United States Patent and Trademark Office OG Notices: 03 May 2005
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 3, and 10
[Docket No.: 2005-P-053]
RIN 0651-AB85
Provisions for Persons
Granted Limited Recognition To
Prosecute Patent Applications and
Other Miscellaneous Matters
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of practice concerning persons acting
with limited recognition in a patent matter, the filing of the English
translation of foreign-language provisional applications, and the
submission of evidence ownership when an assignee takes action in a
patent matter. The Office is proposing changes to the rules of practice
to allow a person acting with limited recognition to be given a power
of attorney and authorized to sign amendments and other correspondence
respecting patent applications, reexamination proceedings, and other
proceedings. A person granted limited recognition is not a registered
patent attorney or agent. The Office is also proposing changes to the
rules of practice to require that a copy of the English translation of
a foreign-language provisional application be filed in the provisional
application (rather than in either the provisional application or the
nonprovisional application) if a non-provisional application claims the
benefit of the provisional application. In addition, the Office is
proposing changes to require that a copy of documentary evidence of
ownership be recorded in the Office's assignment records when an
assignee takes action in a patent matter, and that separate copies of a
document be submitted to the Office for recording in the Office's
assignment records, each accompanied by a cover sheet, if the document
to be recorded includes an interest in, or a transaction involving,
both patents and trademarks.
DATES: To be ensured of consideration, written comments must be
received on or before June 6, 2005. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail over the Internet
addressed to: AB85.comments@uspto.gov. Comments may also be submitted
by mail addressed to: Mail Stop Comments-Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or by facsimile to
(703) 273-7744, marked to the attention of Karin Ferriter. 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 prefer that the comments be submitted on a DOS
formatted 3 1/2-inch disk accompanied by a paper copy.
Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
The comments will be available for public inspection at the Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy, currently located at Room 7D74 of Madison
West, 600 Dulany Street, Alexandria, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: http://www.uspto.gov). Because 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: Karin Ferriter ((571) 272-7744),
Senior Legal Advisor, Office of Patent Legal Administration, Office of
the Deputy Commissioner for Patent Examination Policy; Harry I. Moatz
((571) 272-4097), Director of the Office of Enrollment and Discipline
(OED Director); or Robert J. Spar ((571) 272-7700) Director of the
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy, directly by phone, or by
facsimile to (571) 273-7744, or by mail addressed to: Mail Stop
Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450.
SUPPLEMENTARY INFORMATION: This notice proposes changes in the rules of
practice in title 37 of the Code of Federal Regulations (CFR)
pertaining to the availability of patent application files, persons
acting with limited recognition in a patent matter, the filing of the
English translation of foreign-language provisional applications, and
the submission of evidence ownership when an assignee takes action in a
patent matter and for recording in the Office's assignment records. The
proposed changes concerning the availability of patent application
files relate to Sec. 1.11. The proposed changes concerning persons
acting with limited recognition in a patent matter relate to Secs.
1.4, 1.17, 1.31, 1.32, 1.33, 1.34, and 1.36. The proposed changes
concerning the filing of the English translation of foreign-language
provisional applications relate to Sec. 1.78. The proposed changes
concerning the submission of evidence ownership when an assignee takes
action in a patent matter and for recording in the Office's assignment
records relate to Secs. 3.28, 3.31, 3.73, and 10.112.
Discussion of Specific Rules
Section 1.4: The title is proposed to be revised to read: "Nature
of correspondence and Signature Requirements." Section 1.4(d)(2) is
proposed to be revised to delete "with a signature in permanent dark
ink or its equivalent," because dark ink applies to handwritten
signatures, not S-signatures. Section 1.4(d)(2)(ii) is proposed to be
revised to change "registered practitioner" to "patent practitioner
(Sec. 1.32(a)(1))" and to insert "or limited recognition number"
after "registration number" in two places so that a person acting
with limited recognition can use an S-signature. The term "patent
practitioner" is defined in Sec. 1.32(a).
Section 1.11: Section 1.11(a) is proposed to be revised for clarity
and to reflect the policy regarding availability to the public of
papers in the files of applications that have been published. For
example, Sec. 1.11(a) is proposed to be revised to remove
"abandoned" before "published application." Published applications
are not physically available to the public if the file was maintained
in a paper file wrapper, but any electronic file relating to a
published application is made available through the Patent Application
Information Retrieval (PAIR) system pursuant to Sec. 1.14(a)(1)(iii)
and 1.14(b). Since most pending applications are now available through
PAIR, the reference to only abandoned published applications in Sec.
1.11 may have been misleading. In addition, Sec. 1.11(a) is proposed
to be revised to include: "If an application was published in redacted
form pursuant to Sec. 1.217, the complete file wrapper and contents of
the patent application will not be available if: The requirements of
paragraphs (d)(1), (d)(2), and (d)(3) of Sec. 1.217 have been met in
the application; and the application is still pending."
Section 1.17: Section 1.17(f) is proposed to be revised to add
"Sec. 1.36(a) - for revocation of a power of attorney by fewer than
all of the applicants." See the discussion of the proposed change to
Sec. 1.36(a). This proposed change would correct Sec. 1.17 by
including Sec. 1.36(a) in the list of petitions for which a fee set
forth in Sec. 1.17 can be charged, and also groups the fee for a
petition under Sec. 1.36(a) with similar petitions (under Sec. 1.182
and Sec. 1.183).
Section 1.31: Section 1.31 is proposed to be revised to change the
title to "Applicants may be represented by one or more patent
practitioners or joint inventors" in order to make the title of the
rule more descriptive of the proposed revised rule. A definition for
"patent practitioner" is proposed to be added to Sec. 1.32(a), as
discussed below, and the term "patent practitioner" is proposed to be
used in place of "registered patent attorney or agent" in Sec. 1.31,
and in other rules. Further, Sec. 1.31 is proposed to be revised to
indicate that one or more patent practitioners or joint inventors may
be given a power of attorney, to thereby recognize that there may be a
single person appointed or an appointment of more than one practitioner
or joint inventor to represent the applicant. Section 1.32(c)(1)
permits one or more joint inventors to be given power of attorney to
represent the other joint inventor or inventors; accordingly, the
revision to Sec. 1.31 is necessary for consistency with Sec.
1.32(c)(1). Furthermore, Sec. 1.31 is proposed to be amended to delete
the cross references to Secs. 11.6 and 11.9, which would no longer
be useful in view of the definition of patent practitioner proposed to
be added to Sec. 1.32(a).
Section 1.32: Section 1.32(a)(1) is proposed to be revised to set
forth the definition of "patent practitioner" and to renumber
sections (a)(1) to (a)(4) as (a)(2) through (a)(5), respectively.
Proposed new Sec. 1.32(a)(1) defines the term "patent
practitioner" as "a registered patent attorney or registered patent
agent under Sec. 11.6, or individual granted limited recognition to
file or prosecute a patent application, or other patent proceeding,
before the United States Patent and Trademark Office under Sec.
11.9(a) or Sec. 11.9(b)." This definition is consistent with the
definition of "practitioner" in Sec. 11.1 as "(1) An attorney or
agent registered to practice before the Office in patent matters* * *or
(3) An individual authorized to practice before the Office in a patent
case or matters under Sec. 11.9(a) or (b)." A person with limited
recognition pursuant to Sec. 11.9(a) and Sec. 11.9(b) is not a
registered patent practitioner, but is someone who has been given
limited recognition to prosecute a patent application. Individuals
granted limited recognition pursuant to Sec. 11.9(a) are given such
recognition for one or more specified patent applications or other
patent proceedings. For example, a parent or spouse may be given
limited recognition to represent the inventor where the inventor is
competent and 35 U.S.C. 117 and Sec. 1.43 do not apply. Limited
recognition pursuant to Sec. 11.9(b) is granted to individuals who
have passed the patent examination and are U.S. residents, but are
neither citizens of the U.S. nor permanent residents and thus are not
eligible to become registered. Because these individuals have a visa to
work in the U.S., they are accorded limited recognition consistent with
the visa. The term "patent practitioner" is limited to those that are
registered or authorized by the Office to act in patent matters.
Section 1.32(a)(1) is proposed to be renumbered as Sec. 1.32(a)(2)
and further revised to change "registered patent attorneys or
registered patent agents" to "one or more patent practitioners or
joint inventors" to reflect that one, or more than one, patent
practitioner may be appointed in a power of attorney. Section 1.32(c)
permits a power of attorney to be to one or more patent practitioners
or joint inventors, and this change is consistent therewith.
Section 1.32(a)(2) is proposed to be renumbered as Sec. 1.32(a)(3)
and further revised to add "or, in a reexamination proceeding, the
assignee of the entirety of ownership of a patent" to reflect that the
assignee of the entire interest in a patent may authorize a patent
practitioner to represent the assignee in reexamination proceedings,
for example, in addition to patent applications. In addition, Sec.
1.32(a)(3) is proposed to be revised to change "registered patent
attorney or registered patent agent" to "patent practitioners" and
"joint inventor" to "joint inventors." As explained above, use of
the term "patent practitioner" expands the rule to also apply to
individuals granted limited recognition to file (present) or prosecute
a patent application or other patent proceeding before the United
States Patent and Trademark Office, as well as registered patent
attorneys and registered patent agents.
Section 1.32(a)(3) is proposed to be renumbered as Sec.
1.32(a)(4), and further proposed to be revised to change "registered
patent attorney or registered patent agent" to "patent practitioner
or joint inventor."
Section 1.32(a)(4) is proposed to be renumbered as Sec.
1.32(a)(5), and the resulting new paragraph Sec. 1.32(a)(5)(i) is
proposed to be revised to change "patent application or patent" to
"patent application, patent or other patent proceeding" and the
resulting new paragraph 1.32(a)(5)(iii) is proposed to be revised to
delete "registered."
Section 1.32(c)(3) is proposed to be revised such that the first
sentence reads: "Ten or fewer patent practitioners, stating the name
and registration number or limited recognition number of each patent
practitioner." The Office needs the registration number of the patent
practitioner to make the practitioner of record. Because the former
rules did not require a registration number, registration numbers were
sometimes omitted, leading to delays in Office processing of powers of
attorney. Accordingly, Sec. 1.32(c)(3) is proposed to be amended to
add a requirement for the registration number or limited recognition
number of the patent practitioner to assist the Office in making the
practitioner of record. Limited recognition numbers recently began to
be assigned by the Office of Enrollment and Discipline.
Section 1.33: Section 1.33(a) is proposed to be revised to
use the generic term "patent practitioner" instead of "registered
patent attorney or patent agent" so as to also include those acting
with limited recognition. Specifically, Sec. 1.33(a) is proposed to be
amended to change "registered patent attorney or patent agent" to
"patent practitioner" in two places. In addition, Sec. 1.33(a)(1) is
proposed to be amended to change "If the application was filed by a
registered attorney or agent, any other registered practitioner named
in the transmittal papers may also change the correspondence address"
to "If the application was filed by a patent practitioner, any other
patent practitioner named in the transmittal papers may also change the
correspondence address."
Section 1.33(b)(1) and Sec. 1.33(b)(2) are proposed to be amended
to change registered patent attorney or patent agent" to "patent
practitioner."
Section 1.33 is also proposed to be revised to add new paragraph
(e) to remind patent practitioners that the attorney roster must be
updated separately from individual patent applications. Section 1.33 is
proposed to be revised to state: "(e) A change of address filed in a
patent application or patent does not change the address for a patent
practitioner in the roster of patent attorneys and agents. See Sec.
11.11 of this part."
Section 1.34: Section 1.34 is proposed to be revised to change
"registered patent attorney or patent agent" to "patent
practitioner" in two places, and change "must specify his or her
registration number and name with his or her signature" to "must set
forth his or her registration number, or limited recognition number,
and his or her name and signature" in order to provide support for
someone accorded limited recognition to act in a representative
capacity.
Section 1.36: Section 1.36(a) is proposed to be revised to change
Sec. 1.17(h) to Sec. 1.17(f). The fee for a petition to allow a split
power of attorney should be the same regardless of whether the split
power of attorney results from revocation by fewer than all of the
inventors, as provided in Sec. 1.36(a), or from a petition under Sec.
1.183 to waive the provisions of Sec. 1.32(b)(4) requiring that a
power of attorney be signed by the applicant for patent (Sec. 1.41(b))
or the assignee of the entire interest of the applicant. Furthermore,
"registered patent attorney or patent agent" is proposed to be
changed to "patent practitioner."
Section 1.78: Section 1.78(a)(2)(i) is proposed to be revised to
add ", or international application designating the United States of
America," to require international applications to contain a specific
reference to the earlier nonprovisional application.
Section 1.78(a)(5)(iv) is proposed to be revised to require the
English translation of a provisional application to be filed in a
provisional application, instead of also permitting the translation to
be filed in each nonprovisional application that claims the benefit of
the filing date of the provisional application. Section 1.78(a)(5)(iv)
is also proposed to be revised to provide that applicant must file, in
a nonprovisional application, confirmation of the filing of the
translation and statement, when a notice is mailed in the
nonprovisional application requiring the translation and statement.
Currently, Sec. 1.78(a)(5)(iv) provides that when, pursuant to 35
U.S.C. 119(e), benefit is being claimed to a provisional application
which was filed in a language other than English, an English language
translation of the provisional application, accompanied by a statement
that the translation is accurate, must be filed in either: (a) the
provisional application or (b) each nonprovisional application that
claims the benefit of the provisional application. Thus, if the
translation and statement are not filed in the provisional application,
they may be filed in each application that claims the benefit of the
filing date of the provisional application (to satisfy the requirement
of the rule). A provisional application is open to the public if the
benefit of the provisional application is claimed in an application
that has either been published or patented. Where the translation and
statement are not filed in the provisional application because they are
filed in each nonprovisional application(s) claiming the benefit of the
provisional application, there is a burden on the public in finding the
translation and statement, and to the Office in storing possibly
duplicate copies of the documents. Further, when a translation of the
provisional application is filed in the nonprovisional application, the
Office has sometimes confused the translation of the provisional with the
specification papers to be used for the application. Since the option
is available to file the translation and statement in the
nonprovisional application, applicant's counsel may inadvertently
choose that option in situations where there are many nonprovisional
applications claiming the benefit of a single provisional application,
and incur substantial expense for having to file a copy in each
nonprovisional application. Having only one copy of the translation
(and statement) "centrally" filed in the provisional application,
regardless of how many nonprovisional applications claim benefit of
that provisional application, would be beneficial for applicants, the
public, and the Office. Accordingly, Sec. 1.78(a)(5)(iv) is proposed
to be revised to delete from the first sentence "or the later-filed
nonprovisional application" to thereby eliminate the option to file
the translation and statement in the nonprovisional application.
Furthermore, Sec. 1.78(a)(5)(iv) is further proposed to be revised to
add ", in the provisional application," after "a period of time
within which to file." Lastly, the last sentence of Sec.
1.78(a)(5)(iv) is further proposed to be revised to read "If the
notice is mailed in a pending nonprovisional application, a timely
reply to such a notice must include the filing of a confirmation in the
nonprovisional application that the translation and statement were
filed in the provisional application or the nonprovisional application
will be abandoned."
Section 3.28: Section 3.28 currently directs that "[o]nly one set
of documents and cover sheets to be recorded should be filed" which
discourages assignees from submitting one set of documents including a
patent cover sheet and the document to be recorded, and another set of
documents including a trademark cover sheet and another copy of the
document to be recorded. While the Office can process a set of
documents that includes a patent cover sheet, trademark cover sheet,
and only one copy of the document to be recorded, submitting only one
copy of the document can lead to the misconception that a document
submitted for recordation has been omitted, or the document submitted
only belongs to the second cover sheet, particularly when the documents
are submitted by facsimile and there is a break in the transmission.
For example, if a submission includes: a trademark sheet on pages 1 and
2, a patent cover sheet on page 3, and a document for recording on
pages 4-7, then, if pages 1 and 2 are separated from the remainder of
the set of documents, it may not be clear that the trademark cover
sheet is missing since the patent cover sheet and the document to be
recorded would have themselves made a complete set of documents. To
reduce confusion, it is proposed to revise Sec. 3.28 to require that a
separate copy of the document to be recorded be submitted with each
cover sheet. Note that even if the term "copy of the document to be
recorded" is not used in this discussion, the document submitted for
recordation must be a copy, and not the original document, and the term
"document to be recorded" has been used to emphasize that the
document is to be recorded, not to suggest that an original may be
submitted.
Section 3.28 is proposed to be revised to state that each document
to be recorded must be accompanied by a single cover sheet (and not
multiple cover sheets), to put parenthesis around "as specified in
Sec. 3.31," and to delete the statement that at least one cover sheet
must be included with each document submitted for recording. Section
3.28 is also proposed to be revised to delete the sentence that states
that only one set of documents and cover sheets to be recorded should
be filed, and to make it clear that if an assignment includes interests
in, or transactions involving, both patents and trademarks, then two
copies of each document (each document with its own cover sheet) would
have to be submitted. Thus, a patent cover sheet and a copy of the
document, and a trademark cover sheet and a copy of the document, would
be submitted.
Section 3.31: Section 3.31(a)(7) is proposed to be amended to
delete "submission" before "(e.g./Thomas O'Malley III/)" to correct
an obvious error.
Section 3.73: Section 3.73(b)(1)(i) is proposed to be revised to
require, for patent matters, that the document(s) submitted to
establish ownership under Sec. 3.73(b) be recorded pursuant to Sec.
3.11 in the assignment records.
In order to take action in a patent application or a patent, a
party must comply with Sec. 3.73 to establish ownership of the rights
to a patent application or a patent (i.e., a patent property) by
submitting to the Office a signed statement identifying the assignee.
The signed statement must be accompanied by either: (i) Documentary
evidence of a chain of title from the original owner to the assignment,
or (ii) a statement specifying where such documentary evidence is
recorded in the Office's assignment records. Where option (i) is
chosen, there is no requirement that the document(s) submitted to
establish ownership also be recorded pursuant to Sec. 3.11 in the
assignment records, unless the Office explicitly requires such
recordation on a case-by-case basis. Such a requirement is made only in
the rare situation where a question arises as to ownership of the
property. It is desirable, however, that the Office's patent assignment
records should, as a rule, reflect the assignment of any assignee
seeking to take action in a patent application or patent. The current
system which permits an assignee to take action by submitting a copy of
the assignment in a patent application or patent, but not requiring the
assignment to be recorded in the Office's patent assignment records,
makes a search of the Office's patent assignment records unreliable.
Permitting an assignee to take action in an application or patent
without also recording the assignment (in the Office's assignment
records) can also serve to discourage an assignee from recording its
assignment document(s), and thus lose the right to rely upon
recordation pursuant to 35 U.S.C. 261 ("An assignment, grant or
conveyance shall be void as against any subsequent purchaser or
mortgagee for a valuable consideration, without notice, unless it is
recorded in the Patent and Trademark Office within three months from
its date or prior to the date of such subsequent purchase or
mortgage.")
Section 3.73(b)(1)(i) is proposed to be revised to require that the
submission of the documentary evidence to establish ownership must be
accompanied by a statement affirming that the documentary evidence of
the chain of title from the original owner to the assignee was
submitted for recordation pursuant to Sec. 3.11. Thus, when filing a
Sec. 3.73(b) statement to establish ownership an applicant or patent
owner must also submit the assignment document(s) to the Office for
recordation, if such a submission has not been previously made. If the
Sec. 3.73(b) statement is not accompanied by a statement affirming
that the documentary evidence was submitted for recordation pursuant to
Sec. 3.11, then the Sec. 3.73(b) statement will not be accepted, and
the assignee(s) will not have established the right to take action in
the patent application or the patent for which the Sec. 3.73(b)
statement was submitted. For trademark matters, there would continue to
be no requirement that the submission of the documentary evidence be
accompanied by a statement affirming that the documentary evidence was
submitted for recordation. Rather, paragraph (b)(1)(i) would continue to
set forth that the Office may require (as deemed appropriate in any
individual case) the documents submitted to establish ownership to be
recorded pursuant to Sec. 3.11 in the assignment records of the Office
as a condition to permitting the assignee to take action in a matter
pending before the Office.
Section 10.112: Section 10.112 is proposed to be revised to correct
the cross reference, changing "10.6(c)" to "11.6(c)."
Rule Making Considerations
Administrative Procedure Act: The changes proposed in this notice
(except for the petition fee change for a split power of attorney
resulting from revocation of the power of attorney by fewer than all of
the applicants or assignees of the applicants) relate solely to the
procedures to be followed during the prosecution of a patent
application. Specifically, the changes proposed in this notice concern:
(1) Providing the proper S-signature by someone acting with limited
recognition pursuant to Sec. 11.9(a) and Sec. 11.9(b); (2) providing
for a power of attorney to a person acting with limited recognition
pursuant to Sec. 11.9(a) and Sec. 11.9(b); (3) providing that the
petition fee for a split power of attorney resulting from revocation of
the power of attorney by fewer than all of the applicants or assignees
of the applicants be the same as the petition fee to waive the rules to
appoint a split power of attorney initially; (4) requiring that the
translation of a non-English language provisional application and
statement that the translation is accurate be filed in a provisional
application, rather than either the nonprovisional application claiming
the benefit of the provisional application or the provisional
application; and (5) requiring that the evidentiary evidence of
ownership be recorded under 37 CFR part 3 when an assignee takes action
in a patent application. Therefore, these rule changes involve
interpretive rules, or rules of agency practice and procedure under 5
U.S.C. 553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683,
690 (D.C. Cir. 2001) (rules governing an application process are
"rules of agency organization, procedure, or practice" and are exempt
from the Administrative Procedure Act's notice and comment
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543,
1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice
promulgated under the authority of former 35 U.S.C. 6(a) (now in 35
U.S.C. 2(b)(2)) are not substantive rules to which the notice and
comment requirements of the Administrative Procedure Act apply), and
Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) ("it is
doubtful whether any of the rules formulated to govern patent and
trade-mark practice are other than `interpretative rules, general
statements of policy, * * * procedure, or practice.""') (quoting C.W.
Ooms, The United States Patent Office and the Administrative Procedure
Act, 38 Trademark Rep. 149, 153 (1948)).
Regulatory Flexibility Act: Prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553 (or any other
law) for the procedural changes proposed in this notice. Therefore, an
initial regulatory flexibility analysis under the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.) is not required for those
changes proposed in this notice (with the sole exception of the change
to the petition fee for revocation of a power of attorney by fewer than
all of the applicants). See 5 U.S.C. 603.
With respect to the petition fee change, the proposed rule will
increase the petition fee for revocation of a power of attorney by
fewer than all of the applicants. This notice proposes to change the
petition fee (from the $130.00 fee specified in Sec. 1.17(h) to the
$400.00 fee specified in Sec. 1.17(f)) in situations where a split
power of attorney results from revocation of the power of attorney by
fewer than all of the applicants or assignees of the applicants. The
proposed rule will bring the fees in line with the actual cost of
treating such petitions (in view of the special handling required for
the split power of attorney resulting from revocation of the power of
attorney). This petition fee is established pursuant to the Office's
authority under 35 U.S.C. 41(d) to establish fees for all processing,
services, or materials relating to patents not otherwise specified in
35 U.S.C. 41 to recover the estimated average cost to the Office of
such processing, services, or materials.
The Office received over 376,000 nonprovisional patent applications
and over 102,000 provisional patent applications in fiscal year 2004.
The Office receives fewer than five petitions for revocation of the
power of attorney by fewer than all of the applicants or assignees of
the applicants each year. On this basis alone, the fee change will not
have an impact on a substantial number of small businesses. While the
Office does not track the entity status of such petitions, the small
entity patent application filing rate has not been greater than 31.0%
during the last five fiscal years. Thus, this proposed change (even if
all of the affected patents were by a small entity) would impact no
more than two small entities in any calendar year.
Accordingly, for the reasons set forth herein, 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 economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
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 notice involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in
this notice has been reviewed and previously approved by OMB under OMB
control number 0651-0012, 0651-0027, 0651-0031, 0651-0032, and 0651-
0035. 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 principal impacts of the changes
proposed in this notice are: (1) Providing for the proper S-signature
by someone acting with limited recognition pursuant to Sec. 11.9(a)
and Sec. 11.9(b); (2) providing for power of attorney to a person
acting with limited recognition pursuant to Sec. 11.9(a) and Sec.
11.9(b); (3) providing that the fee for a split power of attorney
resulting from revocation of the power of attorney by fewer than all of
the applicants or assignees of the applicants be the same as the fee to
waive the rules to appoint a split power of attorney initially; (4)
requiring that the translation of a non-English language provisional
application and statement that the translation is accurate be filed in
a provisional application, rather than either the nonprovisional
application claiming the benefit of the provisional application or the
provisional application; and (5) requiring that the evidentiary
evidence of ownership be recorded under 37 CFR part 3 when an
assignee takes action in a patent application.
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, Office of the Deputy Commissioner for Patent
Examination Policy, P.O. Box 1450, Alexandria, VA 22313-1450, or to the
Office of Information and Regulatory Affairs, Office of Management and
Budget, New Executive Office Building, Room 10235, 725 17th Street,
NW., Washington, DC 20503, Attention: Desk Officer for the 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
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small businesses.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents,
Reporting and record keeping requirements.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and record keeping requirements.
For the reasons set forth in the preamble, 37 CFR parts 1, 3, and
10 are 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 1.4 is amended by revising paragraph (d)(2) introductory
text, and paragraph (d)(2)(ii) to read as follows:
Sec. 1.4 Nature of correspondence and Signature Requirements.
* * * * *
(d) * * *
(2) S-signature. An S-signature is a signature inserted between
forward slash marks, but not a handwritten signature as defined by
Sec. 1.4(d)(1). An S-signature includes any signature made by
electronic or mechanical means, and any other mode of making or
applying a signature not covered by either a handwritten signature of
Sec. 1.4(d)(1) or an Office Electronic Filing System (EFS) character
coded signature of Sec. 1.4(d)(3). Correspondence being filed in the
Office in paper, by facsimile transmission as provided in Sec. 1.6(d),
or via the Office Electronic Filing System as an EFS Tag(ged) Image
File Format (TIFF) attachment, for a patent application, patent, or a
reexamination proceeding may be S-signature signed instead of being
personally signed (i.e., with a handwritten signature) as provided for
in paragraph (d)(1) of this section. The requirements for an S-
signature under this paragraph (d)(2) are as follows.
* * * * *
(ii) A patent practitioner (Sec. 1.32(a)(1)), signing pursuant to
Secs. 1.33(b)(1) or 1.33(b)(2), must supply his/her registration
number or limited recognition number either as part of the S-signature,
or immediately below or adjacent to the S-signature. The number
() character may only be used as part of the S-signature when
appearing before a practitioner's registration number or limited
recognition number; otherwise the number character may not be used in
an S-signature.
* * * * *
3. Section 1.11 is amended by revising paragraph (a) to read as
follows:
Sec. 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the
file of: a published application; a patent; or a statutory invention
registration are open to inspection by the public, and copies may be
obtained upon the payment of the fee set forth in Sec. 1.19(b)(2). If
an application was published in redacted form pursuant to Sec. 1.217,
the complete file wrapper and contents of the patent application will
not be available if: the requirements of paragraphs (d)(1), (d)(2), and
(d)(3) of Sec. 1.217 have been met in the application; and the
application is still pending. See Sec. 2.27 for trademark files.
* * * * *
4. Section 1.17 is amended by revising paragraph (f) to read as
follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(f) For filing a petition under one of the following sections which
refers to this paragraph: $400.00.
Sec. 1.36(a) - for revocation of a power of attorney by fewer
than all of the applicants.
Sec. 1.53(e) - to accord a filing date.
Sec. 1.57(a) - to accord a filing date.
Sec. 1.182 - for decision on a question not specifically
provided for.
Sec. 1.183 - to suspend the rules.
Sec. 1.378(e) - for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in an expired
patent.
Sec. 1.741(b) - to accord a filing date to an application under
Sec. 1.740 for extension of a patent term.
* * * * *
5. Section 1.31 is revised to read as follows:
Sec. 1.31 Applicants may be represented by one or more patent
practitioners or joint inventors.
An applicant for patent may file and prosecute his or her own case,
or he or she may give a power of attorney so as to be represented by
one or more patent practitioners or joint inventors. The United States
Patent and Trademark Office cannot aid in the selection of a patent
practitioner.
6. Section 1.32 is amended by revising paragraphs (a) and (c)(3) to
read as follows:
Sec. 1.32 Power of attorney.
(a) Definitions - (1) Patent practitioner means a registered patent
attorney or registered patent agent under Sec. 11.6 of this chapter,
or an individual granted limited recognition to file or prosecute a
patent application, or other patent proceeding, before the United
States Patent and Trademark Office under Sec. 11.9(a) or Sec.
11.9(b).
(2) Power of attorney means a written document by which a principal
authorizes one or more patent practitioners or joint inventors to act
on his or her behalf.
(3) Principal means either an applicant for patent (Sec. 1.41(b))
or an assignee of entire interest of the applicant for patent or in a
reexamination proceeding, the assignee of the entirety of ownership of
a patent. The principal executes a power of attorney designating one or
more patent practitioners or joint inventors to act on his or her
behalf.
(4) Revocation means the cancellation by the principal of the
authority previously given to a patent practitioner or joint inventor
to act on his or her behalf.
(5) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application or
patent such that the correspondence address for the patent application,
patent or other patent proceeding would be the address associated with
the Customer Number;
(ii) Designate the fee address (Sec. 1.363) of a patent such that
the fee address for the patent would be the address associated with the
Customer Number; and
(iii) Submit a list of patent practitioners such that those patent
practitioners associated with the Customer Number would have power of
attorney.
* * * * *
(c) * * *
(3) Ten or fewer patent practitioners, stating the name and
registration number or limited recognition number of each patent
practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this
section, the Office will not recognize more than ten patent
practitioners as being of record in an application or patent. If a
power of attorney names more than ten patent practitioners, such power
of attorney must be accompanied by a separate paper indicating which
ten patent practitioners named in the power of attorney are to be
recognized by the Office as being of record in the application or
patent to which the power of attorney is directed.
7. Section 1.33 is amended by revising paragraphs (a) introductory
text, (a)(1), (b)(1) and (b)(2) and by adding paragraph (e) to read as
follows:
Sec. 1.33 Correspondence respecting patent applications,
reexamination proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When
filing an application, a correspondence address must be set forth in
either an application data sheet (Sec. 1.76), or elsewhere, in a
clearly identifiable manner, in any paper submitted with an application
filing. If no correspondence address is specified, the Office may treat
the mailing address of the first named inventor (if provided, see
Secs. 1.76(b)(1) and 1.63(c)(2)) as the correspondence address.
The Office will direct all notices, official letters, and other
communications relating to the application to the correspondence
address. The Office will not engage in double correspondence with an
applicant and a patent practitioner, or with more than one patent
practitioner except as deemed necessary by the Director. If more than
one correspondence address is specified in a single document, the
Office will establish one as the correspondence address and will use
the address associated with a Customer Number, if given, over a typed
correspondence address. For the party to whom correspondence is to be
addressed, a daytime telephone number should be supplied in a clearly
identifiable manner and may be changed by any party who may change the
correspondence address. The correspondence address may be changed as
follows:
(1) Prior to filing of Sec. 1.63 oath or declaration by any of the
inventors. If a Sec. 1.63 oath or declaration has not been filed by
any of the inventors, the correspondence address may be changed by the
party who filed the application. If the application was filed by a
patent practitioner, any other patent practitioner named in the
transmittal papers may also change the correspondence address. Thus,
the inventor(s), any patent practitioner named in the transmittal
papers accompanying the original application, or a party that will be
the assignee who filed the application, may change the correspondence
address in that application under this paragraph.
* * * * *
(b) * * *
(1) A patent practitioner of record appointed in compliance with
Sec. 1.32(b);
(2) A patent practitioner not of record who acts in a
representative capacity under the provisions of Sec. 1.34;
* * * * *
(e) A change of address filed in a patent application or patent
does not change the address for a patent practitioner in the roster of
patent attorneys and agents. See Sec. 11.11 of this chapter.
8. Section 1.34 is revised to read as follows:
Sec. 1.34 Acting in a representative capacity.
When a patent practitioner acting in a representative capacity
appears in person or signs a paper in practice before the United States
Patent and Trademark Office in a patent case, his or her personal
appearance or signature shall constitute a representation to the United
States Patent and Trademark Office that under the provisions of this
subchapter and the law, he or she is authorized to represent the
particular party in whose behalf he or she acts. In filing such a
paper, the patent practitioner must set forth his or her registration
number, or limited recognition number, and his or her name and
signature. Further proof of authority to act in a representative
capacity may be required.
9. Section 1.36 is amended by revising paragraph (a) to read as
follows:
Sec. 1.36 Revocation of power of attorney; withdrawal of patent
attorney or agent.
(a) A power of attorney, pursuant to Sec. 1.32(b), may be revoked
at any stage in the proceedings of a case by an applicant for patent
(Sec. 1.41(b)) or an assignee of the entire interest of the applicant,
or the owner of the entire interest of a patent. A power of attorney to
the patent practitioners associated with a Customer Number will be
treated as a request to revoke any powers of attorney previously given.
Fewer than all of the applicants (or fewer than all of the assignees of
the entire interest of the applicant or, in a reexamination proceeding,
fewer than all the owners of the entire interest of a patent) may only
revoke the power of attorney upon a showing of sufficient cause, and
payment of the petition fee set forth in Sec. 1.17(f). A patent
practitioner will be notified of the revocation of the power of
attorney. Where power of attorney is given to the patent practitioners
associated with a Customer Number (Sec. 1.32(c)(2)), the practitioners
so appointed will also be notified of the revocation of the power of
attorney when the power of attorney to all of the practitioners
associated with the Customer Number is revoked. The notice of
revocation will be mailed to the correspondence address for the
application (Sec. 1.33) in effect before the revocation. An assignment
will not of itself operate as a revocation of a power previously given,
but the assignee of the entire interest of the applicant may revoke
previous powers of attorney and give another power of attorney of the
assignee's own selection as provided in Sec. 1.32(b).
* * * * *
10. Section 1.78 is amended by revising paragraphs (a)(2)(i) and
(a)(5)(iv) to read as follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-
references to other applications.
(a) * * *
(2)(i) Except for a continued prosecution application filed under
Sec. 1.53(d), any nonprovisional application, or international
application designating the United States of America, claiming the
benefit of one or more prior-filed copending nonprovisional
applications or international applications designating the United
States of America must contain or be amended to contain a reference to
each such prior-filed application, identifying it by application number
(consisting of the series code and serial number) or international
application number and international filing date and indicating the
relationship of the applications. Cross references to other related
applications may be made when appropriate (see Sec. 1.14).
* * * * *
(5) * * *
(iv) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, applicant will be notified and given a period
of time within which to file, in the provisional application, an
English-language translation of the non-English-language prior-filed
provisional application and a statement that the translation is
accurate. If the notice is mailed in a pending nonprovisional
application, a timely reply to such a notice must include the filing of
a confirmation in the nonprovisional application that the translation
and statement were filed in the provisional application or the
nonprovisional application will be abandoned.
* * * * *
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
11. The authority citation for 37 CFR part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
12. Section 3.28 is revised to read as follows:
Sec. 3.28 Requests for recording.
Each document submitted to the Office for recording must include a
single cover sheet (as specified in Sec. 3.31) referring either to
those patent applications and patents, or to those trademark
applications and registrations, against which the document is to be
recorded. If a document to be recorded includes interests in, or
transactions involving, both patents and trademarks, then separate
patent and trademark cover sheets, each accompanied by a copy of the
document to be recorded, should be submitted. If a document to be
recorded is not accompanied by a completed cover sheet, the document
and the incomplete cover sheet will be returned pursuant to Sec. 3.51
for proper completion, in which case the document and a completed cover
sheet should be resubmitted.
13. Section 3.31 is amended by revising paragraph (a)(7)(i) to read
as follows:
Sec. 3.31 Cover sheet content.
(a) * * *
(7) * * *
(i) Place a symbol comprised of letters, numbers, and/or
punctuation marks between forward slash marks (e.g. /Thomas O'Malley
III/) in the signature block on the electronic submission; or
* * * * *
14. Section 3.73 is amended by revising paragraph (b)(1)(i) to read
as follows:
Sec. 3.73 Establishing right of assignee to take action.
* * * * *
(b)(1) * * *
(i) Documentary evidence of a chain of title from the original
owner to the assignee (e.g., copy of an executed assignment). For
trademark matters only, the documents submitted to establish ownership
may be required to be recorded pursuant to Sec. 3.11 in the assignment
records of the Office as a condition to permitting the assignee to take
action in a matter pending before the Office. For patent matters only,
the submission of the documentary evidence must be accompanied by a
statement affirming that the documentary evidence of the chain of title
from the original owner to the assignee was submitted for recordation
pursuant to Sec. 3.11; or
* * * * *
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
15. The authority citation for 37 CFR part 10 continues to read as
follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.
16. Section 10.112 is amended by revising paragraph (a) to read as
follows:
Sec. 10.112 Preserving identity of funds and property of client.
(a) All funds of clients paid to a practitioner or a practitioner's
firm, other than advances for costs and expenses, shall be deposited in
one or more identifiable bank accounts maintained in the United States
or, in the case of a practitioner having an office in a foreign country
or registered under Sec. 11.6(c), in the United States or the foreign
country.
* * * * *
April 1, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and
Director of the United States
Patent and Trademark Office