[Federal Register: July 2, 1998 (Volume 63, Number 127)]
[Rules and Regulations]
[Page 36184-36185]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr02jy98-22]
[[Page 36184]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 980108007-8131-02]
RIN 0651-AA97
Changes to Continued Prosecution Application Practice
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The Patent and Trademark Office (Office) is confirming the
amendment of its regulations that removed the requirement that the
prior application of a continued prosecution application (CPA) must
have been filed on or after June 8, 1995. This requirement was removed
in response to requests from the public.
DATES: This final rule is effective on July 2, 1998. The interim rule,
published at 63 FR 5732, was effective February 4, 1998.
Applicability date: This rule change applies to all continued
prosecution applications filed on or after December 1, 1997.
FOR FURTHER INFORMATION CONTACT: Concerning this final rule: Hiram H.
Bernstein or Robert W. Bahr, Senior Legal Advisors, by telephone at
(703) 305-9285; or by mail addressed to: Box Comments--Patents,
Assistant Commissioner for Patents, Washington, DC 20231; or by
facsimile to (703) 308-6916, marked to the attention of Mr. Bernstein.
Concerning Sec. 1.53 in General: John F. Gonzales, Fred A.
Silverberg, or Robert W. Bahr, Senior Legal Advisors, at the above-
mentioned telephone number.
SUPPLEMENTARY INFORMATION: Continued Prosecution Application (CPA)
practice under Sec. 1.53(d) was adopted to permit applicants to obtain
further examination of an application. See Changes to Patent Practice
and Procedure; Final Rule Notice, 62 FR 53131, 53147 (October 10,
1997), 1203 Off. Gaz. Pat. Office 63, 76-77 (October 21, 1997). Section
1.53(d) as adopted, effective December 1, 1997, required, inter alia,
that the prior application of a CPA be filed on or after June 8, 1995.
See Final Rule Notice, 62 FR at 53186, 1203 Off. Gaz. Pat. Office at
112. Thus, if an application was filed before June 8, 1995, the
applicant was required to file a continuation (or divisional) under
Sec. 1.53(b) to obtain further examination.
Section 1.53(b) requires that any application filed thereunder
(including a continuation or divisional) contain a specification
(including at least one claim) and any necessary drawing. While
Sec. 1.53(b) permits the submission of a rewritten specification (with
all prior amendments incorporated), such an option is only practical to
those who have the prior application in electronic form. For those
applicants who do not have the prior application in electronic form,
their only option is to submit a copy of the prior application
(including any appendix) along with a copy of all the amendments made
in the prior application, as well as copies of all other papers filed
in the prior application (e.g., information disclosure statements
(IDSs), affidavits, declarations) that are to be considered in the
continuing application.
Subsequent to the adoption of the change to Sec. 1.53(d), the
Office received a number of comments indicating that it takes a
considerable amount of time to prepare the papers required by
Sec. 1.53(b), even when copied from a prior application. In view of
these concerns, the Office amended Sec. 1.53(d)(1)(i) by an immediately
effective interim rule to eliminate its requirement that the prior
application of a CPA be filed on or after June 8, 1995, and requested
public comment on this interim rule change. See Changes to Continued
Prosecution Application Practice; Interim Rule Notice, 63 FR 5732
(February 4, 1998), 1207 Off. Gaz. Pat. Office 83 (February 24, 1998).
The Office has received a number of comments by telephone
expressing support for the change to Sec. 1.53(d)(1)(i), as well as its
immediate adoption and applicability to CPAs filed on or after December
1, 1997 (i.e., all CPAs). The Office, however, has received no written
comments on the change to Sec. 1.53(d)(1)(i). Accordingly, the change
to Sec. 1.53(d)(1)(i) in the interim rule--removal of the requirement
that the prior application of a continued prosecution application (CPA)
under Sec. 1.53(d) must have been filed on or after June 8, 1995--is
adopted as a final rule.
As discussed in the Interim Rule Notice, no patent issuing from a
CPA under Sec. 1.53(d) is entitled to the provisions of 35 U.S.C.
154(c). To avoid confusion as to the term of any patent issuing on a
CPA, other than an application for a reissue or design patent, of an
application filed before June 8, 1995, the Office will include the
following notice on any patent, other than a reissue or design, issuing
on a CPA:
This patent issued on a continued prosecution application filed
under 37 CFR 1.53(d), and is subject to the twenty-year patent term
provisions of 35 U.S.C. 154(a)(2).
The term of a design patent is fourteen years beginning on the date
of grant as provided in 35 U.S.C. 173. The term of a reissue patent is
the unexpired part of the term of the original patent as provided in 35
U.S.C. 251. Since the term of a reissue or design patent is not
affected by the filing of a CPA, the above-mentioned notice will not be
printed on any reissue or design patent.
Other Considerations
This final rule is in conformity with the requirements of the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612 (October 26, 1987), and the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). It has been determined that this rulemaking is
not significant for the purposes of Executive Order 12866 (September
30, 1993).
This final rule involves a collection of information subject to the
Paperwork Reduction Act. This final rule involves the deletion of the
requirement which stated that the prior application of a continued
prosecution application must have been filed on or after June 8, 1995.
This collection of information has been previously approved by the
Office of Management and Budget (OMB) under OMB Control Number 0651-
0032. The public reporting burden for this collection of information is
estimated to average 7.88 hours per response, including the time for
reviewing instructions, searching existing data sources, gathering and
maintaining the information. Send comments regarding this burden
estimate or any other aspect of the data requirement, including
suggestions for reducing the burden to Hiram H. Bernstein or Robert W.
Bahr at the address specified above and to the Office of Information
and Regulatory Affairs, OMB, 725 17th Street, N.W., Washington, D.C.,
20503 (Attn: PTO Desk Officer).
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.
The principal impact of this final rule is to relieve a restriction
in Sec. 1.53(d)(1)(i) to permit applicants to file a CPA in the
situation in which the prior application was filed before June 8, 1995.
The Office has determined that this final rule has no Federalism
implications affecting the relationship between the National Government
and
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the States as outlined in Executive Order 12612 (October 26, 1987).
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, the interim rule
amending 37 CFR Part 1 which was published at 63 FR 5732-5734 on
February 4, 1998, is adopted as a final rule without change.
Dated: June 25, 1998.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 98-17632 Filed 7-1-98; 8:45 am]
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