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.
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 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 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
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
RCE under 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 1.114 to be a proper
RCE (e.g., the request may lack a submission under
1.114(b), or may not be accompanied by the fee set forth in
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 1.136(a)) has expired, the applicant must file a
petition under 1.137 (with the lacking submission under 1.114(b)
and/or fee set forth in 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
1.53(e).
Section 1.53(d)(3) is proposed to be amended to provide that the filing
fee for a CPA filed under 1.53(d) is the basic filing fee as set
forth in 1.16(f) if the application is for an original design patent
or 1.16(h) if the application is for a reissue design patent. Since
1.53(d) as proposed would no longer apply to utility or plant
applications and a design application may contain only a single claim
( 1.154(b)(6)), there is no need for 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 1.53(b) or a submission under 1.129(a) (if the
application is eligible for 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 1.114
or a continuing application under 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 1.53(d) or a continuing application under 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
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
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 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 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 1.16(f) or
1.16(h).
* * * * *
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