United States Patent and Trademark Office OG Notices: 13 March 2007
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-C-2006-0057]
RIN 0651-AC09
April 2007 Revision of Patent Cooperation Treaty Procedures
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
SUMMARY: The United States Patent and Trademark Office (USPTO or Office) is
proposing to amend the rules of practice in title 37 of the Code of Federal
Regulations (CFR) to conform them to certain amendments made to the
Regulations under the Patent Cooperation Treaty (PCT) that will take effect
on April 1, 2007. These amendments will result in the addition of a
mechanism to the PCT system whereby applicants may request that the right
to claim priority be restored in applications that meet certain
requirements. In addition, these amendments will provide a means for
applicants to insert a missing portion of an international application
without the loss of the international filing date. These amendments also
will clarify the circumstances and procedures under which the correction of
an obvious mistake may be made in an international application. Finally,
the Office is proposing to revise the search fee for international
applications.
Comment Deadline Date: Written comments must be received on or before
March 19, 2007. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message via the
Internet addressed to: AC9.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) 273-0459, marked to the attention of Mr. Richard Cole. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet.
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://frwebgate.access.gpo.gov/cgibin/leaving.
cgi?from=leavingFR.html&log=linklog&to=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: Richard R. Cole, Legal Examiner, Office of
PCT Legal Administration (OPCTLA) directly by telephone at (571) 272-3281,
or by facsimile at (571) 273-0459.
SUPPLEMENTARY INFORMATION: During the September-October 2005 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 April 1, 2007. The amended PCT Regulations
were published in the PCT Gazette of February 23, 2006 (08/2006), in
section IV, at pages 5496-5541. The purposes of these amendments are to:
(1) Bring the provisions of the PCT into closer alignment with the
provisions of the Patent Law Treaty (PLT); and (2) clarify the
circumstances and procedures under which the correction of an obvious
mistake may be made in an international application.
Alignment with the PLT: The PLT provides for: (1) Restoration of
applicant's right to claim priority under certain situations (PLT Article
13(2)); (2) insertion of a missing portion of an application without the
loss of the filing date (PLT Article 5(6)); and (3) substitution of the
description and drawings upon filing with a reference to a previously filed
application (PLT Article 5(7)). The present amendments to the PCT
Regulations will provide similar mechanisms for applicants using the PCT
system.
With regard to restoration of applicant's right to claim priority under
certain situations (PLT Article 13(2)), PCT Rule 26bis has been amended to
provide for the restoration of the right to claim priority in international
applications which have been filed between twelve and fourteen months after
the priority date and in which the delay in filing the international
application was either in spite of due care or unintentional. It must be
noted that PCT Rule 49ter provides for designated Offices whose national
law is incompatible with the PCT provisions concerning restoration of the
right of priority to take a reservation with respect to the effects of this
provision on national applications. The United States has taken this
reservation pending passage of legislation that would implement the PLT in
the United States. Therefore, any restoration of a right of priority by the
United States Receiving Office under this section, or by any other
Receiving Office under the provisions of PCT Rule 26bis.3, will not entitle
applicants to a right of priority in any application which has entered the
national stage under 35 U.S.C. 371, or in any application filed under 35
U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and 365(c) to an
international application in which the right of priority has been restored.
Whether or not applicant is entitled to the right of priority continues to
be governed by whether applicant has satisfied the provisions of 35 U.S.C.
119, 120, and 365.
It must also be noted that even though restoration of such a right will
not entitle applicant to the right of priority in a subsequent United
States application, the priority date will still govern all PCT time
limits, including the thirty-month period for filing national stage papers
and fees under 37 CFR 1.495. PCT Article 2(ix), which defines "priority
date" for purposes of computing time limits, contains no limitation that
the priority claim be valid. Thus, for example, in an international
application containing an earliest priority claim to a German application
filed thirteen months prior to the filing date of the international
application, the filing date of the German application will be used as the
basis for computing time limits under the PCT, including the thirty-month
time period set forth in 37 CFR 1.495 to submit the basic national fee
(Sec. 1.492(a)) to avoid abandonment, even though applicant would not be
entitled to priority to the German application in the United States
national phase since the German application was filed more than twelve
months from the international filing date. See 35 U.S.C. 119(a) and 365(b).
Concerning insertion of a missing portion of an application without the
loss of the filing date (PLT Article 5(6)) and substitution of the
description and drawings upon filing with a reference to a previously filed
application, these provisions could not be implemented to the extent
provided in the PLT absent amendment of the PCT Articles. However, similar
provisions have been made in the PCT by amending PCT Rules 4 and 20 to
allow for the inclusion of an incorporation by reference statement on the
PCT Request form. Applicants may then rely on this statement to insert
portions of the international application (including the entire
description, claims, and/or drawings) which were missing upon the
international filing date. 37 CFR 1.412(c)(1) already provides that the
USPTO, in its capacity as a PCT Receiving Office, will accord international
filing dates in accordance with PCT Rule 20. Therefore, no change to the
rules of practice in title 37 CFR is necessary to implement these
provisions, other than the deletion of 37 CFR 1.437(b) due to the fact that
missing drawings are no longer handled in a manner different from the
description and claims.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 1, is proposed to be
amended as follows:
Section 1.17: Section 1.17(t) is proposed to be amended to set forth the
fee for requesting restoration of the right of priority.
Section 1.57: Section 1.57(a)(2) is proposed to be amended to reflect
that omitted portions of international applications, which applicant
desires to be effective in other designated States, must be submitted in
accordance with PCT Rule 20.
Section 1.437: Section 1.437(a) is proposed to be amended for clarity
and to remove inaccurate language currently present in the paragraph.
Section 1.437(b) is proposed to be deleted to reflect the fact that missing
drawings will no longer be treated differently from missing parts of the
description or claims. Section 1.437(c) is proposed to be redesignated as
Sec. 1.437(b).
Section 1.445: Section 1.445(a) is proposed to be amended to set a
search fee that more accurately reflects the cost of conducting a search
and preparing a Chapter I written opinion in an international application.
The Activity-Based-Cost analysis for the search and preparation of search
and preparing Chapter I written opinions for international applications
reveals that the average cost of this activity is over $1,800.00.
Therefore, the Office is proposing to revise Sec. 1.445(a) to provide for
a search fee (and supplemental search fee) of $1,800.00. In addition, the
Office is proposing to revise Sec. 1.445(a) to provide that this $1,800.00
search fee is applicable, regardless of whether there is a corresponding
prior nonprovisional application under 35 U.S.C. 111(a), a corresponding
prior provisional application under 35 U.S.C. 111(b), or no corresponding
prior provisional or nonprovisional application under 35 U.S.C. 111. The
Office currently provides a reduced search fee if there is a corresponding
prior nonprovisional application under 35 U.S.C. 111(a) and such
application is adequately identified in the international application or
accompanying papers at the time of filing the international application.
The current backlog of applications under 35 U.S.C. 111(a) awaiting
examination is such that it is no longer deemed appropriate to provide a
reduced fee or other incentive for applicants to file an application under
35 U.S.C. 111(a) prior to or essentially parallel with the filing of an
international application.
Section 1.452: Section 1.452 is proposed to be added to provide for
restoration of the right of priority in international applications (subject
to the enumerated conditions and limitations).
Section 1.452(a) provides that applicants may request restoration of the
right of priority if the international application was filed within
fourteen months from the priority date and the delay in filing the
international application was unintentional.
Section 1.452(b) provides that any request for restoration must be filed
within fourteen months from the priority date and must be accompanied by:
(1) A notice adding the priority claim, if applicable; (2) the requisite
fee; and (3) a statement that the entire delay was unintentional.
Section 1.452(c) provides that, in cases where applicant has requested
early publication, the requirements under Sec. 1.452(b) must be submitted
prior to completion of the technical preparations for international
publication.
Section 1.452(d) sets forth that restoration of a priority claim by the
United States Receiving Office under this section, or by any other
Receiving Office under the provisions of PCT Rule 26bis.3, will not entitle
applicants to a right of priority in any application which has entered the
national stage under 35 U.S.C. 371, or in any application filed under 35
U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and 365(c) to an
international application in which the right to priority has been restored.
Section 1.465: Section 1.465(b) is proposed to be amended for
clarity and to remove the limitation that the priority claim must be
"valid" in order to be used as the basis for computing time limits under
the PCT.
Section 1.465(c) is proposed to be deleted as unnecessary, as the
obligation of the United States Receiving Office to proceed under PCT Rule
26bis.2 arises under 35 U.S.C. 361. In addition, reference to Rule
20.2(a)(i) or (iii) is no longer appropriate in view of the amendments to
PCT Rule 20.
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 (if
adopted) will not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b). The significant changes
proposed in this notice are: (1) Provisions for a restoration of a right of
priority in certain limited situations; and (2) an adjustment of the search
and supplemental search fee to more accurately reflect the cost of
conducting a search and preparing a Chapter I written opinion in an
international application.
The PCT enables United States applicants to file one application (an
international or PCT application) in a standardized format in English in
the United States Receiving Office (the United States Patent and Trademark
Office) and have that application acknowledged as a regular national or
regional filing in as many PCT Contracting States as the applicants desire
to seek patent protection. See Manual of Patent Examining Procedure (MPEP)
1801. The primary benefit of the PCT system is the ability to delay the
expense of submitting papers and fees to the PCT national offices. See MPEP
1881.
35 U.S.C. 376(b) provides that the Director shall prescribe the amount
of the search fee, the supplemental search fee, and such other fees as
established by the Director. Pursuant to the authority in 35 U.S.C. 376(b),
this notice proposes to adjust the search fee in Sec. 1.445(b)(2)(iii) and
the supplemental search fee in Sec. 1.445(b)(3) from $1,000.00 to
$1,800.00 (an increase of $800.00). This proposed adjustment to the search
fee and supplemental search fee is to make these fees more accurately
reflect the cost of conducting a search and preparing a Chapter I written
opinion in an international application.
The PCT does not preclude United States applicants from filing patent
applications directly in the patent offices of those countries which are
Contracting States of the PCT (with or without previously having filed a
regular national application under 35 U.S.C. 111(a) or 111(b) in the United
States) and taking advantage of the priority rights and other advantages
provided under the Paris Convention and the World Trade Organization (WTO)
administered Agreement on Trade-Related Aspects of Intellectual Property
(TRIPs Agreement). See MPEP 1801. That is, the PCT is not the exclusive
mechanism for seeking patent protection in foreign countries, but is
instead simply an optional alternative route available to United States
patent applicants for seeking patent protection in those countries that are
Contracting States of the PCT. See id.
In addition, an applicant filing an international application under the
PCT in the United States Receiving Office (the United States Patent and
Trademark Office) is not required to use the United States Patent and
Trademark Office as the International Searching Authority. The European
Patent Office (except for applications containing business method claims)
or the Korean Intellectual Property Office may be elected as the
International Searching Authority for international applications filed in
the United States Receiving Office. The applicable search fee if the
European Patent Office is elected as the International Searching Authority
European is $2,059.00 (set by the European Patent Office), and the
applicable search fee if the Korean Intellectual Property Office is elected
as the International Searching Authority is $232.00 (set by the Korean
Intellectual Property Office).
In 2003, the Government Accountability Office (GAO) released a report
containing the results of a survey of an expert panel of patent law
attorneys concerning small businesses considering foreign patent protection
with respect to the "cradle to grave" costs of foreign patent protection.
See Experts" Advice for Small Businesses Seeking Foreign Patents,
GAO-03-910 (2003). The GAO concluded that the cost of obtaining and
maintaining foreign patents to be in the range of $160,000 to $330,000. See
Id. at 41.
Therefore, the international search fee increase of $800.00 is not
significant in comparison to the overall costs that a small entity must
incur to obtain international patent protection. In addition, filing an
international application under the PCT is an optional route for an
applicant seeking foreign patent protection, and an applicant who does not
choose to seek foreign patent protection by filing an international
application under the PCT in the United States Receiving Office (the United
States Patent and Trademark Office) is not required to use the United
States Patent and Trademark Office as the International Searching
Authority.
Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes to
eliminate the reduced search fee in Sec. 1.445(b)(2)(i) or (ii) when there
is a corresponding prior nonprovisional application under 35 U.S.C. 111(a)
and thereby adjusting the search fee in the situation in which there is a
corresponding prior nonprovisional application under 35 U.S.C. 111(a) from
$300.00 to $1,800.00 (an increase of $1,500.00). As discussed previously,
this proposed adjustment to the search fee is to make these fees more
accurately reflect the cost of conducting a search and preparing a Chapter
I written opinion in an international application. An applicant has the
option of filing a provisional application under 35 U.S.C. 111(b) (rather
than a nonprovisional application under 35 U.S.C. 111(a)) or not filing a
prior application before filing an international application. These
alternatives are available at a lower overall cost in patent fees (even
with the proposed adjustment in the search fee) than the cost in patent
fees of filing a nonprovisional application under 35 U.S.C. 111(a) before
filing an international application. This is the case even taking into
account the current reduced search fee for there being a corresponding
prior nonprovisional application under 35 U.S.C. 111(a).
Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes to
establish a fee for filing a request for the restoration of the right of
priority of $1,370.00. This fee amount is identical to the fee amount for
petitions to accept an unintentionally delayed claim for priority under 35
U.S.C. 119, 120, 121, or 365(a) (37 CFR 1.55 and 1.78). In addition, the
Office anticipates that very few applicants will file a request for the
restoration of the right of priority (about 100 each year, in comparison to
the over 45,000 international applications filed in the United States
Receiving Office each year).
For the reasons stated previously, the changes proposed in this notice
(if adopted) will not have a significant economic impact on a substantial
number of small entities.
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
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 approved by OMB under OMB control number 0651-0021. The United
States Patent and Trademark Office is not resubmitting an 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 OMB control number
0651-0021.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this burden,
to: (1) 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 A. Clarke, Deputy 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 record keeping requirements, Small
businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is proposed to
be amended as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.17 is amended by revising paragraph (t) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(t) For the acceptance of an unintentionally delayed claim for priority
under 35 U.S.C. 119, 120, 121, or 365(a) (Sec. Sec. 1.55 and 1.78) or for
filing a request for the restoration of the right of priority under Sec.
1.452--$1,370.00.
3. Section 1.57 is amended by revising paragraph (a)(2) to read as
follows:
Sec. 1.57 Incorporation by reference.
(a) * * *
(2) Any amendment to an international application pursuant to this
paragraph shall be effective only as to the United States, and shall have
no effect on the international filing date of the application. In addition,
no request under this section to add the inadvertently omitted portion of
the specification or drawings in an international application designating
the United States will be acted upon by the Office prior to the entry and
commencement of the national stage (Sec. 1.491) or the filing of an
application under 35 U.S.C. 111(a) which claims benefit of the
international application. Any omitted portion of the international
application which applicant desires to be effective as to all designated
States, subject to PCT Rule 20.8(b), must be submitted in accordance with
PCT Rule 20.
* * * * *
4. Section 1.437 is revised to read as follows:
Sec. 1.437 The drawings.
(a) Drawings are required when they are necessary for the understanding
of the invention (PCT Art. 7).
(b) The physical requirements for drawings are set forth in PCT Rule 11
and shall be adhered to.
5. Section 1.445 is amended by revising paragraphs (a)(2) and (a)(3) to
read as follows:
Sec. 1.445 International application filing, processing and search fees.
(a) * * *
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16)--$1,800.00
(3) A supplemental search fee when required, per additional
invention--$1,800.00.
* * * * *
6. Section 1.452 is added to read as follows:
Sec. 1.452 Restoration of right of priority.
(a) If the international application has an international filing date
which is later than twelve months from the priority date but within the
period of fourteen months from the priority date, the right of priority in
the international application may be restored upon request if the delay in
filing the international application within the period of twelve months
from the priority date was unintentional.
(b) A request to restore the right of priority in an international
application under paragraph (a) must be filed not later than fourteen
months from the priority date and must include:
(1) A notice under PCT Rule 26bis.1(a) adding the priority claim, if the
priority claim in respect of the earlier application is not contained in
the international application;
(2) The fee set forth in Sec. 1.17(t); and
(3) A statement that the entire delay was unintentional. The Director
may require additional information where there is a question whether the
delay was unintentional.
(c) If the applicant makes a request for early publication under PCT
Article 21(2)(b), any requirement under paragraph (b) of this section filed
after the technical preparations for international publication have been
completed by the International Bureau shall be considered as not having
been submitted in time.
(d) Restoration of a right of priority to a prior application by the
United States Receiving Office under this section, or by any other
Receiving Office under the provisions of PCT Rule 26bis.3, will not entitle
applicants to a right of priority in any application which has entered the
national stage under 35 U.S.C. 371, or in any application filed under 35
U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and 365(c) to an
international application in which the right to priority has been restored.
7. Section 1.465 is amended by revising paragraph (b) to read as
follows:
Sec. 1.465 Timing of application processing based on the priority date.
* * * * *
(b) When a claimed priority date is corrected under PCT Rule 26bis.1(a),
or a priority claim is added under PCT Rule 26bis.1(a), withdrawn under PCT
Rule 90bis.3, or considered not to have been made under PCT Rule 26bis.2,
the priority date for the purposes of computing any non-expired time limits
will be the filing date of the earliest remaining priority claim under PCT
Article 8 of the international application, or if none, the international
filing date.
* * * * *
February 12, 2007. JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office