| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (166, 167, 168, 169, 170, 171, 172, 173, 174, 175, 176, 177, 178, 179, 180) |
(172) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2005-0015]
RIN 0651-AB75
Changes to Implement Priority
Document Exchange Between
Intellectual Property Offices
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office
(Office) has established a 21st Century Strategic Plan to transform the
Office into a more quality-focused, highly productive, responsive
organization supporting a market-driven intellectual property system.
One goal of the 21st Century Strategic Plan is the electronic exchange
of information and documents between intellectual property offices.
Consistent with this goal, the Office is revising the rules of practice
to provide for the electronic transfer of certified copies of
applications for which priority is claimed under the Paris Convention
(priority applications) from other intellectual property offices with
which the Office has negotiated priority document exchange agreements.
The Office is also revising the rules of practice to permit applicants
to request that the Office permit other participating intellectual
property offices to electronically retrieve certified copies of United
States patent applications without payment of a fee. This electronic
exchange of copies of priority documents will benefit applicants by
reducing the cost of ordering paper certified copies of priority
applications for filing in other participating intellectual property
offices, and will benefit participating intellectual property offices
by reducing the administrative costs associated with handling paper
copies of priority documents and scanning them into their electronic
image record management systems.
DATES: Effective Date: January 16, 2007.
FOR FURTHER INFORMATION CONTACT:
Diana Oleksa,((571) 272-3291), Legal Advisor for IT Policy, Office of
Patent Cooperation Treaty Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy, or Robert A. Clarke ((571)
272-7735), Deputy Director, Office of Patent Legal Administration,
Office of the Deputy Commissioner for Patent Examination Policy, at
PatentEFW.comments@uspto.gov or directly by phone, or by
facsimile to (571) 273-7735, marked to the attention of Ms. Oleksa, or
by mail addressed to: Mail Stop Comments-Patents, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Office has established
a 21st Century Strategic Plan to transform the Office into a more
quality-focused, highly productive, responsive organization supporting
a market-driven intellectual property system. One goal of the 21st
Century Strategic Plan is the electronic exchange of information and
documents between intellectual property offices. The Office plans to
leverage its image file wrapper (IFW) technology by negotiating
agreements with other patent offices to permit the Office to obtain and
provide electronic copies of priority documents. See 35 U.S.C. 2(b)(6)
(authorizes the Office, subject to certain conditions, to use the
services, records, facilities, or personnel of any instrumentality or
foreign patent and trademark office or international organization to
perform functions on its behalf) and 11 (authorizes the Office to
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exchange copies of specifications and drawings of United States patents
and published applications for patents for those of other NAFTA or WTO
member countries). Agreements to obtain and provide such copies have
been established with the European Patent Office (EPO) and its member
states, and are being considered with the Japan Patent Office (JPO),
both of which offices will have the technical ability to provide and
retrieve certified electronic copies of priority documents via
automated mechanisms. An intellectual property office with which the
Office has such an agreement will be referred to as a "participating
intellectual property office."
Consistent with this goal, the Office is revising the rules of practice
in title 37 of the Code of Federal Regulations (CFR) to provide for the
electronic transfer of certified copies of priority documents from
other intellectual property offices with which the Office has
negotiated priority document exchange agreements. The Office is also
revising the rules of practice to permit applicants to request that the
Office permit other participating intellectual property offices to
electronically retrieve certified copies of United States patent
applications without payment of a fee. This electronic exchange of
copies of priority documents will benefit applicants by reducing the
cost of ordering paper certified copies of priority documents for
filing in other participating intellectual property offices, and will
benefit participating intellectual property offices by reducing the
administrative costs associated with handling paper copies of priority
applications and scanning them into electronic image record management
systems.
This direct electronic exchange of copies of priority documents is an
exception to the requirement that applicant must provide a certified
copy of a counterpart foreign application to be entitled to a right of
priority under 35 U.S.C. 119(a)-(d). The American Inventors Protection
Act of 1999 (AIPA), Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through
1501A-591 (1999), amended 35 U.S.C. 119(b) to (inter alia)
provide that: "[t]he Director may require a certified
copy of the original foreign application, specification, and drawings
upon which it is based, a translation if not in the English language,
and such other information as the Director considers necessary."
See 35 U.S.C. 119(b)(3) (2000) (emphasis added). Prior to
the enactment of the AIPA, 35 U.S.C. 119(b) required that a certified
copy of the original foreign application be filed in the Office for an
application to be entitled to a right of priority under 35 U.S.C.
119(a)-(d). See 35 U.S.C. 119(b) (1994) ("[n]o
application for patent shall be entitled to this right of priority
unless a claim therefor and a certified copy of the original foreign
application, specification, and drawings upon which it is based are
filed in the Patent and Trademark Office before the patent is granted,
or at such time during the pendency of the application as required by
the Commissioner not earlier than six months after the filing of the
application in this country").
If an applicant makes a proper request and an electronic copy of the
counterpart foreign application is imported from another participating
intellectual property office by the Office, the obligation to provide a
certified copy of the foreign application would be satisfied (although
the applicant may be required to provide an English-language
translation of a non-English language foreign application under certain
circumstances or such other information as the Director considers
necessary). The agreements would also permit another participating
intellectual property office to obtain electronic copies of priority
documents from the Office (at no charge to the applicant) when an
applicant furnishes the Office with written authority or after the
application has been published.
The agreements will enable a participating intellectual property office
(e.g., the JPO, EPO, or the Office) to obtain an electronic
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copy of a priority document that was filed in another participating
intellectual property office in accordance with the terms of the
agreement. Likewise, the agreements will also enable a participating
intellectual property office to obtain an electronic copy of a priority
document that was filed in a non-participating intellectual property
office from a participating intellectual property office in which a
certified copy of the priority document has been filed and stored. The
Office will provide forms for applicants to: (1) Request that the
Office retrieve an electronic copy of an earlier filed foreign
application (PTO/SB/38); and (2) permit other participating
intellectual property offices to retrieve an electronic copy of an
application filed in the Office (PTO/SB/39). Use of Office forms is
strongly encouraged.
The first form (PTO/SB/38) will permit applicants to request that the
Office retrieve an electronic copy of any foreign application filed in
an intellectual property office participating with the Office in a
direct agreement to retrieve electronic copies of priority documents.
The foreign application may have been filed directly with the
participating intellectual property office, in which case the applicant
would merely request that the Office retrieve an electronic copy of the
priority application for which priority was claimed. Alternatively, the
applicant may request that the Office retrieve an electronic copy of a
foreign application originally filed in a non-participating
intellectual property office that is stored in a patent application
file in a participating intellectual property office. The Office
intends to post a notification of such agreements in the Official
Gazette including the date when applicants may take advantage of
these agreements and any special provisions made in the agreement. If
the foreign application was originally filed in a non-participating
intellectual property office, but is stored in an application file or
dossier of a participating intellectual property office, the request
form must indicate the participating intellectual property office
application number which contains the certified copy of the foreign
application.
Upon receipt of a timely filed request, the Office anticipates that at
least two attempts will be made to retrieve a copy of the foreign
application from the participating office. Applicants should consult
the private Patent Application Information Retrieval (PAIR) system to
determine if the copy of the foreign application was retrieved by the
Office. Applicants are encouraged to contact the Electronic Business
Center, rather than the examiner, if the counterpart foreign
application has not been entered in the application file.
The copy of the counterpart foreign application retrieved by the Office
will be included in the Office's IFW system records pertaining to the
application for which the counterpart foreign application was
requested. Applicants will be able to inspect the counterpart foreign
application through the private PAIR system. In addition, once the
application has been published under 35 U.S.C. 122(b) or issued as a
patent, any member of the public will be able to inspect the
counterpart foreign application through the public PAIR system.
The second form (PTO/SB/39) would be used to provide the Office with
written authority to provide a copy of a patent application to
participating foreign intellectual property offices at no cost to the
applicant. Such written authority would be treated as authorizing the
Office to provide the participating intellectual property offices
indicated in the written authority with a copy of the
application-as-filed as well as a copy of the application-as-filed of
its parent applications stored in electronic image form. Once an
application is published under 35 U.S.C. 122(b), the application is
open to the public and therefore the applicant's written authority is
not necessary to permit other participating intellectual property
offices to retrieve a certified copy of the priority application or a
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copy of the complete application file.
Discussion of Specific Rules
Section 1.14
Sections 1.14(a)(1)(iii), (a)(1)(v), (a)(1)(vi), and
(a)(1)(vii) are amended to change their reference to Sec. 1.14(h) to a
reference to Sec. 1.14(i) for consistency with the redesignating of Sec.
1.14(h) as Sec. 1.14(i).
Section 1.14(a)(2) is amended to add "in a published patent document
or in an application as set forth" to more clearly explain that the
Office will provide information about a patent application if the
application is identified in a published patent document such as a
patent document of a foreign intellectual property office.
Section 1.14(b) is amended to delete the reference to "paragraphs
(a)(1)(i) through (a)(1)(vi)". The reference to the specific
paragraphs in Sec. 1.14 that define when an application may be made
available is not necessary, and the reference to only paragraphs
(a)(1)(i) through (a)(1)(vi) is overly limiting as the Office may elect
to only provide electronic access in other situations as well
(e.g., where the application is maintained in the IFW system
and has been published, the file may be made available through the
public PAIR system).
Current Sec. 1.14(h) is redesignated as Sec. 1.14(i), and a new Sec.
1.14(h) is added. New Sec. 1.14(h) defines under what circumstances an
electronic copy of an application-as-filed may be retrieved from the Office
by a participating intellectual property office. Section 1.14(h)(1)
indicates that access to an application-as-filed may be provided to any
participating foreign intellectual property office if the application
contains written authority granting such access. The Office will
publish a list of participating foreign intellectual property offices
in the Official Gazette. In addition, Sec. 1.14(h)(1) would
indicate that the written authority should be submitted prior to the
filing of a subsequent foreign application, in which priority is
claimed to the patent application, with a participating intellectual
property office. The written authority should be submitted prior to the
filing of a subsequent foreign application to ensure that it is likely
that the authorized participating foreign intellectual property office
will be successful in its attempt to retrieve a copy of the priority
application from the Office. However, a participating foreign
intellectual property office would be able to retrieve an electronic
copy of a priority application from the Office at no cost to the
applicant without written authority if the application was published
before a request for a copy of the priority application was received by
the Office.
Section 1.14(h)(2) indicates that the written authority must include
the title of the invention (Sec. 1.71(a)), comply with the requirements
of Sec. 1.14(c), and be submitted on a separate document (Sec. 1.4(c)).
Accordingly, Sec. 1.14(h)(2) requires the written authority to be signed
by: (1) an applicant; (2) an attorney or agent of record; (3) an
authorized official of an assignee of record, made of record pursuant
to Sec. 3.71 of this chapter; or (4) a registered attorney or agent named
in the papers accompanying the application papers filed under Sec. 1.53
or the national stage documents filed under Sec. 1.495, if an executed
oath or declaration pursuant to Sec. 1.63 or Sec. 1.497 has not been filed.
Section 1.14(h)(3) indicates that written authority provided under Sec.
1.14(h)(1) will be treated as authorizing the Office to provide the
participating foreign intellectual property offices indicated in the
written authority: (1) A copy of the application-as-filed; and (2) a
copy of the application-as-filed for any application the filing date of
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which is claimed by the application in which the written authority has
been filed.
Section 1.19
Section 1.19(b)(1)(iv) is added to indicate there is no fee for
providing a foreign intellectual property office with a copy of an
application as filed pursuant to a priority document exchange agreement
(see Sec. 1.14(h)).
Section 1.55
Section 1.55(d) is added to permit the acceptance of an
electronic copy of a counterpart foreign application under 35 U.S.C.
119(b) or Patent Cooperation Treaty (PCT) Rule 17 received from a
participating intellectual property office, as an alternative to
requiring the certified copy of such foreign application from the
applicant. If the foreign application was filed in a participating
intellectual property office and the applicant requests, in a separate
document, that the Office obtain a copy of the foreign application from
the participating intellectual property office, the Office will attempt
to do so. If the Office is successful in its attempt to retrieve the
electronic copy before the patent is granted, the applicant would be
relieved of the existing duty to provide a certified copy of the
foreign application. The applicant can confirm that the Office has
received a copy of the foreign application by viewing the records in
the private PAIR system.
Section 1.55(d) also indicates that a copy of a foreign application
obtained from a participating intellectual property office, where the
foreign application was filed in a non-participating intellectual
property office, will also be considered to satisfy the certified copy
requirement. Thus, for example, an electronic copy of a foreign
application from a participating intellectual property office will be
considered to satisfy the requirement for a "certified copy of the
foreign application" under Sec. 1.55 if an applicant: (1) Files a
foreign application in a non-participating intellectual property
office; (2) files a copy of the foreign application in a participating
intellectual property office; (3) files a U.S. application with a
proper request under Sec. 1.55(d); and (4) the Office obtains an
electronic copy of the foreign application from the participating
intellectual property office.
Section 1.55(d) is an exception to the existing certified copy
requirement. Section 1.55(d)(1) addresses the situation where the
foreign application was filed in a participating foreign intellectual
property office. Sections 1.55(d)(1)(i) through (d)(1)(iii) define
under what circumstances a copy of a foreign application, obtained in
accordance with an international agreement from a participating foreign
intellectual property office, is an acceptable alternative to the
current procedure of filing a certified copy of the foreign
application. Section 1.55(d)(1)(i) indicates that, in order to take
advantage of the international agreement, the applicant must file, in a
separate document, a request that the Office obtain a copy of the
foreign application from a participating foreign intellectual property
office. A request form (PTO/SB/38) will be provided on the Office's
Internet Web site for this purpose. Section 1.55(d)(1)(ii) indicates
that the foreign application must be identified in the oath or
declaration (Sec. 1.63(c)) or an application data sheet (Sec. 1.76(a)(6)).
Section 1.55(d)(1)(iii) indicates that the Office must receive the copy
before the patent is granted (consistent with the general rule in Sec.
1.55(a)(2)). Section 1.55(d)(1)(iii) also indicates that the request
should be made within the later of four months from the filing date of
the application or sixteen months from the filing date of the foreign
application in order to facilitate receipt of the copy of the foreign
application by the Office before patent grant.
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Section 1.55(d)(2) addresses the situation where the foreign
application was originally filed in a non-participating foreign
intellectual property office, but a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office.
Under these circumstances, the request under Sec. 1.55(d)(1)(i) must
identify the participating foreign intellectual property office and the
application number of the subsequent application in which the copy of
the foreign application was filed. It is envisioned that the agreement
with certain participating intellectual property offices may obviate
the need for this information in the future.
This change to Sec. 1.55 does not affect the requirement in Sec.
1.55(a)(4) that applicant provide an English language translation of a
non-English language foreign application (together with a statement that
the translation of the certified copy is accurate) when the application is
involved in an interference (Sec. 1.630), when necessary to overcome the
date of a reference relied upon by the examiner, or when specifically
required by the examiner.
Rule Making Considerations
Administrative Procedure Act
This notice adopts changes to the rules of practice that
facilitate electronic image record management of patent application
files. The changes are limited to permitting and facilitating direct
exchange of priority documents among intellectual property offices.
Therefore, these rule changes involve interpretive rules, or rules of
agency practice and procedure. See Bachow Communications
Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing
an application process are "rules of agency organization, procedure,
or practice" and exempt from the Administrative Procedure Act's
notice and comment requirement); see also Merck & Co., Inc.
v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir.
1996) (the rules of practice promulgated under the authority of former
35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not substantive rules (to
which the notice and comment requirements of the Administrative
Procedure Act apply)), and Fressola v. Manbeck, 36 USPQ2d
1211, 1215 (D.D.C. 1995) ("it is extremely doubtful whether any of
the rules formulated to govern patent or trade-mark practice are other
than `interpretive rules, general statements of policy, * * *
procedure, or practice.'") (quoting C.W. Ooms, The United
States Patent Office and the Administrative Procedure Act, 38
Trademark Rep. 149, 153 (1948)). Accordingly, prior notice and an
opportunity for public comment were not required pursuant to 5 U.S.C.
553(b)(A) (or any other law), and thirty-day advance publication is not
required pursuant to 5 U.S.C. 553(d) (or any other law).
Regulatory Flexibility Act
As discussed previously, the changes in this final rule involve
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and
prior notice and an opportunity for public comment were not required
pursuant to 5 U.S.C. 553(b)(A) (or any other law). As prior notice and
an opportunity for public comment were not required pursuant to 5
U.S.C. 553 (or any other law) for the changes in this final rule, a
regulatory flexibility analysis under the Regulatory Flexibility Act (5
U.S.C. 601 et seq.) is not required for the changes in this
final rule. See 5 U.S.C. 603.
Executive Order 13132
This rulemaking does not contain policies with federalism
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implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This rulemaking 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
final rule have been previously reviewed and approved by OMB under
control number 0651-0031.
Comments are invited on: (1) Whether the collection of information is
necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
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.
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, Biologics, 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), unless otherwise noted.
. 2. Section 1.14 is amended by revising paragraph (a)(1)(iii),
(a)(1)(v), (a)(1)(vi), (a)(1)(vii), the introductory text of paragraph
(a)(2), and paragraph (b), redesignating paragraph (h) as paragraph
(i), and adding a new paragraph (h) to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
(a) * * *
(1) * * *
(iii) Published pending applications. A copy of the
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application-as-filed, the file contents of the application, or a
specific document in the file of a pending application that has been
published as a patent application publication may be provided to any
person upon request, and payment of the appropriate fee set forth in Sec.
1.19(b). If a redacted copy of the application was used for the patent
application publication, the copy of the specification, drawings, and
papers may be limited to a redacted copy. The Office will not provide
access to the paper file of a pending application that has been
published, except as provided in paragraph (c) or (i) of this section.
* * * * *
(v) Unpublished pending applications (including
provisional applications) whose benefit is claimed. A copy of the
file contents of an unpublished pending application may be provided to
any person, upon written request and payment of the appropriate fee (Sec.
1.19(b)), if the benefit of the application is claimed under 35 U.S.C.
119(e), 120, 121, or 365 in an application that has issued as a U.S.
patent, an application that has published as a statutory invention
registration, a U.S. patent application publication, or an
international patent application publication that was published in
accordance with PCT Article 21(2). A copy of the application-as-filed,
or a specific document in the file of the pending application may also
be provided to any person upon written request, and payment of the
appropriate fee (Sec. 1.19(b)). The Office will not provide access to the
paper file of a pending application, except as provided in paragraph
(c) or (i) of this section.
(vi) Unpublished pending applications (including
provisional applications) that are incorporated by reference or
otherwise identified. A copy of the application as originally
filed of an unpublished pending application may be provided to any
person, upon written request and payment of the appropriate fee (Sec.
1.19(b)), if the application is incorporated by reference or otherwise
identified in a U.S. patent, a statutory invention registration, a U.S.
patent application publication, or an international patent application
publication that was published in accordance with PCT Article 21(2).
The Office will not provide access to the paper file of a pending
application, except as provided in paragraph (c) or (i) of this
section.
(vii) When a petition for access or a power to inspect is
required. Applications that were not published or patented, that
are not the subject of a benefit claim under 35 U.S.C. 119(e), 120,
121, or 365 in an application that has issued as a U.S. patent, an
application that has published as a statutory invention registration, a
U.S. patent application publication, or an international patent
application publication that was published in accordance with PCT
Article 21(2), or are not identified in a U.S. patent, a statutory
invention registration, a U.S. patent application publication, or an
international patent application that was published in accordance with
PCT Article 21(2), are not available to the public. If an application
is identified in the file contents of another application, but not the
published patent application or patent itself, a granted petition for
access (see paragraph (i)), or a power to inspect (see paragraph (c))
is necessary to obtain the application, or a copy of the application.
(2) Information concerning a patent application may be
communicated to the public if the patent application is identified in a
published patent document or in an application as set forth in
paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The
information that may be communicated to the public (i.e.,
status information) includes:
* * * * *
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(b) Electronic access to an application. Where a
copy of the application file or access to the application may be made
available pursuant to this section, the Office may at its discretion
provide access to only an electronic copy of the specification,
drawings, and file contents of the application.
* * * * *
(h) Access by a Foreign Intellectual Property Office.
(1) Access to the application-as-filed may be provided to any foreign
intellectual property office participating with the Office in a
bilateral or multilateral priority document exchange agreement
(participating foreign intellectual property office), if the
application contains written authority granting such access. Written
authority under this paragraph should be submitted prior to filing a
subsequent foreign application with a participating intellectual
property office in which priority is claimed to the patent application.
(2) Written authority provided under paragraph (h)(1) of this section
must include the title of the invention (Sec. 1.71(a)), comply with the
requirements of paragraph (c) of this section, and be submitted on a
separate document (Sec. 1.4(c)).
(3) Written authority provided under paragraph (h)(1) of this section
will be treated as authorizing the Office to provide to all
participating foreign intellectual property offices indicated in the
written authority in accordance with their respective agreements with
the Office:
(i) A copy of the application-as-filed; and
(ii) A copy of the application-as-filed with respect to any application
the filing date of which is claimed by the application in which written
authority under paragraph (h)(1) of this section is filed.
* * * * *
. 3. Section 1.19 is amended by adding paragraph (b)(1)(iv) to
read as follows:
Sec. 1.19 Document supply fees.
* * * * *
(b) * * *
(1) * * *
(iv) If provided to a foreign intellectual property office pursuant to
a priority document exchange agreement (see Sec. 1.14(h)(1)) ...... 0.00
* * * * *
. 4. Section 1.55 is amended by adding a new paragraph (d) to
read as follows:
Sec. 1.55 Claim for foreign priority.
* * * * *
(d)(1) The requirement in this section for the certified copy
of the foreign application will be considered satisfied if:
(i) The applicant files a request, in a separate document, that the
Office obtain a copy of the foreign application from a foreign
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intellectual property office participating with the Office in a
bilateral or multilateral priority document exchange agreement
(participating foreign intellectual property office (see Sec.
1.14(h)(1));
(ii) The foreign application is identified in the oath or declaration
(Sec. 1.63(c)) or an application data sheet (Sec. 1.76(a)(6)); and
(iii) The copy of the foreign application is received by the Office
within the period set forth in paragraph (a) of this section. Such a
request should be made within the later of four months from the filing
date of the application or sixteen months from the filing date of the
foreign application.
(2) If the foreign application was filed at a foreign intellectual
property office that is not participating with the Office in a priority
document exchange agreement, but a copy of the foreign application was
filed in an application subsequently filed in a participating foreign
intellectual property office, the request under paragraph (d)(1)(i) of
this section must identify the participating foreign intellectual
property office and the application number of the subsequent
application in which a copy of the foreign application was filed.
December 18, 2006 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1315 OG 63]