| PAIR, EFS-Web, Electronic Submission |
Referenced Items (335, 336, 337, 338, 339, 340, 341, 342, 343, 344, 345, 346, 347, 348, 349, 350, 351, 352, 353, 354, 355, 356, 357) |
(347) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0012]
RIN 0651-AC95
Changes to Facilitate Applicant's Authorization of
Access to Unpublished U.S. Patent Applications by
Foreign Intellectual Property Offices
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The electronic sharing of information and documents between
intellectual property (IP) offices is critical for increasing the
efficiency and quality of patent examination worldwide. Current
examples of this sharing include the priority document exchange (PDX)
program and the program by which U.S. search results are delivered to
the European Patent Office (EPO). In support of electronic file
sharing, the United States Patent and Trademark Office (Office) is
revising its rules of practice to include a specific provision by which
an applicant can authorize the Office to give a foreign IP office that
is a party to an agreement with the Office access to all or part of the
file contents of an unpublished U.S. patent application in order to
satisfy a requirement for information imposed on a counterpart
application filed with the foreign IP office. Previously, for
unpublished U.S. patent applications, applicants followed one
regulatory provision to provide the Office with authorization for a
foreign IP office to access an application-as-filed and followed
another regulatory provision to provide the Office with authorization
to share the file contents with a foreign IP office. The final rule
changes consolidate the specific provisions of the regulations by which
applicants give the Office authority to provide a foreign IP office
with access to an application in order to satisfy a requirement for
information of the foreign IP office. The Office is also revising the
rules of practice to indicate there is no fee for providing a foreign
IP office with an electronic copy of an application-as-filed or an
electronic copy of file contents pursuant to a bilateral or
multilateral agreement. Additionally, along with changes to the
application data sheet (ADS) form, the final rule changes simplify the
process for how applicants provide the Office with the required
authorization, thereby reducing the resources applicants must expend to
comply with these foreign IP office requirements, and enhance the
quality of patent examination.
DATES: Effective Date: The changes in this final rule are effective on
November 30, 2015. The revised ADS form (PTO/AIA/14) will be posted on
the Office's Web site on or before the effective date.
Applicability Date: The changes to 37 CFR 1.14(h) apply to all
patent applications filed before November 30, 2015, and to all patent
applications filed on or after November 30, 2015.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Senior Legal
Advisor (telephone (571) 272-7711; electronic mail message (susy.tsang-
foster@uspto.gov)) or Joseph F. Weiss, Jr., Senior Legal Advisor
(telephone (571) 272-2259; electronic mail message
(joseph.weiss@uspto.gov)), of the Office of Patent Legal
Administration, Office of the Deputy Commissioner for Patent
Examination Policy.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: 37 CFR 1.14(h) regulates access by
foreign IP offices to U.S. applications. Formerly, 37 CFR 1.14(h)
contained only a specific provision by which an applicant could
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authorize the Office to give a foreign IP office participating with the
Office in a bilateral or multilateral priority document exchange
agreement access to a U.S. application-as-filed. 37 CFR 1.14(h) is now
expanded to also include a specific provision by which, under certain
circumstances, an applicant can authorize the Office to give a foreign
IP office access to all or part of the file contents of a U.S. patent
application in order to satisfy the foreign IP office's requirement for
information.
Summary of Major Provisions: This final rule primarily provides a
specific provision by which an applicant can authorize the Office to
provide a foreign IP office access to all or part of the file contents
of a U.S. patent application where the foreign IP office has imposed a
requirement for information on a counterpart application filed with
that office and is a party to a bilateral or multilateral agreement
with the Office to provide the required information from the U.S.
application.
This final rule also revises the rules of practice to indicate that
there is no fee for providing a foreign IP office with an electronic
copy of an application-as-filed or an electronic copy of file contents
pursuant to a bilateral or multilateral agreement. Previously, the
regulations only indicated that there was no fee for providing a
foreign IP office with a copy of an application-as-filed pursuant to a
priority document exchange agreement.
Additionally, the Office is revising the ADS form (PTO/AIA/14) as
well as the PTO/SB/39 and PTO/SB/69 forms to facilitate applicant's
authorization of access to unpublished U.S. applications by foreign IP
offices.
Costs and Benefits: This rulemaking is not economically significant
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
Background: The electronic sharing of information and documents
between IP offices is critical for increasing the efficiency and
quality of patent examination worldwide. The electronic sharing of
documents between IP offices also benefits applicants by reducing the
cost of ordering documents from one IP office and then filing them in
another IP office where a counterpart application has been filed.
Due to the confidential nature of unpublished U.S. patent
applications, set forth in 35 U.S.C. 122, an applicant must provide the
Office with written authority in accordance with 37 CFR 1.14 to grant a
foreign IP office access to an unpublished U.S. patent application.
With this grant of authority, the Office may provide the U.S. patent
application-as-filed or the requested file contents, such as
information and documents, from the U.S. patent application to the
foreign IP office on behalf of the applicant. Previously, applicants
used former 37 CFR 1.14(h) to authorize the Office to allow a foreign
IP office participating in a bilateral or multilateral priority
document exchange agreement access to an unpublished U.S. priority
application-as-filed. Former 37 CFR 1.14(h), however, did not contain a
specific provision by which an applicant could authorize the Office to
provide a foreign IP office access to an unpublished U.S. patent
application's file contents. As a result, U.S. applicants, unprompted
by the rules, found it necessary to provide written authority for
access by a foreign IP office to an unpublished application's contents
in accordance with 37 CFR 1.14(c) in order to satisfy a requirement for
information by the foreign IP office.
General Discussion of the Changes to 37 CFR 1.14(h): The Office is
revising 37 CFR 1.14(h) to include a specific provision by which an
applicant can authorize the Office to give a foreign IP office access
to all or part of the file contents (as opposed to a copy of the
application-as-filed) of an unpublished patent application, including
search results, to satisfy a foreign IP office requirement for
information in a counterpart application filed by a U.S. applicant. The
changes to 37 CFR 1.14(h) consolidate the provisions by which
applicants can authorize the Office to give access to an unpublished
application-as-filed or its file contents to a foreign IP office, while
also clarifying for applicants the provision of 37 CFR 1.14 under which
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such access authorization can be provided. The final rule changes will
further serve as a reminder of the opportunity for applicants to grant
the Office the authority to provide a foreign IP office with access to
file contents of an unpublished U.S. patent application.
Any information concerning an unpublished application or documents
from an unpublished application will only be shared in accordance with
the authority provided by applicant and in accordance with the terms of
an agreement between the Office and respective foreign IP offices. The
Office is not requiring any fee for this service. In addition, sharing
of information and documents would be limited to those foreign IP
offices where applicant has filed a counterpart application and
provided written authority to give a foreign IP office access to all or
part of the file contents of an unpublished U.S. application.
The changes to 37 CFR 1.14(h) emphasize the Office's continued
support of work sharing efforts between IP offices to increase the
quality of issued patents, as well as its commitment to assist in
reducing the expenditure of resources of its applicants when complying
with the requirements of a foreign IP office in a counterpart
application.
Revision to Application Data Sheet Form: In addition to the final
rule changes, the Office is revising the application data sheet (ADS)
form, PTO/AIA/14 ("the revised ADS form"). The revised ADS form
includes separate access authorizations for the PDX program and for the
program by which U.S. search results are delivered to the European
Patent Office (EPO). The ADS form may be modified in the future to
include access authorizations for new work sharing initiatives.
In contrast to the previous version of the ADS form, the revised
ADS form includes an "opt-out" check box for each access
authorization and not an "opt-in" check box. Therefore, when an
"opt-out" check box for a specific authorization is selected, the
Office would not provide access to the contents of the application
identified in the authorization.
The revised ADS form will make it easier for applicants to give the
necessary authorization for access to an application, as well as afford
an applicant the opportunity to inform the Office that the required
authority to allow a foreign IP office specific access to an
application has not been given. The "Authorization to Permit Access"
section containing an opt-in check box for the PDX program in the
previous version of the ADS form will be replaced by the
"Authorization or Opt-Out of Authorization to Permit Access" section
in the first release of the revised ADS form, which is intended to
contain two subsections. The first subsection will contain the
authorization to permit access to the application-as-filed (the PDX
program) and the authorization to permit access to the search results
by the EPO. The second subsection will contain the corresponding "opt-
out" check box for each authorization in the first subsection.
Appropriate authorization language for access in any ADS generated
by applicant must be the same as the authorization language provided in
the Office's revised ADS form. Use of the same language will permit the
Office to readily recognize that applicant has given the necessary
authorization. If an applicant-generated ADS does not include the
required authorization language for access by a foreign IP office, the
ADS will be interpreted as not providing the authorization necessary to
give a foreign IP office access.
The submission of a properly signed revised ADS form with the
appropriate authorization language on filing of the patent application
under 35 U.S.C. 111(a) would be a specific act authorizing access. In
addition to an application filed under 35 U.S.C. 111(a), if an ADS is
present upon the initial submission of a patent application under 35
U.S.C. 371, the submitted ADS containing authorization would be a
specific act authorizing access. Where a revised ADS form, including
the authorization language for access by foreign IP office(s) and
signed in accordance with 37 CFR 1.14(c) and 1.33(b), has been
submitted with an application, the Office would give the foreign IP
office(s) access to the contents in accordance with the specific
authorization language, upon request of the foreign IP office.
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If, however, applicant files a corrected ADS form (i.e., PTO/AIA/
14) or a corrected applicant-generated ADS that was not submitted with
an application, the authorization for access section will not be
reviewed as any changes concerning authorization for access may not be
readily apparent to the Office. Instead, applicants must use forms PTO/
SB/39 and PTO/SB/69 (or an applicant-generated equivalent), as
appropriate, to give or rescind authorization for access after the
filing of the application. Forms PTO/SB/39 and PTO/SB/69 will be
revised to include opt-in and opt-out check boxes for giving and
rescinding the respective authorizations for access after the filing of
an application. These two forms can be used in all applications,
regardless of their filing dates. Therefore, a revised ADS form used to
correct or update application data would only need to be signed in
accordance with 37 CFR 1.33(b) because the authorization for access
section is not effective if the revised ADS form is not submitted with
the application.
To avoid duplicative processing, the Office is removing the opt-in
check box and associated authorization language for the PDX program
from the inventor's oath or declaration form PTO/AIA/08 (for
applications filed on or after September 16, 2012). Form PTO/SB/39 for
the PDX authorization and Form PTO/SB/69 for the search results to the
EPO authorization will remain available for applicants that do not use
an ADS or have selected the check boxes for opting out of specific
authorizations for access by a foreign IP office on the revised ADS
form submitted with the application, but later decide to give a foreign
IP office access to the application.
The changes to the Office's ADS form PTO/AIA/14 should reduce those
instances where an applicant inadvertently fails to provide the
authorization necessary to participate in PDX (by not selecting the
opt-in check box for priority document exchange authorization on the
previous version of the PTO/AIA/14 form submitted with the application)
and, as a result, must expend resources to obtain and file a copy of a
U.S. priority document with a foreign IP office. Similarly, this
approach will help eliminate those instances where an applicant
inadvertently fails to give the Office authority (by filing the former
version of form PTO/SB/69) to provide the EPO with the search results
from an unpublished U.S. priority application and, as a consequence,
must expend resources to file the results with the EPO.
If applicant has not provided proper written authority for access,
the Office will not deliver an unpublished priority document or file
contents of an unpublished application to a foreign IP office, even
where a counterpart application has been filed. As discussed above, the
revised ADS form would need to be executed in accordance with 37 CFR
1.33(b), and if there is written authority for any access by a foreign
IP office, the revised ADS form also must be executed in accordance
with 37 CFR 1.14(c). Applicants should be aware of the differences in
signature requirements under 37 CFR 1.33(b) and under 37 CFR 1.14(c).
For example, under 37 CFR 1.33(b) in applications filed on or after
September 16, 2012, the following individuals can sign:
A patent practitioner of record;
A patent practitioner not of record who acts in a
representative capacity under the provisions of 37 CFR 1.34; or
The applicant under 37 CFR 1.42. Unless otherwise
specified, all papers submitted on behalf of a juristic entity must be
signed by a patent practitioner.
By contrast, under 37 CFR 1.14(c) in applications filed on or after
September 16, 2012, the following individuals can sign:
The applicant;
A patent practitioner of record;
The assignee or an assignee of an undivided part interest;
The inventor or a joint inventor; or
A registered attorney or agent named in the papers
accompanying the application papers filed under 37 CFR 1.53 or the
national stage under 37 CFR 1.495, if a power of attorney has not been
appointed under 37 CFR 1.32.
If the revised ADS form submitted with an application is not signed
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in accordance with the relevant rules, then applicant has not provided
written authority for access by a foreign IP office to an application.
As can be seen by a comparison of the individuals listed in both 37 CFR
1.33(b) and 37 CFR 1.14(c), in most instances an individual listed in
37 CFR 1.33(b) that can sign the revised ADS form can also give access
to the application. For example, a patent practitioner of record can
sign under both of these regulations. However, if a power of attorney
has been appointed under 37 CFR 1.32, which was effective on filing,
and a patent practitioner not of record who acts in a representative
capacity under the provisions of 37 CFR 1.34 signs the revised ADS form
that is submitted with the application, the Office will not recognize
that the applicant has provided written authority for access in the
revised ADS form. Where forms PTO/SB/39 for PDX authorization and PTO/
SB/69 for search results to the EPO authorization are used instead of
the revised ADS form, these forms must still be executed in accordance
with 37 CFR 1.14(c) even though written authority is provided for under
37 CFR 1.14(h) as amended by this final rule.
The transaction of sharing documents and information from a U.S.
application with a foreign IP office has several built in safeguards to
ensure that only authorized sharing occurs. For example, in order for a
foreign IP office to receive information about a U.S. application, the
Office requires that the foreign IP office expressly identify the U.S.
application number, along with other elements of bibliographic data for
each U.S. application in its request, to ensure that only information
pertaining to the correct U.S. application will be provided to the
foreign IP office. Once the application is properly identified, the
Office will then determine whether the requisite authorization for
access exists in the U.S. application. The Office will only share
information or other file content from a U.S. application with a
foreign IP office when both the correct application is identified and
the existence of proper authorization is confirmed. If an unpublished
application, which has not been foreign filed, includes an unintended
access authorization pursuant to revised 37 CFR 1.14(h), a foreign IP
office would not obtain access because it would not have the
information necessary to request access to that specific U.S.
application.
Further, the U.S. application's filing receipt will indicate
whether applicant has provided written authority for access pursuant to
37 CFR 1.14(h). Applicants should inspect the application filing
receipt and request a corrected filing receipt if authorization for
access under 37 CFR 1.14(h) was incorrectly captured from the revised
ADS form or from an applicant-generated ADS filed along with the
application. If authorization for access was inadvertently given, a
request for rescission of the authorization can be made by filing
either the PTO/SB/39 form or the PTO/SB/69 form in each application
where the authorization has been recognized by the Office. The Office
should be informed of such rescission as early as possible so the
Office has time to recognize the request for rescission and act upon
it.
Discussion of Specific Rules: The following is a discussion of the
amendments to Title 37 of the Code of Federal Regulations, part 1, in
this final rule.
Section 1.14: Section 1.14(h)(1) is amended to retain the first
sentence of former § 1.14(h)(1) and include the provisions from
former § 1.14(h)(3). Section 1.14(h)(1) also is amended to include
that the date of filing of the written authority for priority document
exchange may be provided to the respective participating foreign IP
office, which codifies the practice set forth in the Official Gazette
of the United States Patent and Trademark Office (1328 OG 90 (March 11,
2008)). In § 1.14(h)(1), the text added from former §
1.14(h)(3) has been amended to delete the language "indicated in the
written authority." This deleted language is not necessary
as written authority for access under former § 1.14(h) and §
1.14(h) as amended in this final rule will result in access being
granted to all PDX and WIPO Digital Access Service (DAS) participating
foreign IP offices in which a subsequently filed application claims
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benefit of the earlier filed U.S. application.
Sections 1.14(h)(1)(i) and (ii) also are amended to include the
term "bibliographic data" to reflect that "bibliographic data" is
used to ensure the correct application-as-filed is being provided to
the participating foreign IP office requesting access in any access to
the application-as-filed transaction. The term bibliographic data as
used in § 1.14(h)(1) covers certain bibliographic data set forth in
WIPO standard ST.9 for bibliographic data. The bibliographic data used
to confirm that the correct application-as-filed is being provided may
include the patent document identification, filing data, priority data,
publication data, data concerning technical information such as patent
classification (international or domestic), and the title of the
invention.
Section 1.14(h)(2) is revised to include a provision by which an
applicant can authorize the Office to grant a foreign IP office access
to the file contents of an application where a counterpart application
has been filed with a foreign IP office that has imposed a requirement
for information on a counterpart application filed with the foreign IP
office. The Office would only provide access to the relevant portion or
portions of an unpublished U.S. application's file contents necessary
to satisfy any requirement for information by the foreign IP office,
triggered by the U.S. applicant filing a counterpart application with
the foreign IP office. The Office and the foreign IP office would also
need to have a bilateral or multilateral agreement for the Office to
provide the required information. The agreement would provide for the
secure transmission and receipt of any shared information. Section
1.14(h)(2)(i) is amended to include the term "bibliographic data" to
reflect that "bibliographic data" is used to ensure the information
is from the correct application for which access has been requested by
the foreign IP office in any access to the application. The term
bibliographic data as used in § 1.14(h)(2) includes the same types
of bibliographic data set discussed above with respect to § 1.14(h)(1).
Former 1.14(h)(2) has been moved to § 1.14(h)(3).
Section 1.14(h)(3) is amended to indicate that written authority
provided under §§ 1.14(h)(1) and (h)(2) should be submitted
before the filing of any subsequent foreign application in which
priority is claimed to the application. Section 1.14(h)(3) also is
amended to indicate that the written authority under §§ 1.14(h)(1) and
(2) must include the title of the invention (§ 1.72(a)), comply with
the requirements of § 1.14(c), and must be submitted on an application
data sheet (§ 1.76) or on a separate document (§ 1.4(c)).
Section 1.19: Section 1.19(b)(1)(iv) is amended to indicate there
is no fee for providing a foreign IP office with a copy of either an
application-as-filed or patent related file wrapper and contents
pursuant to a bilateral or multilateral agreement (see § 1.14(h)).
Comments and Responses to Comments: The Office published a notice
of proposed rulemaking on July 11, 2014, proposing to amend its rules
of practice to include a specific provision by which an applicant can
authorize the Office to give a foreign intellectual property (IP)
office access to all or part of the file contents of an unpublished
U.S. patent application in order to satisfy a requirement for
information imposed on a counterpart application filed with the foreign
IP office. See Changes to Facilitate Applicant's Authorization of
Access to Unpublished U.S. Patent Applications by Foreign Intellectual
Property Offices, 79 FR 40035 (July 11, 2014). The Office received
comments from two intellectual property organizations, a patent
practitioner, and a member of the public in response to this notice of
proposed rulemaking. Three comments were very positive and supported
the proposed changes. One comment opposed the proposed changes.
Comments that supported the proposed changes are not discussed. The
remaining comments and the Office's responses to those comments follow:
Comment 1: Three comments suggested removing the language
"indicated in the written authority" from "all foreign intellectual
property offices indicated in the written authority" in proposed §
1.14(h)(2). Two comments noted that this specific language was excluded
from proposed § 1.14(h)(1) relating to access to an application-as-
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filed. One comment asserted that this language may be inconsistent with
the statement in the notice of proposed rulemaking that the written
authority to provide access to this information would be provided on an
"opt-out" basis on the ADS and that any such provision on the ADS
would not include a list of foreign intellectual property offices. One
comment questioned whether an applicant will have to specify in advance
all foreign IP offices that will receive pre-publication information.
Response: Section 1.14(h)(2) as adopted in this final rule does not
include the language "indicated in the written authority." Each
written authorization on the revised ADS form will indicate either the
specific foreign IP office(s) that is being granted access to the
associated pre-publication information or that all the foreign IP
offices participating with the Office in a particular work sharing
initiative program are being granted access to pre-publication data.
Comment 2: One comment stated that access to pre-publication
documents under the proposed rule change facilitates implementation of
global projects like the IP5's Global Dossier project. Another comment
raised concerns that the proposed rule change will require all of the
IP5 Patent Offices to have mutual agreements with each other in order
to implement the Global Dossier to cover pre-publication information
and suggested that the Office review this requirement in light of the
prospective Global Dossier System.
Response: The sharing of documents or information from unpublished
U.S. applications between the Office and any foreign IP office has
historically required a mutual agreement to cover these shared
information or documents. An agreement is needed to ensure that the
parties are aware of their obligations to one another (e.g., keeping
pre-publication information in confidence). Additionally, as stated in
the notice of proposed rulemaking, the Office and the foreign IP office
would need to have a bilateral or multilateral agreement that provides
for the secure transmission and receipt of any shared information. 79
FR at 40038. Furthermore, the agreement serves as notice to the public
regarding what application information (with applicant's consent if the
application is unpublished) the Office and other foreign IP office have
agreed to share with one another to thereby reduce the resources
applicants must expend to comply with any IP office's requirements for
information imposed when a counterpart application is filed with a
foreign IP office. Currently, the Office will not provide any
information or documents from an unpublished U.S. application to a
foreign IP office if the Office does not have an agreement to provide
such information or documents. Should the Office determine that sharing
documents from an unpublished U.S. application with other IP offices in
the absence of an agreement would be beneficial, the Office would
engage the public to seek its input.
Comment 3: One comment requested seeing the proposed new ADS form
before actual implementation of the final rule to be sure that the
language in the ADS meets the needs of our applicants.
Response: Due to IT constraints, the EFS-Web based version of the
revised ADS form had to be finalized well in advance of the publication
of the final rules. The public will have an opportunity to comment on
the first release of the revised ADS form. The Office will consider
these comments for the next release of the form.
Comment 4: One comment asserted that the proposed rule change is
based upon the assumption that a specific authority is required from an
applicant in order to send out pre-publication information to a foreign
IP office where applicant has filed an application and that the Office
should reconsider this assumption. The comment further asserted that
once an applicant files an application in a foreign IP office,
applicant inherently agrees to the rules and requirements of that
foreign IP office. Accordingly, the comment suggests that the Office
does not need a separate authorization to either send a priority
document or pre-publication information to that foreign IP office.
Therefore, the comment requested that the Office reconsider the need
for any authorization for access in this circumstance. The comment
stated that if the Office adopts this position, then the entire
authorization section from the ADS can be removed and a filing of an
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application in a foreign IP office by an applicant can serve as
authorization for access to send priority documents and/or pre-
publication information to that foreign IP office(s).
Response: After due consideration of the comment, the Office has
decided to not adopt the position expressed in the comment. The written
authority requirement is in accord with 35 U.S.C. 122(a), and
consistent with current Office policy, practice, and procedure
regarding access. Therefore, the Office is retaining the requirement
for written authority from an applicant for access to the file contents
of an unpublished application.
Comment 5: One comment opposed the proposed rule and asserted that
the proposed rule will do great harm to independent inventors,
university technology licensing organizations, small entity inventors,
and overall U.S. development. Specifically, the comment alleged that
the majority of foreign patent offices are integral parts of their
national industrial development efforts and serve as collectors of
information about U.S. technologies and that permitting these foreign
governments to have access to unpublished patent applications will
significantly undermine U.S. inventors and U.S. innovation.
Response: Neither the proposed rule nor the final rule establish a
new program for providing unpublished applications to foreign
governments. Under the final rule, the Office would only provide
information to a foreign IP office where the applicant has already
filed a counterpart application with that foreign IP office coupled
with applicant's written authorization for access in the U.S.
application. Specifically, the Office would be satisfying a duty placed
on a U.S. applicant by the foreign IP office due to the U.S. applicant
filing a counterpart application with that foreign IP office. For
example, the Office, after receiving applicant's written authorization
for access, would provide the foreign IP office where the counterpart
application was filed the required information, along with sufficient
bibliographic data to confirm that the correct U.S. and foreign
counterpart applications have been matched. Finally, the Office will
not deliver an unpublished priority document, file contents of an
unpublished application, including information about an unpublished
application, to a foreign IP office, even where a counterpart
application has been filed, if applicant has not provided proper
written authorization for access.
Rulemaking Considerations
A. Administrative Procedure Act
This rulemaking amends the rules of practice to include a specific
provision by which an applicant can authorize the Office to give a
foreign IP office access to all or part of the file contents of an
application, and thus pertains solely to the process for an applicant
to provide a limited waiver of confidentiality under 35 U.S.C. 122(a)
to allow a counterpart IP office access to all or part of the file
contents of an application. Therefore, the changes in this final
rulemaking involve rules of agency practice and procedure and/or
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals
were procedural where they did not change the substantive standard for
reviewing claims). The Office received no public comment on this
section or any of the sections under the Rulemaking Considerations.
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (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 rulemaking for "interpretative rules,
general statements of policy, or rules of agency organization,
procedure, or practice" (quoting 5 U.S.C. 553(b)(A))). The Office,
however, published proposed changes for comment as it sought the
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benefit of the public's views on the Office's proposed changes to
include a specific regulatory provision by which an applicant can
provide the Office with authority to give a foreign IP office access to
all or part of the file contents of an application.
B. 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 changes in this final rule will not have a
significant economic impact on a substantial number of small entities.
See 5 U.S.C. 605(b).
This rulemaking amends the rules of practice to include a specific
provision by which an applicant can authorize the Office to give a
foreign IP office access to all or part of the file contents of an
application. This rulemaking consolidates and clarifies in one place--
37 CFR 1.14(h)--existing procedures in both 37 CFR 1.14(c) and (h)
relevant to authorizing the Office to provide a foreign IP office
access to all or part of the file contents of an application or to an
application-as-filed. Moreover, the use of the revised forms discussed
(PTO/AIA/14; PTO/SB/39; and PTO/SB/69) will provide applicants that
wish to provide a foreign IP office access to their applications
greater ease and efficiency in transmitting the requisite
authorization. The changes in this rulemaking do not require any
applicant to provide the Office with this authority. There is no fee
for this service. Therefore, the changes in this final rule will not
have a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review)
This rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory Review)
The Office has complied with Executive Order 13563. Specifically,
the Office has, to the extent feasible and applicable: (1) Made a
reasoned determination that the benefits justify the costs of the rule;
(2) tailored the rule to impose the least burden on society consistent
with obtaining the regulatory objectives; (3) selected a regulatory
approach that maximizes net benefits; (4) specified performance
objectives; (5) identified and assessed available alternatives; (6)
involved the public in an open exchange of information and perspectives
among experts in relevant disciplines, affected stakeholders in the
private sector, and the public as a whole, and provided on-line access
to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
E. 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).
F. 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
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Executive Order 13175 (Nov. 6, 2000).
G. 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).
H. 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).
I. 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).
J. Executive Order 12630 (Taking of Private Property)
This rulemaking will not affect a taking of private property or
otherwise have taking implications under Executive Order 12630 (Mar.
15, 1988).
K. 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 United States Patent and Trademark
Office 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. The changes in this final rule are not expected
to result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this final rule is not expected to result in a "major
rule" as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995
The changes set forth in this final rule 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.
M. National Environmental Policy Act
This rulemaking will not have any effect on the quality of the
environment and is thus categorically excluded from review under the
National Environmental Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act
The requirements of section 12(d) of the National Technology
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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.
O. Paperwork Reduction Act
The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.)
requires that the Office consider the impact of paperwork and other
information collection burdens imposed on the public. 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. 3501-3549). The collection of
information involved in this rulemaking has been reviewed and
previously approved by OMB under OMB Control Numbers 0651-0031 and
0651-0032. The Office is not resubmitting an information collection
package to OMB for its review and approval because the changes in this
rulemaking do not change patent fees or change the information
collection requirements (the estimated number of respondents, time per
response, total annual respondent burden hours, or total annual
respondent cost burden) associated with the information collections
approved under OMB Control Numbers 0651-0031 and 0651-0032. The revised
ADS form (PTO/AIA/14) as well as the PTO/SB/39 and PTO/SB/69 forms have
already been reviewed and approved by OMB, or have been determined to
not collect "information" within the meaning of the Paperwork
Reduction Act of 1995.
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.
For the reasons stated 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).
. 2. Section 1.14 is amended by revising paragraph (h) to read as
follows:
§ 1.14 Patent applications preserved in confidence.
* * * * *
(h) Access by a Foreign Intellectual Property Office. (1) Access to
an 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 provided
under this paragraph (h)(1) will be treated as authorizing the Office
to provide the following to all participating foreign intellectual
property offices in accordance with their respective agreements with
the Office:
(i) A copy of the application-as-filed and its related
bibliographic data;
(ii) A copy of the application-as-filed of any application the
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filing date of which is claimed by the application in which written
authority under this paragraph (h)(1) is filed and its related
bibliographic data; and
(iii) The date of filing of the written authorization under this
paragraph (h)(1).
(2) Access to the file contents of an application may be provided
to a foreign intellectual property office that has imposed a
requirement for information on a counterpart application filed with the
foreign intellectual property office where the foreign intellectual
property office is a party to a bilateral or multilateral agreement
with the Office to provide the required information from the
application filed with the Office and the application contains written
authority granting such access. Written authority provided under this
paragraph (h)(2) will be treated as authorizing the Office to provide
the following to all foreign intellectual property offices in
accordance with their respective agreements with the Office:
(i) Bibliographic data related to the application; and
(ii) Any content of the application file necessary to satisfy the
foreign intellectual property office requirement for information
imposed on the counterpart application as indicated in the respective
agreement.
(3) Written authority provided under paragraphs (h)(1) and (h)(2)
of this section must include the title of the invention (§ 1.72(a)),
comply with the requirements of paragraph (c) of this section, and be
submitted on an application data sheet (§ 1.76) or on a separate
document (§ 1.4(c)). The written authority provided under these
paragraphs should be submitted before filing any subsequent foreign
application in which priority is claimed to the application.
* * * * *
. 3. Section 1.19 is amended by revising paragraph (b)(1)(iv) to read as
follows:
§ 1.19 Document supply fees.
* * * * *
(b) * * *
(1) * * *
(iv) If provided to a foreign intellectual property office pursuant
to a bilateral or multilateral agreement (see § 1.14(h)): $0.00.
* * * * *
October 21, 2015 MICHELLE K. LEE
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1420 OG 178]