35 U.S.C. § 132 — Notice of rejection; reexamination

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