United States Patent and Trademark Office OG Notices: 02 May 2006
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
Docket No.: PTO-P-2006-0005
RIN 0651-AC01
Changes to Eliminate the Disclosure Document Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
SUMMARY: The United States Patent and Trademark Office (Office)
implemented the Disclosure Document Program in 1969 in order to provide an
alternative form of evidence of conception of an invention to, for example,
a "self-addressed envelope" containing a disclosure of an invention. It
appears, however, that few, if any, inventors obtain any actual benefit
from a disclosure document, and some inventors who use the Disclosure
Document Program believe that they are actually filing an application for a
patent. In addition, a provisional application for patent affords better
benefits and protection to inventors than a disclosure document. Therefore,
the Office is proposing to eliminate the Disclosure Document Program.
Comment Deadline Date: To be ensured of consideration, written comments
must be received on or before May 8, 2006. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to ddp.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
(571) 273-7735, marked to the attention of Catherine M. Kirik. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet. If comments are submitted by mail, the
Office prefers that the comments be submitted on a DOS formatted 3 1/2 inch
disk accompanied by a paper copy.
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
the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site (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: Catherine M. Kirik, Office of the
Commissioner for Patents, by telephone at (571) 272-8040, by mail addressed
to: Mail Stop Comments - Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450, or by facsimile to (571) 273-0170, marked to the
attention of Catherine M. Kirik.
SUPPLEMENTARY INFORMATION: An inventor may file a disclosure document with
the Office which includes a written description and drawings of his or her
invention in sufficient detail to enable a person of ordinary skill in the
art to make and use the invention to establish a date of conception of an
invention in the United States under 35 U.S.C. 104 prior to the application
filing date. The inventor must sign the disclosure document and include a
separate signed cover letter identifying the papers as a disclosure
document. A disclosure document does not require either a claim in
compliance with 35 U.S.C. 112, para. 2, or an inventor's oath (or
declaration) under 35 U.S.C. 115, and is not accorded a patent application
filing date. A disclosure document is to be destroyed by the Office after
two years unless it is referred to in a separate letter in a related
provisional or nonprovisional application filed within those two years.
The filing fee for a disclosure document is $10. See 37 CFR 1.21(c).
The Office published a notice in September of 1998 seeking input from
the general public on whether the Office should eliminate the Disclosure
Document Program. See Changes to Implement the Patent Business Goals,
63 FR 53498, 53527-28 (Oct. 5, 1998), 1215 Off. Gaz. Pat. Office 87
(Oct. 27, 1998) (advance proposed rule). The Office received a number of
comments supporting the elimination of the Disclosure Document Program, but
did not receive any input from the independent inventor community and,
therefore, decided to delay eliminating the Disclosure Document Program.
See Changes to Implement the Patent Business Goals, 64 FR 53772, 53776-77
(Oct. 4, 1998), 1215 Off. Gaz. Pat. Office 87 (Oct. 27, 1998) (proposed
rule). The Office has determined that it is now appropriate to propose
elimination of the Disclosure Document Program because, inter alia,
independent inventors have become more familiar with and are using
provisional applications more often than they were in 1998, and provisional
applications provide more protections for independent inventors than
disclosure documents.
The Office implemented the Disclosure Document Program in 1969 in order
to provide an alternative form of evidence of conception of an invention
to forms such as a "self-addressed envelope" form of evidence. See
Disclosure Document Program, 34 FR 6003 (Apr. 2, 1969), 861 Off. Gaz. Pat.
Office 1 (May 6, 1969). Since June of 1995, however, applicants have been
able to file a provisional application for patent, which provides better
benefits and protection to inventors than a disclosure document. A
provisional application must contain a specification in compliance with 35
U.S.C. 112, para 1, and drawings, if drawings are necessary to understand
the invention described in the specification. A provisional application
must name the inventors and be accompanied by a separate cover sheet
identifying the papers as a provisional application. The basic filing fee
for a provisional application by a small entity is $100.00. See 37 CFR
1.16(d). A provisional application does not require a claim under 35 U.S.C.
112, para 2, or an inventor's oath (or declaration) under 35 U.S.C. 115.
While a nonprovisional application must be filed within twelve months of
the filing date of a provisional application in order for the inventor to
claim the benefit of the provisional application under 35 U.S.C. 119(e),
the file of a provisional application is retained by the Office for at
least twenty years, or longer if it is referenced in a patent or patent
application publication. With respect to an invention claimed in a
nonprovisional application that is entitled under 35 U.S.C. 119(e) to the
benefit of a provisional application, the provisional application is
considered a constructive reduction to practice of an invention as of the
filing date accorded the application, if it describes the invention in
sufficient detail to enable a person of ordinary skill in the art to make
and use the invention and discloses the best mode known by the inventor for
carrying out the invention. Thus, the disclosure requirements for a
provisional application are similar to the disclosure requirements for a
disclosure document, and a provisional application provides users with a
filing date without starting the patent term period. Therefore, almost any
papers filed as a proper disclosure document may also be filed as a
provisional application.
A provisional application is, however, more valuable to an inventor than
a disclosure document. A provisional application, just like a
nonprovisional application, establishes a constructive reduction to
practice date with respect to an invention claimed in a nonprovisional
application that is entitled under 35 U.S.C. 119(e) to the benefit of the
provisional application and disclosed in the provisional application in the
manner required by 35 U.S.C. 112, para. 1, and can be used under the Paris
Convention to establish a priority date for foreign filing. A disclosure
document, however, may only be used as evidence of a date of conception of
an invention under 35 U.S.C. 104. A disclosure document is not a patent
application and the filing of a disclosure document does not establish a
constructive reduction to practice date for an invention described therein.
Thus, to use a disclosure document to establish prior invention under 35
U.S.C. 102(g) or under 37 CFR 1.131, an inventor may rely on the disclosure
document to demonstrate that he or she conceived of the invention first,
but the inventor may also be required to demonstrate that he or she was
reasonably diligent from a date just prior to: (1) The date of conception
by the other party in an interference proceeding; or (2) effective date of
a reference being used by the Office to reject one or more claims of an
application until the inventor's actual or constructive reduction to
practice. With respect to an invention claimed in a nonprovisional
application that is entitled under 35 U.S.C. 119(e) to the benefit of a
provisional application and disclosed in the provisional application in the
manner required by 35 U.S.C. 112, para. 1, however, the provisional
application may be used to establish a constructive reduction to practice
date as of the filing date of the provisional application.
Under 35 U.S.C. 102(b), any public use or sale of an invention in the
U.S. or description of an invention in a patent or a printed publication
anywhere in the world more than one year prior to the filing of a patent
application on that invention will bar the grant of a patent. In addition,
many foreign countries currently have what is known as an "absolute
novelty" requirement which means that a public disclosure of an invention
anywhere in the world prior to the filing date of an application for patent
will act as a bar to the granting of any patent directed to the invention
disclosed. Since a disclosure document is not a patent application, it does
not help an inventor avoid the forfeiture of U.S. or foreign patent rights.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:
Section 1.21: Section 1.21(c) currently sets forth a fee ($10.00) for
filing a disclosure document. Section 1.21 is proposed to be amended to
remove and reserve paragraph (c) in view of the proposed elimination of the
Disclosure Document Program.
Rule Making Considerations
Regulatory Flexibility Act
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 the
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). There is no
statutory provision relating to the disclosure document program. The
program dates back to 1969, when commercial services were not as abundantly
available. Now, there are numerous commercially available "electronic
notebooks" that may be used to document evidence of conception of an
invention. In addition, inventors may still use a "self-addressed envelope"
to mail documents to themselves or they may maintain a logbook containing
fixed pages that may be witnessed to document evidence of conception of an
invention. Thus, the program is no longer necessary.
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
The information collection requirements being suspended by this rule
were approved in accordance with the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) by the Office of Management and Budget (OMB) under
0651-0030 disclosure documents. Suspension of the reporting requirements
under 0651-0030 is expected to reduce the public reporting burden by 4,445
hours and $236,000. This proposed rule would thus not impose any additional
reporting or record keeping requirements on the public.
Interested persons are requested to send comments to the Office of
Information and Regulatory Affairs, Office of Management and Budget, New
Executive Office Building, Room 10202, 725 17th Street, NW., Washington, DC
20503, Attention: Desk Officer for the Patent and Trademark Office; and (2)
Robert J. Spar, Director, Office of Patent Legal Administration,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
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 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 1.21 is amended by removing and reserving paragraph (c).
Sec. 1.21 Miscellaneous fees and charges.
* * * * *
(c) [Reserved]
* * * * *
March 29, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office