of a witness in a prior proceeding, the complete testimony of
that witness (i.e., direct, cross and redirect examination) must be
designated. The party submitting such past records and/or testimony
shall include a copy with the written direct statement.
(3) Claim. In the case of a royalty distribution proceeding, each
party must state in the written direct statement its percentage or
dollar claim to the fund. In the case of a rate (or rates) proceeding,
each party must state its requested rate. No party will be precluded
from revising its claim or its requested rate at any time during the
proceeding up to, and including, the filing of the proposed findings of
fact and conclusions of law.
(c) Amended written direct statements. A participant in a proceeding
may amend a written direct statement based on new information received
during the discovery process, within 15 days after the end of the
discovery period. An amended written direct statement must explain how
it differs from the written direct statement it will amend and must
demonstrate that the amendment is based on new information received
during the discovery process. The participant amending its written
direct statement may file either the amended portions of the written
direct statement or submit complete new copies at its option.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53328, Sept. 11, 2006;
71 FR 59010, Oct. 6, 2006]
Sec.351.5 Discovery in royalty rate proceedings.
(a) Schedule. Following the submission to the Copyright Royalty
Judges of written direct and rebuttal statements by the participants in
a royalty rate proceeding, and after conferring with the participants,
the Copyright Royalty Judges will issue a discovery schedule.
(b) Document production, depositions and interrogatories--(1)
Document production. A participant in a royalty rate proceeding may
request of an opposing participant nonprivileged documents that are
directly related to the written direct statement or written rebuttal
statement of that participant. Broad, nonspecific discovery requests are
not acceptable. All documents offered in response to a discovery request
must be furnished in as organized and useable form as possible. Any
objection to a request for production shall be resolved by a motion or
request to compel production. The motion must include a statement that
the parties had conferred and were unable to resolve the matter.
(2) Depositions and interrogatories. In a proceeding to determine
royalty rates, the participants entitled to receive royalties shall
collectively be permitted to take no more than 10 depositions and secure
responses to no more than 25 interrogatories. Similarly, the
participants obligated to pay royalties shall collectively be permitted
to take no more than 10 depositions and secure responses to no more than
25 interrogatories. Parties may obtain such discovery regarding any
matter, not privileged, that is relevant to the claim or defense of any
party. Relevant information need not be admissible at hearing if the
discovery by means of depositions and interrogatories appears reasonably
calculated to lead to the discovery of admissible evidence.
(c) Motions to request other relevant information and materials. (1)
In any royalty rate proceeding scheduled to commence prior to January 1,
2011, a participant may, by means of written or oral motion on the
record, request of an opposing participant or witness other relevant
information and materials. The Copyright Royalty Judges will allow such
request only if they determine that, absent the discovery sought, their
ability to achieve a just resolution of the proceeding would be
substantially impaired.
(2) In determining whether such discovery motions will be granted,
the Copyright Royalty Judges may consider--
(i) Whether the burden or expense of producing the requested
information or materials outweighs the likely benefit, taking into
account the needs and resources of the participants, the importance of
the issues at stake, and the probative value of the requested
information or materials in resolving such issues;
[[Page 831]]
(ii) Whether the requested information or materials would be
unreasonably cumulative or duplicative, or are obtainable from another
source that is more convenient, less burdensome, or less expensive; and
(iii) Whether the participant seeking the discovery had an ample
opportunity by discovery in the proceeding or by other means to obtain
the information sought.
[71 FR 53328, Sept. 11, 2006]
Sec.351.6 Discovery in distribution proceedings.
In distribution proceedings, the Copyright Royalty Judges shall
designate a 45-day period beginning with the filing of written direct
statements within which parties may request of an opposing party
nonprivileged underlying documents related to the written exhibits and
testimony. However, all parties shall be given a reasonable opportunity
to conduct discovery on amended statements.
[71 FR 53328, Sept. 11, 2006]
Sec.351.7 Settlement conference.
A post-discovery settlement conference will be held among the
participants, within 21 days after the close of discovery, outside of
the presence of the Copyright Royalty Judges. Immediately after this
conference the participants shall file with the Copyright Royalty Judges
a written Joint Settlement Conference Report indicating the extent to
which the participants have reached a settlement.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006]
Sec.351.8 Pre-hearing conference.
In the absence of a complete settlement in a proceeding not subject
to the abbreviated procedures set forth in Sec. Sec.351.3(b) and (c),
a hearing will be scheduled expeditiously so as to allow the Copyright
Royalty Judges to conduct hearings and issue its final determination in
the proceeding within the time allowed by the Copyright Act. Prior to
the hearing, the Copyright Royalty Judges may conduct a prehearing
conference to assist in setting the order of presentation of evidence
and the appearance of witnesses at the hearing and to provide for the
submission of pre-hearing written legal arguments.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006]
Sec.351.9 Conduct of hearings.
(a)(1) By panels. Subject to paragraph (b) of this section, hearings
will be conducted by Copyright Royalty Judges sitting en banc.
(2) Location. Hearings will be conducted in person at the Library of
Congress or an alternative location, or virtually, at the Judges'
discretion.
(b) Role of Chief Judge. The Chief Copyright Royalty Judge, or an
individual Copyright Royalty Judge designated by the Chief Judge, may
preside over such collateral and administrative proceedings, and over
such proceedings under section 803(b)(1) through (5) of the Copyright
Act, as the Chief Judge considers appropriate. The Chief Judge, or an
individual Copyright Royalty Judge designated by the Chief Judge, shall
have the responsibility for:
(1) Administering oaths and affirmations to all witnesses;
(2) Announcing the Copyright Royalty Judges' ruling on objections
and motions and all rulings with respect to introducing or excluding
documentary or other evidence. In all cases, with the exception of a
hearing pursuant to 17 U.S.C. 803(a)(2), it takes a majority vote to
grant a motion or sustain an objection. A tie vote will result in the
denial of a motion or the overruling of the objection;
(c) Opening statements. In each distribution or rate proceeding,
each party may present its opening statement summarizing its written
direct statement.
(d) Notice of witnesses and prior exchange of exhibits. Each party
must provide all other parties notice of the witnesses who are to be
called to testify at least one week in advance of such testimony, unless
modified by applicable trial order. Parties must exchange exhibits at
least one day in advance of being offered into evidence at a hearing,
unless modified by applicable trial order.
(e) Subpoenas. The parties may move the Copyright Royalty Judges to
issue
[[Page 832]]
a subpoena. The object of the subpoena shall be served with the motion
and may appear in response to the motion.
(f) Witnesses sequestered. Subject to applicable trial order,
witnesses, other than party representatives, may not be permitted to
listen to any testimony and may not be allowed to review a transcript of
any prior testimony.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006;
86 FR 31172, June 11, 2021]
Sec.351.10 Evidence.
(a) Admissibility. All evidence that is relevant and not unduly
repetitious or privileged, shall be admissible. Hearsay may be admitted
to the extent deemed appropriate by the Copyright Royalty Judges.
Written testimony and exhibits must be authenticated or identified in
order to be admissible as evidence. The requirement of authentication or
identification as a condition precedent to admissibility is satisfied by
evidence sufficient to support a finding that the matter in question is
what its proponent claims. Extrinsic evidence of authenticity as a
condition precedent to admissibility is not required with respect to
materials that can be self-authenticated under Rule 902 of the Federal
Rules of Evidence such as certain public records. No evidence, including
exhibits, may be submitted without a sponsoring witness, except for good
cause shown.
(b) Examination of witnesses. All witnesses shall be required to
take an oath or affirmation before testifying. Parties are entitled to
conduct direct examination (consisting of the testimony of the witness
in the written statements and an oral summary of that testimony); cross-
examination (limited to matters raised on direct examination); and
redirect examination (limited to matters raised on cross-examination).
The Copyright Royalty Judges may limit the number of witnesses or limit
questioning to avoid cumulative testimony.
(c) Exhibits--(1) Submission. Writings, recordings and photographs
shall be presented as exhibits and marked by the presenting party.
``Writings'' and ``recordings'' consist of letters, words, or numbers,
or their equivalent, set down by handwriting, typewriting, printing,
photostating, photographing, magnetic impulse, mechanical or electronic
recording, or other form of data compilation. ``Photographs'' include
still photographs, video tapes, and motion pictures.
(2) Separation of irrelevant portions. Relevant and material matter
embraced in an exhibit containing other matter not material or relevant
or not intended as evidence must be plainly designated as the matter
offered in evidence, and the immaterial or irrelevant parts shall be
marked clearly so as to show they are not intended as evidence.
(3) Summary exhibits. The contents of voluminous writings,
recordings, or photographs which cannot conveniently be examined in the
hearing may be presented in the form of a chart, summary, or
calculation. The originals, or duplicates, shall be made available for
examination or copying, or both, by other parties at a reasonable time
and place. The Copyright Royalty Judges may order that they be produced
in the hearing.
(d) Copies. Anyone presenting exhibits as evidence must present
copies to all other participants in the proceedings, or their attorneys,
and afford them an opportunity to examine the exhibits in their entirety
and offer into evidence any other portion that may be considered
material and relevant.
(e) Introduction of studies and analyses. If studies or analyses are
offered in evidence, they shall state clearly the study plan, the
principles and methods underlying the study, all relevant assumptions,
all variables considered in the analysis, the techniques of data
collection, the techniques of estimation and testing, and the results of
the study's actual estimates and tests presented in a format commonly
accepted within the relevant field of expertise implicated by the study.
The facts and judgments upon which conclusions are based shall be stated
clearly, together with any alternative courses of action considered.
Summarized descriptions of input data, tabulations of input data and the
input data themselves shall be retained.
(f) Objections. Parties are entitled to raise objections to evidence
on any proper ground during the course of the
[[Page 833]]
hearing and to raise an objection that an opposing party has not
furnished unprivileged underlying documents.
(g) New exhibits for use in cross-examination. Exhibits that have
not been identified and exchanged in advance may be shown to a witness
on cross-examination. However, copies of such exhibits must be
distributed to the Copyright Royalty Judges and to the other
participants before being shown to the witness at the time of cross-
examination, unless the Copyright Royalty Judges direct otherwise. Such
exhibits can be used solely to impeach the witness's direct testimony.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006;
71 FR 59010, Oct. 6, 2006]
Sec.351.11 Rebuttal proceedings.
Written rebuttal statements shall be filed at a time designated by
the Copyright Royalty Judges upon conclusion of the hearing of the
direct case, in the same form and manner as the written direct
statement, except that the claim or the requested rate shall not have to
be included if it has not changed from the written direct statement.
Further proceedings at the rebuttal stage shall follow the schedule
ordered by the Copyright Royalty Judges.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53329, Sept. 11, 2006]
Sec.351.12 Closing the record.
To close the record of a proceeding, the presiding Judge shall make
an announcement that the taking of evidence has concluded.
[71 FR 53330, Sept. 11, 2006]
Sec.351.13 Transcript and record.
(a) An official reporter for the recording and transcribing of
hearings shall be designated by the Copyright Royalty Judges. Anyone
wishing to inspect the transcript of a hearing may do so at the offices
of the Copyright Royalty Board.
(b) The transcript of testimony and written statements, except those
portions to which an objection has been sustained, and all exhibits,
documents and other items admitted in the course of a proceeding shall
constitute the official written record. The written record, along with
the Copyright Royalty Judges' final determination, shall be available at
the Copyright Royalty Board's offices for public inspection and copying.
[71 FR 53330, Sept. 11, 2006]
Sec.351.14 Proposed findings of fact and conclusions of law.
(a) Any party to the proceeding may file proposed findings of fact
and conclusions, briefs or memoranda of law, or may be directed by the
Copyright Royalty Judges to do so. Such filings, and any replies to
them, shall take place after the record has been closed.
(b) Failure to file when directed to do so shall be considered a
waiver of the right to participate further in the proceeding unless good
cause for the failure is shown. A party waives any objection to a
provision in the determination unless the provision conflicts with a
proposed finding of fact or conclusion of law filed by the party.
(c) Proposed findings of fact shall be numbered by paragraph and
include all basic evidentiary facts developed on the record used to
support proposed conclusions, and shall contain appropriate citations to
the record for each evidentiary fact. Proposed conclusions shall be
stated and numbered by paragraph separately. Failure to comply with this
paragraph (c) may result in the offending paragraph being stricken.
[71 FR 53330, Sept. 11, 2006]
Sec.351.15 Remand.
In the event of a remand from the United States Court of Appeals for
the District of Columbia Circuit of a final determination of the
Copyright Royalty Judges, the parties to the proceeding shall within 45
days from the issuance of the mandate from the Court of Appeals file
with the Judges written proposals for the conduct and schedule of the
resolution of the remand.
[74 FR 38533, Aug. 4, 2009]
PART 352_DETERMINATIONS--Table of Contents
Sec.
352.1 How made.
352.2 Timing.
352.3 Final determinations.
[[Page 834]]
Authority: 17 U.S.C. 803.
Source: 70 FR 30905, May 31, 2005, unless otherwise noted.
Sec.352.1 How made.
Except for decisions authorized by law to be made by a single
Copyright Royalty Judge, determinations in a proceeding will be made by
a majority of the Copyright Royalty Judges. The opinion or opinions of
the majority and any dissenting opinion will be included in the
determination. Each determination will be transmitted to the Register of
Copyrights to enable review for consistency with the Copyright Act on
the day it is issued.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]
Sec.352.2 Timing.
The Copyright Royalty Judges will issue their determination within
11 months of the date of the post-discovery settlement conference or 15
days before the expiration of the existing rates or terms in a
proceeding to determine successors to rates or terms that will expire on
a specific date, whichever date first occurs. The date the determination
is ``issued'' refers to the date of the order.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]
Sec.352.3 Final determinations.
Unless a motion for a rehearing is timely filed within 15 days, the
determination by the Copyright Royalty Judges pursuant to 17 U.S.C.
803(c) in a proceeding is final when it is issued.
[71 FR 53330, Sept. 11, 2006]
PART 353_REHEARING--Table of Contents
Sec.
353.1 When granted.
353.2 Form and content of rehearing motions.
353.3 Procedure on rehearing.
353.4 Filing deadline.
353.5 Participation not required.
Authority: 17 U.S.C. 803.
Source: 70 FR 30905, May 31, 2005, unless otherwise noted.
Sec.353.1 When granted.
A motion for rehearing may be filed by any participant in the
relevant proceeding. The Copyright Royalty Judges may grant rehearing
upon a showing that any aspect of the determination may be erroneous.
[71 FR 53330, Sept. 11, 2006]
Sec.353.2 Form and content of rehearing motions.
A motion for rehearing shall not exceed 10 pages in length and must
set forth, in the beginning of its text, a brief summary statement of
the aspects of the determination believed by the moving participant to
be without evidentiary support in the record or contrary to legal
requirements.
Sec.353.3 Procedure on rehearing.
Upon receipt of a motion for rehearing, the Copyright Royalty Judges
will issue an appropriate order. No participant shall file a response to
a rehearing motion, unless such response is allowed by order of the
Copyright Royalty Judges.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]
Sec.353.4 Filing deadline.
A motion for rehearing must be filed within 15 days after the date
on which the Copyright Royalty Judges issue an initial determination.
[71 FR 53330, Sept. 11, 2006]
Sec.353.5 Participation not required.
In any case in which a response to a rehearing motion is allowed, or
rehearing is granted, an opposing party shall not be required to
participate in the rehearing. The Copyright Royalty Judges will not draw
any negative inference from a lack of participation in a rehearing.
Nonparticipation in rehearing proceedings may limit the scope of their
participation in judicial review proceedings as set forth in 17 U.S.C.
803(d)(1).
[70 FR 30905, May 31, 2005, as amended at 71 FR 53330, Sept. 11, 2006]
[[Page 835]]
PART 354_SUBMISSIONS TO THE REGISTER OF COPYRIGHTS--Table of Contents
Sec.
354.1 Material questions of copyright law.
354.2 Novel questions.
354.3 Register of Copyrights' authority to redesignate referrals.
Authority: 17 U.S.C. 802.
Source: 70 FR 30905, May 31, 2005, unless otherwise noted.
Sec.354.1 Material questions of copyright law.
(a) Discretionary referrals. The Copyright Royalty Judges may seek
guidance from the Register of Copyrights with respect to a material
question of substantive law, concerning an interpretation or
construction of those provisions of the Copyright Act, that arises in
the course of their proceedings.
(b) How presented. A question of substantive law may be referred to
the Register of Copyrights at the request of one or more of the
Copyright Royalty Judges. A question of substantive law may also be
referred to the Register of Copyrights as a request submitted by motion
of a participant, provided that one or more of the Copyright Royalty
Judges agrees with the participant's request.
(1) Referral by Judges. One or more of the Copyright Royalty Judges
may refer what he or she believes to be a material question of
substantive law to the Register of Copyrights at any time during a
proceeding by issuing a written referral that is made part of the record
of that proceeding. The referral will state the issue(s) to be referred
and the schedule for the filing of briefs by the parties of the
issue(s). After the briefs and other relevant materials are received,
they will be transmitted to the Register of Copyrights.
(2) Motion by participant. Any participant may submit a motion to
the Copyright Royalty Judges (but not to the Register of Copyrights)
requesting their referral to the Register of Copyrights a question that
the participant believes would be suitable for referral under paragraph
(a) of this section.
(i) Content. The motion should be captioned ``Motion of
[Participant(s)] Requesting Referral of Material Question of Substantive
Law.'' The motion should set forth, at the outset, the precise legal
question for which the moving party is seeking interlocutory referral to
the Register of Copyrights. The motion should then proceed to explain,
with brevity, why the issue meets the criteria for potential referral
under paragraph (a) of this section and why the interests of fair and
efficient adjudication would be best served by obtaining interlocutory
guidance from the Register of Copyrights. The motion should not include
argument on the merits of the issue, but may include a suggested
schedule of briefing that would make reasonable provision for comments
and legal arguments, in such a way as to avoid delay and duplication.
(ii) Time of motion. A motion for referral of a material question of
substantive law to the Register of Copyrights should be filed as soon as
possible in the relevant proceeding, but no later than any deadline set
by the Copyright Royalty Judges.
(iii) Action on motion--(A) Referral granted. Upon consideration of
a Motion Requesting Referral of Material Question of Substantive Law, if
one or more of the Copyright Royalty Judges agrees with the request, the
Chief Judge shall issue an appropriate referral. The referral will state
the issue(s) to be referred and the schedule for the filing of briefs by
the parties of the issue(s). After the briefs and other relevant
materials are received, they will be transmitted to the Register of
Copyrights.
(B) Referral denied. If none of the Copyright Royalty Judges agrees
with the request, the Board will issue an order denying the request
which will provide the basis for the decision. A copy of any order
denying a Motion Requesting Referral of Material Question of Substantive
Law will be transmitted to the Register of Copyrights.
(c) No effect on proceedings. The issuance of a request to the
Register of Copyrights for an interpretive ruling under this part does
not delay or otherwise affect the schedule of the participants'
obligations in the relevant ongoing proceeding, unless that schedule or
those obligations are expressly changed
[[Page 836]]
by order of the Copyright Royalty Judges.
(d) Binding effect; time limit. The Copyright Royalty Judges will
not issue a final determination in a proceeding where the discretionary
referral of a question to the Register of Copyrights under this part is
pending, unless the Register has not delivered the decision to the
Copyright Royalty Judges within 14 days after the Register receives all
of the briefs of the participants. If the decision of the Register of
Copyrights is timely delivered to the Copyright Royalty Judges, the
decision will be included in the record of the proceeding. The legal
interpretation embodied in the timely delivered response of the Register
of Copyrights in resolving material questions of substantive law is
binding upon the Copyright Royalty Judges and will be applied by them in
their final determination in the relevant proceeding.
[71 FR 53330, Sept. 11, 2006]
Sec.354.2 Novel questions.
(a) Mandatory referrals. If the material question of substantive law
described in Sec.354.1(a) is a novel question of law, referral to the
Register of Copyrights by the Copyright Royalty Judges is mandatory. A
``novel question of law'' is a question of law that has not been
determined in the prior decisions, determinations, or rulings under the
Copyright Act of the Copyright Royalty Judges, the Librarian of
Congress, the Register of Copyrights, the Copyright Arbitration Royalty
Panels (to the extent they are consistent with the current decisions,
determinations, or rulings of the Register of Copyrights or the
Librarian of Congress), or the former Copyright Royalty Tribunal.
(b) Procedures. The procedures set forth for the discretionary
referral of material questions of copyright law to the Register of
Copyrights by the Copyright Royalty Judges, set forth in Sec.354.1,
shall also govern the mandatory referral of novel questions, except that
the Register of Copyrights' decision will be timely if it is delivered
to the Copyright Royalty Judges within 30 days after the Register of
Copyrights has received all of the briefs or comments of the
participants. The Copyright Royalty Judges will not issue a final
determination in a proceeding where the referral of a novel question to
the Register of Copyrights under this part is pending, unless this 30-
day period has expired. The legal interpretation embodied in the timely
delivered response of the Register of Copyrights in resolving material
questions of substantive law is binding upon the Copyright Royalty
Judges and will be applied by them in their final determination in the
relevant proceeding.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53331, Sept. 11, 2006]
Sec.354.3 Register of Copyrights' authority to redesignate referrals.
If, during the 14-day period of a discretionary referral of a
material question of law under Sec.354.1, the Register of Copyrights
determines that the question is a ``novel'' one within the meaning of
Sec.354.2(a), the Register may notify the Copyright Royalty Judges of
that determination. The Copyright Royalty Judges will be bound by such a
determination by the Register of Copyrights and will regard the
Register's decision as timely delivered if it is received within the 30-
day period applicable to novel question referrals.
[70 FR 30905, May 31, 2005, as amended at 71 FR 53331, Sept. 11, 2006]
PART 355_ADMINISTRATIVE ASSESSMENT PROCEEDINGS--Table of Contents
Sec.
355.1 Proceedings in general.
355.2 Commencement of proceedings.
355.3 Submissions and discovery.
355.4 Negotiation periods.
355.5 Hearing procedures.
355.6 Determinations.
355.7 Definitions.
Authority: 17 U.S.C. 801; 17 U.S.C. 115.
Source: 84 FR 32308, July 8, 2019, unless otherwise noted.
Sec.355.1 Proceedings in general.
(a) Scope. This section governs proceedings before the Copyright
Royalty Judges to determine or adjust the Administrative Assessment
pursuant to the Copyright Act, 17 U.S.C. 115(d), including establishing
procedures to enable the Copyright Royalty Judges to
[[Page 837]]
make necessary evidentiary or procedural rulings.
(b) Rulings. The Copyright Royalty Judges may make any necessary
procedural or evidentiary rulings during any proceeding under this
section and may, before commencing a proceeding under this section, make
any rulings that will apply to proceedings to be conducted under this
section.
(c) Role of Chief Judge. The Chief Copyright Royalty Judge, or an
individual Copyright Royalty Judge designated by the Chief Copyright
Royalty Judge, shall:
(1) Administer an oath or affirmation to any witness; and
(2) Rule on objections and motions.
Sec.355.2 Commencement of proceedings.
(a) Commencement of initial Administrative Assessment proceeding.
The Copyright Royalty Judges shall commence a proceeding to determine
the initial Administrative Assessment by publication no later than July
8, 2019, of a notice in the Federal Register seeking the filing of
petitions to participate in the proceeding.
(b) Adjustments of the Administrative Assessment. Following the
determination of the initial Administrative Assessment, the Mechanical
Licensing Collective, the Digital Licensee Coordinator, if any, and
interested copyright owners, Digital Music Providers, or Significant
Nonblanket Licensees may file a petition with the Copyright Royalty
Judges to commence a proceeding to adjust the Administrative Assessment.
Any petition for adjustment of the Administrative Assessment must be
filed during the month of May and may not be filed earlier than 1 year
following the most recent publication in the Federal Register of a
determination of the Administrative Assessment by the Copyright Royalty
Judges. The Copyright Royalty Judges shall accept a properly filed
petition under this paragraph (b) as sufficient grounds to commence a
proceeding to adjust the Administrative Assessment and shall publish a
notice in the Federal Register in the month of June seeking petitions to
participate in the proceeding.
(c) Required participants. The Mechanical Licensing Collective and
the Digital Licensee Coordinator designated by the Register of
Copyrights in accordance with 17 U.S.C. 115(d)(5) shall each file a
petition to participate and shall participate in each Administrative
Assessment proceeding under this section.
(d) Other eligible participants. A copyright owner, Digital Music
Provider, or Significant Nonblanket Licensee may file a petition to
participate in a proceeding under paragraph (a) or (b) of this section.
The Copyright Royalty Judges shall accept petitions to participate filed
under this paragraph (d) unless the Judges find that the petitioner
lacks a significant interest in the proceeding.
(e) Petitions to participate. Each petition to participate filed
under this section must include:
(1) A filing fee of $150;
(2) The full name, address, telephone number, and email address of
the petitioner;
(3) The full name, address, telephone number, and email address of
the person filing the petition and of the petitioner's representative,
if either differs from the filer; and
(4) Factual information sufficient to establish that the petitioner
has a significant interest in the determination of the Administrative
Assessment.
(f) Notice of identity of petitioners. The Copyright Royalty Judges
shall give notice to all petitioners of the identity of all other
petitioners.
(g) Proceeding Schedule. (1) The Copyright Royalty Judges shall
establish a schedule for the proceeding, which shall include dates for:
(i) A first negotiation period of 60 days, beginning on the date of
commencement of the proceeding;
(ii) Filing of the opening submission by the Mechanical Licensing
Collective described in Sec.355.3(b) or (c), with concurrent
production of required documents and disclosures;
(iii) A period of 60 days, beginning on the day after the date the
Mechanical Licensing Collective files its opening submission, for the
Digital Licensee Coordinator and any other participant in the
proceeding, other than the Mechanical Licensing Collective, to serve
discovery requests and complete discovery pursuant to Sec.355.3(d);
[[Page 838]]
(iv) Filing of responsive submissions by the Digital Licensee
Coordinator and any other participant in the proceeding, with concurrent
production of required documents and disclosures;
(v) A period of 60 days, beginning on the day after the due date for
filing responsive submissions, for the Mechanical Licensing Collective
to serve discovery requests and complete discovery of the Digital
Licensee Coordinator and any other participant in the proceeding
pursuant to Sec.355.3(g);
(vi) A second negotiation period of 14 days, commencing on the day
after the end of the Mechanical Licensing Collective's discovery period;
(vii) Filing of a reply submission, if any, by the Mechanical
Licensing Collective;
(viii) Filing of a joint pre-hearing submission by the Mechanical
Licensing Collective, the Digital Licensee Coordinator, and any other
participant in the hearing; and
(ix) A hearing on the record.
(2) The Copyright Royalty Judges may, for good cause shown and upon
reasonable notice to all participants, modify the schedule, except no
participant in the proceeding may rely on a schedule modification as a
basis for delaying the scheduled hearing date. The Copyright Royalty
Judges may alter the hearing schedule only upon a showing of
extraordinary circumstances. No alteration of the schedule shall change
the due date of the determination.
Sec.355.3 Submissions and discovery.
(a) Protective orders. During the first negotiation period, the
Mechanical Licensing Collective, the Digital Licensee Coordinator, and
any other participants that are represented by counsel shall negotiate
and agree upon a written protective order to preserve the
confidentiality of any confidential documents, depositions, or other
information exchanged or filed by the participants in the proceeding. No
later than 15 days after the Judges' identification of participants,
proponents of a protective order shall file with the Copyright Royalty
Judges a motion for review and approval of the order. No participant in
the proceeding shall distribute or exchange confidential documents,
depositions, or other information with any other participant in the
proceeding until the receiving participant affirms in writing its
consent to the protective order governing the proceeding.
(b) Submission by the Mechanical Licensing Collective in the initial
Administrative Assessment proceeding. (1) The Mechanical Licensing
Collective shall file an opening submission, in accordance with the
schedule the Copyright Royalty Judges adopt pursuant to Sec.355.2(g),
setting forth and supporting the Mechanical Licensing Collective's
proposed initial Administrative Assessment. The opening submission shall
consist of a written statement, including any written testimony and
accompanying exhibits, and include reasons why the proposed initial
Administrative Assessment fulfills the requirements in 17 U.S.C.
115(d)(7).
(2) Concurrently with the filing of the opening submission, the
Mechanical Licensing Collective shall produce electronically and deliver
by email to the other participants in the proceeding documents that
identify and demonstrate:
(i) Costs, collections, and contributions as required by 17 U.S.C.
115(d)(7) through the License Availability Date and for the three
calendar years following thereafter;
(ii) The reasonableness of the Collective Total Costs;
(iii) The Collective's processes for requesting proposals, inviting
bids, ranking and selecting the proposals and bids of potential
contracting and sub-contracting parties competitively (or by another
method), including processes for ensuring the absence of overlapping
ownership or other overlapping economic interests between the Collective
or its members and any selected contracting or sub-contracting party;
and
(iv) The reasons why the proposal fulfills the requirements in 17
U.S.C. 115(d)(7).
(3) Concurrently with the filing of the opening submission, the
Mechanical Licensing Collective shall provide electronically and deliver
by email to the other participants in the proceeding written disclosures
that:
[[Page 839]]
(i) List the individuals with material knowledge of, and
availability to provide testimony concerning, the proposed initial
Administrative Assessment; and
(ii) For each listed individual, describe the subject(s) of his or
her knowledge.
(c) Submission by the Mechanical Licensing Collective in proceedings
to adjust the Administrative Assessment. (1) The Mechanical Licensing
Collective shall file an opening submission according to the schedule
the Copyright Royalty Judges adopt pursuant to Sec.355.2(g). The
opening submission shall set forth and support the Mechanical Licensing
Collective's proposal to maintain or adjust the Administrative
Assessment, including reasons why the proposal fulfills the requirements
in 17 U.S.C. 115(d)(7). The opening submission shall include a written
statement, any written testimony and accompanying exhibits, including
financial statements from the three most recent years' operations of the
Mechanical Licensing Collective with annual budgets as well as annual
actual income and expense statements.
(2) Concurrently with the filing of the opening submission, the
Mechanical Licensing Collective shall produce electronically and deliver
by email to the other participants in the proceeding documents that
identify and demonstrate:
(i) Costs, collections, and contributions as required by 17 U.S.C.
115(d)(7) for the preceding three calendar years and the three calendar
years following thereafter;
(ii) For the preceding three calendar years, the amount of actual
Collective Total Costs that was not sufficiently funded by the prior
Administrative Assessment, or the amount of any surplus from the prior
Administrative Assessment after funding actual Collective Total Costs;
(iii) Actual collections from Digital Music Providers and
Significant Nonblanket Licensees for the preceding three calendar years
and anticipated collections for the three calendar years following
thereafter;
(iv) The reasonableness of the Collective Total Costs; and
(v) The Collective's processes for requesting proposals, inviting
bids, ranking and selecting the proposals and bids of potential
contracting and sub-contracting parties competitively (or by another
method), including processes for ensuring the absence of overlapping
ownership or other overlapping economic interests between the Collective
or its members and any selected contracting or sub-contracting party.
(3) Concurrently with the filing of the opening submission, the
Mechanical Licensing Collective shall provide electronically and deliver
by email to the other participants in the proceeding written disclosures
that:
(i) List the individuals with material knowledge of, and
availability to provide testimony concerning, the proposed adjusted
Administrative Assessment; and
(ii) For each listed individual, describe the subject(s) of his or
her knowledge.
(d) First discovery period. (1) During the first discovery period,
the Digital Licensee Coordinator and any other participant in the
proceeding other than the Mechanical Licensing Collective, acting
separately or represented jointly to the extent permitted by the
concurrence of their interests, may serve requests for additional
documents on the Mechanical Licensing Collective and any other
participant in the proceeding. Any document request shall be limited to
documents that are Discoverable.
(2) The Digital Licensee Coordinator and any other participant in
the proceeding, other than the Mechanical Licensing Collective, may
notice and take depositions as provided in paragraph (e) of this
section.
(e) Depositions. The Digital Licensee Coordinator may give notice of
and take up to five depositions during the first discovery period. To
the extent any other participant eligible to take discovery during the
first discovery period and whose interests may not be fully represented
by either the Mechanical Licensing Collective or the Digital Licensee
Coordinator seeks to notice and take a deposition, that participant
shall first notify all other proceeding participants and the
participants shall attempt, in good faith, to accommodate by agreement
of the parties any deposition for which good cause is
[[Page 840]]
shown. If, after good faith discussions, the participants are unable to
agree with respect to any such additional deposition, the participant
seeking to take the deposition may file a motion pursuant to paragraph
(h) of this section. The Mechanical Licensing Collective may give notice
of and take up to five depositions during the second discovery period.
Any deposition under this paragraph (e) shall be no longer than seven
hours in duration on the record (exclusive of adjournments for lunch and
other personal needs), with each deponent subject to a maximum of one
seven-hour deposition in any Administrative Assessment proceeding,
except as otherwise extended in this part, or upon a motion
demonstrating good cause to extend the hour and day limits. In addition
to the party noticing the deposition, any other parties to the
proceeding may attend any depositions and shall have a right, but not an
obligation, to examine the deponent during the final hour of the
deposition, (except as that allocation of time may otherwise be
stipulated by agreement of all participants attending the deposition),
provided that any participant exercising its right to examine a deponent
provides notice of that intent no later than two days prior to the
scheduled deposition date. The initial notice of deposition under this
paragraph (e) must be delivered by email or other electronic means to
all participants in the proceeding, and such notice shall be sent no
later than seven days prior to the scheduled deposition date, unless the
deposition is scheduled to occur less than seven days after the date of
the notice by agreement of the parties and the deponent. An individual
is properly named as a deponent if that individual likely possesses
information that meets the standards for document production under this
part.
(f) Responsive submissions by the Digital Licensee Coordinator and
other participants. The Digital Licensee Coordinator and any other
participant in the proceeding shall file responsive submissions with the
Copyright Royalty Judges in accordance with the schedule adopted by the
Copyright Royalty Judges.
(1) Responsive submissions of the Digital Licensee Coordinator, and
any other participant in the proceeding, shall consist of a written
statement, including any written testimony and accompanying exhibits,
stating the extent to which the filing participant agrees with the
Administrative Assessment proposed by the Mechanical Licensing
Collective. If the filing participant disagrees with all or part of the
Administrative Assessment proposed by the Mechanical Licensing
Collective, then the written statement, including any written testimony
and accompanying exhibits, shall include analysis necessary to
demonstrate why the Administrative Assessment proposed by the Mechanical
Licensing Collective does not fulfill the requirements set forth in 17
U.S.C. 115(d)(7).
(2) Concurrently with the filing of a responsive submission
indicating disagreement with the Administrative Assessment proposed by
the Mechanical Licensing Collective, the filing participant shall
produce electronically and deliver by email to the participants in and
parties to the proceeding documents that demonstrate why the
Administrative Assessment proposed by the Mechanical Licensing
Collective does not fulfill the requirements set forth in 17 U.S.C.
115(d)(7).
(3) Concurrently with the filing of responsive submission(s), the
filing participant shall provide electronically and deliver by email to
the other participants in the proceeding written disclosures that:
(i) List the individuals with material knowledge of, and
availability to provide testimony concerning, the reasons why the
Administrative Assessment proposed by the Mechanical Licensing
Collective does not fulfill the requirements set forth in 17 U.S.C.
115(d)(7); and
(ii) For each listed individual, describe the subject(s) of his or
her knowledge.
(g) Second discovery period. (1) During the discovery period
described in Sec.355.2(g)(1)(v), the Mechanical Licensing Collective
may serve requests for additional documents on the Digital Licensee
Coordinator and other parties to the proceeding. Such requests shall be
limited to documents that are Discoverable.
[[Page 841]]
(2) The Mechanical Licensing Collective may notice and take
depositions as provided in paragraph (e) of this section.
(h) Discovery disputes. (1) Prior to invoking the procedures set
forth in this paragraph (h), any participant that seeks intervention of
the Copyright Royalty Judges to resolve a discovery dispute must first
attempt in good faith to resolve the dispute between it and the other
proceeding participant(s). All proceeding participants have a duty to,
and shall, cooperate in good faith to resolve any such disputes without
involvement of the Copyright Royalty Judges to the extent possible.
(2) In the event that two or more participants are unable to resolve
a discovery dispute after good-faith consultation, a participant
requesting discovery may file a motion and brief of no more than 1,500
words with the Copyright Royalty Judges. The motion must include a
certification that the participant filing the motion attempted to
resolve the dispute at issue in good faith, but was unable to do so. For
a dispute involving the provision of documents or deposition testimony,
the brief shall detail the reasons why the documents or deposition
testimony are Discoverable.
(3) The responding participant may file a responsive brief of no
more than 1,500 words within two business days of the submission of the
initial brief.
(4) Absent unusual circumstances, the Copyright Royalty Judges will
rule on the dispute within three business days of the filing of the
responsive brief. Upon reasonable notice to the participants, the Chief
Copyright Royalty Judge, or an individual Copyright Royalty Judge
designated by the Chief Copyright Royalty Judge, may consider and rule
on any discovery dispute in a telephone conference with the relevant
participants.
(i) Reply submissions by the Mechanical Licensing Collective. The
Mechanical Licensing Collective may file a written reply submission
addressed only to the issues raised in any responsive submission(s)
filed under paragraph (f) of this section in accordance with the
schedule adopted by the Copyright Royalty Judges, which reply may
include written testimony, documentation, and analysis addressed only to
the issues raised in responsive submission(s).
(j) Joint pre-hearing submission. No later than 14 days prior to the
commencement of the hearing, the Mechanical Licensing Collective, the
Digital Licensee Coordinator, and any other parties to the proceeding
shall file jointly a written submission with the Copyright Royalty
Judges, stating:
(1) Specific areas of agreement between the parties; and
(2) A concise statement of issues remaining in dispute with respect
to the determination of the Administrative Assessment.
Sec.355.4 Negotiation periods.
(a) First negotiation period. The Mechanical Licensing Collective
and the Digital Licensee Coordinator shall, and other participants may,
participate in good faith in a first negotiation period in an attempt to
reach an agreement with respect to any issues in dispute regarding the
Administrative Assessment, commencing on the day of commencement under
Sec.355.2(a) or (b), as applicable, and lasting 60 days. The
Mechanical Licensing Collective shall advise the other participants, via
email, about the negotiations and invite them to participate, as those
participants appear in the participant list in eCRB.
(b) Second negotiation period. The Mechanical Licensing Collective
and the Digital Licensee Coordinator shall, and all other participants
may, participate in good faith in a second negotiation period commencing
on a date set by the Copyright Royalty Judges and lasting 14 days.
(c) Written notification regarding result of negotiations. By the
close of a negotiation period, the Mechanical Licensing Collective and
the Digital Licensee Coordinator shall file in eCRB a joint written
notification indicating
(1) Whether they have reached an agreement, in whole or in part,
with respect to issues in dispute regarding the Administrative
Assessment,
(2) The details of any agreement,
(3) A description of any issues as to which they have not reached
agreement, and
(4) A list of other participants that intend to join in any proposed
settlement resulting from the agreement of
[[Page 842]]
the Mechanical Licensing Collective and the Digital Licensee
Coordinator. Participants, other than the settling parties, may, within
five days following the filing of a proposed settlement, file in eCRB
comments (not to exceed ten pages and not to exceed 2500 words exclusive
of cover pages, tables of contents, tables of authorities, signature
blocks, exhibits, and proof of delivery) about the proposed settlement.
The settling parties may, within five days following the comment
deadline, file in eCRB a joint response to any comments.
Sec.355.5 Hearing procedures.
(a) En banc panel. The Copyright Royalty Judges shall preside en
banc over any hearing to determine the reasonableness of and the
allocation of responsibility to contribute to the Administrative
Assessment.
(b) Attendance and participation. The Mechanical Licensing
Collective, through an authorized officer or other managing agent, and
the Digital Licensee Coordinator, if any, through an authorized officer
or other managing agent, shall attend and participate in the hearing.
Any other entity that has filed a valid Petition to Participate and that
the Copyright Royalty Judges have not found to be disqualified shall
participate in an Administrative Assessment proceeding hearing. If the
Copyright Royalty Judges find, sua sponte or upon motion of a
participant, that a participant has failed substantially to comply with
any of the requirements of this part, the Copyright Royalty Judges may
exclude that participant from participating in the hearing; provided,
however, that the Mechanical Licensing Collective and the Digital
Licensee Coordinator shall not be subject to exclusion.
(c) Admission of written submissions, deposition transcripts, and
other documents. Subject to any valid objections of a participant, the
Copyright Royalty Judges shall admit into evidence at an Administrative
Assessment hearing the complete initial, responsive, and reply
submissions that the participants have filed. Participants shall not
file deposition transcripts, but may utilize deposition transcripts for
the purposes and under the conditions described in Fed. R. Civ. P. 32
and interpreting case law. Any participant may expand upon excerpts at
the hearing or counter-designate excerpts in the written record to the
extent necessary to provide appropriate context for the record. During
the hearing, upon the oral request of any participant, any document
proposed as an exhibit by any participant shall be admitted into
evidence so long as that document was produced previously by any
participant, subject only to a valid evidentiary objection.
(d) Argument and examination of witnesses. An Administrative
Assessment hearing shall consist of the oral testimony of witnesses at
the hearing and arguments addressed to the written submissions and oral
testimony proffered by the participants, except that the Copyright
Royalty Judges may, sua sponte or upon written or oral request of a
participant, find good cause to dispense with the oral direct, cross, or
redirect examination of a witness, and rely, in whole or in part, on
that witness's written testimony. The Copyright Royalty Judges may, at
their discretion, and in a procedure the Judges describe in a prehearing
Scheduling Order, and after consideration of the positions of counsel
for the participants, require expert witnesses to be examined
concurrently by the Judges and/or the attorneys. If the Judges so order,
the expert witnesses may then testify through a colloquy among
themselves, including questions addressed to each other, as limited and
directed by the Judges and subject to valid objections by counsel and
ruled upon by the Judges. The concurrent examination procedure may be
utilized in conjunction with, or in lieu of, traditional direct, cross,
redirect and (with leave of the Judges) further direct or cross
examination. In the absence of any order directing the use of concurrent
examination, only the traditional form of examination described above
shall be utilized. Only witnesses who have submitted written testimony
or who were deposed in the proceeding may be examined at the hearing. A
witness's oral testimony shall not exceed the subject matter of his or
her written or deposition testimony. Unless the Copyright Royalty
Judges, on
[[Page 843]]
motion of a participant, order otherwise, no witness, other than an
expert witness or a person designated as a party representative for the
proceeding, may listen to, or review a transcript of, testimony of
another witness or witnesses prior to testifying.
(e) Objections. Participants may object to evidence on any proper
ground, by written or oral objection, including on the ground that a
participant seeking to offer evidence for admission has failed without
good cause to produce the evidence during the discovery process. The
Copyright Royalty Judges may, but are not required to, admit hearsay
evidence to the extent they deem it appropriate.
(f) Transcript and record. The Copyright Royalty Judges shall
designate an official reporter for the recording and transcribing of
hearings. Anyone wishing to inspect the transcript of a hearing, to the
extent the transcript is not restricted under a protective order, may do
so when the hearing transcript is filed in the Copyright Royalty Judges'
electronic filing and case management system, eCRB, at https://
app.crb.gov after the hearing concludes. The availability of restricted
portions of any transcript shall be described in the protective order.
Any participant desiring daily or expedited transcripts shall make
separate arrangements with the designated court reporter.
Sec.355.6 Determinations.
(a) How made. The Copyright Royalty Judges shall determine the
amount and terms of the Administrative Assessment in accordance with 17
U.S.C. 115(d)(7). The Copyright Royalty Judges shall base their
determination on their evaluation of the totality of the evidence before
them, including oral testimony, written submissions, admitted exhibits,
designated deposition testimony, the record associated with any motions
and objections by participants, the arguments presented, and prior
determinations and interpretations of the Copyright Royalty Judges (to
the extent those prior determinations and interpretations are not
inconsistent with a decision of the Register of Copyrights that was
timely delivered to the Copyright Royalty Judges pursuant to 17 U.S.C.
802(f)(1)(A) or (B), or with a decision of the Register of Copyrights
made pursuant to 17 U.S.C. 802(f)(1)(D), or with a decision of the U.S.
Court of Appeals for the D.C. Circuit).
(b) Timing. The Copyright Royalty Judges shall issue and cause their
determination to be published in the Federal Register not later than one
year after commencement of the proceeding under Sec.355.2(a) or, in a
proceeding commenced under Sec.355.2(b), during June of the calendar
year following the commencement of the proceeding.
(c) Effectiveness. (1) The initial Administrative Assessment
determined in the proceeding under Sec.355.2(a) shall be effective as
of the License Availability Date and shall continue in effect until the
Copyright Royalty Judges determine or approve an adjusted Administrative
Assessment under Sec.355.2(b).
(2) Any adjusted Administrative Assessment determined in a
proceeding under Sec.355.2(b) shall take effect January 1 of the year
following its publication in the Federal Register.
(d) Adoption of voluntary agreements. In lieu of reaching and
publishing a determination, the Copyright Royalty Judges shall approve
and adopt the amount and terms of an Administrative Assessment that has
been negotiated and agreed to by the Mechanical Licensing Collective and
the Digital Licensee Coordinator pursuant to Sec.355.4.
Notwithstanding the negotiation of an agreed Administrative Assessment,
however, the Copyright Royalty Judges may, for good cause shown, reject
an agreement. If the Copyright Royalty Judges reject a negotiated agreed
Administrative Assessment, they shall proceed with adjudication in
accordance with the schedule in place in the proceeding. Rejection by
the Copyright Royalty Judges of a negotiated agreed Administrative
Assessment shall not prejudice the parties' ability to continue to
negotiate and submit to the Copyright Royalty Judges an alternate agreed
Administrative Assessment or resubmit an amended prior negotiated
agreement that addresses the Judges' reasons for initial rejection at
any time, including during a hearing or after a hearing at
[[Page 844]]
any time before the Copyright Royalty Judges issue a determination.
(e) Continuing authority to amend. The Copyright Royalty Judges
shall retain continuing authority to amend a determination of an
Administrative Assessment to correct technical or clerical errors, or
modify the terms of implementation, for good cause shown, with any
amendment to be published in the Federal Register.
Sec.355.7 Definitions.
Capitalized terms in this part that are defined terms in 17 U.S.C.
115(e) shall have the same meaning as set forth in 17 U.S.C. 115(e). In
addition, for purposes of this part, the following definitions apply:
Digital Licensee Coordinator shall mean the entity the Register of
Copyrights designates as the Digital Licensee Coordinator pursuant to 17
U.S.C. 115(d)(5)(B)(iii), or if the Register makes no such designation,
interested Digital Music Providers and Significant Nonblanket Licensees
representing more than half of the market for uses of musical works in
Covered Activities, acting collectively.
Discoverable documents or deposition testimony are documents or
deposition testimony that are:
(1) Nonprivileged;
(2) Relevant to consideration of whether a proposal or response
thereto fulfills the requirements in 17 U.S.C. 115(d)(7); and
(3) Proportional to the needs of the proceeding, considering the
importance of the issues at stake in the proceeding, the requested
participant's relative access to responsive information, the
participants' resources, the importance of the document or deposition
request in resolving or clarifying the issues presented in the
proceeding, and whether the burden or expense of producing the requested
document or deposition testimony outweighs its likely benefit. Documents
or deposition testimony need not be admissible in evidence to be
Discoverable.
[[Page 845]]
SUBCHAPTER C_SUBMISSION OF ROYALTY CLAIMS
PART 360_FILING OF CLAIMS TO ROYALTY FEES COLLECTED UNDER COMPULSORY
LICENSE--Table of Contents
Subpart A_Cable and Satellite Claims
Sec.
360.1 General.
360.2 Definitions.
360.3 Time of filing.
360.4 Form and content of claims.
Subpart B_Digital Audio Recording Devices and Media (DART) Royalty
Claims
360.20 General.
360.21 Time of filing.
360.22 Form and content of claims.
360.23 Content of notices regarding independent administrators.
Subpart C_Rules of General Application
360.30 Amendment of claims.
360.31 Withdrawal of claims.
360.32 Reinstatement of previously withdrawn claims.
Authority: 17 U.S.C. 801, 803, 805.
Subpart A also issued under 17 U.S.C. 111(d)(4) and 119(b)(4).
Subpart B also issued under 17 U.S.C. 1007(a)(1).
Subpart C also issued under 17 U.S.C. 111(d)(4), 119(b)(4) and
1007(a)(1).
Source: 82 FR 27018, June 13, 2017, unless otherwise noted.
Subpart A_Cable and Satellite Claims
Sec.360.1 General.
This subpart prescribes procedures under 17 U.S.C. 111(d)(4)(A) and
17 U.S.C. 119(b)(4) whereby parties claiming entitlement to cable
compulsory license royalty fees or satellite compulsory license royalty
fees must file claims with the Copyright Royalty Board.
Sec.360.2 Definitions.
For purposes of this subpart, the following definitions will apply:
Cable compulsory license royalty fees means royalty fees deposited
with the Copyright Office pursuant to 17 U.S.C. 111.
Performing rights society has the meaning set forth in 17 U.S.C.
101.
Satellite compulsory license royalty fees means royalty fees
deposited with the Copyright Office pursuant to 17 U.S.C. 119.
Sec.360.3 Time of filing.
(a) During the month of July each year, any party claiming to be
entitled to cable compulsory license royalty fees or satellite
compulsory license royalty fees for secondary transmissions during the
preceding calendar year must file a claim or claims with the Copyright
Royalty Board. No party will receive royalty fees for secondary
transmissions during the specified period unless the party has filed a
timely claim to the fees. Claimants may file claims jointly or as a
single claim. Claimants must file separate claims for cable compulsory
license royalty fees and satellite compulsory license royalty fees. The
Copyright Royalty Board will reject any claim that purports to be for
both cable and satellite royalty fees.
(b) Claims filed with the Copyright Royalty Board will be considered
timely filed only if they are filed online through eCRB during the month
of July, as determined in accordance with Sec.350.7.
(c) Notwithstanding paragraphs (a) and (b) of this section, in any
year in which July 31 falls on a Saturday, Sunday, holiday, or other
nonbusiness day within the District of Columbia or the Federal
Government, the due date for claims to cable or satellite compulsory
license royalty fees will be the first business day in August.
(d) For claims filed electronically through eCRB, the Copyright
Royalty Board will accept the confirmation email generated by eCRB as
proof of filing. The Copyright Royalty Board will accept no other offer
of proof regarding claims filed electronically through eCRB.
[82 FR 27018, June 13, 2017, as amended at 85 FR 37752, June 24, 2020]
[[Page 846]]
Sec.360.4 Form and content of claims.
(a) Electronic filing. (1) Each filer must file claims online using
the claims filing feature of eCRB to claim cable compulsory license
royalty fees or satellite compulsory license royalty fees and must
provide all information required by the online form and its accompanying
instructions.
(2) Filers may access eCRB at https://app.crb.gov. The claims filing
feature for claims to cable compulsory license royalty fees and
satellite compulsory license royalty fees will be available only during
the month of July.
(b) Content--(1) Single claim. A claim filed on behalf of a single
copyright owner of a work or works secondarily transmitted by a cable
system or satellite carrier must include the following information:
(i) The full legal name, address, and email address of the copyright
owner entitled to claim the royalty fees.
(ii) A statement of the nature of the copyright owner's work(s) that
has (have) been secondarily transmitted by a cable system or satellite
carrier establishing a basis for the claim.
(iii) The name, telephone number, full mailing address, and email
address of the person or entity filing the single claim. The information
contained in a filer's eCRB profile shall fulfill this requirement for
claims submitted through eCRB.
(iv) The name, telephone number, and email address of the person
whom the Copyright Royalty Board can contact regarding the claim.
(v) A declaration of authority to file the claim and a certification
of the veracity of the information contained in the claim and the good
faith of the person signing in providing the information. Penalties for
fraud and false statements are provided under 18 U.S.C. 1001 et seq.
(2) Joint claim. A claim filed on behalf of more than one copyright
owner whose works have been secondarily transmitted by a cable system or
satellite carrier must include the following information:
(i) With the exception of joint claims filed by a performing rights
society on behalf of its members, a list including the full legal name,
address, and email address of each copyright owner whose claim(s) are
included in the joint claim. Claims must include an Excel spreadsheet
containing the information if the number of joint claimants is in excess
of ten.
(ii) A general statement of the nature of the copyright owners'
works that have been secondarily transmitted by a cable system or
satellite carrier establishing a basis for the joint claim.
(iii) The name, telephone number, full mailing address, and email
address of the person or entity filing the joint claim. The information
contained in a filer's eCRB profile shall fulfill this requirement.
(iv) The name, telephone number, and email address of a person whom
the Copyright Royalty Board can contact regarding the claim.
(v) A declaration of authority to file the claim and a certification
of the veracity of the information contained in the claim and the good
faith of the person signing in providing the information. Penalties for
fraud and false statements are provided under 18 U.S.C. 1001 et seq.
(c) Changes. In the event the legal name and/or address of the
copyright owner entitled to royalties or the person or entity filing the
claim changes after the filing of the claim, the filer or the copyright
owner shall notify the Copyright Royalty Board of the change. Any other
proposed changes or amendments must be submitted in accordance with 37
CFR 360.30. If the good faith efforts of the Copyright Royalty Board to
contact the copyright owner or filer are frustrated because of outdated
or otherwise inaccurate contact information, the claim may be subject to
dismissal. A person or entity that filed a claim online through eCRB
must notify the Copyright Royalty Board of any change of name or address
by updating the eCRB profile for that person or entity through eCRB as
required by 37 CFR 350.5(g).
[82 FR 27018, June 13, 2017, as amended at 85 FR 37752, June 24, 2020]
[[Page 847]]
Subpart B_Digital Audio Recording Devices and Media (DART) Royalty
Claims
Sec.360.20 General.
This subpart prescribes procedures whereby an interested copyright
party, as defined in 17 U.S.C. 1001(7), claiming to be entitled to
royalty payments made for the importation and distribution in the United
States, or the manufacture and distribution in the United States, of
digital audio recording devices and media (DART) pursuant to 17 U.S.C.
1006, shall file claims with the Copyright Royalty Board.
Sec.360.21 Time of filing.
(a) General. During January and February of each year, every
interested copyright party claiming to be entitled to DART royalty
payments made for quarterly periods ending during the previous calendar
year must file a claim with the Copyright Royalty Board. Claimants may
file claims jointly or as a single claim.
(b) Consequences of an untimely filing. No royalty payments for the
previous calendar year will be distributed to any interested copyright
party who has not filed a claim to those royalty payments during January
or February of the following calendar year.
(c) Authorization. Any organization or association acting as a
common agent for collection and distribution of DART royalty fees must
obtain from its members or affiliates separate, specific, and written
authorization, signed by members, affiliates, or their representatives,
apart from their standard affiliation agreements, for purposes of
royalties claim filing and fee distribution relating to the DART Musical
Works Fund or Sound Recordings Fund. The written authorization, however,
will not be required for claimants to the Musical Works Fund when
either:
(1) The agreement between the organization or association and its
members or affiliates specifically authorizes the entity to represent
its members or affiliates as a common agent before the Copyright Royalty
Board in royalty claims filing and fee distribution proceedings; or
(2) The agreement between the organization or association and its
members or affiliates, as specified in a court order issued by a court
with authority to interpret the terms of the contract, authorizes the
entity to represent its members or affiliates as a common agent before
the Copyright Royalty Board in royalty claims filing and fee
distribution proceedings.
Sec.360.22 Form and content of claims.
(a) Electronic filing. (1) Each claim to DART royalty payments must
be filed online using the claims filing feature of eCRB and must contain
the information required by the online form and its accompanying
instructions.
(2) Filers may access eCRB at https://app.crb.gov. The claims filing
feature for claims to DART royalty payments will be available only
during the months of January and February.
(b) Content. Claims filed by interested copyright parties for DART
royalty payments must include the following information:
(1) The full legal name and address of the person or entity claiming
royalty payments.
(2) The name, telephone number, full mailing address, and email
address of the person or entity filing the claim. The information
contained in a filer's eCRB profile will fulfill this requirement.
(3) The name, telephone number, and email address of a person whom
the Copyright Royalty Board can contact regarding the claim.
(4) A statement as to how the claimant fits within the definition of
interested copyright party.
(5) A statement as to whether the claim is being made against the
Sound Recordings Fund or the Musical Works Fund, as set forth in 17
U.S.C. 1006(b), and as to which Subfund the claim is made. The Subfunds
for the Sound Recordings Fund are the Copyright Owners Subfund and the
Featured Recording Artists Subfund, The Subfunds for the Musical Works
Fund are the Music Publishers Subfund and the Writers Subfund, as
described in 17 U.S.C. 1006(b)(1) through (2).
(6) Identification, establishing a basis for the claim, of at least
one musical work or sound recording embodied in a digital musical
recording or an analog musical recording lawfully made under
[[Page 848]]
title 17 of the United States Code that has been distributed (as that
term is defined in 17 U.S.C. 1001(6)), and that, during the period to
which the royalty payments claimed pertain, has been:
(i) Distributed (as that term is defined in 17 U.S.C. 1001(6)) in
the form of digital musical recordings or analog musical recordings; or
(ii) Disseminated to the public in transmissions.
(7) A declaration of the authority to file the claim and of the
veracity of the information contained in the claim and the good faith of
the person signing in providing the information. Penalties for fraud and
false statements are provided under 18 U.S.C. 1001 et seq.
(c) Changes. In the event that the legal name and/or address of the
claimant changes after the filing of the claim, the claimant must notify
the Copyright Royalty Board of the change. Any other proposed changes or
amendments must be submitted in accordance with 37 CFR 360.30. If the
good faith efforts of the Copyright Royalty Board to contact the
claimant are frustrated because of failure to notify the Copyright
Royalty Board of a name and/or address change, the claim may be subject
to dismissal. A person or entity that filed a claim online through eCRB
must notify the Copyright Royalty Board of any change of name or address
by updating that person or entity's eCRB profile as required by Sec.
350.5(g).
(d) List of claimants. If the claim is a joint claim, it must
include the name of each claimant participating in the joint claim.
Filers submitting joint claims on behalf of ten or fewer claimants, must
list the name of each claimant included in the joint claim directly on
the filed joint claim. Filers submitting joint claims on behalf of more
than ten claimants must include an Excel spreadsheet listing the name of
each claimant included in the joint claim.
(e) Subfunds. If an interested copyright party intends to file
claims against more than one Subfund, each Subfund claim must be filed
separately with the Copyright Royalty Board. The Copyright Royalty Board
will reject any claim that purports to claim funds from more than one
Subfund.
[82 FR 27018, June 13, 2017, as amended at 82 FR 55323, Nov. 21, 2017;
85 FR 37752, June 24, 2020]
Sec.360.23 Content of notices regarding independent administrators.
(a) The independent administrator jointly appointed by the
interested copyright parties, as defined in 17 U.S.C. 1001(7)(A), and
the American Federation of Musicians (or any successor entity) for the
purpose of managing and ultimately distributing royalty payments to
nonfeatured musicians as defined in 17 U.S.C. 1006(b)(1), must file a
notice informing the Copyright Royalty Board of his/her appointment.
(b) The independent administrator jointly appointed by the
interested copyright parties, as defined in 17 U.S.C. 1001(7)(A) and the
American Federation of Television and Radio Artists (or any successor
entity) for the purpose of managing and ultimately distributing royalty
payments to nonfeatured vocalists as defined in 17 U.S.C. 1006(b)(1),
must file a notice online through eCRB informing the Copyright Royalty
Board of his/her appointment.
(c) A notice filed under paragraph (a) or (b) of this section must
include the full name, telephone number, mailing address, and email
address of the place of business of the independent administrator.
(d) The independent administrator must file the notices identified
in paragraphs (a) and (b) of this section through eCRB no later than
March 31 of each year, commencing with March 31, 2018.
[82 FR 27018, June 13, 2017. Redesignated and amended at 85 FR 37753,
June 24, 2020]
Subpart C_Rules of General Application
Sec.360.30 Amendment of claims.
Any claimant may amend a filed claim as of right by filing a Notice
of Amendment during the statutory period for filing annual claims. After
the expiration of the time for filing claims, a claimant may amend a
filed claim as
[[Page 849]]
of right to correct the general description of the nature of the
claimant's work(s), to fix typographical or other nonsubstantive errors
in other portions of the claim, or to strike a claimant or interested
copyright party that was erroneously included in a joint claim. No filer
may amend a filed claim to add additional claimants or interested
copyright parties after the expiration of the time for filing claims.All
Notices of Amendment must be filed online through eCRB.
[82 FR 27018, June 13, 2017, as amended at 85 FR 37753, June 24, 2020]
Sec.360.31 Withdrawal of claims.
Any claimant may withdraw its claim for any royalty year as of right
by filing a Notice of Withdrawal of Claim(s). If a single claimant filed
a Petition to Participate in a proceeding, withdrawal of the claim shall
serve to dismiss the Petition to Participate. If the claimant
withdrawing a claim was included on the Petition to Participate of
another entity, withdrawal of the claim shall not affect the Petition to
Participate as to other claims listed thereon. All Notices of Withdrawal
of Claim(s) must be filed online through eCRB.
[82 FR 27018, June 13, 2017, as amended at 85 FR 37753, June 24, 2020]
Sec.360.32 Reinstatement of previously withdrawn claims.
Once a claimant has withdrawn a claim, that claim may be reinstated
only by order of the Copyright Royalty Judges, on motion showing good
cause and lack of prejudice to other claimants to the applicable year's
royalty funds.
[[Page 850]]
SUBCHAPTER D_NOTICE AND RECORDKEEPING REQUIREMENTS FOR STATUTORY
LICENSES
PART 370_NOTICE AND RECORDKEEPING REQUIREMENTS FOR STATUTORY LICENSES
--Table of Contents
Sec.
370.1 General definitions.
370.2 Notice of use of sound recordings under statutory license.
370.3 Reports of use of sound recordings under statutory license for
preexisting subscription services.
370.4 Reports of use of sound recordings under statutory license for
nonsubscription transmission services, preexisting satellite
digital audio radio services, new subscription services and
business establishment services.
370.5 Designated collection and distribution organizations for reports
of use of sound recordings under statutory license.
Authority: 17 U.S.C. 112(e)(4), 114(f)(3)(A).
Source: 74 FR 52423, Oct. 13, 2009, unless otherwise noted.
Sec.370.1 General definitions.
For purposes of this part, the following definitions apply:
Business Establishment Service is a service that makes ephemeral
phonorecords of sound recordings pursuant to section 112(e) of title 17
of the United States Code and is exempt under section 114(d)(1)(C)(iv)
of title 17 of the United States Code.
Collective is a collection and distribution organization that is
designated under one or both of the statutory licenses by determination
of the Copyright Royalty Judges.
Copyright Owners means sound recording copyright owners under 17
U.S.C. 101, and rights owners under 17 U.S.C. 1401(l)(2), who are
entitled to royalty payments made pursuant to the statutory licenses
under 17 U.S.C. 112(e) and 114.
New Subscription Service is defined in 17 U.S.C. 114(j)(8).
Nonsubscription Transmission Service is a service that makes
noninteractive nonsubscription digital audio transmissions that are not
exempt under section 114(d)(1) of title 17 of the United States Code and
are made as part of a service that provides audio programming
consisting, in whole or in part, of performances of sound recordings,
including transmissions of broadcast transmissions, if the primary
purpose of the service is to provide to the public such audio or other
entertainment programming, and the primary purpose of the service is not
to sell, advertise, or promote particular products or services other
than sound recordings, live concerts, or other music-related events.
Notice of Use of Sound Recordings Under Statutory License is a
written notice to sound recording copyright owners of the use of their
works under section 112(e) or 114(d)(2) of title 17, United States Code,
or both, and is required under this part to be filed by a Service in the
Copyright Office.
Preexisting Satellite Digital Audio Radio Service is defined in 17
U.S.C. 114(j)(10).
Preexisting Subscription Service is defined in 17 U.S.C.
114(j)(11).
Report of Use is a report required to be provided by a Service that
is transmitting sound recordings pursuant to the statutory license set
forth in section 114(d)(2) of title 17 of the United States Code or
making ephemeral phonorecords of sound recordings pursuant to the
statutory license set forth in section 112(e) of title 17 of the United
States Code, or both.
Service is an entity engaged in either the digital transmission of
sound recordings pursuant to section 114(d)(2) of title 17 of the United
States Code or making ephemeral phonorecords of sound recordings
pursuant to section 112(e) of title 17 of the United States Code or
both. The definition of a Service includes an entity that transmits an
AM/FM broadcast signal over a digital communications network such as the
Internet, regardless of whether the transmission is made by the
broadcaster that originates the AM/FM signal or by a third party,
provided that such transmission meets the applicable requirements of the
statutory license
[[Page 851]]
set forth in 17 U.S.C. 114(d)(2). A Service may be further characterized
as either a preexisting subscription service, preexisting satellite
digital audio radio service, nonsubscription transmission service, new
subscription service, business establishment service or a combination of
those.
[74 FR 52423, Oct. 13, 2009, as amended at 84 FR 32312, July 8, 2019]
Sec.370.2 Notice of use of sound recordings under statutory license.
(a) General. This section prescribes rules under which copyright
owners shall receive notice of use of their sound recordings when used
under either section 112(e) or 114(d)(2) of title 17, United States
Code, or both.
(b) Forms and content. A Notice of Use of Sound Recordings Under
Statutory License shall be prepared on a form that may be obtained from
the Copyright Office Web site or from the Licensing Division, and shall
include the following information:
(1) The full legal name of the Service that is either commencing
digital transmissions of sound recordings or making ephemeral
phonorecords of sound recordings under statutory license or doing both.
(2) The full address, including a specific number and street name or
rural route, of the place of business of the Service. A post office box
or similar designation will not be sufficient except where it is the
only address that can be used in that geographic location.
(3) The telephone number and facsimile number of the Service.
(4) Information on how to gain access to the online Web site or
homepage of the Service, or where information may be posted under this
section concerning the use of sound recordings under statutory license.
(5) Identification of each license under which the Service intends
to operate, including identification of each of the following categories
under which the Service will be making digital transmissions of sound
recordings: Preexisting subscription service, preexisting satellite
digital audio radio service, nonsubscription transmission service, new
subscription service or business establishment service.
(6) The date or expected date of the initial digital transmission of
a sound recording to be made under the section 114 statutory license
and/or the date or the expected date of the initial use of the section
112(e) license for the purpose of making ephemeral phonorecords of the
sound recordings.
(7) Identification of any amendments required by paragraph (e) of
this section.
(c) Signature. The Notice shall include the signature of the
appropriate officer or representative of the Service that is either
transmitting the sound recordings or making ephemeral phonorecords of
sound recordings under statutory license or doing both. The signature
shall be accompanied by the printed or typewritten name and the title of
the person signing the Notice and by the date of the signature.
(d) Filing notices; fees. The original and three copies shall be
filed with the Licensing Division of the Copyright Office and shall be
accompanied by the filing fee set forth in Sec.201.3(e) of this title.
Notices shall be placed in the public records of the Licensing Division.
The Notice and filing fee shall be sent to the Licensing Division at
either the address listed on the form obtained from the Copyright Office
or to: Library of Congress, Copyright Office, Licensing Division, 101
Independence Avenue, SE., Washington, DC 20557-6400. A Service that, on
or after July 1, 2004, shall make digital transmissions and/or ephemeral
phonorecords of sound recordings under statutory license shall file a
Notice of Use of Sound Recordings under Statutory License with the
Licensing Division of the Copyright Office prior to the making of the
first ephemeral phonorecord of the sound recording and prior to the
first digital transmission of the sound recording.
(e) Amendment. A Service shall file a new Notice of Use of Sound
Recordings under Statutory License within 45 days after any of the
information contained in the Notice on file has changed, and shall
indicate in the space provided by the Copyright Office that the Notice
is an amended filing. The Licensing Division shall retain copies of all
prior Notices filed by the Service.
Effective Date Note: At 86 FR 32643, June 22, 2021, Sec.370.2 was
amended by removing
[[Page 852]]
``Licensing Division'' from each place it appears and adding in its
place ``Licensing Section'', effective July 22, 2021.
Sec.370.3 Reports of use of sound recordings under statutory license
for preexisting subscription services.
(a) General. This section prescribes the rules for the maintenance
and delivery of reports of use for sound recordings under section 112(e)
or section 114(d)(2) of title 17 of the United States Code, or both, by
preexisting subscription services.
(b) Delivery. Reports of Use shall be delivered to Collectives that
are identified in the records of the Licensing Division of the Copyright
Office as having been designated by determination of the Copyright
Royalty Judges. Reports of Use shall be delivered on or before the
forty-fifth day after the close of each month.
(c) Posting. In the event that no Collective is designated under the
statutory license, or if all designated Collectives have terminated
collection and distribution operations, a preexisting subscription
service transmitting sound recordings under statutory license shall post
and make available online its Reports of Use. Preexisting subscription
services shall post their Reports of Use online on or before the forty-
fifth day after the close of each month, and continue to make them
available thereafter to all sound recording copyright owners for a
period of 90 days. Preexisting subscription services may require use of
passwords for access to posted Reports of Use, but must make passwords
available in a timely manner and free of charge or other restrictions.
Preexisting subscription services may predicate provision of a password
upon:
(1) Information relating to identity, location and status as a sound
recording copyright owner; and
(2) A ``click-wrap'' agreement not to use information in the Report
of Use for purposes other than royalty collection, royalty distribution,
and determining compliance with statutory license requirements, without
the express consent of the preexisting subscription service providing
the Report of Use.
(d) Content. A ``Report of Use of Sound Recordings under Statutory
License'' shall be identified as such by prominent caption or heading,
and shall include a preexisting subscription service's ``Intended
Playlists'' for each channel and each day of the reported month. The
``Intended Playlists'' shall include a consecutive listing of every
recording scheduled to be transmitted, and shall contain the following
information in the following order:
(1) The name of the preexisting subscription service or entity;
(2) The channel;
(3) The sound recording title;
(4) The featured recording artist, group, or orchestra;
(5) The retail album title (or, in the case of compilation albums
created for commercial purposes, the name of the retail album identified
by the preexisting subscription service for purchase of the sound
recording);
(6) The marketing label of the commercially available album or other
product on which the sound recording is found;
(7) The catalog number;
(8) The International Standard Recording Code (ISRC) embedded in the
sound recording, where available and feasible;
(9) Where available, the copyright owner information provided in the
copyright notice on the retail album or other product (e.g., following
the symbol (P), that is the letter P in a circle) or, in the case of
compilation albums created for commercial purposes, in the copyright
notice for the individual sound recording;
(10) The date of transmission; and
(11) The time of transmission.
(e) Signature. Reports of Use shall include a signed statement by
the appropriate officer or representative of the preexisting
subscription service attesting, under penalty of perjury, that the
information contained in the Report is believed to be accurate and is
maintained by the preexisting subscription service in its ordinary
course of business. The signature shall be accompanied by the printed or
typewritten name and title of the person signing the Report, and by the
date of signature.
(f) Format. Reports of Use should be provided on a standard machine-
readable medium, such as diskette, optical
[[Page 853]]
disc, or magneto-optical disc, and should conform as closely as possible
to the following specifications:
(1) ASCII delimited format, using pipe characters as delimiter, with
no headers or footers;
(2) Carats should surround strings;
(3) No carats should surround dates and numbers;
(4) Dates should be indicated by: YYYY/MM/DD;
(5) Times should be based on a 24-hour clock: HH:MM:SS;
(6) A carriage return should be at the end of each line; and
(7) All data for one record should be on a single line.
(g) Confidentiality. Copyright owners, their agents and Collectives
shall not disseminate information in the Reports of Use to any persons
not entitled to it, nor utilize the information for purposes other than
royalty collection and distribution, and determining compliance with
statutory license requirements, without express consent of the
preexisting subscription service providing the Report of Use.
(h) Documentation. All compulsory licensees shall, for a period of
at least three years from the date of service or posting of the Report
of Use, keep and retain a copy of the Report of Use.
(i) In any case in which a preexisting subscription service has not
provided a report of use required under this section for use of sound
recordings under section 112(e) or section 114 of title 17 of the United
States Code, or both, prior to January 1, 2010, reports of use for the
corresponding calendar year filed by other preexisting subscription
services shall serve as the reports of use for the non-reporting
service, solely for purposes of distribution of any corresponding
royalties by the Collective.
[74 FR 52423, Oct. 13, 2009, as amended at 76 FR 45696, Aug. 1, 2011]
Effective Date Note: At 86 FR 32643, June 22, 2021, Sec.370.3(b)
was amended by removing ``Licensing Division'' and adding in its place
``Licensing Section'', effective July 22, 2021.
Sec.370.4 Reports of use of sound recordings under statutory license
for nonsubscription transmission services, preexisting satellite digital
audio radio services, new subscription services and business
establishment services.
(a) General. This section prescribes rules for the maintenance and
delivery of Reports of Use of sound recordings under section 112(e) or
section 114 of title 17 of the United States Code, or both, by
nonsubscription transmission services, preexisting satellite digital
audio radio services, new subscription services, and business
establishment services.
(b) Definitions. For purposes of this section, the following
definitions apply:
Aggregate Tuning Hours means the total hours of programming that a
nonsubscription transmission service, preexisting satellite digital
audio radio service, new subscription service or business establishment
service has transmitted during the reporting period identified in
paragraph (d)(3) of this section to all listeners within the United
States over the relevant channels or stations, and from any archived
programs, that provide audio programming consisting, in whole or in
part, of eligible nonsubscription service, preexisting satellite digital
audio radio service, new subscription service or business establishment
service transmissions, less the actual running time of any sound
recordings for which the service has obtained direct licenses apart from
17 U.S.C. 114(d)(2) or which do not require a license under title 17,
United States Code. For example, if a nonsubscription transmission
service transmitted one hour of programming to 10 simultaneous
listeners, the nonsubscription transmission service's Aggregate Tuning
Hours would equal 10. If 3 minutes of that hour consisted of
transmission of a directly licensed recording, the nonsubscription
transmission service's Aggregate Tuning Hours would equal 9 hours and 30
minutes. If one listener listened to the transmission of a
nonsubscription transmission service for 10 hours (and none of the
recordings transmitted during that time was directly licensed),
[[Page 854]]
the nonsubscription transmission service's Aggregate Tuning Hours would
equal 10.
AM/FM Webcast means a transmission made by an entity that transmits
an AM/FM broadcast signal over a digital communications network such as
the Internet, regardless of whether the transmission is made by the
broadcaster that originates the AM/FM signal or by a third party,
provided that such transmission meets the applicable requirements of the
statutory license set forth in 17 U.S.C. 114(d)(2).
Broadcaster means an entity that:
(i) Has a substantial business owning and operating one or more
terrestrial AM or FM radio stations that are licensed as such by the
Federal Communications Commission;
(ii) Has obtained a compulsory license under 17 U.S.C. 112(e) and
114 and the implementing regulations therefor to make Eligible
Transmissions and related ephemeral recordings;
(iii) Complies with all applicable provisions of Sections 112(e) and
114 and applicable regulations; and
(iv) Is not a noncommercial webcaster as defined in 17 U.S.C.
114(f)(5)(E)(i).
Eligible Minimum Fee Webcaster means a nonsubscription transmission
service whose payments for eligible transmissions do not exceed the
annual minimum fee established for licensees relying upon the statutory
licenses set forth in 17 U.S.C. 112(e) and 114; and:
(i) Is a licensee that owns and operates a terrestrial AM or FM
radio station that is licensed by the Federal Communications Commission;
or
(ii) Is directly operated by, or affiliated with and officially
sanctioned by, a domestically accredited primary or secondary school,
college, university, or other post-secondary degree-granting
institution; and
(A) The digital audio transmission operations of which are, during
the course of the year, staffed substantially by students enrolled in
such institution;
(B) Is exempt from taxation under section 501 of the Internal
Revenue Code, has applied for such exemption, or is operated by a State
or possession or any governmental entity or subordinate thereof, or by
the United States or District of Columbia, for exclusively public
purposes; and
(C) Is not a ``public broadcasting entity'' (as defined in 17 U.S.C.
118(f)) qualified to receive funding from the Corporation for Public
Broadcasting pursuant to the criteria set forth in 47 U.S.C. 396.
Performance means each instance in which any portion of a sound
recording is publicly performed to a Listener by means of a digital
audio transmission or retransmission (e.g., the delivery of any portion
of a single track from a compact disc to one Listener) but excluding the
following:
(i) A performance of a sound recording that does not require a
license (e.g., the sound recording is not subject to protection under
title 17, United States Code);
(ii) A performance of a sound recording for which the service has
previously obtained a license from the Copyright Owner of such sound
recording; and
(iii) An incidental performance that both:
(A) Makes no more than incidental use of sound recordings including,
but not limited to, brief musical transitions in and out of commercials
or program segments, brief performances during news, talk and sports
programming, brief background performances during disk jockey
announcements, brief performances during commercials of sixty seconds or
less in duration, or brief performances during sporting or other public
events; and
(B) Other than ambient music that is background at a public event,
does not contain an entire sound recording and does not feature a
particular sound recording of more than thirty seconds (as in the case
of a sound recording used as a theme song).
Play frequency means the number of times a sound recording is
publicly performed by a Service during the relevant period, without
respect to the number of listeners receiving the sound recording. If a
particular sound recording is transmitted to listeners on a particular
channel or program only once during the reporting period, then the play
frequency is one. If the sound recording is transmitted 10 times during
[[Page 855]]
the reporting period, then the play frequency is 10.
(c) Delivery. Reports of Use shall be delivered to Collectives that
are identified in the records of the Licensing Division of the Copyright
Office as having been designated by determination of the Copyright
Royalty Judges. Reports of Use shall be delivered on or before the
forty-fifth day after the close of each reporting period identified in
paragraph (d)(3) of this section.
(d) Report of Use. (1) Separate reports not required. A
nonsubscription transmission service, preexisting satellite digital
audio radio service or a new subscription service that transmits sound
recordings pursuant to the statutory license set forth in section
114(d)(2) of title 17 of the United States Code and makes ephemeral
phonorecords of sound recordings pursuant to the statutory license set
forth in section 112(e) of title 17 of the United States Code need not
maintain a separate Report of Use for each statutory license during the
relevant reporting periods.
(2) Content. For a nonsubscription transmission service, preexisting
satellite digital audio radio service, new subscription service or
business establishment service that transmits sound recordings pursuant
to the statutory license set forth in section 114(d)(2) of title 17 of
the United States Code, or the statutory license set forth in section
112(e) of title 17 of the United States Code, or both, each Report of
Use shall contain the following information, in the following order, for
each sound recording transmitted during the reporting periods identified
in paragraph (d)(3) of this section:
(i) The name of the nonsubscription transmission service,
preexisting satellite digital audio radio service, new subscription
service or business establishment service making the transmissions,
including the name of the entity filing the Report of Use, if different;
(ii) The category transmission code for the category of transmission
operated by the nonsubscription transmission service, preexisting
satellite digital audio radio service, new subscription service or
business establishment service:
(A) For eligible nonsubscription transmissions other than broadcast
simulcasts and transmissions of non-music programming;
(B) For eligible nonsubscription transmissions of broadcast
simulcast programming not reasonably classified as news, talk, sports or
business programming;
(C) For eligible nonsubscription transmissions of non-music
programming reasonably classified as news, talk, sports or business
programming;
(D)-(G) [Reserved]
(H) For transmissions other than broadcast simulcasts and
transmissions of non-music programming made by an eligible new
subscription service;
(I) For transmissions of broadcast simulcast programming not
reasonably classified as news, talk, sports or business programming made
by an eligible new subscription service;
(J) For transmissions of non-music programming reasonably classified
as news, talk, sports or business programming made by an eligible new
subscription service; and
(K) For eligible transmissions by a business establishment service
making ephemeral recordings;
(iii) The featured artist;
(iv) The sound recording title;
(v) The International Standard Recording Code (ISRC) or,
alternatively to the ISRC, the:
(A) Album title; and
(B) Marketing label;
(vi) For a nonsubscription transmission service except those
qualifying as eligible minimum fee webcasters: The actual total
performances of the sound recording during the reporting period.
(vii) For a preexisting satellite digital audio radio service, a new
subscription service, a business establishment service or a
nonsubscription service qualifying as an eligible minimum fee webcaster:
The actual total performances of the sound recording during the
reporting period or, alternatively, the
(A) Aggregate Tuning Hours;
(B) Channel or program name; and
(C) Play frequency.
(3) Reporting period. A Report of Use shall be prepared:
[[Page 856]]
(i) For each calendar month of the year by all services other than a
nonsubscription service qualifying as an eligible minimum fee webcaster;
or
(ii) For a two-week period (two periods of 7 consecutive days) for
each calendar quarter of the year by a nonsubscription service
qualifying as an eligible minimum fee webcaster and the two-week period
need not consist of consecutive weeks, but both weeks must be completely
within the calendar quarter.
(4) Signature. Reports of Use shall include a signed statement by
the appropriate officer or representative of the service attesting,
under penalty of perjury, that the information contained in the Report
is believed to be accurate and is maintained by the service in its
ordinary course of business. The signature shall be accompanied by the
printed or typewritten name and the title of the person signing the
Report, and by the date of the signature.
(5) Confidentiality. Copyright owners, their agents and Collectives
shall not disseminate information in the Reports of Use to any persons
not entitled to it, nor utilize the information for purposes other than
royalty collection and distribution, without consent of the service
providing the Report of Use.
(6) Documentation. A Service shall, for a period of at least three
years from the date of service or posting of a Report of Use, keep and
retain a copy of the Report of Use.
(e) Format and delivery. (1) Electronic format only. Reports of use
must be maintained and delivered in electronic format only, as
prescribed in paragraphs (e)(2) through (8) of this section. A hard copy
report of use is not permissible.
(2) ASCII text file delivery; facilitation by provision of
spreadsheet templates. All report of use data files must be delivered in
ASCII format. However, to facilitate such delivery, SoundExchange shall
post and maintain on its Internet Web site a template for creating a
report of use using Microsoft's Excel spreadsheet and Corel's Quattro
Pro spreadsheet and instruction on how to convert such spreadsheets to
ASCII text files that conform to the format specifications set forth
below. Further, technical support and cost associated with the use of
spreadsheets is the responsibility of the service submitting the report
of use.
(3) Delivery mechanism. The data contained in a report of use may be
delivered by File Transfer Protocol (FTP), e-mail, or CD-ROM according
to the following specifications:
(i) A service delivering a report of use via FTP must obtain a
username, password and delivery instructions from SoundExchange.
SoundExchange shall maintain on a publicly available portion of its Web
site instructions for applying for a username, password and delivery
instructions. SoundExchange shall have 15 days from date of request to
respond with a username, password and delivery instructions.
(ii) A service delivering a report of use via e-mail shall append
the report as an attachment to the e-mail. The main body of the e-mail
shall identify:
(A) The full name and address of the service;
(B) The contact person's name, telephone number and e-mail address;
(C) The start and end date of the reporting period;
(D) The number of rows in the data file. If the report of use is a
file using headers, counting of the rows should begin with row 15. If
the report of use is a file without headers, counting of the rows should
begin with row 1; and
(E) The name of the file attached.
(iii) A service delivering a report of use via CD-ROM must compress
the reporting data to fit onto a single CD-ROM per reporting period.
Each CD-ROM shall be submitted with a cover letter identifying:
(A) The full name and address of the service;
(B) The contact person's name, telephone number and e-mail address;
(C) The start and end date of the reporting period;
(D) The number of rows in the data file. If the report of use is a
file using headers, counting of the rows should begin with row 15. If
the report of use is a file without headers, counting of the rows should
begin with row 1; and
(E) The name of the file attached.
(4) Delivery address. Reports of use shall be delivered to
SoundExchange at the following address: SoundExchange, Inc., 1121 14th
Street, NW., Suite 700,
[[Page 857]]
Washington, DC 20005; (Phone) (202) 640-5858; (Facsimile) (202) 640-
5859; (E-mail) [email protected] SoundExchange shall forward
electronic copies of these reports of use to all other collectives
defined in this section.
(5) File naming. Each data file contained in a report of use must be
given a name by the service followed by the start and end date of the
reporting period. The start and end date must be separated by a dash and
in the format of year, month, and day (YYYYMMDD). Each file name must
end with the file type extension of ``.txt''. (Example:
AcmeMusicCo20050101-20050331.txt).
(6) File type and compression. (i) All data files must be in ASCII
format.
(ii) A report of use must be compressed in one of the following
zipped formats:
(A) .zip--generated using utilities such as WinZip and/or UNIX zip
command;
(B) .Z--generated using UNIX compress command; or
(C) .gz--generated using UNIX gzip command.
(iii) Zipped files shall be named in the same fashion as described
in paragraph (e)(5) of this section, except that such zipped files shall
use the applicable file extension compression name described in this
paragraph (e)(6).
(7) Files with headers. (i) If a service elects to submit files with
headers, the following elements, in order, must occupy the first 14 rows
of a report of use:
(A) Name of service;
(B) Name of contact person;
(C) Street address of the service;
(D) City, state and zip code of the service;
(E) Telephone number of the contact person;
(F) E-mail address of the contact person;
(G) Start of the reporting period (YYYYMMDD);
(H) End of the reporting period (YYYYMMDD);
(I) Report generation date (YYYYMMDD);
(J) Number of rows in data file, beginning with 15th row;
(K) Text indicator character;
(L) Field delimiter character;
(M) Blank line; and
(N) Report headers (Featured Artist, Sound Recording Title, etc.).
(ii) Each of the rows described in paragraphs (e)(7)(i)(A) through
(F) of this section must not exceed 255 alphanumeric characters. Each of
the rows described in paragraphs (e)(7)(i)(G) through (I) of this
section should not exceed eight alphanumeric characters.
(iii) Data text fields, as required by paragraph (d) of this
section, begin on row 15 of a report of use with headers. A carriage
return must be at the end of each row thereafter. Abbreviations within
data fields are not permitted.
(iv) The text indicator character must be unique and must never be
found in the report's data content.
(v) The field delimiter character must be unique and must never be
found in the report's data content. Delimiters must be used even when
certain elements are not being reported; in such case, the service must
denote the blank data field with a delimiter in the order in which it
would have appeared.
(8) Files without headers. If a service elects to submit files
without headers, the following format requirements must be met:
(i) ASCII delimited format, using pipe ([bond]) characters as
delimiters, with no headers or footers;
(ii) Carats ([supcaret]) should surround strings;
(iii) No carats ([supcaret]) should surround dates and numbers;
(iv) A carriage return must be at the end of each line;
(v) All data for one record must be on a single line; and
(vi) Abbreviations within data fields are not permitted.
(f) In any case in which a nonsubscription transmission service,
preexisting satellite digital audio radio service, new subscription
service, or business establishment service has not provided a report of
use required under this section for use of sound recordings under
section 112(e) or section 114 of title 17 of the United States Code, or
both, prior to January 1, 2010, reports of use for the corresponding
calendar year filed by other services of the same type shall serve as
the reports of use for the non-reporting service, solely for
[[Page 858]]
purposes of distribution of any corresponding royalties by the
Collective.
[74 FR 52423, Oct. 13, 2009, as amended at 76 FR 45696, Aug. 1, 2011; 81
FR 31510, May 19, 2016; 81 FR 40190, June 21, 2016; 81 FR 89868, Dec.
13, 2016; 84 FR 32312, July 8, 2019]
Effective Date Note: At 86 FR 32643, June 22, 2021, Sec.370.4(c)
was amended by removing ``Licensing Division'' and adding in its place
``Licensing Section'', effective July 22, 2021.
Sec.370.5 Designated collection and distribution organizations for
reports of use of sound recordings under statutory license.
(a) General. This section prescribes rules under which reports of
use shall be collected and distributed under section 114(f) of title 17
of the United States Code, and under which reports of such use shall be
kept and made available.
(b) Notice of Designation as Collective under Statutory License. A
Collective shall file with the Licensing Division of the Copyright
Office and post and make available online a ``Notice of Designation as
Collective under Statutory License,'' which shall be identified as such
by prominent caption or heading, and shall contain the following
information:
(1) The Collective name, address, telephone number and facsimile
number;
(2) A statement that the Collective has been designated for
collection and distribution of performance royalties under statutory
license for digital transmission of sound recordings; and
(3) Information on how to gain access to the online Web site or home
page of the Collective, where information may be posted under this part
concerning the use of sound recordings under statutory license. The
address of the Licensing Division is: Library of Congress, Copyright
Office, Licensing Division, 101 Independence Avenue, SE., Washington, DC
20557-6400.
(c) Annual Report. The Collective will post and make available
online, for the duration of one year, an Annual Report on how the
Collective operates, how royalties are collected and distributed, and
what the Collective spent that fiscal year on administrative expenses.
(d) Inspection of Reports of Use by copyright owners. The Collective
shall make copies of the Reports of Use for the preceding three years
available for inspection by any sound recording copyright owner, without
charge, during normal office hours upon reasonable notice. The
Collective shall predicate inspection of Reports of Use upon information
relating to identity, location and status as a sound recording copyright
owner, and the copyright owner's written agreement not to utilize the
information for purposes other than royalty collection and distribution,
and determining compliance with statutory license requirements, without
express consent of the Service providing the Report of Use. The
Collective shall render its best efforts to locate copyright owners in
order to make available reports of use, and such efforts shall include
searches in Copyright Office public records and published directories of
sound recording copyright owners.
(e) Confidentiality. Copyright owners, their agents, and Collectives
shall not disseminate information in the Reports of Use to any persons
not entitled to it, nor utilize the information for purposes other than
royalty collection and distribution, and determining compliance with
statutory license requirements, without express consent of the Service
providing the Report of Use.
(f) Termination and dissolution. If a Collective terminates its
collection and distribution operations prior to the close of its term of
designation, the Collective shall notify the Licensing Division of the
Copyright Office, the Copyright Royalty Board and all Services
transmitting sound recordings under statutory license, by certified or
registered mail. The dissolving Collective shall provide each such
Service with information identifying the copyright owners it has served.
Effective Date Note: At 86 FR 32643, June 22, 2021, Sec.370.5 was
amended by removing ``Licensing Division'' from each place it appears
and adding in its place ``Licensing Section'', effective July 22, 2021.
[[Page 859]]
SUBCHAPTER E_RATES AND TERMS FOR STATUTORY LICENSES
PART 380_RATES AND TERMS FOR TRANSMISSIONS BY ELIGIBLE NONSUBSCRIPTION
SERVICES AND NEW SUBSCRIPTION SERVICES AND FOR THE MAKING OF EPHEMERAL REPRODUCTIONS TO
FACILITATE THOSE TRANSMISSIONS--Table of Contents
Subpart A_Regulations Of General Application
Sec.
380.1 Scope and compliance.
380.2 Making payment of royalty fees.
380.3 Delivering statements of account.
380.4 Distributing royalty fees.
380.5 Handling Confidential Information.
380.6 Auditing payments and distributions.
380.7 Definitions.
Subpart B_Broadcasters
380.10 Royalty fees for the public performance of sound recordings and
the making of ephemeral recordings.
Subpart C_Noncommercial Educational Webcasters
380.20 Definitions.
380.21 Royalty fees for the public performance of sound recordings and
for ephemeral recordings.
380.22 Terms for making payment of royalty fees and statements of
account.
Subpart D_Public Broadcasters
380.30 Definitions.
380.31 Royalty fees for the public performance of sound recordings and
for ephemeral recordings.
380.32 Terms for making payment of royalty fees and statements of
account.
Authority: 17 U.S.C. 112(e), 114(f), 804(b)(3).
Source: 79 FR 23127, Apr. 25, 2014, unless otherwise noted.
Subpart A_Regulations Of General Application
Source: 81 FR 26406, May 2, 2016, unless otherwise noted.
Sec.380.1 Scope and compliance.
(a) Scope. Subparts A and B of this part codify rates and terms of
royalty payments for the public performance of sound recordings in
certain digital transmissions by certain Licensees in accordance with
the applicable provisions of 17 U.S.C. 114 and for the making of
Ephemeral Recordings by those Licensees in accordance with the
provisions of 17 U.S.C. 112(e), during the period January 1, 2016,
through December 31, 2020.
(b) Limited application of terms and definitions. The terms and
definitions in Subpart A apply only to Subpart B, except as expressly
adopted and applied in subpart C or subpart D of this part.
(c) Legal compliance. Licensees relying upon the statutory licenses
set forth in 17 U.S.C. 112(e) and 114 must comply with the requirements
of this part 380 and any other applicable regulations.
(d) Voluntary agreements. Notwithstanding the royalty rates and
terms established in any subparts of this part 380, the rates and terms
of any license agreements entered into by Copyright Owners and Licensees
may apply in lieu of these rates and terms.
Sec.380.2 Making payment of royalty fees.
(a) Payment to the Collective. A Licensee must make the royalty
payments due under subpart B to SoundExchange, Inc., which is the
Collective designated by the Copyright Royalty Board to collect and
distribute royalties under this part 380.
(b) Monthly payments. A Licensee must make royalty payments on a
monthly basis. Payments are due on or before the 45th day after the end
of the month in which the Licensee made Eligible Transmissions.
(c) Minimum payments. A Licensee must make any minimum annual
payments due under Subpart B by January 31 of the applicable license
year. A Licensee that as of January 31 of any
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year has not made any eligible nonsubscription transmissions,
noninteractive digital audio transmissions as part of a new subscription
service, or Ephemeral Recordings pursuant to the licenses in 17 U.S.C.
114 and/or 17 U.S.C. 112(e), but that begins making such transmissions
after that date must make any payment due by the 45th day after the end
of the month in which the Licensee commences making such transmissions.
(d) Late fees. A Licensee must pay a late fee for each payment and
each Statement of Account that the Collective receives after the due
date. The late fee is 1.5% (or the highest lawful rate, whichever is
lower) of the late payment amount per month. The late fee for a late
Statement of Account is 1.5% of the payment amount associated with the
Statement of Account. Late fees accrue from the due date until the date
that the Collective receives the late payment or late Statement of
Account.
(1) Waiver of late fees. The Collective may waive or lower late fees
for immaterial or inadvertent failures of a Licensee to make a timely
payment or submit a timely Statement of Account.
(2) Notice regarding noncompliant Statements of Account. If it is
reasonably evident to the Collective that a timely-provided Statement of
Account is materially noncompliant, the Collective must notify the
Licensee within 90 days of discovery of the noncompliance.
Sec.380.3 Delivering statements of account.
(a) Statements of Account. Any payment due under this Part 380 must
be accompanied by a corresponding Statement of Account that must contain
the following information:
(1) Such information as is necessary to calculate the accompanying
royalty payment;
(2) The name, address, business title, telephone number, facsimile
number (if any), electronic mail address (if any) and other contact
information of the person to be contacted for information or questions
concerning the content of the Statement of Account;
(3) The signature of:
(i) The Licensee or a duly authorized agent of Licensee;
(ii) A partner or delegate if the Licensee is a partnership; or
(iii) An officer of the corporation if the Licensee is a
corporation.
(4) The printed or typewritten name of the person signing the
Statement of Account;
(5) If the Licensee is a partnership or corporation, the title or
official position held in the partnership or corporation by the person
signing the Statement of Account;
(6) A certification of the capacity of the person signing;
(7) The date of signature; and
(8) An attestation to the following effect:
I, the undersigned owner/officer/partner/agent of the Licensee have
examined this Statement of Account and hereby state that it is true,
accurate, and complete to my knowledge after reasonable due diligence
and that it fairly presents, in all material respects, the liabilities
of the Licensee pursuant to 17 U.S.C. 112(e) and 114 and applicable
regulations adopted under those sections.
(b) Certification. Licensee's Chief Financial Officer or, if
Licensee does not have a Chief Financial Officer, a person authorized to
sign Statements of Account for the Licensee must submit a signed
certification on an annual basis attesting that Licensee's royalty
statements for the prior year represent a true and accurate
determination of the royalties due and that any method of allocation
employed by Licensee was applied in good faith and in accordance with
U.S. GAAP.
Sec.380.4 Distributing royalty fees.
(a) Distribution of royalties. (1) The Collective must promptly
distribute royalties received from Licensees to Copyright Owners and
Performers that are entitled thereto, or to their designated agents. The
Collective shall only be responsible for making distributions to those
who provide the Collective with information as is necessary to identify
and pay the correct recipient. The Collective must distribute royalties
on a basis that values all performances by a Licensee equally based upon
the information provided under the Reports of Use requirements
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for Licensees pursuant to Sec.370.4 of this chapter and this subpart.
(2) The Collective must use its best efforts to identify and locate
copyright owners and featured artists in order to distribute royalties
payable to them under Sec.112(e) or 114(d)(2) of title 17, United
States Code, or both. Such efforts must include, but not be limited to,
searches in Copyright Office public records and published directories of
sound recording copyright owners.
(b) Unclaimed funds. If the Collective is unable to identify or
locate a Copyright Owner or Performer who is entitled to receive a
royalty distribution under this part 380, the Collective must retain the
required payment in a segregated trust account for a period of three
years from the date of the first distribution of royalties from the
relevant payment by a Licensee. No claim to distribution shall be valid
after the expiration of the three-year period. After expiration of this
period, the Collective must handle unclaimed funds in accordance with
applicable federal, state, or common law.
(c) Retention of records. Licensees and the Collective shall keep
books and records relating to payments and distributions of royalties
for a period of not less than the prior three calendar years.
(d) Designation of the Collective. (1) The Judges designate
SoundExchange, Inc., as the Collective to receive Statements of Account
and royalty payments from Licensees and to distribute royalty payments
to each Copyright Owner and Performer (or their respective designated
agents) entitled to receive royalties under 17 U.S.C. 112(e) or 114(g).
(2) If SoundExchange, Inc. should dissolve or cease to be governed
by a board consisting of equal numbers of representatives of Copyright
Owners and Performers, then it shall be replaced for the applicable
royalty term by a successor Collective according to the following
procedure:
(i) The nine Copyright Owner representatives and the nine Performer
representatives on the SoundExchange board as of the last day preceding
SoundExchange's cessation or dissolution shall vote by a majority to
recommend that the Copyright Royalty Judges designate a successor and
must file a petition with the Copyright Royalty Judges requesting that
the Judges designate the named successor and setting forth the reasons
therefor.
(ii) Within 30 days of receiving the petition, the Copyright Royalty
Judges must issue an order designating the recommended Collective,
unless the Judges find good cause not to make and publish the
designation in the Federal Register.
Sec.380.5 Handling Confidential Information.
(a) Definition. For purposes of this part 380, ``Confidential
Information'' means the Statements of Account and any information
contained therein, including the amount of royalty payments and the
number of Performances, and any information pertaining to the Statements
of Account reasonably designated as confidential by the party submitting
the statement. Confidential Information does not include documents or
information that at the time of delivery to the Collective is public
knowledge. The party seeking information from the Collective based on a
claim that the information sought is a matter of public knowledge shall
have the burden of proving to the Collective that the requested
information is in the public domain.
(b) Use of Confidential Information. The Collective may not use any
Confidential Information for any purpose other than royalty collection
and distribution and activities related directly thereto.
(c) Disclosure of Confidential Information. The Collective shall
limit access to Confidential Information to:
(1) Those employees, agents, consultants, and independent
contractors of the Collective, subject to an appropriate written
confidentiality agreement, who are engaged in the collection and
distribution of royalty payments hereunder and activities related
directly thereto who require access to the Confidential Information for
the purpose of performing their duties during the ordinary course of
their work;
(2) A Qualified Auditor or outside counsel who is authorized to act
on behalf of:
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(i) The Collective with respect to verification of a Licensee's
statement of account pursuant to this part 380; or
(ii) A Copyright Owner or Performer with respect to the verification
of royalty distributions pursuant to this part 380;
(3) Copyright Owners and Performers, including their designated
agents, whose works a Licensee used under the statutory licenses set
forth in 17 U.S.C. 112(e) and 114 by the Licensee whose Confidential
Information is being supplied, subject to an appropriate written
confidentiality agreement, and including those employees, agents,
consultants, and independent contractors of such Copyright Owners and
Performers and their designated agents, subject to an appropriate
written confidentiality agreement, who require access to the
Confidential Information to perform their duties during the ordinary
course of their work;
(4) Attorneys and other authorized agents of parties to proceedings
under 17 U.S.C. 8, 112, 114, acting under an appropriate protective
order.
(d) Safeguarding Confidential Information. The Collective and any
person authorized to receive Confidential Information from the
Collective must implement procedures to safeguard against unauthorized
access to or dissemination of Confidential Information using a
reasonable standard of care, but no less than the same degree of
security that the recipient uses to protect its own Confidential
Information or similarly sensitive information.
Sec.380.6 Auditing payments and distributions.
(a) General. This section prescribes procedures by which any entity
entitled to receive payment or distribution of royalties may verify
payments or distributions by auditing the payor or distributor. The
Collective may audit a Licensee's payments of royalties to the
Collective, and a Copyright Owner or Performer may audit the
Collective's distributions of royalties to the owner or performer.
Nothing in this section shall preclude a verifying entity and the payor
or distributor from agreeing to verification methods in addition to or
different from those set forth in this section.
(b) Frequency of auditing. The verifying entity may conduct an audit
of each licensee only once a year for any or all of the prior three
calendar years. A verifying entity may not audit records for any
calendar year more than once.
(c) Notice of intent to audit. The verifying entity must file with
the Copyright Royalty Judges a notice of intent to audit the payor or
distributor, which notice the Judges must publish in the Federal
Register within 30 days of the filing of the notice. Simultaneously with
the filing of the notice, the verifying entity must deliver a copy to
the payor or distributor.
(d) The audit. The audit must be conducted during regular business
hours by a Qualified Auditor who is not retained on a contingency fee
basis and is identified in the notice. The auditor shall determine the
accuracy of royalty payments or distributions, including whether an
underpayment or overpayment of royalties was made. An audit of books and
records, including underlying paperwork, performed in the ordinary
course of business according to generally accepted auditing standards by
a Qualified Auditor, shall serve as an acceptable verification procedure
for all parties with respect to the information that is within the scope
of the audit.
(e) Access to third-party records for audit purposes. The payor or
distributor must use commercially reasonable efforts to obtain or to
provide access to any relevant books and records maintained by third
parties for the purpose of the audit.
(f) Duty of auditor to consult. The auditor must produce a written
report to the verifying entity. Before rendering the report, unless the
auditor has a reasonable basis to suspect fraud on the part of the payor
or distributor, the disclosure of which would, in the reasonable opinion
of the auditor, prejudice any investigation of the suspected fraud, the
auditor must review tentative written findings of the audit with the
appropriate agent or employee of the payor or distributor in order to
remedy any factual errors and clarify
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any issues relating to the audit; Provided that an appropriate agent or
employee of the payor or distributor reasonably cooperates with the
auditor to remedy promptly any factual error[s] or clarify any issues
raised by the audit. The auditor must include in the written report
information concerning the cooperation or the lack thereof of the
employee or agent.
(g) Audit results; underpayment or overpayment of royalties. If the
auditor determines the payor or distributor underpaid royalties, the
payor or distributor shall remit the amount of any underpayment
determined by the auditor to the verifying entity, together with
interest at the rate specified in Sec.380.2(d). In the absence of
mutually-agreed payment terms, which may, but need not, include
installment payments, the payor or distributor shall remit promptly to
the verifying entity the entire amount of the underpayment determined by
the auditor. If the auditor determines the payor or distributor overpaid
royalties, however, the verifying entity shall not be required to remit
the amount of any overpayment to the payor or distributor, and the payor
or distributor shall not seek by any means to recoup, offset, or take a
credit for the overpayment, unless the payor or distributor and the
verifying entity have agreed otherwise.
(h) Paying the costs of the audit. The verifying entity must pay the
cost of the verification procedure, unless the auditor determines that
there was an underpayment of 10% or more, in which case the payor or
distributor must bear the reasonable costs of the verification
procedure, in addition to paying or distributing the amount of any
underpayment.
(i) Retention of audit report. The verifying party must retain the
report of the audit for a period of not less than three years from the
date of issuance.
Sec.380.7 Definitions.
For purposes of this subpart, the following definitions apply:
Aggregate Tuning Hours (ATH) means the total hours of programming
that the Licensee has transmitted during the relevant period to all
listeners within the United States from all channels and stations that
provide audio programming consisting, in whole or in part, of eligible
nonsubscription transmissions or noninteractive digital audio
transmissions as part of a new subscription service, less the actual
running time of any sound recordings for which the Licensee has obtained
direct licenses apart from 17 U.S.C. 114(d)(2) or which do not require a
license under United States copyright law. By way of example, if a
service transmitted one hour of programming containing Performances to
10 listeners, the service's ATH would equal 10 hours. If three minutes
of that hour consisted of transmission of a directly-licensed recording,
the service's ATH would equal nine hours and 30 minutes (three minutes
times 10 listeners creates a deduction of 30 minutes). As an additional
example, if one listener listened to a service for 10 hours (and none of
the recordings transmitted during that time was directly licensed), the
service's ATH would equal 10 hours.
Collective means the collection and distribution organization that
is designated by the Copyright Royalty Judges, and which, for the
current rate period, is SoundExchange, Inc.
Commercial Webcaster means a Licensee, other than a Noncommercial
Webcaster or Public Broadcaster, that makes Ephemeral Recordings and
eligible digital audio transmissions of sound recordings pursuant to the
statutory licenses under 17 U.S.C. 112(e) and 114(d)(2).
Copyright Owners means sound recording copyright owners, and rights
owners under 17 U.S.C. 1401(l)(2), who are entitled to royalty payments
made under this part pursuant to the statutory licenses under 17 U.S.C.
112(e) and 114.
Digital audio transmission has the same meaning as in 17 U.S.C.
114(j).
Eligible nonsubscription transmission has the same meaning as in 17
U.S.C. 114(j).
Eligible Transmission means a subscription or nonsubscription
transmission made by a Licensee that is subject to licensing under 17
U.S.C. 114(d)(2) and the payment of royalties under this part.
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Ephemeral recording has the same meaning as in 17 U.S.C. 112.
Licensee means a Commercial Webcaster, a Noncommercial Webcaster, or
any entity operating a noninteractive Internet streaming service that
has obtained a license under Section 112 or 114 to transmit eligible
sound recordings.
New subscription service has the same meaning as in 17 U.S.C.
114(j).
Noncommercial webcaster has the same meaning as in 17 U.S.C.
114(f)(5)(E).
Nonsubscription has the same meaning as in 17 U.S.C. 114(j).
Performance means each instance in which any portion of a sound
recording is publicly performed to a listener by means of a digital
audio transmission (e.g., the delivery of any portion of a single track
from a compact disc to one listener), but excludes the following:
(1) A performance of a sound recording that does not require a
license (e.g., a sound recording that is not subject to protection under
title 17, United States Code);
(2) A performance of a sound recording for which the service has
previously obtained a license from the Copyright Owner of such sound
recording; and
(3) An incidental performance that both:
(i) Makes no more than incidental use of sound recordings including,
but not limited to, brief musical transitions in and out of commercials
or program segments, brief performances during news, talk and sports
programming, brief background performances during disk jockey
announcements, brief performances during commercials of sixty seconds or
less in duration, or brief performances during sporting or other public
events; and
(ii) Does not contain an entire sound recording, other than ambient
music that is background at a public event, and does not feature a
particular sound recording of more than thirty seconds (as in the case
of a sound recording used as a theme song).
Performers means the independent administrators identified in 17
U.S.C. 114(g)(2)(B) and (C) and the parties identified in 17 U.S.C.
114(g)(2)(D).
Public broadcaster means a Covered Entity under subpart D of this
part.
Qualified auditor means an independent Certified Public Accountant
licensed in the jurisdiction where it seeks to conduct a verification.
Transmission has the same meaning as in 17 U.S.C. 114(j).
[81 FR 26406, May 2, 2016, as amended at 84 FR 32312, July 8, 2019]
Subpart B_Commercial Webcasters and Noncommercial Webcasters
Source: 81 FR 26409, May 2, 2016, unless otherwise noted.
Sec.380.10 Royalty fees for the public performance of sound
recordings and the making of ephemeral recordings.
(a) Royalty fees. For the year 2020, Licensees must pay royalty fees
for all Eligible Transmissions of sound recordings at the following
rates:
(1) Commercial webcasters: $0.0024 per performance for subscription
services and $0.0018 per performance for nonsubscription services.
(2) Noncommercial webcasters: $500 per year for each channel or
station and $0.0018 per performance for all digital audio transmissions
in excess of 159,140 ATH in a month on a channel or station.
(b) Minimum fee. Licensees must pay the Collective a minimum fee of
$500 each year for each channel or station. The Collective must apply
the fee to the Licensee's account as credit towards any additional
royalty fees that Licensees may incur in the same year. The fee is
payable for each individual channel and each individual station
maintained or operated by the Licensee and making Eligible Transmissions
during each calendar year or part of a calendar year during which it is
a Licensee. The maximum aggregate minimum fee in any calendar year that
a Commercial Webcaster must pay is $50,000. The minimum fee is
nonrefundable.
(c) Annual royalty fee adjustment. The Copyright Royalty Judges
shall adjust the royalty fees each year to reflect any changes occurring
in the cost of
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living as determined by the most recent Consumer Price Index (for all
consumers and for all items) (CPI-U) published by the Secretary of Labor
before December 1 of the preceding year. The adjusted rate shall be
rounded to the nearest fourth decimal place. To account more accurately
for cumulative changes in the CPI-U over the rate period, the
calculation of the rate for each year shall be cumulative based on a
calculation of the percentage increase in the CPI-U from the CPI-U
published in November, 2015 (237.838), according to the formula (1 + (Cy
- 237.838)/237.838) x R2016, where Cy is the CPI-U
published by the Secretary of Labor before December 1 of the preceding
year, and R2016 is the royalty rate for 2016 (i.e., $0.0022
per subscription performance or $0.0017 per nonsubscription
performance). By way of example, if the CPI-U published in November 2016
is 242.083, the adjusted rate for nonsubscription services in 2017 will
be computed as (1 + (242.083 - 237.838)/ 237.838) x $0.0017 and will
equal $0.00173 ($0.0017 when rounded to the nearest fourth decimal
place). If the CPI-U published in November 2017 is 249.345, the rate for
nonsubscription services for 2018 will be computed as (1 + (249.345 -
237.838)/237.838) x $0.0017 and will equal $0.00179 ($0.0018 when
rounded to the nearest fourth decimal place). The Judges shall publish
notice of the adjusted fees in the Federal Register at least 25 days
before January 1. The adjusted fees shall be effective on January 1.
(d) Ephemeral recordings royalty fees. The fee for all Ephemeral
Recordings is part of the total fee payable under this section and
constitutes 5% of it. All ephemeral recordings that a Licensee makes
which are necessary and commercially reasonable for making
noninteractive digital transmissions are included in the 5%.
[81 FR 26409, May 2, 2016, as amended at 81 FR 87456, Dec. 5, 2016; 82
FR 55946, Nov. 27, 2017; 83 FR 61125, Nov. 28, 2018; 83 FR 63419, Dec.
10, 2018; 84 FR 64205, Nov. 21, 2019]
Subpart C_Noncommercial Educational Webcasters
Source: 85 FR 12745, Mar. 4, 2020, unless otherwise.
Sec.380.20 Definitions.
For purposes of this subpart, the following definitions apply:
Educational Transmission means an eligible nonsubscription
transmission (as defined in 17 U.S.C. 114(j)(6)) made by a Noncommercial
Educational Webcaster over the internet.
Noncommercial Educational Webcaster means a noncommercial webcaster
(as defined in 17 U.S.C. 114(f)(4)(E)(i)) that:
(1) Has obtained a compulsory license under 17 U.S.C. 112(e) and 114
and the implementing regulations therefor to make Educational
Transmissions and related Ephemeral Recordings;
(2) Complies with all applicable provisions of Sections 112(e) and
114 and applicable regulations in 37 CFR part 380;
(3) Is directly operated by, or is affiliated with and officially
sanctioned by, and the digital audio transmission operations of which
are staffed substantially by students enrolled at, a domestically
accredited primary or secondary school, college, university or other
post-secondary degree-granting educational institution;
(4) Is not a ``public broadcasting entity'' (as defined in 17 U.S.C.
118(f)) qualified to receive funding from the Corporation for Public
Broadcasting pursuant to its criteria; and
(5) Takes affirmative steps not to make total transmissions in
excess of 159,140 Aggregate Tuning Hours (ATH) on any individual channel
or station in any month, if in any previous calendar year it has made
total transmissions in excess of 159,140 ATH on any individual channel
or station in any month.
Sec.380.21 Royalty fees for the public performance of sound recordings
and for ephemeral recordings.
(a) Minimum fee for eligible Noncommercial Educational Webcasters.
Each Noncommercial Educational Webcaster that did not exceed 159,140
total ATH for any individual channel or station for more than one
calendar month in the immediately preceding calendar year and does not
expect to make total transmissions in excess of 159,140 ATH on any
individual channel or station in any calendar month during the
applicable calendar year shall pay an annual, nonrefundable minimum fee
in the
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amount set forth in paragraphs (a)(1) through (5) of this section (the
``Minimum Fee'') for each of its individual channels, including each of
its individual side channels, and each of its individual stations,
through which (in each case) it makes Educational Transmissions, for
each calendar year it makes Educational Transmissions subject to this
subpart. For clarity, each individual stream (e.g., HD radio side
channels, different stations owned by a single licensee) will be treated
separately and be subject to a separate Minimum Fee. The Minimum Fee
shall constitute the annual per channel or per station royalty for all
Educational Transmissions totaling not more than 159,140 ATH in a month
on any individual channel or station, and for Ephemeral Recordings to
enable such Educational Transmissions. In addition, a Noncommercial
Educational Webcaster electing the reporting waiver described in Sec.
380.22(d)(1) shall pay a $100 annual fee (the ``Proxy Fee'') to the
Collective (for purposes of this subpart, the term ``Collective'' refers
to SoundExchange, Inc.). The Minimum Fee for each year of the royalty
period is:
(1) 2021: $550;
(2) 2022: $600;
(3) 2023: $650;
(4) 2024: $700; and
(5) 2025: $750.
(b) Consequences of unexpectedly exceeding ATH cap. In the case of a
Noncommercial Educational Webcaster eligible to pay royalties under
paragraph (a) of this section that unexpectedly makes total
transmissions in excess of 159,140 ATH on any individual channel or
station in any calendar month during the applicable calendar year:
(1) The Noncommercial Educational Webcaster shall, for such month
and the remainder of the calendar year in which such month occurs, pay
royalties in accordance, and otherwise comply, with the provisions of
subpart B of this part applicable to Noncommercial Webcasters;
(2) The Minimum Fee paid by the Noncommercial Educational Webcaster
for such calendar year will be credited to the amounts payable under the
provisions of subpart B of this part applicable to Noncommercial
Webcasters; and
(3) The Noncommercial Educational Webcaster shall, within 45 days
after the end of each month, notify the Collective if it has made total
transmissions in excess of 159,140 ATH on a channel or station during
that month; pay the Collective any amounts due under the provisions of
subpart B of this part applicable to Noncommercial Webcasters; and
provide the Collective a statement of account pursuant to subpart A of
this part.
(c) Royalties for other Noncommercial Educational Webcasters. A
Noncommercial Educational Webcaster that is not eligible to pay
royalties under paragraph (a) of this section shall pay royalties in
accordance, and otherwise comply, with the provisions of subpart B of
this part applicable to Noncommercial Webcasters.
(d) Estimation of performances. In the case of a Noncommercial
Educational Webcaster that is required to pay royalties under paragraph
(b) or (c) of this section on a per-Performance basis, that is unable to
calculate actual total performances, and that is not required to report
actual total performances under Sec.380.22(d)(3), the Noncommercial
Educational Webcaster may pay its applicable royalties on an ATH basis,
provided that the Noncommercial Educational Webcaster shall calculate
such royalties at the applicable per-Performance rates based on the
assumption that the number of sound recordings performed is 12 per hour.
The Collective may distribute royalties paid on the basis of ATH
hereunder in accordance with its generally applicable methodology for
distributing royalties paid on such basis. In addition, and for the
avoidance of doubt, a Noncommercial Educational Webcaster offering more
than one channel or station shall pay per-Performance royalties on a
per-channel or -station basis.
(e) Allocation between ephemeral recordings and performance royalty
fees. The Collective must credit 5% of all royalty payments as payment
for Ephemeral Recordings and credit the remaining 95% to section 114
royalties. All Ephemeral Recordings that a Licensee makes which are
necessary and commercially reasonable for making
[[Page 867]]
Educational Transmissions are included in the 5%.
Sec.380.22 Terms for making payment of royalty fees and statements
of account.
(a) Payment to the Collective. A Noncommercial Educational Webcaster
shall make the royalty payments due under Sec.380.21 to the
Collective.
(b) Minimum fee. Noncommercial Educational Webcasters shall submit
the Minimum Fee, and Proxy Fee if applicable (see paragraph (d) of this
section), accompanied by a statement of account, by January 31st of each
calendar year, except that payment of the Minimum Fee, and Proxy Fee if
applicable, by a Noncommercial Educational Webcaster that was not making
Educational Transmissions or Ephemeral Recordings pursuant to the
licenses in 17 U.S.C. 114 and/or 17 U.S.C. 112(e) as of January 31st of
each calendar year but begins doing so thereafter shall be due by the
45th day after the end of the month in which the Noncommercial
Educational Webcaster commences doing so. At the same time the
Noncommercial Educational Webcaster must identify all its stations
making Educational Transmissions and identify which of the reporting
options set forth in paragraph (d) of this section it elects for the
relevant year (provided that it must be eligible for the option it
elects).
(c) Statements of account. Any payment due under paragraph (a) of
this section shall be accompanied by a corresponding statement of
account on a form provided by the Collective. A statement of account
shall contain the following information:
(1) The name of the Noncommercial Educational Webcaster, exactly as
it appears on the notice of use, and if the statement of account covers
a single station only, the call letters or name of the station;
(2) The name, address, business title, telephone number, facsimile
number (if any), electronic mail address (if any) and other contact
information of the person to be contacted for information or questions
concerning the content of the statement of account;
(3) The signature of a duly authorized representative of the
applicable educational institution;
(4) The printed or typewritten name of the person signing the
statement of account;
(5) The date of signature;
(6) The title or official position held by the person signing the
statement of account;
(7) A certification of the capacity of the person signing; and
(8) A statement to the following effect: I, the undersigned duly
authorized representative of the applicable educational institution,
have examined this statement of account; hereby state that it is true,
accurate, and complete to my knowledge after reasonable due diligence;
and further certify that the licensee entity named herein qualifies as a
Noncommercial Educational Webcaster for the relevant year, and did not
exceed 159,140 total ATH in any month of the prior year for which the
Noncommercial Educational Webcaster did not submit a statement of
account and pay any required additional royalties.
(d) Reporting by Noncommercial Educational Webcasters in general--
(1) Reporting waiver. In light of the unique business and
operational circumstances with respect to Noncommercial Educational
Webcasters, and for the purposes of this subpart only, a Noncommercial
Educational Webcaster that did not exceed 80,000 total ATH for any
individual channel or station for more than one calendar month in the
immediately preceding calendar year and that does not expect to exceed
80,000 total ATH for any individual channel or station for any calendar
month during the applicable calendar year may elect to pay to the
Collective a nonrefundable, annual Proxy Fee of $100 in lieu of
providing reports of use for the calendar year pursuant to the
regulations at Sec.370.4 of this chapter. In addition, a Noncommercial
Educational Webcaster that unexpectedly exceeded 80,000 total ATH on one
or more channels or stations for more than one month during the
immediately preceding calendar year may elect to pay the Proxy Fee and
receive the reporting waiver described in this paragraph (d)(1) during a
calendar year,
[[Page 868]]
if it implements measures reasonably calculated to ensure that it will
not make Educational Transmissions exceeding 80,000 total ATH during any
month of that calendar year. The Proxy Fee is intended to defray the
Collective's costs associated with the reporting waiver in this
paragraph (d)(1), including development of proxy usage data. The Proxy
Fee shall be paid by the date specified in paragraph (b) of this section
for paying the Minimum Fee for the applicable calendar year and shall be
accompanied by a certification on a form provided by the Collective,
signed by a duly authorized representative of the applicable educational
institution, stating that the Noncommercial Educational Webcaster is
eligible for the Proxy Fee option because of its past and expected
future usage and, if applicable, has implemented measures to ensure that
it will not make excess Educational Transmissions in the future.
(2) Sample-basis reports. A Noncommercial Educational Webcaster that
did not exceed 159,140 total ATH for any individual channel or station
for more than one calendar month in the immediately preceding calendar
year and that does not expect to exceed 159,140 total ATH for any
individual channel or station for any calendar month during the
applicable calendar year may elect to provide reports of use on a sample
basis (two weeks per calendar quarter) in accordance with the
regulations at Sec.370.4 of this chapter, except that, notwithstanding
Sec.370.4(d)(2)(vi), such an electing Noncommercial Educational
Webcaster shall not be required to include ATH or actual total
performances and may in lieu thereof provide channel or station name and
play frequency. Notwithstanding the preceding sentence, a Noncommercial
Educational Webcaster that is able to report ATH or actual total
performances is encouraged to do so. These reports of use shall be
submitted to the Collective no later than January 31st of the year
immediately following the year to which they pertain.
(3) Census-basis reports. (i) If any of the conditions in paragraphs
(d)(3)(i)(A) through (C) of this section is satisfied, a Noncommercial
Educational Webcaster must report pursuant to paragraph (d)(3) of this
section:
(A) The Noncommercial Educational Webcaster exceeded 159,140 total
ATH for any individual channel or station for more than one calendar
month in the immediately preceding calendar year;
(B) The Noncommercial Educational Webcaster expects to exceed
159,140 total ATH for any individual channel or station for any calendar
month in the applicable calendar year; or
(C) The Noncommercial Educational Webcaster otherwise does not elect
to be subject to paragraph (d)(1) or (2) of this section.
(ii) A Noncommercial Educational Webcaster required to report
pursuant to paragraph (d)(3)(i) of this section shall provide reports of
use to the Collective quarterly on a census reporting basis in
accordance with Sec.370.4 of this chapter, except that,
notwithstanding Sec.370.4(d)(2), such a Noncommercial Educational
Webcaster shall not be required to include ATH or actual total
performances, and may in lieu thereof provide channel or station name
and play frequency, during the first calendar year it reports in
accordance with paragraph (d)(3) of this section. For the avoidance of
doubt, after a Noncommercial Educational Webcaster has been required to
report in accordance with paragraph (d)(3)(i) of this section for a full
calendar year, it must thereafter include ATH or actual total
performances in its reports of use. All reports of use under paragraph
(d)(3)(i) of this section shall be submitted to the Collective no later
than the 45th day after the end of each calendar quarter.
(e) Server logs. Noncommercial Educational Webcasters shall retain
for a period of no less than three full calendar years server logs
sufficient to substantiate all information relevant to eligibility, rate
calculation and reporting under this subpart. To the extent that a
third-party Web hosting or service provider maintains equipment or
software for a Noncommercial Educational Webcaster and/or such third
party creates, maintains, or can reasonably create such server logs, the
Noncommercial Educational Webcaster shall direct that such server logs
be
[[Page 869]]
created and maintained by said third party for a period of no less than
three full calendar years and/or that such server logs be provided to,
and maintained by, the Noncommercial Educational Webcaster.
(f) Terms in general. Subject to the provisions of this subpart,
terms governing late fees, distribution of royalties by the Collective,
unclaimed funds, record retention requirements, treatment of Licensees'
confidential information, audit of royalty payments and distributions,
and any definitions for applicable terms not defined in this subpart
shall be those set forth in subpart A of this part.
Subpart D_Public Broadcasters
Source: 85 FR 11857, Feb. 28, 2020, unless otherwise noted.
Sec.380.30 Definitions.
For purposes of this subpart, the following definitions apply:
Authorized website is any website operated by or on behalf of any
Public Broadcaster that is accessed by website Users through a Uniform
Resource Locator (``URL'') owned by such Public Broadcaster and through
which website Performances are made by such Public Broadcaster.
CPB is the Corporation for Public Broadcasting.
Music ATH is aggregate tuning hours of website Performances of sound
recordings of musical works.
NPR is National Public Radio, Inc.
Originating Public Radio Station is a noncommercial terrestrial
radio broadcast station that--
(1) Is licensed as such by the Federal Communications Commission;
(2) Originates programming and is not solely a repeater station;
(3) Is a member or affiliate of NPR, American Public Media, Public
Radio International, or Public Radio Exchange, a member of the National
Federation of Community Broadcasters, or another public radio station
that is qualified to receive funding from CPB pursuant to its criteria;
(4) Qualifies as a ``noncommercial webcaster'' under 17 U.S.C.
114(f)(4)(E)(i); and
(5) Either--
(i) Offers website Performances only as part of the mission that
entitles it to be exempt from taxation under section 501 of the Internal
Revenue Code of 1986 (26 U.S.C. 501); or
(ii) In the case of a governmental entity (including a Native
American Tribal governmental entity), is operated exclusively for public
purposes.
Person is a natural person, a corporation, a limited liability
company, a partnership, a trust, a joint venture, any governmental
authority or any other entity or organization.
Public Broadcasters are NPR, American Public Media, Public Radio
International, and Public Radio Exchange, and up to 530 Originating
Public Radio Stations as named by CPB. CPB shall notify SoundExchange
annually of the eligible Originating Public Radio Stations to be
considered Public Broadcasters per this definition (subject to the
numerical limitations set forth in this definition). The number of
Originating Public Radio Stations treated per this definition as Public
Broadcasters shall not exceed 530 for a given year without
SoundExchange's express written approval, except that CPB shall have the
option to increase the number of Originating Public Radio Stations that
may be considered Public Broadcasters as provided in Sec.380.31(c).
Side Channel is any internet-only program available on an Authorized
website or an archived program on such Authorized website that, in
either case, conforms to all applicable requirements under 17 U.S.C.
114.
Term is the period January 1, 2021, through December 31, 2025.
Website is a site located on the World Wide Web that can be located
by a website User through a principal URL.
Website Performances are all public performances by means of digital
audio transmissions of sound recordings, including the transmission of
any portion of any sound recording, made through an Authorized website
in accordance with all requirements of 17 U.S.C. 114, from servers used
by a Public Broadcaster (provided that the Public Broadcaster controls
the content of all materials transmitted by the server), or by a
contractor authorized pursuant to Sec.380.31(f), that consist of
either the retransmission of a Public
[[Page 870]]
Broadcaster's over-the-air terrestrial radio programming or the digital
transmission of nonsubscription Side Channels that are programmed and
controlled by the Public Broadcaster; provided, however, that a Public
Broadcaster may limit access to an Authorized website, or a portion
thereof, or any content made available thereon or functionality thereof,
solely to website Users who are contributing members of a Public
Broadcaster. This term does not include digital audio transmissions made
by any other means.
Website Users are all those who access or receive website
Performances or who access any Authorized website.
Sec.380.31 Royalty fees for the public performance of sound
recordings and for ephemeral recordings.
(a) Royalty rates. The total license fee for all website
Performances by Public Broadcasters during each year of the Term, up to
the total Music ATH set forth in paragraphs (a)(1) through (5) of this
section for the relevant calendar year, and Ephemeral Recordings made by
Public Broadcasters solely to facilitate such website Performances,
shall be $800,000 (the ``License Fee''), unless additional payments are
required as described in paragraph (c) of this section. The total Music
ATH limits are:
(1) 2021: 360,000,000;
(2) 2022: 370,000,000;
(3) 2023: 380,000,000;
(4) 2024: 390,000,000; and
(5) 2025: 400,000,000.
(b) Calculation of License Fee. It is understood that the License
Fee includes:
(1) An annual minimum fee for each Public Broadcaster for each year
during the Term;
(2) Additional usage fees for certain Public Broadcasters; and
(3) A discount that reflects the administrative convenience to the
Collective (for purposes of this subpart, the term ``Collective'' refers
to SoundExchange, Inc.) of receiving annual lump sum payments that cover
a large number of separate entities, as well as the protection from bad
debt that arises from being paid in advance.
(c) Increase in Public Broadcasters. If the total number of
Originating Public Radio Stations that wish to make website Performances
in any calendar year exceeds the number of such Originating Public Radio
Stations considered Public Broadcasters in the relevant year, and the
excess Originating Public Radio Stations do not wish to pay royalties
for such website Performances apart from this subpart, CPB may elect by
written notice to the Collective to increase the number of Originating
Public Radio Stations considered Public Broadcasters in the relevant
year effective as of the date of the notice. To the extent of any such
elections, CPB shall make an additional payment to the Collective for
each calendar year or part thereof it elects to have an additional
Originating Public Radio Station considered a Public Broadcaster, in the
amount of the annual minimum fee applicable to Noncommercial Webcasters
under subpart B of this part for each additional Originating Public
Radio Station per year. Such payment shall accompany the notice electing
to have an additional Originating Public Radio Station considered a
Public Broadcaster.
(d) Allocation between ephemeral recordings and performance royalty
fees. The Collective must credit 5% of all royalty payments as payment
for Ephemeral Recordings and credit the remaining 95% to section 114
royalties. All Ephemeral Recordings that a Licensee makes which are
necessary and commercially reasonable for making noninteractive digital
transmissions are included in the 5%.
(e) Effect of non-performance by any Public Broadcaster. In the
event that any Public Broadcaster violates any of the material
provisions of 17 U.S.C. 112(e) or 114 or this subpart that it is
required to perform, the remedies of the Collective shall be specific to
that Public Broadcaster only, and shall include, without limitation,
termination of that Public Broadcaster's right to be treated as a Public
Broadcaster per this paragraph (e) upon written notice to CPB. The
Collective and Copyright Owners also shall have whatever rights may be
available to them against that Public Broadcaster under applicable law.
The Collective's remedies for such a breach or failure by an individual
Public Broadcaster shall not include
[[Page 871]]
termination of the rights of other Public Broadcasters to be treated as
Public Broadcasters per this paragraph (e), except that if CPB fails to
pay the License Fee or otherwise fails to perform any of the material
provisions of this subpart, or such a breach or failure by a Public
Broadcaster results from CPB's inducement, and CPB does not cure such
breach or failure within 30 days after receiving notice thereof from the
Collective, then the Collective may terminate the right of all Public
Broadcasters to be treated as Public Broadcasters per this paragraph (e)
upon written notice to CPB. In such a case, a prorated portion of the
License Fee for the remainder of the Term (to the extent paid by CPB)
shall, after deduction of any damages payable to the Collective by
virtue of the breach or failure, be credited to statutory royalty
obligations of Public Broadcasters to the Collective for the Term as
specified by CPB.
(f) Use of contractors. The right to rely on this subpart is limited
to Public Broadcasters, except that a Public Broadcaster may employ the
services of a third Person to provide the technical services and
equipment necessary to deliver website Performances on behalf of such
Public Broadcaster, but only through an Authorized website. Any
agreement between a Public Broadcaster and any third Person for such
services shall:
(1) Obligate such third Person to provide all such services in
accordance with all applicable provisions of the statutory licenses and
this subpart;
(2) Specify that such third Person shall have no right to make
website Performances or any other performances or Ephemeral Recordings
on its own behalf or on behalf of any Person or entity other than a
Public Broadcaster through the Public Broadcaster's Authorized website
by virtue of its services for the Public Broadcaster, including in the
case of Ephemeral Recordings, pre-encoding or otherwise establishing a
library of sound recordings that it offers to a Public Broadcaster or
others for purposes of making performances, but instead must obtain all
necessary licenses from the Collective, the copyright owner or another
duly authorized Person, as the case may be;
(3) Specify that such third Person shall have no right to grant any
sublicenses under the statutory licenses; and
(4) Provide that the Collective is an intended third-party
beneficiary of all such obligations with the right to enforce a breach
thereof against such third Person.
Sec.380.32 Terms for making payment of royalty fees and statements
of account.
(a) Payment to the Collective. CPB shall pay the License Fee to the
Collective in five equal installments of $800,000 each, which shall be
due December 31, 2020, and annually thereafter through December 31,
2024.
(b) Reporting. CPB and Public Broadcasters shall submit reports of
use and other information concerning website Performances as agreed upon
with the Collective.
(c) Terms in general. Subject to the provisions of this subpart,
terms governing late fees, distribution of royalties by the Collective,
unclaimed funds, record retention requirements, treatment of Licensees'
confidential information, audit of royalty payments and distributions,
and any definitions for applicable terms not defined in this subpart
shall be those set forth in subpart A of this part.
PART 381_USE OF CERTAIN COPYRIGHTED WORKS IN CONNECTION WITH
NONCOMMERCIAL EDUCATIONAL BROADCASTING--Table of Contents
Sec.
381.1 General.
381.2 Definition of public broadcasting entity.
381.3 [Reserved]
381.4 Performance of musical compositions by PBS, NPR, and other public
broadcasting entities engaged in the activities set forth in
17 U.S.C. 118(c).
381.5 Performance of musical compositions by public broadcasting
entities licensed to colleges and universities.
381.6 Performance of musical compositions by other public broadcasting
entities.
381.7 Recording rights, rates and terms.
381.8 Terms and rates of royalty payments for the use of published
pictorial, graphic, and sculptural works.
[[Page 872]]
381.9 Unknown copyright owners.
381.10 Cost of living adjustment.
381.11 Notice of restrictions on use of reproductions of transmission
programs.
Authority: 17 U.S.C. 118, 801(b)(1) and 803.
Source: 72 FR 67647, Nov. 30, 2007, unless otherwise noted.
Sec.381.1 General.
This part establishes terms and rates of royalty payments for
certain activities using published nondramatic musical works and
published pictorial, graphic and sculptural works during a period
beginning on January 1, 2018, and ending on December 31, 2022. Upon
compliance with 17 U.S.C. 118, and the terms and rates of this part, a
public broadcasting entity may engage in the activities with respect to
such works set forth in 17 U.S.C. 118(c).
[72 FR 67647, Nov. 30, 2007, as amended at 77 FR 71105, Nov. 29, 2012;
83 FR 2740, Jan. 19, 2018]
Sec.381.2 Definition of public broadcasting entity.
As used in this part, the term public broadcasting entity means a
noncommercial educational broadcast station as defined in section 397 of
title 47 and any nonprofit institution or organization engaged in the
activities described in 17 U.S.C. 118(c).
Sec.381.3 [Reserved]
Sec.381.4 Performance of musical compositions by PBS, NPR and other
public broadcasting entities engaged in the activities set forth
in 17 U.S.C. 118(c).
(a) Determination of royalty rate. The following rates and terms
shall apply to the performance by PBS, NPR and other public broadcasting
entities engaged in activities set forth in 17 U.S.C. 118(c) of
copyrighted published nondramatic musical compositions, except for
public broadcasting entities covered by Sec. Sec.381.5 and 381.6, and
except for compositions which are the subject of voluntary license
agreements: The royalty shall be $1.
(1) For performance of such work in a feature presentation
of PBS:
2013-2017................................................ $232.18
(2) For performance of such a work as background or theme
music in a PBS program:
2013-2017................................................ $58.51
(3) For performance of such a work in a feature
presentation of a station of PBS:
2013-2017................................................ $19.84
(4) For performance of such a work as background or theme
music in a program of a station of PBS:
2013-2017................................................ $4.18
(5) For the performance of such a work in a feature
presentation of NPR:
2013-2017................................................ $23.53
(6) For the performance of such a work as background or
theme music in an NPR program:
2013-2017................................................ $5.70
(7) For the performance of such a work in a feature
presentation of a station of NPR:
2013-2017................................................ $1.66
(8) For the performance of such a work as background or
theme music in a program of a station of NPR:
2013-2017................................................ $.59
(9) For purposes of this schedule the rate for the performance of
theme music in an entire series shall be double the single program theme
rate.
(10) In the event the work is first performed in a program of a
station of PBS or NPR, and such program is subsequently distributed by
PBS or NPR, an additional royalty payment shall be made equal to the
difference between the rate specified in this section for a program of a
station of PBS or NPR, respectively, and the rate specified in this
section for a PBS or NPR program, respectively.
(b) Payment of royalty rate. The required royalty rate shall be paid
to each known copyright owner not later than July 31 of each calendar
year for uses during the first six months of that calendar year, and not
later than January 31 for uses during the last six months of the
preceding calendar year.
[[Page 873]]
(c) Records of use. PBS and NPR shall, upon the request of a
copyright owner of a published musical work who believes a musical
composition of such owner has been performed under the terms of this
schedule, permit such copyright owner a reasonable opportunity to
examine their standard cue sheets listing the nondramatic performances
of musical compositions on PBS and NPR programs. Any local PBS and NPR
station that shall be required by the provisions of any voluntary
license agreement with ASCAP, BMI or SESAC covering the license period
January 1, 2018, to December 31, 2022, to provide a music use report
shall, upon request of a copyright owner who believes a musical
composition of such owner has been performed under the terms of this
schedule, permit such copyright owner to examine the report.
[72 FR 67647, Nov. 30, 2007, as amended at 77 FR 71105, Nov. 29, 2012;
83 FR 2740, Jan. 19, 2018]
Sec.381.5 Performance of musical compositions by public broadcasting
entities licensed to colleges and universities.
(a) Scope. This section applies to the performance of copyrighted
published nondramatic musical compositions by noncommercial radio
stations which are licensed to accredited colleges, accredited
universities, or other accredited nonprofit educational institutions and
which are not affiliated with National Public Radio. For purposes of
this section, accreditation of institutions providing post-secondary
education shall be determined by a regional or national accrediting
agency recognized by the Council for Higher Education Accreditation or
the United States Department of Education; and accreditation of
institutions providing elementary or secondary education shall be as
recognized by the applicable state licensing authority.
(b) Voluntary license agreements. Notwithstanding the schedule of
rates and terms established in this section, the rates and terms of any
license agreements entered into by copyright owners and colleges,
universities, and other nonprofit educational institutions concerning
the performance of copyrighted musical compositions, including
performances by noncommercial radio stations, shall apply in lieu of the
rates and terms of this section.
(c) Royalty rate. A public broadcasting entity within the scope of
this section may perform published nondramatic musical compositions
subject to the following schedule of royalty rates:
(1) For all such compositions in the repertory of ASCAP, the royalty
rates shall be as follows:
(i) Music fees.
----------------------------------------------------------------------------------------------------------------
Number of full-time
students 2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... <1,000............... $352 $359 $366 $373 $380
Level 2........................... 1,000-4,999.......... 407 415 423 431 440
Level 3........................... 5,000-9,999.......... 557 568 579 591 603
Level 4........................... 10,000-19,999........ 722 736 751 766 781
Level 5........................... 20,000+.............. 908 926 945 964 983
----------------------------------------------------------------------------------------------------------------
(ii) Level 1 rates as set forth in paragraph (c)(1)(i) of this
section, shall also apply to College Radio Stations with an authorized
effective radiated power (ERP), as that term is defined in 47 CFR
73.310(a), of 100 Watts or less, as specified on its current FCC
license, regardless of the size of the student population.
(2) For all such compositions in the repertory of BMI, the royalty
rates shall be as follows:
(i) Music fees.
----------------------------------------------------------------------------------------------------------------
Number of full-time
students 2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... <1,000............... $352 $359 $366 $373 $380
Level 2........................... 1,000-4,999.......... 407 415 423 431 440
Level 3........................... 5,000-9,999.......... 557 568 579 591 603
Level 4........................... 10,000-19,999........ 722 736 751 766 781
Level 5........................... 20,000+.............. 908 926 945 964 983
----------------------------------------------------------------------------------------------------------------
[[Page 874]]
(ii) Level 1 rates, as set forth in paragraph (c)(2)(i) of this
section, shall also apply to College Radio Stations with an authorized
effective radiated power (ERP), as that term is defined in 47 CFR
73.310(a), of 100 Watts or less, as specified on its current FCC
license, regardless of the size of the student population.
(3) For all such compositions in the repertory of SESAC, the royalty
rates shall be as follows:
(i) 2018: $155 per station.
(ii) 2019: $159 per station.
(iii) 2020: $162 per station.
(iv) 2021: $164 per station.
(v) 2022: The 2021 rate, subject to an annual cost of living
adjustment in accordance with paragraph (c)(3)(vi) of this section.
(vi) Such cost of living adjustment to be made in accordance with
the greater of:
(A) The change, if any, in the Consumer Price Index (all consumers,
all items) published by the U.S. Department of Labor, Bureau of Labor
Statistics during the twelve (12) month period from the most recent
Index, published before December 1 of the year immediately prior to the
applicable year; or
(B) One and one-half percent (1.5%).
(4) For the performance of any other such compositions: $1.
(d) Payment of royalty rate. The public broadcasting entity shall
pay the required royalty rate to ASCAP, BMI and SESAC not later than
January 31 of each year. Each annual payment to ASCAP, BMI and SESAC
shall be accompanied by a signed declaration stating the number of full-
time students enrolled in the educational entity operating the station
and/or the effective radiated power (ERP) as specified in its current
FCC license. An exact copy of such declaration shall be furnished to
each of ASCAP, BMI and SESAC.
(e) Records of use. A public broadcasting entity subject to this
section shall furnish to ASCAP, BMI and SESAC, upon request, a music-use
report during one week of each calendar year. ASCAP, BMI and SESAC shall
not in any one calendar year request more than 10 stations to furnish
such reports.
[72 FR 67647, Nov. 30, 2007, as amended at 73 FR 72726, Dec. 1, 2008; 74
FR 62705, Dec. 1, 2009; 75 FR 74623, Dec. 1, 2010; 76 FR 74703, Dec. 1,
2011; 77 FR 71105, Nov. 29, 2012; 78 FR 71501, Nov. 29, 2013; 79 FR
71319, Dec. 2, 2014; 80 FR 73118, Nov. 24, 2015; 81 FR 84478, Nov. 23,
2016; 83 FR 2740, Jan. 19, 2018; 83 FR 61126, Nov. 28, 2018; 84 FR
64206, Nov. 21, 2019; 85 FR 74884, Nov. 24, 2020]
Sec.381.6 Performance of musical compositions by other public
broadcasting entities.
(a) Scope. This section applies to the performance of copyrighted
published nondramatic musical compositions by radio stations not
licensed to colleges, universities, or other nonprofit educational
institutions and not affiliated with NPR. In the event that a station
owned by a public broadcasting entity broadcasts programming by means of
an in-band, on-channel (``IBOC'') digital radio signal and such
programming is different than the station's analog broadcast
programming, then any such programming shall be deemed to be provided by
a separate station requiring a separate royalty payment.
(b) Definitions. As used in paragraphs (d) and (e) of this section,
the following terms and their variant forms mean the following:
(1) Feature Music shall mean any performance of a musical work,
whether live or recorded, that is the principal focus of audience
attention. Feature Music does not include bridge, background, or
underscore music, themes or signatures, interstitial music between
programs such as in public service announcements or program sponsorship
identifications, brief musical transitions in and out of program
segments (not to exceed 60 seconds in duration), incidental performances
of music during broadcasts of public, religious, or sports events, or
brief performances during news, talk, religious, and sports programming
of no more than 30 seconds in duration.
(2) Population Count. The combination of:
(i) The number of persons estimated to reside within a station's
Predicted 60 dBu Contour, based on the most recent available census
data; and
[[Page 875]]
(ii) The nonduplicative number of persons estimated to reside in the
Predicted 60 dBu Contour of any Translator or Booster Station that
extends a public broadcasting entity's signal beyond the contours of a
station's Predicted 60 dBu Contour.
(iii) In determining Population Count, a station or a Translator or
Booster Station may use and report the total population data, from a
research company generally recognized in the broadcasting industry, for
the radio market within which the station's community license is
located.
(3) Predicted 60 dBu Contour shall be calculated as set forth in 47
CFR 73.313.
(4) Talk Format Station shall mean a noncommercial radio station:
(i) Whose program content primarily consists of talk shows, news
programs, sports, community affairs or religious sermons (or other non-
music-oriented programming);
(ii) That performs Feature Music in less than 20% of its programming
annually; and
(iii) That performs music-oriented programming for no more than four
(4) programming hours during the hours from 6 a.m. to 10 p.m. each
weekday, with no two (2) hours of such programming occurring
consecutively, with the exception of up to five (5) weekdays during the
year.
(5) Weekday shall mean the 24-hour period starting at 12 a.m.
through 11:59 p.m. on Mondays, Tuesdays, Wednesdays, Thursdays and
Fridays occurring between January 1 of a given year up to and including
Thanksgiving day of that year.
(6) Translator Station and Booster Station shall have the same
meanings as set forth in 47 CFR 74.1201.
(c) Voluntary license agreements. Notwithstanding the schedule of
rates and terms established in this section, the rates and terms of any
license agreements entered into by copyright owners and noncommercial
radio stations within the scope of this section concerning the
performance of copyrighted musical compositions, including performances
by noncommercial radio stations, shall apply in lieu of the rates and
terms of this section.
(d) Royalty rate. A public broadcasting entity within the scope of
this section may perform published nondramatic musical compositions
subject to the following schedule of royalty rates:
(1) For all such compositions in the repertory of ASCAP, the royalty
rates shall be as follows:
(i) Music Fees (Stations with 20% or more programming containing
Feature Music):
----------------------------------------------------------------------------------------------------------------
Calendar years
Population count ------------------------------------------------------
2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... 0-249,999............ $697 $711 $725 $739 $754
Level 2........................... 250,000-499,999...... 1,243 1,268 1,294 1,319 1,346
Level 3........................... 500,000-999,999...... 1,864 1,901 1,939 1,978 2,017
Level 4........................... 1,000,000-1,499,999.. 2,486 2,535 2,586 2,638 2,691
Level 5........................... 1,500,000-1,999,999.. 3,107 3,169 3,232 3,297 3,363
Level 6........................... 2,000,000-2,499,999.. 3,728 3,803 3,879 3,956 4,035
Level 7........................... 2,500,000-2,999,999.. 4,349 4,436 4,525 4,615 4,708
Level 8........................... 3,000,000 and above.. 6,214 6,338 6,465 6,594 6,726
----------------------------------------------------------------------------------------------------------------
(ii) Talk Format Station Fees (Stations with <20% Feature Music
programming):
----------------------------------------------------------------------------------------------------------------
Calendar years
Population count ------------------------------------------------------
2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... 0-249,999............ $697 $711 $725 $739 $754
Level 2........................... 250,000-499,999...... 697 711 725 739 754
Level 3........................... 500,000-999,999...... 697 711 725 739 754
Level 4........................... 1,000,000-1,499,999.. 870 887 905 923 942
Level 5........................... 1,500,000-1,999,999.. 1,087 1,109 1,131 1,154 1,177
Level 6........................... 2,000,000-2,499,999.. 1,305 1,331 1,357 1,384 1,412
Level 7........................... 2,500,000-2,999,999.. 1,522 1,552 1,583 1,615 1,647
[[Page 876]]
Level 8........................... 3,000,000 and above.. 2,175 2,218 2,262 2,308 2,354
----------------------------------------------------------------------------------------------------------------
(2) For all such compositions in the repertory of BMI, the royalty
rates shall be as follows:
(i) Music Fees (Stations with 20% or more programming containing
Feature Music):
----------------------------------------------------------------------------------------------------------------
Calendar years
Population count ------------------------------------------------------
2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... 0-249,999............ $697 $711 $725 $739 $754
Level 2........................... 250,000-499,999...... 1,243 1,268 1,294 1,319 1,346
Level 3........................... 500,000-999,999...... 1,864 1,901 1,939 1,978 2,017
Level 4........................... 1,000,000-1,499,999.. 2,486 2,535 2,586 2,638 2,691
Level 5........................... 1,500,000-1,999,999.. 3,107 3,169 3,232 3,297 3,363
Level 6........................... 2,000,000-2,499,999.. 3,728 3,803 3,879 3,956 4,035
Level 7........................... 2,500,000-2,999,999.. 4,349 4,436 4,525 4,615 4,708
Level 8........................... 3,000,000 and above.. 6,214 6,338 6,465 6,594 6,726
----------------------------------------------------------------------------------------------------------------
(ii) Talk Format Station Fees (Stations with <20% Feature Music
programming):
----------------------------------------------------------------------------------------------------------------
Calendar years
Population count ------------------------------------------------------
2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... 0-249,999............ $697 $711 $725 $739 $754
Level 2........................... 250,000-499,999...... 697 711 725 739 754
Level 3........................... 500,000-999,999...... 697 711 725 739 754
Level 4........................... 1,000,000-1,499,999.. 870 887 905 923 942
Level 5........................... 1,500,000-1,999,999.. 1,087 1,109 1,131 1,154 1,177
Level 6........................... 2,000,000-2,499,999.. 1,305 1,331 1,357 1,384 1,412
Level 7........................... 2,500,000-2,999,999.. 1,522 1,552 1,583 1,615 1,647
Level 8........................... 3,000,000 and above.. 2,175 2,218 2,262 2,308 2,354
----------------------------------------------------------------------------------------------------------------
(3) For all such compositions in the repertory of SESAC, the royalty
rates shall be as follows:
(i) Music fees for stations with = 20% Feature Music
programming:
----------------------------------------------------------------------------------------------------------------
Population count 2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... 0-249,999............ $152 $155 $158 $161 $164
Level 2........................... 250,000-499,999...... 253 258 263 268 274
Level 3........................... 500,000-999,999...... 380 388 396 403 411
Level 4........................... 1,000,000-1,499,999.. 507 517 527 538 548
Level 5........................... 1,500,000-1,999,999.. 634 647 660 673 686
Level 6........................... 2,000,000-2,499,999.. 760 775 790 806 822
Level 7........................... 2,500,000-2,999,999.. 887 905 923 941 960
Level 8........................... 3,000,000 and above.. 1,268 1,293 1,318 1,344 1,371
----------------------------------------------------------------------------------------------------------------
(ii) Talk fees for stations with <20% Feature Music programming:
----------------------------------------------------------------------------------------------------------------
Population count 2018 2019 2020 2021 2022
----------------------------------------------------------------------------------------------------------------
Level 1........................... 0-249,999............ $152 $155 $158 $161 $164
Level 2........................... 250,000-499,999...... 152 155 158 161 164
Level 3........................... 500,000-999,999...... 152 155 158 161 164
Level 4........................... 1,000,000-1,499,999.. 177 181 185 188 192
Level 5........................... 1,500,000-1,999,999.. 222 227 231 236 240
[[Page 877]]
Level 6........................... 2,000,000-2,499,999.. 266 271 277 282 288
Level 7........................... 2,500,000-2,999,999.. 311 317 323 330 336
Level 8........................... 3,000,000 and above.. 444 452 461 470 480
----------------------------------------------------------------------------------------------------------------
(4) For the performance of any other such compositions, in 2018
through 2022, $1.
(e) Payment of royalty rate. The public broadcasting entity shall
pay the required royalty rate to ASCAP, BMI and SESAC not later than
January 31 of each year. Each annual payment shall be accompanied by a
signed declaration stating the Population Count of the public
broadcasting entity and the source for such Population Count. An exact
copy of such declaration shall be furnished to each of ASCAP, BMI and
SESAC. Upon prior written notice thereof from ASCAP, BMI and SESAC, a
public broadcasting entity shall make its books and records relating to
its Population Count available for inspection. In the event that a
public broadcasting entity wishes to be deemed a Talk Format Station,
then such entity shall provide a signed declaration stating that Feature
Music is performed in less than 20% of its annual programming and that
it complies with the caps set forth in paragraph (b)(4) of this section.
An exact copy of such declaration shall be furnished to each of ASCAP,
BMI and SESAC. Upon prior written notice thereof from ASCAP, BMI or
SESAC, a public broadcasting entity shall make its program schedule or
other documentation supporting its eligibility as a Talk Format Station
available for inspection.
(f) Records of use. A public broadcasting entity subject to this
section shall furnish to ASCAP, BMI and SESAC, upon request, a music-use
report during one week of each calendar year. ASCAP, BMI and SESAC each
shall not in any one calendar year request more than 10 stations to
furnish such reports.
[72 FR 67647, Nov. 30, 2007, as amended at 77 FR 71106, Nov. 29, 2012;
83 FR 2741, Jan. 19, 2018]
Sec.381.7 Recording rights, rates and terms.
(a) Scope. This section establishes rates and terms for the
recording of nondramatic performances and displays of musical works,
other than compositions subject to voluntary license agreements, on and
for the radio and television programs of public broadcasting entities,
whether or not in synchronization or timed relationship with the visual
or aural content, and for the making, reproduction, and distribution of
copies and phonorecords of public broadcasting programs containing such
nondramatic performances and displays of musical works solely for the
purpose of transmission by public broadcasting entities. The rates and
terms established in this schedule include the making of the
reproductions described in 17 U.S.C. 118(c)(3).
(b) Royalty rate. (1)(i) For uses described in paragraph (a) of this
section of a musical work in a PBS-distributed program, the royalty fees
shall be calculated by multiplying the following per-composition rates
by the number of different compositions in that PBS-distributed program:
------------------------------------------------------------------------
2018-2022
------------------------------------------------------------------------
(A) Feature................................................ $118.70
(B) Concert feature (per minute)........................... 35.65
(C) Background............................................. 59.99
(D) Theme:
(1) Single program or first series program............... 59.99
(2) Other series program................................. 24.36
------------------------------------------------------------------------
(ii) For such uses other than in a PBS-distributed television
program, the royalty fee shall be calculated by multiplying the
following per-composition rates by the number of different compositions
in that program:
------------------------------------------------------------------------
2018-2022
------------------------------------------------------------------------
(A) Feature................................................ $9.81
(B) Concert feature (per minute)........................... 2.58
(C) Background............................................. 4.26
(D) Theme:
(1) Single program or first series program............... 4.26
(2) Other series program................................. 1.69
------------------------------------------------------------------------
[[Page 878]]
(iii) In the event the work is first recorded other than in a PBS-
distributed program, and such program is subsequently distributed by
PBS, an additional royalty payment shall be made equal to the difference
between the rate specified in this section for other than a PBS-
distributed program and the rate specified in this section for a PBS-
distributed program.
(2) For uses licensed herein of a musical work in a NPR program, the
royalty fees shall be calculated by multiplying the following per-
composition rates by the number of different compositions in any NPR
program distributed by NPR. For purposes of this schedule ``National
Public Radio'' programs include all programs produced in whole or in
part by NPR, or by any NPR station or organization under contract with
NPR.
------------------------------------------------------------------------
2018-2022
------------------------------------------------------------------------
(i) Feature................................................ $12.85
(ii) Concert feature (per minute).......................... 18.86
(iii) Background........................................... 6.44
(iv) Theme:
(A) Single program or first series program............... 6.44
(B) Other series program................................. 2.57
------------------------------------------------------------------------
(3) For purposes of this schedule, a ``Concert Feature'' shall be
deemed to be the nondramatic presentation in a program of all or part of
a symphony, concerto, or other serious work originally written for
concert performance, or the nondramatic presentation in a program of
portions of a serious work originally written for opera performance.
(4) For such uses other than in an NPR-produced radio program:
------------------------------------------------------------------------
2018-2022
------------------------------------------------------------------------
(i) Feature................................................ $.81
(ii) Feature (concert) (per half hour)..................... 1.69
(iii) Background........................................... .41
------------------------------------------------------------------------
(5) The schedule of fees covers use for a period of three years
following the first use. Succeeding use periods will require the
following additional payment: Additional one-year period--25 percent of
the initial three-year fee; second three-year period--50 percent of the
initial three-year fee; each three-year fee thereafter--25 percent of
the initial three-year fee; provided that a 100 percent additional
payment prior to the expiration of the first three-year period will
cover use during all subsequent use periods without limitation. Such
succeeding uses which are subsequent to December 31, 2017, shall be
subject to the royalty rates established in this schedule.
(c) Payment of royalty rates. The required royalty rates shall be
paid to each known copyright owner not later than July 31 of each
calendar year for uses during the first six months of that calendar
year, and not later than January 31 for uses during the last six months
of the preceding calendar year.
(d) Records of use--(1) Maintenance of cue sheets. PBS and its
stations, NPR, or other public broadcasting entities shall maintain and
make available for examination pursuant to paragraph (e) of this section
copies of their standard cue sheets or summaries of same listing the
recording of the musical works of such copyright owners.
(2) Content of cue sheets or summaries. Such cue sheets or summaries
shall include:
(i) The title, composer and author to the extent such information is
reasonably obtainable.
(ii) The type of use and manner of performance thereof in each case.
(iii) For Concert Feature music, the actual recorded time period on
the program, plus all distribution and broadcast information available
to the public broadcasting entity.
(e) Filing of use reports with the Copyright Royalty Judges. Deposit
of cue sheets or summaries. PBS and its stations, NPR, or other
television public broadcasting entity shall deposit with the Copyright
Royalty Judges one electronic copy in Portable Document Format (PDF) on
compact disk (an optical data storage medium such as a CD-ROM, CD-R or
CD-RW) or floppy diskette of their standard music cue sheets or
summaries of same listing the recording pursuant to this schedule of the
musical works of copyright owners. Such cue sheets or summaries shall be
deposited not later than July 31 of each calendar year for recordings
during the first six months of the calendar year and not later than
January 31 of each calendar year for recordings during the
[[Page 879]]
second six months of the preceding calendar year. PBS and NPR shall
maintain at their offices copies of all standard music cue sheets from
which such music use reports are prepared. Such music cue sheets shall
be furnished to the Copyright Royalty Judges upon their request and also
shall be available during regular business hours at the offices of PBS
or NPR for examination by a copyright owner who believes a musical
composition of such owner has been recorded pursuant to this schedule.
[72 FR 67647, Nov. 30, 2007, as amended at 77 FR 71108, Nov. 29, 2012;
83 FR 2742, Jan. 19, 2018]
Sec.381.8 Terms and rates of royalty payments for the use of
published pictorial, graphic, and sculptural works.
(a) Scope. This section establishes rates and terms for the use of
published pictorial, graphic, and sculptural works by public
broadcasting entities for the activities described in 17 U.S.C. 118. The
rates and terms established in this schedule include the making of the
reproductions described in 17 U.S.C. 118(c).
(b) Royalty rate. (1) The following schedule of rates shall apply to
the use of works within the scope of this section:
(i) For such uses in a PBS-distributed program:
------------------------------------------------------------------------
2013-2017
------------------------------------------------------------------------
(A) For featured display of a work......................... $70.75
(B) For background and montage display..................... 34.50
(C) For use of a work for program identification or for 139.46
thematic use..............................................
(D) For the display of an art reproduction copyrighted 45.82
separately from the work of fine art from which the work
was reproduced irrespective of whether the reproduced work
of fine art is copyrighted so as to be subject also to
payment of a display fee under the terms of the schedule..
------------------------------------------------------------------------
(ii) For such uses in other than PBS-distributed programs:
------------------------------------------------------------------------
2013-2017
------------------------------------------------------------------------
(A) For featured display of a work......................... $45.82
(B) For background and montage display..................... 23.48
(C) For use of a work for program identification or for 93.65
thematic use..............................................
(D) For the display of an art reproduction copyrighted 23.49
separately from the work of fine art from which the work
was reproduced irrespective of whether the reproduced work
of fine art is copyrighted so as to be subject also to
payment of a display fee under the terms of the schedule..
------------------------------------------------------------------------
(2) For the purposes of the schedule in paragraph (b)(1) of this
section the rate for the thematic use of a work in an entire series
shall be double the single program theme rate. In the event the work is
first used other than in a PBS-distributed program, and such program is
subsequently distributed by PBS, an additional royalty payment shall be
made equal to the difference between the rate specified in this section
for other than a PBS-distributed program and the rate specified in this
section for a PBS-distributed program.
(3) ``Featured display'' for purposes of this schedule means a full-
screen or substantially full-screen display appearing on the screen for
more than three seconds. Any display less than full-screen or
substantially full-screen, or full-screen for three seconds or less, is
deemed to be a ``background or montage display''.
(4) ``Thematic use'' is the utilization of the works of one or more
artists where the works constitute the central theme of the program or
convey a story line.
(5) ``Display of an art reproduction copyrighted separately from the
work of fine art from which the work was reproduced'' means a
transparency or other reproduction of an underlying work of fine art.
(c) Payment of royalty rate. PBS or other public broadcasting entity
shall pay the required royalty fees to each copyright owner not later
than July 31 of each calendar year for uses during the first six months
of that calendar year, and not later than January 31 for uses during the
last six months of the preceding calendar year.
(d) Records of use. (1) PBS and its stations or other public
broadcasting entity shall maintain and furnish either to copyright
owners, or to the offices of generally recognized organizations
representing the copyright owners of pictorial, graphic and sculptural
works,
[[Page 880]]
copies of their standard lists containing the pictorial, graphic, and
sculptural works displayed on their programs. Such notice shall include
the name of the copyright owner, if known, the specific source from
which the work was taken, a description of the work used, the title of
the program on which the work was used, and the date of the original
broadcast of the program.
(2) Such listings shall be furnished not later than July 31 of each
calendar year for displays during the first six months of the calendar
year, and not later than January 31 of each calendar year for displays
during the second six months of the preceding calendar year.
(e) Filing of use reports with the Copyright Royalty Judges. (1) PBS
and its stations or other public broadcasting entity shall deposit with
the Copyright Royalty Judges one electronic copy in Portable Document
Format (PDF) on compact disk (an optical data storage medium such as a
CD-ROM, CD-R or CD-RW) or floppy diskette of their standard lists
containing the pictorial, graphic, and sculptural works displayed on
their programs. Such notice shall include the name of the copyright
owner, if known, the specific source from which the work was taken, a
description of the work used, the title of the program on which the work
was used, and the date of the original broadcast of the program.
(2) Such listings shall be furnished not later than July 31 of each
calendar year for displays during the first six months of the calendar
year, and not later than January 31 of each calendar year for displays
during the second six months of the preceding calendar year.
(f) Terms of use. (1) The rates of this schedule are for unlimited
use for a period of three years from the date of the first use of the
work under this schedule. Succeeding use periods will require the
following additional payment: Additional one-year period--25 percent of
the initial three-year fee; second three-year period--50 percent of the
initial three-year fee; each three-year period thereafter--25 percent of
the initial three-year fee; provided that a 100 percent additional
payment prior to the expiration of the first three-year period will
cover use during all subsequent use periods without limitation. Such
succeeding uses which are subsequent to December 31, 2017, shall be
subject to the rates established in this schedule.
(2) Pursuant to the provisions of 17 U.S.C. 118(e), nothing in this
schedule shall be construed to permit, beyond the limits of fair use as
provided in 17 U.S.C. 107, the production of a transmission program
drawn to any substantial extent from a published compilation of
pictorial, graphic, or sculptural works.
[72 FR 67647, Nov. 30, 2007, as amended at 77 FR 71108, Nov. 29, 2012]
Sec.381.9 Unknown copyright owners.
If PBS and its stations, NPR and its stations, or other public
broadcasting entity is not aware of the identity of, or unable to
locate, a copyright owner who is entitled to receive a royalty payment
under this part, they shall retain the required fee in a segregated
trust account for a period of three years from the date of the required
payment. No claim to such royalty fees shall be valid after the
expiration of the three-year period. Public broadcasting entities may
establish a joint trust fund for the purposes of this section. Public
broadcasting entities shall make available to the Copyright Royalty
Judges, upon request, information concerning fees deposited in trust
funds.
Sec.381.10 Cost of living adjustment.
(a) On or before December 1, 2018, the Copyright Royalty Judges
shall publish in the Federal Register a notice of the change in the cost
of living as determined by the Consumer Price Index (all consumers, all
items) during the period from the most recent Index published prior to
December 1, 2017, to the most recent Index published prior to December
1, 2018. On or before each December 1 thereafter the Copyright Royalty
Judges shall publish a notice of the change in the cost of living during
the period from the most recent index published prior to the previous
notice, to the most recent Index published prior to December 1, of that
year.
(b) On the same date of the notices published pursuant to paragraph
(a) of this section, the Copyright Royalty Judges shall publish in the
Federal
[[Page 881]]
Register a revised schedule of the rates for Sec.381.5(c)(3), the rate
to be charged for compositions in the repertory of SESAC, which shall
adjust the royalty amounts established in a dollar amount according to
the greater of:
(1) The change in the cost of living determined as provided in
paragraph (a) of this section; or
(2) One-and-a-half percent (1.5%).
(3) Such royalty rates shall be fixed at the nearest dollar.
(c) The adjusted schedule for the rates for Sec.381.5(c)(3) shall
become effective thirty (30) days after publication in the Federal
Register.
[72 FR 67647, Nov. 30, 2007, as amended at 77 FR 71109, Nov. 29, 2012;
83 FR 2743, Jan. 19, 2018]
Sec.381.11 Notice of restrictions on use of reproductions of
transmission programs.
Any public broadcasting entity which, pursuant to 17 U.S.C. 118,
supplies a reproduction of a transmission program to governmental bodies
or nonprofit institutions shall include with each copy of the
reproduction a warning notice stating in substance that the
reproductions may be used for a period of not more than seven days from
the specified date of transmission, that the reproductions must be
destroyed by the user before or at the end of such period, and that a
failure to fully comply with these terms shall subject the body or
institution to the remedies for infringement of copyright.
PART 382_RATES AND TERMS FOR TRANSMISSIONS OF SOUND RECORDINGS BY
PREEXISTING SUBSCRIPTION SERVICES AND PREEXISTING SATELLITE DIGITAL
AUDIO RADIO SERVICES AND FOR THE MAKING OF EPHEMERAL REPRODUCTIONS
TO FACILITATE THOSE TRANSMISSIONS--Table of Contents
Subpart A_Regulations of General Application
Sec.
382.1 Definitions.
382.2 Scope and compliance.
382.3 Making payment of royalty fees.
382.4 Delivering statements of account.
382.5 Distributing royalty fees.
382.6 Handling Confidential Information.
382.7 Auditing payments and distributions.
Subpart B_Preexisting Subscription Services (PSS)
382.10 Royalty fees for the digital performance of sound recordings and
the making of ephemeral recordings by preexisting subscription
services.
382.11 Calculation of gross revenues for PSS.
Subpart C_Preexisting Satellite Digital Audio Radio Services (SDARS)
382.20 Definitions.
382.21 Royalty fees for the public performance of sound recordings and
the making of ephemeral recordings by SDARS.
382.22 Calculation of Gross Revenues for SDARS.
382.23 Adjustments to royalty fee.
Authority: 17 U.S.C. 112(e), 114 and 801(b)(1).
Source: 83 FR 65265, Dec. 19, 2018, unless otherwise noted.
Subpart A_Regulations of General Application
Sec.382.1 Definitions.
In this subpart:
Collective means the collection and distribution organization that
is designated by the Copyright Royalty Judges.
Copyright Owners means sound recording copyright owners, and rights
owners under 17 U.S.C. 1401(l)(2), who are entitled to royalty payments
made under this part pursuant to the statutory licenses under 17 U.S.C.
112(e) and 114.
Digital Audio Transmission has the same meaning as in 17 U.S.C.
114(j)(5).
Eligible Transmission means a Digital Audio Transmission made by a
Licensee that is subject to licensing under 17 U.S.C. 114(d)(2) and the
payment of royalties under 37 CFR part 382.
Ephemeral Recording has the same meaning as in 17 U.S.C. 112.
GAAP means generally accepted accounting principles in effect in the
United States on the date payment is due.
[[Page 882]]
Licensee means the provider of an Satellite Digital Audio Radio
Service (SDARS) or Preexisting Subscription Service (PSS) that has
obtained a license under 17 U.S.C. 114 to make eligible transmissions
and a license under 17 U.S.C. 112(e) to make Ephemeral Recordings to
facilitate those Eligible Transmissions.
Payor means the entity required to make royalty payments to the
Collective or the entity required to distribute royalty fees collected,
depending on context. The Payor is:
(1) A Licensee, in relation to the Collective; and
(2) The Collective in relation to a Copyright Owner or Performer.
Performers means the independent administrators identified in 17
U.S.C. 114(g)(2)(B) and (C) and the parties identified in 17 U.S.C.
114(g)(2)(D).
Preexisting Subscription Service (PSS) has the same meaning as in 17
U.S.C. 114(j)(11). A service's offering on the internet that is
available to a subscriber outside the subscriber's residence is not a
Preexisting Subscription Service for purposes of this part.
Qualified Auditor means a Certified Public Accountant independent
within the meaning of the American Institute Certified Public
Accountants Code of Professional Conduct.
Satellite Digital Audio Radio Service (SDARS) means the preexisting
satellite digital audio radio services as defined in 17 U.S.C.
114(j)(10).
Transmission has the same meaning as in 17 U.S.C. 114(j)(15).
Verifying Entity means the party requesting an audit and giving
notice of intent to audit. For audits of SDARS and PSS, the Verifying
Entity is SoundExchange, Inc. For audits of SoundExchange, Inc. the
Verifying Entity is any Copyright Owner or its authorized
representative.
[83 FR 65265, Dec. 19, 2018, as amended at 84 FR 32313, July 8, 2019]
Sec.382.2 Scope and compliance.
(a) Scope. This part codifies rates and terms of royalty payments
for the public performance of sound recordings in certain Digital Audio
Transmissions by certain Licensees in accordance with applicable
provisions of 17 U.S.C. 114 and for the making of Ephemeral Recordings
by those Licensees in accordance with the provisions of 17 U.S.C.
112(e), during the period January 1, 2018, through December 31, 2027.
(b) Legal compliance. Licensees relying upon the statutory licenses
set forth in 17 U.S.C. 112(e) and 114 must comply with the requirements
of 17 U.S.C. 112(e) and 114, this part and any other applicable
regulations.
(c) Voluntary agreements. Notwithstanding the royalty rates and
terms established in any subparts of this part, the rates and terms of
any license agreements entered into by Copyright Owners and Licensees
may apply in lieu of these rates and terms.
Sec.382.3 Making payment of royalty fees.
(a) Payment to the Collective. A Licensee must make the royalty
payments due under subparts B and C of this part to SoundExchange, Inc.,
which is the Collective designated by the Copyright Royalty Board to
collect and distribute royalties under this part. If any payment due
date is a weekend or a federal holiday, then the payment is due on the
first business day thereafter.
(b) Advance payment. Licensees must pay the Collective an annual
advance payment of $100,000 by January 31 of each year. The Collective
must credit 5% of the advance payment as payment of the minimum fee for
Ephemeral Recordings and credit the remaining 95% to section 114
royalties. The funds are nonrefundable. Any uncredited portion of the
funds shall not carry over into a subsequent year.
(c) Minimum payments. A Licensee must make any minimum annual
payment due under subpart B or C of this part by January 31 of the
applicable license year.
(d) Monthly payments. A Licensee must make royalty payments on a
monthly basis. Payments are due on or before the 45th day after the end
of the month in which the Licensee made Eligible Transmissions.
(e) Late fees. A Licensee must pay a late fee for each payment and
each Statement of Account that the Collective receives after the due
date. The late fee is 1.5% (or the highest lawful rate, whichever is
lower) of the late
[[Page 883]]
payment amount per month. The late fee for a late Statement of Account
is 1.5% of the payment amount associated with the Statement of Account.
Late fees accrue from the due date until the date that the Collective
receives the late payment or late Statement of Account.
(1) Waiver of late fees. The Collective may waive or lower late fees
for immaterial or inadvertent failures of a Licensee to make a timely
payment or submit a timely Statement of Account.
(2) Notice regarding noncompliant Statements of Account. If it is
reasonably evident to the Collective that a timely-provided Statement of
Account is materially noncompliant, the Collective must notify the
Licensee within 90 days of discovery of the noncompliance.
Sec.382.4 Delivering statements of account.
(a) Statements of Account. Any payment due under this part must be
accompanied by a corresponding Statement of Account that must contain
the following information:
(1) Information as is necessary to calculate the accompanying
royalty payment;
(2) The name, address, business title, telephone number, facsimile
number (if any), electronic mail address (if any) and other contact
information of the person to be contacted for information or questions
concerning the content of the Statement of Account;
(3) The signature of:
(i) The Licensee or a duly authorized agent of the Licensee;
(ii) A partner or delegate if the Licensee is a partnership; or
(iii) An officer of the corporation if the Licensee is a
corporation;
(4) The printed or typewritten name of the person signing the
Statement of Account;
(5) If the Licensee is a partnership or corporation, the title or
official position held in the partnership or corporation by the person
signing the Statement of Account;
(6) A certification of the capacity of the person signing;
(7) The date of signature; and
(8) An attestation to the following effect:
I, the undersigned owner/officer/partner/agent of the Licensee have
examined this Statement of Account and hereby state that it is true,
accurate, and complete to my knowledge after reasonable due diligence
and that it fairly presents, in all material respects, the liabilities
of the Licensee pursuant to 17 U.S.C. 112(e) and 114 and applicable
regulations adopted under those sections.
(b) Certification. Licensee's Chief Financial Officer or, if
Licensee does not have a Chief Financial Officer, a person authorized to
sign Statements of Account for the Licensee, must submit a signed
certification on an annual basis attesting that Licensee's royalty
statements for the prior year represent a true and accurate
determination of the royalties due and that any method of allocation
employed by Licensee was applied in good faith and in accordance with
U.S. GAAP.
Sec.382.5 Distributing royalty fees.
(a) Distribution of royalties. (1) The Collective must promptly
distribute royalties received from Licensees to Copyright Owners and
Performers that are entitled thereto, or to their designated agents. The
Collective shall only be responsible for making distributions to those
who provide the Collective with information necessary to identify and
pay the correct recipient. The Collective must distribute royalties on a
basis that values all performances by a Licensee equally based upon the
information provided under the Reports of Use requirements for Licensees
pursuant to Sec.370.3 or Sec.370.4 of this chapter, as applicable,
and pursuant to this part.
(2) Identification of Copyright Owners. The Collective must use its
best efforts to identify and locate copyright owners and featured
artists to distribute royalties payable to them under section 112(e) or
114(d)(2) of title 17, United States Code, or both. Such efforts must
include, but are not limited to, searches in Copyright Office public
records and published directories of sound recording copyright owners
when consulting those records and directories is likely to be helpful.
[[Page 884]]
(b) Unclaimed funds. If the Collective is unable to identify or
locate a Copyright Owner or Performer who is entitled to receive a
royalty distribution under this part, the Collective must retain the
required payment in a segregated trust account for a period of three
years from the date of the first distribution of royalties from the
relevant payment by a Licensee. No claim to distribution shall be valid
after the expiration of the three-year period. After expiration of this
period, the Collective must handle unclaimed funds in accordance with
applicable federal, state, or common law.
(c) Retention of records. Licensees and the Collective shall keep
books and records relating to payments and distributions of royalties
for a period of not less than the prior three calendar years.
(d) Designation of the Collective. (1) The Judges designate
SoundExchange, Inc., as the Collective to receive Statements of Account
and royalty payments from Licensees and to distribute royalty payments
to each Copyright Owner and Performer (or their respective designated
agents) entitled to receive royalties under 17 U.S.C. 112(e) or 114(g).
(2) If SoundExchange, Inc. should dissolve or cease to be governed
by a board consisting of equal numbers of representatives of Copyright
Owners and Performers, it shall be replaced for the applicable royalty
period by a successor Collective according to the following procedure:
(i) The nine Copyright Owner representatives and the nine Performer
representatives on the SoundExchange board as of the last day preceding
SoundExchange's cessation or dissolution shall vote by a majority to
recommend that the Copyright Royalty Judges designate a successor and
must file a petition with the Copyright Royalty Judges requesting that
the Judges designate the named successor and setting forth the reasons
therefor.
(ii) Within 30 days of receiving the petition, the Copyright Royalty
Judges must issue an order designating the recommended Collective,
unless the Judges find good cause not to make and publish the
designation in the Federal Register.
Sec.382.6 Handling Confidential Information.
(a) Definition. For purposes of this part, ``Confidential
Information'' means the Statements of Account and any information
contained therein, including the amount of royalty payments and any
information pertaining to the Statements of Account reasonably
designated as confidential by the party submitting the statement.
Confidential Information does not include documents or information that
at the time of delivery to the Collective is public knowledge. The party
seeking information from the Collective based on a claim that the
information sought is a matter of public knowledge shall have the burden
of proving to the Collective that the requested information is in the
public domain.
(b) Use of Confidential Information. The Collective may not use any
Confidential Information for any purpose other than royalty collection
and distribution and activities related directly thereto.
(c) Disclosure of Confidential Information. The Collective shall
limit access to Confidential Information to:
(1) Employees, agents, consultants, and independent contractors of
the Collective, subject to an appropriate written confidentiality
agreement, who are engaged in the collection and distribution of royalty
payments hereunder and activities related directly thereto who require
access to the Confidential Information for the purpose of performing
their duties during the ordinary course of their work;
(2) A Qualified Auditor or outside counsel who is authorized to act
on behalf of:
(i) The Collective with respect to verification of a Licensee's
statement of account pursuant to this part; or
(ii) A Copyright Owner or Performer with respect to the verification
of royalty distributions pursuant to this part;
(3) Copyright Owners and Performers, including their designated
agents, whose works a Licensee used under the statutory licenses set
forth in 17 U.S.C. 112(e) and 114 by the Licensee whose Confidential
Information is being supplied, subject to an appropriate written
[[Page 885]]
confidentiality agreement, and including those employees, agents,
consultants, and independent contractors of such Copyright Owners and
Performers and their designated agents, subject to an appropriate
written confidentiality agreement, who require access to the
Confidential Information to perform their duties during the ordinary
course of their work;
(4) Attorneys and other authorized agents of parties to proceedings
under 17 U.S.C. 112 or 114, acting under an appropriate protective
order.
(d) Safeguarding Confidential Information. The Collective and any
person authorized to receive Confidential Information from the
Collective must implement procedures to safeguard against unauthorized
access to or dissemination of Confidential Information using a
reasonable standard of care, but no less than the same degree of
security that the recipient uses to protect its own Confidential
Information or similarly sensitive information.
Sec.382.7 Auditing payments and distributions.
(a) General. This section prescribes procedures by which any entity
entitled to receive payment or distribution of royalties may verify
those payments or distributions with an independent audit. The
Collective may audit a Licensee's payments of royalties to the
Collective and a Copyright Owner or Performer may audit the Collective's
distributions of royalties to the Copyright Owners or Performers.
Nothing in this section shall preclude a Verifying Entity and the Payor
under audit from agreeing to verification methods in addition to or
different from those set forth in this section.
(b) Frequency of auditing. A Verifying Entity may conduct an audit
of each Payor only once a year and the audit may cover any or all of the
prior three calendar years. A Verifying Entity may not audit records for
any calendar year more than once.
(c) Notice of intent to audit. The Verifying Entity must file with
the Copyright Royalty Judges a notice of intent to audit the Payor,
which notice the Judges must publish in the Federal Register within 30
days of the filing of the notice. Simultaneously with the filing of the
notice, the Verifying Entity must send a copy to the Payor.
(d) The audit. The audit must be conducted during regular business
hours by a Qualified Auditor who is not retained on a contingency fee
basis and is identified in the notice. The auditor shall determine the
accuracy of royalty payments or distributions, including whether the
Payor made an underpayment or overpayment of royalties. An audit of
books and records, including underlying paperwork, performed in the
ordinary course of business according to generally accepted auditing
standards by a Qualified Auditor, shall serve as an acceptable
verification procedure for all parties with respect to the information
that is within the scope of the audit.
(e) Access to third-party records for audit purposes. The Payor
under audit must use commercially reasonable efforts to obtain or to
provide access to any relevant books and records maintained by third
parties for the purpose of the audit.
(f) Duty of auditor to consult. The auditor must produce a written
report to the Verifying Entity. Before issuing the report, unless the
auditor has a reasonable basis to suspect fraud on the part of the
Payor, the disclosure of which would, in the reasonable opinion of the
auditor, prejudice any investigation of the suspected fraud. The auditor
must review tentative written findings of the audit with the appropriate
agent or employee of the Payor in order to remedy any factual errors and
clarify any issues relating to the audit; provided that an appropriate
agent or employee of the Payor reasonably cooperates with the auditor to
remedy promptly any factual error[s] or clarify any issue raised by the
audit. The auditor must include in the written report information
concerning the cooperation or the lack thereof of the employee or agent.
(g) Audit results; underpayment or overpayment of royalties. If the
auditor determines the Payor underpaid royalties, the Payor shall remit
the amount of any underpayment determined by the auditor to the
Verifying Entity, together with interest at the post-judgment rate
specified in 28 U.S.C. 1961,
[[Page 886]]
accrued from and after the date the payment was originally due. In the
absence of mutually-agreed payment terms, which may, but need not,
include installment payments, the Payor shall remit promptly to the
Verifying Entity the entire amount of the underpayment determined by the
auditor. If the auditor determines the Payor overpaid royalties,
however, the Verifying Entity shall not be required to remit the amount
of any overpayment to the Payor, and the Payor shall not seek by any
means to recoup, offset, or take a credit for the overpayment, unless
the Payor and the Verifying Entity have agreed otherwise.
(h) Paying the costs of the audit. The Verifying Entity must pay the
cost of the audit, unless the auditor determines that there was an
underpayment of 10% or more, in which case the Payor must bear the
reasonable costs of the audit, in addition to paying or distributing the
amount of any underpayment.
(i) Retention of audit report. The Verifying Entity must retain the
report of the audit for a period of not less than three years from the
date of issuance.
Subpart B_Preexisting Subscription Services (PSS)
Sec.382.10 Royalty fees for the digital performance of sound
recordings and the making of ephemeral recordings by preexisting
subscription services.
(a) Royalty fees. Commencing January 1, 2018, and continuing through
December 31, 2027, Licensees must pay royalty fees for all Eligible
Transmissions of sound recordings at the rate of 7.5 percent of Gross
Revenues.
(b) Ephemeral recordings royalty fee. (1) The fee for all Ephemeral
Recordings is part of the total fee payable under this section and
constitutes 5% of it. All Ephemeral Recordings that a Licensee makes
that are necessary and commercially reasonable for making noninteractive
Digital Audio Transmission as a PSS are included in the 5%.
(2) The minimum fee is $5,000 per year.
Sec.382.11 Calculation of gross revenues for PSS.
(a) Gross revenues are monies derived from the operation of the
programming service of the Licensee and are comprised of the following:
(1) Monies received by Licensee from Licensee's carriers and
directly from residential U.S. subscribers for Licensee's programming
service;
(2) Licensee's advertising revenues (as billed), or other monies
received from sponsors, if any, less advertising agency commissions not
to exceed 15% of those fees incurred to a recognized advertising agency
not owned or controlled by Licensee;
(3) Monies received for the provision of time on the programming
service to any third party;
(4) Monies received from the sale of time to providers of paid
programming such as infomercials;
(5) Where merchandise, service, or anything of value is received by
Licensee in lieu of cash consideration for the use of Licensee's
programming service, the fair market value thereof or Licensee's
prevailing published rate, whichever is less;
(6) Monies or other consideration received by Licensee from
Licensee's carriers, but not including monies received by Licensee's
carriers from others and not accounted for by Licensee's carriers to
Licensee, for the provision of hardware by anyone and used in connection
with the programming service;
(7) Monies or other consideration received for any references to or
inclusion of any product or service on the programming service; and
(8) Bad debts recovered regarding paragraphs (a)(1) through (7) of
this section.
(9) Revenues described in paragraphs (a)(1) through (8) of this
section to which Licensee is entitled but which are paid to a parent,
subsidiary, division, or affiliate of Licensee, in lieu of payment to
Licensee but not including payments to Licensee's carriers for the
programming service.
(b) Gross Revenues exclude affiliate revenue returned during the
reporting period and bad debts actually written off during reporting
period.
[[Page 887]]
Subpart C_Preexisting Satellite Digital Audio Radio Services (SDARS)
Sec.382.20 Definitions.
In this subpart:
Directly-Licensed Recording means a sound recording for which the
Licensee has previously obtained a license of all relevant rights from
the sound recording Copyright Owner.
Reference Channels means internet webcast channels offered by the
Licensee that directly correspond to channels offered on the Licensee's
SDARS that are capable of being received on all models of Sirius radio,
all models of XM radio or both, and on which the programming consists
primarily of music.
[83 FR 65265, Dec. 19, 2018, as amended at 84 FR 32313, July 8, 2019]
Sec.382.21 Royalty fees for the public performance of sound recordings
and the making of ephemeral recordings by SDARS.
(a) Royalty fees. Commencing January 1, 2018, and continuing through
December 31, 2027, Licensees must pay royalty fees for all Eligible
Transmissions of sound recordings at the rate of 15.5% of Gross
Revenues.
(b) Ephemeral recordings royalty fees. (1) The fee for all Ephemeral
Recordings is part of the total fee payable under this section and
constitutes 5% of it. All Ephemeral Recordings that a Licensee makes
that are necessary and commercially reasonable for making noninteractive
Digital Audio Transmissions as an SDARS are included in the 5%.
(2) The minimum fee is $5,000 per year.
Sec.382.22 Calculation of Gross Revenues for SDARS.
(a) Gross Revenues are:
(1) Revenue recognized by the Licensee in accordance with GAAP from
the operation of an SDARS and comprised of the following:
(i) Subscription revenue recognized by Licensee directly from U.S.
subscribers for licensee's SDARS; and
(ii) Licensee's advertising revenues, or other monies received from
sponsors, if any, attributable to advertising on channels other than
those that use only incidental performances of sound recordings, less
advertising agency and sales commissions.
(2) Revenues set forth above to which Licensee is entitled but which
are paid to a parent, wholly-owned subsidiary, or division of Licensee.
(b) Gross Revenues exclude:
(1) Monies or other consideration attributable to the sale and/or
license of equipment and/or other technology, including but not limited
to bandwidth, sales of devices that receive the Licensee's SDARS and any
shipping and handling fees therefor;
(2) Royalties paid to Licensee for intellectual property rights;
(3) Monies or other consideration received by Licensee from the sale
of phonorecords and digital phonorecord deliveries;
(4) Sales and use taxes;
(5) Credit card, invoice, activation, swap and early termination
fees charged to subscribers and reasonably related to the Licensee's
expenses to which they pertain;
(6) Bad debt expense; and
(7) Revenues recognized by Licensee (or otherwise received by
Licensee if no GAAP ``recognition'' principles are applicable) for the
provision of:
(i) Current and future data services offered for a separate charge
(e.g., weather, traffic, destination information, messaging, sports
scores, stock ticker information, extended program associated data,
video and photographic images, and such other telematics and/or data
services as may exist from time to time);
(ii) Channels, programming, products and/or other services offered
for a separate charge where such channels use only incidental
performances of sound recordings;
(iii) Channels, programming, products and/or other services provided
outside of the United States; and
(iv) Channels, programming, products and/or other services for which
the performance of sound recordings and/or the making of Ephemeral
Recordings is exempt from any license requirement or is separately
licensed, including by a
[[Page 888]]
statutory license and, for the avoidance of doubt, webcasting, audio
services bundled with television programming, interactive services, and
transmissions to business establishments.
Sec.382.23 Adjustments to royalty fee.
(a) Reduction for Direct License Share. The royalty fee specified in
Sec.382.21(a) may be reduced by the percentage of Eligible
Transmissions comprising the Direct License Share.
(1) The Direct License Share reduction is available to a Licensee
only if--
(i) The Reference Channels constitute a large majority of and are
generally representative of the music channels offered on the Licensee's
SDARS; and
(ii) The Licensee provides the Collective, by no later than the due
date for the relevant payment under Sec.382.3(d), a list of each
Copyright Owner from which the Licensee claims to have a direct license
of rights to Directly-Licensed Recordings that is in effect for the
month for which the payment is made and of each sound recording for
which the Licensee takes the reduction, identified by featured artist
name, sound recording title, and International Standard Recording Code
(ISRC) number or, alternatively to the ISRC, album title and copyright
owner name. Notwithstanding Sec.382.6, the Collective may disclose
such information as reasonably necessary for it to confirm whether a
claimed direct license exists and claimed sound recordings are properly
excludable.
(2) To arrive at the percentage allocable to the Direct License
Share for each month, the Licensee shall divide the internet
Performances of Directly-Licensed Recordings on the Reference Channels
by the total number of internet Performances of all sound recordings on
the Reference Channels. In no event shall the Direct License Share be an
amount greater than the result of dividing the number of plays of
Directly-Licensed Recordings on the SDARS by the total number of plays
of all sound recordings on the SDARS.
(b) Definition of Performance. For purposes of this section,
Performance means:
(1) Except as discussed in paragraph (c)(2) of this section, a
Performance is an instance in which any portion of a sound recording is
publicly performed to a listener within the United States by means of a
Digital Audio Transmission (e.g., the delivery of any portion of a
single track from a compact disc to one listener).
(2) An instance in which a portion of a sound recording is publicly
performed to a listener within the United States by means of a Digital
Audio Transmission is not a Performance if it both:
(i) Makes no more than incidental use of sound recordings including,
but not limited to, brief musical transitions in and out of commercials
or program segments, brief use during news, talk and sports programming,
brief background use during disk jockey announcements, brief use during
commercials of sixty seconds or less in duration, or brief use during
sporting or other public events; and
(ii) Does not contain an entire sound recording and does not feature
a particular sound recording of more than thirty seconds (as in the case
of a sound recording used as a theme song), except for ambient music
that is background at a public event.
[83 FR 65265, Dec. 19, 2018, as amended at 84 FR 32313, July 8, 2019]
PART 383_RATES AND TERMS FOR SUBSCRIPTION TRANSMISSIONS AND THE
REPRODUCTION OF EPHEMERAL RECORDINGS BY CERTAIN NEW SUBSCRIPTION
SERVICES--Table of Contents
Sec.
383.1 General.
383.2 Definitions.
383.3 Royalty fees for public performance of sound recordings and the
making of ephemeral recordings.
383.4 Terms for making payment of royalty fees.
Authority: 17 U.S.C. 112(e), 114, and 801(b)(1).
Source: 72 FR 72254, Dec. 20, 2007, unless otherwise noted.
Sec.383.1 General.
(a) Scope. This part 383 establishes rates and terms of royalty
payments for the public performance of sound recordings in certain
digital transmissions by Licensees in accordance
[[Page 889]]
with the provisions of 17 U.S.C. 114, and the making of certain
ephemeral recordings by Licensees in accordance with the provisions of
17 U.S.C. 112(e), during the period commencing January 1, 2021, and
continuing through December 31, 2025.
(b) Legal compliance. Licensees relying upon the statutory licenses
set forth in 17 U.S.C. 112(e) and 114 shall comply with the requirements
of those sections and the rates and terms of this part.
(c) Relationship to voluntary agreements. Notwithstanding the
royalty rates and terms established in this part, the rates and terms of
any voluntary license agreements entered into by Copyright Owners and
Licensees shall apply in lieu of the rates and terms of this part to
transmissions with the scope of such agreements.
[72 FR 72254, Dec. 20, 2007, as amended at 75 FR 14075, Mar. 24, 2010;
80 FR 36928, June 29, 2015; 85 FR 9664, Feb. 20, 2020]
Sec.383.2 Definitions.
For purposes of this part, the following definitions shall apply:
(a) Bundled Contracts means contracts between the Licensee and a
Provider in which the Service is not the only content licensed by the
Licensee to the Provider.
(b) Copyright Owner means a sound recording copyright owner, or a
rights owner under 17 U.S.C. 1401(l)(2), who is entitled to receive
royalty payments made under this part pursuant to the statutory licenses
under 17 U.S.C. 112(e) and 114.
(c) License Period means the period commencing January 1, 2021, and
continuing through December 31, 2025.
(d) Licensee is a person that has obtained statutory licenses under
17 U.S.C. 112(e) and 114, and the implementing regulations, to make
digital audio transmissions as part of a Service (as defined in
paragraph (f) of this section), and ephemeral recordings for use in
facilitating such transmissions.
(e) Provider means a ``multichannel video programming distributor''
as that term is defined in 47 CFR 76.1000(e); notwithstanding such
definition, for purposes of this part, a Provider shall include only a
distributor of programming to televisions, such as a cable or satellite
television provider.
(f) A Service is a non-interactive (consistent with the definition
of ``interactive service'' in 17 U.S.C. 114(j)(7)) audio-only
subscription service (including accompanying information and graphics
related to the audio) that is transmitted to residential subscribers of
a television service through a Provider which is marketed as and is in
fact primarily a video service where
(1) Subscribers do not pay a separate fee for audio channels.
(2) The audio channels are delivered by digital audio transmissions
through a technology that is incapable of tracking the individual sound
recordings received by any particular consumer.
(3) However, paragraph (f)(2) of this section shall not apply to the
Licensee's current contracts with Providers that are in effect as of the
effective date of this part if such Providers become capable in the
future of tracking the individual sound recordings received by any
particular consumer, provided that the audio channels continued to be
delivered to Subscribers by digital audio transmissions and the Licensee
remains incapable of tracking the individual sound recordings received
by any particular consumer.
(g) Subscriber means every residential subscriber to the underlying
service of the Provider who receives Licensee's Service in the United
States for all or any part of a month; provided, however, that for any
Licensee that is not able to track the number of subscribers on a per-
day basis, ``Subscribers'' shall be calculated based on the average of
the number of subscribers on the last day of the preceding month and the
last day of the applicable month, unless the Service is paid by the
Provider based on end-of-month numbers, in which event ``Subscribers''
shall be counted based on end-of-month data.
(h) Stand-Alone Contracts means contracts between the Licensee and a
Provider in which the only content licensed to the Provider is the
Service.
[72 FR 72254, Dec. 20, 2007, as amended at 75 FR 14075, Mar. 24, 2010;
80 FR 36928, June 29, 2015; 84 FR 32313, July 8, 2019; 85 FR 9664, Feb.
20, 2020]
[[Page 890]]
Sec.383.3 Royalty fees for public performances of sound recordings
and the making of ephemeral recordings.
(a) Royalty rates. Royalty rates for the public performance of sound
recordings by eligible digital transmissions made over a Service
pursuant to 17 U.S.C. 114, and for ephemeral recordings of sound
recordings made pursuant to 17 U.S.C. 112(e) to facilitate such
transmissions during the License Period, are as follows. Each Licensee
will pay, with respect to content covered by the License that is
provided via the Service of each such Licensee:
(1) For Stand-Alone Contracts, the following monthly payment per
Subscriber to the Service of such Licensee:
(i) 2021: $0.0208
(ii) 2022: $0.0214
(iii) 2023: $0.0221
(iv) 2024: $0.0227
(v) 2025: $0.0234
(2) For Bundled Contracts, the following monthly payment per
Subscriber to the Service of such Licensee:
(i) 2021: $0.0346
(ii) 2022: $0.0356
(iii) 2023: $0.0367
(iv) 2024: $0.0378
(v) 2025: $0.0390
(b) Minimum fee. Each Licensee will pay an annual, non-refundable
minimum fee of one hundred thousand dollars ($100,000), payable on
January 31 of each calendar year in which the Service is provided
pursuant to the section 112(e) and 114 statutory licenses. Such fee
shall be recoupable and credited against royalties due in the calendar
year in which it is paid.
(c) Allocation between ephemeral recordings fees and performance
royalty fees. The Collective must credit 5% of all royalty payments as
royalty payment for Ephemeral Recordings and credit the remaining 95% to
section 114 royalties. All Ephemeral Recordings that a Licensee makes
which are necessary and commercially reasonable for making
noninteractive digital transmissions through a Service are included in
the 5%.
[72 FR 72254, Dec. 20, 2007, as amended at 75 FR 14075, Mar. 24, 2010;
80 FR 36928, June 29, 2015; 85 FR 9664, Feb. 20, 2020]
Sec.383.4 Terms for making payment of royalty fees.
(a) Terms in general. Subject to the provisions of this section,
terms governing timing and due dates of royalty payments to the
Collective, late fees, statements of account, audit and verification of
royalty payments and distributions, cost of audit and verification,
record retention requirements, treatment of Licensees' confidential
information, distribution of royalties by the Collective, unclaimed
funds, designation of the Collective, and any definitions for applicable
terms not defined herein and not otherwise inapplicable shall be those
adopted by the Copyright Royalty Judges for Digital audio transmission
and the reproduction of ephemeral recordings by Commercial Webcasters in
37 CFR part 380, subpart A of this chapter, for the license period 2021-
2025. For purposes of this part, the term ``Collective'' refers to the
collection and distribution organization that is designated by the
Copyright Royalty Judges. For the License Period through 2020, the sole
Collective is SoundExchange, Inc.
(b) Reporting of performances. Without prejudice to any applicable
notice and recordkeeping provisions, statements of account shall not
require reports of performances.
(c) Applicable regulations. To the extent not inconsistent with this
part, all applicable regulations, including part 370 of this chapter,
shall apply to activities subject to this part.
[75 FR 14075, Mar. 24, 2010, as amended at 80 FR 36928, June 29, 2015;
85 FR 9664, Feb. 20, 2020]
PART 384_RATES AND TERMS FOR THE MAKING OF EPHEMERAL RECORDINGS BY
BUSINESS ESTABLISHMENT SERVICES--Table of Contents
Sec.
384.1 General.
384.2 Definitions.
384.3 Royalty fees for Ephemeral Recordings.
384.4 Terms for making payment of royalty fees and statements of
account.
384.5 Confidential information.
384.6 Verification of royalty payments.
384.7 Verification of royalty distributions.
384.8 Unclaimed funds.
[[Page 891]]
Authority: 17 U.S.C. 112(e), 801(b)(1).
Source: 73 FR 16199, Mar. 27, 2008, unless otherwise noted.
Sec.384.1 General.
(a) Scope. This part 384 establishes rates and terms of royalty
payments for the making of Ephemeral Recordings by a Business
Establishment Service, as defined in Sec.384.2, in accordance with the
provisions of 17 U.S.C. 112(e), during the period January 1, 2019,
through December 31, 2023 (the ``License Period'').
(b) Legal compliance. Licensees relying upon the statutory license
set forth in 17 U.S.C. 112(e) shall comply with the requirements of that
section, the rates and terms of this part and any other applicable
regulations.
(c) Relationship to voluntary agreements. Notwithstanding the
royalty rates and terms established in this part, the rates and terms of
any license agreements entered into by Copyright Owners and Licensees
shall apply in lieu of the rates and terms of this part to the making of
Ephemeral Recordings within the scope of such agreements.
[73 FR 16199, Mar. 27, 2008, as amended at 78 FR 66277, Nov. 5, 2013; 83
FR 60363, Nov. 26, 2018]
Sec.384.2 Definitions.
For purposes of this part, the following definitions shall apply:
Business Establishment Service means a service making transmissions
of sound recordings under the limitation on exclusive rights specified
by 17 U.S.C. 114(d)(1)(C)(iv).
Collective is the collection and distribution organization that is
designated by the Copyright Royalty Judges. For the License Period, the
Collective is SoundExchange, Inc.
Copyright Owners are sound recording copyright owners, and rights
owners under 17 U.S.C. 1401(l)(2), who are entitled to royalty payments
made under this part pursuant to the statutory license under 17 U.S.C.
112(e).
Ephemeral Recording is a phonorecord created for the purpose of
facilitating a transmission of a public performance of a sound recording
under the limitations on exclusive rights specified by 17 U.S.C.
114(d)(1)(C)(iv), and subject to the limitations specified in 17 U.S.C.
112(e).
Licensee is a Business Establishment Service that has obtained a
compulsory license under 17 U.S.C. 112(e) and the implementing
regulations therefor to make Ephemeral Recordings.
Performers means the independent administrators identified in 17
U.S.C. 114(g)(2)(B) and (C) and the parties identified in 17 U.S.C.
114(g)(2)(D).
Qualified Auditor is a certified public accountant.
[73 FR 16199, Mar. 27, 2008, as amended at 78 FR 66277, Nov. 5, 2013; 84
FR 32313, July 8, 2019]
Sec.384.3 Royalty fees for ephemeral recordings.
(a) Basic royalty rate. (1) For the making of any number of
Ephemeral Recordings in the operation of a Business Establishment
Service, a Licensee shall pay a royalty equal to the following
percentages of such Licensee's ``Gross Proceeds'' derived from the use
in such service of musical programs that are attributable to recordings
subject to protection under title 17, United States Code:
------------------------------------------------------------------------
Year Rate %
------------------------------------------------------------------------
2019......................................................... 12.5
2020......................................................... 12.75
2021......................................................... 13.0
2022......................................................... 13.25
2023......................................................... 13.5
------------------------------------------------------------------------
(2) ``Gross Proceeds'' as used in this section means all fees and
payments, including those made in kind, received from any source before,
during or after the License Period that are derived from the use of
sound recordings subject to protection under title 17, United States
Code, during the License Period pursuant to 17 U.S.C. 112(e) for the
sole purpose of facilitating a transmission to the public of a
performance of a sound recording under the limitation on exclusive
rights specified in 17 U.S.C. 114(d)(1)(C)(iv). The attribution of Gross
Proceeds to recordings subject to protection under title 17, United
States Code, may be made on the basis of:
(i) For classical programs, the proportion that the playing time of
classical recordings subject to protection
[[Page 892]]
under title 17, United States Code, bears to the total playing time of
all classical recordings subject to protection under title 17, United
States Code in the program; and
(ii) For all other programs, the proportion that the number of
recordings subject to protection under title 17, United States Code,
bears to the total number of all recordings subject to protection under
title 17, United States Code in the program.
(b) Minimum fee. Each Licensee shall pay a minimum fee of $20,000
for each calendar year of the License Period in which it makes Ephemeral
Recordings for use to facilitate transmissions under the limitation on
exclusive rights specified by 17 U.S.C. 114(d)(1)(C)(iv), whether or not
it does so for all or any part of the year. These minimum fees shall be
nonrefundable, but shall be fully creditable to royalty payments due
under paragraph (a) of this section for the same calendar year (but not
any subsequent calendar year).
(c) Other royalty rates and terms. This part 384 does not apply to
persons or entities other than Licensees, or to Licensees to the extent
that they make other types of ephemeral recordings beyond those set
forth in paragraph (a) of this section. For ephemeral recordings other
than those governed by paragraph (a) of this section, persons making
such ephemeral recordings must pay royalties, to the extent (if at all)
applicable, under 17 U.S.C. 112(e) or as prescribed by other law,
regulation or agreement.
[73 FR 16199, Mar. 27, 2008, as amended at 78 FR 66277, Nov. 5, 2013; ;
83 FR 60363, Nov. 26, 2018; 84 FR 32313, July 8, 2019]
Sec.384.4 Terms for making payment of royalty fees and statements
of account.
(a) Payment to the Collective. A Licensee shall make the royalty
payments due under Sec.384.3 to the Collective.
(b) Designation of the Collective. (1) Until such time as a new
designation is made, SoundExchange, Inc., is designated as the
Collective to receive statements of account and royalty payments from
Licensees due under Sec.384.3 and to distribute such royalty payments
to each Copyright Owner, or their designated agents, entitled to receive
royalties under 17 U.S.C. 112(e).
(2) If SoundExchange, Inc. should dissolve or cease to be governed
by a board consisting of equal numbers of representatives of Copyright
Owners and Performers, then it shall be replaced by a successor
Collective upon the fulfillment of the requirements set forth in
paragraph (b)(2)(i) of this section.
(i) By a majority vote of the nine Copyright Owner representatives
and the nine Performer representatives on the SoundExchange board as of
the last day preceding the condition precedent in this paragraph (b)(2),
such representatives shall file a petition with the Copyright Royalty
Judges designating a successor to collect and distribute royalty
payments to Copyright Owners entitled to receive royalties under 17
U.S.C. 112(e) that have themselves authorized the Collective.
(ii) The Copyright Royalty Judges shall publish in the Federal
Register within 30 days of receipt of a petition filed under paragraph
(b)(2)(i) of this section an order designating the Collective named in
such petition.
(c) Monthly payments. A Licensee shall make any payments due under
Sec.384.3(a) on a monthly basis on or before the 45th day after the
end of each month for that month. All monthly payments shall be rounded
to the nearest cent.
(d) Minimum payments. A Licensee shall make any minimum payment due
under Sec.384.3(b) by January 31 of the applicable calendar year,
except that payment by a Licensee that has not previously made Ephemeral
Recordings pursuant to the license under 17 U.S.C. 112(e) shall be due
by the 45th day after the end of the month in which the Licensee
commences to do so.
(e) Late payments. A Licensee shall pay a late fee of 1.0% per
month, or the highest lawful rate, whichever is lower, if either or both
a required payment or statement of account for a required payment is
received by the Collective after the due date. Late fees shall accrue
from the due date until both the payment and statement of account are
received by the Collective.
[[Page 893]]
(f) Statements of account. For any part of the License Period during
which a Licensee operates a Business Establishment Service, at the time
when a minimum payment is due under paragraph (d) of this section, and
by 45 days after the end of each month during the period, the Licensee
shall deliver to the Collective a statement of account containing the
information set forth set forth in this paragraph (f) on a form
prepared, and made available to Licensees, by the Collective. In the
case of a minimum payment, or if a payment is owed for such month, the
statement of account shall accompany the payment. A statement of account
shall contain only the following information:
(1) Such information as is necessary to calculate the accompanying
royalty payment, or if no payment is owed for the month, to calculate
any portion of the minimum fee recouped during the month;
(2) The name, address, business title, telephone number, facsimile
number (if any), electronic mail address and other contact information
of the person to be contacted for information or questions concerning
the content of the statement of account;
(3) The signature of:
(i) The owner of the Licensee or a duly authorized agent of the
owner, if the Licensee is not a partnership or corporation;
(ii) A partner or delegee, if the Licensee is a partnership; or
(iii) An officer of the corporation, if the Licensee is a
corporation;
(4) The printed or typewritten name of the person signing the
statement of account;
(5) The date of signature;
(6) If the Licensee is a partnership or corporation, the title or
official position held in the partnership or corporation by the person
signing the statement of account;
(7) A certification of the capacity of the person signing; and
(8) A statement to the following effect:
I, the undersigned owner or agent of the Licensee, or officer or
partner, have examined this statement of account and hereby state that
it is true, accurate and complete to my knowledge after reasonable due
diligence.
(g) Distribution of royalties. (1) The Collective shall promptly
distribute royalties received from Licensees directly to Copyright
Owners, or their designated agents, that are entitled to such royalties.
The Collective shall only be responsible for making distributions to
those Copyright Owners or their designated agents who provide the
Collective with such information as is necessary to identify the correct
recipient. The Collective shall distribute royalties on a basis that
values all Ephemeral Recordings by a Licensee equally based upon the
information provided under the reports of use requirements for Licensees
contained in Sec.370.4 of this chapter.
(2) If the Collective is unable to locate a Copyright Owner entitled
to a distribution of royalties under paragraph (g)(1) of this section
within 3 years from the date of payment by a Licensee, such royalties
shall be handled in accordance with Sec.384.8.
(h) Retention of records. Books and records of a Licensee and of the
Collective relating to payments of and distributions of royalties shall
be kept for a period of not less than the prior 3 calendar years.
[73 FR 16199, Mar. 27, 2008, as amended at 78 FR 66277, Nov. 5, 2013]
Sec.384.5 Confidential information.
(a) Definition. For purposes of this section, ``Confidential
Information'' shall include the statements of account and any
information contained therein, including the amount of royalty payments,
and any information pertaining to the statements of account reasonably
designated as confidential by the Licensee submitting the statement.
(b) Exclusion. Confidential Information shall not include documents
or information that at the time of delivery to the Collective are public
knowledge. The party claiming the benefit of this provision shall have
the burden of proving that the disclosed information was public
knowledge.
(c) Use of Confidential Information. In no event shall the
Collective or any other person or entity authorized to have access to
Confidential Information pursuant to paragraph (d) of this
[[Page 894]]
section use any Confidential Information for any purpose other than
royalty collection and distribution and activities related directly
thereto.
(d) Disclosure of Confidential Information. Access to Confidential
Information shall be limited to:
(1) Those employees, agents, attorneys, consultants and independent
contractors of the Collective, subject to an appropriate confidentiality
agreement, who are engaged in the collection and distribution of royalty
payments hereunder and activities related thereto, who are not also
employees or officers of a Copyright Owner or Performer, and who, for
the purpose of performing such duties during the ordinary course of
their work require access to Confidential Information;
(2) Board members of the Collective, and members of the Collective
committees whose primary functions are directly related to royalty
collection and distribution, subject to an appropriate confidentiality
agreement and for the sole purpose of performing their duties as board
or committee members of the Collective, as applicable, provided that the
sole Confidential Information that may be shared pursuant to this
paragraph (d)(2) is Confidential Information contained in monthly
statements of accounts provided pursuant to Sec.384.4(f) that
accompany royalty payments;
(3) An independent and Qualified Auditor, subject to an appropriate
confidentiality agreement, who is authorized to act on behalf of the
Collective with respect to verification of a Licensee's statement of
account pursuant to Sec.384.6 or on behalf of a Copyright Owner with
respect to the verification of royalty distributions pursuant to Sec.
384.7;
(4) Copyright Owners, including their designated agents, whose works
have been used under the statutory license set forth in 17 U.S.C. 112(e)
by the Licensee whose Confidential Information is being supplied,
subject to an appropriate confidentiality agreement, provided that the
sole Confidential Information that may be shared pursuant to paragraph
(d)(4) of this section are monthly statements of account provided
pursuant to Sec.384.4(f) that accompany royalty payments;
(5) In connection with future proceedings under 17 U.S.C. 112(e)
before the Copyright Royalty Judges, and under an appropriate protective
order, attorneys, consultants and other authorized agents of the parties
to the proceedings or the courts; and
(6) In connection with bona fide royalty disputes or claims that are
the subject of the procedures under Sec.384.6 or Sec.384.7, and
under an appropriate confidentiality agreement or protective order, the
specific parties to such disputes or claims, their attorneys,
consultants or other authorized agents, and/or arbitration panels or the
courts to which disputes or claims may be submitted.
(e) Safeguarding of Confidential Information. The Collective and any
person or entity identified in paragraph (d) of this section shall
implement procedures to safeguard against unauthorized access to or
dissemination of any Confidential Information using a reasonable
standard of care, but no less than the same degree of security used to
protect Confidential Information or similarly sensitive information
belonging to the Collective, person, or entity.
[73 FR 16199, Mar. 27, 2008, as amended at 78 FR 66278, Nov. 5, 2013; 83
FR 60363, Nov. 26, 2018]
Sec.384.6 Verification of royalty payments.
(a) General. This section prescribes procedures by which the
Collective may verify the royalty payments made by a Licensee.
(b) Frequency of verification. The Collective may conduct a single
audit of a Licensee, upon reasonable notice and during reasonable
business hours, during any given calendar year, for any or all of the
prior 3 calendar years, but no calendar year shall be subject to audit
more than once.
(c) Notice of intent to audit. The Collective must file with the
Copyright Royalty Judges a notice of intent to audit a particular
Licensee, which shall, within 30 days of the filing of the notice,
publish in the Federal Register a notice announcing such filing. The
notification of intent to audit shall be served at the same time on the
Licensee to be audited. Any such audit shall be conducted by an
independent
[[Page 895]]
and Qualified Auditor identified in the notice, and shall be binding on
all parties.
(d) Acquisition and retention of report. The Licensee shall use
commercially reasonable efforts to obtain or to provide access to any
relevant books and records maintained by third parties for the purpose
of the audit. The Collective shall retain the report of the verification
for a period of not less than 3 years.
(e) Acceptable verification procedure. An audit, including
underlying paperwork, which was performed in the ordinary course of
business according to generally accepted auditing standards by an
independent and Qualified Auditor, shall serve as an acceptable
verification procedure for all parties with respect to the information
that is within the scope of the audit.
(f) Consultation. Before rendering a written report to the
Collective, except where the auditor has a reasonable basis to suspect
fraud and disclosure would, in the reasonable opinion of the auditor,
prejudice the investigation of such suspected fraud, the auditor shall
review the tentative written findings of the audit with the appropriate
agent or employee of the Licensee being audited in order to remedy any
factual errors and clarify any issues relating to the audit; Provided
that the appropriate agent or employee of the Licensee reasonably
cooperates with the auditor to remedy promptly any factual errors or
clarify any issues raised by the audit.
(g) Costs of the verification procedure. The Collective shall pay
the cost of the verification procedure, unless it is finally determined
that there was an underpayment of 10% or more, in which case the
Licensee shall, in addition to paying the amount of any underpayment,
bear the reasonable costs of the verification procedure.
[73 FR 16199, Mar. 27, 2008, as amended at 78 FR 66278, Nov. 5, 2013]
Sec.384.7 Verification of royalty distributions.
(a) General. This section prescribes procedures by which any
Copyright Owner may verify the royalty distributions made by the
Collective; provided, however, that nothing contained in this section
shall apply to situations where a Copyright Owner and the Collective
have agreed as to proper verification methods.
(b) Frequency of verification. A Copyright Owner may conduct a
single audit of the Collective upon reasonable notice and during
reasonable business hours, during any given calendar year, for any or
all of the prior 3 calendar years, but no calendar year shall be subject
to audit more than once.
(c) Notice of intent to audit. A Copyright Owner must file with the
Copyright Royalty Judges a notice of intent to audit the Collective,
which shall, within 30 days of the filing of the notice, publish in the
Federal Register a notice announcing such filing. The notification of
intent to audit shall be served at the same time on the Collective. Any
such audit shall be conducted by an independent and Qualified Auditor
identified in the notice, and shall be binding on all Copyright Owners.
(d) Acquisition and retention of record. The Collective shall use
commercially reasonable efforts to obtain or to provide access to any
relevant books and records maintained by third parties for the purpose
of the audit. The Copyright Owner requesting the verification procedure
shall retain the report of the verification for a period of not less
than 3 years.
(e) Acceptable verification procedure. An audit, including
underlying paperwork, which was performed in the ordinary course of
business according to generally accepted auditing standards by an
independent and Qualified Auditor, shall serve as an acceptable
verification procedure for all parties with respect to the information
that is within the scope of the audit.
(f) Consultation. Before rendering a written report to a Copyright
Owner, except where the auditor has a reasonable basis to suspect fraud
and disclosure would, in the reasonable opinion of the auditor,
prejudice the investigation of such suspected fraud, the auditor shall
review the tentative written findings of the audit with the appropriate
agent or employee of the Collective in order to remedy any factual
errors and clarify any issues relating to the audit; Provided that the
appropriate agent or employee of the Collective reasonably cooperates
with the
[[Page 896]]
auditor to remedy promptly any factual errors or clarify any issues
raised by the audit.
(g) Costs of the verification procedure. The Copyright Owner
requesting the verification procedure shall pay the cost of the
procedure, unless it is finally determined that there was an
underpayment of 10% or more, in which case the Collective shall, in
addition to paying the amount of any underpayment, bear the reasonable
costs of the verification procedure.
[73 FR 16199, Mar. 27, 2008, as amended at 78 FR 66278, Nov. 5, 2013]
Sec.384.8 Unclaimed funds.
If the Collective is unable to identify or locate a Copyright Owner
who is entitled to receive a royalty distribution under this part, the
Collective shall retain the required payment in a segregated trust
account for a period of 3 years from the date of distribution. No claim
to such distribution shall be valid after the expiration of the 3-year
period. After expiration of this period, the Collective may apply the
unclaimed funds to offset any costs deductible under 17 U.S.C.
114(g)(3). The foregoing shall apply notwithstanding the common law or
statutes of any State.
[78 FR 66278, Nov. 5, 2013]
PART 385_RATES AND TERMS FOR USE OF NONDRAMATIC MUSICAL WORKS IN THE
MAKING AND DISTRIBUTING OF PHYSICAL AND DIGITAL PHONORECORDS--
Table of Contents
Subpart A_Regulations of General Application
Sec.
385.1 General.
385.2 Definitions.
385.3 Late payments.
385.4 Recordkeeping for promotional or free trial non-royalty-bearing
uses.
Subpart B_Physical Phonorecord Deliveries, Permanent Downloads,
Ringtones, and Music Bundles
385.10 Scope.
385.11 Royalty rates.
Subpart C_Eligible Interactive Streaming, Eligible Limited Downloads,
Limited Offerings, Mixed Service Bundles, Bundled Subscription
Offerings, Locker Services, and Other Delivery Configurations
385.20 Scope.
385.21 Royalty rates and calculations.
385.22 Royalty floors for specific types of offerings.
Subpart D_Promotional and Free-to-the-User Offerings
385.30 Scope.
385.31 Royalty rates.
Authority: 17 U.S.C. 115, 801(b)(1), 804(b)(4).
Source: 84 FR 2031, Feb. 5, 2019, unless otherwise noted.
Subpart A_Regulations of General Application
Sec.385.1 General.
(a) Scope. This part establishes rates and terms of royalty payments
for the use of nondramatic musical works in making and distributing of
physical and digital phonorecords in accordance with the provisions of
17 U.S.C. 115. This subpart contains regulations of general application
to the making and distributing of phonorecords subject to the section
115 license.
(b) Legal compliance. Licensees relying on the compulsory license
detailed in 17 U.S.C. 115 shall comply with the requirements of that
section, the rates and terms of this part, and any other applicable
regulations. This part describes rates and terms for the compulsory
license only.
(c) Interpretation. This part is intended only to set rates and
terms for situations in which the exclusive rights of a Copyright Owner
are implicated and a compulsory license pursuant to 17 U.S.C. 115 is
obtained. Neither the part nor the act of obtaining a license under 17
U.S.C. 115 is intended to express or imply any conclusion as to the
circumstances in which a user must obtain a compulsory license pursuant
to 17 U.S.C. 115.
(d) Relationship to voluntary agreements. The rates and terms of any
license agreements entered into by
[[Page 897]]
Copyright Owners and Licensees relating to use of musical works within
the scope of those license agreements shall apply in lieu of the rates
and terms of this part.
Sec.385.2 Definitions.
For the purposes of this part, the following definitions apply:
Accounting Period means the monthly period specified in 17 U.S.C.
115(c)(2)(I) and in 17 U.S.C. 115(d)(4)(A)(i), and any related
regulations, as applicable.
Affiliate means an entity controlling, controlled by, or under
common control with another entity, except that an affiliate of a Sound
Recording Company shall not include a Copyright Owner to the extent it
is engaging in business as to musical works.
Bundled Subscription Offering means a Subscription Offering
providing Licensed Activity consisting of Streams or Eligible Limited
Downloads that is made available to End Users with one or more other
products or services (including products or services subject to other
subparts) as part of a single transaction without pricing for the
subscription service providing Licensed Activity separate from the
product(s) or service(s) with which it is made available (e.g., a case
in which a user can buy a portable device and one-year access to a
subscription service providing Licensed Activity for a single price).
Copyright Owner(s) are nondramatic musical works copyright owners
who are entitled to royalty payments made under this part pursuant to
the compulsory license under 17 U.S.C. 115.
Digital Phonorecord Delivery has the same meaning as in 17 U.S.C.
115(e).
Eligible Interactive Stream means a Stream in which the performance
of the sound recording is not exempt from the sound recording
performance royalty under 17 U.S.C. 114(d)(1) and does not in itself, or
as a result of a program in which it is included, qualify for statutory
licensing under 17 U.S.C. 114(d)(2).
Eligible Limited Download means a transmission of a sound recording
embodying a musical work to an End User of a digital phonorecord under
17 U.S.C. 115(c)(3)(C) and (D) that results in a Digital Phonorecord
Delivery of that sound recording that is only accessible for listening
for--
(1) An amount of time not to exceed one month from the time of the
transmission (unless the Licensee, in lieu of retransmitting the same
sound recording as another Eligible Limited Download, separately, and
upon specific request of the End User made through a live network
connection, reauthorizes use for another time period not to exceed one
month), or in the case of a subscription plan, a period of time
following the end of the applicable subscription no longer than a
subscription renewal period or three months, whichever is shorter; or
(2) A number of times not to exceed 12 (unless the Licensee, in lieu
of retransmitting the same sound recording as another Eligible Limited
Download, separately, and upon specific request of the End User made
through a live network connection, reauthorizes use of another series of
12 or fewer plays), or in the case of a subscription transmission, 12
times after the end of the applicable subscription.
End User means each unique person that:
(1) Pays a subscription fee for an Offering during the relevant
Accounting Period; or
(2) Makes at least one Play during the relevant Accounting Period.
Family Plan means a discounted subscription to be shared by two or
more family members for a single subscription price.
Free Trial Offering means a subscription to a Service Provider's
transmissions of sound recordings embodying musical works when:
(1) Neither the Service Provider, the Sound Recording Company, the
Copyright Owner, nor any person or entity acting on behalf of or in lieu
of any of them receives any monetary consideration for the Offering;
(2) The free usage does not exceed 30 consecutive days per
subscriber per two-year period;
(3) In connection with the Offering, the Service Provider is
operating with appropriate musical license authority and complies with
the recordkeeping requirements in Sec.385.4;
[[Page 898]]
(4) Upon receipt by the Service Provider of written notice from the
Copyright Owner or its agent stating in good faith that the Service
Provider is in a material manner operating without appropriate license
authority from the Copyright Owner under 17 U.S.C. 115, the Service
Provider shall within 5 business days cease transmission of the sound
recording embodying that musical work and withdraw it from the
repertoire available as part of a Free Trial Offering;
(5) The Free Trial Offering is made available to the End User free
of any charge; and
(6) The Service Provider offers the End User periodically during the
free usage an opportunity to subscribe to a non-free Offering of the
Service Provider.
GAAP means U.S. Generally Accepted Accounting Principles in effect
at the relevant time, except that if the U.S. Securities and Exchange
Commission permits or requires entities with securities that are
publicly traded in the U.S. to employ International Financial Reporting
Standards in lieu of Generally Accepted Accounting Principles, then that
entity may employ International Financial Reporting Standards as
``GAAP'' for purposes of this subpart.
Licensee means any entity availing itself of the compulsory license
under 17 U.S.C. 115 to use copyrighted musical works in the making or
distributing of physical or digital phonorecords.
Licensed Activity, as the term is used in subpart B of this part,
means delivery of musical works, under voluntary or statutory license,
via physical phonorecords and Digital Phonorecord Deliveries in
connection with Permanent Downloads, Ringtones, and Music Bundles; and,
as the term is used in subparts C and D of this part, means delivery of
musical works, under voluntary or statutory license, via Digital
Phonorecord Deliveries in connection with Interactive Eligible Streams,
Eligible Limited Downloads, Limited Offerings, mixed Bundles, and Locker
Services.
Limited Offering means a subscription plan providing Eligible
Interactive Streams or Eligible Limited Downloads for which--
(1) An End User cannot choose to listen to a particular sound
recording (i.e., the Service Provider does not provide Eligible
Interactive Streams of individual recordings that are on-demand, and
Eligible Limited Downloads are rendered only as part of programs rather
than as individual recordings that are on-demand); or
(2) The particular sound recordings available to the End User over a
period of time are substantially limited relative to Service Providers
in the marketplace providing access to a comprehensive catalog of
recordings (e.g., a product limited to a particular genre or permitting
Eligible Interactive Streaming only from a monthly playlist consisting
of a limited set of recordings).
Locker Service means an Offering providing digital access to sound
recordings of musical works in the form of Eligible Interactive Streams,
Permanent Downloads, Restricted Downloads or Ringtones where the Service
Provider has reasonably determined that the End User has purchased or is
otherwise in possession of the subject phonorecords of the applicable
sound recording prior to the End User's first request to use the sound
recording via the Locker Service. The term Locker Service does not mean
any part of a Service Provider's products otherwise meeting this
definition, but as to which the Service Provider has not obtained a
section 115 license.
Mixed Service Bundle means one or more of Permanent Downloads,
Ringtones, Locker Services, or Limited Offerings a Service Provider
delivers to End Users together with one or more non-music services
(e.g., internet access service, mobile phone service) or non-music
products (e.g., a telephone device) of more than token value and
provided to users as part of one transaction without pricing for the
music services or music products separate from the whole Offering.
Music Bundle means two or more of physical phonorecords, Permanent
Downloads or Ringtones delivered as part of one transaction (e.g.,
download plus ringtone, CD plus downloads). In the case of Music Bundles
containing
[[Page 899]]
one or more physical phonorecords, the Service Provider must sell the
physical phonorecord component of the Music Bundle under a single
catalog number, and the musical works embodied in the Digital
Phonorecord Delivery configurations in the Music Bundle must be the same
as, or a subset of, the musical works embodied in the physical
phonorecords; provided that when the Music Bundle contains a set of
Digital Phonorecord Deliveries sold by the same Sound Recording Company
under substantially the same title as the physical phonorecord (e.g., a
corresponding digital album), the Service Provider may include in the
same bundle up to 5 sound recordings of musical works that are included
in the stand-alone version of the set of digital phonorecord deliveries
but not included on the physical phonorecord. In addition, the Service
Provider must permanently part with possession of the physical
phonorecord or phonorecords it sells as part of the Music Bundle. In the
case of Music Bundles composed solely of digital phonorecord deliveries,
the number of digital phonorecord deliveries in either configuration
cannot exceed 20, and the musical works embodied in each configuration
in the Music Bundle must be the same as, or a subset of, the musical
works embodied in the configuration containing the most musical works.
Offering means a Service Provider's engagement in Licensed Activity
covered by subparts C and D of this part.
Paid Locker Service means a Locker Service for which the End User
pays a fee to the Service Provider.
Performance Royalty means the license fee payable for the right to
perform publicly musical works in any of the forms covered by subparts C
and D this part.
Permanent Download has the same meaning as in 17 U.S.C. 115(e).
Play means an Eligible Interactive Stream, or play of an Eligible
Limited Download, lasting 30 seconds or more and, if a track lasts in
its entirety under 30 seconds, an Eligible Interactive Stream or play of
an Eligible Limited Download of the entire duration of the track. A Play
excludes an Eligible Interactive Stream or play of a an Eligible Limited
Download that has not been initiated or requested by a human user. If a
single End User plays the same track more than 50 straight times, all
plays after play 50 shall be deemed not to have been initiated or
requested by a human user.
Promotional Offering means a digital transmission of a sound
recording, in the form of an Eligible Interactive Stream or an Eligible
Limited Download, embodying a musical work, the primary purpose of which
is to promote the sale or other paid use of that sound recording or to
promote the artist performing on that sound recording and not to promote
or suggest promotion or endorsement of any other good or service and:
(1) A Sound Recording Company is lawfully distributing the sound
recording through established retail channels or, if the sound recording
is not yet released, the Sound Recording Company has a good faith
intention to lawfully distribute the sound recording or a different
version of the sound recording embodying the same musical work;
(2) For Eligible Interactive Streaming or Eligible Limited
Downloads, the Sound Recording Company requires a writing signed by an
authorized representative of the Service Provider representing that the
Service Provider is operating with appropriate musical works license
authority and that the Service Provider is in compliance with the
recordkeeping requirements of Sec.385.4;
(3) For Eligible Interactive Streaming of segments of sound
recordings not exceeding 90 seconds, the Sound Recording Company
delivers or authorizes delivery of the segments for promotional purposes
and neither the Service Provider nor the Sound Recording Company creates
or uses a segment of a sound recording in violation of 17 U.S.C. 106(2)
or 115(a)(2);
(4) The Promotional Offering is made available to an End User free
of any charge; and
(5) The Service Provider provides to the End User at the same time
as the Promotional Offering stream an opportunity to purchase the sound
recording or the Service Provider periodically offers End Users the
opportunity to subscribe to a paid Offering of the Service Provider.
[[Page 900]]
Purchased Content Locker Service means a Locker Service made
available to End User purchasers of Permanent Downloads, Ringtones, or
physical phonorecords at no incremental charge above the otherwise
applicable purchase price of the Permanent Downloads, Ringtones, or
physical phonorecords acquired from a qualifying seller. With a
Purchased Content Locker Service, an End User may receive one or more
additional phonorecords of the purchased sound recordings of musical
works in the form of Permanent Downloads or Ringtones at the time of
purchase, or subsequently have digital access to the purchased sound
recordings of musical works in the form of Eligible Interactive Streams,
additional Permanent Downloads, Restricted Downloads, or Ringtones.
(1) A qualifying seller for purposes of this definition is the
entity operating the Service Provider, including affiliates,
predecessors, or successors in interest, or--
(i) In the case of Permanent Downloads or Ringtones, a seller having
a legitimate connection to the locker service provider pursuant to one
or more written agreements (including that the Purchased Content Locker
Service and Permanent Downloads or Ringtones are offered through the
same third party); or
(ii) In the case of physical phonorecords:
(A) The seller of the physical phonorecord has an agreement with the
Purchased Content Locker Service provider establishing an integrated
offer that creates a consumer experience commensurate with having the
same Service Provider both sell the physical phonorecord and offer the
integrated locker service; or
(B) The Service Provider has an agreement with the entity offering
the Purchased Content Locker Service establishing an integrated offer
that creates a consumer experience commensurate with having the same
Service Provider both sell the physical phonorecord and offer the
integrated locker service.
(2) [Reserved]
Relevant Page means an electronic display (for example, a web page
or screen) from which a Service Provider's Offering consisting of
Streams or Eligible Limited Downloads is directly available to End
Users, but only when the Offering and content directly relating to the
Offering (e.g., an image of the artist, information about the artist or
album, reviews, credits, and music player controls) comprises 75% or
more of the space on that display, excluding any space occupied by
advertising. An Offering is directly available to End Users from a page
if End Users can receive sound recordings of musical works (in most
cases this will be the page on which the Eligible Limited Download or
Eligible Interactive Stream takes place).
Restricted Download means a Digital Phonorecord Delivery in a form
that cannot be retained and replayed on a permanent basis. The term
Restricted Download includes an Eligible Limited Download.
Ringtone means a phonorecord of a part of a musical work distributed
as a Digital Phonorecord Delivery in a format to be made resident on a
telecommunications device for use to announce the reception of an
incoming telephone call or other communication or message or to alert
the receiver to the fact that there is a communication or message.
Service Provider means that entity governed by subparts C and D of
this part, which might or might not be the Licensee, that with respect
to the section 115 license:
(1) Contracts with or has a direct relationship with End Users or
otherwise controls the content made available to End Users;
(2) Is able to report fully on Service Provider Revenue from the
provision of musical works embodied in phonorecords to the public, and
to the extent applicable, verify Service Provider Revenue through an
audit; and
(3) Is able to report fully on its usage of musical works, or
procure such reporting and, to the extent applicable, verify usage
through an audit.
Service Provider Revenue. (1) Subject to paragraphs (2) through (5)
of this definition and subject to GAAP, Service Provider Revenue shall
mean:
[[Page 901]]
(i) All revenue from End Users recognized by a Service Provider for
the provision of any Offering;
(ii) All revenue recognized by a Service Provider by way of
sponsorship and commissions as a result of the inclusion of third-party
``in-stream'' or ``in-download'' advertising as part of any Offering,
i.e., advertising placed immediately at the start or end of, or during
the actual delivery of, a musical work, by way of Eligible Interactive
Streaming or Eligible Limited Downloads; and
(iii) All revenue recognized by the Service Provider, including by
way of sponsorship and commissions, as a result of the placement of
third-party advertising on a Relevant Page of the Service Provider or on
any page that directly follows a Relevant Page leading up to and
including the Eligible Limited Download or Eligible Interactive Stream
of a musical work; provided that, in case more than one Offering is
available to End Users from a Relevant Page, any advertising revenue
shall be allocated between or among the Service Providers on the basis
of the relative amounts of the page they occupy.
(2) Service Provider Revenue shall:
(i) Include revenue recognized by the Service Provider, or by any
associate, affiliate, agent, or representative of the Service Provider
in lieu of its being recognized by the Service Provider; and
(ii) Include the value of any barter or other nonmonetary
consideration; and
(iii) Except as expressly detailed in this part, not be subject to
any other deduction or set-off other than refunds to End Users for
Offerings that the End Users were unable to use because of technical
faults in the Offering or other bona fide refunds or credits issued to
End Users in the ordinary course of business.
(3) Service Provider Revenue shall exclude revenue derived by the
Service Provider solely in connection with activities other than
Offering(s), whereas advertising or sponsorship revenue derived in
connection with any Offering(s) shall be treated as provided in
paragraphs (2) and (4) of this definition.
(4) For purposes of paragraph (1) of this definition, advertising or
sponsorship revenue shall be reduced by the actual cost of obtaining
that revenue, not to exceed 15%.
(5) In instances in which a Service Provider provides an Offering to
End Users as part of the same transaction with one or more other
products or services that are not Licensed Activities, then the revenue
from End Users deemed to be recognized by the Service Provider for the
Offering for the purpose of paragraph (1) of this definition shall be
the lesser of the revenue recognized from End Users for the bundle and
the aggregate standalone published prices for End Users for each of the
component(s) of the bundle that are Licensed Activities; provided that,
if there is no standalone published price for a component of the bundle,
then the Service Provider shall use the average standalone published
price for End Users for the most closely comparable product or service
in the U.S. or, if more than one comparable exists, the average of
standalone prices for comparables.
Sound Recording Company means a person or entity that:
(1) Is a copyright owner of a sound recording embodying a musical
work;
(2) In the case of a sound recording of a musical work fixed before
February 15, 1972, has rights to the sound recording, under chapter 14
of title 17, United States Code, that are equivalent to the rights of a
copyright owner of a sound recording of a musical work under title 17,
United States Code;
(3) Is an exclusive Licensee of the rights to reproduce and
distribute a sound recording of a musical work; or
(4) Performs the functions of marketing and authorizing the
distribution of a sound recording of a musical work under its own label,
under the authority of the Copyright Owner of the sound recording.
Stream means the digital transmission of a sound recording of a
musical work to an End User--
(1) To allow the End User to listen to the sound recording, while
maintaining a live network connection to the transmitting service,
substantially at the time of transmission, except to the extent that the
sound recording remains accessible for future listening from a Streaming
Cache Reproduction;
[[Page 902]]
(2) Using technology that is designed such that the sound recording
does not remain accessible for future listening, except to the extent
that the sound recording remains accessible for future listening from a
Streaming Cache Reproduction; and
(3) That is subject to licensing as a public performance of the
musical work.
Streaming Cache Reproduction means a reproduction of a sound
recording embodying a musical work made on a computer or other receiving
device by a Service Provider solely for the purpose of permitting an End
User who has previously received a Stream of that sound recording to
play the sound recording again from local storage on the computer or
other device rather than by means of a transmission; provided that the
End User is only able to do so while maintaining a live network
connection to the Service Provider, and the reproduction is encrypted or
otherwise protected consistent with prevailing industry standards to
prevent it from being played in any other manner or on any device other
than the computer or other device on which it was originally made.
Student Plan means a discounted Subscription to an Offering
available on a limited basis to students.
Subscription means an Offering for which End Users are required to
pay a fee to have access to the Offering for defined subscription
periods of 3 years or less (in contrast to, for example, a service where
the basic charge to users is a payment per download or per play),
whether the End User makes payment for access to the Offering on a
standalone basis or as part of a Bundle with one or more other products
or services.
Total Cost of Content or TCC means the total amount expensed by a
Service Provider or any of its affiliates in accordance with GAAP for
rights to make Eligible Interactive Streams or Eligible Limited
Downloads of a musical work embodied in a sound recording through the
Service Provider for the accounting period, which amount shall equal the
applicable consideration for those rights at the time the applicable
consideration is properly recognized as an expense under GAAP. As used
in this definition, ``applicable consideration'' means anything of value
given for the identified rights to undertake the Licensed Activity,
including, without limitation, ownership equity, monetary advances,
barter or any other monetary and/or nonmonetary consideration, whether
that consideration is conveyed via a single agreement, multiple
agreements and/or agreements that do not themselves authorize the
Licensed Activity but nevertheless provide consideration for the
identified rights to undertake the Licensed Activity, and including any
value given to an affiliate of a Sound Recording Company for the rights
to undertake the Licensed Activity. Value given to a Copyright Owner of
musical works that is controlling, controlled by, or under common
control with a Sound Recording Company for rights to undertake the
Licensed Activity shall not be considered value given to the Sound
Recording Company. Notwithstanding the foregoing, applicable
consideration shall not include in-kind promotional consideration given
to a Sound Recording Company (or affiliate thereof) that is used to
promote the sale or paid use of sound recordings embodying musical works
or the paid use of music services through which sound recordings
embodying musical works are available where the in-kind promotional
consideration is given in connection with a use that qualifies for
licensing under 17 U.S.C. 115.
[84 FR 2031, Feb. 5, 2019, as amended at 84 FR 32313, July 8, 2019]
Sec.385.3 Late payments.
A Licensee shall pay a late fee of 1.5% per month, or the highest
lawful rate, whichever is lower, for any payment owed to a Copyright
Owner and remaining unpaid after the due date established in 17 U.S.C.
115(c)(2)(I) or 115(d)(4)(A)(i), as applicable and detailed in part 210
of this title. Late fees shall accrue from the due date until the
Copyright Owner receives payment.
[84 FR 2031, Feb. 5, 2019, as amended at 84 FR 32316, July 8, 2019]
Sec.385.4 Recordkeeping for promotional or free trial non-royalty-bearing uses.
(a) General. A Licensee transmitting a sound recording embodying a
musical
[[Page 903]]
work subject to section 115 and subparts C and D of this part and
claiming a Promotional or Free Trial zero royalty rate shall keep
complete and accurate contemporaneous written records of making or
authorizing Eligible Interactive Streams or Eligible Limited Downloads,
including the sound recordings and musical works involved, the artists,
the release dates of the sound recordings, a brief statement of the
promotional activities authorized, the identity of the Offering or
Offerings for which the zero-rate is authorized (including the internet
address if applicable), and the beginning and end date of each zero rate
Offering.
(b) Retention of records. A Service Provider claiming zero rates
shall maintain the records required by this section for no less time
than the Service Provider maintains records of royalty-bearing uses
involving the same types of Offerings in the ordinary course of
business, but in no event for fewer than five years from the conclusion
of the zero rate Offerings to which they pertain.
(c) Availability of records. If a Copyright Owner or agent requests
information concerning zero rate Offerings, the Licensee shall respond
to the request within an agreed, reasonable time.
[84 FR 2031, Feb. 5, 2019, as amended at 84 FR 32316, July 8, 2019]
Subpart B_Physical Phonorecord Deliveries, Permanent Downloads,
Ringtones, and Music Bundles
Sec.385.10 Scope.
This subpart establishes rates and terms of royalty payments for
making and distributing phonorecords, including by means of Digital
Phonorecord Deliveries, in accordance with the provisions of 17 U.S.C.
115.
Sec.385.11 Royalty rates.
(a) Physical phonorecord deliveries and Permanent Downloads. For
every physical phonorecord and Permanent Download the Licensee makes and
distributes or authorizes to be made and distributed, the royalty rate
payable for each work embodied in the phonorecord or Permanent Download
shall be either 9.1 cents or 1.75 cents per minute of playing time or
fraction thereof, whichever amount is larger.
(b) Ringtones. For every Ringtone the Licensee makes and distributes
or authorizes to be made and distributed, the royalty rate payable for
each work embodied therein shall be 24 cents.
(c) Music Bundles. For a Music Bundle, the royalty rate for each
element of the Music Bundle shall be the rate required under paragraph
(a) or (b) of this section, as appropriate.
[84 FR 2031, Feb. 5, 2019, as amended at 84 FR 32316, July 8, 2019]
Subpart C_Eligible Interactive Streaming, Eligible Limited Downloads,
Limited Offerings, Mixed Service Bundles, Bundled Subscription
Offerings, Locker Services, and Other Delivery Configurations
Sec.385.20 Scope.
This subpart establishes rates and terms of royalty payments for
Eligible Interactive Streams and Eligible Limited Downloads of musical
works, and other reproductions or distributions of musical works through
Limited Offerings, Mixed Service Bundles, Bundled Subscription
Offerings, Paid Locker Services, and Purchased Content Locker Services
provided through subscription and nonsubscription digital music Service
Providers in accordance with the provisions of 17 U.S.C. 115, exclusive
of Offerings subject to subpart D of this part.
[84 FR 32316, July 8, 2019]
Sec.385.21 Royalty rates and calculations.
(a) Applicable royalty. Licensees that engage in Licensed Activity
covered by this subpart pursuant to 17 U.S.C. 115 shall pay royalties
therefor that are calculated as provided in this section, subject to the
royalty floors for specific types of services described in Sec.385.22.
(b) Rate calculation. Royalty payments for Licensed Activity in this
subpart shall be calculated as provided in paragraph (b) of this
section. If a
[[Page 904]]
Service Provider includes different Offerings, royalties must be
calculated separately with respect to each Offering taking into
consideration Service Provider Revenue and expenses associated with each
Offering.
(1) Step 1: Calculate the all-In royalty for the Offering. For each
Accounting Period, the all-in royalty shall be the greater of the
applicable percent of Service Provider Revenue and the applicable
percent of TCC set forth in the following table.
Table 1 to Paragraph (b)(1)--2018-2022 All-In Royalty Rates
----------------------------------------------------------------------------------------------------------------
Royalty year 2018 (%) 2019 (%) 2020 (%) 2021 (%) 2022 (%)
----------------------------------------------------------------------------------------------------------------
Percent of Revenue.............. 11.4 12.3 13.3 14.2 15.1
Percent of TCC.................. 22.0 23.1 24.1 25.2 26.2
----------------------------------------------------------------------------------------------------------------
(2) Step 2: Subtract applicable Performance Royalties. From the
amount determined in step 1 in paragraph (b)(1) of this section, for
each Offering of the Service Provider, subtract the total amount of
Performance Royalty that the Service Provider has expensed or will
expense pursuant to public performance licenses in connection with uses
of musical works through that Offering during the Accounting Period that
constitute Licensed Activity. Although this amount may be the total of
the Service Provider's payments for that Offering for the Accounting
Period, it will be less than the total of the Performance Royalties if
the Service Provider is also engaging in public performance of musical
works that does not constitute Licensed Activity. In the case in which
the Service Provider is also engaging in the public performance of
musical works that does not constitute Licensed Activity, the amount to
be subtracted for Performance Royalties shall be the amount allocable to
Licensed Activity uses through the relevant Offering as determined in
relation to all uses of musical works for which the Service Provider
pays Performance Royalties for the Accounting Period. The Service
Provider shall make this allocation on the basis of Plays of musical
works or, where per-play information is unavailable because of bona fide
technical limitations as described in step 3 in paragraph (b)(3) of this
section, using the same alternative methodology as provided in step 4 in
paragraph (b)(4) of this section.
(3) Step 3: Determine the payable royalty pool. The payable royalty
pool is the amount payable for the reproduction and distribution of all
musical works used by the Service Provider by virtue of its Licensed
Activity for a particular Offering during the Accounting Period. This
amount is the greater of:
(i) The result determined in step 2 in paragraph (b)(2) of this
section; and
(ii) The royalty floor (if any) resulting from the calculations
described in Sec.385.22.
(4) Step 4: Calculate the per-work royalty allocation. This is the
amount payable for the reproduction and distribution of each musical
work used by the Service Provider by virtue of its Licensed Activity
through a particular Offering during the Accounting Period. To determine
this amount, the result determined in step 3 in paragraph (b)(3) of this
section must be allocated to each musical work used through the
Offering. The allocation shall be accomplished by dividing the payable
royalty pool determined in step 3 for the Offering by the total number
of Plays of all musical works through the Offering during the Accounting
Period (other than Plays subject to subpart D of this part) to yield a
per-Play allocation, and multiplying that result by the number of Plays
of each musical work (other than Plays subject to subpart D of this
part)) through the Offering during the Accounting Period. For purposes
of determining the per-work royalty allocation in all calculations under
step 4 in this paragraph (b)(4) only (i.e., after the payable royalty
pool has been determined), for sound recordings of musical works with a
playing time of over 5 minutes, each Play shall be counted as provided
in
[[Page 905]]
paragraph (c) of this section. Notwithstanding the foregoing, if the
Service Provider is not capable of tracking Play information because of
bona fide limitations of the available technology for Offerings of that
nature or of devices useable with the Offering, the per-work royalty
allocation may instead be accomplished in a manner consistent with the
methodology used for making royalty payment allocations for the use of
individual sound recordings.
(c) Overtime adjustment. For purposes of the calculations in step 4
in paragraph (b)(4) of this section only, for sound recordings of
musical works with a playing time of over 5 minutes, adjust the number
of Plays as follows.
(1) 5:01 to 6:00 minutes--Each play = 1.2 plays.
(2) 6:01 to 7:00 minutes--Each play = 1.4 plays.
(3) 7:01 to 8:00 minutes--Each play = 1.6 plays.
(4) 8:01 to 9:00 minutes--Each play = 1.8 plays.
(5) 9:01 to 10:00 minutes--Each play = 2.0 plays.
(6) For playing times of greater than 10 minutes, continue to add
0.2 plays for each additional minute or fraction thereof.
(d) Accounting. The calculations required by paragraph (b) of this
section shall be made in good faith and on the basis of the best
knowledge, information, and belief at the time payment is due, and
subject to the additional accounting and certification requirements of
17 U.S.C. 115(c)(2)(I), 17 U.S.C. 115(d)(4)(A)(i), and part 210 of this
title. Without limitation, statements of account shall set forth each
step of the calculations with sufficient information to allow the
assessment of the accuracy and manner in which the payable royalty pool
and per-play allocations (including information sufficient to
demonstrate whether and how a royalty floor pursuant to Sec.385.22
does or does not apply) were determined and, for each Offering reported,
also indicate the type of Licensed Activity involved and the number of
Plays of each musical work (including an indication of any overtime
adjustment applied) that is the basis of the per-work royalty allocation
being paid.
[84 FR 2031, Feb. 5, 2019, as amended at 84 FR 32316, July 8, 2019]
Sec.385.22 Royalty floors for specific types of offerings.
(a) In general. The following royalty floors for use in step 3 of
Sec.385.21(b)(3)(ii) shall apply to the respective types of Offerings.
(1) Standalone non-portable Subscription--streaming only. Except as
provided in paragraph (a)(4) of this section, in the case of a
Subscription Offering through which an End User can listen to sound
recordings only in the form of Eligible Interactive Streams and only
from a non-portable device to which those Streams are originally
transmitted while the device has a live network connection, the royalty
floor is the aggregate amount of 15 cents per subscriber per month.
(2) Standalone non-portable Subscription--mixed. Except as provided
in paragraph (a)(4) of this section, in the case of a Subscription
Offering through which an End User can listen to sound recordings either
in the form of Eligible Interactive Streams or Eligible Limited
Downloads but only from a non-portable device to which those Streams or
Eligible Limited Downloads are originally transmitted, the royalty floor
for use in step 3 of Sec.385.21(b)(3)(ii) is the aggregate amount of
30 cents per subscriber per month.
(3) Standalone portable Subscription Offering. Except as provided in
paragraph (a)(4) of this section, in the case of a Subscription Offering
through which an End User can listen to sound recordings in the form of
Eligible Interactive Streams or Eligible Limited Downloads from a
portable device, the royalty floor for use in step 3 of Sec.
385.21(b)(3)(ii) is the aggregate amount of 50 cents per subscriber per
month.
(4) Bundled Subscription Offerings. In the case of a Bundled
Subscription Offering, the royalty floor for use in step 3 of Sec.
385.21(b)(3)(ii) is the royalty floor that would apply to the music
component of the bundle if it were offered on a standalone basis for
each End User who has made at least one Play of a licensed work during
that month (each
[[Page 906]]
such End User to be considered an ``active subscriber'').
(b) Computation of royalty rates. For purposes of paragraph (a) of
this section, to determine the royalty floor, as applicable to any
particular Offering, the total number of subscriber-months for the
Accounting Period, shall be calculated by taking all End Users who were
subscribers for complete calendar months, prorating in the case of End
Users who were subscribers for only part of a calendar month, and
deducting on a prorated basis for End Users covered by an Offering
subject to subpart D of this part, except in the case of a Bundled
Subscription Offering, subscriber-months shall be determined with
respect to active subscribers as defined in paragraph (a)(4) of this
section. The product of the total number of subscriber-months for the
Accounting Period and the specified number of cents per subscriber (or
active subscriber, as the case may be) shall be used as the subscriber-
based component of the royalty floor for the Accounting Period. A Family
Plan shall be treated as 1.5 subscribers per month, prorated in the case
of a Family Plan Subscription in effect for only part of a calendar
month. A Student Plan shall be treated as 0.50 subscribers per month,
prorated in the case of a Student Plan End User who subscribed for only
part of a calendar month.
[84 FR 2031, Feb. 5, 2019, as amended at 84 FR 32316, July 8, 2019]
Subpart D_Promotional and Free-to-the-User Offerings
Sec.385.30 Scope.
This subpart establishes rates and terms of royalty payments for
Promotional Offerings, Free Trial Offerings, and Certain Purchased
Content Locker Services provided by subscription and nonsubscription
digital music Service Providers in accordance with the provisions of 17
U.S.C. 115.
[84 FR 32316, July 8, 2019]
Sec.385.31 Royalty rates.
(a) Promotional Offerings. For Promotional Offerings of audio-only
Eligible Interactive Streaming and Eligible Limited Downloads of sound
recordings embodying musical works that the Sound Recording Company
authorizes royalty-free to the Service Provider, the royalty rate is
zero.
(b) Free Trial Offerings. For Free Trial Offerings for which the
Service Provider receives no monetary consideration, the royalty rate is
zero.
(c) Certain Purchased Content Locker Services. For every Purchased
Content Locker Service for which the Service Provider receives no
monetary consideration, the royalty rate is zero.
(d) Unauthorized use. If a Copyright Owner or agent of the Copyright
Owner sends written notice to a Licensee stating in good faith that a
particular Offering subject to this subpart differs in a material manner
from the terms governing that Offering, the Licensee must within 5
business days cease Streaming or otherwise making available that
Copyright Owner's musical works and shall withdraw from the identified
Offering any End User's access to the subject musical work.
[84 FR 2031, Feb. 5, 2019, as amended at 84 FR 32317, July 8, 2019]
PART 386_ADJUSTMENT OF ROYALTY FEES FOR SECONDARY TRANSMISSIONS BY
SATELLITE CARRIERS--Table of Contents
Sec.
386.1 General.
386.2 Royalty fee for secondary transmission by satellite carriers.
Authority: 17 U.S.C. 119(c), 801(b)(1).
Source: 75 FR 53198, Aug. 31, 2010, unless otherwise noted.
Sec.386.1 General.
This part 386 adjusts the rates of royalties payable under the
statutory license for the secondary transmission of broadcast stations
under 17 U.S.C. 119.
Sec.386.2 Royalty fee for secondary transmission by satellite
carriers.
(a) General. (1) For purposes of this section, Per subscriber per
month shall mean for each subscriber subscribing to the station in
question (or to a package including such station) on the last day of a
given month.
(2) In the case of a station engaged in digital multicasting, the
rates set forth
[[Page 907]]
in paragraph (b) of this section shall apply to each digital stream that
a satellite carrier or distributor retransmits pursuant to 17 U.S.C.
119, provided however that no additional royalty shall be paid for the
carriage of any material related to the programming on such stream.
(b) Rates--(1) Private home viewing. The rates applicable to
Satellite Carriers' carriage of each broadcast signal for private home
viewing shall be as follows:
(i) 2010: 25 cents per subscriber per month (for each month of
2010);
(ii) 2011: 25 cents per subscriber per month;
(iii) 2012: 26 cents per subscriber per month;
(iv) 2013: 27 cents per subscriber per month;
(v) 2014: 27 cents per subscriber per month.
(vi) 2015: 27 cents per subscriber per month (for each month of
2015).\1\
---------------------------------------------------------------------------
\1\ This is the 2014 rate adjusted for the amount of inflation as
measured by the change in the Consumer Price Index for All Urban
Consumers All Items from October 2013 to October 2014.
---------------------------------------------------------------------------
(vii) 2016: 27 cents per subscriber per month (for each month of
2016).\3\
---------------------------------------------------------------------------
\3\ This is the 2015 rate adjusted for the amount of inflation as
measured by the change in the Consumer Price Index for All Urban
Consumers All Items from October 2014 to October 2015.
---------------------------------------------------------------------------
(viii) 2017: 27 cents per subscriber per month.
(ix) 2018: 28 cents per subscriber per month.
(x) 2019: 29 cents per subscriber per month.
(xi) 2020: 30 cents per subscriber per month.
(xii) 2021: 30 cents per subscriber per month.
(2) Viewing in commercial establishments. The rates applicable to
Satellite Carriers' carriage of each broadcast signal for viewing in
commercial establishments shall be as follows:
(i) 2010: 50 cents per subscriber per month (for each month of
2010);
(ii) 2011: 51 cents per subscriber per month;
(iii) 2012: 53 cents per subscriber per month;
(iv) 2013: 54 cents per subscriber per month;
(v) 2014: 55 cents per subscriber per month.
(vi) 2015: 56 cents per subscriber per month (for each month of
2015).\2\
---------------------------------------------------------------------------
\2\ This is the 2014 rate adjusted for the amount of inflation as
measured by the change in the Consumer Price Index for All Urban
Consumers All Items from October 2013 to October 2014.
---------------------------------------------------------------------------
(vii) 2016: 56 cents per subscriber per month (for each month of
2016).\4\
---------------------------------------------------------------------------
\4\ This is the 2015 rate adjusted for the amount of inflation as
measured by the change in the Consumer Price Index for All Urban
Consumers All Items from October 2014 to October 2015.
---------------------------------------------------------------------------
(viii) 2017: 57 cents per subscriber per month.
(ix) 2018: 58 cents per subscriber per month.
(x) 2019: 59 cents per subscriber per month.
(xi) 2020: 60 cents per subscriber per month.
(xii) 2021: 61 cents per subscriber per month.
[75 FR 53198, Aug. 31, 2010, as amended at 75 FR 75624, Dec. 6, 2010; 76
FR 74704, Dec. 1, 2011; 77 FR 70374, Nov. 26, 2012; 78 FR 71502, Nov.
29, 2013; 80 FR 22418, Apr. 22, 2015; 80 FR 73119, Nov. 24, 2015; 81 FR
84479, Nov. 23, 2016; 82 FR 55947, Nov. 27, 2017; 83 FR 61127, Nov. 28,
2018; 84 FR 64206, Nov. 21, 2019; 85 FR 74884, Nov. 24, 2020]
PART 387_ADJUSTMENT OF ROYALTY FEE FOR CABLE COMPULSORY LICENSE--
Table of Contents
Sec.
387.1 General.
387.2 Royalty fee for compulsory license for secondary transmission by
cable systems.
Authority: 17 U.S.C. 801(b)(2), 803(b)(6).
Source: 81 FR 62813, Sept. 13, 2016, unless otherwise noted.
Sec.387.1 General.
This part establishes adjusted terms and rates for royalty payments
in accordance with the provisions of 17 U.S.C. 111 and 801(b)(2)(A),
(B), (C), and (D). Upon compliance with 17 U.S.C. 111 and the terms and
rates of this part, a cable system shall be subject to a statutory
license authorizing secondary
[[Page 908]]
transmissions of broadcast signals to the extent provided in 17 U.S.C.
111.
Sec.387.2 Royalty fee for compulsory license for secondary
transmission by cable systems.
(a) Royalty fee rates. Commencing with the first semiannual
accounting period of 2015 and for each semiannual accounting period
thereafter, the royalty fee rates for secondary transmission by cable
systems not subject to paragraph (b) of this section are those
established by 17 U.S.C. 111(d)(1)(B)(i)-(iv), as amended.
(b) Rates for certain classes of cable systems. Commencing with the
first semiannual accounting period of 2015 and for each semiannual
accounting period thereafter, the alternate tiered royalty fee rates for
cable systems with certain levels of gross receipts as described in 17
U.S.C. 111(d)(1)(E) and (F), are those described therein.
(c) 3.75 percent rate. Commencing with the first semiannual
accounting period of 2015, and for each semiannual accounting period
thereafter, and notwithstanding paragraphs (a) and (d) of this section,
for each distant signal equivalent or fraction thereof not represented
by the carriage of:
(1) Any signal that was permitted (or, in the case of cable systems
commencing operations after June 24, 1981, that would have been
permitted) under the rules and regulations of the Federal Communications
Commission in effect on June 24, 1981 (former 47 CFR 76.1 through 76.617
(1980)); or
(2) A signal of the same type (that is, independent, network, or
non-commercial educational) substituted for such permitted signal; or
(3) A signal that was carried pursuant to an individual waiver of
(former 47 CFR 76.1 through 76.617 (1980)); in lieu of the royalty rates
specified in paragraphs (a) and (d) of this section, the royalty rate
shall be 3.75 percent of the gross receipts of the cable system for each
distant signal equivalent. Any fraction of a distant signal equivalent
shall be computed at its fractional value.
(d) Syndicated exclusivity surcharge. Commencing with the first
semiannual accounting period of 2015 and for each semiannual accounting
period thereafter, in the case of a cable system located outside the 35-
mile specified zone of a commercial VHF station that places a predicted
Grade B contour, in whole or in part, over the cable system, and that is
not significantly viewed or otherwise exempt from the FCC's syndicated
exclusivity rules in effect on June 24, 1981 (former 47 CFR 76.151
through 76.617 (1980)), for each distant signal equivalent or fraction
thereof represented by the carriage of such commercial VHF station, the
royalty rate shall be, in addition to the amount specified in paragraph
(a) of this section:
(1) For cable systems located wholly or in part within a top 50
television market:
(i) 0.599 percent of such gross receipts for the first distant
signal equivalent;
(ii) 0.377 percent of such gross receipts for each of the second,
third, and fourth distant signal equivalents; and
(iii) 0.178 percent of such gross receipts for the fifth distant
signal equivalent and each additional distant signal equivalent
thereafter;
(2) For cable systems located wholly or in part within a second 50
television market:
(i) 0.300 percent of such gross receipts for the first distant
signal equivalent;
(ii) 0.189 percent of such gross receipts for each of the second,
third, and fourth distant signal equivalents; and
(iii) 0.089 percent of such gross receipts for the fifth distant
signal equivalent and each additional distant signal equivalent
thereafter;
(3) For purposes of this section ``first 50 major television
markets'' and ``second 50 major television markets'' shall be defined as
those terms are defined or interpreted in accordance with the Federal
Communications Commission rule ``Major television markets'' in effect on
June 24, 1981 (47 CFR 76.51 (1980)).
(e) Sports programming surcharge. Commencing with the first
semiannual accounting period of 2019 and for each semiannual accounting
period thereafter, in the case of an affected cable system filing Form
SA3 as referenced in 37 CFR 201.17(d)(2)(ii) (2014), the royalty rate
shall be, in addition to the amounts specified in paragraphs (a), (c),
and (d) of this section, a surcharge
[[Page 909]]
of 0.025 percent of the affected cable system's gross receipts for the
secondary transmission to subscribers of each live television broadcast
of a sports event where the secondary transmission of that broadcast
would have been subject to deletion under the FCC Sports Blackout Rule.
For purposes of this paragraph:
(1) The term ``cable system'' shall have the same meaning as in 17
U.S.C. 111(f)(3);
(2) An ``affected cable system''--
(i) Is a ``community unit,'' as the comparable term is defined or
interpreted in accordance with Sec.76.5(dd) of the rules and
regulations of the Federal Communications Commission, in effect as of
November 23, 2014, 47 CFR 76.5(dd) (2014);
(ii) That is located in whole or in part within the 35-mile
specified zone of a television broadcast station licensed to a community
in which a sports event is taking place, provided that if there is no
television broadcast station licensed to the community in which a sports
event is taking place, the applicable specified zone shall be that of
the television broadcast station licensed to the community with which
the sports event or team is identified, or, if the event or local team
is not identified with any particular community, the nearest community
to which a television station is licensed; and
(iii) Whose royalty fee is specified by 17 U.S.C. 111(d)(1)(B);
(3) A ``television broadcast'' of a sports event must qualify as a
``non-network television program'' within the meaning of 17 U.S.C.
111(d)(3)(A);
(4) The term ``specified zone'' shall be defined as the comparable
term is defined or interpreted in accordance with Sec.76.5(e) of the
rules and regulations of the Federal Communications Commission in effect
as of November 23, 2014, 47 CFR 76.5(e) (2014);
(5) The term ``gross receipts'' shall have the same meaning as in 17
U.S.C. 111(d)(1)(B) and shall include all gross receipts of the affected
cable system during the semiannual accounting period except those from
the affected cable system's subscribers who reside in:
(i) The local service area of the primary transmitter, as defined in
17 U.S.C. 111(f)(4);
(ii) Any community where the cable system has fewer than 1000
subscribers;
(iii) Any community located wholly outside the specified zone
referenced in paragraph (e)(4) of this section; and
(iv) Any community where the primary transmitter was lawfully
carried prior to March 31, 1972;
(6) The term ``FCC Sports Blackout Rule'' refers to Sec.76.111 of
the rules and regulations of the Federal Communications Commission in
effect as of November 23, 2014, 47 CFR 76.111 (2014);
(7) Subject to paragraph (e)(8) of this section, the surcharge will
apply to the secondary transmission of a primary transmission of a live
television broadcast of a sports event only where the holder of the
broadcast rights to the sports event or its agent has provided the
affected cable system--
(i) Advance written notice regarding the secondary transmission as
required by Sec.76.111(b) and (c) of the FCC Sports Blackout Rule; and
(ii) Documentary evidence that the specific team on whose behalf the
notice is given had invoked the protection afforded by the FCC Sports
Blackout Rule during the period from January 1, 2012, through November
23, 2014;
(8) In the case of collegiate sports events, the number of events
involving a specific team as to which an affected cable system must pay
the surcharge will be no greater than the largest number of events as to
which the FCC Sports Blackout Rule was invoked in a particular
geographic area by that team during any one of the accounting periods
occurring between January 1, 2012, and November 23, 2014;
(9) Nothing herein shall preclude any copyright owner of a live
television broadcast, the secondary transmission of which would have
been subject to deletion under the FCC Sports Blackout Rule, from
receiving a share of royalties paid pursuant to this paragraph (e).
(f) Computation of rates. Computation of royalty fees shall be
governed by 17 U.S.C. 111(d) and 111(f) and 37 CFR 201.17.
[81 FR 62813, Sept. 13, 2016, as amended at 83 FR 62715, Dec. 6, 2018]
[[Page 910]]
PART 388_ADJUSTMENT OF ROYALTY RATE FOR COIN-OPERATED PHONORECORD
PLAYERS--Table of Contents
Sec.
388.1 General.
388.2 Definition of coin-operated phonorecord player.
388.3 Compulsory license fees for coin-operated phonorecord players.
Authority: 17 U.S.C. 116, 801(b)(1).
Source: 81 FR 83141, Nov. 21, 2016, unless otherwise noted.
Sec.388.1 General.
This part 388 establishes the compulsory license fees for coin-
operated phonorecord players beginning on January 1, 1982, in accordance
with the provisions of 17 U.S.C. 116.
Sec.388.2 Definition of coin-operated phonorecord player.
As used in this part, the term coin-operated phonorecord player is a
machine or device that:
(a) Is employed solely for the performance of nondramatic musical
works by means of phonorecords upon being activated by insertion of
coins, currency, tokens, or other monetary units or their equivalent;
(b) Is located in an establishment making no direct or indirect
charge for admission;
(c) Is accompanied by a list of the titles of all the musical works
available for performance on it, which list is affixed to the
phonorecord player or posted in the establishment in a prominent
position where it can be readily examined by the public; and
(d) Affords a choice of works available for performance and permits
the choice to be made by the patrons of the establishment in which it is
located.
Sec.388.3 Compulsory license fees for coin-operated phonorecord
players.
(a) Commencing January 1, 1982, the annual compulsory license fee
for a coin-operated phonorecord player shall be $25.
(b) Commencing January 1, 1984, the annual compulsory license fee
for a coin-operated phonorecord player shall be $50.
(c) Commencing January 1, 1987, the annual compulsory license fee
for a coin-operated phonorecord player shall be $63.
(d) If performances are made available on a particular coin-operated
phonorecord player for the first time after July 1 of any year, the
compulsory license fee for the remainder of that year shall be one half
of the annual rate of paragraph (a), (b), or (c) of this section,
whichever is applicable.
(e) Commencing January 1, 1990, the annual compulsory license fee
for a coin-operated phonorecord player is suspended through December 31,
1999, or until such earlier or later time as the March 1990 license
agreement between AMOA and ASCAP/BMI/SESAC is terminated.
PART 389 [RESERVED]
PART 390_AMOUNTS OF AND TERMS FOR ADMINISTRATIVE ASSESSMENTS TO FUND
MECHANICAL LICENSING COLLECTIVE--Table of Contents
Sec.
390.1 Definitions.
390.2 Amount of assessments.
390.3 Annual minimum fees.
390.4 Annual Assessment allocation and payment.
Authority: 17 U.S.C. 115, 801(b).
Source: 85 FR 832, Jan. 8, 2020, unless otherwise noted.
Sec.390.1 Definitions.
Administrative assessment has the meaning set forth in 17 U.S.C.
115(e)(3).
Aggregate Sound Recordings Count means the sum of the Unique Sound
Recordings Counts of each and every Allocated Licensee, calculated over
the respective Quarterly Allocation calculation period.
Allocated Licensees mean licensees as set forth in Sec.390.3(a)
who are allocated an additional share of assessments beyond the annual
minimum fee.
Allocated Licensee Assessment Pool means an amount equaling 50% of
each Annual Assessment and Quarterly Allocation.
Annual Assessment means the administrative assessment for each
calendar year beginning with the calendar year 2021.
[[Page 911]]
Annual Calculation Period means the calculation period for annual
minimum fees, as set forth in Sec.390.3(b).
Annual minimum fee means the minimum amount each Licensee shall pay
for each Annual Assessment period, as set forth in Sec.390.3.
Blanket Licensee means a digital music provider that is engaged, in
all or in part, in covered activities pursuant to a compulsory blanket
license described in 17 U.S.C. 115(d).
Certified Minimum Fee Disclosure means a Licensee's certified
statement setting forth its Unique Sound Recordings Count for the
respective calculation period.
Covered activity has the meaning set forth in 17 U.S.C. 115(e)(7).
Digital licensee coordinator or DLC has the meaning set forth in 17
U.S.C. 115(e)(9).
ECI means the Employment Cost Index for total compensation (not
seasonally adjusted), all civilian workers, as published on the website
of the United States Department of Labor, Bureau of Labor Statistics,
for the most recent 12-month period for which data are available on the
date that is 60 days prior to the start of the calendar year.
Flat Fee Licensees mean licensees as set forth in Sec.390.3(a) who
are not allocated an additional share of assessments beyond the annual
minimum fee.
License availability date has the meaning set forth in 17 U.S.C.
115(e)(15).
Licensee means either a Blanket Licensee or a Significant Nonblanket
Licensee.
Mechanical licensing collective or MLC has the meaning set forth in
17 U.S.C. 115(e)(18).
New Licensee means a Licensee that begins engaging in covered
activities on or after the license availability date.
Notice of license has the meaning set forth in 17 U.S.C. 115(e)(22).
Notice of nonblanket activity has the meaning set forth in 17 U.S.C.
115(e)(23).
Quarterly Allocation means each of four equal parts of each Annual
Assessment, to be paid on a calendar quarterly basis.
Significant Nonblanket Licensee has the meaning set forth in 17
U.S.C. 115(e)(31).
Startup Assessment means the one-time administrative assessment for
the startup phase of the MLC.
Threshold Licensee means an Allocated Licensee that reports at least
7.5% of the Aggregate Sound Recordings Count of all Allocated Licensees.
Threshold Licensee Assessment Pool means an amount equaling 50% of
each Annual Assessment and Quarterly Allocation.
Unique Sound Recordings Count means, for each Licensee, the number
of unique sound recordings used and reported per month by such Licensee
in Section 115 covered activities, such as would be reflected in the
information required to be reported under 17 U.S.C. 115(d), calculated
as a monthly average over the respective calculation period, except that
a sound recording of a musical work that is in the public domain and
designated as such in a monthly report of use shall not count towards
the Licensee's Unique Sound Recordings Count. For example, a Licensee's
Unique Sound Recordings Count for a Quarterly Allocation calculation
period will be calculated by adding together the counts of unique sound
recordings reported by such Licensee to the MLC during each month of
that quarter and dividing that sum by three. A Licensee's Unique Sound
Recordings Count for an Annual Calculation Period will be calculated by
adding together the counts of unique sound recordings reported by such
Licensee to the MLC during each month of that twelve-month period and
dividing that sum by twelve. In the case of a Licensee that was engaged
in covered activities only for part of a Quarterly Allocation
calculation period or Annual Calculation Period, the monthly average
shall be calculated using only the calendar months that the Licensee was
engaged in covered activities. In the case of a Licensee that was not
engaged in covered activities during any part of a Quarterly Allocation
calculation period or Annual Calculation Period, the monthly average
shall be zero. Within each month's usage reports from a particular
Licensee, a sound recording reported multiple
[[Page 912]]
times with the same metadata would be counted as a single sound
recording, and a sound recording reported multiple times each with
different metadata would be counted multiple times, once for each
reporting with new or different metadata.
[86 FR 6568, Jan. 22, 2021]
Sec.390.2 Amount of assessments.
(a) Startup Assessment. The Startup Assessment shall be in the
amount of $33,500,000.
(b) 2021 Annual Assessment. The Annual Assessment for the calendar
year 2021 shall be in the amount of $28,500,000.
(c) Other Annual Assessments. (1) For the calendar year 2022 and all
subsequent years, the amount of the Annual Assessment will be
automatically adjusted by increasing the amount of the Annual Assessment
of the preceding calendar year by the lesser of:
(i) 3 percent; and
(ii) The percentage change in the ECI.
(2) The MLC shall publish notice on its website of each year's
automatic adjustment to the Annual Assessment. The Annual Assessment
shall continue from year to year unless and until the Copyright Royalty
Judges cause to be published an adjusted administrative assessment
pursuant to 17 U.S.C. 115(d)(7)(D)(iv) or (v).
Sec.390.3 Annual minimum fees.
(a) Amounts. Subject to paragraph (e) of this section, Licensees
shall pay annual minimum fees as follows--
(1) In general. Except as provided in paragraph (a)(2) of this
section--
(i) Licensees that have a Unique Sound Recordings Count of 10,000 or
less during the relevant Annual Calculation Period shall pay $2,500 and
shall be Flat Fee Licensees for the respective Annual Assessment;
(ii) Licensees that have a Unique Sound Recordings Count of between
10,001 and 25,000 during the relevant Annual Calculation Period shall
pay $5,000 and shall be Flat Fee Licensees for the respective Annual
Assessment;
(iii) Licensees that have a Unique Sound Recordings Count of between
25,001 and 50,000 during the relevant Annual Calculation Period shall
pay $10,000 and shall be Flat Fee Licensees for the respective Annual
Assessment, where such Annual Calculation Period is for the Annual
Assessment for the calendar year 2024 or earlier; otherwise such
Licensees shall pay $60,000 and shall be Allocated Licensees for the
respective Annual Assessment;
(iv) Licensees that have a Unique Sound Recordings Count of between
50,001 and 100,000 during the relevant Annual Calculation Period shall
pay $20,000 and shall be Flat Fee Licensees for the respective Annual
Assessment, where such Annual Calculation Period is for the Annual
Assessment for the calendar year 2024 or earlier; otherwise such
Licensees shall pay $60,000 and shall be Allocated Licensees; and
(v) Licensees that have a Unique Sound Recordings Count greater than
100,000 during the relevant Annual Calculation Period shall pay an
annual minimum fee of $60,000 and shall be Allocated Licensees for the
respective Annual Assessment.
(2) Download store annual fee. Licensees that engage in covered
activities exclusively under authority obtained from licensors of sound
recordings to make and distribute permanent downloads of musical works
embodied in such sound recordings pursuant to individual download
licenses or voluntary licenses shall be Flat Fee Licensees and pay the
following amounts:
(i) $2,500 if the Licensee has a Unique Sound Recordings Count of
50,000 or less during the relevant Annual Calculation Period.
(ii) $5,000 if the Licensee has a Unique Sound Recordings Count of
between 50,001 to 100,000 during the prior Annual Calculation Period.
(iii) $10,000 if the Licensee has a Unique Sound Recordings Count of
between 100,001 to 250,000 during the prior Annual Calculation Period.
(iv) $20,000 if the Licensee has a Unique Sound Recordings Count of
between 250,001 to 500,000 during the prior Annual Calculation Period.
(v) $60,000 if the Licensee has a Unique Sound Recordings Count of
greater than 500,000 during the prior Annual Calculation Period.
(b) Annual Calculation Period. The calculation period for annual
minimum fees shall be the 12-month period that
[[Page 913]]
ends on the September 30th immediately preceding the start of the
assessment period (e.g., the annual minimum fee calculation period for
the 2021 Annual Assessment shall be October 1, 2019 to September 30,
2020).
(c) Calculation by Licensee certification (2021 and 2022)--(1) 2021.
Each Licensee in operation on or before the license availability date
shall submit to the MLC,--no later than February 15, 2021, its Certified
Minimum Fee Disclosure for the 2021 annual minimum fee (i.e., for the
period from October 1, 2019, to September 30, 2020). Each Licensee shall
submit the appropriate annual minimum fee as calculated under paragraph
(a) of this section for the 2021 Assessment simultaneously with its
Certified Minimum Fee Disclosure.
(2) 2022. Each Licensee shall submit to the MLC by November 1, 2021,
a Certified Minimum Fee Disclosure for the 2022 Assessment and shall pay
by January 15, 2022, the appropriate annual minimum fee.
(d) Calculation by the MLC (2023 and subsequent years). Beginning
with the 2023 Assessment and continuing in subsequent years, the MLC
will calculate each Licensee's annual minimum fee based on usage
reporting received from Licensees pursuant to 17 U.S.C. 115(d)(4). The
MLC shall send invoices for the appropriate annual minimum fee to each
Licensee. Licensees shall pay the annual minimum fee invoices from the
MLC by the later of:
(1) 30 days from receipt of the invoice from the MLC; or
(2) January 15th of the respective Annual Assessment year.
(e) New licensees. (1) A New Licensee shall remit the lowest annual
fee set forth in paragraph (a)(1) or (2) of this section, as applicable,
along with its notice of license or notice of nonblanket activity to be
attributable to the calendar year in which such Licensee begins engaging
in covered activities.
(2) A New Licensee shall initially be deemed a Flat Fee Licensee.
When the MLC calculates the Quarterly Allocation with the first
calculation period pursuant to Sec.390.4(b) during which the New
Licensee was engaged in covered activities, whether such activities were
for all or part of the calculation period, the MLC shall calculate the
New Licensee's Unique Sound Recording Count for that calculation period.
In the event that such New Licensee has not provided timely reporting,
the MLC may instead, in its discretion, use the most recent reporting
from that New Licensee for such calculation. If such New Licensee is
calculated to have a Unique Sound Recordings Count that exceeds the
amount that would qualify it to be a Flat Fee Licensee under paragraph
(a)(1) of this section, it shall be deemed an Allocated Licensee for
that Quarterly Allocation and the remainder of the calendar year and
shall be invoiced and pay the assessment as calculated in Sec.390.4
for the respective quarters, with such New Licensee's Unique Sound
Recordings Count to be included in the Aggregate Sound Recording Count
for such quarters.
(3) A New Licensee shall be subject to the provisions of paragraphs
(a) through (d) of this section, as applicable, to determine the amount
and timing of the annual minimum fees owed for the calendar year
following the year when the Licensee begins engaging in covered
activities, and for such purposes a New Licensee shall be treated as
having a Unique Sound Recordings Count of zero for the Annual
Calculation Period if it began engaging in covered activities after the
end of the Annual Calculation Period. A New Licensee that has been
deemed an Allocated Licensee pursuant to paragraph (e)(2) of this
section shall be subject to the provisions of paragraphs (a) through (d)
of this section, as applicable, to determine its status as a Flat Fee
Licensee or Allocated Licensee, for calendar years following the
calendar year in which it is first deemed an Allocated Licensee.
[86 FR 6569, Jan. 22, 2021]
Sec.390.4 Annual Assessment allocation and payment.
(a) Allocation formula. Each Annual Assessment shall be divided into
four equal Quarterly Allocations, after first subtracting annual fees
payable by Flat Fee Licensees. The MLC may adjust Quarterly Allocations
to compensate for any adjustments to the Flat Fee Licensee annual fees
that
[[Page 914]]
occur after the initial division of the Annual Assessment. Each
Quarterly Allocation shall be allocated and paid on a calendar quarterly
basis. Each Quarterly Allocation shall be divided into two equal parts,
allocated among Licensees according to the following formula:
(1) Allocated Licensee Assessment Pool. The Allocated Licensee
Assessment Pool shall be allocated on a pro rata basis across all
Allocated Licensees based on each Licensee's share of the Aggregate
Sound Recordings Count.
(2) Threshold Licensee Assessment Pool. The Threshold Licensee
Assessment Pool shall be allocated on a pro rata basis across Threshold
Licensees based on each Threshold Licensee's share of the aggregate
Unique Sound Recordings Counts of all Threshold Licensees. In the event
that no Threshold Licensees exist for a Quarterly Allocation, the
Threshold Licensee Assessment Pool shall become payable by all Allocated
Licensees in the same manner as the Allocated Licensee Assessment Pool.
(b) Calculation periods and timing. The calculation period for each
Quarterly Allocation shall be the three-month period that ends three
months prior to the start of the respective quarter, except that the
calculation period for the Quarterly Allocation for the first and second
quarters of 2021 shall be the same as for the annual minimum fee for the
2021 Annual Assessment and shall be calculated based upon the
information provided in the Certified Minimum Fee Disclosures, as
required by this part. The MLC shall make all calculations for each
respective period based upon the reporting for such period received from
Licensees as of the time of calculation by the MLC, which calculation
time shall not be earlier than the legal deadline for submission of
reporting by Licensees for the respective period. In the event that a
Licensee has not provided timely reporting for the respective
calculation period at the time the MLC calculates a Quarterly
Allocation, the MLC may instead use, in its discretion, the most recent
reporting from that Licensee to determine that Licensee's Unique Sound
Recordings Count, for the purposes of calculating the Quarterly
Allocation.
(c) Invoicing and payment of allocation--(1) Deadline for payment.
(i) Invoices from the MLC for Quarterly Allocation shares shall be
payable pursuant to the MLC invoice no later than 45 days after receipt
of the invoice from the MLC.
(ii) Invoices from the MLC to Licensees shall be deemed received on
the business day after electronic transmission.
(2) Format of invoices. (i) The quarterly invoices issued by the MLC
shall include at least the following information, where applicable:
(A) Invoice issuance date;
(B) Invoice payment due date;
(C) Amount owed, by share of Allocated Licensee Assessment Pool and
Threshold Licensee Assessment Pool;
(D) Allocation of Startup Assessment;
(E) Offset of minimum fee payment against quarterly assessment; and
(F) Amount of credit for un-recouped minimum fee.
(ii) Invoices issued as a result of an allocation adjustment shall
include all of the information set forth in paragraphs (c)(2)(i)(A)
through (F) of this section that may be relevant, as well as an
explanation of the change from the prior invoices that are affected, and
the reason(s) for the adjustment.
(d) Late reporting. The MLC shall promptly notify the DLC of any
known Licensees who have not timely submitted reports of usage as
required each month pursuant to 17 U.S.C. 115(d) and 37 CFR part 210.
(e) Recalculation of Allocated Assessment invoices. The MLC may, in
its discretion, recalculate allocations and adjust prior invoices, with
the written consent of the DLC, within twelve months after the initial
issuance of such invoices, in circumstances including, but not limited
to, where new usage reporting is received or where a correction would
alter one or more of any Licensee's Quarterly Allocation shares by at
least 10%.
(f) Recoupment of minimum-fee. Each Allocated Licensee's minimum fee
will be offset against its Quarterly Allocation shares, if any, and
additional payment will not be due from a Licensee
[[Page 915]]
unless and until its total Quarterly Allocation shares exceed its annual
minimum fee payment. To the extent that an Allocated Licensee's minimum
fee exceeds that Licensee's Quarterly Allocation shares for a given
Assessment period, the excess amounts will be pooled and credited pro
rata to all Allocated Licensees based on the Quarterly Allocation shares
for the first quarter of the following year.
(g) Reports to DLC. The MLC shall report to the DLC no later than 75
days after the end of every quarter the Aggregate Sound Recordings Count
for that quarter.
(h) Startup Assessment allocation and payment. The Startup
Assessment shall be allocated and paid in the same manner and on the
same dates as the 2021 Annual Assessment, including as to each of the
applicable provisions above, and shall be separately itemized in
invoices from the MLC to Licensees. Pursuant to Sec.390.3, a single
annual minimum fee shall be assessed for the 2021 Annual Assessment, and
no additional annual minimum fee shall be assessed for the Startup
Assessment.
[86 FR 6570, Jan. 22, 2021]
PARTS 391 399 [RESERVED]
[[Page 917]]
CHAPTER IV--NATIONAL INSTITUTE OF STANDARDS AND TECHNOLOGY, DEPARTMENT
OF COMMERCE
--------------------------------------------------------------------
Part Page
400 [Reserved]
401 Rights to inventions made by nonprofit
organizations and small business firms
under government grants, contracts, and
cooperative agreements.................. 919
404 Licensing of government-owned inventions.... 937
501 Uniform patent policy for rights in
inventions made by government employees. 942
502-599 [Reserved]
[[Page 919]]
PART 400 [RESERVED]
PART 401_RIGHTS TO INVENTIONS MADE BY NONPROFIT ORGANIZATIONS AND
SMALL BUSINESS FIRMS UNDER GOVERNMENT GRANTS, CONTRACTS, AND
COOPERATIVE AGREEMENTS--Table of Contents
Sec.
401.1 Scope.
401.2 Definitions.
401.3 Use of the standard clauses at Sec.401.14.
401.4 Contractor appeals of exceptions.
401.5 Modification and tailoring of clauses.
401.6 Exercise of march-in rights.
401.7 Small business preference.
401.8 Reporting on utilization of subject inventions.
401.9 Retention of rights by contractor employee inventor.
401.10 Government assignment to contractor of rights in invention of
government employee.
401.11 Appeals.
401.12 Licensing of background patent rights to third parties.
401.13 Administration of patent rights clauses.
401.14 Standard patent rights clauses.
401.15 Deferred determinations.
401.16 Electronic filing.
401.17 Submissions and inquiries.
Authority: 35 U.S.C. 206; DOO 30-2A.
Source: 52 FR 8554, Mar. 18, 1987, unless otherwise noted.
Sec.401.1 Scope.
(a) Traditionally there have been no conditions imposed by the
government on research performers while using private facilities which
would preclude them from accepting research funding from other sources
to expand, to aid in completing or to conduct separate investigations
closely related to research activities sponsored by the government.
Notwithstanding the right of research organizations to accept
supplemental funding from other sources for the purpose of expediting or
more comprehensively accomplishing the research objectives of the
government sponsored project, it is clear that the ownership provisions
of these regulations would remain applicable in any invention
``conceived or first actually reduced to practice in performance'' of
the project. Separate accounting for the two funds used to support the
project in this case is not a determining factor.
(1) To the extent that a non-government sponsor established a
project which, although closely related, falls outside the planned and
committed activities of a government-funded project and does not
diminish or distract from the performance of such activities, inventions
made in performance of the non-government sponsored project would not be
subject to the conditions of these regulations. An example of such
related but separate projects would be a government sponsored project
having research objectives to expand scientific understanding in a field
and a closely related industry sponsored project having as its
objectives the application of such new knowledge to develop usable new
technology. The time relationship in conducting the two projects and the
use of new fundamental knowledge from one in the performance of the
other are not important determinants since most inventions rest on a
knowledge base built up by numerous independent research efforts
extending over many years. Should such an invention be claimed by the
performing organization to be the product of non-government sponsored
research and be challenged by the sponsoring agency as being reportable
to the government as a ``subject invention'', the challenge is
appealable as described in Sec.401.11(d).
(2) An invention which is made outside of the research activities of
a government-funded project is not viewed as a ``subject invention''
since it cannot be shown to have been ``conceived or first actually
reduced to practice'' in performance of the project. An obvious example
of this is a situation where an instrument purchased with government
funds is later used, without interference with or cost to the
government-funded project, in making an invention all expenses of which
involve only non-government funds.
(b) This part implements 35 U.S.C. 202 through 204 and is applicable
to all Federal agencies. It applies to all funding agreements with
business firms regardless of size (consistent with section 1, paragraph
(b)(4) of Executive Order 12591, as amended by Executive Order 12618)
and to nonprofit organizations,
[[Page 920]]
except for a funding agreement made primarily for educational purposes.
Certain sections also provide guidance for the administration of funding
agreements which predate the effective date of this part. In accordance
with 35 U.S.C. 212, no scholarship, fellowship, training grant, or other
funding agreement made by a Federal agency primarily to an awardee for
educational purposes will contain any provision giving the Federal
agency any rights to inventions made by the awardee.
(c) The march-in and appeals procedures in Sec. Sec.401.6 and
401.11 shall apply to any march-in or appeal proceeding under a funding
agreement subject to Chapter 18 of Title 35, U.S.C., initiated after the
effective date of this part even if the funding agreement was executed
prior to that date.
(d) At the request of the contractor, a funding agreement for the
operation of a government-owned facility which is in effect on the
effective date of this part shall be promptly amended to include the
provisions required by Sec. Sec.401.3(a) unless the agency determines
that one of the exceptions at 35 U.S.C. 202(a)(i) through (iv) Sec.
401.3(a)(8) through (iv) of this part) is applicable and will be
applied. If the exception at Sec.401.3(a)(iv) is determined to be
applicable, the funding agreement will be promptly amended to include
the provisions required by Sec.401.3(c).
(e) This regulation supersedes OMB Circular A-124 and shall take
precedence over any regulations dealing with ownership of inventions
made by small businesses and nonprofit organizations which are
inconsistent with it. This regulation will be followed by all agencies
pending amendment of agency regulations to conform to this part and
amended Chapter 18 of Title 35. Only deviations requested by a
contractor and not inconsistent with Chapter 18 of Title 35, United
States Code, may be made without approval of the Secretary.
Modifications or tailoring of clauses as authorized by Sec.401.5 or
Sec.401.3, when alternate provisions are used under Sec.401.3(a)(1)
through (6), are not considered deviations requiring the Secretary's
approval. Three copies of proposed and final agency regulations
supplementing this part shall be submitted to the Secretary at the
office set out in Sec.401.17 for approval for consistency with this
part before they are submitted to the Office of Management and Budget
(OMB) for review under Executive Order 12866 or, if no submission is
required to be made to OMB, before their submission to the Federal
Register for publication.
(f) In the event an agency has outstanding prime funding agreements
that do not contain patent flow-down provisions consistent with this
part or earlier Office of Federal Procurement Policy regulations (OMB
Circular A-124 or OMB Bulletin 81-22), the agency shall take appropriate
action to ensure that small business firms or nonprofit organizations
that are subcontractors under any such agreements and that received
their subcontracts after July 1, 1981, receive rights in their subject
inventions that are consistent with Chapter 18 and this part.
(g) This part is not intended to apply to arrangements under which
nonprofit organizations, small business firms, or others are allowed to
use government-owned research facilities and normal technical assistance
provided to users of those facilities, whether on a reimbursable or
nonreimbursable basis. This part is also not intended to apply to
arrangements under which sponsors reimburse the government or facility
contractor for the contractor employee's time in performing work for the
sponsor. Such arrangements are not considered ``funding agreements'' as
defined at 35 U.S.C. 201(b) and Sec.401.2(a) of this part.
[52 FR 8554, Mar. 18, 1987, as amended at 83 FR 15958, Apr. 13, 2018]
Sec.401.2 Definitions.
As used in this part--
(a) The term funding agreement means any contract, grant, or
cooperative agreement entered into between any Federal agency, other
than the Tennessee Valley Authority, and any contractor for the
performance of experimental, developmental, or research work funded in
whole or in part by the Federal government. This term also includes any
assignment, substitution of parties, or subcontract of any type entered
into for the performance of experimental, developmental, or research
[[Page 921]]
work under a funding agreement as defined in the first sentence of this
paragraph.
(b) The term contractor means any person, small business firm or
nonprofit organization, or, as set forth in section 1, paragraph (b)(4)
of Executive Order 12591, as amended, any business firm regardless of
size, which is a party to a funding agreement.
(c) The term invention means any invention or discovery which is or
may be patentable or otherwise protectable under Title 35 of the United
States Code, or any novel variety of plant which is or may be
protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et
seq.).
(d) The term subject invention means any invention of a contractor
conceived or first actually reduced to practice in the performance of
work under a funding agreement; provided that in the case of a variety
of plant, the date of determination (as defined in section 41(d) of the
Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur during
the period of contract performance.
(e) The term practical application means to manufacture in the case
of a composition of product, to practice in the case of a process or
method, or to operate in the case of a machine or system; and, in each
case, under such conditions as to establish that the invention is being
utilized and that its benefits are, to the extent permitted by law or
government regulations, available to the public on reasonable terms.
(f) The term made when used in relation to any invention means the
conception or first actual reduction to practice of such invention.
(g) The term small business firm means a small business concern as
defined at section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing
regulations of the Administrator of the Small Business Administration.
For the purpose of this part, the size standards for small business
concerns involved in government procurement and subcontracting at 13 CFR
121.5 will be used.
(h) The term nonprofit organization means universities and other
institutions of higher education or an organization of the type
described in section 501(c)(3) of the Internal Revenue Code of 1954 (26
U.S.C. 501(c) and exempt from taxation under section 501(a) of the
Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or
educational organization qualified under a state nonprofit organization
statute.
(i) The term Chapter 18 means Chapter 18 of Title 35 of the United
States Code.
(j) The term Secretary means the Director of the National Institute
of Standards and Technology.
(k) The term electronically filed means any submission of
information transmitted by an electronic or optical-electronic system.
(l) The term electronic or optical-electronic system means a
software-based system approved by the agency for the transmission of
information.
(m) The term patent application or ``application for patent''
includes a provisional or nonprovisional U.S. national application for
patent as defined in 37 CFR 1.9 (a)(2) and (a)(3), respectively, or an
application for patent in a foreign country or in an international
patent office.
(n) The term initial patent application means, as to a given subject
invention, the first provisional or non-provisional U.S. national
application for patent as defined in 37 CFR 1.9(a)(2) and (3),
respectively, the first international application filed under the Patent
Cooperation Treaty as defined in 37 CFR 1.9(b) which designates the
United States, or the first application for a Plant Variety Protection
certificate, as applicable.
(o) The term statutory period means the one-year period before the
effective filing date of a claimed invention during which exceptions to
prior art exist per 35 U.S.C. 102(b) as amended by the Leahy-Smith
America Invents Act, Public Law 112-29.
[52 FR 8554, Mar. 18, 1987, as amended at 60 FR 41812, Aug. 14, 1995; 78
FR 4766, Jan. 23, 2013; 83 FR 15958, Apr. 13, 2018]
Sec.401.3 Use of the standard clauses at Sec.401.14.
(a) Each funding agreement awarded to a contractor (except those
subject to 35 U.S.C. 212) shall contain the clause
[[Page 922]]
found in Sec.401.14 with such modifications and tailoring as
authorized or required elsewhere in this part. However, a funding
agreement may contain alternative provisions--
(1) When the contractor is not located in the United States or does
not have a place of business located in the United States or is subject
to the control of a foreign government; or
(2) In exceptional circumstances when it is determined by the agency
that restriction or elimination of the right to retain title to any
subject invention will better promote the policy and objectives of
Chapter 18 of Title 35 of the United States Code; or
(3) When it is determined by a government authority which is
authorized by statute or executive order to conduct foreign intelligence
or counterintelligence activities that the restriction or elimination of
the right to retain title to any subject invention is necessary to
protect the security to such activities; or
(4) When the funding agreement includes the operation of the
government-owned, contractor-operated facility of the Department of
Energy primarily dedicated to that Department's naval nuclear propulsion
or weapons related programs and all funding agreement limitations under
this subparagraph on the contractor's right to elect title to a subject
invention are limited to inventions occurring under the above two
programs; or
(5) If any part of the contract may require the contractor to
perform work on behalf of the Government at a Government laboratory
under a Cooperative Research and Development Agreement (CRADA) pursuant
to the statutory authority of 15 U.S.C. 3710a; or
(6) If the contract provides for services and the contractor is not
a nonprofit organization and does not promote the commercialization and
public availability of subject inventions pursuant to 35 U.S.C. 200.
(b) When an agency exercises the exceptions at paragraph (a)(2),
(3), (5), or (6) of this section, it shall use the standard clause at
Sec.401.14 with only such modifications as are necessary to address
the exceptional circumstances or concerns which led to the use of the
exception. For example, if the justification relates to a particular
field of use or market, the clause might be modified along lines similar
to those described in paragraph (c) of this section. In any event, the
clause should provide the contractor with an opportunity to receive
greater rights in accordance with the procedures at Sec.401.15. When
an agency justifies and exercises the exception at paragraph (a)(2) of
this section and uses an alternative provision in the funding agreement
on the basis of national security, the provision shall provide the
contractor with the right to elect ownership to any invention made under
such funding agreement as provided by the Standard Patent Rights Clause
found at Sec.401.14 if the invention is not classified by the agency
within six months of the date it is reported to the agency, or within
the same time period the Department of Energy does not, as authorized by
regulation, law or Executive order or implementing regulations thereto,
prohibit unauthorized dissemination of the invention. Contracts in
support of DOE's naval nuclear propulsion program are exempted from this
paragraph (b).
(c) When the Department of Energy (DOE) determines to use
alternative provisions under paragraph (a)(4) of this section, the
standard clause at Sec.401.14 shall be used with the following
modifications, or substitute thereto with such modification and
tailoring as authorized or required elsewhere in this part:
(1) The title of the clause shall be changed to read as follows:
Patent Rights to Nonprofit DOE Facility Operators.
(2) Add an ``(A)'' after ``(1)'' in paragraph (c)(1) of the clause
in Sec.401.14 and add paragraphs (B) and (C) to paragraph (c)(1) of
the clause in Sec.401.14 as follows:
(B) If the subject invention occurred under activities funded by the
naval nuclear propulsion or weapons related programs of DOE, then the
provisions of this paragraph (c)(1)(B) will apply in lieu of paragraphs
(c)(2) and (3) of this clause. In such cases the contractor agrees to
assign the government the entire right, title, and interest thereto
throughout the world in and to the subject invention except to the
extent that rights are retained by the contractor through a
[[Page 923]]
greater rights determination or under paragraph (e) of this clause. The
contractor, or an employee-inventor, with authorization of the
contractor, may submit a request for greater rights at the time the
invention is disclosed or within a reasonable time thereafter. DOE will
process such a request in accordance with procedures at 37 CFR 401.15.
Each determination of greater rights will be subject to paragraphs (h)
through (k) of this clause and such additional conditions, if any,
deemed to be appropriate by the Department of Energy.
(C) At the time an invention is disclosed in accordance with
paragraph (c)(1)(A) of this clause, or within 90 days thereafter, the
contractor will submit a written statement as to whether or not the
invention occurred under a naval nuclear propulsion or weapons-related
program of the Department of Energy. If this statement is not filed
within this time, paragraph (c)(1)(B) of this clause will apply in lieu
of paragraphs (c)(2) and (3) of this clause. The contractor statement
will be deemed conclusive unless, within 60 days thereafter, the
Contracting Officer disagrees in writing, in which case the
determination of the Contracting Officer will be deemed conclusive
unless the contractor files a claim under the Contract Disputes Act
within 60 days after the Contracting Officer's determination. Pending
resolution of the matter, the invention will be subject to paragraph
(c)(1)(B) of this clause.
(3) Paragraph (k)(3) of the clause in Sec.401.14 will be modified
as prescribed at Sec.401.5(g).
(d) When a funding agreement involves a series of separate task
orders, an agency may apply the exceptions at paragraph (a)(2) or (3) of
this section to individual task orders, and it may structure the
contract so that modified patent rights provisions will apply to the
task order even though either the standard clause at Sec.401.14 or the
modified clause as described in paragraph (c) of this section is
applicable to the remainder of the work. Agencies are authorized to
negotiate such modified provisions with respect to task orders added to
a funding agreement after its initial award.
(e) Before utilizing any of the exceptions in Sec.401.3(a) of this
section, the agency shall prepare a written determination, including a
statement of facts supporting the determination, that the conditions
identified in the exception exist. A separate statement of facts shall
be prepared for each exceptional circumstances determination, except
that in appropriate cases a single determination may apply to both a
funding agreement and any subcontracts issued under it or to any funding
agreement to which such an exception is applicable. In cases when Sec.
401.3(a)(2) is used, the determination shall also include an analysis
justifying the determination. This analysis should address with
specificity how the alternate provisions will better achieve the
objectives set forth in 35 U.S.C. 200. A copy of each determination,
statement of facts, and, if applicable, analysis shall be promptly
provided to the contractor or prospective contractor along with a
notification to the contractor or prospective contractor of its rights
to appeal the determination of the exception under 35 U.S.C. 202(b)(4)
and Sec.401.4 of this part.
(f) Except for determinations under Sec.401.3(a)(3), the agency
shall also provide copies of each determination, statement of fact, and
analysis to the Secretary. These shall be sent within 30 days after the
award of the funding agreement to which they pertain. Copies shall also
be sent to the Chief Counsel for Advocacy of the Small Business
Administration if the funding agreement is with a small business firm.
If the Secretary of Commerce believes that any individual determination
or pattern of determinations is contrary to the policies and objectives
of this chapter or otherwise not in conformance with this chapter, the
Secretary shall so advise the head of the agency concerned and the
Administrator of the Office of Federal Procurement Policy and recommend
corrective actions.
(g) To assist the Comptroller General of the United States to
accomplish his or her responsibilities under 35 U.S.C. 202, each Federal
agency that enters into any funding agreements with nonprofit
organizations or small business firms shall accumulate and, at the
request of the Comptroller General, provide the Comptroller General or
his or her duly authorized representative the total number of prime
agreements entered into with small business firms or nonprofit
organizations that contain the patent rights clause in this part or
under OMB Circular A-124 for each fiscal year beginning with October 1,
1982.
(h) A prospective contractor may be required by an agency to certify
that it
[[Page 924]]
is either a small business firm or a nonprofit organization. If the
agency has reason to question the status of the prospective contractor,
it may require the prospective contractor to furnish evidence to
establish its status.
(i) When an agency exercises the exception at paragraph (a)(5) of
this section, replace paragraph (b) of the basic clause in Sec.401.14
with the following paragraphs (b)(1) and (2):
(b) Allocation of principal rights. (1) The Contractor may retain
the entire right, title, and interest throughout the world to each
subject invention subject to the provisions of this clause, including
paragraph (b)(2) of this clause, and 35 U.S.C. 203. With respect to any
subject invention in which the Contractor retains title, the Federal
Government shall have a nonexclusive, nontransferable, irrevocable,
paid-up license to practice or have practiced for or on behalf of the
United States the subject invention throughout the world.
(2) If the Contractor performs services at a Government owned and
operated laboratory or at a Government owned and contractor operated
laboratory directed by the Government to fulfill the Government's
obligations under a Cooperative Research and Development Agreement
(CRADA) authorized by 15 U.S.C. 3710a, the Government may require the
Contractor to negotiate an agreement with the CRADA collaborating party
or parties regarding the allocation of rights to any subject invention
the Contractor makes, solely or jointly, under the CRADA. The agreement
shall be negotiated prior to the Contractor undertaking the CRADA work
or, with the permission of the Government, upon the identification of a
subject invention. In the absence of such an agreement, the Contractor
agrees to grant the collaborating party or parties an option for a
license in its inventions of the same scope and terms set forth in the
CRADA for inventions made by the Government.
[52 FR 8554, Mar. 18, 1987, as amended at 69 FR 17301, Apr. 2, 2004; 83
FR 15959, Apr. 13, 2018]
Sec.401.4 Contractor appeals of exceptions.
(a) In accordance with 35 U.S.C. 202(b)(4) a contractor has the
right to an administrative review of a determination to use one of the
exceptions at Sec.401.3(a)(1) through (6) if the contractor believes
that a determination is either contrary to the policies and objectives
of this chapter or constitutes an abuse of discretion by the agency.
Paragraph (b) of this section specifies the procedures to be followed by
contractors and agencies in such cases. The assertion of such a claim by
the contractor shall not be used as a basis for withholding or delaying
the award of a funding agreement or for suspending performance under an
award. Pending final resolution of the claim the contract may be issued
with the patent rights provision proposed by the agency; however, should
the final decision be in favor of the contractor, the funding agreement
will be amended accordingly and the amendment made retroactive to the
effective date of the funding agreement.
(b)(1) A contractor may appeal a determination by providing written
notice to the agency within 30 working days from the time it receives a
copy of the agency's determination, or within such longer time as an
agency may specify in its regulations. The contractor's notice should
specifically identify the basis for the appeal.
(2) The appeal shall be decided by the head of the agency or by his/
her designee who is at a level above the person who made the
determination. If the notice raises a genuine dispute over the material
facts, the head of the agency or the designee shall undertake, or refer
the matter for, fact-finding.
(3) Fact-finding shall be conducted in accordance with procedures
established by the agency. Such procedures shall be as informal as
practicable and be consistent with principles of fundamental fairness.
The procedures should afford the contractor the opportunity to appear
with counsel, submit documentary evidence, present witnesses and
confront such persons as the agency may rely upon. A transcribed record
shall be made and shall be available at cost to the contractor upon
request. The requirement for a transcribed record may be waived by
mutual agreement of the contractor and the agency.
(4) The official conducting the fact-finding shall prepare or adopt
written findings of fact and transmit them to the head of the agency or
designee promptly after the conclusion of the fact-finding proceeding
along with a recommended decision. A copy of the findings of fact and
recommended decision shall be sent to the contractor by registered or
certified mail.
[[Page 925]]
(5) Fact-finding should be completed within 45 working days from the
date the agency receives the contractor's written notice.
(6) When fact-finding has been conducted, the head of the agency or
designee shall base his or her decision on the facts found, together
with any argument submitted by the contractor, agency officials or any
other information in the administrative record. In cases referred for
fact-finding, the agency head or the designee may reject only those
facts that have been found to be clearly erroneous, but must explicitly
state the rejection and indicate the basis for the contrary finding. The
agency head or the designee may hear oral arguments after fact-finding
provided that the contractor or contractor's attorney or representative
is present and given an opportunity to make arguments and rebuttal. The
decision of the agency head or the designee shall be in writing and, if
it is unfavorable to the contractor shall include an explanation of the
basis of the decision. The decision of the agency or designee shall be
made within 30 working days after fact-finding or, if there was no fact-
finding, within 45 working days from the date the agency received the
contractor's written notice. A contractor adversely affected by a
determination under this section may, at any time within sixty days
after the determination is issued, file a petition in the United States
Claims Court, which shall have jurisdiction to determine the appeal on
the record and to affirm, reverse, remand, or modify as appropriate, the
determination of the Federal agency.
[52 FR 8554, Mar. 18, 1987, as amended at 83 FR 15960, Apr. 13, 2018]
Sec.401.5 Modification and tailoring of clauses.
(a) Agencies should complete the blank in paragraph (g)(2) of the
clauses at Sec.401.14 in accordance with their own or applicable
government-wide regulations such as the Federal Acquisition Regulation.
In funding agreements, agencies wishing to apply the same clause to all
subcontractors as is applied to the contractor may delete paragraph
(g)(2) of the clause in Sec.401.14 and delete the words ``to be
performed by a small business firm or domestic nonprofit organization''
from paragraph (g)(1). Also, if the funding agreement is a grant or
cooperative agreement, paragraph (g)(3) of the clause may be deleted.
When either paragraph (g)(2) of the clause in Sec.401.14 or paragraphs
(g)(2) and (3) of the clause in Sec.401.14 are deleted, the remaining
paragraph or paragraphs should be renumbered appropriately.
(b) Agencies should complete paragraph (l), ``Communications'', at
the end of the clauses at Sec.401.14 by designating a central point of
contact for communications on matters relating to the clause. Additional
instructions on communications may also be included in paragraph (l) of
the clause in Sec.401.14.
(c) Agencies may replace the italicized words and phrases in the
clause at Sec.401.14 with those appropriate to the particular funding
agreement. For example, ``contractor'' could be replaced by ``grantee.''
Depending on its use, ``agency'' or ``Federal agency'' can be replaced
either by the identification of the agency or by the specification of
the particular office or official within the agency.
(d)(1) When the agency head or duly authorized designee determines
at the time of contracting that it would be in the national interest to
acquire the right to sublicense foreign governments, their nationals, or
international organizations in accordance with any existing treaty or
international agreement, a sentence may be added at the end of paragraph
(b) of the clause at Sec.401.14 as follows:
This license will include the right of the government to sublicense
foreign governments, their nationals, and international organizations,
in accordance with the following treaties or international agreements:
________.
(2) The blank in the added text in paragraph (d)(1) of this section
should be completed with the names of applicable existing treaties or
international agreements, including agreements of cooperation, and
military agreements relating to weapons development and production. The
added language is not intended to encompass treaties or other agreements
that are in effect on the date of the award but which are not listed.
Alternatively, agencies may use substantially similar language relating
[[Page 926]]
the government's rights to specific treaties or other agreements
identified elsewhere in the funding agreement. The language may also be
modified to make clear that the rights granted to the foreign
government, and its nationals or an international organization may be
for additional rights beyond a license or sublicense if so required by
the applicable treaty or other international agreement. For example, in
some cases exclusive licenses or even the assignment of title to the
foreign country involved might be required. Agencies may also modify the
added language to provide for the direct licensing by the contractor of
the foreign government or international organization.
(e) If the funding agreement involves performance over an extended
period of time, such as the typical funding agreement for the operation
of a government-owned facility, the following language may also be
added:
The agency reserves the right to unilaterally amend this funding
agreement to identify specific treaties or international agreements
entered into or to be entered into by the government after the effective
date of this funding agreement and effectuate those license or other
rights which are necessary for the government to meet its obligations to
foreign governments, and international organizations under such treaties
or international agreements with respect to subject inventions made
after the date of the amendment.
(f) Agencies may add additional paragraphs to paragraph (f) of the
clauses at Sec.401.14 to require the contractor to do one or more of
the following:
(1) Provide a report prior to the close-out of a funding agreement
listing all subject inventions or stating that there were none.
(2) Provide, upon request, the filing date, patent application
number and title; a copy of the patent application; and patent number
and issue date for any subject invention in any country in which the
contractor has applied for a patent.
(3) Provide periodic (but no more frequently than annual) listings
of all subject inventions which were disclosed to the agency during the
period covered by the report.
(g) If the contract is with a nonprofit organization and is for the
operation of a government-owned, contractor-operated facility, the
following will be substituted for the text of paragraph (k)(3) of the
clause at Sec.401.14:
After payment of patenting costs, licensing costs, payments to
inventors, and other expenses incidental to the administration of
subject inventions, the balance of any royalties or income earned and
retained by the contractor during any fiscal year on subject inventions
under this or any successor contract containing the same requirement, up
to any amount equal to five percent of the budget of the facility for
that fiscal year, shall be used by the contractor for scientific
research, development, and education consistent with the research and
development mission and objectives of the facility, including activities
that increase the licensing potential of other inventions of the
facility. If the balance exceeds five percent, 15 percent of the excess
above five percent shall be paid by the contractor to the Treasury of
the United States and the remaining 85 percent shall be used by the
contractor only for the same purposes as described in the preceding
sentence. To the extent it provides the most effective technology
transfer, the licensing of subject inventions shall be administered by
contractor employees on location at the facility.
(h) If the contract is for the operation of a government-owned
facility, agencies may add paragraph (f)(5) to the clause at Sec.
401.14 with the following text:
The contractor shall establish and maintain active and effective
procedures to ensure that subject inventions are promptly identified and
timely disclosed and shall submit a description of the procedures to the
contracting officer so that the contracting officer may evaluate and
determine their effectiveness.
[83 FR 15960, Apr. 13, 2018]
Sec.401.6 Exercise of march-in rights.
(a) The following procedures shall govern the exercise of the march-
in rights of the agencies set forth in 35 U.S.C. 203 and paragraph (j)
of the clause at Sec.401.14.
(b) Whenever an agency receives information that it believes might
warrant the exercise of march-in rights, before initiating any march-in
proceeding, it shall notify the contractor in writing of the information
and request informal written or oral comments from the contractor as
well as information relevant to the matter. In the absence of any
comments from the
[[Page 927]]
contractor within 30 days, the agency may, at its discretion, proceed
with the procedures below. If a comment is received within 30 days, or
later if the agency has not initiated the procedures below, then the
agency shall, within 60 days after it receives the comment, either
initiate the procedures below or notify the contractor, in writing, that
it will not pursue march-in rights on the basis of the available
information.
(c) A march-in proceeding shall be initiated by the issuance of a
written notice by the agency to the contractor and its assignee or
exclusive licensee, as applicable and if known to the agency, stating
that the agency is considering the exercise of march-in rights. The
notice shall state the reasons for the proposed march-in in terms
sufficient to put the contractor on notice of the facts upon which the
action would be based and shall specify the field or fields of use in
which the agency is considering requiring licensing. The notice shall
advise the contractor (assignee or exclusive licensee) of its rights, as
set forth in this section and in any supplemental agency regulations.
The determination to exercise march-in rights shall be made by the head
of the agency or his or her designee.
(d) Within 30 days after the receipt of the written notice of march-
in, the contractor (assignee or exclusive licensee) may submit in
person, in writing, or through a representative, information or argument
in opposition to the proposed march-in, including any additional
specific information which raises a genuine dispute over the material
facts upon which the march-in is based. If the information presented
raises a genuine dispute over the material facts, the head of the agency
or designee shall undertake or refer the matter to another official for
fact-finding.
(e) Fact-finding shall be conducted in accordance with the
procedures established by the agency. Such procedures shall be as
informal as practicable and be consistent with principles of fundamental
fairness. The procedures should afford the contractor the opportunity to
appear with counsel, submit documentary evidence, present witnesses and
confront such persons as the agency may present. A transcribed record
shall be made and shall be available at cost to the contractor upon
request. The requirement for a transcribed record may be waived by
mutual agreement of the contractor and the agency. Any portion of the
march-in proceeding, including a fact-finding hearing that involves
testimony or evidence relating to the utilization or efforts at
obtaining utilization that are being made by the contractor, its
assignee, or licensees shall be closed to the public, including
potential licensees. In accordance with 35 U.S.C. 202(c)(5), agencies
shall not disclose any such information obtained during a march-in
proceeding to persons outside the government except when such release is
authorized by the contractor (assignee or licensee).
(f) The official conducting the fact-finding shall prepare or adopt
written findings of fact and transmit them to the head of the agency or
designee promptly after the conclusion of the fact-finding proceeding
along with a recommended determination. A copy of the findings of fact
shall be sent to the contractor (assignee or exclusive licensee) by
registered or certified mail. The contractor (assignee or exclusive
licensee) and agency representatives will be given 30 days to submit
written arguments to the head of the agency or designee; and, upon
request by the contractor oral arguments will be held before the agency
head or designee that will make the final determination.
(g) In cases in which fact-finding has been conducted, the head of
the agency or designee shall base his or her determination on the facts
found, together with any other information and written or oral arguments
submitted by the contractor (assignee or exclusive licensee) and agency
representatives, and any other information in the administrative record.
The consistency of the exercise of march-in rights with the policy and
objectives of 35 U.S.C. 200 shall also be considered. In cases referred
for fact-finding, the head of the agency or designee may reject only
those facts that have been found to be clearly erroneous, but must
explicitly state the rejection and indicate the basis for the contrary
finding. Written notice of the determination whether march-in rights
will be exercised shall
[[Page 928]]
be made by the head of the agency or designee and sent to the contractor
(assignee of exclusive licensee) by certified or registered mail within
90 days after the completion of fact-finding or 90 days after oral
arguments, whichever is later, or the proceedings will be deemed to have
been terminated and thereafter no march-in based on the facts and
reasons upon which the proceeding was initiated may be exercised.
(h) An agency may, at any time, terminate a march-in proceeding if
it is satisfied that it does not wish to exercise march-in rights.
(i) The procedures of this part shall also apply to the exercise of
march-in rights against inventors receiving title to subject inventions
under 35 U.S.C. 202(d) and, for that purpose, the term ``contractor'' as
used in this section shall be deemed to include the inventor.
(j) An agency determination unfavorable to the contractor (assignee
or exclusive licensee) shall be held in abeyance pending the exhaustion
of appeals or petitions filed under 35 U.S.C. 203(2).
(k) For purposes of this section the term exclusive licensee
includes a partially exclusive licensee.
(l) Agencies are authorized to issue supplemental procedures not
inconsistent with this part for the conduct of march-in proceedings.
Sec.401.7 Small business preference.
(a) Paragraph (k)(4) of the clauses at Sec.401.14 Implements the
small business preference requirement of 35 U.S.C. 202(c)(7)(D).
Contractors are expected to use efforts that are reasonable under the
circumstances to attract small business licensees. They are also
expected to give small business firms that meet the standard outlined in
the clause a preference over other applicants for licenses. What
constitutes reasonable efforts to attract small business licensees will
vary with the circumstances and the nature, duration, and expense of
efforts needed to bring the invention to the market. Paragraph (k)(4) is
not intended, for example, to prevent nonprofit organizations from
providing larger firms with a right of first refusal or other options in
inventions that relate to research being supported under long-term or
other arrangements with larger companies. Under such circumstances it
would not be resonable to seek and to give a preference to small
business licensees.
(b) Small business firms that believe a nonprofit organization is
not meeting its obligations under the clause may report their concerns
to the funding agency identified at Sec.401.14(l), and following
receipt of the funding agency's initial response to their concerns or,
if no initial funding agency response is received within 90 days from
the date their concerns were reported to the funding agency, may
thereafter report their concerns, together with any response from the
funding agency, to the Secretary. To the extent deemed appropriate, the
Secretary, in consultation with the funding agency, will undertake
informal investigation of the concern, and, if appropriate, enter into
discussions or negotiations with the nonprofit organization to the end
of improving its efforts in meeting its obligations under the clause.
However, in no event will the Secretary intervene in ongoing
negotiations or contractor decisions concerning the licensing of a
specific subject invention. All investigations, discussions, and
negotiations of the Secretary described in this paragraph (b) will be in
coordination with other interested agencies, including the funding
agency and the Small Business Administration. In the case of a contract
for the operation of a government-owned, contractor operated research or
production facility, the Secretary will coordinate with the agency
responsible for the facility prior to any discussions or negotiations
with the contractor.
[52 FR 8554, Mar. 18, 1987, as amended at 83 FR 15960, Apr. 13, 2018]
Sec.401.8 Reporting on utilization of subject inventions.
(a) Paragraph (h) of the clauses at Sec.401.14 and its counterpart
in the clause at Attachment A to OMB Circular A-124 provides that
agencies have the right to receive periodic reports from the contractor
on utilization of inventions. Agencies exercising this right should
accept such information, to the extent feasible, in the format that the
contractor normally prepares
[[Page 929]]
it for its own internal purposes. The prescription of forms should be
avoided. However, any forms or standard questionnaires that are adopted
by an agency for this purpose must comply with the requirements of the
Paperwork Reduction Act. Copies shall be sent to the Secretary.
(b) In accordance with 35 U.S.C. 202(c)(5) and the terms of the
clauses at Sec.401.14, agencies shall not disclose such information to
persons outside the government. Contractors will continue to provide
confidential markings to help prevent inadvertent release outside the
agency.
Sec.401.9 Retention of rights by contractor employee inventor.
Agencies which allow an employee/inventor of the contractor to
retain rights to a subject invention made under a funding agreement with
a small business firm or nonprofit organization contractor, as
authorized by 35 U.S.C. 202(d), will impose upon the inventor at least
those conditions that would apply to a small business firm contractor
under paragraphs (d)(1) and (3); (f)(4); (h); (i); and (j) of the clause
at Sec.401.14.
[52 FR 8554, Mar. 18, 1987, as amended at 83 FR 15960, Apr. 13, 2018]
Sec.401.10 Government assignment to contractor of rights in invention
of government employee.
(a) In any case when a Federal employee is a co-inventor of any
invention made under a funding agreement with a contractor:
(1) If the Federal agency employing such co-inventor transfers or
reassigns to the contractor the right it has acquired in the subject
invention from its employee as authorized by 35 U.S.C. 202(e), the
assignment will be made subject to the patent rights clause of the
contractor's funding agreement.
(2) The Federal agency employing such co-inventor, in consultation
with the contractor, may submit an initial patent application, provided
that the contractor retains the right to elect to retain title pursuant
to 35 U.S.C. 202(a).
(3) When a Federal employee is a co-inventor of a subject invention
developed with contractor-employed co-inventors under a funding
agreement from another agency:
(i) The funding agency will notify the agency employing a Federal
co-inventor of any report of invention and whether the contractor elects
to retain title.
(ii) If the contractor does not elect to retain title to the subject
invention, the funding agency must promptly provide notice to the agency
employing a Federal co-inventor, and to the extent practicable, at least
60 days before any statutory bar date.
(iii) Upon notification by the funding agency of a subject invention
in which the contractor has not elected to retain title, the agency
employing a Federal co-inventor must determine if there is a government
interest in patenting the invention and will notify the funding agency
of its determination.
(iv) If the agency employing a Federal co-inventor determines there
is a government interest in patenting the subject invention in which the
contractor has not elected to retain title, the funding agency must
provide administrative assistance (but is not required to provide
financial assistance) to the agency employing a Federal co-inventor in
acquiring rights from the contractor in order to file an initial patent
application.
(v) The agency employing a Federal co-inventor has priority for
patenting over funding agencies that do not have a Federal co-inventor
when the contractor has not elected to retain title.
(vi) When the contractor has not elected to retain title, the
funding agency and the agency employing a Federal co-inventor shall
consult in order to ensure that the intent of the programmatic
objectives conducted under the funding agreement is represented in any
patenting decisions. The agency employing a Federal co-inventor may
transfer patent management responsibilities to the funding agency.
(4) Federal agencies employing such co-inventors may enter into an
agreement with a contractor when an agency determines it is a suitable
and necessary step to protect and administer rights on behalf of the
Federal Government, pursuant to 35 U.S.C. 202(e).
[[Page 930]]
(5) Federal agencies employing such co-inventors will retain all
ownership rights to which they are otherwise entitled if the contractor
elects to retain title to the subject invention.
(b) Agencies may add additional conditions as long as they are
consistent with 35 U.S.C. 201-206.
(c) Nothing in this section shall supersede any existing inter-
institutional agreements between a contractor and a Federal agency for
the management of jointly-owned subject inventions.
[83 FR 15961, Apr. 13, 2018]
Sec.401.11 Appeals.
(a) As used in this section, the term standard clause means the
clause at Sec.401.14 of this part and the clauses previously
prescribed by either OMB Circular A-124 or OMB Bulletin 81-22.
(b) The agency official initially authorized to take any of the
following actions shall provide the contractor with a written statement
of the basis for his or her action at the time the action is taken,
including any relevant facts that were relied upon in taking the action.
(1) A refusal to grant an extension under paragraph (c)(4) of the
standard clauses.
(2) A request for a conveyance of title under paragraph (d) of the
standard clauses.
(3) A refusal to grant a waiver under paragraph (i) of the standard
clauses.
(4) A refusal to approve an assignment under paragraph (k)(1) of the
standard clauses.
(5) A refusal to grant an extension of the exclusive license period
under paragraph (k)(2) of the clauses prescribed by either OMB Circular
A-124 or OMB Bulletin 81-22.
(c) Each agency shall establish and publish procedures under which
any of the agency actions listed in paragraph (b) of this section may be
appealed to the head of the agency or designee. Review at this level
shall consider both the factual and legal basis for the actions and its
consistency with the policy and objectives of 35 U.S.C. 200-206.
(d) Appeals procedures established under paragraph (c) of this
section shall include administrative due process procedures and
standards for fact-finding at least comparable to those set forth in
Sec.401.6 (e) through (g) whenever there is a dispute as to the
factual basis for an agency request for a conveyance of title under
paragraph (d) of the standard clause, including any dispute as to
whether or not an invention is a subject invention.
(e) To the extent that any of the actions described in paragraph (b)
of this section are subject to appeal under the Contract Dispute Act,
the procedures under the Act will satisfy the requirements of paragraphs
(c) and (d) of this section.
Sec.401.12 Licensing of background patent rights to third parties.
(a) A funding agreement with a small business firm or a domestic
nonprofit organization will not contain a provision allowing a Federal
agency to require the licensing to third parties of inventions owned by
the contractor that are not subject inventions unless such provision has
been approved by the agency head and a written justification has been
signed by the agency head. Any such provision will clearly state whether
the licensing may be required in connection with the practice of a
subject invention, a specifically identified work object, or both. The
agency head may not delegate the authority to approve such provisions or
to sign the justification required for such provisions.
(b) A Federal agency will not require the licensing of third parties
under any such provision unless the agency head determines that the use
of the invention by others is necessary for the practice of a subject
invention or for the use of a work object of the funding agreement and
that such action is necessary to achieve practical application of the
subject invention or work object. Any such determination will be on the
record after an opportunity for an agency hearing. The contractor shall
be given prompt notification of the determination by certified or
registered mail. Any action commenced for judicial review of such
determination shall be brought within sixty days after notification of
such determination.
[[Page 931]]
Sec.401.13 Administration of patent rights clauses.
(a) In the event a subject invention is made under funding
agreements of more than one agency, at the request of the contractor or
on their own initiative the agencies shall designate one agency as
responsible for administration of the rights of the government in the
invention.
(b) Agencies shall promptly grant, unless there is a significant
reason not to, a request by a nonprofit organization under paragraph
(k)(2) of the clauses prescribed by either OMB Circular A-124 or OMB
Bulletin 81-22 inasmuch as 35 U.S.C. 202(c)(7) has since been amended to
eliminate the limitation on the duration of exclusive licenses.
Similarly, unless there is a significant reason not to, agencies shall
promptly approve an assignment by a nonprofit organization to an
organization which has as one of its primary functions the management of
inventions when a request for approval has been necessitated under
paragraph (k)(1) of the clauses prescribed by either OMB Circular A-124
or OMB Bulletin 81-22 because the patent management organization is
engaged in or holds a substantial interest in other organizations
engaged in the manfacture or sale of products or the use of processes
that might utilize the invention or be in competition with embodiments
of the invention. As amended, 35 U.S.C. 202(c)(7) no longer contains
this limitation. The policy of this subsection should also be followed
in connection with similar approvals that may be required under
Institutional Patent Agreements, other patent rights clauses, or waivers
that predate Chapter 18 of Title 35, United States Code.
(c) The President's Patent Policy Memorandum of February 18, 1983,
states that agencies should protect the confidentiality of invention
disclosure, patent applications, and utilization reports required in
performance or in consequence of awards to the extent permitted by 35
U.S.C. 205 or other applicable laws. The following requirements should
be followed for funding agreements covered by and predating this part
401.
(1) To the extent authorized by 35 U.S.C. 205, agencies shall not
disclose to third parties pursuant to requests under the Freedom of
Information Act (FOIA) any information disclosing a subject invention
for a reasonable time in order for a patent application to be filed.
With respect to subject inventions of contractors that are small
business firms or nonprofit organizations, a reasonable time shall be
the time during which an initial patent application may be filed under
paragraph (c) of the standard clause found at Sec.401.14 or such other
clause may be used in the funding agreement. However, an agency may
disclose such subject inventions under the FOIA, at its discretion,
after a contractor has elected not to retain title or after the time in
which the contractor is required to make an election if the contractor
has not made an election within that time. Similarly, an agency may
honor a FOIA request at its discretion if it finds that the same
information has previously been published by the inventor, contractor,
or otherwise. If the agency plans to file itself when the contractor has
not elected title, it may, of course, continue to avail itself of the
authority of 35 U.S.C. 205.
(2) In accordance with 35 U.S.C. 205, agencies shall not disclose or
release, pursuant to requests under the Freedom of Information Act or
otherwise, copies of any document which the agency obtained under the
clause in Sec.401.14 which is part of an application for patent with
the U.S. Patent and Trademark Office or any foreign patent office filed
by the contractor (or its assignees, licensees, or employees) on a
subject invention to which the contractor has elected to retain title.
This prohibition does not extend to disclosure to other government
agencies or contractors of government agencies under an obligation to
maintain such information in confidence. This prohibition does not apply
to documents published by the U.S. Patent and Trademark Office or any
foreign patent office.
(3) A number of agencies have policies to encourage public
dissemination of the results of work supported by the agency through
publication in government or other publications of technical
[[Page 932]]
reports of contractors or others. In recognition of the fact that such
publication, if it included descriptions of a subject invention could
create bars to obtaining patent protection, it is the policy of the
executive branch that agencies will not include in such publication
programs copies of disclosures of inventions submitted by small business
firms or nonprofit organizations, pursuant to paragraph (c) of the
standard clause found at Sec.401.14, except under the same
circumstances under which agencies are authorized to release such
information pursuant to FOIA requests under paragraph (c)(1) of this
section agencies may publish such disclosures.
(4) Nothing in this paragraph is intended to preclude agencies from
including in the publication activities described in the first sentence
of paragraph (c)(3), the publication of materials describing a subject
invention to the extent such materials were provided as part of a
technical report or other submission of the contractor which were
submitted independently of the requirements of the patent rights
provisions of the contract. However, if a small business firm or
nonprofit organization notifies the agency that a particular report or
other submission contains a disclosure of a subject invention to which
it has elected title or may elect title, the agency shall use reasonable
efforts to restrict its publication of the material for six months from
date of its receipt of the report or submission or, if earlier, until
the contractor has filed an initial patent application. Agencies, of
course, retain the discretion to delay publication for additional
periods of time.
(5) Nothing in this paragraph is intended to limit the authority of
agencies provided in 35 U.S.C. 205 in circumstances not specifically
described in this paragraph.
[52 FR 8554, Mar. 18, 1987, as amended at 60 FR 41812, Aug. 14, 1995; 83
FR 15961, Apr. 13, 2018]
Sec.401.14 Standard patent rights clauses.
The following is the standard patent rights clause to be used as
specified in Sec.401.3(a):
Standard Patent Rights
(a) Definitions
(1) Invention means any invention or discovery which is or may be
patentable or otherwise protectable under Title 35 of the United States
Code, or any novel variety of plant which is or may be protected under
the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).
(2) Subject invention means any invention of the contractor
conceived or first actually reduced to practice in the performance of
work under this contract, provided that in the case of a variety of
plant, the date of determination (as defined in section 41(d) of the
Plant Variety Protection Act, 7 U.S.C. 2401(d)) must also occur during
the period of contract performance.
(3) Practical Application means to manufacture in the case of a
composition or product, to practice in the case of a process or method,
or to operate in the case of a machine or system; and, in each case,
under such conditions as to establish that the invention is being
utilized and that its benefits are, to the extent permitted by law or
government regulations, available to the public on reasonable terms.
(4) Made when used in relation to any invention means the conception
or first actual reduction to practice of such invention.
(5) Small Business Firm means a small business concern as defined at
section 2 of Pub. L. 85-536 (15 U.S.C. 632) and implementing regulations
of the Administrator of the Small Business Administration. For the
purpose of this clause, the size standards for small business concerns
involved in government procurement and subcontracting at 13 CFR 121.3-8
and 13 CFR 121.3-12, respectively, will be used.
(6) Nonprofit Organization means a university or other institution
of higher education or an organization of the type described in section
501(c)(3) of the Internal Revenue Code of 1954 (26 U.S.C. 501(c) and
exempt from taxation under section 501(a) of the Internal Revenue Code
(25 U.S.C. 501(a)) or any nonprofit scientific or educational
organization qualified under a state nonprofit organization statute.
(7) The term statutory period means the one-year period before the
effective filing date of a claimed invention during which exceptions to
prior art exist per 35 U.S.C. 102(b) as amended by the Leahy-Smith
America Invents Act, Public Law 112-29.
(8) The term contractor means any person, small business firm or
nonprofit organization, or, as set forth in section 1, paragraph (b)(4)
of Executive Order 12591, as amended, any business firm regardless of
size, which is a party to a funding agreement.
[[Page 933]]
(b) Allocation of Principal Rights
The Contractor may retain the entire right, title, and interest
throughout the world to each subject invention subject to the provisions
of this clause and 35 U.S.C. 203. With respect to any subject invention
in which the Contractor retains title, the Federal government shall have
a nonexclusive, nontransferable, irrevocable, paid-up license to
practice or have practiced for or on behalf of the United States the
subject invention throughout the world.
(c) Invention Disclosure, Election of Title and Filing of Patent
Application by Contractor
(1) The contractor will disclose each subject invention to the
Federal Agency within two months after the inventor discloses it in
writing to contractor personnel responsible for patent matters. The
disclosure to the agency shall be in the form of a written report and
shall identify the contract under which the invention was made and the
inventor(s). It shall be sufficiently complete in technical detail to
convey a clear understanding to the extent known at the time of the
disclosure, of the nature, purpose, operation, and the physical,
chemical, biological or electrical characteristics of the invention. The
disclosure shall also identify any publication, on sale or public use of
the invention and whether a manuscript describing the invention has been
submitted for publication and, if so, whether it has been accepted for
publication at the time of disclosure. In addition, after disclosure to
the agency, the Contractor will promptly notify the agency of the
acceptance of any manuscript describing the invention for publication or
of any on sale or public use planned by the contractor.
(2) The contractor will elect in writing whether or not to retain
title to any such invention by notifying the Federal agency within two
years of disclosure to the Federal agency. However, in any case where a
patent, a printed publication, public use, sale, or other availability
to the public has initiated the one year statutory period wherein valid
patent protection can still be obtained in the United States, the period
for election of title may be shortened by the agency to a date that is
no more than 60 days prior to the end of the statutory period.
(3) The contractor will file its initial patent application on a
subject invention to which it elects to retain title within one year
after election of title or, if earlier, prior to the end of any
statutory period wherein valid patent protection can be obtained in the
United States after a publication, on sale, or public use. If the
contractor files a provisional application as its initial patent
application, it shall file a non-provisional application within 10
months of the filing of the provisional application. The contractor will
file patent applications in additional countries or international patent
offices within either ten months of the first filed patent application
or six months from the date permission is granted by the Commissioner of
Patents to file foreign patent applications where such filing has been
prohibited by a Secrecy Order.
(4) For any subject invention with Federal agency and contractor co-
inventors, where the Federal agency employing such co-inventor
determines that it would be in the interest of the government, pursuant
to 35 U.S.C. 207(a)(3), to file an initial patent application on the
subject invention, the Federal agency employing such co-inventor, at its
discretion and in consultation with the contractor, may file such
application at its own expense, provided that the contractor retains the
ability to elect title pursuant to 35 U.S.C. 202(a).
(5) Requests for extension of the time for disclosure, election, and
filing under paragraphs (1), (2), and (3) of this clause may, at the
discretion of the Federal agency, be granted. When a contractor has
requested an extension for filing a non-provisional application after
filing a provisional application, a one-year extension will be granted
unless the Federal agency notifies the contractor within 60 days of
receiving the request.
(d) Conditions When the Government May Obtain Title
The contractor will convey to the Federal agency, upon written
request, title to any subject invention--
(1) If the contractor fails to disclose or elect title to the
subject invention within the times specified in paragraph (c) of this
clause, or elects not to retain title.
(2) In those countries in which the contractor fails to file patent
applications within the times specified in paragraph (c) of this clause;
provided, however, that if the contractor has filed a patent application
in a country after the times specified in paragraph (c) of this clause,
but prior to its receipt of the written request of the Federal agency,
the contractor shall continue to retain title in that country.
(3) In any country in which the contractor decides not to continue
the prosecution of any non-provisional patent application for, to pay a
maintenance, annuity or renewal fee on, or to defend in a reexamination
or opposition proceeding on, a patent on a subject invention.
(e) Minimum Rights to Contractor and Protection of the Contractor Right
to File
(1) The contractor will retain a nonexclusive royalty-free license
throughout the world in each subject invention to which the Government
obtains title, except if the contractor fails to disclose the invention
within
[[Page 934]]
the times specified in (c), above. The contractor's license extends to
its domestic subsidiary and affiliates, if any, within the corporate
structure of which the contractor is a party and includes the right to
grant sublicenses of the same scope to the extent the contractor was
legally obligated to do so at the time the contract was awarded. The
license is transferable only with the approval of the Federal agency
except when transferred to the sucessor of that party of the
contractor's business to which the invention pertains.
(2) The contractor's domestic license may be revoked or modified by
the funding Federal agency to the extent necessary to achieve
expeditious practical application of the subject invention pursuant to
an application for an exclusive license submitted in accordance with
applicable provisions at 37 CFR part 404 and agency licensing
regulations (if any). This license will not be revoked in that field of
use or the geographical areas in which the contractor has achieved
practical application and continues to make the benefits of the
invention reasonably accessible to the public. The license in any
foreign country may be revoked or modified at the discretion of the
funding Federal agency to the extent the contractor, its licensees, or
the domestic subsidiaries or affiliates have failed to achieve practical
application in that foreign country.
(3) Before revocation or modification of the license, the funding
Federal agency will furnish the contractor a written notice of its
intention to revoke or modify the license, and the contractor will be
allowed thirty days (or such other time as may be authorized by the
funding Federal agency for good cause shown by the contractor) after the
notice to show cause why the license should not be revoked or modified.
The contractor has the right to appeal, in accordance with applicable
regulations in 37 CFR part 404 and agency regulations (if any)
concerning the licensing of Government-owned inventions, any decision
concerning the revocation or modification of the license.
(f) Contractor Action to Protect the Government's Interest
(1) The contractor agrees to execute or to have executed and
promptly deliver to the Federal agency all instruments necessary to (i)
establish or confirm the rights the Government has throughout the world
in those subject inventions to which the contractor elects to retain
title, and (ii) convey title to the Federal agency when requested under
paragraph (d) above and to enable the government to obtain patent
protection throughout the world in that subject invention.
(2) The contractor agrees to require, by written agreement, its
employees, other than clerical and nontechnical employees, to disclose
promptly in writing to personnel identified as responsible for the
administration of patent matters and in a format suggested by the
contractor each subject invention made under contract in order that the
contractor can comply with the disclosure provisions of paragraph (c) of
this clause, to assign to the contractor the entire right, title and
interest in and to each subject invention made under contract, and to
execute all papers necessary to file patent applications on subject
inventions and to establish the government's rights in the subject
inventions. This disclosure format should require, as a minimum, the
information required by paragraph (c)(1) of this clause. The contractor
shall instruct such employees through employee agreements or other
suitable educational programs on the importance of reporting inventions
in sufficient time to permit the filing of patent applications prior to
U.S. or foreign statutory bars.
(3) For each subject invention, the contractor will, no less than 60
days prior to the expiration of the statutory deadline, notify the
Federal agency of any decision: Not to continue the prosecution of a
non-provisional patent application; not to pay a maintenance, annuity or
renewal fee; not to defend in a reexamination or opposition proceeding
on a patent, in any country; to request, be a party to, or take action
in a trial proceeding before the Patent Trial and Appeals Board of the
U.S. Patent and Trademark Office, including but not limited to post-
grant review, review of a business method patent, inter partes review,
and derivation proceeding; or to request, be a party to, or take action
in a non-trial submission of art or information at the U.S. Patent and
Trademark Office, including but not limited to a pre-issuance
submission, a post-issuance submission, and supplemental examination.
(4) The contractor agrees to include, within the specification of
any United States patent applications and any patent issuing thereon
covering a subject invention, the following statement, ``This invention
was made with government support under (identify the contract) awarded
by (identify the Federal agency). The government has certain rights in
the invention.''
(g) Subcontracts
(1) The contractor will include this clause, suitably modified to
identify the parties, in all subcontracts, regardless of tier, for
experimental, developmental or research work to be performed by a
subcontractor.. The subcontractor will retain all rights provided for
the contractor in this clause, and the contractor will not, as part of
the consideration for awarding the subcontract, obtain rights in the
subcontractor's subject inventions.
(2) The contractor will include in all other subcontracts,
regardless of tier, for experimental developmental or research work the
[[Page 935]]
patent rights clause required by (cite section of agency implementing
regulations or FAR).
(3) In the case of subcontracts, at any tier, when the prime award
with the Federal agency was a contract (but not a grant or cooperative
agreement), the agency, subcontractor, and the contractor agree that the
mutual obligations of the parties created by this clause constitute a
contract between the subcontractor and the Federal agency with respect
to the matters covered by the clause; provided, however, that nothing in
this paragraph is intended to confer any jurisdiction under the Contract
Disputes Act in connection with proceedings under paragraph (j) of this
clause.
(h) Reporting on Utilization of Subject Inventions
The Contractor agrees to submit on request periodic reports no more
frequently than annually on the utilization of a subject invention or on
efforts at obtaining such utilization that are being made by the
contractor or its licensees or assignees. Such reports shall include
information regarding the status of development, date of first
commercial sale or use, gross royalties received by the contractor, and
such other data and information as the agency may reasonably specify.
The contractor also agrees to provide additional reports as may be
requested by the agency in connection with any march-in proceeding
undertaken by the agency in accordance with paragraph (j) of this
clause. As required by 35 U.S.C. 202(c)(5), the agency agrees it will
not disclose such information to persons outside the government without
permission of the contractor.
(i) Preference for United States Industry
Notwithstanding any other provision of this clause, the contractor
agrees that neither it nor any assignee will grant to any person the
exclusive right to use or sell any subject inventions in the United
States unless such person agrees that any products embodying the subject
invention or produced through the use of the subject invention will be
manufactured substantially in the United States. However, in individual
cases, the requirement for such an agreement may be waived by the
Federal agency upon a showing by the contractor or its assignee that
reasonable but unsuccessful efforts have been made to grant licenses on
similar terms to potential licensees that would be likely to manufacture
substantially in the United States or that under the circumstances
domestic manufacture is not commercially feasible.
(j) March-in Rights
The contractor agrees that with respect to any subject invention in
which it has acquired title, the Federal agency has the right in
accordance with the procedures in 37 CFR 401.6 and any supplemental
regulations of the agency to require the contractor, an assignee or
exclusive licensee of a subject invention to grant a nonexclusive,
partially exclusive, or exclusive license in any field of use to a
responsible applicant or applicants, upon terms that are reasonable
under the circumstances, and if the contractor, assignee, or exclusive
licensee refuses such a request the Federal agency has the right to
grant such a license itself if the Federal agency determines that:
(1) Such action is necessary because the contractor or assignee has
not taken, or is not expected to take within a reasonable time,
effective steps to achieve practical application of the subject
invention in such field of use.
(2) Such action is necessary to alleviate health or safety needs
which are not reasonably satisfied by the contractor, assignee or their
licensees;
(3) Such action is necessary to meet requirements for public use
specified by Federal regulations and such requirements are not
reasonably satisfied by the contractor, assignee or licensees; or
(4) Such action is necessary because the agreement required by
paragraph (i) of this clause has not been obtained or waived or because
a licensee of the exclusive right to use or sell any subject invention
in the United States is in breach of such agreement.
(k) Special Provisions for Contracts with Nonprofit Organizations
If the contractor is a nonprofit organization, it agrees that:
(1) Rights to a subject invention in the United States may not be
assigned without the approval of the Federal agency, except where such
assignment is made to an organization which has as one of its primary
functions the management of inventions, provided that such assignee will
be subject to the same provisions as the contractor;
(2) The contractor will share royalties collected on a subject
invention with the inventor, including Federal employee co-inventors
(when the agency deems it appropriate) when the subject invention is
assigned in accordance with 35 U.S.C. 202(e) and 37 CFR 401.10;
(3) The balance of any royalties or income earned by the contractor
with respect to subject inventions, after payment of expenses (including
payments to inventors) incidential to the administration of subject
inventions, will be utilized for the support of scientific research or
education; and
(4) It will make efforts that are reasonable under the circumstances
to attract licensees of subject inventions that are small business firms
and that it will give a preference to a small business firm when
licensing a subject invention if the contractor determines that the
small business firm has a plan or proposal for marketing the invention
which, if
[[Page 936]]
executed, is equally as likely to bring the invention to practical
application as any plans or proposals from applicants that are not small
business firms; provided, that the contractor is also satisfied that the
small business firm has the capability and resources to carry out its
plan or proposal. The decision whether to give a preference in any
specific case will be at the discretion of the contractor. However, the
contractor agrees that the Federal agency may review the contractor's
licensing program and decisions regarding small business applicants, and
the contractor will negotiate changes to its licensing policies,
procedures, or practices with the Federal agency when the Federal
agency's review discloses that the contractor could take reasonable
steps to implement more effectively the requirements of this paragraph
(k)(4). In accordance with 37 CFR 401.7, the Federal agency or the
contractor may request that the Secretary review the contractor's
licensing program and decisions regarding small business applicants.
(l) Communication
[Complete according to instructions at Sec.401.5(b)]
[52 FR 8554, Mar. 18, 1987, as amended at 69 FR 17301, Apr. 2, 2004; 83
FR 15961, Apr. 13, 2018]
Sec.401.15 Deferred determinations.
(a) This section applies to requests for greater rights in subject
inventions made by contractors when deferred determination provisions
were included in the funding agreement because one of the exceptions at
Sec.401.3(a) was applied, except that the Department of Energy is
authorized to process deferred determinations either in accordance with
its waiver regulations or this section. A contractor requesting greater
rights should include with its request information on its plans and
intentions to bring the invention to practical application. Within 90
days after receiving a request and supporting information, or sooner if
a statutory bar to patenting is imminent, the agency should seek to make
a determination. In any event, if a bar to patenting is imminent, unless
the agency plans to file on its own, it shall authorize the contractor
to file a patent application pending a determination by the agency. Such
a filing shall normally be at the contractor's own risk and expense.
However, if the agency subsequently refuses to allow the contractor to
retain title and elects to proceed with the patent application under
government ownership, it shall reimburse the contractor for the cost of
preparing and filing the patent application.
(b) If the circumstances of concerns which originally led the agency
to invoke an exception under Sec.401.3(a) are not applicable to the
actual subject invention or are no longer valid because of subsequent
events, the agency should allow the contractor to retain title to the
invention on the same conditions as would have applied if the standard
clause at Sec.401.14 had been used originally, unless it has been
licensed.
(c) If paragraph (b) is not applicable the agency shall make its
determination based on an assessment whether its own plans regarding the
invention will better promote the policies and objectives of 35 U.S.C.
200 than will contractor ownership of the invention. Moreover, if the
agency is concerned only about specific uses or applications of the
invention, it shall consider leaving title in the contractor with
additional conditions imposed upon the contractor's use of the invention
for such applications or with expanded government license rights in such
applications.
(d) A determination not to allow the contractor to retain title to a
subject invention or to restrict or condition its title with conditions
differing from those in the clause at Sec.401.14, unless made by the
head of the agency, shall be appealable by the contractor to an agency
official at a level above the person who made the determination. This
appeal shall be subject to the procedures applicable to appeals under
Sec.401.11.
[52 FR 8554, Mar. 18, 1987, as amended at 83 FR 15963, Apr. 13, 2018]
Sec.401.16 Electronic filing.
Unless otherwise requested or directed by the agency,
(a) The written report required in (c)(1) of the standard clause in
Sec.401.14 shall be electronically filed;
(b) The written election required in (c)(2) of the standard clause
in Sec.401.14 shall be electronically filed; and
(c) The close-out report in paragraph (f)(1) and the information
identified in
[[Page 937]]
paragraphs (f)(2) and (3) of Sec.401.5 shall be electronically filed.
(d) Other written notices required in the clause in Sec.401.14 may
be electronically delivered to the agency or the contractor through an
electronic database used for reporting subject inventions, patents, and
utilization reports to the funding agency.
[60 FR 41812, Aug. 14, 1995, as amended at 83 FR 15963, Apr. 13, 2018]
Sec.401.17 Submissions and inquiries.
All submissions or inquiries should be directed to the Chief Counsel
for NIST, National Institute of Standards and Technology, 100 Bureau
Drive, Mail Stop 1052, Gaithersburg, Maryland 20899-1052; telephone:
(301) 975-2803; email: [email protected] Information about and
procedures for electronic filing under this part are available at the
Interagency Edison website and service center, http://www.iedison.gov,
telephone (301) 435-1986.
[83 FR 15963, Apr. 13, 2018]
PART 404_LICENSING OF GOVERNMENT-OWNED INVENTIONS--Table of Contents
Sec.
404.1 Scope of part.
404.2 Policy and objective.
404.3 Definitions.
404.4 Authority to grant licenses.
404.5 Restrictions and conditions on all licenses granted under this
part.
404.6 Nonexclusive licenses.
404.7 Exclusive, co-exclusive and partially exclusive licenses.
404.8 Application for a license.
404.9 [Reserved]
404.10 Modification and termination of licenses.
404.11 Appeals.
404.12 Protection and administration of inventions.
404.13 Transfer of custody.
404.14 Confidentiality of information.
Authority: 35 U.S.C. 207-209, DOO 30-2A.
Source: 50 FR 9802, Mar. 12, 1985, unless otherwise noted.
Sec.404.1 Scope of part.
This part prescribes the terms, conditions, and procedures upon
which a federally owned invention, other than an invention in the
custody of the Tennessee Valley Authority, may be licensed. This part
does not affect licenses which:
(a) Were in effect prior to April 7, 2006;
(b) May exist at the time of the Government's acquisition of title
to the invention, including those resulting from the allocation of
rights to inventions made under Government research and development
contracts;
(c) Are the result of an authorized exchange of rights in the
settlement of patent disputes, including interferences; or
(d) Are otherwise authorized by law or treaty, including 35 U.S.C.
202(e), 35 U.S.C. 207(a)(3) and 15 U.S.C. 3710a, which also may
authorize the assignment of inventions. Although licenses on inventions
made under a cooperative research and development agreement (CRADA) are
not subject to this regulation, agencies are encouraged to apply the
same policies and use similar terms when appropriate. Similarly, this
should be done for licenses granted under inventions where the agency
has acquired rights pursuant to 35 U.S.C. 207(a)(3).
[71 FR 11512, Mar. 8, 2006]
Sec.404.2 Policy and objective.
It is the policy and objective of this subpart to use the patent
system to promote the utilization of inventions arising from federally
supported research or development.
Sec.404.3 Definitions.
(a) Government owned invention means an invention, whether or not
covered by a patent or patent application, or discovery which is or may
be patentable or otherwise protectable under Title 35, the Plant Variety
Protection Act (7 U.S.C. 2321 et seq.) or foreign patent law, owned in
whole or in part by the United States Government.
(b) Federal agency means an executive department, military
department, Government corporation, or independent establishment, except
the Tennessee Valley Authority, which has custody of a federally owned
invention.
(c) Small business firm means a small business concern as defined in
section 2
[[Page 938]]
of Pub. L. 85-536 (15 U.S.C. 632) and implementing regulations of the
Administrator of the Small Business Administration.
(d) Practical application means to manufacture in the case of a
composition or product, to practice in the case of a process or method,
or to operate in the case of a machine or system; and, in each case,
under such conditions as to establish that the invention is being
utilized and that its benefits are to the extent permitted by law or
Government regulations available to the public on reasonable terms.
(e) United States means the United States of America, its
territories and possessions, the District of Columbia, and the
Commonwealth of Puerto Rico.
[50 FR 9802, Mar. 12, 1985, as amended at 71 FR 11512, Mar. 8, 2006]
Sec.404.4 Authority to grant licenses.
Federally owned inventions shall be made available for licensing as
deemed appropriate in the public interest and each agency shall notify
the public of these available inventions. The agencies having custody of
these inventions may grant nonexclusive, co-exclusive, partially
exclusive, or exclusive licenses thereto under this part. Licenses may
be royalty-free or for royalties or other consideration. They may be for
all or less than all fields of use or in specified geographic areas and
may include a release for past infringement. Any license shall not
confer on any person immunity from the antitrust laws or from a charge
of patent misuse, and the exercise of such rights pursuant to this part
shall not be immunized from the operation of state or federal law by
reason of the source of the grant.
[71 FR 11512, Mar. 8, 2006]
Sec.404.5 Restrictions and conditions on all licenses granted under this part.
(a)(1) A license may be granted only if the applicant has supplied
the Federal agency with a satisfactory plan for development or marketing
of the invention, or both, and with information about the applicant's
capability to fulfill the plan. The plan for a non-exclusive research
license may be limited to describing the research phase of development.
(2) A license granting rights to use or sell under a Government
owned invention in the United States shall normally be granted only to a
licensee who agrees that any products embodying the invention or
produced through the use of the invention will be manufactured
substantially in the United States. However, this condition may be
waived or modified if reasonable but unsuccessful efforts have been made
to grant licenses to potential licensees that would be likely to
manufacture substantially in the United States or if domestic
manufacture is not commercially feasible.
(b) Licenses shall contain such terms and conditions as the Federal
agency determines are appropriate for the protection of the interests of
the Federal Government and the public and are not in conflict with law
or this part. The following terms and conditions apply to any license:
(1) The duration of the license shall be for a period specified in
the license agreement, unless sooner terminated in accordance with this
part.
(2) Any patent license may grant the licensee the right of
enforcement of the licensed patent without joining the Federal agency as
a party as determined appropriate in the public interest.
(3) The license may extend to subsidiaries of the licensee or other
parties if provided for in the license but shall be nonassignable
without approval of the Federal agency, except to the successor of that
part of the licensee's business to which the invention pertains.
(4) The license may provide the licensee the right to grant
sublicenses under the license, subject to the approval of the Federal
agency. Each sublicense shall make reference to the license, including
the rights retained by the Government, and a copy of such sublicense
with any modifications thereto, shall be promptly furnished to the
Federal agency.
(5) The license shall require the licensee to carry out the plan for
development or marketing of the invention, or both, to bring the
invention to practical application within a reasonable time as specified
in the license, and
[[Page 939]]
continue to make the benefits of the invention reasonably accessible to
the public.
(6) The license shall require the licensee to report periodically on
the utilization or efforts at obtaining utilization that are being made
by the licensee, with particular reference to the plan submitted but
only to the extent necessary to enable the agency to determine
compliance with the terms of the license.
(7) Where an agreement is obtained pursuant to Sec.404.5(a)(2)
that any products embodying the invention or produced through the use of
the invention will be manufactured substantially in the United States,
the license shall recite such an agreement.
(8) The license shall provide for the right of the Federal agency to
terminate the license, in whole or in part, if the agency determines
that:
(i) The licensee is not executing its commitment to achieve
practical application of the invention, including commitments contained
in any plan submitted in support of its request for a license and the
licensee cannot otherwise demonstrate to the satisfaction of the Federal
agency that it has taken, or can be expected to take within a reasonable
time, effective steps to achieve practical application of the invention;
(ii) Termination is necessary to meet requirements for public use
specified by Federal regulations issued after the date of the license
and such requirements are not reasonably satisfied by the licensee;
(iii) The licensee has willfully made a false statement of or
willfully omitted a material fact in the license application or in any
report required by the license agreement;
(iv) The licensee commits a substantial breach of a covenant or
provision contained in the license agreement, including the requirement
in Sec.404.5(a)(2); or
(v) The licensee has been found by a court of competent jurisdiction
to have violated the Federal antitrust laws in connection with its
performance under the license agreement.
(9) The license may be modified or terminated, consistent with this
part, upon mutual agreement of the Federal agency and the licensee.
(10) The license may be modified or terminated, consistent with this
part, upon mutual agreement of the Federal agency and the licensee.
(11) Nothing relating to the grant of a license, nor the grant
itself, shall be construed to confer upon any person any immunity from
or defenses under the antitrust laws or from a charge of patent misuse,
and the acquisition and use of rights pursuant to this part shall not be
immunized from the operation of state or Federal law by reason of the
source of the grant.
[50 FR 9802, Mar. 12, 1985, as amended at 71 FR 11512, Mar. 8, 2006]
Sec.404.6 Nonexclusive licenses.
Nonexclusive licenses may be granted under Government owned
inventions without a public notice of a prospective license.
[71 FR 11513, Mar. 8, 2006]
Sec.404.7 Exclusive, co-exclusive and partially exclusive licenses.
(a)(1) Exclusive, co-exclusive or partially exclusive domestic
licenses may be granted on Government owned inventions, only if;
(i) Notice of a prospective license, identifying the invention and
the prospective licensee, has been published in the Federal Register or
other appropriate manner, providing opportunity for filing written
objections within at least a 15-day period;
(ii) After expiration of the period in Sec.404.7(a)(1)(i) and
consideration of any written objections received during the period, the
Federal agency has determined that;
(A) The public will be served by the granting of the license, in
view of the applicant's intentions, plans and ability to bring the
invention to the point of practical application or otherwise promote the
invention's utilization by the public.
(B) Exclusive, co-exclusive or partially exclusive licensing is a
reasonable and necessary incentive to call
[[Page 940]]
forth the investment capital and expenditures needed to bring the
invention to practical application or otherwise promote the invention's
utilization by the public; and
(C) The proposed scope of exclusivity is not greater than reasonably
necessary to provide the incentive for bringing the invention to
practical application, as proposed by the applicant, or otherwise to
promote the invention's utilization by the public;
(iii) The Federal agency has not determined that the grant of such a
license will tend substantially to lessen competition or create or
maintain a violation of the Federal antitrust laws; and
(iv) The Federal agency has given first preference to any small
business firms submitting plans that are determined by the agency to be
within the capability of the firms and as having equal or greater
likelihood as those from other applicants to bring the invention to
practical application within a reasonable time.
(2) In addition to the provisions of Sec.404.5, the following
terms and conditions apply to domestic exclusive, co-exclusive and
partially exclusive licenses:
(i) The license shall be subject to the irrevocable, royalty-free
right of the Government of the United States to practice or have
practiced the invention on behalf of the United States and on behalf of
any foreign government or international organization pursuant to any
existing or future treaty or agreement with the United States.
(ii) The license shall reserve to the Federal agency the right to
require the licensee to grant sublicenses to responsible applicants, on
reasonable terms, when necessary to fulfill health or safety needs.
(iii) The license shall be subject to any licenses in force at the
time of the grant of the exclusive, co-exclusive or partially exclusive
license.
(b)(1) Exclusive, co-exclusive or partially exclusive foreign
licenses may be granted on a Government owned invention provided that;
(i) Notice of a prospective license, identifying the invention and
the prospective licensee, has been published in the Federal Register or
other appropriate manner, providing opportunity for filing written
objections within at least a 15-day period and following consideration
of such objections received during the period;
(ii) The agency has considered whether the interests of the Federal
Government or United States industry in foreign commerce will be
enhanced; and
(iii) The Federal agency has not determined that the grant of such a
license will tend substantially to lessen competition or create or
maintain a violation of the Federal antitrust laws.
(2) In addition to the provisions of Sec.404.5, the following
terms and conditions apply to foreign exclusive, co-exclusive and
partially exclusive licenses:
(i) The license shall be subject to the irrevocable, royalty-free
right of the Government of the United States to practice and have
practiced the invention on behalf of the United States and on behalf of
any foreign government or international organization pursuant to any
existing or future treaty or agreement with the United States.
(ii) The license shall be subject to any licenses in force at the
time of the grant of the exclusive, co-exclusive or partially exclusive
license.
(iii) The license may grant the licensee the right to take any
suitable and necessary actions to protect the licensed property, on
behalf of the Federal Government.
(c) Federal agencies shall maintain a record of determinations to
grant exclusive, co-exclusive or partially exclusive licenses.
[71 FR 11513, Mar. 8, 2006, as amended at 83 FR 15963, Apr. 13, 2018]
Sec.404.8 Application for a license.
(a) An application for a license should be addressed to the Federal
agency having custody of the invention and shall normally include:
(1) Identification of the invention for which the license is desired
including the patent application serial number or patent number, title,
and date, if known;
(2) Identification of the type of license for which the application
is submitted;
(3) Name and address of the person, company, or organization
applying for
[[Page 941]]
the license and the citizenship or place of incorporation of the
applicant;
(4) Name, address, and telephone number of the representative of the
applicant to whom correspondence should be sent;
(5) Nature and type of applicant's business, identifying products or
services which the applicant has successfully commercialized, and
approximate number of applicant's employees;
(6) Source of information concerning the availability of a license
on the invention;
(7) A statement indicating whether the applicant is a small business
firm as defined in Sec.404.3(c);
(8) A detailed description of applicant's plan for development or
marketing of the invention, or both, which should include:
(i) A statement of the time, nature and amount of anticipated
investment of capital and other resources which applicant believes will
be required to bring the invention to practical application;
(ii) A statement as to applicant's capability and intention to
fulfill the plan, including information regarding manufacturing,
marketing, financial, and technical resources;
(iii) A statement of the fields of use for which applicant intends
to practice the invention; and
(iv) A statement of the geographic areas in which applicant intends
to manufacture any products embodying the invention and geographic areas
where applicant intends to use or sell the invention, or both;
(9) Identification of licenses previously granted to applicant under
federally owned inventions;
(10) A statement containing applicant's best knowledge of the extent
to which the invention is being practiced by private industry or
Government, or both, or is otherwise available commercially; and
(11) Any other information which applicant believes will support a
determination to grant the license to applicant.
(b) An executed CRADA which provides for the use for research and
development purposes by the CRADA collaborator under that CRADA of a
Federally-owned invention in the Federal laboratory's custody (pursuant
to 35 U.S.C. 209 and 15 U.S.C. 3710a(b)(1)), and which addresses the
information in paragraph (a) of this section, may be treated by the
Federal laboratory as an application for a license.
[83 FR 15963, Apr. 13, 2018]
Sec.404.9 [Reserved]
Sec.404.10 Modification and termination of licenses.
Before modifying or terminating a license, other than by mutual
agreement, the Federal agency shall furnish the licensee and any
sublicensee of record a written notice of intention to modify or
terminate the license, and the licensee shall be allowed 30 days after
such notice to remedy any breach of the license or show cause why the
license shall not be modified or terminated.
[71 FR 11514, Mar. 8, 2006]
Sec.404.11 Appeals.
(a) In accordance with procedures prescribed by the Federal agency,
the following parties may appeal to the agency head or designee any
decision or determination concerning the grant, denial, modification, or
termination of a license:
(1) A person whose application for a license has been denied;
(2) A licensee whose license has been modified or terminated, in
whole or in part; or
(3) A person who timely filed a written objection in response to the
notice required by Sec.404.7(a)(1)(i) or Sec.404.7(b)(1)(i) and who
can demonstrate to the satisfaction of the Federal agency that such
person may be damaged by the agency action.
(b) An appeal by a licensee under paragraph (a)(2) of this section
may include a hearing, upon the request of the licensee, to address a
dispute over any relevant fact. The parties may agree to Alternate
Dispute Resolution in lieu of an appeal.
[71 FR 11514, Mar. 8, 2006]
Sec.404.12 Protection and administration of inventions.
A Federal agency may take any suitable and necessary steps to
protect and
[[Page 942]]
administer rights to Government owned inventions, either directly or
through contract.
[71 FR 11514, Mar. 8, 2006]
Sec.404.13 Transfer of custody.
A Federal agency having custody of a federally owned invention may
transfer custody and administration, in whole or in part, to another
Federal agency, of the right, title, or interest in such invention.
Sec.404.14 Confidentiality of information.
Title 35, United States Code, section 209, requires that any plan
submitted pursuant to Sec.404.8(h) and any report required by Sec.
404.5(b)(6) shall be treated as commercial or financial information
obtained from a person and privileged and confidential and not subject
to disclosure under section 552 of Title 5 of the United States Code.
[71 FR 11514, Mar. 8, 2006]
PART 501_UNIFORM PATENT POLICY FOR RIGHTS IN INVENTIONS MADE BY
GOVERNMENT EMPLOYEES--Table of Contents
Sec.
501.1 Purpose.
501.2 Scope.
501.3 Definitions.
501.4 Determination of inventions and rights.
501.5 Agency liaison officer.
501.6 Criteria for the determination of rights in and to inventions.
501.7 Agency determination.
501.8 Appeals by employees.
501.9 Patent protection.
501.10 Dissemination of this part and of implementing regulations.
501.11 Submissions and inquiries.
Authority: Sec. 4, E.O. 10096, 3 CFR, 1949-1953 Comp., p. 292, as
amended by E.O. 10930, 3 CFR, 1959-1963 Comp., p. 456 and by E.O. 10695,
3 CFR, 1954-1958 Comp., p. 355, DOO 30-2A.
Source: 53 FR 39735, Oct. 11, 1988, unless otherwise noted.
Editorial Note: At 78 FR 4766, Jan. 23, 2013, parts 500-599 were
transferred from Title 37, Chapter V, to Title 37, Chapter IV. Chapter V
was removed and reserved.
Sec.501.1 Purpose.
The purpose of this part is to provide for the administration of a
uniform patent policy for the Government with respect to the rights in
inventions made by Government employees and to prescribe rules and
regulations for implementing and effectuating such policy.
[61 FR 40999, Aug. 7, 1996]
Sec.501.2 Scope.
This part applies to any invention made by a Government employee and
to any action taken with respect thereto.
Sec.501.3 Definitions.
(a) The term Secretary, as used in this part, means the Director of
the National Institute of Standards and Technology.
(b) The term Government agency, as used in this part, means any
Executive department or independent establishment of the Executive
branch of the Government (including any independent regulatory
commission or board, any corporation wholly owned by the United States,
and the Smithsonian Institution), but does not include the Department of
Energy for inventions made under the provisions of 42 U.S.C. 2182, the
Tennessee Valley Authority, or the Postal Service.
(c) The term Government employee, as used in this part, means any
officer or employee, civilian or military, of any Government agency,
including any special Government employee as defined in 18 U.S.C. 202 or
an individual working for a Federal agency pursuant to the
Intergovernmental Personnel Act (IPA), 5 U.S.C. 1304 and 3371-3376, or a
part-time consultant or part-time employee as defined in 29 U.S.C.
2101(a)(8) except as may otherwise be provided by agency regulation
approved by the Secretary.
(d) The term invention, as used in this part, means any art or
process, machine, manufacture, design, or composition of matter, or any
new and useful improvement thereof, or any variety of plant, which is or
may be patentable under the patent laws of the United States.
[[Page 943]]
(e) The term made as used in this part in relation to any invention,
means the conception or first actual reduction to practice of such
invention as stated in In re King, 3 USPQ2d (BNA) 1747 (Comm'r Pat.
1987).
[61 FR 40999, Aug. 7, 1996, as amended at 78 FR 4766, Jan. 23, 2013]
Sec.501.4 Determination of inventions and rights.
Each Government agency has the approval of the Secretary to
determine whether the results of research, development, or other
activity in the agency constitute an invention within the purview of
Executive Order 10096, as amended by Executive Order 10930 and Executive
Order 10695, and to determine the rights in and to the invention in
accordance with the provisions of Sec. Sec.501.6 and 501.7.
[61 FR 40999, Aug. 7, 1996]
Sec.501.5 Agency liaison officer.
Each Government agency shall designate a liaison officer to
represent the agency before the Secretary; Provided, however, that the
Departments of the Army, the Navy, and the Air Force may each designate
a liaison officer.
Sec.501.6 Criteria for the determination of rights in and to inventions.
(a) The following rules shall be applied in determining the
respective rights of the Government and of the inventor in and to any
invention that is subject to the provisions of this part:
(1) The Government shall obtain, except as herein otherwise
provided, the entire right, title and interest in and to any invention
made by any Government employee:
(i) During working hours, or
(ii) With a contribution by the Government of facilities, equipment,
materials, funds or information, or of time or services of other
Government employees on official duty, or
(iii) Which bears a direct relation to or is made in consequence of
the official duties of the inventor.
(2) In any case where the contribution of the Government, as
measured by any one or more of the criteria set forth in paragraph
(a)(1) of this section, to the invention is insufficient equitably to
justify a requirement of assignment to the Government of the entire
right, title and interest in and to such invention, or in any case where
the Government has insufficient interest in an invention to obtain the
entire right, title and interest therein (although the Government could
obtain same under paragraph (a)(1) of this section), the Government
agency concerned shall leave title to such invention in the employee,
subject however, to the reservation to the Government of a nonexclusive,
irrevocable, royalty-free license in the invention with power to grant
licenses for all governmental purposes. The terms of such reservation
will appear, where practicable, in any patent, domestic or foreign,
which may issue on such invention. Reference is made to section 15 of
the Federal Technology Transfer Act of 1986 (15 U.S.C. 3710d) which
requires a Government agency to allow the inventor to retain title to
any covered invention when the agency does not intend to file a patent
application or otherwise promote commercialization.
(3) In applying the provisions of paragraphs (a)(1) and (2) of this
section to the facts and circumstances relating to the making of a
particular invention, it shall be presumed that an invention made by an
employee who is employed or assigned:
(i) To invent or improve or perfect any art or process, machine,
design, manufacture, or composition of matter;
(ii) To conduct or perform research, development work, or both,
(iii) To supervise, direct, coordinate, or review Government
financed or conducted research, development work, or both, or
(iv) To act in a liaison capacity among governmental or non-
governmental agencies or individuals engaged in such research or
development work,
falls within the provisions of paragraph (a)(1) of this section, and it
shall be presumed that any invention made by any other employee falls
within the provisions of paragraph (a)(2) of this section. Either
presumption may be rebutted by a showing of the facts and circumstances
in the case and shall not preclude a determination that these facts and
circumstances justify leaving
[[Page 944]]
the entire right, title and interest in and to the invention in the
Government employee, subject to law.
(4) In any case wherein the Government neither:
(i) Obtains the entire right, title and interest in and to an
invention pursuant to the provisions of paragraph (a)(1) of this section
nor
(ii) Reserves a nonexclusive, irrevocable, royalty-free license in
the invention, with power to grant licenses for all governmental
purposes, pursuant to the provisions of paragraph (a)(2) of this
section,
the Government shall leave the entire right, title and interest in and
to the invention in the Government employee, subject to law.
[53 FR 39735, Oct. 11, 1988, as amended at 61 FR 40999, Aug. 7, 1996]
Sec.501.7 Agency determination.
(a) If the agency determines that the Government is entitled to
obtain title pursuant to Sec.501.6(a)(1) and the employee does not
appeal, no further review is required.
(b) In the event that a Government agency determines, pursuant to
paragraph (a)(2) or (a)(4) of Sec.501.6, that title to an invention
will be left with the employee, the agency shall notify the employee of
this determination. In cases pursuant to Sec.501.6(a)(2) where the
Government's insufficient interest in the invention is evidenced by its
decision not to file a patent application, the agency may impose on the
employee any one or all of the following conditions or any other
conditions that may be necessary in a particular case:
(1) That a patent application be filed in the United States and/or
abroad, if the Government has determined that it has or may need to
practice the invention;
(2) That the invention not be assigned to any foreign-owned or
controlled corporation without the written permission of the agency; and
(3) That any assignment or license of rights to use or sell the
invention in the United States shall contain a requirement that any
products embodying the invention or produced through the use of the
invention be substantially manufactured in the United States. The agency
shall notify the employee of any conditions imposed.
(c) In the case of a determination under either paragraph (a) or (b)
of this section, the agency shall promptly provide the employee with:
(1) A signed and dated statement of its determination and reasons
therefor; and
(2) A copy of 37 CFR part 501.
[53 FR 39735, Oct. 11, 1988, as amended at 61 FR 40999, Aug. 7, 1996]
Sec.501.8 Appeals by employees.
(a) Any Government employee who is aggrieved by a Government agency
determination pursuant to Sec. Sec.501.6(a)(1) or (a)(2), may obtain a
review of any agency determination by filing, within 30 days (or such
longer period as the Secretary may, for good cause shown in writing, fix
in any case) after receiving notice of such determination, two copies of
an appeal with the Secretary. The Secretary then shall forward one copy
of the appeal to the liaison officer of the Government agency.
(b) On receipt of a copy of an appeal filed pursuant to paragraph
(a) of this section, the agency liaison officer shall, subject to
considerations of national security, or public health, safety or
welfare, promptly furnish both the Secretary and the inventor with a
copy of a report containing the following information about the
invention involved in the appeal:
(1) A copy of the agency's statement specified in Sec.501.7(c);
(2) A description of the invention in sufficient detail to identify
the invention and show its relationship to the employee's duties and
work assignments;
(3) The name of the employee and employment status, including a
detailed statement of official duties and responsibilities at the time
the invention was made; and
(4) A detailed statement of the points of dispute or controversy,
together with copies of any statements or written arguments filed with
the agency, and of any other relevant evidence that the agency
considered in making its determination of Government interest.
(c) Within 25 days (or such longer period as the Secretary may, for
good cause shown, fix in any case) after the
[[Page 945]]
transmission of a copy of the agency report to the employee, the
employee may file a reply with the Secretary and file one copy with the
agency liaison officer.
(d) After the time for the inventor's reply to the Government
agency's report has expired and if the inventor has so requested in his
or her appeal, a date will be set for hearing of oral arguments before
the Secretary, by the employee (or by an attorney whom he or she
designates by written power of attorney filed before, or at the hearing)
and a representative of the Government agency involved. Unless it shall
be otherwise ordered before the hearing begins, oral arguments will be
limited to thirty minutes for each side. The employee need not retain an
attorney or request an oral hearing to secure full consideration of the
facts and his or her arguments. The employee may expedite such
consideration by notifying the Secretary when he or she does not intend
to file a reply to the agency report.
(e) After a hearing on the appeal, if a hearing was requested, or
after expiration of the period for the inventor's reply to the agency
report if no hearing is set, the Secretary shall issue a decision on the
matter within 120 days, which decision shall be final after a thirty day
period for requesting reconsideration expires or on the date that a
decision on a petition for reconsideration is finally disposed of. Any
request for reconsideration or modification of the decision must be
filed within 30 days from the date of the original decision (or within
such an extension thereof as may be set by the Secretary before the
original period expires). The decision of the Secretary shall be made
after consideration of the statements of fact in the employee's appeal,
the agency's report, and the employee's reply, but the Secretary at his
or her discretion and with due respect to the rights and convenience of
the inventor and the Government agency, may call for further statements
on specific questions of fact or may request additional evidence in the
form of affidavits or depositions on specific facts in dispute.
[53 FR 39735, Oct. 11, 1988, as amended at 61 FR 41000, Aug. 7, 1996]
Sec.501.9 Patent protection.
(a) A Government agency, upon determining that an invention coming
within the scope of Sec. Sec.501.6(a)(1) or (a)(2) has been made,
shall promptly determine whether patent protection will be sought in the
United States by or on behalf of the agency for such invention. A
controversy over the respective rights of the Government and of the
employee shall not unnecessarily delay the filing of a patent
application by the agency to avoid the loss of patent rights. In cases
coming within the scope of Sec.501.6(a)(2), the filing of a patent
application shall be contingent upon the consent of the employee.
(b) Where there is an appealed dispute as to whether Sec. Sec.
501.6 (a)(1) or (a)(2) applies in determining the respective rights of
the Government and of an employee in and to any invention, the agency
may determine whether patent protection will be sought in the United
States pending the Secretary's decision on the dispute. If the agency
decides that an application for patent should be filed, the agency will
take such rights as are specified in Sec.501.6(a)(2), but this shall
be without prejudice to acquiring the rights specified in paragraph
(a)(1) of that section should the Secretary so decide.
(c) Where an agency has determined to leave title to an invention
with an employee under Sec.501.6(a)(2), the agency will, upon the
filing of an application for patent, take the rights specified in that
paragraph without prejudice to the subsequent acquisition by the
Government of the rights specified in paragraph (a)(1) of that section
should the Secretary so decide.
(d) Where an agency has filed a patent application in the United
States, the agency will, within 8 months from the filing date of the
U.S. application, determine if any foreign patent applications should
also be filed. If the agency chooses not to file an application in any
foreign country, the employee may request rights in that country subject
to the conditions stated in Sec.501.7(b) that may be imposed by the
agency. Alternatively, the agency
[[Page 946]]
may permit the employee to retain foreign rights by including in any
assignment to the Government of an unclassified U.S. patent application
on the invention an option for the Government to acquire title in any
foreign country within 8 months from the filing date of the U.S.
application.
[61 FR 41000, Aug. 7, 1996]
Sec.501.10 Dissemination of this part and of implementing regulations.
Each Government agency shall disseminate to its employees the
provisions of this part, and any appropriate implementing agency
regulations and delegations. Copies of any such regulations shall be
sent to the Secretary. If the Secretary identifies an inconsistency
between this part and the agency regulations or delegations, the agency,
upon being informed by the Secretary of the inconsistency, shall take
prompt action to correct it.
Sec.501.11 Submissions and inquiries.
All submissions or inquiries should be directed to the Chief Counsel
for NIST, National Institute of Standards and Technology, 100 Bureau
Drive, Mail Stop 1052, Gaithersburg, MD 20899-1052; telephone: (301)
975-2803; email: [email protected]
[78 FR 4766, Jan. 23, 2013]
PARTS 502 599 [RESERVED]
CHAPTER V [RESERVED]
[[Page 947]]
FINDING AIDS
--------------------------------------------------------------------
A list of current CFR titles, subtitles, chapters, subchapters and
parts and an alphabetical list of agencies publishing in the CFR are
included in the CFR Index and Finding Aids volume to the Code of Federal
Regulations, which is published separately and revised annually.
Table of CFR Titles and Chapters
Alphabetical List of Agencies Appearing in the CFR
List of CFR Sections Affected
[[Page 949]]
Table of CFR Titles and Chapters
(Revised as of July 1, 2021)
Title 1--General Provisions
I Administrative Committee of the Federal Register
(Parts 1--49)
II Office of the Federal Register (Parts 50--299)
III Administrative Conference of the United States (Parts
300--399)
IV Miscellaneous Agencies (Parts 400--599)
VI National Capital Planning Commission (Parts 600--699)
Title 2--Grants and Agreements
Subtitle A--Office of Management and Budget Guidance
for Grants and Agreements
I Office of Management and Budget Governmentwide
Guidance for Grants and Agreements (Parts 2--199)
II Office of Management and Budget Guidance (Parts 200--
299)
Subtitle B--Federal Agency Regulations for Grants and
Agreements
III Department of Health and Human Services (Parts 300--
399)
IV Department of Agriculture (Parts 400--499)
VI Department of State (Parts 600--699)
VII Agency for International Development (Parts 700--799)
VIII Department of Veterans Affairs (Parts 800--899)
IX Department of Energy (Parts 900--999)
X Department of the Treasury (Parts 1000--1099)
XI Department of Defense (Parts 1100--1199)
XII Department of Transportation (Parts 1200--1299)
XIII Department of Commerce (Parts 1300--1399)
XIV Department of the Interior (Parts 1400--1499)
XV Environmental Protection Agency (Parts 1500--1599)
XVIII National Aeronautics and Space Administration (Parts
1800--1899)
XX United States Nuclear Regulatory Commission (Parts
2000--2099)
XXII Corporation for National and Community Service (Parts
2200--2299)
XXIII Social Security Administration (Parts 2300--2399)
XXIV Department of Housing and Urban Development (Parts
2400--2499)
XXV National Science Foundation (Parts 2500--2599)
XXVI National Archives and Records Administration (Parts
2600--2699)
[[Page 950]]
XXVII Small Business Administration (Parts 2700--2799)
XXVIII Department of Justice (Parts 2800--2899)
XXIX Department of Labor (Parts 2900--2999)
XXX Department of Homeland Security (Parts 3000--3099)
XXXI Institute of Museum and Library Services (Parts 3100--
3199)
XXXII National Endowment for the Arts (Parts 3200--3299)
XXXIII National Endowment for the Humanities (Parts 3300--
3399)
XXXIV Department of Education (Parts 3400--3499)
XXXV Export-Import Bank of the United States (Parts 3500--
3599)
XXXVI Office of National Drug Control Policy, Executive
Office of the President (Parts 3600--3699)
XXXVII Peace Corps (Parts 3700--3799)
LVIII Election Assistance Commission (Parts 5800--5899)
LIX Gulf Coast Ecosystem Restoration Council (Parts 5900--
5999)
Title 3--The President
I Executive Office of the President (Parts 100--199)
Title 4--Accounts
I Government Accountability Office (Parts 1--199)
Title 5--Administrative Personnel
I Office of Personnel Management (Parts 1--1199)
II Merit Systems Protection Board (Parts 1200--1299)
III Office of Management and Budget (Parts 1300--1399)
IV Office of Personnel Management and Office of the
Director of National Intelligence (Parts 1400--
1499)
V The International Organizations Employees Loyalty
Board (Parts 1500--1599)
VI Federal Retirement Thrift Investment Board (Parts
1600--1699)
VIII Office of Special Counsel (Parts 1800--1899)
IX Appalachian Regional Commission (Parts 1900--1999)
XI Armed Forces Retirement Home (Parts 2100--2199)
XIV Federal Labor Relations Authority, General Counsel of
the Federal Labor Relations Authority and Federal
Service Impasses Panel (Parts 2400--2499)
XVI Office of Government Ethics (Parts 2600--2699)
XXI Department of the Treasury (Parts 3100--3199)
XXII Federal Deposit Insurance Corporation (Parts 3200--
3299)
XXIII Department of Energy (Parts 3300--3399)
XXIV Federal Energy Regulatory Commission (Parts 3400--
3499)
XXV Department of the Interior (Parts 3500--3599)
XXVI Department of Defense (Parts 3600--3699)
[[Page 951]]
XXVIII Department of Justice (Parts 3800--3899)
XXIX Federal Communications Commission (Parts 3900--3999)
XXX Farm Credit System Insurance Corporation (Parts 4000--
4099)
XXXI Farm Credit Administration (Parts 4100--4199)
XXXIII U.S. International Development Finance Corporation
(Parts 4300--4399)
XXXIV Securities and Exchange Commission (Parts 4400--4499)
XXXV Office of Personnel Management (Parts 4500--4599)
XXXVI Department of Homeland Security (Parts 4600--4699)
XXXVII Federal Election Commission (Parts 4700--4799)
XL Interstate Commerce Commission (Parts 5000--5099)
XLI Commodity Futures Trading Commission (Parts 5100--
5199)
XLII Department of Labor (Parts 5200--5299)
XLIII National Science Foundation (Parts 5300--5399)
XLV Department of Health and Human Services (Parts 5500--
5599)
XLVI Postal Rate Commission (Parts 5600--5699)
XLVII Federal Trade Commission (Parts 5700--5799)
XLVIII Nuclear Regulatory Commission (Parts 5800--5899)
XLIX Federal Labor Relations Authority (Parts 5900--5999)
L Department of Transportation (Parts 6000--6099)
LII Export-Import Bank of the United States (Parts 6200--
6299)
LIII Department of Education (Parts 6300--6399)
LIV Environmental Protection Agency (Parts 6400--6499)
LV National Endowment for the Arts (Parts 6500--6599)
LVI National Endowment for the Humanities (Parts 6600--
6699)
LVII General Services Administration (Parts 6700--6799)
LVIII Board of Governors of the Federal Reserve System
(Parts 6800--6899)
LIX National Aeronautics and Space Administration (Parts
6900--6999)
LX United States Postal Service (Parts 7000--7099)
LXI National Labor Relations Board (Parts 7100--7199)
LXII Equal Employment Opportunity Commission (Parts 7200--
7299)
LXIII Inter-American Foundation (Parts 7300--7399)
LXIV Merit Systems Protection Board (Parts 7400--7499)
LXV Department of Housing and Urban Development (Parts
7500--7599)
LXVI National Archives and Records Administration (Parts
7600--7699)
LXVII Institute of Museum and Library Services (Parts 7700--
7799)
LXVIII Commission on Civil Rights (Parts 7800--7899)
LXIX Tennessee Valley Authority (Parts 7900--7999)
LXX Court Services and Offender Supervision Agency for the
District of Columbia (Parts 8000--8099)
LXXI Consumer Product Safety Commission (Parts 8100--8199)
LXXIII Department of Agriculture (Parts 8300--8399)
[[Page 952]]
LXXIV Federal Mine Safety and Health Review Commission
(Parts 8400--8499)
LXXVI Federal Retirement Thrift Investment Board (Parts
8600--8699)
LXXVII Office of Management and Budget (Parts 8700--8799)
LXXX Federal Housing Finance Agency (Parts 9000--9099)
LXXXIII Special Inspector General for Afghanistan
Reconstruction (Parts 9300--9399)
LXXXIV Bureau of Consumer Financial Protection (Parts 9400--
9499)
LXXXVI National Credit Union Administration (Parts 9600--
9699)
XCVII Department of Homeland Security Human Resources
Management System (Department of Homeland
Security--Office of Personnel Management) (Parts
9700--9799)
XCVIII Council of the Inspectors General on Integrity and
Efficiency (Parts 9800--9899)
XCIX Military Compensation and Retirement Modernization
Commission (Parts 9900--9999)
C National Council on Disability (Parts 10000--10049)
CI National Mediation Board (Parts 10100--10199)
CII U.S. Office of Special Counsel (Parts 10200--10299)
Title 6--Domestic Security
I Department of Homeland Security, Office of the
Secretary (Parts 1--199)
X Privacy and Civil Liberties Oversight Board (Parts
1000--1099)
Title 7--Agriculture
Subtitle A--Office of the Secretary of Agriculture
(Parts 0--26)
Subtitle B--Regulations of the Department of
Agriculture
I Agricultural Marketing Service (Standards,
Inspections, Marketing Practices), Department of
Agriculture (Parts 27--209)
II Food and Nutrition Service, Department of Agriculture
(Parts 210--299)
III Animal and Plant Health Inspection Service, Department
of Agriculture (Parts 300--399)
IV Federal Crop Insurance Corporation, Department of
Agriculture (Parts 400--499)
V Agricultural Research Service, Department of
Agriculture (Parts 500--599)
VI Natural Resources Conservation Service, Department of
Agriculture (Parts 600--699)
VII Farm Service Agency, Department of Agriculture (Parts
700--799)
VIII Agricultural Marketing Service (Federal Grain
Inspection Service, Fair Trade Practices Program),
Department of Agriculture (Parts 800--899)
[[Page 953]]
IX Agricultural Marketing Service (Marketing Agreements
and Orders; Fruits, Vegetables, Nuts), Department
of Agriculture (Parts 900--999)
X Agricultural Marketing Service (Marketing Agreements
and Orders; Milk), Department of Agriculture
(Parts 1000--1199)
XI Agricultural Marketing Service (Marketing Agreements
and Orders; Miscellaneous Commodities), Department
of Agriculture (Parts 1200--1299)
XIV Commodity Credit Corporation, Department of
Agriculture (Parts 1400--1499)
XV Foreign Agricultural Service, Department of
Agriculture (Parts 1500--1599)
XVI (Parts 1600--1699) [Reserved]
XVII Rural Utilities Service, Department of Agriculture
(Parts 1700--1799)
XVIII Rural Housing Service, Rural Business-Cooperative
Service, Rural Utilities Service, and Farm Service
Agency, Department of Agriculture (Parts 1800--
2099)
XX (Parts 2200--2299) [Reserved]
XXV Office of Advocacy and Outreach, Department of
Agriculture (Parts 2500--2599)
XXVI Office of Inspector General, Department of Agriculture
(Parts 2600--2699)
XXVII Office of Information Resources Management, Department
of Agriculture (Parts 2700--2799)
XXVIII Office of Operations, Department of Agriculture (Parts
2800--2899)
XXIX Office of Energy Policy and New Uses, Department of
Agriculture (Parts 2900--2999)
XXX Office of the Chief Financial Officer, Department of
Agriculture (Parts 3000--3099)
XXXI Office of Environmental Quality, Department of
Agriculture (Parts 3100--3199)
XXXII Office of Procurement and Property Management,
Department of Agriculture (Parts 3200--3299)
XXXIII Office of Transportation, Department of Agriculture
(Parts 3300--3399)
XXXIV National Institute of Food and Agriculture (Parts
3400--3499)
XXXV Rural Housing Service, Department of Agriculture
(Parts 3500--3599)
XXXVI National Agricultural Statistics Service, Department
of Agriculture (Parts 3600--3699)
XXXVII Economic Research Service, Department of Agriculture
(Parts 3700--3799)
XXXVIII World Agricultural Outlook Board, Department of
Agriculture (Parts 3800--3899)
XLI [Reserved]
XLII Rural Business-Cooperative Service and Rural Utilities
Service, Department of Agriculture (Parts 4200--
4299)
[[Page 954]]
L Rural Business-Cooperative Service, and Rural
Utilities Service, Department of Agriculture
(Parts 5000--5099)
Title 8--Aliens and Nationality
I Department of Homeland Security (Parts 1--499)
V Executive Office for Immigration Review, Department of
Justice (Parts 1000--1399)
Title 9--Animals and Animal Products
I Animal and Plant Health Inspection Service, Department
of Agriculture (Parts 1--199)
II Agricultural Marketing Service (Fair Trade Practices
Program), Department of Agriculture (Parts 200--
299)
III Food Safety and Inspection Service, Department of
Agriculture (Parts 300--599)
Title 10--Energy
I Nuclear Regulatory Commission (Parts 0--199)
II Department of Energy (Parts 200--699)
III Department of Energy (Parts 700--999)
X Department of Energy (General Provisions) (Parts
1000--1099)
XIII Nuclear Waste Technical Review Board (Parts 1300--
1399)
XVII Defense Nuclear Facilities Safety Board (Parts 1700--
1799)
XVIII Northeast Interstate Low-Level Radioactive Waste
Commission (Parts 1800--1899)
Title 11--Federal Elections
I Federal Election Commission (Parts 1--9099)
II Election Assistance Commission (Parts 9400--9499)
Title 12--Banks and Banking
I Comptroller of the Currency, Department of the
Treasury (Parts 1--199)
II Federal Reserve System (Parts 200--299)
III Federal Deposit Insurance Corporation (Parts 300--399)
IV Export-Import Bank of the United States (Parts 400--
499)
V (Parts 500--599) [Reserved]
VI Farm Credit Administration (Parts 600--699)
VII National Credit Union Administration (Parts 700--799)
VIII Federal Financing Bank (Parts 800--899)
IX (Parts 900--999) [Reserved]
X Bureau of Consumer Financial Protection (Parts 1000--
1099)
[[Page 955]]
XI Federal Financial Institutions Examination Council
(Parts 1100--1199)
XII Federal Housing Finance Agency (Parts 1200--1299)
XIII Financial Stability Oversight Council (Parts 1300--
1399)
XIV Farm Credit System Insurance Corporation (Parts 1400--
1499)
XV Department of the Treasury (Parts 1500--1599)
XVI Office of Financial Research, Department of the
Treasury (Parts 1600--1699)
XVII Office of Federal Housing Enterprise Oversight,
Department of Housing and Urban Development (Parts
1700--1799)
XVIII Community Development Financial Institutions Fund,
Department of the Treasury (Parts 1800--1899)
Title 13--Business Credit and Assistance
I Small Business Administration (Parts 1--199)
III Economic Development Administration, Department of
Commerce (Parts 300--399)
IV Emergency Steel Guarantee Loan Board (Parts 400--499)
V Emergency Oil and Gas Guaranteed Loan Board (Parts
500--599)
Title 14--Aeronautics and Space
I Federal Aviation Administration, Department of
Transportation (Parts 1--199)
II Office of the Secretary, Department of Transportation
(Aviation Proceedings) (Parts 200--399)
III Commercial Space Transportation, Federal Aviation
Administration, Department of Transportation
(Parts 400--1199)
V National Aeronautics and Space Administration (Parts
1200--1299)
VI Air Transportation System Stabilization (Parts 1300--
1399)
Title 15--Commerce and Foreign Trade
Subtitle A--Office of the Secretary of Commerce (Parts
0--29)
Subtitle B--Regulations Relating to Commerce and
Foreign Trade
I Bureau of the Census, Department of Commerce (Parts
30--199)
II National Institute of Standards and Technology,
Department of Commerce (Parts 200--299)
III International Trade Administration, Department of
Commerce (Parts 300--399)
IV Foreign-Trade Zones Board, Department of Commerce
(Parts 400--499)
VII Bureau of Industry and Security, Department of
Commerce (Parts 700--799)
[[Page 956]]
VIII Bureau of Economic Analysis, Department of Commerce
(Parts 800--899)
IX National Oceanic and Atmospheric Administration,
Department of Commerce (Parts 900--999)
XI National Technical Information Service, Department of
Commerce (Parts 1100--1199)
XIII East-West Foreign Trade Board (Parts 1300--1399)
XIV Minority Business Development Agency (Parts 1400--
1499)
XV Office of the Under-Secretary for Economic Affairs,
Department of Commerce (Parts 1500--1599)
Subtitle C--Regulations Relating to Foreign Trade
Agreements
XX Office of the United States Trade Representative
(Parts 2000--2099)
Subtitle D--Regulations Relating to Telecommunications
and Information
XXIII National Telecommunications and Information
Administration, Department of Commerce (Parts
2300--2399) [Reserved]
Title 16--Commercial Practices
I Federal Trade Commission (Parts 0--999)
II Consumer Product Safety Commission (Parts 1000--1799)
Title 17--Commodity and Securities Exchanges
I Commodity Futures Trading Commission (Parts 1--199)
II Securities and Exchange Commission (Parts 200--399)
IV Department of the Treasury (Parts 400--499)
Title 18--Conservation of Power and Water Resources
I Federal Energy Regulatory Commission, Department of
Energy (Parts 1--399)
III Delaware River Basin Commission (Parts 400--499)
VI Water Resources Council (Parts 700--799)
VIII Susquehanna River Basin Commission (Parts 800--899)
XIII Tennessee Valley Authority (Parts 1300--1399)
Title 19--Customs Duties
I U.S. Customs and Border Protection, Department of
Homeland Security; Department of the Treasury
(Parts 0--199)
II United States International Trade Commission (Parts
200--299)
III International Trade Administration, Department of
Commerce (Parts 300--399)
IV U.S. Immigration and Customs Enforcement, Department
of Homeland Security (Parts 400--599) [Reserved]
[[Page 957]]
Title 20--Employees' Benefits
I Office of Workers' Compensation Programs, Department
of Labor (Parts 1--199)
II Railroad Retirement Board (Parts 200--399)
III Social Security Administration (Parts 400--499)
IV Employees' Compensation Appeals Board, Department of
Labor (Parts 500--599)
V Employment and Training Administration, Department of
Labor (Parts 600--699)
VI Office of Workers' Compensation Programs, Department
of Labor (Parts 700--799)
VII Benefits Review Board, Department of Labor (Parts
800--899)
VIII Joint Board for the Enrollment of Actuaries (Parts
900--999)
IX Office of the Assistant Secretary for Veterans'
Employment and Training Service, Department of
Labor (Parts 1000--1099)
Title 21--Food and Drugs
I Food and Drug Administration, Department of Health and
Human Services (Parts 1--1299)
II Drug Enforcement Administration, Department of Justice
(Parts 1300--1399)
III Office of National Drug Control Policy (Parts 1400--
1499)
Title 22--Foreign Relations
I Department of State (Parts 1--199)
II Agency for International Development (Parts 200--299)
III Peace Corps (Parts 300--399)
IV International Joint Commission, United States and
Canada (Parts 400--499)
V United States Agency for Global Media (Parts 500--599)
VII U.S. International Development Finance Corporation
(Parts 700--799)
IX Foreign Service Grievance Board (Parts 900--999)
X Inter-American Foundation (Parts 1000--1099)
XI International Boundary and Water Commission, United
States and Mexico, United States Section (Parts
1100--1199)
XII United States International Development Cooperation
Agency (Parts 1200--1299)
XIII Millennium Challenge Corporation (Parts 1300--1399)
XIV Foreign Service Labor Relations Board; Federal Labor
Relations Authority; General Counsel of the
Federal Labor Relations Authority; and the Foreign
Service Impasse Disputes Panel (Parts 1400--1499)
XV African Development Foundation (Parts 1500--1599)
XVI Japan-United States Friendship Commission (Parts
1600--1699)
XVII United States Institute of Peace (Parts 1700--1799)
[[Page 958]]
Title 23--Highways
I Federal Highway Administration, Department of
Transportation (Parts 1--999)
II National Highway Traffic Safety Administration and
Federal Highway Administration, Department of
Transportation (Parts 1200--1299)
III National Highway Traffic Safety Administration,
Department of Transportation (Parts 1300--1399)
Title 24--Housing and Urban Development
Subtitle A--Office of the Secretary, Department of
Housing and Urban Development (Parts 0--99)
Subtitle B--Regulations Relating to Housing and Urban
Development
I Office of Assistant Secretary for Equal Opportunity,
Department of Housing and Urban Development (Parts
100--199)
II Office of Assistant Secretary for Housing-Federal
Housing Commissioner, Department of Housing and
Urban Development (Parts 200--299)
III Government National Mortgage Association, Department
of Housing and Urban Development (Parts 300--399)
IV Office of Housing and Office of Multifamily Housing
Assistance Restructuring, Department of Housing
and Urban Development (Parts 400--499)
V Office of Assistant Secretary for Community Planning
and Development, Department of Housing and Urban
Development (Parts 500--599)
VI Office of Assistant Secretary for Community Planning
and Development, Department of Housing and Urban
Development (Parts 600--699) [Reserved]
VII Office of the Secretary, Department of Housing and
Urban Development (Housing Assistance Programs and
Public and Indian Housing Programs) (Parts 700--
799)
VIII Office of the Assistant Secretary for Housing--Federal
Housing Commissioner, Department of Housing and
Urban Development (Section 8 Housing Assistance
Programs, Section 202 Direct Loan Program, Section
202 Supportive Housing for the Elderly Program and
Section 811 Supportive Housing for Persons With
Disabilities Program) (Parts 800--899)
IX Office of Assistant Secretary for Public and Indian
Housing, Department of Housing and Urban
Development (Parts 900--1699)
X Office of Assistant Secretary for Housing--Federal
Housing Commissioner, Department of Housing and
Urban Development (Interstate Land Sales
Registration Program) (Parts 1700--1799)
[Reserved]
XII Office of Inspector General, Department of Housing and
Urban Development (Parts 2000--2099)
XV Emergency Mortgage Insurance and Loan Programs,
Department of Housing and Urban Development (Parts
2700--2799) [Reserved]
[[Page 959]]
XX Office of Assistant Secretary for Housing--Federal
Housing Commissioner, Department of Housing and
Urban Development (Parts 3200--3899)
XXIV Board of Directors of the HOPE for Homeowners Program
(Parts 4000--4099) [Reserved]
XXV Neighborhood Reinvestment Corporation (Parts 4100--
4199)
Title 25--Indians
I Bureau of Indian Affairs, Department of the Interior
(Parts 1--299)
II Indian Arts and Crafts Board, Department of the
Interior (Parts 300--399)
III National Indian Gaming Commission, Department of the
Interior (Parts 500--599)
IV Office of Navajo and Hopi Indian Relocation (Parts
700--899)
V Bureau of Indian Affairs, Department of the Interior,
and Indian Health Service, Department of Health
and Human Services (Part 900--999)
VI Office of the Assistant Secretary, Indian Affairs,
Department of the Interior (Parts 1000--1199)
VII Office of the Special Trustee for American Indians,
Department of the Interior (Parts 1200--1299)
Title 26--Internal Revenue
I Internal Revenue Service, Department of the Treasury
(Parts 1--End)
Title 27--Alcohol, Tobacco Products and Firearms
I Alcohol and Tobacco Tax and Trade Bureau, Department
of the Treasury (Parts 1--399)
II Bureau of Alcohol, Tobacco, Firearms, and Explosives,
Department of Justice (Parts 400--799)
Title 28--Judicial Administration
I Department of Justice (Parts 0--299)
III Federal Prison Industries, Inc., Department of Justice
(Parts 300--399)
V Bureau of Prisons, Department of Justice (Parts 500--
599)
VI Offices of Independent Counsel, Department of Justice
(Parts 600--699)
VII Office of Independent Counsel (Parts 700--799)
VIII Court Services and Offender Supervision Agency for the
District of Columbia (Parts 800--899)
IX National Crime Prevention and Privacy Compact Council
(Parts 900--999)
[[Page 960]]
XI Department of Justice and Department of State (Parts
1100--1199)
Title 29--Labor
Subtitle A--Office of the Secretary of Labor (Parts
0--99)
Subtitle B--Regulations Relating to Labor
I National Labor Relations Board (Parts 100--199)
II Office of Labor-Management Standards, Department of
Labor (Parts 200--299)
III National Railroad Adjustment Board (Parts 300--399)
IV Office of Labor-Management Standards, Department of
Labor (Parts 400--499)
V Wage and Hour Division, Department of Labor (Parts
500--899)
IX Construction Industry Collective Bargaining Commission
(Parts 900--999)
X National Mediation Board (Parts 1200--1299)
XII Federal Mediation and Conciliation Service (Parts
1400--1499)
XIV Equal Employment Opportunity Commission (Parts 1600--
1699)
XVII Occupational Safety and Health Administration,
Department of Labor (Parts 1900--1999)
XX Occupational Safety and Health Review Commission
(Parts 2200--2499)
XXV Employee Benefits Security Administration, Department
of Labor (Parts 2500--2599)
XXVII Federal Mine Safety and Health Review Commission
(Parts 2700--2799)
XL Pension Benefit Guaranty Corporation (Parts 4000--
4999)
Title 30--Mineral Resources
I Mine Safety and Health Administration, Department of
Labor (Parts 1--199)
II Bureau of Safety and Environmental Enforcement,
Department of the Interior (Parts 200--299)
IV Geological Survey, Department of the Interior (Parts
400--499)
V Bureau of Ocean Energy Management, Department of the
Interior (Parts 500--599)
VII Office of Surface Mining Reclamation and Enforcement,
Department of the Interior (Parts 700--999)
XII Office of Natural Resources Revenue, Department of the
Interior (Parts 1200--1299)
Title 31--Money and Finance: Treasury
Subtitle A--Office of the Secretary of the Treasury
(Parts 0--50)
Subtitle B--Regulations Relating to Money and Finance
[[Page 961]]
I Monetary Offices, Department of the Treasury (Parts
51--199)
II Fiscal Service, Department of the Treasury (Parts
200--399)
IV Secret Service, Department of the Treasury (Parts
400--499)
V Office of Foreign Assets Control, Department of the
Treasury (Parts 500--599)
VI Bureau of Engraving and Printing, Department of the
Treasury (Parts 600--699)
VII Federal Law Enforcement Training Center, Department of
the Treasury (Parts 700--799)
VIII Office of Investment Security, Department of the
Treasury (Parts 800--899)
IX Federal Claims Collection Standards (Department of the
Treasury--Department of Justice) (Parts 900--999)
X Financial Crimes Enforcement Network, Department of
the Treasury (Parts 1000--1099)
Title 32--National Defense
Subtitle A--Department of Defense
I Office of the Secretary of Defense (Parts 1--399)
V Department of the Army (Parts 400--699)
VI Department of the Navy (Parts 700--799)
VII Department of the Air Force (Parts 800--1099)
Subtitle B--Other Regulations Relating to National
Defense
XII Department of Defense, Defense Logistics Agency (Parts
1200--1299)
XVI Selective Service System (Parts 1600--1699)
XVII Office of the Director of National Intelligence (Parts
1700--1799)
XVIII National Counterintelligence Center (Parts 1800--1899)
XIX Central Intelligence Agency (Parts 1900--1999)
XX Information Security Oversight Office, National
Archives and Records Administration (Parts 2000--
2099)
XXI National Security Council (Parts 2100--2199)
XXIV Office of Science and Technology Policy (Parts 2400--
2499)
XXVII Office for Micronesian Status Negotiations (Parts
2700--2799)
XXVIII Office of the Vice President of the United States
(Parts 2800--2899)
Title 33--Navigation and Navigable Waters
I Coast Guard, Department of Homeland Security (Parts
1--199)
II Corps of Engineers, Department of the Army, Department
of Defense (Parts 200--399)
IV Great Lakes St. Lawrence Seaway Development
Corporation, Department of Transportation (Parts
400--499)
[[Page 962]]
Title 34--Education
Subtitle A--Office of the Secretary, Department of
Education (Parts 1--99)
Subtitle B--Regulations of the Offices of the
Department of Education
I Office for Civil Rights, Department of Education
(Parts 100--199)
II Office of Elementary and Secondary Education,
Department of Education (Parts 200--299)
III Office of Special Education and Rehabilitative
Services, Department of Education (Parts 300--399)
IV Office of Career, Technical, and Adult Education,
Department of Education (Parts 400--499)
V Office of Bilingual Education and Minority Languages
Affairs, Department of Education (Parts 500--599)
[Reserved]
VI Office of Postsecondary Education, Department of
Education (Parts 600--699)
VII Office of Educational Research and Improvement,
Department of Education (Parts 700--799)
[Reserved]
Subtitle C--Regulations Relating to Education
XI (Parts 1100--1199) [Reserved]
XII National Council on Disability (Parts 1200--1299)
Title 35 [Reserved]
Title 36--Parks, Forests, and Public Property
I National Park Service, Department of the Interior
(Parts 1--199)
II Forest Service, Department of Agriculture (Parts 200--
299)
III Corps of Engineers, Department of the Army (Parts
300--399)
IV American Battle Monuments Commission (Parts 400--499)
V Smithsonian Institution (Parts 500--599)
VI [Reserved]
VII Library of Congress (Parts 700--799)
VIII Advisory Council on Historic Preservation (Parts 800--
899)
IX Pennsylvania Avenue Development Corporation (Parts
900--999)
X Presidio Trust (Parts 1000--1099)
XI Architectural and Transportation Barriers Compliance
Board (Parts 1100--1199)
XII National Archives and Records Administration (Parts
1200--1299)
XV Oklahoma City National Memorial Trust (Parts 1500--
1599)
XVI Morris K. Udall Scholarship and Excellence in National
Environmental Policy Foundation (Parts 1600--1699)
Title 37--Patents, Trademarks, and Copyrights
I United States Patent and Trademark Office, Department
of Commerce (Parts 1--199)
II U.S. Copyright Office, Library of Congress (Parts
200--299)
[[Page 963]]
III Copyright Royalty Board, Library of Congress (Parts
300--399)
IV National Institute of Standards and Technology,
Department of Commerce (Parts 400--599)
Title 38--Pensions, Bonuses, and Veterans' Relief
I Department of Veterans Affairs (Parts 0--199)
II Armed Forces Retirement Home (Parts 200--299)
Title 39--Postal Service
I United States Postal Service (Parts 1--999)
III Postal Regulatory Commission (Parts 3000--3099)
Title 40--Protection of Environment
I Environmental Protection Agency (Parts 1--1099)
IV Environmental Protection Agency and Department of
Justice (Parts 1400--1499)
V Council on Environmental Quality (Parts 1500--1599)
VI Chemical Safety and Hazard Investigation Board (Parts
1600--1699)
VII Environmental Protection Agency and Department of
Defense; Uniform National Discharge Standards for
Vessels of the Armed Forces (Parts 1700--1799)
VIII Gulf Coast Ecosystem Restoration Council (Parts 1800--
1899)
IX Federal Permitting Improvement Steering Council (Part
1900)
Title 41--Public Contracts and Property Management
Subtitle A--Federal Procurement Regulations System
[Note]
Subtitle B--Other Provisions Relating to Public
Contracts
50 Public Contracts, Department of Labor (Parts 50-1--50-
999)
51 Committee for Purchase From People Who Are Blind or
Severely Disabled (Parts 51-1--51-99)
60 Office of Federal Contract Compliance Programs, Equal
Employment Opportunity, Department of Labor (Parts
60-1--60-999)
61 Office of the Assistant Secretary for Veterans'
Employment and Training Service, Department of
Labor (Parts 61-1--61-999)
62--100 [Reserved]
Subtitle C--Federal Property Management Regulations
System
101 Federal Property Management Regulations (Parts 101-1--
101-99)
102 Federal Management Regulation (Parts 102-1--102-299)
103--104 [Reserved]
105 General Services Administration (Parts 105-1--105-999)
[[Page 964]]
109 Department of Energy Property Management Regulations
(Parts 109-1--109-99)
114 Department of the Interior (Parts 114-1--114-99)
115 Environmental Protection Agency (Parts 115-1--115-99)
128 Department of Justice (Parts 128-1--128-99)
129--200 [Reserved]
Subtitle D--Other Provisions Relating to Property
Management [Reserved]
Subtitle E--Federal Information Resources Management
Regulations System [Reserved]
Subtitle F--Federal Travel Regulation System
300 General (Parts 300-1--300-99)
301 Temporary Duty (TDY) Travel Allowances (Parts 301-1--
301-99)
302 Relocation Allowances (Parts 302-1--302-99)
303 Payment of Expenses Connected with the Death of
Certain Employees (Part 303-1--303-99)
304 Payment of Travel Expenses from a Non-Federal Source
(Parts 304-1--304-99)
Title 42--Public Health
I Public Health Service, Department of Health and Human
Services (Parts 1--199)
II--III [Reserved]
IV Centers for Medicare & Medicaid Services, Department
of Health and Human Services (Parts 400--699)
V Office of Inspector General-Health Care, Department of
Health and Human Services (Parts 1000--1099)
Title 43--Public Lands: Interior
Subtitle A--Office of the Secretary of the Interior
(Parts 1--199)
Subtitle B--Regulations Relating to Public Lands
I Bureau of Reclamation, Department of the Interior
(Parts 400--999)
II Bureau of Land Management, Department of the Interior
(Parts 1000--9999)
III Utah Reclamation Mitigation and Conservation
Commission (Parts 10000--10099)
Title 44--Emergency Management and Assistance
I Federal Emergency Management Agency, Department of
Homeland Security (Parts 0--399)
IV Department of Commerce and Department of
Transportation (Parts 400--499)
[[Page 965]]
Title 45--Public Welfare
Subtitle A--Department of Health and Human Services
(Parts 1--199)
Subtitle B--Regulations Relating to Public Welfare
II Office of Family Assistance (Assistance Programs),
Administration for Children and Families,
Department of Health and Human Services (Parts
200--299)
III Office of Child Support Enforcement (Child Support
Enforcement Program), Administration for Children
and Families, Department of Health and Human
Services (Parts 300--399)
IV Office of Refugee Resettlement, Administration for
Children and Families, Department of Health and
Human Services (Parts 400--499)
V Foreign Claims Settlement Commission of the United
States, Department of Justice (Parts 500--599)
VI National Science Foundation (Parts 600--699)
VII Commission on Civil Rights (Parts 700--799)
VIII Office of Personnel Management (Parts 800--899)
IX Denali Commission (Parts 900--999)
X Office of Community Services, Administration for
Children and Families, Department of Health and
Human Services (Parts 1000--1099)
XI National Foundation on the Arts and the Humanities
(Parts 1100--1199)
XII Corporation for National and Community Service (Parts
1200--1299)
XIII Administration for Children and Families, Department
of Health and Human Services (Parts 1300--1399)
XVI Legal Services Corporation (Parts 1600--1699)
XVII National Commission on Libraries and Information
Science (Parts 1700--1799)
XVIII Harry S. Truman Scholarship Foundation (Parts 1800--
1899)
XXI Commission of Fine Arts (Parts 2100--2199)
XXIII Arctic Research Commission (Parts 2300--2399)
XXIV James Madison Memorial Fellowship Foundation (Parts
2400--2499)
XXV Corporation for National and Community Service (Parts
2500--2599)
Title 46--Shipping
I Coast Guard, Department of Homeland Security (Parts
1--199)
II Maritime Administration, Department of Transportation
(Parts 200--399)
III Coast Guard (Great Lakes Pilotage), Department of
Homeland Security (Parts 400--499)
IV Federal Maritime Commission (Parts 500--599)
[[Page 966]]
Title 47--Telecommunication
I Federal Communications Commission (Parts 0--199)
II Office of Science and Technology Policy and National
Security Council (Parts 200--299)
III National Telecommunications and Information
Administration, Department of Commerce (Parts
300--399)
IV National Telecommunications and Information
Administration, Department of Commerce, and
National Highway Traffic Safety Administration,
Department of Transportation (Parts 400--499)
V The First Responder Network Authority (Parts 500--599)
Title 48--Federal Acquisition Regulations System
1 Federal Acquisition Regulation (Parts 1--99)
2 Defense Acquisition Regulations System, Department of
Defense (Parts 200--299)
3 Department of Health and Human Services (Parts 300--
399)
4 Department of Agriculture (Parts 400--499)
5 General Services Administration (Parts 500--599)
6 Department of State (Parts 600--699)
7 Agency for International Development (Parts 700--799)
8 Department of Veterans Affairs (Parts 800--899)
9 Department of Energy (Parts 900--999)
10 Department of the Treasury (Parts 1000--1099)
12 Department of Transportation (Parts 1200--1299)
13 Department of Commerce (Parts 1300--1399)
14 Department of the Interior (Parts 1400--1499)
15 Environmental Protection Agency (Parts 1500--1599)
16 Office of Personnel Management Federal Employees
Health Benefits Acquisition Regulation (Parts
1600--1699)
17 Office of Personnel Management (Parts 1700--1799)
18 National Aeronautics and Space Administration (Parts
1800--1899)
19 Broadcasting Board of Governors (Parts 1900--1999)
20 Nuclear Regulatory Commission (Parts 2000--2099)
21 Office of Personnel Management, Federal Employees
Group Life Insurance Federal Acquisition
Regulation (Parts 2100--2199)
23 Social Security Administration (Parts 2300--2399)
24 Department of Housing and Urban Development (Parts
2400--2499)
25 National Science Foundation (Parts 2500--2599)
28 Department of Justice (Parts 2800--2899)
29 Department of Labor (Parts 2900--2999)
30 Department of Homeland Security, Homeland Security
Acquisition Regulation (HSAR) (Parts 3000--3099)
34 Department of Education Acquisition Regulation (Parts
3400--3499)
[[Page 967]]
51 Department of the Army Acquisition Regulations (Parts
5100--5199) [Reserved]
52 Department of the Navy Acquisition Regulations (Parts
5200--5299)
53 Department of the Air Force Federal Acquisition
Regulation Supplement (Parts 5300--5399)
[Reserved]
54 Defense Logistics Agency, Department of Defense (Parts
5400--5499)
57 African Development Foundation (Parts 5700--5799)
61 Civilian Board of Contract Appeals, General Services
Administration (Parts 6100--6199)
99 Cost Accounting Standards Board, Office of Federal
Procurement Policy, Office of Management and
Budget (Parts 9900--9999)
Title 49--Transportation
Subtitle A--Office of the Secretary of Transportation
(Parts 1--99)
Subtitle B--Other Regulations Relating to
Transportation
I Pipeline and Hazardous Materials Safety
Administration, Department of Transportation
(Parts 100--199)
II Federal Railroad Administration, Department of
Transportation (Parts 200--299)
III Federal Motor Carrier Safety Administration,
Department of Transportation (Parts 300--399)
IV Coast Guard, Department of Homeland Security (Parts
400--499)
V National Highway Traffic Safety Administration,
Department of Transportation (Parts 500--599)
VI Federal Transit Administration, Department of
Transportation (Parts 600--699)
VII National Railroad Passenger Corporation (AMTRAK)
(Parts 700--799)
VIII National Transportation Safety Board (Parts 800--999)
X Surface Transportation Board (Parts 1000--1399)
XI Research and Innovative Technology Administration,
Department of Transportation (Parts 1400--1499)
[Reserved]
XII Transportation Security Administration, Department of
Homeland Security (Parts 1500--1699)
Title 50--Wildlife and Fisheries
I United States Fish and Wildlife Service, Department of
the Interior (Parts 1--199)
II National Marine Fisheries Service, National Oceanic
and Atmospheric Administration, Department of
Commerce (Parts 200--299)
III International Fishing and Related Activities (Parts
300--399)
[[Page 968]]
IV Joint Regulations (United States Fish and Wildlife
Service, Department of the Interior and National
Marine Fisheries Service, National Oceanic and
Atmospheric Administration, Department of
Commerce); Endangered Species Committee
Regulations (Parts 400--499)
V Marine Mammal Commission (Parts 500--599)
VI Fishery Conservation and Management, National Oceanic
and Atmospheric Administration, Department of
Commerce (Parts 600--699)
[[Page 969]]
Alphabetical List of Agencies Appearing in the CFR
(Revised as of July 1, 2021)
CFR Title, Subtitle or
Agency Chapter
Administrative Conference of the United States 1, III
Advisory Council on Historic Preservation 36, VIII
Advocacy and Outreach, Office of 7, XXV
Afghanistan Reconstruction, Special Inspector 5, LXXXIII
General for
African Development Foundation 22, XV
Federal Acquisition Regulation 48, 57
Agency for International Development 2, VII; 22, II
Federal Acquisition Regulation 48, 7
Agricultural Marketing Service 7, I, VIII, IX, X, XI; 9,
II
Agricultural Research Service 7, V
Agriculture, Department of 2, IV; 5, LXXIII
Advocacy and Outreach, Office of 7, XXV
Agricultural Marketing Service 7, I, VIII, IX, X, XI; 9,
II
Agricultural Research Service 7, V
Animal and Plant Health Inspection Service 7, III; 9, I
Chief Financial Officer, Office of 7, XXX
Commodity Credit Corporation 7, XIV
Economic Research Service 7, XXXVII
Energy Policy and New Uses, Office of 2, IX; 7, XXIX
Environmental Quality, Office of 7, XXXI
Farm Service Agency 7, VII, XVIII
Federal Acquisition Regulation 48, 4
Federal Crop Insurance Corporation 7, IV
Food and Nutrition Service 7, II
Food Safety and Inspection Service 9, III
Foreign Agricultural Service 7, XV
Forest Service 36, II
Information Resources Management, Office of 7, XXVII
Inspector General, Office of 7, XXVI
National Agricultural Library 7, XLI
National Agricultural Statistics Service 7, XXXVI
National Institute of Food and Agriculture 7, XXXIV
Natural Resources Conservation Service 7, VI
Operations, Office of 7, XXVIII
Procurement and Property Management, Office of 7, XXXII
Rural Business-Cooperative Service 7, XVIII, XLII
Rural Development Administration 7, XLII
Rural Housing Service 7, XVIII, XXXV
Rural Utilities Service 7, XVII, XVIII, XLII
Secretary of Agriculture, Office of 7, Subtitle A
Transportation, Office of 7, XXXIII
World Agricultural Outlook Board 7, XXXVIII
Air Force, Department of 32, VII
Federal Acquisition Regulation Supplement 48, 53
Air Transportation Stabilization Board 14, VI
Alcohol and Tobacco Tax and Trade Bureau 27, I
Alcohol, Tobacco, Firearms, and Explosives, 27, II
Bureau of
AMTRAK 49, VII
American Battle Monuments Commission 36, IV
American Indians, Office of the Special Trustee 25, VII
Animal and Plant Health Inspection Service 7, III; 9, I
Appalachian Regional Commission 5, IX
Architectural and Transportation Barriers 36, XI
Compliance Board
[[Page 970]]
Arctic Research Commission 45, XXIII
Armed Forces Retirement Home 5, XI; 38, II
Army, Department of 32, V
Engineers, Corps of 33, II; 36, III
Federal Acquisition Regulation 48, 51
Benefits Review Board 20, VII
Bilingual Education and Minority Languages 34, V
Affairs, Office of
Blind or Severely Disabled, Committee for 41, 51
Purchase from People Who Are
Federal Acquisition Regulation 48, 19
Career, Technical, and Adult Education, Office 34, IV
of
Census Bureau 15, I
Centers for Medicare & Medicaid Services 42, IV
Central Intelligence Agency 32, XIX
Chemical Safety and Hazard Investigation Board 40, VI
Chief Financial Officer, Office of 7, XXX
Child Support Enforcement, Office of 45, III
Children and Families, Administration for 45, II, III, IV, X, XIII
Civil Rights, Commission on 5, LXVIII; 45, VII
Civil Rights, Office for 34, I
Coast Guard 33, I; 46, I; 49, IV
Coast Guard (Great Lakes Pilotage) 46, III
Commerce, Department of 2, XIII; 44, IV; 50, VI
Census Bureau 15, I
Economic Affairs, Office of the Under- 15, XV
Secretary for
Economic Analysis, Bureau of 15, VIII
Economic Development Administration 13, III
Emergency Management and Assistance 44, IV
Federal Acquisition Regulation 48, 13
Foreign-Trade Zones Board 15, IV
Industry and Security, Bureau of 15, VII
International Trade Administration 15, III; 19, III
National Institute of Standards and Technology 15, II; 37, IV
National Marine Fisheries Service 50, II, IV
National Oceanic and Atmospheric 15, IX; 50, II, III, IV,
Administration VI
National Technical Information Service 15, XI
National Telecommunications and Information 15, XXIII; 47, III, IV
Administration
National Weather Service 15, IX
Patent and Trademark Office, United States 37, I
Secretary of Commerce, Office of 15, Subtitle A
Commercial Space Transportation 14, III
Commodity Credit Corporation 7, XIV
Commodity Futures Trading Commission 5, XLI; 17, I
Community Planning and Development, Office of 24, V, VI
Assistant Secretary for
Community Services, Office of 45, X
Comptroller of the Currency 12, I
Construction Industry Collective Bargaining 29, IX
Commission
Consumer Financial Protection Bureau 5, LXXXIV; 12, X
Consumer Product Safety Commission 5, LXXI; 16, II
Copyright Royalty Board 37, III
Corporation for National and Community Service 2, XXII; 45, XII, XXV
Cost Accounting Standards Board 48, 99
Council on Environmental Quality 40, V
Council of the Inspectors General on Integrity 5, XCVIII
and Efficiency
Court Services and Offender Supervision Agency 5, LXX; 28, VIII
for the District of Columbia
Customs and Border Protection 19, I
Defense, Department of 2, XI; 5, XXVI; 32,
Subtitle A; 40, VII
Advanced Research Projects Agency 32, I
Air Force Department 32, VII
Army Department 32, V; 33, II; 36, III;
48, 51
Defense Acquisition Regulations System 48, 2
Defense Intelligence Agency 32, I
[[Page 971]]
Defense Logistics Agency 32, I, XII; 48, 54
Engineers, Corps of 33, II; 36, III
National Imagery and Mapping Agency 32, I
Navy, Department of 32, VI; 48, 52
Secretary of Defense, Office of 2, XI; 32, I
Defense Contract Audit Agency 32, I
Defense Intelligence Agency 32, I
Defense Logistics Agency 32, XII; 48, 54
Defense Nuclear Facilities Safety Board 10, XVII
Delaware River Basin Commission 18, III
Denali Commission 45, IX
Disability, National Council on 5, C; 34, XII
District of Columbia, Court Services and 5, LXX; 28, VIII
Offender Supervision Agency for the
Drug Enforcement Administration 21, II
East-West Foreign Trade Board 15, XIII
Economic Affairs, Office of the Under-Secretary 15, XV
for
Economic Analysis, Bureau of 15, VIII
Economic Development Administration 13, III
Economic Research Service 7, XXXVII
Education, Department of 2, XXXIV; 5, LIII
Bilingual Education and Minority Languages 34, V
Affairs, Office of
Career, Technical, and Adult Education, Office 34, IV
of
Civil Rights, Office for 34, I
Educational Research and Improvement, Office 34, VII
of
Elementary and Secondary Education, Office of 34, II
Federal Acquisition Regulation 48, 34
Postsecondary Education, Office of 34, VI
Secretary of Education, Office of 34, Subtitle A
Special Education and Rehabilitative Services, 34, III
Office of
Educational Research and Improvement, Office of 34, VII
Election Assistance Commission 2, LVIII; 11, II
Elementary and Secondary Education, Office of 34, II
Emergency Oil and Gas Guaranteed Loan Board 13, V
Emergency Steel Guarantee Loan Board 13, IV
Employee Benefits Security Administration 29, XXV
Employees' Compensation Appeals Board 20, IV
Employees Loyalty Board 5, V
Employment and Training Administration 20, V
Employment Policy, National Commission for 1, IV
Employment Standards Administration 20, VI
Endangered Species Committee 50, IV
Energy, Department of 2, IX; 5, XXIII; 10, II,
III, X
Federal Acquisition Regulation 48, 9
Federal Energy Regulatory Commission 5, XXIV; 18, I
Property Management Regulations 41, 109
Energy, Office of 7, XXIX
Engineers, Corps of 33, II; 36, III
Engraving and Printing, Bureau of 31, VI
Environmental Protection Agency 2, XV; 5, LIV; 40, I, IV,
VII
Federal Acquisition Regulation 48, 15
Property Management Regulations 41, 115
Environmental Quality, Office of 7, XXXI
Equal Employment Opportunity Commission 5, LXII; 29, XIV
Equal Opportunity, Office of Assistant Secretary 24, I
for
Executive Office of the President 3, I
Environmental Quality, Council on 40, V
Management and Budget, Office of 2, Subtitle A; 5, III,
LXXVII; 14, VI; 48, 99
National Drug Control Policy, Office of 2, XXXVI; 21, III
National Security Council 32, XXI; 47, II
Presidential Documents 3
Science and Technology Policy, Office of 32, XXIV; 47, II
Trade Representative, Office of the United 15, XX
States
[[Page 972]]
Export-Import Bank of the United States 2, XXXV; 5, LII; 12, IV
Family Assistance, Office of 45, II
Farm Credit Administration 5, XXXI; 12, VI
Farm Credit System Insurance Corporation 5, XXX; 12, XIV
Farm Service Agency 7, VII, XVIII
Federal Acquisition Regulation 48, 1
Federal Aviation Administration 14, I
Commercial Space Transportation 14, III
Federal Claims Collection Standards 31, IX
Federal Communications Commission 5, XXIX; 47, I
Federal Contract Compliance Programs, Office of 41, 60
Federal Crop Insurance Corporation 7, IV
Federal Deposit Insurance Corporation 5, XXII; 12, III
Federal Election Commission 5, XXXVII; 11, I
Federal Emergency Management Agency 44, I
Federal Employees Group Life Insurance Federal 48, 21
Acquisition Regulation
Federal Employees Health Benefits Acquisition 48, 16
Regulation
Federal Energy Regulatory Commission 5, XXIV; 18, I
Federal Financial Institutions Examination 12, XI
Council
Federal Financing Bank 12, VIII
Federal Highway Administration 23, I, II
Federal Home Loan Mortgage Corporation 1, IV
Federal Housing Enterprise Oversight Office 12, XVII
Federal Housing Finance Agency 5, LXXX; 12, XII
Federal Labor Relations Authority 5, XIV, XLIX; 22, XIV
Federal Law Enforcement Training Center 31, VII
Federal Management Regulation 41, 102
Federal Maritime Commission 46, IV
Federal Mediation and Conciliation Service 29, XII
Federal Mine Safety and Health Review Commission 5, LXXIV; 29, XXVII
Federal Motor Carrier Safety Administration 49, III
Federal Permitting Improvement Steering Council 40, IX
Federal Prison Industries, Inc. 28, III
Federal Procurement Policy Office 48, 99
Federal Property Management Regulations 41, 101
Federal Railroad Administration 49, II
Federal Register, Administrative Committee of 1, I
Federal Register, Office of 1, II
Federal Reserve System 12, II
Board of Governors 5, LVIII
Federal Retirement Thrift Investment Board 5, VI, LXXVI
Federal Service Impasses Panel 5, XIV
Federal Trade Commission 5, XLVII; 16, I
Federal Transit Administration 49, VI
Federal Travel Regulation System 41, Subtitle F
Financial Crimes Enforcement Network 31, X
Financial Research Office 12, XVI
Financial Stability Oversight Council 12, XIII
Fine Arts, Commission of 45, XXI
Fiscal Service 31, II
Fish and Wildlife Service, United States 50, I, IV
Food and Drug Administration 21, I
Food and Nutrition Service 7, II
Food Safety and Inspection Service 9, III
Foreign Agricultural Service 7, XV
Foreign Assets Control, Office of 31, V
Foreign Claims Settlement Commission of the 45, V
United States
Foreign Service Grievance Board 22, IX
Foreign Service Impasse Disputes Panel 22, XIV
Foreign Service Labor Relations Board 22, XIV
Foreign-Trade Zones Board 15, IV
Forest Service 36, II
General Services Administration 5, LVII; 41, 105
Contract Appeals, Board of 48, 61
Federal Acquisition Regulation 48, 5
Federal Management Regulation 41, 102
[[Page 973]]
Federal Property Management Regulations 41, 101
Federal Travel Regulation System 41, Subtitle F
General 41, 300
Payment From a Non-Federal Source for Travel 41, 304
Expenses
Payment of Expenses Connected With the Death 41, 303
of Certain Employees
Relocation Allowances 41, 302
Temporary Duty (TDY) Travel Allowances 41, 301
Geological Survey 30, IV
Government Accountability Office 4, I
Government Ethics, Office of 5, XVI
Government National Mortgage Association 24, III
Grain Inspection, Packers and Stockyards 7, VIII; 9, II
Administration
Great Lakes St. Lawrence Seaway Development 33, IV
Corporation
Gulf Coast Ecosystem Restoration Council 2, LIX; 40, VIII
Harry S. Truman Scholarship Foundation 45, XVIII
Health and Human Services, Department of 2, III; 5, XLV; 45,
Subtitle A
Centers for Medicare & Medicaid Services 42, IV
Child Support Enforcement, Office of 45, III
Children and Families, Administration for 45, II, III, IV, X, XIII
Community Services, Office of 45, X
Family Assistance, Office of 45, II
Federal Acquisition Regulation 48, 3
Food and Drug Administration 21, I
Indian Health Service 25, V
Inspector General (Health Care), Office of 42, V
Public Health Service 42, I
Refugee Resettlement, Office of 45, IV
Homeland Security, Department of 2, XXX; 5, XXXVI; 6, I; 8,
I
Coast Guard 33, I; 46, I; 49, IV
Coast Guard (Great Lakes Pilotage) 46, III
Customs and Border Protection 19, I
Federal Emergency Management Agency 44, I
Human Resources Management and Labor Relations 5, XCVII
Systems
Immigration and Customs Enforcement Bureau 19, IV
Transportation Security Administration 49, XII
HOPE for Homeowners Program, Board of Directors 24, XXIV
of
Housing, Office of, and Multifamily Housing 24, IV
Assistance Restructuring, Office of
Housing and Urban Development, Department of 2, XXIV; 5, LXV; 24,
Subtitle B
Community Planning and Development, Office of 24, V, VI
Assistant Secretary for
Equal Opportunity, Office of Assistant 24, I
Secretary for
Federal Acquisition Regulation 48, 24
Federal Housing Enterprise Oversight, Office 12, XVII
of
Government National Mortgage Association 24, III
Housing--Federal Housing Commissioner, Office 24, II, VIII, X, XX
of Assistant Secretary for
Housing, Office of, and Multifamily Housing 24, IV
Assistance Restructuring, Office of
Inspector General, Office of 24, XII
Public and Indian Housing, Office of Assistant 24, IX
Secretary for
Secretary, Office of 24, Subtitle A, VII
Housing--Federal Housing Commissioner, Office of 24, II, VIII, X, XX
Assistant Secretary for
Housing, Office of, and Multifamily Housing 24, IV
Assistance Restructuring, Office of
Immigration and Customs Enforcement Bureau 19, IV
Immigration Review, Executive Office for 8, V
Independent Counsel, Office of 28, VII
Independent Counsel, Offices of 28, VI
Indian Affairs, Bureau of 25, I, V
Indian Affairs, Office of the Assistant 25, VI
Secretary
[[Page 974]]
Indian Arts and Crafts Board 25, II
Indian Health Service 25, V
Industry and Security, Bureau of 15, VII
Information Resources Management, Office of 7, XXVII
Information Security Oversight Office, National 32, XX
Archives and Records Administration
Inspector General
Agriculture Department 7, XXVI
Health and Human Services Department 42, V
Housing and Urban Development Department 24, XII, XV
Institute of Peace, United States 22, XVII
Inter-American Foundation 5, LXIII; 22, X
Interior, Department of 2, XIV
American Indians, Office of the Special 25, VII
Trustee
Endangered Species Committee 50, IV
Federal Acquisition Regulation 48, 14
Federal Property Management Regulations System 41, 114
Fish and Wildlife Service, United States 50, I, IV
Geological Survey 30, IV
Indian Affairs, Bureau of 25, I, V
Indian Affairs, Office of the Assistant 25, VI
Secretary
Indian Arts and Crafts Board 25, II
Land Management, Bureau of 43, II
National Indian Gaming Commission 25, III
National Park Service 36, I
Natural Resource Revenue, Office of 30, XII
Ocean Energy Management, Bureau of 30, V
Reclamation, Bureau of 43, I
Safety and Environmental Enforcement, Bureau 30, II
of
Secretary of the Interior, Office of 2, XIV; 43, Subtitle A
Surface Mining Reclamation and Enforcement, 30, VII
Office of
Internal Revenue Service 26, I
International Boundary and Water Commission, 22, XI
United States and Mexico, United States
Section
International Development, United States Agency 22, II
for
Federal Acquisition Regulation 48, 7
International Development Cooperation Agency, 22, XII
United States
International Development Finance Corporation, 5, XXXIII; 22, VII
U.S.
International Joint Commission, United States 22, IV
and Canada
International Organizations Employees Loyalty 5, V
Board
International Trade Administration 15, III; 19, III
International Trade Commission, United States 19, II
Interstate Commerce Commission 5, XL
Investment Security, Office of 31, VIII
James Madison Memorial Fellowship Foundation 45, XXIV
Japan-United States Friendship Commission 22, XVI
Joint Board for the Enrollment of Actuaries 20, VIII
Justice, Department of 2, XXVIII; 5, XXVIII; 28,
I, XI; 40, IV
Alcohol, Tobacco, Firearms, and Explosives, 27, II
Bureau of
Drug Enforcement Administration 21, II
Federal Acquisition Regulation 48, 28
Federal Claims Collection Standards 31, IX
Federal Prison Industries, Inc. 28, III
Foreign Claims Settlement Commission of the 45, V
United States
Immigration Review, Executive Office for 8, V
Independent Counsel, Offices of 28, VI
Prisons, Bureau of 28, V
Property Management Regulations 41, 128
Labor, Department of 2, XXIX; 5, XLII
Benefits Review Board 20, VII
Employee Benefits Security Administration 29, XXV
Employees' Compensation Appeals Board 20, IV
Employment and Training Administration 20, V
Federal Acquisition Regulation 48, 29
[[Page 975]]
Federal Contract Compliance Programs, Office 41, 60
of
Federal Procurement Regulations System 41, 50
Labor-Management Standards, Office of 29, II, IV
Mine Safety and Health Administration 30, I
Occupational Safety and Health Administration 29, XVII
Public Contracts 41, 50
Secretary of Labor, Office of 29, Subtitle A
Veterans' Employment and Training Service, 41, 61; 20, IX
Office of the Assistant Secretary for
Wage and Hour Division 29, V
Workers' Compensation Programs, Office of 20, I, VI
Labor-Management Standards, Office of 29, II, IV
Land Management, Bureau of 43, II
Legal Services Corporation 45, XVI
Libraries and Information Science, National 45, XVII
Commission on
Library of Congress 36, VII
Copyright Royalty Board 37, III
U.S. Copyright Office 37, II
Management and Budget, Office of 5, III, LXXVII; 14, VI;
48, 99
Marine Mammal Commission 50, V
Maritime Administration 46, II
Merit Systems Protection Board 5, II, LXIV
Micronesian Status Negotiations, Office for 32, XXVII
Military Compensation and Retirement 5, XCIX
Modernization Commission
Millennium Challenge Corporation 22, XIII
Mine Safety and Health Administration 30, I
Minority Business Development Agency 15, XIV
Miscellaneous Agencies 1, IV
Monetary Offices 31, I
Morris K. Udall Scholarship and Excellence in 36, XVI
National Environmental Policy Foundation
Museum and Library Services, Institute of 2, XXXI
National Aeronautics and Space Administration 2, XVIII; 5, LIX; 14, V
Federal Acquisition Regulation 48, 18
National Agricultural Library 7, XLI
National Agricultural Statistics Service 7, XXXVI
National and Community Service, Corporation for 2, XXII; 45, XII, XXV
National Archives and Records Administration 2, XXVI; 5, LXVI; 36, XII
Information Security Oversight Office 32, XX
National Capital Planning Commission 1, IV, VI
National Counterintelligence Center 32, XVIII
National Credit Union Administration 5, LXXXVI; 12, VII
National Crime Prevention and Privacy Compact 28, IX
Council
National Drug Control Policy, Office of 2, XXXVI; 21, III
National Endowment for the Arts 2, XXXII
National Endowment for the Humanities 2, XXXIII
National Foundation on the Arts and the 45, XI
Humanities
National Geospatial-Intelligence Agency 32, I
National Highway Traffic Safety Administration 23, II, III; 47, VI; 49, V
National Imagery and Mapping Agency 32, I
National Indian Gaming Commission 25, III
National Institute of Food and Agriculture 7, XXXIV
National Institute of Standards and Technology 15, II; 37, IV
National Intelligence, Office of Director of 5, IV; 32, XVII
National Labor Relations Board 5, LXI; 29, I
National Marine Fisheries Service 50, II, IV
National Mediation Board 5, CI; 29, X
National Oceanic and Atmospheric Administration 15, IX; 50, II, III, IV,
VI
National Park Service 36, I
National Railroad Adjustment Board 29, III
National Railroad Passenger Corporation (AMTRAK) 49, VII
National Science Foundation 2, XXV; 5, XLIII; 45, VI
Federal Acquisition Regulation 48, 25
National Security Council 32, XXI; 47, II
[[Page 976]]
National Technical Information Service 15, XI
National Telecommunications and Information 15, XXIII; 47, III, IV, V
Administration
National Transportation Safety Board 49, VIII
Natural Resource Revenue, Office of 30, XII
Natural Resources Conservation Service 7, VI
Navajo and Hopi Indian Relocation, Office of 25, IV
Navy, Department of 32, VI
Federal Acquisition Regulation 48, 52
Neighborhood Reinvestment Corporation 24, XXV
Northeast Interstate Low-Level Radioactive Waste 10, XVIII
Commission
Nuclear Regulatory Commission 2, XX; 5, XLVIII; 10, I
Federal Acquisition Regulation 48, 20
Occupational Safety and Health Administration 29, XVII
Occupational Safety and Health Review Commission 29, XX
Ocean Energy Management, Bureau of 30, V
Oklahoma City National Memorial Trust 36, XV
Operations Office 7, XXVIII
Patent and Trademark Office, United States 37, I
Payment From a Non-Federal Source for Travel 41, 304
Expenses
Payment of Expenses Connected With the Death of 41, 303
Certain Employees
Peace Corps 2, XXXVII; 22, III
Pennsylvania Avenue Development Corporation 36, IX
Pension Benefit Guaranty Corporation 29, XL
Personnel Management, Office of 5, I, IV, XXXV; 45, VIII
Federal Acquisition Regulation 48, 17
Federal Employees Group Life Insurance Federal 48, 21
Acquisition Regulation
Federal Employees Health Benefits Acquisition 48, 16
Regulation
Human Resources Management and Labor Relations 5, XCVII
Systems, Department of Homeland Security
Pipeline and Hazardous Materials Safety 49, I
Administration
Postal Regulatory Commission 5, XLVI; 39, III
Postal Service, United States 5, LX; 39, I
Postsecondary Education, Office of 34, VI
President's Commission on White House 1, IV
Fellowships
Presidential Documents 3
Presidio Trust 36, X
Prisons, Bureau of 28, V
Privacy and Civil Liberties Oversight Board 6, X
Procurement and Property Management, Office of 7, XXXII
Public and Indian Housing, Office of Assistant 24, IX
Secretary for
Public Contracts, Department of Labor 41, 50
Public Health Service 42, I
Railroad Retirement Board 20, II
Reclamation, Bureau of 43, I
Refugee Resettlement, Office of 45, IV
Relocation Allowances 41, 302
Research and Innovative Technology 49, XI
Administration
Rural Business-Cooperative Service 7, XVIII, XLII
Rural Development Administration 7, XLII
Rural Housing Service 7, XVIII, XXXV
Rural Utilities Service 7, XVII, XVIII, XLII
Safety and Environmental Enforcement, Bureau of 30, II
Science and Technology Policy, Office of, and 32, XXIV; 47, II
National Security Council
Secret Service 31, IV
Securities and Exchange Commission 5, XXXIV; 17, II
Selective Service System 32, XVI
Small Business Administration 2, XXVII; 13, I
Smithsonian Institution 36, V
Social Security Administration 2, XXIII; 20, III; 48, 23
Soldiers' and Airmen's Home, United States 5, XI
Special Counsel, Office of 5, VIII
Special Education and Rehabilitative Services, 34, III
Office of
[[Page 977]]
State, Department of 2, VI; 22, I; 28, XI
Federal Acquisition Regulation 48, 6
Surface Mining Reclamation and Enforcement, 30, VII
Office of
Surface Transportation Board 49, X
Susquehanna River Basin Commission 18, VIII
Tennessee Valley Authority 5, LXIX; 18, XIII
Trade Representative, United States, Office of 15, XX
Transportation, Department of 2, XII; 5, L
Commercial Space Transportation 14, III
Emergency Management and Assistance 44, IV
Federal Acquisition Regulation 48, 12
Federal Aviation Administration 14, I
Federal Highway Administration 23, I, II
Federal Motor Carrier Safety Administration 49, III
Federal Railroad Administration 49, II
Federal Transit Administration 49, VI
Great Lakes St. Lawrence Seaway Development 33, IV
Corporation
Maritime Administration 46, II
National Highway Traffic Safety Administration 23, II, III; 47, IV; 49, V
Pipeline and Hazardous Materials Safety 49, I
Administration
Secretary of Transportation, Office of 14, II; 49, Subtitle A
Transportation Statistics Bureau 49, XI
Transportation, Office of 7, XXXIII
Transportation Security Administration 49, XII
Transportation Statistics Bureau 49, XI
Travel Allowances, Temporary Duty (TDY) 41, 301
Treasury, Department of the 2, X; 5, XXI; 12, XV; 17,
IV; 31, IX
Alcohol and Tobacco Tax and Trade Bureau 27, I
Community Development Financial Institutions 12, XVIII
Fund
Comptroller of the Currency 12, I
Customs and Border Protection 19, I
Engraving and Printing, Bureau of 31, VI
Federal Acquisition Regulation 48, 10
Federal Claims Collection Standards 31, IX
Federal Law Enforcement Training Center 31, VII
Financial Crimes Enforcement Network 31, X
Fiscal Service 31, II
Foreign Assets Control, Office of 31, V
Internal Revenue Service 26, I
Investment Security, Office of 31, VIII
Monetary Offices 31, I
Secret Service 31, IV
Secretary of the Treasury, Office of 31, Subtitle A
Truman, Harry S. Scholarship Foundation 45, XVIII
United States Agency for Global Media 22, V
United States and Canada, International Joint 22, IV
Commission
United States and Mexico, International Boundary 22, XI
and Water Commission, United States Section
U.S. Copyright Office 37, II
U.S. Office of Special Counsel 5, CII
Utah Reclamation Mitigation and Conservation 43, III
Commission
Veterans Affairs, Department of 2, VIII; 38, I
Federal Acquisition Regulation 48, 8
Veterans' Employment and Training Service, 41, 61; 20, IX
Office of the Assistant Secretary for
Vice President of the United States, Office of 32, XXVIII
Wage and Hour Division 29, V
Water Resources Council 18, VI
Workers' Compensation Programs, Office of 20, I, VII
World Agricultural Outlook Board 7, XXXVIII
[[Page 979]]
List of CFR Sections Affected
All changes in this volume of the Code of Federal Regulations (CFR) that
were made by documents published in the Federal Register since January
1, 2016 are enumerated in the following list. Entries indicate the
nature of the changes effected. Page numbers refer to Federal Register
pages. The user should consult the entries for chapters, parts and
subparts as well as sections for revisions.
For changes to this volume of the CFR prior to this listing, consult the
annual edition of the monthly List of CFR Sections Affected (LSA). The
LSA is available at www.govinfo.gov. For changes to this volume of the
CFR prior to 2001, see the ``List of CFR Sections Affected, 1949-1963,
1964-1972, 1973-1985, and 1986-2000'' published in 11 separate volumes.
The ``List of CFR Sections Affected 1986-2000'' is available at
www.govinfo.gov.
2016
37 CFR
81 FR
Page
Chapter I
2 Technical correction.............................................78042
2.6 Revised........................................................72706
2.92 Revised.......................................................69971
2.98 Amended.......................................................69971
2.99 (c), (d) and (f)(3) revised...................................69971
2.101 Revised......................................................69971
2.102 (a), (b), (c)(1) and (2) revised; (c)(3) amended; (d) added
69972
2.104 (a) revised; (c) added.......................................69972
2.105 Revised......................................................69972
2.106 (a) and (b) revised..........................................69973
2.107 Revised......................................................69973
2.111 Revised......................................................69973
2.112 Revised......................................................69974
2.113 Revised......................................................69974
2.114 Revised......................................................69974
2.116 (c), (e), (f) and (g) revised................................69975
2.117 (c) revised..................................................69975
2.118 Revised......................................................69975
2.119 Revised......................................................69975
2.120 Revised......................................................69976
2.121 Heading, (a), (c), (d) and (e) revised.......................69979
2.122 (a) through (e) revised; (g) added...........................69980
2.123 (a), (b), (c) and (e) through (k) revised; (l) removed.......69981
(a)(2) corrected...............................................89383
2.124 (b)(2), (d)(1) and (f) revised; (b)(3) and (d)(3) added......69982
(d)(1) and (f) corrected.......................................89383
2.125 Revised......................................................69983
2.126 Revised......................................................69983
(c) corrected..................................................89383
2.127 (a) through (e) revised......................................69983
2.128 (a)(3) and (b) revised.......................................69984
2.129 (a), (b) and (c) revised.....................................69984
2.130 Revised......................................................69985
2.131 Revised......................................................69985
2.132 (a) and (b) revised..........................................69985
2.134 (b) revised..................................................69985
2.136 Revised......................................................69985
2.142 (b) through (e), (f)(1) through (4) and (6) revised..........69985
2.145 Revised......................................................69986
(d)(1) and (3) corrected.......................................89383
2.190 (a), (b) and (c) revised.....................................69987
2.191 Revised......................................................69987
2.195 (d)(3) revised...............................................69988
2.200 (b) revised..................................................72707
2.208 (a) revised..................................................72707
6.1 Revised........................................................76869
7 Technical correction.............................................78042
7.6 Revised........................................................72707
11 Authority citation revised......................................33596
11.1 Amended.......................................................33596
11.16 Added........................................................33596
11.17 Added........................................................33597
42 Authority citation revised......................................18765
42.11 Revised......................................................18765
42.23 (b) revised..................................................18765
42.24 Revised......................................................18765
(a)(1) corrected...............................................24703
[[Page 980]]
42.70 (b) revised..................................................18765
42.100 (b) revised.................................................18766
42.107 (a) revised; (c) removed....................................18766
42.108 (c) revised.................................................18766
42.200 (b) revised.................................................18766
42.207 (a) revised; (c) removed....................................18766
42.208 (c) revised.................................................18766
42.300 (b) revised.................................................18766
Chapter II
201.3 (c)(17) revised..............................................75707
201.38 Revised.....................................................75707
202.5 (b)(3) and (c)(3) amended....................................62373
Chapter III
351.1 (b)(4) revised................................................8650
370.4 (a) and (b) revised..........................................31510
(b) amended; (d)(2)(vi), (vii), (3)(i) and (ii) revised........40190
(b) amended....................................................89868
380 Heading revised................................................26406
380.1--380.7 (Subpart A) Revised...................................26406
380.10 (Subpart B) Revised.........................................26409
(a) revised; (c) amended.......................................87456
380.22 (b)(1), (2), (3) and (c) revised............................26409
380.23 (b)(1) revised..............................................26409
380.30--380.37 (Subpart D) Heading revised.........................26409
380.33 (b)(1) revised..............................................26409
381.5 (c)(3)(v) revised............................................84478
386.2 (b)(1)(viii) and (2)(viii) added.............................84479
387 Added..........................................................62813
388 Added..........................................................83141
2017
37 CFR
82 FR
Page
Chapter I
1.16 (a) through (f) and (h) through (r) revised...................52813
1.17 (e), (h), (m), (p), and (t) revised...........................52814
1.18 (a), (b), and (c) revised.....................................52814
1.19 (b) introductory text, (1), (4), (c), and (f) revised;
(b)(2), (d), (e), and (g) removed; (h) through (l) added
52814
1.20 (a), (b), (c), (e), (f), and (g) revised......................52815
1.21 Revised.......................................................52815
1.362 (b) revised..................................................52816
1.445 (a)(5) added.................................................52816
1.453 Added........................................................24252
1.482 Heading revised; (c) added...................................52816
1.492 (a), (b)(2), (3), (4), (c) introductory text, (2), (d), (e),
and (f) revised............................................52816
1.1031 (a) revised; (f) added......................................52816
2.64 Added; eff. 7-8-17............................................29407
2.66 Revised; eff. 7-8-17..........................................29408
2.120 (f)(1) and (i)(1) revised....................................33805
2.127 (e)(1) revised...............................................33806
2.146 Revised; eff. 7-8-17.........................................29409
2.161 (h) revised...................................................6265
Regulation at 82 FR 6265 eff. date delayed to 3-21-17..........10273
6.1 Revised........................................................56889
7.37 (h) revised....................................................6265
Regulation at 82 FR 6265 eff. date delayed to 3-21-17..........10273
41.20 (b)(4) revised...............................................52817
42.15 (a) and (b) revised..........................................52817
42.57 Added........................................................51575
Chapter II
201.1 Heading revised; (c)(8) added.................................9007
(a), (b)(2), (c)(1), (2) and (4) through (7) amended............9355
(c)(3) removed; (c)(4) through (8) redesignated as (c)(3)
through (7)........................................................21697
201.2 (e) and (f) added.............................................9007
(b)(4) introductory text, (i), (ii) and undesignated text
preceding (5) redesignated as (b)(4)(i), (A), (B) and (ii);
(b)(1), (3) introductory text, (i)(C), new (4)(i) introductory
text, new (ii) and (d)(1)(iv) amended; (b)(7) revised...............9355
(b)(5) amended.................................................21697
201.3 (c)(19) added.................................................9008
(c)(3), (9), (11), (d) heading, (6) and (e) table amended;
(e)(3) removed; (e)(4) through (8) redesignated as new (e)(3)
through (7).........................................................9356
(c)(2) revised; eff. 7-31-17...................................29413
(c)(9) revised; eff. 7-17-17...................................27427
(c)(16) revised................................................52223
(d)(5) revised; interim; eff. 7-12-17..........................26853
Regulation at 82 FR 26853 comment period extended..............56890
[[Page 981]]
201.4 (a)(1) introductory text, (2), (3)(ii), (b),
(c)(4)(ii)(D)(4), (iii) and (e) amended; (a)(1)(iv)
removed; (a)(1)(v) and (vi) redesignated as new (a)(1)(iv)
and (v).....................................................9356
Revised; interim...............................................52219
201.5 (a)(1) introductory text, (i)(A), (ii), (b)(2)(i), (iii)(B)
and (c)(2) amended..........................................9356
Removed; eff. 7-17-17..........................................27427
201.6 (a), (b)(3), (c)(1), (2), (3) and (d) amended.................9356
201.7 (c)(1), (2) and (d) amended...................................9356
(c)(4)(ix) removed; (c)(4)(x) and (xi) redesignated as
(c)(4)(ix) and (x); new (c)(4)(xi) added; (c)(4) introductory
text, (i), (ii), (iii) through (viii) and new (ix) amended; eff.
7-31-17............................................................29413
201.8 (c)(1) introductory text, (i), (d), (f)(2), (3) and (g)
amended.....................................................9356
(a) through (f) introductory text and (f)(4) revised; (f)(5)
added; (g) removed.................................................22887
201.9 Removed.......................................................9356
201.10 Introductory text, (b)(1) introductory text, (vii)(B), (2)
introductory text, (vii)(B), (c)(2), (3), (d)(1) through
(4), (e)(1), (f)(1) introductory text, (ii), (3), (4) and
(7) amended.................................................9356
(f) revised; interim...........................................52220
201.11 (a), (b)(1), (c)(1), (d)(1), (2), (e)(6), (7), (h)(3)(i),
(ii) and (iii)(A) amended...................................9357
201.12 (a) introductory text, (b) and (c) amended...................9357
201.13 (a)(1), (d)(3) and (e)(2)(iii) amended.......................9357
201.14 (a)(1), (2) and (c)(2) amended...............................9357
201.16 (c)(7) removed...............................................9357
201.17 (a), (b)(1), (2), (5), (7), (9), (d)(1), (e)(5)(iii),
(m)(2)(i), (ii), (m)(4)(i), (ii), (iii)(B), (iv)(A) and
(B) amended; (c)(1), (e)(7), (f)(3) and (i)(3) revised;
undesignated text following (e)(7), (i)(1)(vi), (i)(4),
(5), (m)(2)(iii) and(4)(iii)(C) removed; (i)(6) through
(10) redesignated as new (i)(4) through (8).................9357
(l) removed; (m) and (n) redesignated as (l) and (m); (c)(2)
amended; (d), (e)(14) introductory text, (iii)(A) and new
(l)(4)(iii)(B) revised.............................................22886
201.18 (a)(2), (4) introductory text, (i), (ii), (5), (b), (f)(3)
and (4) amended.............................................9358
201.20 Removed.....................................................42736
201.22 (a)(1), (c)(1)(i), (d)(3), (e)(1) and (2)(iii) amended.......9358
201.23 (a), (b) introductory text, (1), (2) and (3) amended.........9358
201.25 (c)(1) and (e) amended.......................................9358
201.26 (b), (d) and (f) amended; (d)(4) removed.....................9358
201.27 (b) heading, (1) and (3) amended.............................9358
201.28 (c)(3), (d)(1), (e)(5) and (j)(3)(i) amended.................9358
201.29 (e), (h)(1), (2) and (6) amended.............................9358
201.31 Removed......................................................9358
201.33 (a), (b) heading, (2)(iii), (3)(iii)(A), (d)(3)(ii)(G),
(e)(2) heading, (i), (ii), (iii) and Appendix A amended;
(f) revised.................................................9358
201.34 (d)(3)(viii)(D) and (e) amended; (f) revised.................9359
201.38 (a)(1), (2), (b) introductory text, (1)(ii), (2), (c)
introductory text and (1) amended...........................9359
(b)(1)(ii) amended; (c)(1)(i) revised..........................21697
201.39 (g)(1), (3)(i) and (ii) amended..............................9359
202.2 (b)(6) introductory text, (i), (ii) and (iii) redesignated
as (b)(6)(i), (A), (B) and (C); undesignated text
preceding (b)(7) designated as new (b)(6)(ii); (b)(2),
(5), new (6)(i)(B), (C), (ii) and (10) amended..............9359
(c) added......................................................42736
202.3 (a)(1), (b)(1)(v), (2) introductory text, (i)(A), (B), (D),
(ii)(C), (D), (6)(v) and (8)(i) introductory text amended
9359
(b)(11)(iii) amended; (b)(11)(iv) removed; eff. 7-17-17........27427
[[Page 982]]
(b)(4)(ii) revised; (b)(8) and (c)(2)(iv) footnote 5 removed;
(c)(2) introductory text amended; (b)(11)(ii) footnote 4
redesignated as footnote 2; undesignated text following (c)(2)(iv)
designated (c)(3); eff. 7-31-17....................................29413
202.4 Removed.......................................................9359
Added; eff. 7-31-17............................................29413
(k) through (m) redesignated as (l) through (n); new (k)
added; (b) revised; new (n) amended................................52228
202.5 (a), (b)(2), (3), (c)(2), (d)(1) and (e) amended..............9359
(d) amended....................................................21697
202.6 Added; eff. 7-17-17..........................................27427
(e)(1) amended.................................................42738
202.12 (c)(2) removed; (c)(3) and (4) redesignated as new (c)(2)
and (3); (b)(1), new (c)(2)(ii)(A), (B), (C), (3)(i)
introductory text, (iv), (v), (vi) and (d) amended; (c)(1)
revised.....................................................9359
202.13 Added; interim; eff. 7-12-17................................26854
(c)(3) removed; (c)(4) and (5) redesignated as (c)(3) and (4);
(a), (c) introductory text, (2), new (c)(3)(iii), (iv), (v)
revised; new (c)(4) amended; (b)(5) and (d) added..................52228
Regulation at 82 FR 26854 comment period extended..............56890
202.16 (a), (c)(5)(ii)(A), (B), (C), (6)(vi) and (11) amended;
(c)(3), (6)(i), (iii), (iv), (v), (10) and (12) revised.....9360
202.17 (b)(1), (c)(2), (e) heading, (2), (3), (f)(2), (g)(1) and
(h)(3)(vii) amended.........................................9360
202.19 (a), (b)(4), (c)(5), (d)(2)(iii)(B), (vi), (e)(1)(iv), (3)
and (f)(1) amended; (b)(2) and (d)(2)(iv) revised;
undesignated text following (b)(2) removed..................9360
202.20 (a), (b)(1), (2)(ii), (v), (vi)(B), (6), (c)(2)(i)(G),
(ii), (iii)(B), (iv), (v), (vii)(A)(2), (viii)(A), (x),
(xi)(A), (xii), (xiii), (xvi), (xviii)(A), (B),
(d)(1)(iv), (3) and (e) amended; (b)(2)(iii) revised;
undesignated text following (c)(2)(xviii)(A)(4) designated
as footnote 6...............................................9361
(b)(3) and (c)(2)(vi) revised; (b)(4) removed; (b)(5) and (6)
redesignated as new (b)(4) and (5); new (b)(4) amended; interim;
eff. 7-12-17.......................................................26854
(d)(1)(i), (iii) and (iv) amended; eff. 7-31-17................29414
Regulation at 82 FR 26854 comment period extended..............56890
202.21 (a), (g)(1)(i) introductory text and (h) amended.............9362
202.22 (c)(8) and (f)(1)(i) amended.................................9362
202.23 (a)(1), (b)(2), (c)(2), (e)(1) and (2) amended...............9362
202.24 (a)(1), (c)(1), (2) and (d)(1)(i) amended....................9362
202 Appendix B amended..............................................9362
203 Authority citation revised......................................9506
203.1 Revised; interim..............................................9506
203.2 Revised.......................................................9362
203.3 (a) through (d) removed; (e), (f) and (g) redesignated as
(j), (k) and (n( � new (a) through (i) and (m) added; (h)
revised; new (k) amended....................................9362
(m) removed; interim............................................9507
203.4 (c), (d) and (i)(2) amended; (f) and (g) revised..............9363
Revised; interim................................................9507
203.5 Undesignated center heading removed; section revised;
interim.....................................................9507
203.6 (a) and (e) amended...........................................9364
Undesignated center heading removed; section revised; interim
9507
203.7 Added; interim................................................9508
203.8 Added; interim................................................9508
203.9 Added; interim................................................9508
203.10 Added; interim...............................................9508
203.11 Undesignated center heading and section added; interim.......9508
204.4 (a), (b) and (d) amended......................................9364
204.5 (a) and (b) amended...........................................9364
204.7 Revised.......................................................9009
(a) and (b) amended.............................................9364
Regulation at 82 FR 9364 withdrawn.............................12180
204.8 Revised.......................................................9364
205.1 Revised.......................................................9364
205.2 (a) and (b) amended...........................................9365
205.11 (a) amended..................................................9365
205.13 Amended......................................................9365
[[Page 983]]
205.22 (a) introductory text, (2), (b), (c) and (f) heading
amended.....................................................9365
205.23 (b)(4) redesignated as (c); new (c) amended..................9365
210.15 Introductory text amended....................................9365
210.17 (d)(3)(ix) and (h) amended...................................9365
211 Authority citation revised......................................9365
211.1 (a) amended...................................................9365
211.4 (b)(1), (d) introductory text and (2) revised.................9365
211.5 (b)(2) redesignated as (b)(3); undesignated text preceding
new (b)(3) designated as new (b)(2); (b) introductory
text, new (3)(i) and (d) amended; (c)(1) and (2) revised
9365
212 Heading revised; nomenclature change............................9366
212.1 Amended.......................................................9366
212.2 Amended.......................................................9366
212.3 (h) introductory text amended.................................9366
212.4 (a)(2) amended................................................9366
212.5 (a) through (d) amended.......................................9366
212.6 Amended.......................................................9366
212.8 (c)(1)(iv) and (2) amended....................................9366
253 Removed.........................................................9366
254 Removed.........................................................9366
255 Removed.........................................................9366
256 Removed.........................................................9366
258 Removed.........................................................9366
260 Removed.........................................................9366
261 Removed.........................................................9366
262 Removed.........................................................9366
263 Removed.........................................................9366
270 Removed.........................................................9366
Chapter III
301.2 Revised......................................................18570
350.3 Revised......................................................18570
350.4 Redesignated as 350.6; new 350.4 added.......................18571
350.5 Redesignated as 350.7; new 350.5 added.......................18571
(c)(3) added...................................................27018
350.6 Redesignated as 350.8........................................18571
New section revised............................................18572
350.7 Designated from 350.5........................................18571
New section revised............................................18572
350.8 Designated from 350.6........................................18571
351.1 (b)(4) revised...............................................18574
360 Revised........................................................27018
360.22 (e) revised.................................................55323
380.10 (a) revised.................................................55946
382 Policy statement...............................................56725
385.4 Amended......................................................15299
386.2 (b)(1)(ix) and (2)(ix) added.................................55947
2018
37 CFR
83 FR
Page
Chapter I
1 Policy statement.................................................55102
2 Authority citation revised.......................................33132
2.91--2.99 Undesignated center heading revised; authority citation
removed....................................................33132
2.91 Removed.......................................................33132
2.92 Removed.......................................................33132
2.93 Removed.......................................................33132
2.96 Removed.......................................................33132
2.98 Removed.......................................................33132
2.193 (e)(1) revised................................................1559
6.1 Revised........................................................62713
42.100 (b) revised.................................................51358
42.200 (b) revised.................................................51358
42.300 (b) revised.................................................51359
Chapter II
201.1 (c)(6) amended................................................4145
(c)(6) revised.................................................61549
201.3 Regulation at 82 FR 26853 comment period extended; interim
2070
(c)(3) through (19) redesignated as (c)(4) through (20); new
(c)(3) added; new (c)(4) revised....................................2547
201.3 (c)(7) revised............................................4146
(c)(1) introductory text revised...............................66628
(c)(6) revised.................................................61549
(c)(19) and (20) redesignated as (c)(21) and (22); new (c)(19)
and new (20) added; interim........................................52153
201.4 (b)(12) and (13) added; interim..............................52153
201.10 Regulation at 82 FR 52220 comment period extended; interim
2070
201.11 (f)(1) introductory text amended............................51841
201.17 (k)(1) introductory text amended............................51841
201.18 (a)(1), (2), and (c) revised; (a)(3), (4) introductory
text, (6), (d)(1)(iii), (v)(D), (f)(1) through (4), (g),
and (h) amended; interim...................................63064
201.28 (h)(1) introductory text amended............................51841
[[Page 984]]
201.31 Added.......................................................51841
201.35 Added; interim..............................................52153
201.36 Added; interim..............................................52154
201.40 (b) and (c) revised.........................................54028
202.3 (b)(3) amended; (b)(10) removed...............................2547
(b)(1)(v) amended; (b)(7) removed...............................4146
(b)(2)(i) heading, (A), (B), (ii)(A), (c)(1), (2), and (3)
revised; (b)(2)(i) introductory text, (ii) heading, and (iii)
added; (b)(2)(i)(C), (D), (5)(i) introductory text, (F), (ii)
introductory text, and (A) amended; (b)(2)(ii)(B), (C), and new
heading removed; (b)(2)(ii)(D) and (3) redesignated as
(b)(2)(ii)(B) and (2)(ii)(C).......................................66628
(b)(6) and (9) removed.........................................61549
202.4 Regulation at 82 FR 52228 comment period extended; interim
2070
(h) and (i) added; (l) and (n) amended..........................2547
(b) and (n) revised; (e) added; (g)(4) amended..................4146
(d) and (f) added; (l) and (n) amended.........................61549
202.6 (e)(1) amended...............................................61550
202.13 Regulation at 82 FR 26854 comment period extended; interim
2070
Regulation at 82 FR 52228 comment period extended; interim......2070
202.16 (c)(4) amended..............................................66629
202.17 (g)(2)(ii)(B) revised.......................................66629
202.18 Added........................................................4147
202.19 (b)(5) and (d)(2)(ix) added; (d)(2)(v) amended...............2372
(d)(2)(ix) revised..............................................4147
(d)(2)(ix) redesignated as (d)(2)(x); new (d)(2)(ix) added.....25375
(d)(2)(xi) added...............................................61550
202.20 Regulation at 82 FR 26854 comment period extended; interim
2070
(b)(3) and (c)(2)(i)(E) revised; (b)(4) removed; (b)(5)
redesignated as new (b)(4); (c)(2)(i)(A) through (D), (F) through
(J), and (viii)(A) through (D) amended; (c)(2)(i)(L) added..........2372
(c)(2)(vii)(D)(8) revised; (c)(2)(xx) removed...................2548
(c)(2)(xvii) removed...........................................61550
202 Appendix B amended.............................................61550
203.3 (b)(2) removed; (b)(3) redesignated as new (b)(2); (h) and
(i) revised; interim.......................................63064
210.11--210.21 (Subpart B) Heading revised; interim................63065
210.11 Amended; interim............................................63065
210.12 (a), (b), and (c) amended; (k) through (o) added; interim
63065
210.16 (d)(3) amended; interim.....................................63065
210.19 Amended; interim............................................63065
210.20 Added; interim..............................................63065
210.21 Added; interim..............................................63065
211.4 (b)(3)(ii) and (d) introductory text revised.................66630
212.3 (f)(2) revised; (f)(1) and (4) amended.......................66630
212.8 (c)(1)(x)(A) and (B) revised.................................66630
Chapter III
380.10 (a) revised.................................................61125
(a)(2) amended.................................................63419
381.1 Amended.......................................................2740
381.4 Introductory text and (d) removed; (a) introductory text
added; (c) amended..........................................2740
381.5 (c) revised...................................................2740
(c)(3)(i) and (ii) revised.....................................61126
381.6 (a) amended; (d) revised......................................2741
381.7 (b)(1)(i)(A) through (D), (ii)(A) through (D), (2)(i)
through (iv), (4)(i), (ii), and (iii) revised...............2742
381.10 (a) amended; (b) revised.....................................2743
382 Revised........................................................65265
384.1 (a) amended..................................................60363
384.3 (a) revised; (b) amended.....................................60363
384.5 (d)(4) amended...............................................60363
386.2 (b)(1)(x) and (2)(x) added...................................61127
387.2 (e) redesignated as (f); new (e) added.......................62715
Chapter IV
401.1 (b) and (e) amended..........................................15958
401.2 (b) and (n) revised; (o) added...............................15958
401.3 (a) introductory text , (4), (b), and (d) amended; (a)(5),
(c) and (h) revised; (a)(6) and (i) added..................15959
401.4 (a) amended..................................................15960
401.5 Revised......................................................15960
401.7 (b) revised..................................................15960
401.9 Amended......................................................15961
[[Page 985]]
401.10 Revised.....................................................15961
401.13 (c)(1) and (3) amended; (c)(2) revised......................15961
401.14 (a) introductory text and (c)(4) redesignated as
undesignated text and (c)(5); (a)(7), (8), and new (c)(4)
added; (c)(2), (3), new (5), (d)(1), (2), (3), (f)(2),
(3), (k)(4), and undesignated text after (l) heading
revised; (g)(1) and (l) amended; (b) and (c) removed.......15961
401.15 (b) and (d) amended.........................................15963
401.16 (a), (b), and (c) amended; (d) added........................15963
401.17 Revised.....................................................15963
404.7 (a)(1)(i) and (b)(1)(i) revised..............................15963
404.8 Revised......................................................15963
2019
37 CFR
84 FR
Page
Chapter I
1.79 Removed.......................................................51981
1.102 (e) introductory text revised; interim.......................45910
1.127 Removed......................................................51981
1.351--1.352 Undesignated center heading removed...................51981
1.351 Removed......................................................51981
2.2 (o) and (p) added..............................................31510
(e), (f), and (g) revised; (q) through (t) added...............37093
Regulation at 84 FR 37093 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37093 eff. date further delayed to 2-15-20
69330
2.6 (a)(1)(ii) through (v) revised.................................37093
Regulation at 84 FR 37093 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37093 eff. date further delayed to 2-15-20
69330
2.11 Revised.......................................................31510
2.17 Revised.......................................................31510
(d) revised....................................................37093
Regulation at 84 FR 37093 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37093 eff. date further delayed to 2-15-20
69330
2.18 Revised.......................................................37093
Regulation at 84 FR 37093 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37093 eff. date further delayed to 2-15-20
69330
2.21 Revised.......................................................37093
Regulation at 84 FR 37093 eff. date delayed to 12-21-19........52363
(a)(1) correctly amended.......................................68046
Regulation at 84 FR 37093 eff. date further delayed to 2-15-20
69330
2.22 (a)(1), (19), and (20) revised; (a)(21) added.................31511
Revised........................................................37093
Regulation at 84 FR 37093 eff. date delayed to 12-21-19........52363
(a)(1) through (19) correctly redesignated as (a)(2) through
(20); new (a)(1) added.............................................68046
Regulation at 84 FR 37093 eff. date further delayed to 2-15-20
69330
2.23 Revised.......................................................37094
Regulation at 84 FR 37094 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37094 eff. date further delayed to 2-15-20
69330
2.24 Revised.......................................................37094
Regulation at 84 FR 37094 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37094 eff. date further delayed to 2-15-20
69330
2.32 (a)(2) and (4) revised........................................31511
(a)(2), (3), and (d) revised...................................37094
Regulation at 84 FR 37094 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37094 eff. date further delayed to 2-15-20
69330
2.56 Revised.......................................................37095
Regulation at 84 FR 37095 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37095 eff. date further delayed to 2-15-20
69330
2.62 Revised.......................................................37095
Regulation at 84 FR 37095 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37095 eff. date further delayed to 2-15-20
69330
2.111 (c)(2) revised...............................................37095
[[Page 986]]
Regulation at 84 FR 37095 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37095 eff. date further delayed to 2-15-20
69330
2.146 (a) revised..................................................37095
Regulation at 84 FR 37095 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37095 eff. date further delayed to 2-15-20
69330
2.147 Added........................................................37095
Regulation at 84 FR 37095 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37095 eff. date further delayed to 2-15-20
69330
2.148 Revised......................................................37096
Regulation at 84 FR 37096 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37096 eff. date further delayed to 2-15-20
69330
2.151 Revised......................................................37096
Regulation at 84 FR 37096 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37096 eff. date further delayed to 2-15-20
69330
2.162 Revised......................................................37096
Regulation at 84 FR 37096 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37096 eff. date further delayed to 2-15-20
69330
2.189 Added........................................................31511
2.190 Revised......................................................37096
Regulation at 84 FR 37096 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37096 eff. date further delayed to 2-15-20
69330
2.191 Revised......................................................37096
Regulation at 84 FR 37096 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37096 eff. date further delayed to 2-15-20
69330
2.193 (a)(2), (b), (c)(1), (d), (e) introductory text, (5)
introductory text, (9), (f), and (g) revised; (e)(10)
removed....................................................37096
Regulation at 84 FR 37096 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37096 eff. date further delayed to 2-15-20
69330
2.195 Revised......................................................37097
Regulation at 84 FR 37097 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37097 eff. date further delayed to 2-15-20
69330
2.197 Revised......................................................37097
Regulation at 84 FR 37097 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37097 eff. date further delayed to 2-15-20
69330
2.198 Revised......................................................37098
Regulation at 84 FR 37098 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37098 eff. date further delayed to 2-15-20
69330
6.1 Amended........................................................16406
Revised........................................................65682
7.1 (f) revised....................................................31511
(c) and (d) revised............................................37098
Regulation at 84 FR 37098 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37098 eff. date further delayed to 2-15-20
69330
7.4 Revised........................................................37098
Regulation at 84 FR 37098 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37098 eff. date further delayed to 2-15-20
69330
7.11 (a) introductory text, (10), (11), and (b) revised; (a)(12)
removed....................................................37098
Regulation at 84 FR 37098 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37098 eff. date further delayed to 2-15-20
69330
7.21 (b) introductory text, (7), (8), and (c) revised; (b)(9)
removed....................................................37098
Regulation at 84 FR 37098 eff. date delayed to 12-21-19........52363
Regulation at 84 FR 37098 eff. date further delayed to 2-15-20
69330
7.25 (a) revised...................................................37099
Regulation at 84 FR 37099 eff. date delayed to 12-21-19........52363
[[Page 987]]
Regulation at 84 FR 37099 eff. date further delayed to 2-15-20
69330
11.14 (c) and (e) revised..........................................31511
42.102 (b) removed.................................................51982
42.202 (b) removed.................................................51982
Chapter II
201.1 (c)(6) amended...............................................60918
201.3 (c)(8) through (22) redesignated as (c)(9) through (23); new
(c)(8) added................................................3697
(c)(20) revised; (c)(21) and (22) redesignated as (c)(22) and
(23); new (c)(21) added............................................10684
(c)(22) revised; (c)(23) redesignated as (c)(24); new (c)(23)
and (25) added.....................................................14255
Second (c)(23) removed; (c)(20) through (23) revised; (c)(24)
and (25) added.....................................................20273
201.4 (b)(3) revised; (b)(10) through (13) amended; (b)(14) and
(15) added.................................................14255
201.35 (d) through (i) redesignated as (f) through (k); (a), (c),
new (f), and new (h) revised; (b)(3), new (d), new (e),
and (l) added..............................................10684
201.36 (e) redesignated as (f); new (e) added......................10685
201.37 Added.......................................................14255
202.3 (b)(4) revised; (c)(4) added..................................3697
(b)(1)(iii) amended............................................16785
202.4 (c) added; (h)(8), (9), (i)(9), and (n) amended...............3698
(e)(7) removed..................................................3699
(e)(6)(ii)(B) removed; (e)(6)(ii)(A) redesignated as
(e)(6)(ii).........................................................60918
(d)(2) and (3) revised.........................................60919
202.6 (e)(2) through (7) redesignated as (e)(3) through (8); new
(e)(8) amended; new (e)(2) added............................3698
202.11 (a), (b)(1), (2), (c)(3), and (4) revised; (c)(2) removed;
(c)(5) redesignated as new (c)(2); new (c)(5) added........16785
202.20 (c)(2)(vii)(D)(8) amended....................................3698
(c)(2)(i)(M) added; (c)(2)(xviii) removed......................16785
203.7 (c)(1)(i) introductory text revised...........................3700
203.10 Amended......................................................3701
203.11 (j) and (k) revised..........................................3701
210.1--210.10 (Subpart A) Added....................................32296
210.16 (b)(8), (c)(1), (2), (d)(2), (v), and (3), (ii) amended.....10686
210.17 (c)(6), (d)(1), and (2)(i) amended..........................10686
Chapter III
303 Added..........................................................32304
350 Revised........................................................32308
355 Added..........................................................32308
370 Authority citation revised.....................................32312
370.1 Amended......................................................32312
370.4 (b) amended..................................................32312
380.7 Amended; introductory text added.............................32312
380.10 (a) revised.................................................64205
380.21 Amended.....................................................32313
380.31 Amended.....................................................32313
381.5 (c)(3)(iii) revised..........................................64206
382.1 Amended......................................................32313
382.20 Amended.....................................................32313
382.23 (a)(3) and (b) removed; (c) redesignated as new (b).........32313
383.2 (b) revised..................................................32313
384.2 Amended......................................................32313
384.3 (a)(1), (2) introductory text, (i), and (ii) amended.........32313
385 Revised.........................................................2031
385.2 Introductory text added; section amended.....................32313
385.3 Amended......................................................32316
385.4 (a) and (b) amended..........................................32316
385.10--385.11 (Subpart B) Heading revised.........................32316
385.11 (a) revised.................................................32316
385.20--385.22 (Subpart C) Heading revised.........................32316
Revised........................................................32316
385.21 (b), (4), and (d) amended...................................32316
385.22 (a)(1), (2), and (3) amended................................32316
385.30 Revised.....................................................32316
385.31 (a), (b), and (c) revised...................................32317
386.2 (b)(1)(xi) and (2)(xi) added.................................64206
2020
37 CFR
85 FR
Page
Chapter I
1 Policy statement.................................................12222
Waiver.........................................................17502
1.16 (a) through (e), (h), (j), (k), and (m) through (s) revised;
(f) table, (g) table, (i) table, (l) table, and (t) table
amended; (u) added; eff. in part 1-1-2022..................46985
[[Page 988]]
1.17 (a), (c) through (g), (h) introductory text, (i)(1)
introductory text, (2), (k), (m), and (p) through (s)
revised; (h) table, (i)(1) table, (o) table, and (t) table
amended....................................................46986
(a)(2) Table 2, (f) introductory text, Table 10, (g), (i)(2)
introductory text, Table 14, (q) introductory text, and (q)
correctly amended..................................................58283
1.18 (a), (b)(1), (c), (d)(3), (e), and (f) revised................46988
(d)(3), (e), and (f) correctly amended.........................58283
1.19 (b)(1)(i)(B) and (ii)(B) revised; (j) through (l) removed.....46988
1.20 Revised.......................................................46988
(c)(1)(i)(A) through (F), (ii)(A), (B), and (C) amended;
(c)(7) Table 6 revised.............................................58283
1.21 (a)(1), (2), (5), (9)(ii), (10), (n), (o), and (q) revised;
(a)(6)(i) removed; (a)(8) and (k) added....................46989
(a)(8) correctly removed.......................................58283
1.27 (c)(3) introductory text revised..............................46990
(a)(4) revised.................................................82923
1.29 (a)(1) and (d)(1) revised.....................................82923
1.431 (c) revised..................................................46990
1.445 (a) revised..................................................46990
(a)(6) correctly amended.......................................58283
1.482 Revised......................................................46991
1.492 (a), (b)(3), (4), (c)(2), (d), (f), (h), and (j) revised;
(b)(1) table, (2) table, (c)(1) table, (e) table, and (i)
table amended..............................................46991
1.704 (c) revised; eff. 7-16-20....................................36341
Chapter II
2 Authority citation revised.......................................73215
2.6 (a)(1)(i) through (v), (12), (15) through (18), (22), and (23)
revised; (a)(11)(iii), (24), and (25) added................73215
Regulation at 85 FR 73215 eff. date delayed to 2-18-21.........81123
2.114 (a) revised..................................................73215
2.149 Added........................................................73215
2.161 Revised......................................................73216
5 Authority citation revised.......................................61607
5.1 (b)(2) revised.................................................61607
5.11 (a), (b), and (e)(3) introductory text revised................61607
5.12 (a) revised; parenthetical authority citation removed.........61607
5.15 (a) introductory text, (1), (b), and (e) revised..............61607
6.1 Revised........................................................69503
7.6 (a)(6) revised.................................................73217
7.37 Revised.......................................................73217
11.11 Heading, (a)(1), and (2) revised; (a)(3) and (f)(3) added;
(b)(1), (e), and (f)(1) revised............................46992
41.20 (a), (b)(1), (2)(ii), (3), and (4) revised...................46993
42.15 Revised......................................................46993
42.23 Revised......................................................79128
42.24 Heading and (c) introductory text revised; (c)(4) added......79128
42.71 (d) introductory text amended................................79129
42.108 Revised.....................................................79129
42.120 (a) revised.................................................79129
42.121 (d) added...................................................82935
42.208 (a) through (c) revised.....................................79129
42.220 (a) revised.................................................79129
42.221 (d) added...................................................82935
201.1 (c)(1) amended...............................................10604
(b)(1), (c)(2) through (5), and (7) amended....................19667
(c)(6) revised.................................................31982
201.2 (e)(4), (5), and (7) amended.................................19667
201.3 (c), (d), and (e) revised.....................................9386
(c) table 1 amended; (c)(10) through (27) redesignated as
(c)(11) through (28); new (c)(10) added; eff. 8-17-20..............37346
201.4 (a) amended; (h) added; interim...............................3855
201.7 (c)(1) and (4) amended.......................................19667
201.10 (f) introductory text amended; (f)(6) added; interim.........3855
201.11 (e)(9) introductory text amended............................19667
201.12 (a)(1) amended..............................................19667
201.28 (e)(7) amended..............................................19667
201.33 (c) amended.................................................19667
201.38 (b)(1)(ii) revised..........................................11295
201.39 (g) amended.................................................19667
202.3 (b)(5)(ii)(A) revised........................................19668
202.4 (f)(1)(i) amended............................................31982
(j) added; (n) amended; eff. 8-17-20...........................37346
202.5 (b)(3) and (c)(3) amended....................................19668
202.6 (e)(4) amended...............................................19668
(e)(2) amended; eff. 8-17-20...................................37347
202.12 (c)(1) amended..............................................19668
202.13 (b)(1) revised; interim.....................................27298
[[Page 989]]
202.17 (g)(1) amended..............................................19668
202.18 (a) through (c) amended; (f) added..........................71837
202.19 (b)(4) revised; (c)(5) amended..............................71837
202.23 (b)(2) amended..............................................19668
202.24 (a)(2) and (b) amended; (a)(3) and (4) redesignated as
(a)(4) and (5); new (a)(3) added; (c)(3) revised...........71837
202 Appendix B amended.............................................71837
205.13 Amended.....................................................10604
205.14 Added.......................................................10605
205.15 Added.......................................................10605
210.1--210.10 (Subpart A) Removed; new subpart redesignated from
Subpart B; interim.........................................58143
210.1 Amended; interim.............................................58143
210.11--210.21 (Subpart B) Redesignated as Subpart A; amended;
interim....................................................58143
210.21--210.28 (Subpart B) Added; interim..........................58143
210.29 Added; interim..............................................58165
210.30 Added; interim..............................................84245
210.31 Added; interim..............................................86822
210.32 Added; interim..............................................86822
210.33 Added; interim..............................................86822
Chapter III
360.3 (b) amended; (d) removed; (e) redesignated as new (d)........37752
360.4 (b)(1)(v) and (2)(v) removed; (b)(1)(vi) and (2)(vi)
redesignated as new (b)(1)(v) and new (2)(v); (a) and
(b)(2)(i) revised; (b)(2)(iii) amended.....................37752
360.5 Removed......................................................37752
360.22 (c) removed; (d), (e), and (f) redesignated as (c), (d),
and (e); (a) and new (d) revised; (b)(2) amended...........37752
360.23 Removed; new section redesignated from 360.24; new (b)
amended....................................................37753
360.24 Redesignated as 360.23......................................37753
360.30 Amended.....................................................37753
360.31 Amended.....................................................37753
380.20--380.22 (Subpart C) Revised; eff. 1-1-21....................12745
380.30--380.32 (Subpart D) Revised; eff. 1-1-21....................11857
381.5 (c)(3)(iv) revised...........................................74884
383.1 (a) amended; eff. 1-1-21......................................9664
383.2 (c) amended; eff. 1-1-21......................................9664
383.3 (a) amended; (a)(1)(i) through (v), (2)(i) through (v), and
(c) revised; eff. 1-1-21....................................9664
383.4 (a) amended; eff. 1-1-21......................................9664
386.2 (b)(1)(xii) and (2)(xii) added...............................74884
390 Added............................................................832
2021
(Regulations published from January 1, 2021, through July 1, 2021)
37 CFR
86 FR
Page
Chapter I
1.21 (a)(1)(ii)(B) removed; (a)(1)(iv) and (9) introductory text
added......................................................28451
1.27 Regulation at 85 FR 82923 eff. date corrected to 1 21 21.......2542
Regulation at 86 FR 2542 correctly withdrawn....................3815
1.29 Regulation at 85 FR 82923 eff. date corrected to 1 21 21.......2542
Regulation at 86 FR 2542 correctly withdrawn....................3815
11.1 Amended.......................................................28452
Correctly amended..............................................32640
11.2 (b)(2) and (4) revised........................................28452
11.4 Transferred to Subpart A and revised..........................28452
11.5 (a), (b)(1) introductory text, and (2) revised................28452
11.7 (b)(1)(i)(B), (2), (3), (d)(3), (e), (f), (g)(1), and (2)(ii)
revised; (b)(4) and (l) added..............................28453
11.9 (a) and (b) revised; (d), (e), and (f) added..................28453
11.10 Revised......................................................28454
11.11 Revised......................................................28455
11.18 (c)(2) revised...............................................28457
11.19 Heading, (a), (b)(1)(ii), and (c) revised; (e) added.........28457
11.20 (a)(4) and (c) revised.......................................28457
11.21 Revised......................................................28458
11.22 (g) and (h) revised; (c) added...............................28458
11.24 (a), (b) introductory text, (d)(1) introductory text, and
(e) revised................................................28458
11.25 (a), (b)(2) introductory text, (b)(3), and (e)(2) revised....28458
11.27 (b) revised; (c) removed.....................................28459
11.28 (a)(1) introductory text, (1)(i)(D), (E), and (2) revised....28459
[[Page 990]]
11.29 (a), (b), (d), (g), and (i) revised..........................28459
11.34 (c) revised..................................................28460
11.35 Revised......................................................28460
11.39 Heading, (a), (b), and (f) revised...........................28461
11.40 (b) revised; (c) added.......................................28461
11.41 (a) revised..................................................28461
11.43 Revised......................................................28461
11.44 (a) and (b) revised..........................................28461
11.50 (a) revised..................................................28462
11.51 Revised......................................................28462
11.52 Revised......................................................28462
11.53 Revised......................................................28463
11.54 Revised......................................................28463
11.55 Revised......................................................28463
11.56 (c) revised..................................................28464
11.57 Revised......................................................28464
11.58 Revised......................................................28464
11.60 Revised......................................................28465
11.106 Revised.....................................................28466
11.118 (a) and (b) revised.........................................28466
11.702 Revised.....................................................28466
11.703 Revised.....................................................28467
11.704 (e) revised.................................................28467
11.804 (b) and (h) revised.........................................28467
42.121 Regulation at 85 FR 82935 eff. date corrected to 1-21-21.....2542
Regulation at 86 FR 2542 correctly withdrawn....................3815
42.221 Regulation at 85 FR 82935 eff. date corrected to 1-21-21.....2542
Regulation at 86 FR 2542 correctly withdrawn....................3815
Chapter II
201.1 (b)(2) table, (c)(3), and (5) amended; eff. 7-22-21..........32641
201.3 (c)(9) through (28) redesignated as (c)(10) through (29);
new (c)(9) added...........................................10825
Heading revised; (a), (b)(3), (c) table, (e) heading,
introductory text, and table amended; eff. 7-22-21.................32641
201.6 (c)(3) amended; eff. 7-22-21.................................32642
201.10 (d)(1) and (e)(1) revised; (f)(1)(ii)(A) and (3) amended....11641
201.11 Amended; eff. 7-22-21.......................................32642
201.12 (a) amended; eff. 7-22-21...................................32642
201.17 Amended; eff. 7-22-21.......................................32642
201.18 Amended; eff. 7-22-21.......................................32642
201.28 Amended; eff. 7-22-21.......................................32642
201.29 (e) introductory text amended; eff. 7-22-21.................32642
202.4 (k) through (n) redesignated as (o) through (r); new (k)
added; new (r) amended.....................................10825
202.6 (e)(2) amended...............................................10826
202.13 (c)(1) and (3) introductory text amended; (c)(2), (3)(v),
and (4) revised; interim...................................10177
202.19 Amended; eff. 7-22-21.......................................32642
202.22 (d)(6)(iii) amended; eff. 7-22-21...........................32642
202.23 (b)(2) amended; eff. 7-22-21................................32642
202.24 (d)(3) amended; eff. 7-22-21................................32642
203.3 (b) revised; (c), (f), and (g) amended, (c)(1) added; (h)
and (i) removed; eff. 7-22-21..............................32642
210.2 (k) revised; (l) through (o) removed..........................2203
210.6 (g)(4)(i) amended; eff. 7-22-21..............................32643
210.7 (g)(5)(i) amended; eff. 7-22-21..............................32643
210.10 (b) introductory text, (1), (2) introductory text, and
(3)(i) revised; (c) through (m) added.......................2203
(b) introductory text, (1), (2) introductory text, and (3)(i)
revised; (c) through (o) correctly added............................7653
210.24 Nomenclature change; (b)(8) introductory text amended;
(b)(9) added...............................................12826
210.25 (b)(6) revised..............................................12826
210.27 (c)(5) revised; (g)(2)(ii) amended..........................12826
210.28 (c)(5) revised..............................................12827
210.30 (a) revised; (b) removed; (c) redesignated as new (b).......12827
210.34 Added; interim...............................................9019
[[Page 991]]
Chapter III
303.5 Revised.......................................................9462
351.9 (a) revised..................................................31172
370.2 Amended; eff. 7-22-21........................................32643
370.3 (b) amended; eff. 7-22-21....................................32643
370.4 (c) amended; eff. 7-22-21....................................32643
370.5 Amended; eff. 7-22-21........................................32643
390.1 Revised.......................................................6568
390.3 Revised.......................................................6569
390.4 Revised.......................................................6570
[all]