| Unlocatable Applications, Terminal Disclaimers, Status Inquiries |
Referenced Items (364, 365, 366) |
(364) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
RIN 0651-AB19
Treatment of Unlocatable Patent
Application and Patent Files
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office is amending the
rules of practice to provide for the replacement of patent application
and patent files that cannot be located after a reasonable search. This
change is designed to expedite the process of application and patent
file reconstruction to minimize the processing or examination delays
resulting when the Office cannot locate an application or patent file
after a reasonable search.
EFFECTIVE DATE: November 17, 2000.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr by telephone at (703)
308-6906, or by mail addressed to: Box Comments--Patents, Commissioner
for Patents, Washington, DC 20231, or by facsimile to (703) 872-9411,
marked to the attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: Over 330,000 patent applications (provisional
and nonprovisional) were in the United States Patent and Trademark
Office (Office) in fiscal year 1999. On occasion, an application or
patent file cannot be located.
When a patent application or patent file cannot be located after a
reasonable search and the application or patent file is necessary to
conduct business before the Office, the Office will "reconstruct" the
application or patent file. This involves placing a duplicate copy of
the original application papers and all of the correspondence between
the Office and applicant or patentee in a new file wrapper. The Office
currently (since the spring of 1997) uses its Patent Application Capture
and Review (PACR) system to image scan the application papers submitted
on the filing date of the application (except for any appendix or
information disclosure statement) and to create an electronic database
(PACR database) containing a duplicate record of the original
application papers (application papers were microfilmed prior to the
spring of 1997). Thus, the Office can obtain a copy of the original
application papers from its PACR database (or microfilm records).
The Office, however, does not possess a duplicate copy of subsequent
correspondence from the applicant or patentee (e.g., applicant replies
or other papers) concerning the application or patent. While the Office
may have a copy of some Office correspondence (Office actions saved on a
disc or computer hard drive), the Office often does not possess a
complete copy of the Office correspondence concerning the application or
patent (e.g., paper-based forms or notices). Thus, to reconstruct a file
accurately, the Office must request that the applicant or patentee
either provide a complete copy of his or her record of the
correspondence between the Office and the applicant or patentee, or
produce his or her record of the correspondence between the Office and
the applicant or patentee for the Office to copy.
Formerly, the request that applicant provide a copy of (or produce)
his or her record of the correspondence between the Office and the
applicant did not require a reply within any set time period. In a
pending application, this added to the delay in processing and
examination resulting from the inability to locate the application file.
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To expedite the process of reconstructing the file of an application or
patent file, the Office is amending the rules of practice to provide
that the Office will now set a time period within which applicant or
patentee must either provide a complete copy of his or her record of the
correspondence between the Office and the applicant or patentee, or
produce his or her record of the correspondence between the Office and
the applicant or patentee for the Office to copy. Since the Office
cannot continue to examine an application for which it does not have a
complete copy, the failure to provide a copy of (or produce) his or her
record of the correspondence between the Office and the applicant in a
pending application within this time period will result in abandonment
of the application. See 35 U.S.C. 133 (failure to prosecute an
application in a timely manner "after any action therein" shall be
regarded as abandonment of the application).
Corresponding with an applicant or patentee when an application is
abandoned or patented is often difficult because address information is
often not current. There are many good reasons for keeping
correspondence information current in an abandoned application or
patent. Patent applicants and patent owners should keep the
correspondence address and any fee address current for the patent to
ensure that correspondence is mailed to applicant's or patentee's
current address. In an abandoned application, the Office may attempt to
communicate with applicant regarding a petition for access. If the
address has not been updated, then the Office may not be able to
consider applicant's views in deciding whether to release the
application to a member of the public. The Customer Number Practice
described in section 403 of the Manual of Patent Examining Procedure
(MPEP) (7th ed. 1998) (Rev. 1, Feb. 2000) provides a procedure where a
patent applicant or owner can easily change the correspondence address
for a number of patents or patent applications. In addition, the "Fee
Address" Indication Form (PTO/SB/47) (reproduced at MPEP 2595) enables a
patent owner to complete one form to designate a single fee address for
any number of patents or applications in which the issue fee has been
paid.
When changing the address(es) associated with a patent, the patent
owner should bear in mind that the Office has a number of addresses
related to the patent: (1) An application correspondence address; (2)
the return address for the assignment documents; and (3) the fee address
for maintenance fee purposes. See MPEP 2540. The correspondence address
is the address to which Office actions and notices are mailed during the
patent application process and is often not current within a few years
of patent issuance. As a result, the regulations related to
reexamination proceedings require that a patent owner be served with a
copy of a Reexamination Request at the Office of Enrollment and
Discipline address for the attorney or agent of record, if there is an
attorney or agent of record. See MPEP 2220. If there is no attorney or
agent of record, the copy is required to be served upon the patent
owner. See 37 CFR 1.33(c). In the procedure to obtain a copy of a patent
file set forth in this notice, the request will be directed to the
correspondence address.
The Office is planning for full electronic submission of applications
and related documents by fiscal year 2003. Once the Office transitions
to a total Electronic File Wrapper environment, the inability to locate
a paper application file should no longer be a significant issue.
However, this rule change is necessary to provide for the replacement of
unlocatable application and patent files until the Office has completely
transitioned to a total Electronic File Wrapper environment.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
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Section 1.251 is added to set forth a procedure for the
reconstruction of the file of a patent application, patent, or any other
patent-related proceeding that cannot be located after a reasonable
search. The phrase "an application" applies to any type of application
(national or international), and regardless of the status (pending or
abandoned) of the application.
Section 1.251(a) provides that in the event the Office cannot locate
the file of an application, patent, or any other patent-related
proceeding after a reasonable search, the Office will notify the
applicant or patentee and set a time period within which the applicant
or patentee must comply with the notice. The applicant or patentee may
comply with a notice under 1.251 by providing: (1) A copy of his or
her record (if any) of all of the correspondence between the Office and
the applicant or patentee for such application, patent, or other
proceeding (except for U.S. patent documents); (2) a list of such
correspondence; and (3) a statement that the copy is a complete and
accurate copy of the applicant's or patentee's record of all of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding (except for U.S. patent
documents), and whether applicant or patentee is aware of any
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding that is not among applicant's
or patentee's records ( 1.251(a)(1)). The applicant or patentee may
also comply with a notice under 1.251 by: (1) Producing his or her
record (if any) of all of the correspondence between the Office and the
applicant or patentee for such application, patent, or other proceeding
for the Office to copy (except for U.S. patent documents); and (2)
providing a statement that the papers produced by applicant or patentee
are applicant's or patentee's complete record of all of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding (except for U.S. patent
documents), and whether applicant or patentee is aware of any
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding that is not among applicant's
or patentee's records ( 1.251(a)(2)). If applicant or patentee does
not possess any record of the correspondence between the Office and the
applicant or patentee for such application, patent, or other proceeding,
the applicant or patentee must comply with a notice under 1.251 by
providing a statement that applicant or patentee does not possess any
record of the correspondence between the Office and the applicant or
patentee for such application, patent, or other proceeding ( 1.251(a)(3)).
According to 1.251(a), if the applicant or patentee possesses all
or just some of the correspondence between the Office and the applicant
or patentee for such application, patent, or other proceeding, the
applicant or patentee is to reply by providing a copy of (or producing)
his or her record of all of the correspondence between the Office and
the applicant or patentee for such application, patent, or other
proceeding ( 1.251(a)(1) or (a)(2)). If applicant or patentee does
not possess any record of the correspondence between the Office and the
applicant or patentee for such application, patent, or other proceeding,
the applicant or patentee is to reply with a statement to that effect (
1.251(a)(3)).
Any appendix or information disclosure statement submitted with an
application is not contained in the Office's PACR database. Therefore,
the applicant or patentee must also provide a copy of any appendix or
information disclosure statement (except in the limited circumstance
discussed below) submitted with the application. Since the Office can
obtain copies of U.S. patent documents (U.S. patent application
publications and patents) from its internal databases, the Office is not
requiring applicants or patentees to provide copies of U.S. patent
application publications and patents that are among the applicant's or
patentee's record of the correspondence between the Office and the
applicant or patentee for the application, patent, or other proceeding.
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Section 1.251(b) provides that with regard to a pending application,
the failure to provide a reply to such a notice within the time period
set in the notice will result in abandonment of the application.
Response to Comments
The Office published a notice proposing changes to the rules of
practice to provide for the replacement of application and patent files
that cannot be located after a reasonable search. See Treatment of
Unlocatable Application and Patent Files, Notice of Proposed Rulemaking,
65 FR 42309 (July 10, 2000), 1237 Off. Gaz. Pat. Office 28 (Aug. 1,
2000) (notice of proposed rulemaking). The Office received eleven
written comments (from intellectual property organizations, patent
practitioners, and the general public) in response to the notice of
proposed rulemaking. Comments generally in support of the change are not
discussed. The comments and the Office's responses to the remaining
comments follow:
Comment 1: Several comments inquired as to how long an applicant or
patentee will be given to provide a copy of the file in reply to a
notice under 1.251. The comments suggested that: (1) Applicants be
given a minimum period of three months to reply to a notice under
1.251; (2) this period for reply be set forth in 1.251 (rather than
merely set forth in the MPEP or left completely up to the discretion of
Office officials); and (3) this period for reply be extendable under
Sec. 1.136(a). One comment also suggested that patentees be given at
least five months to reply to a notice under 1.251.
Response: The Office will set a time period of three months for reply
in a notice under 1.251 in an application. The time period will be
extendable under 1.136(a) (unless the notice indicates otherwise) by
three months up to a maximum period for reply of six months in an
application. See 35 U.S.C. 133.
The Office will set a time period of six months for reply in a notice
under 1.251 in a patent. The time period will not be extendable under
1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the
Office to charge fees for extensions of time in proceedings involving an
application. See MPEP 2265.
Section 1.251 will not include these time periods. These time periods,
however, will be included in the MPEP and not left to the complete
discretion of various Office officials.
Comment 2: One comment suggested that there should be no reduction in
patent term adjustment for the entire delay for the initial search and
for compliance with a notice under 1.251. Another comment suggested
that for purposes of patent term adjustment, all of the time taken to
reconstruct the file "should be charged against the Office."
Response: Patent term and patent term adjustment are provided for by
statute. See 35 U.S.C. 154(a)(2) and (b) and 173. The inability to
locate an application file in and of itself does not give rise to patent
term adjustment under 35 U.S.C. 154(b). Rather, patent term adjustment
is an issue only if the inability to locate the application file causes
the Office to miss one of the time frames specified in 35 U.S.C.
154(b)(1)(A) or (B), or prolongs the duration of one of the proceedings
specified in 35 U.S.C. 154(b)(1)(C). In addition, if an applicant fails
to reply to a notice under 1.251 within three months of its mailing
date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced
by a period equal to the number of days (if any) beginning on the day
after the date that is three months after the mailing date of the notice
under 1.251 and ending on the date the reply to the notice under
1.251 was filed. See 35 U.S.C. 154(b)(2)(C)(ii) and 1.704(b).
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Comment 3: Several comments inquired as to what steps are taken to
search for a file before it is determined to be unlocatable (i.e.,
inquired as to what is a reasonable search). One comment expressed
concern that the procedure in 1.251 not be used as a substitute for a
reasonable search for such a file. Another comment suggested that a
reasonable time limit (e.g., three months) be established for such a
search so that reconstruction of the file (if necessary) can begin
promptly.
Response: When an application file is determined to be unlocatable, the
Official Search Unit or a Technology Center designee conducts a search
for the application file in every location where the application file
might reasonably be located: e.g., its location as indicated in the
Office automated application tracking system (the Patent Application
Locating and Monitoring or PALM system), the examiner's office, and the
Technology Center's central files, technical support, and receptionist
areas. If the application file still cannot be located, the application
is flagged as "lost" in the PALM system. The flagging of an application
in the PALM system as "lost" causes the PALM system to signal any person
who then attempts a PALM transaction for the application (for which the
application file is required) that the application file was previously
unlocatable and should be taken to the person who was conducting a
search for the application file. If no PALM transaction for the
application occurs within thirty days, the Office then begins the file
reconstruction process.
Comment 4: One comment opposed the proposed change on the basis that it
did not address the problem (i.e., the Office's inability to locate
certain files). The comment indicated that the Office should better
train its staff to track application and patent files, and to conduct a
more diligent search for an application or patent files.
Response: The Office is addressing this issue by: (1) Revising
procedures for searches for applications; and (2) moving towards a total
Electronic File Wrapper environment. Nevertheless, the majority of
comments recognize that establishing procedures for the prompt
reconstruction of unlocatable files is important not only to the conduct
of business before the Office, but is also important to the public
(third parties) which relies upon the information in a patent file when
conducting an infringement or validity analysis.
Comment 5: One comment suggested that the Office provide a printout
of the contents entries from the Office's PALM system with any notice
under 1.251 to assist the applicant or patentee.
Response: The suggestion is adopted.
Comment 6: One comment inquired as to how long it takes the Office to
realize it has lost a file.
Response: The Office usually realizes that it cannot locate a patent
file when a member of the public requests a copy of the file. The Office
usually realizes that it cannot locate an application file when its PALM
system indicates that the application is due for some action.
Comment 7: One comment inquired as to how long it will take for the
Office to act on an application once the file has been reconstructed.
Response: Once an application file has been reconstructed, it is
docketed for action based upon its stage in the application examination
process. In most situations, the application will be acted upon
immediately.
Comment 8: Several comments suggested that the Office should take
special steps with files that have been reconstructed to ensure that the
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applicant or patentee is not again required to provide a copy of the
file.
Response: The Office takes the steps that can reasonably be taken to
avoid misplacing any application or patent file. Thus, there are no
further "special" steps that could reasonably be taken to avoid
misplacing reconstructed application or patent files.
Comment 9: One comment suggested that the Office should first attempt
to reconstruct the file based upon the material it has (i.e., copies of
Office actions, and sequence listings), and then require the applicant
or patentee to supply the specific materials that the Office does not
have. Another comment suggested that the applicant or patentee should
not be required to produce copies of documents available to the Office
from other sources (e.g., U.S. or foreign patents or patent
publications).
Response: The Office has considered attempting to reconstruct
portions of the application or patent file based upon material contained
in other Office databases. These databases, however, do not always
contain accurate or complete copies of the papers actually in the
application or patent file (e.g., Office actions may be draft or
incomplete and may not include the pre-printed forms sent with Office
actions). The best way to reconstruct an application or patent file
quickly, completely, and accurately is to obtain a copy of the applicant
or patentee's records of correspondence between the Office and applicant
or patentee for the application or patent.
The Office can obtain copies of U.S. patent application publications
and patents from its databases. Therefore, the Office is not requiring
applicants or patentees to provide copies of U.S. patent application
publications and patents that are among the applicant's or patentee's
record of the correspondence between the Office and the applicant or
patentee for the application, patent, or other proceeding. The Office,
however, may not be able to obtain copies of foreign patent documents or
nonpatent literature from its databases. Therefore, the Office is
requiring applicants or patentees to provide copies of foreign patent
documents and nonpatent literature that are among the applicant's or
patentee's record of the correspondence between the Office and the
applicant or patentee for the application, patent, or other proceeding.
Comment 10: One comment suggested that the applicant or patentee be
required to provide a copy of only the papers formally of record in the
application or patent file (i.e., not proposed amendments submitted to
an examiner for consideration on an informal basis).
Response: The applicant or patentee is required to provide a copy of
applicant's or patentee's record of all of the correspondence between
the Office and the applicant or patentee for such application, patent,
or other proceeding. While an "informal" (or "proposed") amendment
submitted to an examiner for consideration is not entered into the
specification or drawings of the application, Office practice is to make
such an informal or proposed amendment of record in the application file
(usually by attachment to an interview summary record). Thus, "informal"
amendments submitted to examiners for consideration are part of the
correspondence between the Office and the applicant (or patentee) that
must be submitted (if contained in applicant's or patentee's records of
the application or patent).
Comment 11: One comment questioned whether 1.251 applies when the
file is otherwise available, but is missing specific documents.
Response: Section 1.251 generally applies only to situations in which
the file of an application or patent (not just certain documents) is
unlocatable. When a document is missing from an application, Office
practice is to call the applicant's representative and request
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submission (generally by facsimile) of a copy of the missing document.
While the Office intends to continue to treat missing documents in this
relatively informal manner (rather than issuing a notice under
1.251), the Office may issue a notice under 1.251 to obtain a copy of
a missing document if the Office's informal attempts to obtain a copy of
the document are unsuccessful.
Comment 12: One comment questioned what the Office does with the
original file if it is discovered after the file has been reconstructed.
Response: The Office will combine the papers into a single file
wrapper and then destroy the other file wrapper (as well as any
duplicate papers).
Comment 13: One comment argued that the provisions of 1.251 are
not effective as to a patentee since there is no threat (e.g., threat of
abandonment) if a patentee does not comply with a notice requiring a
copy of the patent file. Another comment suggested that the Office
expressly indicate that there is no consequence if a patentee fails to
comply with a notice under 1.251 because a statutory change would be
required for the Office to be able to impose a consequence such as lapse
of the patent on a patentee.
Response: If a patentee does not timely reply to a notice under
1.251, the patent will not "lapse" or expire. Nevertheless, it is
incorrect to say that there is no consequence to a patentee who fails to
comply with a notice under 1.251. If a patentee fails to timely
comply with a notice under 1.251, the only certified copy of the
patent file that the Office will be able to produce will be a copy of
the patent and a copy of the application-as-filed (which may have an
adverse impact during attempts to enforce the patent). In addition, if
the patent is involved in a proceeding before the Office, the Office may
take action under 1.616 or 10.18. Thus, the provisions of 1.251
will be effective as to a patentee even in the absence of a statutory
change to impose some other consequence (e.g., lapse of the patent).
Comment 14: Several comments argued that the threat of holding an
application abandoned when the file was lost by the Office was patently
unfair. One comment suggested that the sanction for noncooperation with
a requirement for a copy of the application file for applications
subject to the twenty-year patent term provisions of 35 U.S.C. 154(a)(2)
be a reduction of any patent term adjustment under 35 U.S.C. 154(b), and
that the sanction for noncooperation with a requirement for a copy of
the application file for applications not subject to the twenty-year
patent term provisions of 35 U.S.C. 154(a)(2) be a requirement for a
terminal disclaimer.
Response: As discussed above, the Office cannot process or examine an
application if its file is unlocatable. Treating noncooperation with a
requirement for a copy of the application file for applications solely
by a reduction of any patent term adjustment or requirement for a
terminal disclaimer would give rise to an open-ended suspension of
action for any application in which the applicant chooses not to timely
reply to a notice under 1.251.
It is well established that keeping an application pending before the
Office for an indeterminate period of time with no prospect of action
being taken by either the Office or the applicant is not consistent with
the spirit of the patent application examination process. See
Planning-Machine Co. v. Keith, 101 U.S. (11 Otto) 479, 485 (1879)
(applicant cannot without cause hold an application pending during a
long period without prosecuting the application). If an applicant fails
to cooperate with the Office's attempt to reconstruct the file of an
unlocatable application, there is no prospect of action being taken by
either the Office or the applicant until the applicant replies to the
notice under 1.251. Therefore, if the file of an application is
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unlocatable and the applicant fails to cooperate with the Office's
attempt to reconstruct the file, it is appropriate to terminate
proceedings in that application and treat the application as abandoned.
Comment 15: One comment suggested that if an application becomes
abandoned for failure to reply to a notice under 1.251, the applicant
should be able to revive the application. Another comment suggested that
the Office should permit the applicant to revive the application for
unintentional abandonment at no cost to the applicant (the cost being
absorbed by the Office).
Response: An application abandoned for failure to timely reply to a
notice under 1.251 may be revived pursuant to 1.137, provided that
the conditions specified in 1.137 can be met (i.e., the delay in
reply to the notice under 1.215 was unavoidable or unintentional). 35
U.S.C. 41(a)(7) requires the Office to charge a fee for filing a
petition to revive an abandoned application, regardless of whether the
delay was unintentional or unavoidable. In any event, an application
abandoned for failure to timely reply to a notice under 1.251 is not
abandoned because the Office cannot locate the application, but because
the applicant failed to timely reply to the notice under 1.251.
Comment 16: Several comments argued that applicants and patentees are
unable to state with absolute confidence that their records are a
complete and accurate copy of the correspondence between the Office and
the applicant or patentee for the application, patent, or other
proceeding (since correspondence from the Office may have been lost in
the mail). Some comments suggested that an applicant or patentee be
required to state only that the copy is a complete and accurate copy of
the applicant or patentee's record of the correspondence between the
Office and the applicant or patentee for the application, patent, or
other proceeding. Another comment suggested that an applicant or
patentee be required to state only that the copy is complete and
accurate to the best of the individual's knowledge and belief, upon
reasonable investigation.
Response: Sections 1.251(b)(1) and (b)(2) as proposed provided for
the situation in which the applicant or patentee possessed a complete
and accurate copy of the applicant's or patentee's record of all of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding, and 1.251(b)(3) as proposed
provided for the situation in which an applicant or patentee did not
possess a complete and accurate copy of the applicant's or patentee's
record of all of the correspondence between the Office and the applicant
or patentee for such application, patent, or other proceeding. Since
applicants and patentees cannot be certain of whether their records are
a complete and accurate copy of all of the correspondence between the
Office and the applicant or patentee for such application, patent, or
other proceeding, 1.251(a)(1) and (a)(2) as adopted provide for the
situation in which the applicant or patentee possesses some record
(whether complete or incomplete) of the correspondence between the
Office and the applicant or patentee, and 1.251(a)(3) provides for
the rare situation in which an applicant or patentee does not possess
any record of the correspondence between the Office and the applicant or
patentee.
Sections 1.251(a)(1) and (a)(2) will require a statement that the
copy produced by applicant or patentee is a complete and accurate copy
of the applicant's or patentee's record of all of the correspondence
between the Office and the applicant or patentee for such application,
patent, or other proceeding (except for U.S. patent documents), and
whether applicant or patentee is aware of any correspondence between the
Office and the applicant or patentee for such application, patent, or
other proceeding that is not among applicant's or patentee's records. An
applicant or patentee should be able to state with confidence that the
copy provided to or produced for the Office is a complete and accurate
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copy of the applicant's or patentee's record (if any) of all of the
correspondence between the Office and the applicant or patentee, and
whether applicant or patentee is aware of any correspondence between the
Office and the applicant or patentee for such application, patent, or
other proceeding that is not among applicant's or patent's records.
Comment 17: One comment suggested that 1.251 was unclear as to
whether the applicant or patentee was being required to state that the
copy being produced by the applicant or patentee for copying by the
Office, or the copy produced by the Office, was a complete and accurate
copy of the correspondence between the Office and the applicant or
patentee for the application, patent, or other proceeding.
Response: Section 1.251(a)(2) requires a statement that the copy
produced by applicant or patentee (not the copy produced by the Office)
is a complete and accurate copy of applicant's or patentee's record of
all of the correspondence between the Office and the applicant or
patentee for such application, patent, or other proceeding.
Comment 18: One comment required that the Office indicate where or to
whom the applicant or patentee is to produce the applicant's or
patentee's record of the correspondence between the Office and the
applicant or patentee for the application, patent, or other proceeding
for copying by the Office.
Response: If an applicant or patentee decides to produce his or her
record of the correspondence between the Office and the applicant or
patentee for the application, patent, or other proceeding for copying by
the Office under 1.251(a)(2) (rather than provide a copy under
1.251(a)(1)), the record should be brought to the Customer Service
Center in the Office of Initial Patent Examination (Crystal Plaza 2,
2011 South Clark Place, Arlington, VA 22202).
Comment 19: One comment noted that 1.251 provides the option of
producing the applicant's or patentee's record of all of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding for the Office to copy when the
applicant or patentee possesses a complete copy of the correspondence
between the Office and the applicant or patentee for such application,
patent, or other proceeding. The comment suggests that the Office should
also provide the option of producing the applicant's or patentee's
record of all of the correspondence between the Office and the applicant
or patentee for such application, patent, or other proceeding for the
Office to copy when the applicant or patentee does not possess a
complete copy of the correspondence between the Office and the applicant
or patentee for such application, patent, or other proceeding.
Response: Section 1.251(a)(2) provides the option of producing the
applicant's or patentee's record of all of the correspondence between
the Office and the applicant or patentee for such application, patent,
or other proceeding for the Office to copy even when the applicant or
patentee does not possess a complete copy of the correspondence between
the Office and the applicant or patentee for such application, patent,
or other proceeding.
Comment 20: Several comments suggested that the Office should
reimburse applicants or patentees for the costs of copying the
application or patent file and delivering the copy to the Office.
Response: The Office does not currently reimburse applicants or
patentees for the costs of copying the application or patent file and
delivering the copy to the Office. The changes in this final rule will
not affect the costs of copying the application or patent file and
delivering the copy to the Office as compared to current practice. The
Office will study the reimbursement question to consider the costs and
operational considerations associated with such a proposal.
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Classification
Administrative Procedure Act
The changes in this final rule concern only the procedures for
obtaining a copy of applicant's or patentee's record of the
correspondence between the Office and the applicant or patentee for an
application, patent, or other proceeding when necessary to reconstruct
the file of such application, patent, or other proceeding. Therefore,
prior notice and an opportunity for public comment are 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 prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), an initial
regulatory flexibility analysis under the Regulatory Flexibility Act (5
U.S.C. 601 et seq.) is not required. See 5 U.S.C. 603.
Executive Order 13132
This document does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This document has been determined to be not significant for purposes
of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This document 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 document was submitted for approval by
OMB under control number 0651-0031. The United States Patent and
Trademark Office submitted this information collection package to OMB
for its review and approval because the changes in this notice affect
the information collection requirements associated with that information
collection package.
The title, description, and respondent description of this
information collection is shown below with an estimate of the annual
reporting burdens. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information. The principal impact of the
changes in this notice is to set forth the procedures for obtaining a
copy of applicant's or patentee's record of the correspondence between
the Office and the applicant or patentee for an application, patent, or
other proceeding when necessary to reconstruct the file of such
application, patent, or other proceeding.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/31/42/43/61/62/63/64/67/68/91/92/96/97.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other
For-Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,231,365.
Estimated Time Per Response: 0.46 hours.
Estimated Total Annual Burden Hours: 1,018,736 hours.
Needs and Uses: During the processing of an application for a patent,
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the applicant/agent may be required or desire to submit additional
information to the United States Patent and Trademark Office concerning
the examination of a specific application. The specific information
required or which may be submitted includes: Information Disclosure
Statements; Terminal Disclaimers; Petitions to Revive; Express
Abandonments; Appeal Notices; Petitions for Access; Powers to Inspect;
Certificates of Mailing or Transmission; Statements under 3.73(b);
Amendments, Petitions and their Transmittal Letters; and Deposit Account
Order Forms.
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 regarding these
information collections, including suggestions for reducing this burden,
to Robert J. Spar, Director, Office of Patent Legal Administration,
United States Patent and Trademark Office, Washington, DC 20231, or to
the Office of Information and Regulatory Affairs, OMB, 725 17th Street,
NW., Washington, DC 20503 (Attn: Desk Officer for the United States
Patent and Trademark Office).
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 record keeping
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).
2. Section 1.251 is added immediately following 1.248 to read as
follows:
1.251 Unlocatable file.
(a) In the event that the Office cannot locate the file of an
application, patent, or other patent-related proceeding after a
reasonable search, the Office will notify the applicant or patentee and
set a time period within which the applicant or patentee must comply
with the notice in accordance with one of paragraphs (a)(1), (a)(2), or
(a)(3) of this section.
(1) Applicant or patentee may comply with a notice under this section
by providing:
(i) A copy of the applicant's or patentee's record (if any) of all of
the correspondence between the Office and the applicant or patentee for
such application, patent, or other proceeding (except for U.S. patent
documents);
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(ii) A list of such correspondence; and
(iii) A statement that the copy is a complete and accurate copy of
the applicant's or patentee's record of all of the correspondence
between the Office and the applicant or patentee for such application,
patent, or other proceeding (except for U.S. patent documents), and
whether applicant or patentee is aware of any correspondence between the
Office and the applicant or patentee for such application, patent, or
other proceeding that is not among applicant's or patentee's records.
(2) Applicant or patentee may comply with a notice under this section
by:
(i) Producing the applicant's or patentee's record (if any) of all of
the correspondence between the Office and the applicant or patentee for
such application, patent, or other proceeding for the Office to copy
(except for U.S. patent documents); and
(ii) Providing a statement that the papers produced by applicant or
patentee are applicant's or patentee's complete record of all of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding (except for U.S. patent
documents), and whether applicant or patentee is aware of any
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding that is not among applicant's
or patentee's records.
(3) If applicant or patentee does not possess any record of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding, applicant or patentee must
comply with a notice under this section by providing a statement that
applicant or patentee does not possess any record of the correspondence
between the Office and the applicant or patentee for such application,
patent, or other proceeding.
(b) With regard to a pending application, failure to comply with one
of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time
period set in the notice will result in abandonment of the application.
October 31, 2000 Q. TODD DICKINSON
Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1241 OG 36]