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(99) DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 2005-P-059]
Changes to the Transitional Procedures for
Limited Examination After Final Rejection in
Certain Applications Filed Before June 8, 1995
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The Uruguay Round Agreements Act (URAA) provided for a
transitional procedure for the limited examination after
final rejection in certain applications filed before June 8, 1995. The
United States Patent and Trademark Office (Office) is changing its
final action practice for the Office action immediately following a
submission under the URAA transitional limited examination procedure.
The Office is changing this final action practice to conform with the
intent of the URAA and to facilitate the completion of prosecution of
applications to which the URAA transitional limited examination
procedure applies.
DATES: Effective Date: The change in practice in this notice applies to
any submission under 37 CFR 1.129(a) filed on or after June 8, 2005.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Attorney,
Office of the Deputy Commissioner for Patent Examination Policy, by
telephone at (571) 272-8800, 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 Robert W. Bahr.
SUPPLEMENTARY INFORMATION: The URAA provided (among other things) for the
Office to prescribe regulations to provide further limited (re)examination
after final rejection of applications that have been pending for two years
or longer as of June 8, 1995, taking into account any reference made in
such application to any earlier filed applications under 35 U.S.C. 120,
121, or 365(c). See Pub. L. 103-465, Sec. 532(a)(2)(A), 108 Stat. 4809,
4985 (1994). The Statement of Administration Action that accompanied the
URAA indicated that the purpose of this transitional procedure for the
limited examination of certain applications filed before June 8, 1995,
was to facilitate the completion of the prosecution of applications
pending in the Office as of June 8, 1995. See Uruguay Round
Agreements Act: Statement of Administrative Action, H.R. Doc. No.
103-316, at 1005 (1994), reprinted in 1994 U.S.C.C.A.N. 4040, 4298
(emphasis added). Section 102(d) of the URAA (19 U.S.C. 3512(d))
provides that "[t]he statement of administrative action approved by
the Congress under section 101(a) shall be regarded as an authoritative
expression by the United States concerning the interpretation and
application of the Uruguay Round Agreements and this Act in any
judicial proceeding in which a question arises concerning such
interpretation or application." See also RHP Bearings, Ltd. v. United
States, 288 F.3d 1334, 1344 n.7 (Fed. Cir. 2002).
The Office implemented this provision in the URAA for the
further limited examination of certain applications filed before June
8, 1995, in a then new 37 CFR 1.129(a). See Changes to Implement
20-Year Patent Term and Provisional Applications, 60 FR 20195
(Apr. 25, 1995), 1174 Off. Gaz. Pat. Office 15 (May 2, 1995)
(final rule) (Twenty-Year Term Final Rule). With respect to the
question of whether the Office action following a submission under 37
CFR 1.129(a) would be made final, the preamble to the Twenty-Year Term
Final Rule indicated that: The next [Office] action following timely
payment of the fee set forth in [37 CFR] 1.17(r) will be equivalent
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to a first action in a continuing application. * * * Thus, under [37
CFR] 1.129(a), if the first submission after final rejection was
initially denied entry in the application because (1) new issues were
raised that required further consideration and/or search, or (2) the
issue of new matter was raised, then the next action in the application
will not be made final. Likewise, if the second submission after final
rejection was initially denied entry in the application because (1) new
issues were raised that required further consideration and/or search,
or (2) the issue of new matter was raised, then the next action in the
application will not be made final.
See Changes to Implement 20-Year Patent Term and Provisional
Applications, 60 FR at 20199, 1174 Off. Gaz. Pat. Office at 18. This
statement of Office practice was subsequently incorporated into the
Manual of Patent Examining Procedure (MPEP). See MPEP 706.07(g) (8th
ed. 2001) (Rev. 2, May 2004).
It has now been a decade since the change to twenty-year patent
term in the URAA. Nevertheless, there are still applications filed
before June 8, 1995, pending before the Office in which a second (or
both first and second) submission under 37 CFR 1.129(a) may be filed,
though the Office now receives fewer than 100 submissions under 37 CFR
1.129(a) each year. This final action practice for the Office action
immediately following a submission under 37 CFR 1.129(a) is having a
greater than anticipated (in 1995) effect in working against the
completion of prosecution of applications filed before June 8, 1995. In
addition, a review of the Statement of Administration Action reveals
that the final action practice for the Office action immediately
following a submission under 37 CFR 1.129(a) (treating such Office
action as the equivalent to a first action in a continuing application)
was not the contemplated implementation of the transitional procedure
provided for in Sec. 532(a)(2)(A) of the URAA. See Uruguay
Round Agreements Act: Statement of Administrative Action, H.R. Doc. No.
103-316, at 1006, reprinted in 1994 U.S.C.C.A.N. at 4298 ("[t]he
[Office] will consider the merits of the first and second such
submission, to the extent that such submissions would have been
entitled to consideration if made prior to final rejection. The
[Office] will modify such final rejection or allow such application,
as appropriate, based upon consideration of such submissions").
Therefore, the Office is changing its final action practice for the
Office action immediately following a submission under 37 CFR 1.129(a)
to bring about the completion of prosecution of applications to which
the transitional procedure set forth in 37 CFR 1.129(a) applies.
Under the final action practice for the Office action
immediately following a submission under 37 CFR 1.129(a) now being
adopted by the Office: The next Office action following timely filing
of a submission under 37 CFR 1.129(a) (and payment of the fee set forth
in 37 CFR 1.17(r)) will be equivalent to the next Office action
following a reply to a non-final Office action. Under existing second
Office action final practice, such an Office action on the merits shall
be made final, except where the examiner introduces a new ground of
rejection that is neither necessitated by applicant's amendment of the
claims nor based on information submitted in an information disclosure
statement filed during the period set forth in 37 CFR 1.97(c) with the
fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a). Any
information disclosure statement submitted under 37 CFR 1.129(a)
without the statement specified in 37 CFR 1.97(e) will be treated as
though it had been filed within the time period set forth in 37 CFR
1.97(c) with the fee set forth in 37 CFR 1.17(p) (in view of
applicant's payment of the fee set forth in 37 CFR 1.17(r)).
Under Sec. 532(a)(2)(A) of the URAA (and the Statement of
Administration Action), an applicant whose application is eligible for
the transitional further limited examination procedure set forth in 37
CFR 1.129(a) is entitled to consideration of two after final
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submissions. Thus, if such an applicant has filed one submission under
37 CFR 1.129(a) and the application is again under a final rejection,
the applicant is entitled to only one additional submission under 37
CFR 1.129(a). If such an applicant has filed two submissions under 37
CFR 1.129(a) and the application is again under a final rejection,
Sec. 532(a)(2)(A) of the URAA (and the Statement of Administration Action)
and 37 CFR 1.129(a) do not entitle the applicant to consideration of
any additional submissions under 37 CFR 1.129(a). The applicant is, of
course, entitled to consideration of an additional submission if the
submission meets the conditions set forth in 37 CFR 1.116.
The Office recognizes that its former final action practice for
the Office action immediately following a submission under 37 CFR
1.129(a) resulted in some applicants effectively receiving
consideration of more than two submissions under 37 CFR 1.129(a).
Section 532(a)(2)(A) of the URAA and the Statement of Administration
Action, however, provide only for consideration of a first and second
submission under 37 CFR 1.129(a), and do not contemplate each such
submission being treated as the equivalent of a continuing application.
That the Office's former final action practice for the Office action
immediately following a submission under 37 CFR 1.129(a) resulted in
some applicants effectively receiving consideration of more than two
submissions under 37 CFR 1.129(a) does not require the Office to
continue to follow an after final practice having a result not
contemplated by Sec. 532(a)(2)(A) of the URAA and the Statement of
Administration Action. See In re The Boulevard Entertainment,
Inc., 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)
(that the Office has followed an improper practice in certain
applications does not require the Office to follow that improper
practice in all applications).
Finally, the Twenty-Year Term Final Rule also indicated that
the Office action following timely payment of the fee set forth in 37
CFR 1.17(r) will be equivalent to a first action in a continuing
application due to the amount of the fee specified in 37 CFR 1.17(r).
See Changes to Implement 20-Year Patent Term and Provisional
Applications, 60 FR at 20199, 1174 Off. Gaz. Pat. Office
at 18. The fee amount specified in 37 CFR 1.17(r) does not justify
a continuation of the final action practice set forth in the
Twenty-Year Term Final Rule because: (1) The fee amount at 37 CFR
1.17(r) is no longer equivalent to the fee required for filing an
application (the filing, search, and examination fee); and (2) the
applications still eligible for submissions under 37 CFR 1.129(a) tend
to be more burdensome than the "usual" continuing application
(e.g., these applications tend to have more claims, have more
continuity information, and have more related copending applications).
Therefore, the fee amount specified in 37 CFR 1.17(r) is no longer a
sufficient justification for treating the Office action following a
submission under 37 CFR 1.129(a) as the equivalent to a first action in
a continuing application.
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 previously approved by OMB under OMB control number 0651-0031.
The Office is not resubmitting any 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 0651-0031.
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.
Section 706.07(g) of the Manual of Patent Examining Procedure
will be revised in due course to reflect this change in practice.
April 20, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1295 OG 22]