United States Patent and Trademark Office OG Notices: 28 November 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: Final rule.
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 erroneously
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 and could be
used for the same purposes as a disclosure document if necessary.
Therefore, the Office is eliminating the Disclosure Document Program.
DATES: Effective Date: February 1, 2007.
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: The Disclosure Document
Program allows an inventor to file a 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
$10.00. See 37 CFR 1.21(c).
The Office implemented the Disclosure Document Program in 1969 in
order to provide a form of evidence of conception of an invention as an
alternative to forms such as a "self-addressed envelope." 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 more benefits and protections 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 (an abandoned
provisional application is still retained for at least five years from
the filing date of the provisional application if no nonprovisional
application claiming benefit of the provisional application under 35
U.S.C. 119(e) has been filed). 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, any benefit derived from the filing of a
disclosure document may also be obtained from the filing of a
provisional application.
A provisional application is, however, more useful 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, which is not a patent
application, may only be used as evidence of a conception date of an
invention under 35 U.S.C. 104 and therefore 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) the 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.
The Office has determined that it is now appropriate to eliminate 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 will continue to accept disclosure documents until February
1, 2007, and plans to return a flyer to each person submitting a
disclosure document notifying him or her that the Office is terminating
the Disclosure Document Program and will no longer accept disclosure
documents on or after February 1, 2007. For disclosure documents
received in the Office on or after February 1, 2007 (regardless of the
date indicated on a postmark), the Office will return the disclosure
document (with any fee included) to the person who submitted it (if
possible) with a flyer notifying him or her that the Office has
terminated the Disclosure Document Program.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is 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 amended
to remove and reserve paragraph (c) in view of the elimination of the
Disclosure Document Program.
Response to comments: The Office published a notice proposing changes
to eliminate the Disclosure Document Program. See Changes to Eliminate the
Disclosure Document Program, 71 FR 17399 (Apr. 6, 2006), 1306 Off. Gaz.
Pat. Office 22 (May 2, 2006) (proposed rule). The Office received comments
from the American Intellectual Property Law Association (AIPLA), the United
Inventors Association (UIA), and 23 individuals. The comments and the
Office's responses to the comments follow:
Comment 1: Several comments supported the Office
proposal to eliminate the Disclosure Document Program, citing confusion
by independent inventors regarding the benefits supplied by a
disclosure document.
Response: The Office is in this final rule proceeding with the
elimination of the Disclosure Document Program.
Comment 2: Several comments suggested it was in the
best interest of independent inventors to spend $10.00 for a disclosure
document filing rather than spending $100.00 for a provisional
application filing, and that only large entities could afford the
provisional application filing fee. Another comment argued that
independent inventors do not have the funds to pay an attorney to file
a provisional application.
Response: It is inappropriate to just compare fees.
The benefits of a provisional application are far greater than any
benefit provided by a disclosure document. The majority of provisional
applications filed since fiscal year 2002 are by small entity
applicants, which does not support the position that small entities
cannot afford the provisional application filing fee or the costs
involved in preparing a provisional application.
Comment 3: Several comments argued that the one-year
protection period afforded by a provisional application was too short.
Response: It is not appropriate to compare the
one-year time period in 35 U.S.C. 119(e) to the two-year time period
during which the Office will retain a disclosure document. A disclosure
document is not a patent application and is not accorded a patent
application filing date. A disclosure document has no more evidentiary
value than an abandoned provisional application for which no benefit is
ever claimed under 35 U.S.C. 119(e). The Office will retain an
abandoned provisional application for at least five years from the
filing date of the provisional application, even if no nonprovisional
application claiming benefit of the provisional application under 35
U.S.C. 119(e) has been filed.
Comment 4: Several comments argued benefits to
filing a provisional application cannot be compared to the benefits of
filing a disclosure document because the benefit of constructive
reduction to practice is the same regardless of which type of patent
application is filed.
Response: A provisional application is, 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, considered a constructive reduction to practice of an
invention as of the filing date accorded the application if the
provisional application 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. A disclosure document, however, is not a
patent application and therefore is not considered a constructive
reduction to practice of an invention and may only be used as evidence
of a date of conception of an invention under 35 U.S.C. 104.
Comment 5: Several comments argued that the
Disclosure Document Program should not be eliminated as long as the
United States remains a first-to-invent country, and also that
inventors should have the right to use the government as a witness
through the Disclosure Document Program without relying upon a third
party for corroboration.
Response: The fact that the United States uses a
first-to-invent standard in determining the right to a patent does not
make the Disclosure Document Program necessary. The United States used
a first-to-invent standard in determining the right to a patent prior
to 1969 without the need for a Disclosure Document Program. In
addition, the core mission of the Office is the granting and issuing of
patents and the registration of trademarks, and the disseminating to
the public information with respect to patents and trademarks.
See 35 U.S.C. 2(a). There is no reason why it is necessary
or germane to its core missions for the Office to act as witness for
inventors through the Disclosure Document Program. Furthermore, to the
extent that the Disclosure Document Program acts as an evidence
depository for the purpose of establishing a conception date, a
provisional application can be used in the same fashion if necessary.
Comment 6: One comment argued that the Office
assertions 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" are not supported by verifiable evidence, such as
opinion surveys. One comment argued that because of the long duration
between submitting a disclosure document and obtaining a benefit from
it, it is difficult to measure actual benefit. Another comment argued
that it is unfair to judge the "conversion rate" of disclosure
documents into provisional applications as an indicator of actual
benefit.
Response: The Office issued over three million patents since 1976,
and of these three million patents only 1,330 (0.04 %) reference a
disclosure document. Between fiscal years 2002 and 2005, the Office
issued over 700,000 patents. While 86,087 disclosure documents were
filed with the Office between fiscal years 2002 and 2005, of the over
700,000 patents issued between fiscal years 2002 and 2005, only 223
(0.03 %) reference a disclosure document. That is, while
the Office receives a large number of disclosure documents, there are
relatively few instances in which a disclosure document is referenced
in a subsequent patent. Thus, the Office maintains that few, if any,
inventors obtain any actual benefit from a disclosure document
(i.e., through the filing of a subsequent patent
application). The Office has received sufficient feedback through its
independent inventor outreach programs and from other Government
agencies (e.g., the Federal Trade Commission) to conclude
that some inventors who use the Disclosure Document Program believe
that they are actually filing an application for a patent. The Office
has also been sued by an inventor who was under the impression that a
disclosure document was a patent application. See Akbar v.
Dickinson, Civil Action No. 99-1286 HHK (D.D.C. 1999) (Office
motion to dismiss granted).
Comment 7: Several comments argued a disclosure
document filing permits an independent inventor to tell potential
investors the invention is "registered" with the Office, and
encourages potential investors to sign non-disclosure agreements. One
comment argued the Disclosure Document Program gives an "actual
benefit" to inventors by easing fears that someone will steal their
invention.
Response: The Document Disclosure Program was not
and is not intended to be a vehicle for obtaining "registrations"
from the Office. The Office does not "register" materials submitted
in a disclosure document. There are commercial invention registries
available that might be able to serve the registration functions
desired by inventors. An inventor can ease fears that someone will
steal his or her invention by taking other steps, such as the filing of
a provisional application, or through the use of a commercial invention
registry.
Comment 8: One comment cited a disclosure document as being instrumental
in the receipt of his patent.
Response: A disclosure document may be relied upon
as evidence of conception of invention in support of an affidavit or
declaration under Sec. 1.131. See MPEP 1706. A disclosure
document, however, is only one of the types of evidence that may be
relied upon as evidence of conception of invention in support of an
affidavit or declaration under Sec. 1.131. See MPEP 715.07 (an
affidavit or declaration under Sec. 1.131 may be supported by, for
example, attached sketches, attached blueprints, attached photographs,
attached reproductions of notebook entries, an accompanying model,
attached supporting statements by witnesses, testimony given in an
interference, or a disclosure document). The overwhelming majority of
affidavits or declarations under Sec. 1.131 do not rely upon a disclosure
document as evidence of conception of invention and are acceptable
without a disclosure document. Thus, a disclosure document is not
necessary for an applicant to establish a prior date of invention in an
affidavit or declaration under Sec. 1.131.
A disclosure document may also be relied upon during an interference
proceeding to provide corroboration for a conception of the invention.
The actual use of a disclosure document during an interference
proceeding occurs about once every decade. In contrast, between 86
(fiscal year 2004) and 287 (fiscal year 1997) interferences have been
declared each year during the last ten fiscal years. This incidental
use of disclosure documents during interference proceedings likewise
does not justify continuation of the Disclosure Document Program.
Comment 9: Many comments argued that independent
inventors do not generally keep a fully documented, updated, and
witnessed inventor's notebook and thus rely on the Disclosure Document
Program. One comment argued that elimination of the Disclosure Document
Program would lead to increased use of self-addressed stamped envelopes
(SASE) and a decrease of intellectual property creators registering a
copyright with the Library of Congress. One comment argued individual
inventors can achieve stronger protections through the use of an
inventor's notebook, because of possibility of witnesses, a disclosure
more thorough than that in the Disclosure Document Program, and the
lack of an expiration date.
Response: There is no reason why inventors could not
use a properly maintained inventor's laboratory notebook as an
alternative to the Disclosure Document Program. An inventor's
laboratory notebook requires no filing fee and has no expiration date.
Comment 10: One comment included a proposal to privatize and manage
the Disclosure Document Program should the Office decide to eliminate the
Disclosure Document Program.
Response: The Disclosure Document Program is not an
inherently governmental function of the Office, and there are no
statutory provisions relating to the Disclosure Document Program.
Therefore, it is not necessary for any non-governmental entity that
wishes to manage a "disclosure document" type program to obtain
approval from the Office.
Comment 11: One comment stated the Disclosure
Document Program should remain in effect, with filings re-named
"Non-Patent Information Record" to record idea conception. One
comment argued for the retention of the Disclosure Document Program,
along with the creation of a new "independent inventor patent"
having a term of seven years.
Response: As discussed previously, the core mission
of the Office is the granting and issuing of patents and the
registration of trademarks, and the disseminating to the public
information with respect to patents and trademarks. Renaming or
enhancing the Disclosure Document Program would not advance the core
missions of the Office. In addition, viable alternatives to disclosure
documents, such as notebooks and commercial invention registries, and
provisional patent applications, currently exist. The creation of a new
"independent inventor patent" having different rights and/or patent
term would require a change to the patent statutes, and thus extends
beyond the issues relating to the existing 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 in this final rule 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 commercially available "electronic notebooks" that may be
used to document evidence of conception of an invention. In addition,
inventors may maintain a logbook containing fixed pages that may be
witnessed to document evidence of conception of an invention. These
alternatives to a disclosure document are available to inventors at a
cost that is comparable to or less than the fee for a disclosure
document. 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 final rule
will thus not impose any additional reporting or recordkeeping
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.
Not withstanding 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 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).
Sec. 1.21 [Amended]
. 2. Section 1.21 is amended by removing and reserving paragraph (c).
October 27, 2006 Jon W. Dudas
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office