35 U.S.C. § 133 — Time for prosecuting application

Page 60 TITLE 35—PATENTS § 132 (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 36 (R.S. 4893). The first part is revised in language and amplified. The phrase ‘‘and that the invention is sufficiently use- ful and important’’ is omitted as unnecessary, the re- quirements for patentability being stated in sections 101, 102 and 103. Editorial Notes AMENDMENTS 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. PRE-PROSECUTION ASSESSMENT PILOT PROGRAM Pub. L. 117–328, div. W, § 106, Dec. 29, 2022, 136 Stat. 5521, provided that: ‘‘(a) PILOT PROGRAM.—Not later than 1 year after the date of enactment of this Act [Dec. 29, 2022], the Direc- tor shall establish a pilot program to assist first-time prospective patent applicants in assessing the strengths and weaknesses of a potential patent applica- tion submitted by such a prospective applicant. ‘‘(b) CONSIDERATIONS.—In developing the pilot pro- gram required under subsection (a), the Director shall establish— ‘‘(1) a notification process to notify a prospective patent applicant seeking an assessment described in that subsection that any assessment so provided may not be considered an official ruling of patentability from the Office; ‘‘(2) conditions to determine eligibility for the pilot program, taking into consideration available re- sources; ‘‘(3) reasonable limitations on the amount of time to be spent providing assistance to each individual first-time prospective patent applicant; ‘‘(4) procedures for referring prospective patent ap- plicants to legal counsel, including through the pat- ent pro bono programs; and ‘‘(5) procedures to protect the confidentiality of the information disclosed by prospective patent appli- cants.’’ [For definitions of terms used in section 106 of div. W of Pub. L. 117–328, set out above, see section 102 of div. W of Pub. L. 117–328, set out as a Definitions note under section 1 of this title.] § 132. Notice of rejection; reexamination (a) Whenever, on examination, any claim for a patent is rejected, or any objection or require- ment made, the Director shall notify the appli- cant thereof, stating the reasons for such rejec- tion, or objection or requirement, together with such information and references as may be use- ful in judging of the propriety of continuing the prosecution of his application; and if after re- ceiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amend- ment shall introduce new matter into the disclo- sure of the invention. (b) The Director shall prescribe regulations to provide for the continued examination of appli- cations for patent at the request of the appli- cant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1). (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4403, 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–560, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 51 (R.S. 4903, amended Aug. 5, 1939, ch. 452, § 1, 53 Stat. 1213). The first paragraph of the corresponding section of existing statute is revised in language and amplified to incorporate present practice; the second paragraph of the existing statute is placed in section 135. The last sentence relating to new matter is added but represents no departure from present practice. Editorial Notes AMENDMENTS 2011—Subsec. (b). Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘41(h)(1)’’. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below. 1999—Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, sub- stituted ‘‘Director’’ for ‘‘Commissioner’’. Pub. L. 106–113, § 1000(a)(9) [title IV, § 4403], designated existing provisions as subsec. (a) and added subsec. (b). Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4405(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–560, provided that: ‘‘The amendments made by section 4403 [amending this section]— ‘‘(1) shall take effect on the date that is 6 months after the date of the enactment of this Act [Nov. 29, 1999], and shall apply to all applications filed under section 111(a) of title 35, United States Code, on or after June 8, 1995, and all applications complying with section 371 of title 35, United States Code, that resulted from international applications filed on or after June 8, 1995; and ‘‘(2) do not apply to applications for design patents under chapter 16 of title 35, United States Code.’’ Amendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. § 133. Time for prosecuting application Upon failure of the applicant to prosecute the application within six months after any action Page 61 TITLE 35—PATENTS § 134 therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto. (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–211, title II, § 202(b)(5), Dec. 18, 2012, 126 Stat. 1536.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 37 (R.S. 4894, amended (1) Mar. 3, 1897, ch. 391, § 4, 29 Stat. 692, 693, (2) July 6, 1916, ch. 225, § 1, 39 Stat. 345, 347–8, (3) Mar. 2, 1927, ch. 273, § 1, 44 Stat. 1335, (4) Aug. 7, 1939, ch. 568, 53 Stat. 1264). The opening clause of the corresponding section of existing statute is omitted as having no present day meaning or value and the last two sentences are omit- ted for inclusion in section 267. The notice is stated as given or mailed. Language is revised. Editorial Notes AMENDMENTS 2012—Pub. L. 112–211 struck out ‘‘, unless it be shown to the satisfaction of the Director that such delay was unavoidable’’ before period at end. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2012 AMENDMENT Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litiga- tion commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. § 134. Appeal to the Patent Trial and Appeal Board (a) PATENT APPLICANT.—An applicant for a patent, any of whose claims has been twice re- jected, may appeal from the decision of the pri- mary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.—A patent owner in a reex- amination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98–622, title II, § 204(b)(1), Nov. 8, 1984, 98 Stat. 3388; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4605(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; Pub. L. 107–273, div. C, title III, §§ 13106(b), 13202(b)(1), Nov. 2, 2002, 116 Stat. 1901; Pub. L. 112–29, §§ 3(j)(1), (3), 7(b), Sept. 16, 2011, 125 Stat. 290, 313.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 57 (R.S. 4909 amended (1) Mar. 2, 1927, ch. 273, § 5, 44 Stat. 1335, 1336, (2) Aug. 5, 1939, ch. 451, § 2, 53 Stat. 1212). Reference to reissues is omitted in view of the gen- eral provision in section 251. Minor changes in language are made. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 3(j)(3), amended section catch- line generally. Prior to amendment, section catchline read as follows: ‘‘Appeal to the Board of Patent Appeals and Interferences’’. Subsec. (a). Pub. L. 112–29, § 3(j)(1), substituted ‘‘Pat- ent Trial and Appeal Board’’ for ‘‘Board of Patent Ap- peals and Interferences’’. Subsec. (b). Pub. L. 112–29, § 7(b)(1), substituted ‘‘a re- examination’’ for ‘‘any reexamination proceeding’’. Pub. L. 112–29, § 3(j)(1), substituted ‘‘Patent Trial and Appeal Board’’ for ‘‘Board of Patent Appeals and Inter- ferences’’. Subsec. (c). Pub. L. 112–29, § 7(b)(2), struck out subsec. (c). Prior to amendment, text read as follows: ‘‘A third- party requester in an inter partes proceeding may ap- peal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favor- able to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal.’’ 2002—Subsecs. (a), (b). Pub. L. 107–273, § 13202(b)(1), substituted ‘‘primary examiner’’ for ‘‘administrative patent judge’’. Subsec. (c). Pub. L. 107–273, § 13202(b)(1), substituted ‘‘primary examiner’’ for ‘‘administrative patent judge’’. Pub. L. 107–273, § 13106(b), struck out at end ‘‘The third-party requester may not appeal the decision of the Board of Patent Appeals and Interferences.’’ 1999—Pub. L. 106–113 reenacted section catchline without change and amended text generally. Prior to amendment, text read as follows: ‘‘An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, hav- ing once paid the fee for such appeal.’’ 1984—Pub. L. 98–622 substituted ‘‘Patent Appeals and Interferences’’ for ‘‘Appeals’’ in section catchline and text. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by section 3(j)(1), (3) of Pub. L. 112–29 ef- fective upon the expiration of the 18-month period be- ginning on Sept. 16, 2011, and applicable to certain ap- plications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title. Amendment by section 7(b) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, with certain exceptions, see section 7(e) of Pub. L. 112–29, set out as a note under section 6 of this title. EFFECTIVE DATE OF 2002 AMENDMENT Pub. L. 107–273, div. C, title III, § 13106(d), Nov. 2, 2002, 116 Stat. 1901, provided that: ‘‘The amendments made by this section [amending this section and sections 141 and 315 of this title] apply with respect to any reexam- ination proceeding commenced on or after the date of enactment of this Act [Nov. 2, 2002].’’