| PCT, International Applications |
Referenced Items (286, 287, 288, 289, 290, 291, 292, 293, 294, 295, 296, 297, 298, 299, 300, 301, 302, 303, 304, 305) |
(289) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2009-0025]
RIN 0651-AC34
July 2009 Revision of Patent Cooperation Treaty Procedures
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (USPTO) is
revising 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 take effect
on July 1, 2009. These amendments result in a change to the procedure
under the PCT whereby applicants may make amendments to the claims in
an international application.
DATES: Effective Date: The changes to 37 CFR 1.485 are effective on
July 1, 2009.
FOR FURTHER INFORMATION CONTACT: 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.
SUPPLEMENTARY INFORMATION: During the September 2008 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 July 1, 2009. The amended PCT
Regulations were published in the PCT Gazette of December 11, 2008 (38/
2008), at pages 166-167. The amendments include provisions which modify
the procedures for making amendments to the claims in an international
application.
The Patent Cooperation Treaty (PCT) enables an applicant to file
one application, "an international application" or a "PCT
application," in a standardized format in a PCT Receiving Office and
have that application acknowledged as a regular national or regional
filing in as many Contracting States to the PCT as the applicant
desires. The requirements for PCT applications are specified in the PCT
Treaty Articles and the Regulations issued under the PCT Treaty (the
PCT Regulations). Certain requirements of the PCT Treaty and PCT
Regulations are reiterated in the USPTO's rules of practice in 37 CFR
for the convenience of patent applicants. Changes to the PCT
Regulations (PCT Rules 46.5 and 66.8) that govern the manner of making
amendments to the claims in international applications will become
effective on July 1, 2009. Under the current PCT Regulations,
applicants are required to submit replacement pages for only those
pages which contain changes, where under the revised PCT Regulations
applicants will be required to submit a complete set of the claims when
amending any of the claims. The USPTO's rules of practice in 37 CFR (37
CFR 1.485) set forth the current practice for amending claims and must
be changed to be consistent with the changes to the PCT Regulations.
The changes to 37 CFR 1.485 are effective on July 1, 2009, and
apply to any amendment filed in an international application on or
after that date regardless of the filing date of the international
application.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 1, is amended as
follows:
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Section 1.485: Section 1.485 is amended to require that amendments
to the claims in a PCT international application must be made in
accordance with PCT Rule 66.8.
Rulemaking Considerations
A. Administrative Procedure Act: The change in this final rule merely
revises the USPTO's rules of practice to conform to the requirements of
the PCT Regulations that become effective on July 1, 2009. 35 U.S.C. 364(a)
provides that international applications shall be processed by the USPTO in
accordance with the applicable provisions of the PCT, the Regulations under
the PCT and Title 35 of the United States Code. Therefore, these rule
changes involve interpretive rules or rules of agency practice and
procedure under 5 U.S.C. 553(b)(A). Accordingly, the changes in this final
rule may be adopted without prior notice and opportunity for public comment
under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under
5 U.S.C. 553(d). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37,
87 U.S.P.Q.2d 1705, 1710 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and
thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment on rulemaking
for "`interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice."' (quoting 5 U.S.C.
553(b)(A))).
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553 (or any
other law), neither a regulatory flexibility analysis nor a certification
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required.
See 5 U.S.C. 603.
C. Executive Order 13132 (Federalism): This rulemaking does not contain
policies with federalism implications sufficient to warrant preparation of
a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
D. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of Executive
Order 12866 (Sept. 30, 1993).
E. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
Tribes; (2) impose substantial direct compliance costs on Indian Tribal
governments; or (3) preempt Tribal law. Therefore, a Tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
F. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
G. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of Executive
Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
I. Executive Order 12630 (Taking of Private Property): This rulemaking
will not effect a taking of private property or otherwise have taking
implications under Executive Order 12630 (Mar. 15, 1988).
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J. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule the USPTO
will submit a report containing the final rule and other required
information to the United States Senate, the United States House of
Representatives, and the Comptroller General of the Government
Accountability Office.
K. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and Tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
L. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
M. National Technology Transfer and Advancement Act: The requirements
of section 12(d) of the National Technology Transfer and Advancement Act
of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking
does not contain provisions which involve the use of technical standards.
N. 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 USPTO 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,
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.
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).
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. 2. Section 1.485 is revised to read as follows:
§ 1.485 Amendments by applicant during international preliminary
examination.
The applicant may make amendments at the time of filing the Demand.
The applicant may also make amendments within the time limit set by the
International Preliminary Examining Authority for reply to any
notification under § 1.484(b) or to any written opinion. Any such
amendments must be made in accordance with PCT Rule 66.8.
June 24, 2009 JOHN J. DOLL
Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of the
United States Patent and Trademark Office
[1344 OG 222]