United States Patent and Trademark Office OG Notices: 20 Nov 2007
Interim Procedures for Implementing the April 1, 2007
Changes to the Regulations under the Patent Cooperation
Treaty and Status of Proposed Fee Changes
On February 16, 2007, the United States Patent and Trademark Office
(USPTO) published a notice of proposed rule making in the Federal Register
(See April 2007 Revision of Patent Cooperation Treaty Procedures, 72 Fed.
Reg. 7583) 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. The amendments to the PCT Regulations will: (1)
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; (2) provide a means for applicants to
insert a missing portion of an international application without the loss
of the international filing date; and (3) clarify the circumstances and
procedures under which the correction of an obvious mistake may be made in
an international application. In that the proposed changes to the U.S.
rules of practice will not become effective until after the effective date
of the changes to the PCT Regulations, the USPTO is hereby giving notice of
the interim procedures that it will follow until such time as the proposed
changes to title 37 of the Code of Federal Regulations become final. This
notice also serves to clarify the status of the proposed changes to the
search and supplemental search fees.
With respect to the PCT Rule changes which are directed to providing a
means for applicants to insert a missing portion of an international
application without the loss of the international filing date and
clarifying the circumstances and procedures under which the correction of
an obvious mistake may be made in an international application, the USPTO
will implement these changes under the general authority granted under 35
U.S.C. 364(a), which provides that "[i]nternational applications shall be
processed by the Patent and Trademark Office when acting as a Receiving
Office, International Searching Authority, or International Preliminary
Examining Authority, in accordance with the applicable provisions of the
treaty, the Regulations, and this title." The specific provisions relating
to the later submission of drawings currently present in 37 CFR 1.437(a)
and (b) are hereby waived, sua sponte, pursuant to 37 CFR 1.183 in favor of
the more applicant friendly provisions of amended PCT Rule 20.
The USPTO will treat requests for the restoration of the right of
priority under the provisions of 37 CFR 1.182, until the rule making
process is completed. Grantable requests for restoration of the right of
priority must be filed within two months from the date of expiration of the
priority period as defined by new PCT Rule 2.4, and must be accompanied by:
(i) the requisite fee for a petition under 37 CFR 1.182 as set forth in 37
CFR 1.17(f) (currently $400); (ii) 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; and (iii) in
accordance with the USPTO's notification to the World Intellectual Property
Organization that it only intends to decide these matters under the
unintentional standard provided in new PCT Rule 26bis.3(a)(ii), a statement
that the delay in filing the international application within the priority
period was unintentional. The Director may require additional information
where there is a question whether the delay was unintentional. If the
applicant makes a request for early publication under PCT Article 21(2)(b),
any of requirements (i), (ii), or (iii) above which are 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. 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 to such prior application in any
application which enters 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.
Finally, regarding the proposed changes to the search fee and
supplemental search fee set forth in 37 CFR 1.445(a)(2) and (3), the fees
currently in effect will remain until such time as a final rule is issued
and becomes effective. Specifically, until a final rule becomes effective
the international search fee will continue to be $300.00 where there is a
prior U.S. national application under 35 U.S.C. 111(a) which meets the
requirements set forth in 37 CFR 1.445(a)(2)(i) or (ii) and $1000.00 in all
other situations, and the supplemental search fee will continue to be
$1000.00 per invention.
Questions regarding this notice may be directed to Richard R. Cole,
Senior Legal Examiner, Office of PCT Legal Administration (OPCTLA) directly
by telephone at (571) 272-3281, or by facsimile at (571) 273-0459.
March 30, 2007 JOHN LOVE
Deputy Commissioner for
Patent Examination Policy