United States Patent and Trademark Office OG Notices: 24 June 2003
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 2003-P-021]
RIN 0651-AB61
January 2004 Revision of
Patent Cooperation Treaty Application Procedure
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing to amend the rules of practice to conform them to certain
amendments made to the Regulations under the Patent Cooperation Treaty
(PCT) that will take effect on January 1, 2004. These amendments will
result in the addition of a written opinion in PCT chapter I, as well
as a simplification of PCT designations and the PCT fee structure. In
addition, the Office is proposing to adjust the transmittal, search,
and international preliminary examination fees for international
applications filed under the PCT to be more closely aligned with the
actual average costs of processing a PCT application and conducting a
PCT search and international preliminary examination under the new
process.
Comment Deadline Date: To be ensured of consideration, written comments
must be received on or before June 30, 2003. No public hearing will be
held.
ADDRESSES: Comments should be sent by electronic mail message via the
Internet addressed to AB61.Comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments-Patents,
Commissioner for Patents, PO Box 1450, Alexandria, VA, 22313-1450, or
by facsimile to (703) 308-6459, marked to the attention of Mr. Richard
Cole. 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 would appreciate the comments to be
electronically filed on a DOS formatted 3 1/2 inch disk with a paper
copy of the comments.
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: Richard R. Cole, Legal Examiner,
Office of PCT Legal Administration (OPCTLA) directly by telephone at
(703) 305-6639, or by facsimile at (703) 308-6459.
SUPPLEMENTARY INFORMATION: During the September-October 2002 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted various amendments to the Regulations
under the PCT that enter into force on January 1, 2004. The amended PCT
Regulations were published in the PCT Gazette of December 5, 2002 (49/
2002), in section IV, at pages 25004-25061. The purposes of these
amendments are to: (1) Improve coordination of international search
(chapter I of the PCT) and international preliminary examination
(chapter II of the PCT) through the provision of an enhanced
international search and preliminary examination system; (2) simplify
the PCT by changing the concept and operation of the designation system
and the fee system; and (3) simplify signature and other filing
requirements.
Enhanced International Search and Preliminary Examination System:
Under the enhanced international search and preliminary examination
system, the written opinion currently established during the chapter II
procedure by the International Preliminary Examining Authority (IPEA)
has been added to the chapter I procedure. Accordingly, the
International Searching Authority (ISA) will be responsible for
establishing a preliminary and non-binding written opinion on whether
the claimed invention appears to be novel, to involve an inventive step
and to be industrially applicable. In the event that a Demand for
international preliminary examination is timely filed by applicant
without a PCT Article 34 amendment,
the written opinion of the ISA will become the written opinion of the
IPEA. If a Demand is not timely filed, the written opinion of the ISA
will form the basis for the issuance, by the International Bureau (IB)
on behalf of the ISA, of an ``International Preliminary Report on
Patentability (chapter I of the Patent Cooperation Treaty)''
(``IPRP''), which will be communicated to all designated Offices and
made available for public inspection after the expiration of 30 months
from the priority date.
This revised system will result in a slight increase in the
workload on the ISA, but should result in a substantial decrease in the
workload on the IPEA. In addition, smaller Offices will benefit by the
availability of an international preliminary report on patentability
equivalent to the chapter II international preliminary examination
report (i.e., the IPRP) even if no Demand has been filed.
Under the revised system, the time limit for filing a Demand for
international preliminary examination has changed. Specifically, the
Demand must be filed within the later of: (1) Three months from
issuance of the international search report and the written opinion of
the ISA (or, if a search cannot be made, of the declaration under
Article 17.2(a)); or (2) 22 months from the priority date. See PCT rule
54bis.1(a). Any Demand made after the expiration of this time limit
will be considered as if it had not been submitted. See PCT rule
54bis.1(b). Any arguments or amendments in response to the written
opinion of the ISA must be submitted within the time limit for filing
the Demand to ensure consideration by the IPEA. It is noted that
applicants may still desire to file the Demand prior to the expiration
of 19 months of the priority date in order to delay entry into the
national stage for those few remaining Contracting States that have
taken a reservation to the 30-month time limit in Article 22(1).
As in current PCT chapter II procedures, the IPEA will still
establish an international preliminary examination report, though the
report will now bear the title ``International Preliminary Report on
Patentability (Chapter II of the Patent Cooperation Treaty).'' This
report will be established within the applicable time limit under PCT
rule 69 (usually within 28 months from the priority date).
Under the revised system, payment of the international preliminary
examination fee and handling fee is not required until the later of one
month from the filing of the Demand or 22 months from the priority
date. See PCT rules 57.3(a) and 58.1(b). However, where the IPEA and
the ISA are the same and the IPEA wishes to start examination at the
same time as the international search, the IPEA may require that the
examination and handling fees be paid within one month of an invitation
by the IPEA to pay such fees. See PCT rule 57.3(c).
Automatic Indication of All Designations Possible under the PCT;
Relaxed Signature and other Filing Requirements; Simplified Fee System:
Under the amendments to the Regulations of the PCT, upon filing an
international application, applicant will obtain automatic and all-
inclusive coverage of all designations available under the PCT,
including all kinds of protection as well as both national and regional
patent protection. See PCT rule 4.9. Similarly, the mere filing of a
Demand will constitute the election of all designated States. See PCT
rule 53.7. Thus, applicants need not, at the time of filing the
international application, specifically designate individual
Contracting States, or choose certain kinds of protection or indicate
expressly whether national or regional protection is sought. Such
matters will be resolved in the national phase.
This automatic and all-inclusive designation system overcomes a
current pitfall for applicants who have inadvertently omitted specific
designations upon filing the international application and such
designations were not, or could not be, timely confirmed under PCT rule
4.9(c). For example, if the original international application papers
did not contain at least one designation, an international filing date
could not be accorded as of the initial receipt date of the application
papers. See PCT Article 11(1)(iii)(b). Furthermore, even in those
applications containing at least one designation, PCT rule 4.9(b)
required that any additional States and/or additional kinds of
protection be confirmed by the submission of a written notice,
accompanied by payment of the appropriate confirmation fee, within a
relatively short time period (i.e., 15 months from the priority date).
This time period was frequently overlooked by applicants. Under the new
system of automatic designations/elections, the current procedures for
precautionary designations and later elections become unnecessary and
have been eliminated from the PCT Rules. This will reduce the workload
on the PCT Receiving Office (RO) and IPEA by eliminating processing of
precautionary designations and later elections, as well as petitions
relating to omitted designations.
As a further benefit of the automatic designation system is the
simplification of the PCT fee system. Under the current PCT fee
structure, both a ``basic'' fee and a ``designation'' fee are required.
Moreover, these fees are due at different times in different amounts
depending on when they are paid. Under the new system, these fees have
been eliminated in favor of a single international filing fee
(comprised of two fee components, a first fee component for up to 30
sheets of paper and a second fee component for sheets of paper in
excess of 30) due at one time.
As a consequence of the automatic designation system, applicant/
inventors will have to be named in the international application. To
alleviate hardships with regard to obtaining signatures of all the
applicants named on the Request, PCT rule 26 has been amended to
provide that, for purposes of Article 14(a)(i), the international
application will be considered as signed in accordance with the PCT
Regulations if the Request has been signed by at least one applicant.
See PCT rule 26.2bis(a). In addition, if there is more than one
applicant, PCT rule 26.2bis(b) provides that, for purposes of PCT
Article 14(1)(a)(ii), it is sufficient that the identifying information
(i.e., address, residence and nationality) be provided for only one
applicant who is entitled under PCT rule 19.1 to file the international
application with the RO. This means that for purposes of filing an
international application with the United States Receiving Office (RO/
US) as the competent RO, this information must be provided with respect
to at least one applicant who is a citizen or resident of the United
States. Notwithstanding the amendments to PCT rule 26, a designated/
elected Office may still require applicants to furnish, during the
national stage, confirmation of the international application by the
signature of any applicant who has not signed the Request and any
missing identifying information. See PCT rule 51bis.1(a).
PCT rule 90.4 has been revised to permit the RO, ISA, or IPEA to
waive the requirement for a power of attorney, except in instances of
applicant initiated withdrawals under PCT rule 90bis.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 1, is proposed to
be amended as follows:
Section 1.14: Section 1.14(i)(1)(ii) is proposed to be amended to
exclude members of the public from obtaining a copy of the written
opinion of the United States International Searching
Authority (ISA/US) until the expiration of thirty months from the
priority date of the international application. Under PCT rule 44ter.1
(as amended), the ISA is not permitted to allow access to the written
opinion of the ISA before the expiration of 30 months from the priority
date unless authorized by the applicant.
Section 1.413: Section 1.413(c) is proposed to be amended to
reflect the additional major function of the ISA/US of preparing and
transmitting written opinions.
Section 1.421: Section 1.421(b) is proposed to be amended to remove
reference to Sec. 1.425, which will be removed. Under PCT rule
26.2bis(a) (as amended), the international application will be
considered to satisfy the signature requirement for purposes of PCT
Article 14(1)(a)(i) if the request is signed by at least one applicant
(except that all of the applicants' signatures will still be required
for withdrawals, see discussion of Sec. 1.421(g)). Accordingly, the
current requirement in Sec. 1.425 that the failure of an inventor to
sign the request in an international application designating the United
States will only be excused where the inventor could not be found or
reached after diligent effort or refused to sign the request will no
longer be applicable. Section 1.421(b) is also proposed to be amended
to include the requirement of Sec. 1.424 that joint inventors must
jointly apply for an international application. Section 1.424 is
proposed to be removed (see discussion of Sec. 1.424).
Section 1.421(c) is proposed to be amended as a consequence of the
change to PCT rule 4.9, as the United States will always be designated
upon filing of an international application.
Section 1.421(d) is proposed to be amended to reflect the change to
PCT rule 90.4(d) permitting the RO to waive the requirement for a
separate power of attorney.
Section 1.421(f) is proposed to be amended to clarify that for
purposes of requests under PCT rule 92bis to effect a change in an
indication concerning the applicant, agent or common representative,
such requests may be required to be signed by all applicants.
Section 1.421(g) is proposed to be amended to remove the text of
PCT rule 92bis as unnecessary and to clarify that for purposes of
withdrawals under PCT rule 90bis of the international application,
designations, priority claim, Demand or elections, the request for
withdrawal must be signed by all applicants. Furthermore, where the
request for withdrawal is signed by an attorney, agent, or common
representative, a power of attorney from the applicants appointing that
attorney, agent or common representative will be required. This
proposed clarification is consistent with PCT rule 90.4(e) (as
amended), which prohibits the RO, ISA, IPEA, and IB from waiving the
separate power of attorney requirement in cases of withdrawals under
rule 90bis. An exception to this signature requirement is made in cases
where an inventor cannot be found or reached after diligent effort. See
PCT rule 90bis.5(b).
Section 1.424: This section is proposed to be removed. The
requirement in 1.424 regarding the naming of joint inventors in
international applications will be moved to Sec. 1.421(b). The further
requirement relating to signature requirements of joint inventors,
including reference to Sec. 1.425, will no longer be applicable (see
discussion of Sec. 1.421(b)).
Section 1.425: This section is proposed to be removed (see
discussion of Sec. 1.421(b)).
Section 1.431: Section 1.431(b)(3) is proposed to be amended to
remove reference to 1.424, which is proposed to be removed. Sections
1.431(c) and (d) are proposed to be amended to reflect the new fee
structure applicable to international applications under revised PCT
rule 15. Specifically, the international ``basic fee'' and
``designation fee'' have been combined into a single ``international
filing fee.'' In addition, the late payment fee provision of Sec.
1.431(c)(1) is proposed to be amended as a consequence of this new fee
structure, consistent with amended PCT rule 16bis.2.
Section 1.432: Section 1.432 is amended to reflect the change to
PCT rule 4.9, which provides that the filing of the request shall
constitute: (1) The designation of all Contracting States that are
bound by the PCT on the international filing date; (2) an indication
that for those States for which PCT Articles 43 or 44 apply, the filing
of the request constitutes an indication for the grant of every kind of
protection which is available by way of the designation of that State;
and (3) an indication that the international application is, for those
States to which PCT Article 45(1) applies, for the grant of a regional
patent and also, unless PCT Article 45(2) applies, a national patent.
As a consequence of the ``automatic'' designation system provided under
revised PCT rule 4.9, the procedure under former PCT rule 4.9(b) and
(c) regarding confirmation of precautionary designations has been
eliminated from that rule, and therefore, is proposed to be removed
from Sec. 1.432.
Section 1.434: Section 1.434(d) is proposed to be amended to remove
the requirement that international applications designating the United
States must include the address and the signature of the inventor
except as provided by Sec. 1.421(d), 1.422, 1.423 and 1.425.
Under PCT rule 26.2bis (as amended), if there is more than one
applicant, it is sufficient that the request is signed by only one of
them, and that the address is provided with respect to one of the
applicants who is entitled, in accordance with rule 19.1, to file the
international application with the RO. Section 1.434(d)(3) is also
proposed to be redesignated as new Sec. 1.434(e) for clarity.
Section 1.445: Section 1.445(a)(1) is proposed to be amended to
increase the transmittal fee from $240.00 to $300.00. 35 U.S.C. 376(b)
authorizes the Office to (inter alia) prescribe the transmittal fee,
search fee, supplemental search fee, and preliminary examination fee
for PCT international applications. This transmittal fee amount more
accurately reflects the Office's actual average costs of processing
international applications, and is also consistent with the filing fee
for applications under 35 U.S.C. 111(a) proposed by the Office in the
21st Century Strategic Plan (information concerning the Office's 21st
Century Strategic Plan is available on the Office's Internet Web site
www.uspto.gov).
Section 1.445(a)(2)(i) is proposed to be amended to reduce the
search fee charged by the ISA/US where there is a corresponding prior
U.S. application filed under 35 U.S.C. 111(a) from $450 to $300.
Section 1.445(a)(2)(i) is also proposed to be amended to clarify the
conditions for obtaining benefit of the reduced search fee where there
is such a prior corresponding application. Pursuant to PCT rule 42.1,
the ISA/US has, in most cases, only three months to establish the
International Search Report. In order for the ISA/US to be able to
utilize the benefits of a search conducted in a prior corresponding
application filed under 35 U.S.C. 111(a), the Office must be informed
of the prior corresponding application in sufficient time and in such
manner so as to permit the Office to utilize the search and examination
conducted in the prior application. Accordingly, Sec. 1.445(a)(2)(i)
is proposed to be amended to require applicants to timely furnish
adequate identifying information of the prior U.S. application in order
to qualify for the lower search fee. Specifically, applicant must
identify the prior nonprovisional application by U.S. application
number upon filing the international application, if such number is
known. If such number is not known, then applicant must identify the
prior application by filing date, title, and name of applicant (and
preferably the application docket number) so that the Office will be
able to identify the prior application.
Section 1.445(a)(2)(ii) is proposed to be amended to increase the
search fee charged by the ISA/US in situations not covered by Sec.
1.445(a)(2)(i) from $700 to $1,000. This search fee amount more
accurately reflects the Office's actual average costs of searching
international applications in situations not covered by Sec.
1.445(a)(2)(i). This search fee amount is higher than the search fee
amount for applications under 35 U.S.C. 111(a) as proposed by the
Administration because of additional costs associated with both
searching international applications and the preparation and
transmittal of a written opinion of the ISA. Additionally,
international applications must be searched (and examined) under the
PCT unity of invention standard, where applications under 35 U.S.C.
111(a) are searched (and examined) under the restriction standard set
forth in 35 U.S.C. 121. Moreover, the search fee set forth in Sec.
1.445(a)(2)(i) must also cover preparation of a written opinion (the
``International Preliminary Report on Patentability (Chapter I of the
Patent Cooperation Treaty)'' (``IPRP'')) under the revised system.
In addition, the fee charged by the ISA/US for searching an
additional invention is proposed to be increased from $210 to $1,000.
This amount more accurately reflects the Office's actual average costs
of searching and examining additional inventions. In this regard, it is
noted that the search fee and the supplemental search fee charged by
every other international searching authority are the same (except for
the ISA/JP, which charges a supplemental search fee that is only
slightly lower than the search fee).
Section 1.445(a)(4) is proposed to be deleted, as confirmation fees
will no longer be applicable.
Section 1.445(b) is amended to reflect the combining of the basic
and designation fees into a single ``international filing fee''.
Section 1.455: Section 1.455(b) is proposed to be amended to be
consistent with PCT rule 90.4 as it relates to the manner of
appointment of agent, attorney or common representative.
Section 1.480: Section 1.480(a) is proposed to be amended to
reflect the new time limits in PCT rule 57.3 and 58.2 for submitting
the handling and preliminary examination fees.
Section 1.480(d) is proposed to be added, consistent with PCT rule
53.7 (as amended), to provide that the filing of a Demand shall
constitute the election of all Contracting States that are designated
and bound by chapter II of the Treaty on the international filing date.
Accordingly, it will no longer be necessary to specify in the Demand
those States that are elected.
Section 1.480(e) is proposed to be added to provide that any Demand
filed after the expiration of the applicable time limit in PCT rule
54bis.1(a) shall be considered as if it had not been submitted. See PCT
rule 54bis.1(b) (as amended).
Section 1.481: Section 1.481(a) is proposed to be amended to
provide that the handling fee and preliminary examination fee that are
due are those fees in effect on the date of payment of the handling and
preliminary examination fees. See PCT rules 57.3(d) and 58.1(b).
Section 1.482: Section 1.482(a)(1) is proposed to be amended to
increase the preliminary examination fee charged by the IPEA/US from
$490 to $600 if the international search fee was paid to the United
States Patent and Trademark Office as an ISA (the preliminary
examination fee charged by the IPEA/US if the international search fee
was not paid to the United States Patent and Trademark Office as an ISA
will remain at $750). This proposed increase is necessary to cover the
additional cost associated with conducting the preliminary examination
by the IPEA/US. Under the enhanced international search and preliminary
examination system, a written opinion will be established by the ISA
and sent to applicant. As a result of the change to the time limit in
PCT Article 22(1), it is no longer necessary, in most cases, to file a
Demand in order to delay entry into the national stage to thirty months
from the priority date. In view of these changes, it is anticipated the
majority of applicants filing a Demand under the revised system will no
longer be doing so to simply further delay entry into the national
stage, but rather will be doing so to obtain a positive ``International
Preliminary Report on Patentability (Chapter II of the Patent
Cooperation Treaty)'' by the IPEA. As such applicant will need to file
one or more amendments under PCT Article 34 in the international
application to overcome any negative determinations set forth in the
written opinion by the ISA, the Office's costs of examining each
international application as the US/IPEA for applicants who file a
Demand under the revised system will increase.
For the same reason, as well as reasons set forth with regard to
the increase in the supplemental search fee under Sec. 1.445(a)(3),
Sec. 1.482(a)(2) is proposed to be amended to increase the additional
preliminary examination fee for examining additional inventions to $600
(regardless of whether the international search fee was paid to the
United States Patent and Trademark Office as an ISA).
Section 1.482(b) is proposed to be amended to refer to revised PCT
rule 57 as it relates to handling fee requirements.
Section 1.484: Section 1.484(b) is proposed to be amended to refer
to revised PCT rule 69.1 as to when the IPEA/US may start international
preliminary examination. PCT rule 69.1 was revised to prohibit the IPEA
from starting preliminary examination until it is in possession of,
inter alia, the written opinion of the ISA. PCT rule 69.1 provides for
two exceptions to this requirement. Both exceptions apply when the IPEA
and the ISA for the international application are the same authority.
The first exception permits the IPEA to start examination at the same
time as the international search, subject to certain limitations. See
PCT rule 69.1(b). The second exception occurs when the ISA considers
the conditions under PCT Article 34(2)(c)(i) to (iii) to be fulfilled.
In such cases, a written opinion by the ISA need not be established.
See PCT rule 69.1(b)bis.
Sections 1.484(e) through (g) are proposed to be redesignated as
Sec. Sec. 1.484(g) through (i), respectively. Proposed Sec. 1.484(e)
now provides, consistent with PCT rule 66.1bis, that the written
opinion of the ISA shall be considered to be the written opinion of the
IPEA/US.
Proposed Sec. 1.484(f) now provides that the IPEA may establish
further written opinions, subject to the conditions specified in Sec.
1.484(d). Establishment of additional written opinions by the IPEA is
provided for in PCT rule 66.4(a).
Section 1.484(g) is proposed to be amended as a consequence of the
amendment to Sec. 1.484(f).
Section 1.484(h) is proposed to be amended to provide clarification
regarding conducting personal and telephonic interviews with the
examiner under the revised system.
Rulemaking Considerations
Regulatory Flexibility Act: The Deputy General Counsel for General
Law of the United States Patent and Trademark Office has certified to
the Chief Counsel for Advocacy of the Small Business Administration
that changes proposed in this notice will 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
primarily implement corresponding changes required to conform United
States rules for international applications to the amendments to the
PCT Regulations which become effective on January 1, 2004. The
amendments to the PCT Regulations will simplify the PCT application
process and fee structure, and as such, will benefit all patent
applicants (including small entities) using the PCT system.
The proposed changes to the PCT international stage fees are to
adjust these fees to be in alignment with the actual average costs of
conducting a PCT search and international preliminary examination under
the new process. This realignment does result in a proposed increase in
the search fee for applicants who do not have a corresponding U.S.
application under 35 U.S.C. 111(a) in which the filing fee was paid, a
proposed increase in the supplemental search fee, and a proposed
increase in the preliminary examination fee. However, as PCT Article 22
was amended (effective April 1, 2002) to extend its time limit for
entering the national stage to 30 months from the priority date of the
PCT application, PCT applicants are no longer required to file a Demand
for preliminary examination under PCT Article 31 (and pay the
preliminary examination fee) in order to delay commencement of the
national stage until 30 months from the priority date. See Revision of
the Time Limit for National Stage Commencement in the United States for
Patent Cooperation Treaty Applications, 67 FR 520 (Jan. 4, 2002), 1254
Off. Gaz. Pat. Office 204 (Jan. 29, 2002). In addition, the
International Searching Authority will now be providing a written
opinion as part of the PCT Chapter I processing. Thus, any PCT
applicant (including a small entity) with a corresponding U.S.
application under 35 U.S.C. 111(a) in which the filing fee was paid
will pay as little as $600 (a transmittal fee of $300 and a search fee
of $300) to obtain the benefits for which it was previously necessary
to pay $1,180 (a transmittal fee of $240 and a search fee of $450, and
a preliminary examination fee of $490), and any PCT applicant
(including a small entity) without a corresponding U.S. application
under 35 U.S.C. 111(a) (e.g., an applicant with no corresponding U.S.
application, or only a corresponding U.S. provisional application under
35 U.S.C. 111(b)) will still pay only $1,300 (a transmittal fee of $300
and a search fee of $1,000) to obtain the benefits for which it was
previously necessary to pay $1,430 (a transmittal fee of $240 and a
search fee of $700, and a preliminary examination fee of $490).
Some PCT applicants will still file a Demand for preliminary
examination under the revised PCT system to obtain a positive
``International Preliminary Report on Patentability (Chapter II of the
Patent Cooperation Treaty)'' by the IPEA and thus expedite the national
examination process. A PCT applicant (including a small entity) without
a corresponding U.S. application under 35 U.S.C. 111(a) who still
wishes to file a Demand for preliminary examination under the revised
PCT system will pay $1,900 (a transmittal fee of $300, a search fee of
$1,000, and a preliminary examination fee of $600), where it was
previously necessary to pay only $1,430 (a transmittal fee of $240 and
a search fee of $700, and a preliminary examination fee of $490), for
an increase of $470 in fees. This increase is insignificant in
comparison to the cost (for any business entity) of obtaining foreign
patent protection. See International Trade: Federal Action Needed to
help Small Businesses Address Foreign Patent Challenges, GAO-02-789 at
2 (July 2002) (noting that extending patent protection to nine other
countries could cost between $160,000 and $330,000).
Executive Order 13132: This rule making 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 rule making has been determined to be
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This proposed rule involves information
collection requirements that 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.). The collections of information involved in
this proposed rule have been reviewed and previously approved by OMB
under the following control numbers: 0651-0021 and 0651-0031. The
United States Patent and Trademark Office is not resubmitting any
information collection package to OMB for its review and approval
because the changes in this notice do not affect the information
collection requirements associated with the information collection
under these OMB control numbers.
The title, description and respondent description of the
information collection is shown below with an estimate of the annual
reporting burden. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.
Type of Review: Approved through December of 2003.
Affected Public: Individuals or households, business or other for-
profit institutions, Federal agencies or employees, not-for-profit
institutions, small businesses or organizations.
Estimated Number of Respondents: 331,288.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,083.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A/08B/21/22/23/24/25/26/27/30/31/32/35/37/
36/42/43/61 61/PCT/62/63/64 64/PCT/67/68/91/92/96/97, PTO-2053-A/B,
PTO-2054-A/B, PTO-2055-A/B.
Type of Review: Currently under review.
Affected Public: Individuals or households, State or local
governments, farms, business or other for-profit institutions, not-for-
profit institutions, small businesses or organizations, and Federal
government.
Estimated Number of Respondents: 2,208,339.
Estimated Time Per Response: 1 minute 48 seconds to 8 hours.
Estimated Total Annual Burden Hours: 830,629 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 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.
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, 725 17th Street, NW., Room 10235,
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 1.14 is amended by revising paragraph (i)(1)(ii) to read
as follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(i) * * *
(1) * * *
(ii) With respect to the Search Copy, the U.S. acted as the
International Searching Authority, except for the written opinion of
the International Search Authority which shall not be available until
the expiration of thirty months from the priority date; or
* * * * *
3. Section 1.413 is amended by revising paragraphs (a) and (c) to
read as follows:
Sec. 1.413 The United States International Searching Authority.
(a) Pursuant to appointment by the Assembly, the United States
Patent and Trademark Office will act as an International Searching
Authority for international applications filed in the United States
Receiving Office and in other Receiving Offices as may be agreed upon
by the Director, in accordance with agreement between the Patent and
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
* * * * *
(c) The major functions of the International Searching Authority
include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type searches and
preparing international and international-type search reports (PCT Art.
15, 17 and 18, and PCT rules 25, 33 to 45 and 47), and issuing
declarations that no international search report will be established
(PCT Article 17(2)(a));
(4) Preparing written opinions of the International Searching
Authority in accordance with PCT Rule 43bis (when necessary); and
(5) Transmitting the international search report and the written
opinion of the International Searching Authority to the applicant and
the International Bureau.
4. Section 1.421 is amended by revising paragraphs (b) through (g)
as follows:
Sec. 1.421 Applicant for international application.
* * * * *
(b) Although the United States Receiving Office will accept
international applications filed by any resident or national of the
United States of America for international processing, for the purposes
of the designation of the United States an international application
must be filed, and will be accepted by the Patent and Trademark Office
for the national stage only if filed, by the inventor or as provided in
Sec. 1.422 or 1.423. Joint inventors must jointly apply for an
international application.
(c) For the purposes of designations other than the United States,
international applications may be filed by the assignee or owner.
(d) A registered attorney or agent of the applicant may sign the
international application Request and file the international
application for the applicant. A separate power of attorney from each
applicant may be required.
(e) Any indication of different applicants for the purpose of
different Designated Offices must be shown on the Request portion of
the international application.
(f) Requests for changes in the indications concerning the
applicant, agent, or common representative of an international
application shall be made in accordance with PCT Rule 92bis and may be
required to be signed by all applicants.
(g) Requests for withdrawals of the international application,
designations, priority claims, the Demand, or elections shall be made
in accordance with PCT Rule 90bis and must be signed by all applicants.
A separate power of attorney from the applicants will be required for
the purposes of any request for a withdrawal in accordance with PCT
Rule 90bis which is not signed by all applicants. The submission of a
separate power of attorney may be excused upon the request of another
applicant where one or more inventors cannot be found or reached after
diligent effort. Such a request must be accompanied by a statement
explaining to the satisfaction of the Director the lack of the
signature concerned.
Sec. 1.424 [Removed]
5. Section 1.424 is removed.
Sec. 1.425 [Removed]
6. Section 1.425 is removed.
7. Section 1.431 is amended by revising paragraphs (b)(3), (c) and
(d) to read as follows:
Sec. 1.431 International application requirements.
* * * * *
(b) * * *
(3) The international application contains at least the following
elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international
application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the
International Patent Cooperation Union (Sec. 1.432);
(iii) The name of the applicant, as prescribed (note Sec. Sec.
1.421-1.423);
(iv) A part which on the face of it appears to be a description;
and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the
transmittal and search fees (Sec. 1.445) may be made in full at the
time the international application papers required by
paragraph (b) of this section are deposited or within one month
thereafter. The international filing, transmittal, and search fee
payable is the international filing, transmittal, and search fee in
effect on the receipt date of the international application.
(1) If the international filing, transmittal and search fees are
not paid within one month from the date of receipt of the international
application and prior to the sending of a notice of deficiency which
imposes a late payment fee, applicant will be notified and given one
month within which to pay the deficient fees plus the late payment fee.
Subject to paragraph (c)(2) of this section, the late payment fee will
be equal to the greater of:
(i) Fifty percent of the amount of the deficient fees; or
(ii) An amount equal to the transmittal fee;
(2) The late payment fee shall not exceed an amount equal to the
25% of the international filing fee not taking into account any fee for
each sheet of the international application in excess of thirty sheets
(PCT Rule 16bis).
(3) The one-month time limit set pursuant to paragraph (c) of this
section to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the
international filing fee, the search fee, and the late payment fee
pursuant to paragraph (c) of this section is not timely made in
accordance with PCT Rule 16bis.1(e), the Receiving Office will declare
the international application withdrawn under PCT Article 14(3)(a).
8. Section 1.432 is revised to read as follows:
Sec. 1.432 Designation of States by filing an international application.
The filing of an international application request shall
constitute:
(a) The designation of all Contracting States that are bound by the
Treaty on the international filing date;
(b) An indication that the international application is, in respect
of each designated State to which PCT Article 43 or 44 applies, for the
grant of every kind of protection which is available by way of the
designation of that State; and
(c) An indication that the international application is, in respect
of each designated State to which PCT Article 45(1) applies, for the
grant of a regional patent and also, unless PCT Article 45(2) applies,
a national patent.
9. Section 1.434 is amended by revising paragraph (d) and adding
paragraph (e) to read as follows:
Sec. 1.434 The request.
* * * * *
(d) For the purposes of the designation of the United States of
America, an international application shall include:
(1) The name of the inventor; and
(2) A reference to any prior-filed national application or
international application designating the United States of America, if
the benefit of the filing date for the prior-filed application is to be
claimed.
(e) An international application may also include in the Request a
declaration of the inventors as provided for in PCT Rule 4.17(iv).
10. Section 1.445 is revised to read follows:
Sec. 1.445 International application filing, processing and search fees.
(a) The following fees and charges for international applications
are established by the Director under the authority of 35 U.S.C. 376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14) -
$300.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) If a corresponding prior United States National application
filed under 35 U.S.C. 111(a) with the filing fee under Sec. 1.16(a)
has been filed and the corresponding prior United States National
application is identified by application number, if known, or if the
application number is not known by the filing date, title, and name of
applicant (and preferably the application docket number), in the
international application or accompanying papers at the time of filing
the international application - $300.00
(ii) For all situations not provided for in paragraph (a)(2)(i) of
this section - $1000.00
(3) A supplemental search fee when required, per additional
invention - $1000.00
(4) A fee equivalent to the transmittal fee in paragraph (a)(1) of
this section for transmittal of an international application to the
International Bureau for processing in its capacity as a Receiving
Office (PCT Rule 19.4).
(b) The international filing fee shall be as prescribed in PCT Rule
15.
11. Section 1.455 is amended by revising paragraph (b) to read as
follows:
Sec. 1.455 Representation in international applications.
* * * * *
(b) Appointment of an agent, attorney or common representative (PCT
Rule 4.8) must be effected either in the Request form, signed by
applicant, in the Demand form, signed by applicant, or in a separate
power of attorney submitted either to the United States Receiving
Office or to the International Bureau.
* * * * *
12. Section 1.480 is amended by revising paragraph (a) and adding
paragraphs (d) and (e) to read as follows:
Sec. 1.480 Demand for international preliminary examination.
(a) On the filing of a proper Demand in an application for which
the United States International Preliminary Examining Authority is
competent and for which the fees have been paid, the international
application shall be the subject of an international preliminary
examination. The preliminary examination fee (Sec. 1.482(a)(1)) and
the handling fee (Sec. 1.482(b)) shall be due within the applicable
time limit set forth in PCT Rule 57.3.
* * * * *
(d) The filing of a Demand shall constitute the election of all
Contracting States which are designated and are bound by Chapter II of
the Treaty on the international filing date (PCT Rule 53.7).
(e) Any Demand filed after the expiration of the applicable time
limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had
not been submitted (PCT Rule 54bis.1(b)).
13. Section 1.481 is amended by revising paragraph (a) to read as
follows:
Sec. 1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid
within the time period set in PCT Rule 57.3. The handling fee or
preliminary examination fee payable is the handling fee or preliminary
examination fee in effect on the date of payment.
(1) If the handling and preliminary examination fees are not paid
within the time period set in PCT Rule 57.3, applicant will be notified
and given one month within which to pay the deficient fees plus a late
payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees, but not
exceeding an amount equal to double the handling fee; or
(ii) An amount equal to the handling fee (PCT Rule 58bis.2).
(2) The one-month time limit set in this paragraph to pay deficient
fees may not be extended.
* * * * *
14. Section 1.482 is revised to read as follows:
Sec. 1.482 International preliminary examination fees.
(a) The following fees and charges for international preliminary
examination
are established by the Director under the authority of 35 U.S.C. 376:
(1) The following preliminary examination fee is due on filing the
Demand:
(i) If an international search fee as set forth in Sec.
1.445(a)(2) has been paid on the international application to the
United States Patent and Trademark Office as an International Searching
Authority - $600.00
(ii) If the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office - $750.00
(2) An additional preliminary examination fee when required, per
additional invention - $600.00
(b) The handling fee is due on filing the Demand and shall be as
prescribed in PCT Rule 57.
15. Section 1.484 is amended by revising paragraphs (b), (e)
through (g) and adding paragraphs (h) and (i) to read as follows:
Sec. 1.484 Conduct of international preliminary examination.
* * * * *
(b) International preliminary examination will begin in accordance
with PCT Rule 69.1.
* * * * *
(e) The written opinion established by the International Searching
Authority under PCT Rule 43bis.1 shall be considered to be a written
opinion of the United States International Preliminary Examining
Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority may establish
further written opinions under paragraph (d) of this section.
(g) If no written opinion under paragraph (d) of this section is
necessary, or if no further written opinion under paragraph (f) of this
section is to be established, or after any written opinion and the
reply thereto or the expiration of the time limit for reply to such
written opinion, an international preliminary examination report will
be established by the International Preliminary Examining Authority.
One copy will be submitted to the International Bureau and one copy
will be submitted to the applicant.
(h) An applicant will be permitted a personal or telephone
interview with the examiner, which may be requested after the filing of
a Demand, and must be conducted during the period between the
establishment of the written opinion and the establishment of the
international preliminary examination report. Additional interviews may
be conducted where the examiner determines that such additional
interviews may be helpful to advancing the international preliminary
examination procedure. A summary of any such personal or telephone
interview must be filed by the applicant or, if not filed by applicant
be made of record in the file by the examiner.
(i) If the application whose priority is claimed in the
international application is in a language other than English, the
United States International Preliminary Examining Authority may, where
the validity of the priority claim is relevant for the formulation of
the opinion referred to in Article 33(1), invite the applicant to
furnish an English translation of the priority document within two
months from the date of the invitation. If the translation is not
furnished within that time limit, the international preliminary report
may be established as if the priority had not been claimed.
May 23, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office