| Amendments, Drawings, CPA Practice |
Referenced Items (319, 320, 321, 322, 323, 324, 325, 326, 327) |
(325) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0001]
RIN 0651-AC92
Changes to Continued Prosecution Application Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The Leahy-Smith America Invents Act (AIA) revised and streamlined
the requirements for the inventor's oath or declaration. In implementing
the AIA inventor's oath or declaration provisions, the United States Patent
and Trademark Office (Office) provided that an applicant may postpone the
filing of the inventor's oath or declaration until allowance if the
applicant provides an application data sheet indicating the name,
residence, and mailing address of each inventor. The rules pertaining to
continued prosecution applications (which are applicable only to design
applications) require that the prior nonprovisional application of a
continued prosecution application be complete, which requires that the
prior nonprovisional application contain the inventor's oath or
declaration. The Office published an interim rule on March 5, 2014, to
revise the rules pertaining to continued prosecution applications to permit
the filing of a continued prosecution application even if the prior
nonprovisional application does not contain the inventor's oath or
declaration so long as the continued prosecution application is filed on or
after September 16, 2012, and the prior nonprovisional application contains
an application data sheet indicating the name, residence, and mailing
address of each inventor (continued prosecution application interim rule).
The Office received no comments from the public in response to the
continued prosecution application interim rule published on March 5, 2014.
This final rule adopts as final the amendments to the rules of practice
originally set forth in the continued prosecution application interim rule.
DATES: Effective Date: This final rule is effective on November 14, 2014.
The continued prosecution application interim rule published on March 5,
2014 at 79 FR 12384 was effective on March 5, 2014.
FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy Commissioner
for Patent Examination Policy, at (571) 272-7727.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The previously published continued
prosecution application interim rule permits the filing of a continued
prosecution application even if the prior nonprovisional application does
not contain the inventor's oath or declaration. See Changes to Continued
Prosecution Application Practice, 79 FR 12384 (Mar. 5, 2014). The change in
the continued prosecution application interim rule avoids the need for
applicants to file the inventor's oath or declaration in an application in
order to file a continued prosecution application of that application. This
final rule adopts as final the amendments to the rules of practice
originally set forth in the continued prosecution application interim rule.
Summary of Major Provisions: The previously published continued
prosecution application interim rule provides that the prior nonprovisional
application of a continued prosecution application that was filed on or
after September 16, 2012, is not required to contain the inventor's oath or
declaration so long as the prior nonprovisional application contains an
application data sheet indicating the name, residence, and mailing address
of each inventor. As discussed previously, this final rule adopts as final
the amendments to the rules of practice originally set forth in the
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continued prosecution application interim rule.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: The Office revised the rules of practice pertaining to the
inventor's oath or declaration during implementation of the AIA inventor's
oath or declaration provisions to permit an applicant to postpone the
filing of the inventor's oath or declaration until payment of the issue fee
if the applicant provides an application data sheet indicating the name,
residence, and mailing address of each inventor. See Changes To Implement
the Inventor's Oath or Declaration Provisions of the Leahy-Smith America
Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 2012), and Changes To
Implement the Patent Law Treaty, 78 FR 62367, 62376 (Oct. 21, 2013). The
rules of practice pertaining to continued prosecution applications (which
are applicable only to design applications) formerly required that the
prior nonprovisional application of a continued prosecution application be
a design application that is complete as defined by 37 CFR 1.51(b). See 37
CFR 1.53(d)(1)(ii) (2013) (required that the prior nonprovisional
application of a continued prosecution application be a design application
that is complete as defined by 37 CFR 1.51(b)). 37 CFR 1.51(b) in turn
requires that an application contain the inventor's oath or declaration to
be complete. See 37 CFR 1.51(b)(2). The continued prosecution application
interim rule amends 37 CFR 1.53(d)(1)(ii) to permit the filing of a
continued prosecution application even if the prior nonprovisional
application does not contain the inventor's oath or declaration so long as
the continued prosecution application is filed on or after September 16,
2012, and the prior nonprovisional application contains an application data
sheet indicating the name, residence, and mailing address of each inventor.
This change avoids the need for applicants to file the inventor's oath or
declaration in an application in order to file a continued prosecution
application of that application. This final rule adopts as final the
amendments to the rules of practice originally set forth in the continued
prosecution application interim rule.
Discussion of Specific Rules
The continued prosecution application interim rule published on March 5,
2014, amended § 1.53(d)(1)(ii) to change "[t]he prior nonprovisional
application is a design application that is complete as defined by
§ 1.51(b)" to "[t]he prior nonprovisional application is a design
application that is complete as defined by § 1.51(b), except for the
inventor's oath or declaration if the application is filed on or after
September 16, 2012, and the prior nonprovisional application contains an
application data sheet meeting the conditions specified in
§ 1.53(f)(3)(i)."
Comments: The Office received no comments in response to the continued
prosecution application interim rule.
Rulemaking Considerations
A. Administrative Procedure Act: This final rule simply adopts as final
changes in the continued prosecution application interim rule, which
pertain to the procedures that apply to the filing of a continued
prosecution application and do not change the substantive criteria of
patentability. Therefore, the changes in this rulemaking involve rules of
agency practice and procedure, and/or interpretive rules. See JEM Broad.
Co. v. FCC, 22 F.3d 320, 326 (D.C. Cir. 1994) ("[T]he critical feature of
the procedural exception [in 5 U.S.C. 553(b)(A)] is that it covers agency
actions that do not themselves alter the rights or interests of parties,
although [they] may alter the manner in which the parties present
themselves or their viewpoints to the agency") (quoting Batterton v.
Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980)); see also 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);
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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).
In addition, the Office, pursuant to authority at 5 U.S.C. 553(b)(3)(B),
found good cause to adopt the changes in the continued prosecution
application interim rule without prior notice and an opportunity for public
comment, as such procedures would have been contrary to the public
interest. Delay in the promulgation of the changes in the continued
prosecution application interim rule to provide notice and comment
procedures would have caused harm to those applicants who file a continued
prosecution application where the prior nonprovisional application does not
contain the inventor's oath or declaration. Immediate implementation of the
changes in the continued prosecution application interim rule was in the
public interest because: (1) The public did not need time to conform its
conduct as the changes in the continued prosecution application interim
rule merely eased the requirements for filing a continued prosecution
application; and (2) those applicants who were ineligible to file a
continued prosecution application because the prior nonprovisional
application does not contain the inventor's oath or declaration benefitted
from the changes in the continued prosecution application interim rule. See
Nat'l Customs Brokers & Forwarders Ass'n v. U.S., 59 F.3d 1219, 1223-24
(Fed. Cir. 1995).
Accordingly, prior notice and opportunity for public comment was not
required pursuant to 5 U.S.C. 553(b) or (c), 35 U.S.C. 2(b)(2)(B), 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)). In addition, pursuant to
authority at 5 U.S.C. 553(d)(1), the changes in the continued prosecution
application interim rule were made immediately effective because they
relieved restrictions in the requirements for filing a continued
prosecution application.
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 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).
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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 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 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 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
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.
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 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 final rule involves information collection requirements which are
subject to review by the Office of Management and Budget (OMB) under the
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Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). This rulemaking does
not impose any additional collection requirements under the Paperwork
Reduction Act which are subject to further review by OMB.
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 set forth in the preamble, the interim rule amending 37
CFR part 1 which was published at 79 FR 12384-12386 on March 5, 2014, is
adopted as a final rule without change.
November 6, 2014 MICHELLE K. LEE
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the
United States Patent and Trademark Office
[1409 OG 286]