608.05(a) Submission of a “Computer Program Listing Appendix” [R-07.2022]

608.05(a) Submission of a “Computer Program Listing Appendix” [R-07.2022]

Special procedures for presentation of computer program listings as a “Computer Program Listing Appendix in the form of ASCII plain text files in U.S. national patent applications are set forth in 37 CFR 1.96. Submission via the USPTO patent electronic filing system or the use of read-only optical disc files is desirable in view of the number of computer program listings being submitted as part of the disclosure in patent applications. Such listings are often several hundred pages in length. By filing and publishing such computer program listings in electronic form rather than on physical sheets of paper, substantial cost savings can result to the applicants, the public, and the U.S. Patent and Trademark Office.

See MPEP § 608.05, subsection I., for details pertaining to submission of ASCII plain text files via the USPTO patent electronic filing system, and subsection II., for details pertaining to submissions on read-only optical disc. Also, substantial details regarding submitting ASCII plain text files are incorporated into 37 CFR 1.96(c), which are discussed more below in subsection III.

I. BACKGROUND

A “computer program listing”, as used in these rules, means the document that lists, in proper order, the instructions, routines, and other contents of a program for a computer. The listing may be either in machine or machine-independent (object or source) programming language which will cause a computer to perform a desired procedure or task, such as solving a problem, regulating the flow of work in a computer, or controlling or monitoring events. The general description of the computer program listing will appear in the specification while the computer program listing may appear either directly in the specification or as a “Computer Program Listing Appendix” to the specification, submitted in an ASCII text file via the USPTO patent electronic filing system or on a read-only optical disc. The specification must include an incorporation by reference statement of the “Computer Program Listing Appendix” in accordance with 37 CFR 1.96(c)(6) according to the arrangement of application elements as outlined in 37 CFR 1.77(b)(5).

Copies of publicly available computer program listings (including any “Computer Program Listing Appendix”) are available via Patent Center. The U.S. Patent and Trademark Office also provides publicly available computer program listings (including any “Computer Program Listing Appendix”) at the cost set forth in 37 CFR 1.19.

II. DISCUSSION OF THE BACKGROUND AND MAJOR ISSUES INVOLVED

The USPTO prefers that specifications and drawings are submitted electronically via the USPTO patent electronic filing system. However, any specification and/or drawings submitted on physical sheets of paper should conform to the applicable provisions of 37 CFR 1.52 and 37 CFR 1.84, and will be subject to a non-electronic filing fee. See 37 CFR 1.16(t). When lengthy computer program listings must be disclosed in a patent application in order to provide a complete disclosure, use of paper copies can become burdensome. The cost of printing long computer programs in patent documents is also very expensive to the U.S. Patent and Trademark Office. In accordance with 37 CFR 1.96, a computer program listing contained on three hundred printout lines or less may be submitted either as drawings (in compliance with 37 CFR 1.84), as part of the written specification (in compliance with 37 CFR 1.52), as an ASCII text file on a read-only optical disc (in compliance with 37 CFR 1.52(e)), or as an ASCII text file via the USPTO patent electronic filing system (in compliance with the Legal Framework for Patent Electronic System (see MPEP § 502.05)). A computer program listing contained on three hundred and one (301) printout lines or more must be submitted as an ASCII plain text file on a read-only optical disc (in compliance with 37 CFR 1.52(e)) or submitted via the USPTO patent electronic filing system. See 37 CFR 1.96(c). Regardless of the number of printout lines a computer program listing has, any computer program listing which is filed as an ASCII plain text file on a read-only optical disc or submitted via the USPTO patent electronic filing system is referred to as a “Computer Program Listing Appendix”, and the “Computer Program Listing Appendix” will not be printed in any patent application or part of the printed patent. See 37 CFR 1.96(c).

Form paragraph 6.64.01 or 6.64.02 may be used to notify the applicant of this requirement.

III. REQUIREMENTS FOR A “COMPUTER PROGRAM LISTING APPENDIX”

37 CFR 1.96(c) lists several requirements of a “Computer Program Listing Appendix”. Specifically, a “Computer Program Listing Appendix” must be compatible with PC or Mac^® computers and with MS-DOS^®, MS-Windows^®, Mac OS^®, or Unix^®/Linux^® operating systems. Also, a “Computer Program Listing Appendix” may only have ASCII CRLF or LF line terminators, and the data must not be dependent on control characters or codes that are not defined in the ASCII character set. See 37 CFR 1.96(c)(1)). Also, a “Computer Program Listing Appendix” must have a file name with a “.txt” extension. See 37 CFR 1.96(c)(2) (provides the requirements for the file name).

There is a 25 MB size limit for “Computer Program Listing Appendix” files submitted via the USPTO patent electronic filing system with file compression not being permitted. See 37 CFR 1.96(c)(3). It is noted that it may be possible to break up a “Computer Program Listing Appendix” file that is larger than 25 MB into multiple files that are 25 MB or less in size and submit those smaller files via the USPTO patent electronic filing system, as per the Legal Framework for Patent Electronic System (www.uspto.gov). See also MPEP § 608.05(I)(C).

A “Computer Program Listing Appendix” submitted on a read-only optical disc in compliance with 37 CFR 1.52(e) must be submitted as a separate read-only optical disc for each applicable application, and multiple computer program listings for a single application may be placed on a single read-only optical disc. Multiple read-only optical discs, containing one or more computer program listings, may be submitted for a single application. Any computer program listing may be compressed using WinZip^®, 7-Zip, or Unix^®/Linux^® Zip, and the compressed file must not be self-extracting. However, a computer program listing which has a nested file structure is required to be compressed. If after compression, a compressed ASCII plain text file still does not fit on a single read-only optical disc, the compressed file may be split into multiple file parts in accordance with the target read-only optical disc size and labeled in compliance with 37 CFR 1.52(e)(5)(vi). See 37 CFR 1.96(c)(4).

Read-only optical discs containing a “Computer Program Listing Appendix” must be submitted in duplicate and labeled as “Copy 1” and “Copy 2” respectively. The transmittal letter that accompanies the read-only optical discs must include a statement that the two read-only optical discs are identical. In the event that the two read-only optical disc copies are not identical, the Office will use the read-only optical disc labeled “Copy 1” for further processing. See 37 CFR 1.96(c)(7). Two discs would be considered not identical when, e.g., the files contained on those discs are not the same. Duplicate copies for a “Computer Program Listing Appendix” are required to be submitted since the OPAP keeps a first copy for record retention purposes and a second copy in an artifact folder for use by the examiner during the patent examination process. Any amendment to the information on a read-only optical disc must be by way of a replacement read-only optical disc in compliance with 37 CFR 1.96(c)(5), as discussed immediately below.

In order to amend a “Computer Program Listing Appendix”, a replacement ASCII plain text file, in accordance with 37 CFR 1.96(c), must be submitted via the USPTO patent electronic filing system or on a read-only optical disc, in compliance with 37 CFR 1.52(e). Any replacement ASCII plain text file submitted on read-only optical discs must be submitted in duplicate and must be labeled as “COPY 1 REPLACEMENT MM/DD/YYYY” (with the month, day, and year of creation indicated) and “COPY 2 REPLACEMENT MM/DD/YYYY”. When the information is filed on a read-only optical disc initially, amendments cannot be made to the information using the USPTO patent electronic filing system, but instead must be made using a replacement read-only optical disc. See 37 CFR 1.52(e)(7). Also, a request must be made that the material in the replacement ASCII plain text file be incorporated by reference in a separate paragraph of the specification (replacing any prior such paragraph, as applicable) identifying the name of the file, the date of creation, and the size of the file in bytes. See 37 CFR 1.77(b)(5). A statement must be provided that identifies the location of all deletions, replacements, or additions to the ASCII plain text file so that the changes made to the information contained in the submission can be more easily and accurately identified. Another statement that the replacement ASCII plain text file contains no new matter must also be provided. See 37 CFR 1.96(c)(5). The Office may also require that a replacement ASCII plain text file be submitted if, for example, the information on a read-only optical disc is corrupted.

A “Computer Program Listing Appendix” filed as an ASCII plain text file on the date that the application was accorded a filing date is to be treated as part of the originally filed disclosure even if the required “incorporation by reference” statement (see 37 CFR 1.77(b)(5)) is omitted. Similarly, if a preliminary amendment accompanies the application when it is filed in the Office and the preliminary amendment includes a “Computer Program Listing Appendix” as an ASCII plain text file, the “Computer Program Listing Appendix” will be treated as part of the original disclosure. The “Computer Program Listing Appendix” is considered part of the original disclosure by virtue of its inclusion with the application on the date the application is accorded a filing date. The incorporation by reference statement of the material in the ASCII plain text file is required to be part of the specification so it is clear to the Office, the printer, and the public that the application as originally filed includes the “Computer Program Listing Appendix”. The examiner should require applicant(s) to insert this statement if it is omitted. See 37 CFR 1.96(c)(6). Also, if the application would otherwise be in condition for allowance, the examiner may insert the statement by examiner’s amendment with a notice of allowance after receiving authorization from the applicant. See MPEP § 1302.04 and 37 CFR 1.121(g).