[Federal Register: July 9, 2001 (Volume 66, Number 131)]
[Proposed Rules]
[Page 35763-35765]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr09jy01-13]
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Proposed Rules
Federal Register
________________________________________________________________________
This section of the FEDERAL REGISTER contains notices to the public of
the proposed issuance of rules and regulations. The purpose of these
notices is to give interested persons an opportunity to participate in
the rule making prior to the adoption of the final rules.
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[[Page 35763]]
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: 010606145-1145-01]
RIN 0651-AB37
Elimination of Continued Prosecution Application Practice as to
Utility and Plant Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The American Inventors Protection Act of 1999 (AIPA) enacted
provisions for the continued examination of a utility or plant
application at the request of the applicant (request for continued
examination or RCE practice). Therefore, there no longer appears to be
a need for continued prosecution application (CPA) practice as to
utility and plant applications. Thus, the Office is proposing to
eliminate CPA practice as to utility and plant applications. An
applicant for a utility or plant patent may also continue to
effectively obtain further examination of the application by filing a
continuing application under section 1.53(b). Since RCE practice does
not apply to design applications, CPA practice will remain in place for
design applications.
DATES: To be ensured of consideration, written comments must be
received on or before September 7, 2001. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to ab37.comments@uspto.gov. Comments may also be
submitted by mail addressed to: Box Comments--Patents, Commissioner for
Patents, Washington, DC 20231, or by facsimile to (703) 872-9411,
marked to the attention of Eugenia A. Jones. Although comments may be
submitted by mail or facsimile, the Office prefers to receive comments
via the Internet. If comments are submitted by mail, the Office prefers
that the comments be submitted on a DOS formatted 3\1/2\ inch disk
accompanied by a paper copy.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Crystal Park 2, Suite 910,
2121 Crystal Drive, Arlington, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
http://www.uspto.gov). Since comments will be made available for public
inspection, information that is not desired to be made public, such as
an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, by telephone at
(703) 306-5586, or by mail addressed to: Box Comments--Patents,
Commissioner for Patents, Washington, DC 20231, or by facsimile to
(703) 872-9411, marked to the attention of Eugenia A. Jones.
SUPPLEMENTARY INFORMATION: The AIPA was enacted into law on November
29, 1999. See Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-
591 (1999). Among other things, the AIPA amended Title 35 of the United
States Code to provide for a request for continued examination (RCE)
practice. See 35 U.S.C. 132(b). RCE practice is applicable to any
utility or plant application filed on or after June 8, 1995. See 113
Stat. at 1501A-560 through 1501A-561. The Office amended the rules of
practice in Title 37 of the Code of Federal Regulations to implement
the RCE provisions of the AIPA via an interim rule published in March
2000 and a final rule published in August 2000. See Changes to
Application Examination and Provisional Application Practice, 65 FR
14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000)
(interim rule), and Request for Continued Examination Practice and
Changes to Provisional Application Practice, 65 FR 50091 (Aug. 16,
2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000) (final rule).
The AIPA also amended Title 35 of the United States Code to
provide, with certain exceptions, for the publication of pending patent
applications (other than design applications) eighteen months after the
earliest claimed priority date. See 35 U.S.C. 122(b) (applies to
utility and plant applications filed on or after November 29, 2000,
including any CPA filed on or after November 29, 2000). The Office
amended the rules of practice in Title 37 of the Code of Federal
Regulations to implement the eighteen-month publication provisions of
the AIPA by a final rule published in September of 2000. See Changes to
Implement Eighteen-Month Publication of Patent Applications, 65 FR
57023 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63 (Oct. 10, 2000)
(final rule). That notice indicated that the publication of a CPA is
both costly and inefficient. See Changes to Implement Eighteen-Month
Publication of Patent Applications, 65 FR at 57047, 1239 Off. Gaz. Pat.
Office at 84 (comment 58 and response).
The Office created CPA practice under Sec. 1.53(d) in 1997 to
permit applicants to effectively obtain continued examination of an
application using a streamlined continuing application practice (i.e.,
CPA practice). CPA practice was a substitute for a continued
examination practice. See Changes to Patent Practice and Procedures, 62
FR 53131, 53142 (Oct. 10, 1997), 1203 Off. Gaz. Pat. Office 63, 72
(Oct. 21, 1997) (final rule) (comment 17 and response). While the
Office did not completely eliminate CPA practice for utility and plant
applications (as a convenience to applicants) when it implemented RCE
practice, it has now determined that CPA practice for utility or plant
applications is redundant (in view of RCE practice), costly, and
inefficient. Thus, the Office is now proposing to eliminate CPA
practice as to utility and plant applications.
Discussion of Specific Rule
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.53(d)(1)(i) is proposed to be amended to provide that an
application may be filed as a CPA under Sec. 1.53(d) only for a design
patent (either an original or reissue design patent) and the prior
nonprovisional application (of which the CPA is a continuation or
divisional) is a design application that is complete as defined by
Sec. 1.51(b).
In the event that an applicant files a request for a CPA of a
utility or plant application (to which CPA practice no longer applies)
and the utility or plant application was filed on or after June 8,
1995, the Office will automatically treat the improper request for a
CPA as an
[[Page 35764]]
RCE under Sec. 1.114 of the utility or plant application identified in
the request for CPA. Experience, however, has shown that such requests
for a CPA may not satisfy the requirements of Sec. 1.114 to be a proper
RCE (e.g., the request may lack a submission under Sec. 1.114(b), or
may not be accompanied by the fee set forth in Sec. 1.17(e)). In such
situations, the Office will treat the improper request for a CPA as an
RCE (albeit an improper RCE), and the time period set in the last
Office action (or notice of allowance) will continue to run. If the
time period (considering any available extension under Sec. 1.136(a))
has expired, the applicant must file a petition under Sec. 1.137 (with
the lacking submission under Sec. 1.114(b) and/or fee set forth in
Sec. 1.17(e)) to revive the abandoned application.
In the event that an applicant files a request for a CPA of a
utility or plant application and the utility or plant application was
filed before June 8, 1995, the Office will treat the improper request
for a CPA as an improper application under the provisions set forth in
Sec. 1.53(e).
Section 1.53(d)(3) is proposed to be amended to provide that the
filing fee for a CPA filed under Sec. 1.53(d) is the basic filing fee
as set forth in Sec. 1.16(f) if the application is for an original
design patent or Sec. 1.16(h) if the application is for a reissue
design patent. Since Sec. 1.53(d) as proposed would no longer apply to
utility or plant applications and a design application may contain only
a single claim (Sec. 1.154(b)(6)), there is no need for Sec. 1.53(d)(3)
to provide for additional claims fees.
Classification
Regulatory Flexibility Act
The Chief Counsel for Regulation of the Department of Commerce
certified to the Chief Counsel for Advocacy, Small Business
Administration, that the changes proposed in this notice, if adopted,
would not have a significant impact on a substantial number of small
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The changes
proposed in this notice (if adopted) would eliminate CPA practice as to
utility and plant applications. The changes proposed in this notice (if
adopted) would not have a significant economic impact on any business
because: (1) Any applicant (including small entities) in a utility or
plant application filed before June 8, 1995, can obtain further
examination of the application by filing either a continuing
application under Sec. 1.53(b) or a submission under Sec. 1.129(a) (if
the application is eligible for Sec. 1.129(a) practice); (2) any
applicant (including small entities) in a utility or plant application
filed on or after June 8, 1995, can obtain further examination of the
application by filing either an RCE under 35 U.S.C. 132(b) and
Sec. 1.114 or a continuing application under Sec. 1.53(b); and (3) any
applicant (including small entities) in a design application can
continue to obtain further examination of the application by filing
either a CPA under Sec. 1.53(d) or a continuing application under
Sec. 1.53(b).
Executive Order 13132
This rulemaking does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This notice of proposed rulemaking involves information collection
requirements which are subject to review by the Office of Management
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C.
3501 et seq.). As required by the Paperwork Reduction Act of 1995 (44
U.S.C. 3507(d)), the Office has submitted an information collection
package to OMB for its review and approval of the proposed information
collections under OMB control numbers 0651-0031 and 0651-0032. The
Office is submitting these information collections to OMB for its
review and approval because this notice of proposed rulemaking will
increase the number of RCEs. The principal impact of the changes in
this notice of proposed rulemaking is to eliminate CPA practice with
respect to utility and plant applications.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/30/31/35/36/42/43/61/62/63/64/67/68/
91/92/ 96/97.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,247,389.
Estimated Time Per Response: 0.45 hours.
Estimated Total Annual Burden Hours: 1,021,941 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosure Statements; Terminal Disclaimers; Petitions to Revive;
Express Abandonments; Appeal Notices; Petitions for Access; Powers to
Inspect; Certificates of Mailing or Transmission; Statements under
Sec. 3.73(b); Amendments; Petitions and their Transmittal Letters; and
Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 319,350.
Estimated Time Per Response: 9.35 hours.
Estimated Total Annual Burden Hours: 2,984,360 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, and Plant Patent Application
Declaration will assist applicants in complying with the requirements
of the patent statute and regulations, and will further assist the
Office in the processing and examination of the application.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
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information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, Washington,
DC 20231, or to the Office of Information and Regulatory Affairs of
OMB, New Executive Office Building, Room 10235, 725 17th Street NW.,
Washington, DC 20503, Attention: Desk Officer for the United States
Patent and Trademark Office.
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 OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and record keeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is
proposed to be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.53 is proposed to be amended by revising paragraphs
(d)(1) and (d)(3) to read as follows:
* * * * *
(d) * * *
(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
that is complete as defined by Sec. 1.51(b); 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.
* * * * *
(3) The filing fee for a continued prosecution application filed
under this paragraph is the basic filing fee as set forth in
Sec. 1.16(f) or Sec. 1.16(h).
* * * * *
Dated: June 22, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 01-17100 Filed 7-6-01; 8:45 am]
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