United States Patent and Trademark Office OG Notices: 11 November 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: Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
(Office) is amending 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 adjusting 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.
EFFECTIVE DATE: January 1, 2004.
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
25004-61. 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, the written opinion of the ISA will be considered
to be 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 thirty months from the priority date.
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) twenty-two 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
nineteen months from 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 thirty-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 twenty-eight 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 twenty-two 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., fifteen 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
thirty sheets of paper and a second fee component for sheets of paper
in excess of thirty) 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 amended
as follows:
Section 1.14: Sections 1.14(g)(l)(ii) and 1.14(g)(3) are
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 thirty months from the
priority date unless authorized by the applicant.
Section 1.413: Section 1.413(c) is 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 amended to remove
reference to 1.425 (1.425 is 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 1.421(g)). Accordingly, the
current requirement in 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 amended to include the
requirement of 1.424 that joint inventors must jointly apply for an
international application. Section 1.424 is removed (see discussion of
1.424).
Section 1.421(c) is 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 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 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 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 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 removed. The requirement in
1.424 regarding the naming of joint inventors in international
applications will be moved to 1.421(b). The further requirement
relating to signature requirements of joint inventors, including
reference to 1.425, will no longer be applicable (see discussion of
1.421(b)).
Section 1.425: This section is removed (see discussion of 1.421(b)).
Section 1.431: Section 1.431(b)(3) is amended to remove
reference to 1.424 (1.424 is removed). Sections 1.431(c) and (d)
are 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 1.431(c)(1) is 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
removed from 1.432.
Section 1.434: Section 1.434(d) is 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 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
redesignated as new 1.434(e) for clarity.
Section 1.445: Section 1.445(a)(1) is 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
http://frwebgate.access.gpo.gov/cgi-bin/leaving.cgi?from=leavingFR.
html&log=linklog&to=http://www.uspto.gov).
Section 1.445(a)(2)(i) is 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 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, 1.445(a)(2)(i) is 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 amended to increase the search fee charged
by the ISA/US in situations not covered by 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 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 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 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 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 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 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 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 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 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 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 increase is necessary to cover the additional cost
associated with conducting the preliminary examination by the IPEA/US.
For the same reason, as well as reasons set forth with regard to the
increase in the supplemental search fee under 1.445(a)(3), 1.482(a)(2)
is 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 amended to refer to revised PCT Rule 57 as it
relates to handling fee requirements.
Section 1.484: Section 1.484(b) is 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 redesignated as 1.484(g) through
(i), respectively. Section 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.
Section 1.484(f) now provides that the IPEA may establish further
written opinions, subject to the conditions specified in 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 amended as a consequence of the amendment to
1.484(f).
Section 1.484(h) is amended to provide clarification regarding
conducting personal and telephonic interviews with the examiner under
the revised system.
Response to comments: The Office published a notice
proposing changes to 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. See January 2004
Revision of Patent Cooperation Treaty Application Procedure, 68 FR
32441 (May 30, 2003), 1271 Off. Gaz. Pat. Office 147 (June
24, 2003) (proposed rule). The Office received two written comments
(one from an intellectual property organization and another by a patent
practitioner) in response to this notice. The comments and the Office's
responses to the comments follow:
Comment 1: One comment suggested that 1.14 should
provide that the written opinion of the International Searching
Authority is available to third parties upon publication of the
international application instead of at thirty months as provided in
1.14.
Response: The suggestion has not been adopted. PCT Rule
44ter.1, which is set to enter into force on January 1,
2004, provides that the International Searching Authority, unless
requested or authorized by the applicant, shall not allow access to the
written opinion of the International Searching Authority by any person
before the expiration of thirty months from the priority date.
Therefore, the suggested change to 1.14 would be inconsistent with
the requirements of the PCT.
Comment 2: One comment suggested that the rules be
amended to provide that if applicant timely files a Demand with Article
34 amendments to the claims, the examiner be required to render a new
written opinion. The comment indicates that without such a provision,
the IPEA/US, in adopting the written opinion as established by the ISA,
will be delivering to applicants written opinions which are totally
inconsistent with the claims as amended.
Response: The suggestion has been adopted in part. Under the
enhanced search and examination system, the IPEA/US will not deliver to
applicants a written opinion which does not take into account the
claims as amended. In general, under the procedures established under
the enhanced search and examination system, a written opinion will be
established by the ISA, and upon filing of a Demand by applicant, that
written opinion will be considered to be the first written opinion of
the IPEA. In turn, any amendments under PCT Article 34 which are timely
filed, either with or subsequent to the Demand, will be considered to
be a response to that written opinion. In response to the Demand and
any amendments, the IPEA/US will then issue one of the following:
(1) A further written opinion under 1.484(f) if such is
warranted; or (2) an international preliminary examination report under
1.484(g). In both instances, the response by the IPEA will fully
take into consideration any amendments which have been timely filed by
the applicant.
Comment 3: One comment also opposed the proposed
changes in the PCT fees set forth in 1.445 and 1.482. First, the
comment indicated that the transmittal, search, and preliminary
examination fees proposed in 1.445 and 1.482 would be sixty
percent higher than the filing fee, search fee, and examination fee
proposed in the 21st Century Strategic Plan. Second, the comment
indicated that an applicant must also pay the preliminary examination
fee to obtain the "same benefits" under PCT Chapters I and II. The
comment further indicated that a truer picture of the proposed fee
change is revealed by comparing the existing and revised transmittal,
search, and international preliminary examination fees on an
item-by-item basis.
Response: The Office indicated that the $300 transmittal fee
amount in proposed 1.445(a)(1) would be consistent with the filing
fee for applications under 35 U.S.C. 111(a) proposed by the Office in
the 21st Century Strategic Plan ($300). The Office did not state that
the sum of the transmittal, search, and international preliminary
examination fees would be consistent with the sum of the filing fee,
search fee, and examination fees for applications under 35 U.S.C.
111(a) proposed by the Office in the 21st Century Strategic Plan. The
Office proposed search and examination fee amounts for international
applications that are in certain situations higher than the
corresponding fees for applications under 35 U.S.C. 111(a) because:
(1) There are additional costs associated with searching
international applications and international preliminary examination
under the enhanced international search and preliminary examination
system (see January 2004 Revision of Patent Cooperation Treaty
Application Procedure, 68 FR 32441, 32444 (May 30, 2003), 1271
Off. Gaz. Pat. Office 147, 149 (June 24, 2003) (proposed
rule)); and (2) the examination fee for applications under 35 U.S.C.
111(a) proposed by the Office in the 21st Century Strategic Plan does
not recover the Office's cost of examining applications and is
subsidized by fees that are not applicable during the PCT international
stage (see H.R. Rep. 108-241, at 15 (2003)).
The comment correctly notes that a PCT applicant must also pay
the preliminary examination fee to amend the claims in an international
application and obtain a written opinion reflecting the amended claims.
Nevertheless, it is the Office's experience that PCT applicants who
file a Demand for international preliminary examination rarely include
an amendment under PCT Article 34 with the Demand. Therefore, the
enhanced international search and preliminary examination system will
reduce costs for most PCT applicants by providing them with the
benefits they seek from PCT Chapter II, namely, an extension (from
twenty to thirty months) of the time limit for entering the national
stage and a written opinion indicating whether the claims are in
compliance with PCT Article 33(2)-(4), without requiring them to file a
timely Demand for international preliminary examination and pay the
international preliminary examination fee.
When making an item-by-item comparison of the existing transmittal,
search, and international preliminary examination fees with the revised
transmittal, search, and international preliminary examination fees,
one would readily appreciate the following: The enhanced
international search and preliminary examination system reduces costs
for most PCT applicants by providing them with the benefits they seek
from PCT Chapter II without requiring them to pay the international
preliminary examination fee. The Office's costs for searching
international applications are higher under the enhanced international
search and preliminary examination system because international
applications must be searched (and examined) under the PCT unity of
invention standard and the search fee must also cover the preparation
of a written opinion. The Office's costs for international preliminary
examination will be higher in certain situations under the enhanced
international search and preliminary examination system because the
Office will be required to provide an international preliminary
examination on the basis of one or more amendments under PCT Article 34
since applicants filing a Demand under the revised system will likely
be doing so to obtain a positive "International Preliminary Report on
Patentability (Chapter II of the Patent Cooperation Treaty)" and thus
will file one or more amendments under PCT Article 34 in the
international application (under the former system, the majority of
Demands were filed for the sole purpose of extending the national stage
entry period and thus were filed without any substantial amendments to
the claims). Finally, the fees set forth in former 1.445 and 1.482
for search and examination of additional inventions were far too low to
recover the Office's actual average cost for search and examination of
additional inventions.
Rule Making Considerations:
Regulatory Flexibility Act: The USPTO published a
proposed rule and certified that an initial Regulatory Act Analysis was
not required. Only one comment was received which objected, in general,
to the fee increases and made no reference to any impact of the fee
increases on small entities. 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 in this final rule will not have a significant economic impact
on a substantial number of small entities (Regulatory Flexibility Act,
5 U.S.C. 605(b)).
The changes in this final rule 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. The
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.
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 final 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 final 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, PCT/RO/134, PCT/RO/144, PTO-1382,
PCT/IPEA/401, PCT/IB/328, PCT/SB/61/PCT, PCT/SB/64/PCT.
Type of Review: Approved through December of 2003.
Affected Public: Individuals or households, business or
other for-profit institutions, not-for-profit institutions, farms,
Federal Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 331,407.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,202.
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, PTO/SB/08B, PTO/SB/21-27,
PTO/SB/30-32, PTO/SB/35-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/67-68,
PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B,
PTOL-413A, eIDS, EFS form.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or households, business or
other for-profit institutions, not-for-profit institutions, farms,
Federal Government and State, Local and Tribal Governments.
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 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, P.O. Box
1450, Alexandria, Virginia, 22313-1450, 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 recordkeeping
requirements, Small businesses.
. For the reasons set forth in the preamble, 37 CFR Part 1 is
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 paragraphs (g)(1)(ii)
and (g)(3) to read as follows:
1.14 Patent applications preserved in confidence.
* * * * *
(g) * * *
(1) * * *
(ii) With respect to the Search Copy (the copy of an international
application kept by the Office in its capacity as the International
Searching Authority, see PCT Article 12(1)), 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) Access to international application files for international
applications which designate the U.S. and which have been published in
accordance with PCT Article 21(2), or copies of a document in such
application files, will be permitted in accordance with PCT Articles 30
and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written
request including a showing that the publication of the application has
occurred and that the U.S. was designated.
* * * * *
. 3. Section 1.413 is amended by revising paragraphs (a) and (c)
to read as follows:
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 the 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:
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
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.
1.424 [Removed]
. 5. Section 1.424 is removed.
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:
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 (1.432);
(iii) The name of the applicant, as prescribed (note 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 (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:
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:
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:
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 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 - $1,000.00
(3) A supplemental search fee when required, per additional
invention - $1,000.00
(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:
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:
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 (1.482(a)(1)) and the
handling fee (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
limitset 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:
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:
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 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:
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.
October 10, 2003 JON W. DUDAS
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office