| Benefit Claims, Priority, Electronic Exchange of Documents |
Referenced Items (213, 214, 215, 216, 217, 218, 219, 220, 221, 222, 223, 224, 225, 226, 227, 228, 229, 230) |
(226) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1, 2, 3, 5, and 10
[Docket No.: 2005-P-053]
RIN 0651-AB85
Provisions for Claiming the Benefit of a
Provisional Application with a
Non-English Specification and
Other Miscellaneous Matters
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
amending the rules of practice to require that: A copy of the English
translation of a foreign-language provisional application be filed in
the provisional application if a nonprovisional application claims the
benefit of the provisional application; a copy of documentary evidence
supporting a claim of ownership be recorded in the Office's assignment
records when an assignee takes action in a patent matter; and separate
copies of a document be submitted to the Office for recording in the
Office's assignment records, each accompanied by a cover sheet, if the
document to be recorded includes an interest in, or a transaction
involving, both patents and trademarks.
DATES: Effective November 25, 2005.
Applicability Date: The changes apply to any paper, application or
reexamination proceeding filed in the Office on or after November 25,
2005. Further, if a nonprovisional patent application claims the
benefit of the filing date of a non-English provisional application, a
translation of the provisional application and a statement that the
translation was accurate required by 37 CFR 1.78(a)(5)(iv) will not be
required to be filed in the provisional application, if the translation
and statement were filed in the nonprovisional application before
November 25, 2005.
FOR FURTHER INFORMATION CONTACT: Karin Ferriter (571-272-7744), Senior
Legal Advisor, Office of Patent Legal Administration, Office of the
Deputy Commissioner for Patent Examination Policy, or Robert J. Spar
(571-272-7700), Director of the Office of Patent Legal Administration,
Office of the Deputy Commissioner for Patent Examination Policy,
directly by phone, or by facsimile to 571-273-7744, or by mail
addressed to: Mail Stop Comments - Patents, Commissioner for Patents,
P.O. Box 1450, Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: This final rule revises the rules of practice in
title 37 of the Code of Federal Regulations (CFR) pertaining to records
related to signature, availability of patent application files, power of
attorney, provisional applications, and assignments.
Discussion of Specific Rules
Section 1.4: Section 1.4(d)(2) is amended to delete "with a signature in
permanent dark ink or its equivalent," because dark ink applies to
handwritten signatures, not S-signatures. Section 1.4(d)(2)(ii) is amended
to move the word "only" in the second sentence thereof from immediately
preceding the word "be" to immediately following the word "used" and to
change "registered practitioner" to "patent practitioner (Sec.
1.32(a)(1))." The term "patent practitioner" is defined in Sec. 1.32(a).
Section 1.11: Section 1.11(a) is amended for clarity and to reflect
the policy regarding availability to the public of papers in the files
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of applications that have been published. For example, Sec. 1.11(a) is
amended to remove "abandoned" before "published application." Published
applications are not physically available to the public to copy and inspect
if the file is maintained in a paper file wrapper. If a published
application is not maintained in paper, but is instead maintained in the
image file wrapper (IFW) system, the application is made available for
public inspection through the Patent Application Information Retrieval
(PAIR) system pursuant to Sec. 1.14(a)(1)(iii) and 1.14(b). Since most
pending applications have become available through PAIR, the reference to
only abandoned published applications in Sec. 1.11 may have been
misleading. In addition, Sec. 1.11(a) is amended to include: "If an
application was published in redacted form pursuant to Sec. 1.217, the
complete file wrapper and contents of the patent application will not be
available if: the requirements of paragraphs (d)(1), (d)(2), and (d)(3) of
Sec. 1.217 have been met in the application; and the application is still
pending."
Section 1.17: Section 1.17(f) is amended to add "Sec. 1.36(a) - for
revocation of a power of attorney by fewer than all of the applicants." See
the discussion of the change to Sec. 1.36(a). This change corrects Sec.
1.17 by including Sec. 1.36(a) in the list of petitions for which a fee set
forth in Sec. 1.17 can be charged, and also groups the fee for a petition
under Sec. 1.36(a) with similar petitions (under Sec. 1.182 and Sec.
1.183).
Section 1.25: Section 1.25(c)(4) is amended to change the address for
payment to replenish a deposit account submitted by mail with a private
delivery service or hand-carrying the payment to: Director of the U.S.
Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue,
Suite 300, Alexandria, Virginia 22314.
Section 1.31: Section 1.31 is amended to change the title to "Applicant
may be represented by one or more patent practitioners or joint inventors"
in order to make the title of the rule more descriptive of the revised
rule. A definition for "patent practitioner" is added to Sec. 1.32(a), as
discussed below, and the term "patent practitioner" is used in place of
"registered patent attorney or agent" in Sec. 1.31, and in other rules.
Further, Sec. 1.31 is amended to indicate that one or more patent
practitioners or joint inventors may be given a power of attorney to
thereby recognize that there may be a single person appointed or an
appointment of more than one practitioner or joint inventor to represent
the applicant. Section 1.32(c)(1) permits one or more joint inventors to be
given power of attorney to represent the other joint inventor or inventors;
accordingly, the revision to Sec. 1.31 is necessary for consistency with
Sec. 1.32(c)(1).
Section 1.32: Section 1.32(a)(1) is amended to set forth the definition
of "patent practitioner" and to renumber sections (a)(1) to (a)(4) as
(a)(2) through (a)(5), respectively.
Revised Sec. 1.32(a)(1) defines the term "patent practitioner" as "a
registered patent attorney or registered patent agent under Sec. 11.6."
Section 1.32(a)(1) is renumbered as Sec. 1.32(a)(2) and further revised
to change "registered patent attorneys or registered patent agents" to
"one or more patent practitioners or joint inventors" to reflect that one
or more patent practitioner(s) may be appointed in a power of attorney.
Section 1.31 permits a power of attorney to be given to one or more patent
practitioners or joint inventors, and this change is consistent therewith.
Section 1.32(a)(2) is renumbered as Sec. 1.32(a)(3) and further revised
to add "or, in a reexamination proceeding, the assignee of the entirety of
ownership of a patent" to reflect that the assignee of the entire interest
in a patent may authorize a patent practitioner to represent the assignee
in reexamination proceedings, for example, in addition to patent
applications. In addition, Sec. 1.32(a)(3) is amended to change "registered
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patent attorney or registered patent agent" to "patent practitioners or
joint inventors."
Any power of attorney given to a practitioner who has been suspended or
disbarred by the Office is ineffective, and does not authorize the person
to practice before the Office or to represent applicants or patentees in
patent matters.
Section 1.32(a)(3) is renumbered as Sec. 1.32(a)(4), and further revised
to change "registered patent attorney or registered patent agent" to
"patent practitioner or joint inventor."
Section 1.32(a)(4) is renumbered as Sec. 1.32(a)(5), and the resulting
new paragraph Sec. 1.32(a)(5)(i) is amended to change both instances of
"patent application or patent" to "patent application, patent or other
patent proceeding" and the resulting new paragraph Sec. 1.32(a)(5)(iii) is
amended to delete "registered."
Section 1.32(c)(3) is amended such that the first sentence reads: "Ten
or fewer patent practitioners, stating the name and registration number of
each patent practitioner." The Office needs the registration number of the
patent practitioner to make the practitioner of record. Because the former
rules did not require a registration number, registration numbers were
sometimes omitted, leading to delays in Office processing of powers of
attorney. Accordingly, Sec. 1.32(c)(3) is amended to add a requirement for
the registration number of the patent practitioner to assist the Office in
making the practitioner of record. If the name submitted on the power of
attorney does not match the name associated with the registration number
provided in the Office of Enrollment and Discipline records for patent
practitioners, the person that the Office will recognize as being of record
will be the person associated with the registration number provided,
because the Office enters the registration number, not the name, when
making the practitioner of record. Accordingly, if the wrong registration
number is provided, a new power of attorney will be required to correct the
error.
Section 1.33: Section 1.33(a) is amended to use the generic term "patent
practitioner" instead of "registered patent attorney or patent agent."
Specifically, Sec. 1.33(a) is amended to change "registered patent attorney
or patent agent" to "patent practitioner" in two places. In addition, Sec.
1.33(a) is amended to revise the sixth sentence to read: "If more than one
correspondence address is specified in a single document, the Office will
select one of the specified addresses for use as the correspondence address
and, if given, will select the address associated with a Customer Number
over a typed correspondence address." Furthermore, Sec. 1.33(a)(1) is
amended to change "If the application was filed by a registered attorney or
agent, any other registered practitioner named in the transmittal papers
may also change the correspondence address" to "If the application was
filed by a patent practitioner, any other patent practitioner named in the
transmittal papers may also change the correspondence address."
Neither Sec. 1.33 nor any other rule authorize a practitioner who has
been suspended or disbarred by the Office to practice before the Office.
Section 1.33(b)(1) and Sec. 1.33(b)(2) are revised to change "registered
patent attorney or patent agent" to "patent practitioner."
Section 1.33 is also revised to add new paragraph (e) to remind patent
practitioners that the attorney roster must be updated separately from and
in addition to any change of address filed in individual patent
applications. Section 1.33 is amended to state: "(e) A change of address
filed in a patent application or patent does not change the address for a
patent practitioner in the roster of patent attorneys and agents. See Sec.
11.11 of this part."
Section 1.34: Section 1.34 is amended to change "registered patent
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attorney or patent agent" to "patent practitioner" in two places, to
change "in whose behalf" to "on whose behalf," and to change "must specify
his or her registration number and name with his or her signature" to "must
set forth his or her registration number, his or her name, and signature"
in order to clarify that the name and signature are separate requirements.
Section 1.36: Section 1.36(a) is amended to change Sec. 1.17(h) to
Sec. 1.17(f). The fee for a petition to allow a split power of attorney
should be the same regardless of whether the split power of attorney
results from revocation by fewer than all of the inventors, as provided in
Sec. 1.36(a), or from a petition under Sec. 1.183 to waive the provisions
of Sec. 1.32(b)(4) requiring that a power of attorney be signed by the
applicant for patent (Sec. 1.41(b)) or the assignee of the entire interest
of the applicant. Furthermore, "only" has been moved from immediately
preceding the word "revoke" to immediately following the term "power of
attorney" and "registered patent attorney or patent agent" is changed to
"patent practitioner." Section 402.01 of the Manual of Patent Examining
Procedure (MPEP) provides additional information on a split power of
attorney. See MPEP Sec. 402.01 (8th ed. 2001) (Rev. 3, August 2005).
Section 1.52: Section 1.52 is amended by removing paragraphs (a)(5),
(a)(7), and (b)(7), and by redesignating paragraph (a)(6) as paragraph
(a)(5). The removed paragraphs explained the practice set forth in Sec.
1.135(c) wherein the Office will give applicant a new period of time to
file a reply, if the initial reply was not complete or compliance with a
requirement was inadvertently omitted. The paragraphs have been removed as
unnecessary in view of Sec. 1.135(c).
Section 1.78: Section 1.78(a)(5)(iv) is amended to require the English
translation of a foreign-language provisional application be filed in the
provisional application, instead of also permitting the translation to be
filed in each nonprovisional application that claims the benefit of the
filing date of the provisional application. Section 1.78(a)(5)(iv) is also
amended to provide that applicant must file, in a nonprovisional
application, confirmation of the filing of the translation and statement,
when a notice is mailed in the nonprovisional application requiring the
translation and statement. Previously, Sec. 1.78(a)(5)(iv) provided that
when, pursuant to 35 U.S.C. 119(e), benefit was being claimed of a
provisional application which was filed in a language other than English,
an English language translation of the provisional application, accompanied
by a statement that the translation is accurate, must have been filed in
either: (1) The provisional application; or (2) each nonprovisional
application that claims the benefit of the provisional application. Thus,
if the translation and statement were not filed in the provisional
application, they could have been filed in each application that claims
the benefit of the filing date of the provisional application (to satisfy
the requirement of the rule).
A provisional application is open to the public if the benefit of the
provisional application is claimed in an application that has either been
published or patented. Where the translation and statement were not filed
in the provisional application because they were filed in each
nonprovisional application(s) claiming the benefit of the provisional
application, there was a burden on the public in finding the translation
and statement, and on the Office in storing possibly duplicate copies of
the documents. Further, when a translation of the provisional application
was filed in the nonprovisional application, the Office sometimes confused
the translation of the provisional with the specification papers to be used
for the nonprovisional application. Because the option was available to
file the translation and statement in the nonprovisional application,
applicant's counsel may have inadvertently chosen that option in situations
where there were many nonprovisional applications claiming the benefit of a
single provisional application, and incurred substantial expense for having
to file a translation in each nonprovisional application. Having only one
copy of the translation (and statement) "centrally" filed in the
provisional application, regardless of how many nonprovisional applications
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claim benefit of that provisional application will be beneficial for
applicants, the public, and the Office. Accordingly, Sec. 1.78(a)(5)(iv) is
amended to delete from the first sentence "or the later-filed
nonprovisional application" to thereby eliminate the option to file the
translation and statement in the nonprovisional application.
Section 1.78(a)(5)(iv) is further revised to add ", in the provisional
application," after "a period of time within which to file" and the former
last sentence of Sec. 1.78(a)(5)(iv) is further revised to read: "If the
notice is mailed in a pending nonprovisional application, a timely reply to
such a notice must include the filing in the nonprovisional application of
either a confirmation that the translation and statement were filed in the
provisional application, or an amendment or Supplemental Application Data
Sheet withdrawing the benefit claim, or the nonprovisional application will
be abandoned." Lastly, the following sentence is added to the end of the
paragraph: "The translation and statement may be filed in the provisional
application, even if the provisional application has become abandoned."
Section 1.133: Section 1.133(a)(2) is amended to permit an interview
before first Office action in any application if the examiner determines
that such an interview would advance prosecution of the application. The
Office conducted a pilot program permitting an interview before the first
Office action in applications that were classified in class 705, subclasses
35 through 45, and assigned to Technology Center Art Units 3624 or 3628.
See Notice of Pilot Program to Permit Pre-First Office Action Interview for
Applications Assigned to Art Units 3624 and 3628 and Request for Comments
on Pilot Programs, 1281 Off. Gaz. Pat. Office 148 (Apr. 27, 2004). The
Office received few requests for such interviews, but when such interviews
were conducted, the feedback from examiners was that such interviews were
usually beneficial and often assisted in focusing the issues for
examination. Therefore, the Office sees no justification for maintaining
the current prohibition in Sec. 1.133 on interviews before first Office
action in non-continuing applications. Nevertheless, an interview before
the first Office action in a non-continuing application will not be
permitted unless the examiner determines that such an interview would
advance prosecution of the application. Thus, the examiner may require that
an applicant requesting an interview before first Office action provide a
paper that includes a general statement of the state of the art at the time
of the invention, and an identification of no more than three (3)
references believed to be the "closest" prior art and an explanation as to
how the broadest claim distinguishes over such references. See Notice of
Pilot Program to Permit Pre-First Office Action Interview for Applications
Assigned to Art Units 3624 and 3628 and Request for Comments on Pilot
Programs, 1281 Off. Gaz. Pat. Office at 149.
Section 2.208: Section 2.208(c)(4) is amended to change the address for
payment to replenish a deposit account submitted by mail with a private
delivery service or hand-carrying the payment to: Director of the U.S.
Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue,
Suite 300, Alexandria, Virginia 22314.
Section 3.28: Section 3.28 previously directed that "[o]nly one set of
documents and cover sheets to be recorded should be filed" which
discouraged assignees from submitting one set of documents including a
patent cover sheet and the document to be recorded, and another set of
documents including a trademark cover sheet and another copy of the
document to be recorded. While the Office could process a set of documents
that includes a patent cover sheet, trademark cover sheet, and only one
copy of the document to be recorded, submitting only one copy of the
document could have led to the misconception by the Office that a document
submitted for recordation has been omitted, or the document submitted
belongs only to the second cover sheet, particularly when the documents are
submitted by facsimile and there is a break in the transmission. For
example, if a submission included: A trademark sheet on pages 1 and 2, a
patent cover sheet on page 3, and a document for recording on pages 4-7,
then, if pages 1 and 2 are separated from the remainder of the set of
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documents, it may not have been clear that the trademark cover sheet was
missing because the patent cover sheet and the document to be recorded
would have themselves made a complete set of documents. To reduce
confusion, Sec. 3.28 is revised to require that a separate copy of the
document to be recorded be submitted with each cover sheet. Note that even
if the term "copy of the document to be recorded" is not used in this
discussion, the document submitted for recordation must be a copy, and not
the original document, and the term "document to be recorded" has been used
to emphasize that the document is to be recorded, not to suggest that an
original may be submitted.
Section 3.28 is amended to state that each document to be recorded must
be accompanied by a single cover sheet (and not multiple cover sheets), to
put parentheses around "as specified in Sec. 3.31," and to delete the
statement that at least one cover sheet must be included with each document
submitted for recording. Section 3.28 is also revised to delete the
sentence which states that only one set of documents and cover sheets to be
recorded must be filed, and to make it clear that if an assignment includes
interests in, or transactions involving, both patents and trademarks, then
two copies of each document (each document with its own cover sheet) must
be submitted. Thus, a patent cover sheet and a copy of the document, and a
trademark cover sheet and a copy of the document, must be submitted.
Section 3.31: Section 3.31(a)(7) is amended to delete "submission"
before "(e.g. /Thomas O'Malley III/)" to correct an obvious error.
Section 3.73: Section 3.73(b)(1)(i) is amended to require, for patent
matters, that the document(s) submitted to establish ownership under Sec.
3.73(b) be recorded pursuant to Sec. 3.11 in the assignment records.
In order to take action in a patent application or a patent, a party
must comply with Sec. 3.73 to establish ownership of the rights to a patent
application or a patent (i.e., a patent property) by submitting to the
Office a signed statement identifying the assignee. In the prior version of
the rule, the signed statement must have been accompanied by either: (1)
Documentary evidence of a chain of title from the original owner to the
assignee; or (2) a statement specifying where such documentary evidence is
recorded in the Office's assignment records. Previously, where the first
option was chosen, there was no requirement that the document(s) submitted
to establish ownership also be recorded pursuant to Sec. 3.11 in the
assignment records unless the Office explicitly required such recordation
on a case-by-case basis. Such a requirement was made only in the rare
situation where a question arose as to ownership of the property. It is
desirable, however, that the Office's patent assignment records should, as
a rule, reflect the assignment of any assignee seeking to take action in a
patent application or patent.
The previous system, which permitted an assignee to take action by
submitting a copy of the assignment in a patent application or patent,
but did not require the assignment to be recorded in the Office's patent
assignment records, made a search of the Office's patent assignment records
unreliable. Permitting an assignee to take action in an application or
patent without also recording the assignment (in the Office's assignment
records) also encourages the late filing of assignment document(s) and
defeats the benefits of timely recordation. See 35 U.S.C. 261. ("An
assignment, grant or conveyance shall be void as against any subsequent
purchaser or mortgagee for a valuable consideration, without notice, unless
it is recorded in the Patent and Trademark Office within three months from
its date or prior to the date of such subsequent purchase or mortgage.")
Section 3.73(b)(1)(i) is amended to require that, for patent matters
only, the submission of the documentary evidence to establish ownership
must be accompanied by a statement affirming that the documentary evidence
of the chain of title from the original owner to the assignee was, or
concurrently is, submitted for recordation pursuant to Sec. 3.11. Thus,
when filing a Sec. 3.73(b) statement to establish ownership, an applicant
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or patent owner must also submit the assignment document(s) to the Office
for recordation, if such a submission has not been previously made. If the
Sec. 3.73(b) statement is not accompanied by a statement affirming that the
documentary evidence was, or concurrently is, submitted for recordation
pursuant to Sec. 3.11, then the Sec. 3.73(b) statement will not be
accepted, and the assignee(s) will not have established the right to take
action in the patent application or the patent for which the Sec. 3.73(b)
statement was submitted. For trademark matters, there would continue to be
no requirement that the submission of the documentary evidence be
accompanied by a statement affirming that the documentary evidence was
submitted for recordation. Rather, paragraph (b)(1)(i) would continue to
set forth that the Office may require (as deemed appropriate in any
individual case) the documents (submitted to establish ownership) to be
recorded pursuant to Sec. 3.11 in the assignment records of the Office as a
condition to permitting the assignee to take action in a trademark matter
pending before the Office.
Section 5.11: Section 5.11 is amended to correct cross references.
Section 5.11(b) is amended to change "15 CFR part 779" to "15 CFR part 734"
and "Office of Export Administration, International Trade Administration"
to "Bureau of Industry and Security." Section 5.11(c) is amended to change
"data * * * is" to "data * * * are," "15 CFR parts 768-799" to "15 CFR
parts 730-774," "Export Administration" to "Bureau of Industry and
Security," and "15 CFR part 779" to "15 CFR part 734."
Section 5.19: Section 5.19 is amended to correct two cross references,
and to update a reference to the Office. Section 5.19(a) is amended to
change "15 CFR 770.10(j)" to "15 CFR 734.3(b)(1)(v)" and to add "U.S."
before "Patent." Section 5.19(b) is amended to change "15 CFR 779A.3(e)" to
"15 CFR 734.10(a)."
Section 10.112: Section 10.112 is amended to correct the cross
reference, changing "10.6(c)" to "11.6(c)."
Response to comments: The Office published a notice proposing changes to
the rules of practice to: Allow a person acting with limited recognition to
be given a power of attorney and authorization to sign amendments and other
patent-related correspondence; require a copy of the English translation of
a foreign-language provisional application be filed in the provisional
application if a nonprovisional application claims the benefit of the
provisional application; and require a copy of documentary evidence
supporting a claim of ownership be recorded in the Office's assignment
records when an assignee takes action in a patent matter. See Provisions
for Persons Granted Limited Recognition To Prosecute Patent Applications
and Other Miscellaneous Matters, 70 FR 17629 (April 7, 2005), 1294 Off.
Gaz. Pat. Office 22 (May 3, 2005) (proposed rule). The Office received 11
written comments in response to this notice. Comments generally in support
of a change are not discussed. Comments regarding limited recognition,
other than comment 2, are not discussed. The other comments and the
Office's responses to those comments follow:
Comment 1: One comment addressed the proposed changes to Sec. 1.11,
noting that the change "solidified a position held by the Patent Office in
recent years that the act of publication at 18 months constitutes an
inherent power to inspect." The comment raised a concern that having the
inventor's signature available on the internet could assist someone in
identity theft, and also questioned the Office's authority to make the file
wrapper public.
Response: In requiring publication of patent applications, Congress
gave the Office the authority to determine how to publish patent
applications. The Office has exercised this authority by publishing the
specification, including the claims, in a searchable database, and by
making the published application file available to the public, either
on the internet, or through the Office of Public Records, or the File
Information Unit, depending upon whether the file is available in image
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or paper form, and depending upon the status of the application
(pending or abandoned). As to identity theft, the Office does not require
Social Security Numbers, and takes steps to ensure that credit card
information is not made part of a patent application file. Where an
applicant elects to file a Petition to Make Special because of the age of
the applicant, if the applicant uses a copy of his or her driver's license
to support the petition, the Office will expunge the document from the
images available to the public, if a petition under Sec. 1.59 is filed. The
signature of the inventor on the oath or declaration for the patent
application is required by 35 U.S.C. 116. The Office has always provided
full access to the public to patented files so that the public can evaluate
whether the statutory requirements (such as an oath or declaration required
by 35 U.S.C. 116) were met, and to understand the prosecution history.
Comment 2: One comment asked whether the proposed amendments would make
private PAIR available to patent practitioners with limited recognition,
i.e., whether someone with a limited recognition could be associated with a
Customer Number.
Response: Assignment of a limited recognition number would permit
someone accorded limited recognition to have his or her limited recognition
number associated with a Customer Number, and obtain a Public Key
Infrastructure (PKI) certificate so as to obtain access to private PAIR.
For further information on private PAIR, contact the Electronic Business
Center by telephone at 866-217-9197 (toll free) or by e-mail to
EBC@uspto.gov. The Office has decided not to go forward with the proposed
amendments regarding limited recognition at this time.
Comment 3: One comment questions the statutory basis for the Office to
require a translation of a foreign-language provisional application before
the provisional application can be relied upon in a benefit claim. The
comment suggests adding the following sentence to the beginning of Sec.
1.78(a)(5)(iv): "Benefit to a provisional application may not be granted in
any nonprovisional application or any international application designating
the United States of America unless the provisional application is in
English or an English-language translation is provided with a certification
of the accuracy of the translation."
Response: The Office's authority to require an English translation is
provided in 35 U.S.C. 2(b)(2)(A) (35 U.S.C. 6(a) at the time an English
translation of a provisional application was originally added to the rules
of practice). An English translation is a procedural requirement. As to the
proposed insertion, the suggestion has not been adopted.
Comment 4: One comment suggested that there not be a requirement for an
applicant to file a statement in each nonprovisional application that an
English language translation was filed in the provisional application, and
suggested that a notice be mailed in a nonprovisional application near 14
months from the provisional application's filing date, if the English
translation has not been filed in the provisional application.
Response: The statement is required to be filed only when a notice has
been mailed in the nonprovisional application requiring an English
translation of the provisional application so that the examiner can
evaluate the benefit claim. If a provisional application is filed in a
language other than English, and an English language translation is later
filed in the provisional application at the same time a nonprovisional
application is filed that claims the benefit of the provisional
application, then no statement that an English language translation was
filed will be necessary. At the time the examiner evaluates the benefit
claim, the English language translation will be in the provisional
application and available to the examiner. Furthermore, if a provisional
application was filed in a language other than English, an applicant filing
a nonprovisional application claiming the benefit of the filing date of the
provisional application could have filed the translation of the provisional
application in the nonprovisional application or the provisional
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application according to Sec. 1.78(a)(5) before the effective date of the
revision to Sec. 1.78(a)(5).
If the translation was elected to be filed in the nonprovisional
application, according to prior Sec. 1.78(a)(5), a continuation,
continuation-in-part or divisional application of the nonprovisional
application would either need a new English translation of the provisional
application to be filed in the continuation, continuation-in-part or
divisional application, or the translation to be filed in the provisional
application. As revised, the translation of the non-English specification
must always be filed in the provisional application, and a notice will be
mailed in the nonprovisional application only where the translation and the
statement that the translation is accurate were not filed in the
provisional application.
As to the suggestion that the notice requiring the English language
translation be mailed in the nonprovisional application 14 months after
the provisional application was filed, the Office is seeking to continually
improve processing of patent applications, and generally seeks to send out
notices in a timely manner, with as many issues addressed at one time as
possible. Applicants should be alert to the language of the provisional
application and may be well advised to docket provisional applications in
such a manner so that any necessary translation can be filed without a
reminder from the Office.
Comment 5: Another comment suggested that the need for a translation to
be filed in a provisional application is an undue burden on the applicant,
and suggested a public hearing before this change is made.
Response: A translation is already required to be filed whenever an
applicant claims the benefit of an application that was not filed in
English and the applicant is notified of the need for the translation by
the Office. The change made in the amendment to Sec. 1.78 merely requires
that the translation be filed in the provisional application, rather than
in either the provisional or each nonprovisional application claiming the
benefit of the provisional application. The Office has found that the
translation of the provisional application has been confused with the
specification for the application to be examined and minimizing this
confusion should be beneficial for both applicants and the Office. In more
than one instance, the Office has published the translation of the
provisional patent application instead of a nonprovisional application for
patent, and has been required to publish a corrected patent application
publication to correct this error. Accordingly, requiring the translation
of the provisional application to be filed in the provisional application
is not an undue burden.
Comment 6: Another comment stated that Sec. 1.78(a)(5)(iv) did not
clearly confirm that the translation and statement could be filed in the
provisional application both before and after abandonment of that
application. A related comment argued that allowing papers to be filed in
an abandoned provisional application was inconsistent with Sec. 1.137(g),
which provides for abandonment of provisional applications in limited
situations.
Response: The translation and statement can be filed in a provisional
application after the provisional application becomes abandoned. Nothing in
prior Sec. 1.78 precluded the translation from being filed in an abandoned
provisional application. Many papers are filed in abandoned applications:
Changes of address, powers of attorney, and powers to inspect. A sentence
has been added to the rule to clarify this point. In permitting a paper to
be placed in the file of an abandoned application, nothing suggests that
the application has been revived. As to correcting a defective translation
in an abandoned application, an applicant should simply file the corrected
translation in the abandoned application.
Comment 7: One comment suggested that applicants be required to file a
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translation of a provisional application in the corresponding
nonprovisional application after the filing date of the nonprovisional
application to avoid confusing the specification to be examined with the
translation.
Response: The option of having the translation filed after the filing
date of the nonprovisional application does not avoid the likelihood of
the translation being confused with a substitute specification, and has not
been adopted.
Comment 8: One comment suggested that the notice requiring the
translation and statement that the is accurate be mailed in the provisional
application about fourteen months after the provisional application was
filed, instead of being mailed in the nonprovisional application.
Response: The suggestion has not been adopted because, if the notice
were to be mailed in the abandoned provisional application, the only
consequence of a failure to comply would be waiver of right to make a claim
of the benefit of the provisional application. More than one application
may claim the benefit of the provisional application, and a translation may
have already been filed in some of the nonprovisional applications. If the
notice is mailed when a new application is filed that claims the benefit of
the provisional application, and applicant failed to comply, having the
benefit claim waived only as to the new application would be overly
complicated. See also the discussion of comment 9.
Comment 9: Two comments suggested that the rule should provide that the
benefit claim be waived if the translation has not been filed in response
to a notice requiring the translation to be filed in the provisional
application, and confirmation in the nonprovisional application.
Alternatively, the comments suggested that applicant be allowed to withdraw
the claim of the benefit of the provisional application.
Response: The suggestion that the benefit claim be considered waived if
no response is filed to the notice has not been adopted. The analogy to a
priority or benefit claim being waived when not made in a timely manner is
not persuasive because, with a late benefit claim, no mention is made of
the earlier application until the right to make a benefit claim has been
waived. With the failure to file a translation, the right exists, but would
be extinguished by the failure to timely file the translation if the
suggestion were to be adopted. The sudden extinguishing of a right to make
a benefit claim could have an impact upon the prior art applied by the
examiner, and is better addressed as part of the standard procedures for
failure to comply with the requirement of the Office. The Office also
considered treating the benefit claim as waived if the translation is not
filed by the time of publication or patenting of the application, which
would be more analogous to the late benefit claims treatment, but the
Office generally prefers to warn applicants of an impending loss of rights
when feasible. If applicant desires to eliminate the benefit claim, an
amendment to the first sentence of the specification or a supplemental
application data sheet to remove the benefit claim should be filed promptly
in response to the notice. If the Office were to wait for applicant's
reply, the Office would be delaying prosecution unnecessarily, and the
impact on patent term adjustment would be unclear.
As to the suggestion that the rule provide for the express withdrawal of
a benefit claim instead of filing a translation, this suggestion has been
adopted by adding "or an amendment or Supplemental Application Data Sheet
withdrawing the benefit claim" to Sec. 1.78(a)(5)(iv).
Comment 10: One comment requested clarification of the result of the
Office failing to mail a notice requiring an English translation of a
provisional application, and to comment on the position taken in a prior
rule making that the applicant should file an English translation and
statement that the translation is accurate before an application claiming
the benefit of the nonprovisional application is published.
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Response: The consequence of an applicant who has filed a provisional
application in a language other than English, failed to file a translation
of the provisional application and a statement that the translation is
accurate, and then filed an application claiming the benefit of the
provisional application is that the applicant has engaged in conduct that
leads the Office to expend resources mailing the applicant a letter
requiring the translation. If the examiner of a nonprovisional application
needed the translation to determine whether the application was entitled to
the benefit of the provisional application, then another consequence would
be a delay in the prosecution of the nonprovisional application. Applicants
are encouraged to file any necessary translations in a timely manner so as
to avoid the need for the Office to expend resources reminding applicant to
file papers and fees that were previously omitted, preferably before
publication of the nonprovisional application so that the appropriate date
under 35 U.S.C. 102(e) can be determined without an independent translation
of the provisional application.
Comment 11: One comment alleged that the text "given a period of time
within which to file" was vague and indefinite, and requested that a fixed
period be set in the rule. The comment stated that sometimes an
insufficient period of time may be set for an applicant to obtain the
translation.
Response: The suggestion has not been adopted. When an applicant elects
to claim the benefit of a non-English provisional application in a
nonprovisional application (or by entry into the national stage), applicant
should initiate the translation of the provisional application because Sec.
1.78(a)(5)(iv) requires a translation (and a statement that the translation
is accurate) when the benefit claim of a provisional is claimed. Applicants
should not wait until reminded by the Office of this requirement, and
should obtain and file the translation without being required by the Office
to do so. If the requirement is made before examination, a period of no
less than thirty days will be set. If the requirement is made by the
examiner, as part of an Office action, the period of time will be the time
dictated by the other issues addressed in the Office action (i.e., an Ex
parte Quayle action would be two months and a non-final Office action would
be three months). The broad language used in the rule is desirable to
maximize the Office's flexibility in setting the period for reply.
Comment 12: One comment requested that the proposed revision to
Sec. 1.78 apply only to provisional applications filed on or after the
effective date of the rule change.
Response: Applicants have been required to file a translation of a
non-English provisional application since provisional applications were
first accepted. The change in Sec. 1.78 is merely to indicate the
application in which a translation is required. When the rule becomes
effective, if a nonprovisional application claims the benefit of a non-
English provisional and a copy of the translation is not already in the
nonprovisional application or the provisional application, then the
translation will be required to be filed in the provisional application.
Comment 13: One comment suggested that the rules be amended to provide
for paralegals to prepare and file Information Disclosure Statements and
responses to Notices To File Missing Parts.
Response: The rules of practice provide that only a patent practitioner,
the applicant or the assignee of the entire interest of the applicant may
sign correspondence in a patent application. Requests for corrected filing
receipts, Information Disclosure Statements and responses to Notices To
File Missing Parts are examples of correspondence that must comply with the
signature rules. No change is being considered at this time.
Furthermore, paralegals or other non-registered personnel employed by
the registered patent practitioner should not contact the Office to ask
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legal questions or other questions regarding the merits of a patent
application. As paralegals and other personnel are not registered
practitioners, only general information about Office procedures can be
provided. Only registered practitioners are permitted to prosecute patent
applications in accordance with Sec. 11.10. Thus, Office personnel have
been instructed to discuss the merits of a patent application with only the
patent practitioner of record, the applicant, or the assignee of the entire
interest of the applicant. See MPEP Secs. 101 and 102.
Comment 14: Another comment suggested that the proposed amendment to
Sec. 3.73(b)(1)(i) be rephrased to clearly provide that the documentary
evidence of assignment may be submitted concurrently with, as well as prior
to, submission of a statement under Sec. 3.73(b).
Response: This suggestion is adopted.
Rule Making Considerations
Administrative Procedure Act: The notable changes in this final rule
concern: (1) Providing the proper S-signature by someone acting with
limited recognition pursuant to Sec. 11.9(a) and Sec. 11.9(b); (2)
providing that the petition fee for a split power of attorney resulting
from revocation of the power of attorney by fewer than all of the
applicants, or assignees of the applicants, be the same as the petition fee
to waive the rules to appoint a split power of attorney initially; (3)
requiring that the translation of a non-English language provisional
application and statement that the translation is accurate be filed in a
provisional application, rather than in either the nonprovisional
application claiming the benefit of the provisional application or the
provisional application; and (4) requiring that the evidentiary evidence of
ownership be recorded under 37 CFR part 3 when an assignee takes action in
a patent application. Therefore, these rule changes (except for the change
to the petition fee for revocation of a power of attorney by fewer than all
of the applicants) involve interpretive rules, or rules of agency practice
and procedure under 5 U.S.C. 553(b)(A). See Bachow Commc'n Inc. v. FCC, 237
F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application process are
"rules of agency organization, procedure, or practice" and are exempt from
the Administrative Procedure Act's notice and comment requirement); see
also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347,
1351 (Fed. Cir. 1996) (the rules of practice promulgated under the
authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not
substantive rules to which the notice and comment requirements of the
Administrative Procedure Act apply), and Fressola v. Manbeck, 36 USPQ2d
1211, 1215 (D.D.C. 1995) ("it is extremely doubtful whether any of the
rules formulated to govern patent and trade-mark practice are other than
`interpretive rules, general statements of policy, * * * procedure, or
practice.' ") (quoting C.W. Ooms, The United States Patent Office and the
Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)).
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment were not required pursuant to 5 U.S.C. 553 (or any other
law) for the changes proposed in this notice (except for the change to
the petition fee for revocation of a power of attorney by fewer than all of
the applicants), an initial or final regulatory flexibility analysis under
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not required for
the changes proposed in this notice (with the sole exception of the change
to the petition fee for revocation of a power of attorney by fewer than all
of the applicants). See 5 U.S.C. 603.
With respect to the petition fee change, the factual basis supporting
the certification under the Regulatory Flexibility Act follows: This notice
proposes to change the petition fee (from the $130.00 fee specified in Sec.
1.17(h) to the $400.00 fee specified in Sec. 1.17(f)) for a split power of
attorney resulting from revocation of the power of attorney by fewer than
all of the applicants or assignees of the applicants to be in line with the
actual cost of treating such petitions (in view of the special handling
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required for the split power of attorney resulting from revocation of the
power of attorney). This petition fee is established pursuant to the
Office's authority under 35 U.S.C. 41(d) to establish fees for all
processing, services, or materials relating to patents not otherwise
specified in 35 U.S.C. 41 to recover the estimated average cost to the
Office of such processing, services, or materials.
The Office received over 376,000 nonprovisional patent applications
and over 102,000 provisional patent applications in fiscal year 2004.
The Office receives fewer than five petitions for revocation of the
power of attorney by fewer than all of the applicants or assignees of
the applicants each year. While the Office does not track the entity
status of such petitions, the small entity patent application filing
rate is about 31.0%. Thus, even if all of the affected patents were by a
small entity, the proposed change would impact relatively few patent
applications (0.0013% of all nonprovisional patent applications).
Accordingly, 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 proposed in this notice will not have a
significant economic impact on a substantial number of small entities. See
5 U.S.C. 605(b).
Executive Order 13132: This rule making 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 rule making has been determined to be not
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act: This notice involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501
et seq.). The collection of information involved in this notice has been
reviewed and previously approved by OMB under OMB control numbers
0651-0012, 0651-0031, 0651-0032, 0651-0034, and 0651-0035. The United
States Patent and Trademark Office is not resubmitting any information
collection package to OMB for its review and approval because the changes
in this notice do not affect the information collection requirements
associated with the information collection under these OMB control numbers.
The principal impacts of the changes proposed in this notice are: (1)
Providing that the fee for a split power of attorney resulting from
revocation of the power of attorney by fewer than all of the applicants or
assignees of the applicants be the same as the fee to waive the rules to
appoint a split power of attorney initially; (2) requiring that the
translation of a non-English language provisional application and statement
that the translation is accurate be filed in a provisional application,
rather than in either the nonprovisional application claiming the benefit
of the provisional application or the provisional application; and (3)
requiring that the evidentiary evidence of ownership be recorded under 37
CFR part 3 when an assignee takes action in a patent application.
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,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or to
the Office of Information and Regulatory Affairs, Office of Management and
Budget, New Executive Office Building, Room 10235, 725 17th Street, NW.,
Washington, DC 20503, Attention: Desk Officer for the 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
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currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of Information,
Inventions and patents, Reporting and recordkeeping requirements, Small
businesses.
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Inventions and patents, Reporting
and recordkeeping requirements.
37 CFR Part 5
Classified information, Exports, Foreign relations, Inventions and
patents.
37 CFR Part 10
Administrative practice and procedure, Inventions and patents, Lawyers,
Reporting and recordkeeping requirements.
. For the reasons set forth in the preamble, 37 CFR Parts 1, 2, 3, 5, and
10 are 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 1.4 is amended by revising paragraph (d)(2) introductory text
and paragraph (d)(2)(ii) to read as follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d) * * *
(2) S-signature. An S-signature is a signature inserted between forward
slash marks, but not a handwritten signature as defined by Sec. 1.4(d)(1).
An S-signature includes any signature made by electronic or mechanical
means, and any other mode of making or applying a signature not covered by
either a handwritten signature of Sec. 1.4(d)(1) or an Office Electronic
Filing System (EFS) character coded signature of Sec. 1.4(d)(3).
Correspondence being filed in the Office in paper, by facsimile
transmission as provided in Sec. 1.6(d), or via the Office Electronic
Filing System as an EFS Tag(ged) Image File Format (TIFF) attachment, for a
patent application, patent, or a reexamination proceeding may be
S-signature signed instead of being personally signed (i.e., with a
handwritten signature) as provided for in paragraph (d)(1) of this section.
The requirements for an S-signature under this paragraph (d)(2) are as
follows.
* * * * *
(ii) A patent practitioner (Sec. 1.32(a)(1)), signing pursuant to
Secs. 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number
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either as part of the S-signature, or immediately below or adjacent to the
S-signature. The number (#) character may be used only as part of the
S-signature when appearing before a practitioner's registration number;
otherwise the number character may not be used in an S-signature.
* * * * *
. 3. Section 1.11 is amended by revising paragraph (a) to read as follows:
Sec. 1.11 Files open to the public.
(a) The specification, drawings, and all papers relating to the file of:
A published application; a patent; or a statutory invention registration
are open to inspection by the public, and copies may be obtained upon the
payment of the fee set forth in Sec. 1.19(b)(2). If an application was
published in redacted form pursuant to Sec. 1.217, the complete file
wrapper and contents of the patent application will not be available if:
The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of Sec. 1.217
have been met in the application; and the application is still pending. See
Sec. 2.27 of this title for trademark files.
* * * * *
. 4. Section 1.17 is amended by revising paragraph (f) to read as follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(f) For filing a petition under one of the following sections which
refers to this paragraph: $400.00.
Sec. 1.36(a) - for revocation of a power of attorney by fewer than all
of the applicants.
Sec. 1.53(e) - to accord a filing date.
Sec. 1.57(a) - to accord a filing date.
Sec. 1.182 - for decision on a question not specifically provided
for.
Sec. 1.183 - to suspend the rules.
Sec. 1.378(e) - for reconsideration of decision on petition refusing to
accept delayed payment of maintenance fee in an expired patent.
Sec. 1.741(b) - to accord a filing date to an application under Sec.
1.740 for extension of a patent term.
* * * * *
. 5. Section 1.25 is amended by revising paragraph (c)(4) to read as
follows:
Sec. 1.25 Deposit accounts.
* * * * *
(c) * * *
(4) A payment to replenish a deposit account may be submitted by mail
with a private delivery service or by hand-carrying the payment to:
Director of the U.S. Patent and Trademark Office, Attn: Deposit Accounts,
2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
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* * * * *
. 6. Section 1.31 is revised to read as follows:
Sec. 1.31 Applicant may be represented by one or more patent
practitioners or joint inventors.
An applicant for patent may file and prosecute his or her own case, or
he or she may give a power of attorney so as to be represented by one or
more patent practitioners or joint inventors. The United States Patent and
Trademark Office cannot aid in the selection of a patent practitioner.
. 7. Section 1.32 is amended by revising paragraphs (a) and (c)(3) to read
as follows:
Sec. 1.32 Power of attorney.
(a) Definitions. (1) Patent practitioner means a registered patent
attorney or registered patent agent under Sec. 11.6.
(2) Power of attorney means a written document by which a principal
authorizes one or more patent practitioners or joint inventors to act
on his or her behalf.
(3) Principal means either an applicant for patent (Sec. 1.41(b)) or an
assignee of entire interest of the applicant for patent or in a
reexamination proceeding, the assignee of the entirety of ownership of a
patent. The principal executes a power of attorney designating one or more
patent practitioners or joint inventors to act on his or her behalf.
(4) Revocation means the cancellation by the principal of the authority
previously given to a patent practitioner or joint inventor to act on his
or her behalf.
(5) Customer Number means a number that may be used to:
(i) Designate the correspondence address of a patent application or
patent such that the correspondence address for the patent application,
patent or other patent proceeding would be the address associated with
the Customer Number;
(ii) Designate the fee address (Sec. 1.363) of a patent such that the
fee address for the patent would be the address associated with the
Customer Number; and
(iii) Submit a list of patent practitioners such that those patent
practitioners associated with the Customer Number would have power of
attorney.
* * * * *
(c) * * *
(3) Ten or fewer patent practitioners, stating the name and registration
number of each patent practitioner. Except as provided in paragraph (c)(1)
or (c)(2) of this section, the Office will not recognize more than ten
patent practitioners as being of record in an application or patent. If a
power of attorney names more than ten patent practitioners, such power of
attorney must be accompanied by a separate paper indicating which ten
patent practitioners named in the power of attorney are to be recognized by
the Office as being of record in the application or patent to which the
power of attorney is directed.
. 8. Section 1.33 is amended by revising paragraphs (a) introductory text,
(a)(1), (b)(1) and (b)(2) and by adding paragraph (e) to read as follows:
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Sec. 1.33 Correspondence respecting patent applications, reexamination
proceedings, and other proceedings.
(a) Correspondence address and daytime telephone number. When filing an
application, a correspondence address must be set forth in either an
application data sheet (Sec. 1.76), or elsewhere, in a clearly identifiable
manner, in any paper submitted with an application filing. If no
correspondence address is specified, the Office may treat the mailing
address of the first named inventor (if provided, see Secs. 1.76(b)(1) and
1.63(c)(2)) as the correspondence address. The Office will direct all
notices, official letters, and other communications relating to the
application to the correspondence address. The Office will not engage in
double correspondence with an applicant and a patent practitioner, or with
more than one patent practitioner except as deemed necessary by the
Director. If more than one correspondence address is specified in a single
document, the Office will select one of the specified addresses for use as
the correspondence address and, if given, will select the address
associated with a Customer Number over a typed correspondence address. For
the party to whom correspondence is to be addressed, a daytime telephone
number should be supplied in a clearly identifiable manner and may be
changed by any party who may change the correspondence address. The
correspondence address may be changed as follows:
(1) Prior to filing of Sec. 1.63 oath or declaration by any of the
inventors. If a Sec. 1.63 oath or declaration has not been filed by any of
the inventors, the correspondence address may be changed by the party who
filed the application. If the application was filed by a patent
practitioner, any other patent practitioner named in the transmittal papers
may also change the correspondence address. Thus, the inventor(s), any
patent practitioner named in the transmittal papers accompanying the
original application, or a party that will be the assignee who filed the
application, may change the correspondence address in that application
under this paragraph.
* * * * *
(b) * * *
(1) A patent practitioner of record appointed in compliance with
Sec. 1.32(b);
(2) A patent practitioner not of record who acts in a representative
capacity under the provisions of Sec. 1.34;
* * * * *
(e) A change of address filed in a patent application or patent does not
change the address for a patent practitioner in the roster of patent
attorneys and agents. See Sec. 11.11 of this title.
. 9. Section 1.34 is revised to read as follows:
Sec. 1.34 Acting in a representative capacity.
When a patent practitioner acting in a representative capacity appears
in person or signs a paper in practice before the United States Patent and
Trademark Office in a patent case, his or her personal appearance or
signature shall constitute a representation to the United States Patent and
Trademark Office that under the provisions of this subchapter and the law,
he or she is authorized to represent the particular party on whose behalf
he or she acts. In filing such a paper, the patent practitioner must set
forth his or her registration number, his or her name and signature.
Further proof of authority to act in a representative capacity may be
required.
. 10. Section 1.36 is amended by revising paragraph (a) to read as follows:
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Sec. 1.36 Revocation of power of attorney; withdrawal of patent attorney
or agent.
(a) A power of attorney, pursuant to Sec. 1.32(b), may be revoked at any
stage in the proceedings of a case by an applicant for patent (Sec.
1.41(b)) or an assignee of the entire interest of the applicant, or the
owner of the entire interest of a patent. A power of attorney to the patent
practitioners associated with a Customer Number will be treated as a
request to revoke any powers of attorney previously given. Fewer than all
of the applicants (or fewer than all of the assignees of the entire
interest of the applicant or, in a reexamination proceeding, fewer than all
the owners of the entire interest of a patent) may revoke the power of
attorney only upon a showing of sufficient cause, and payment of the
petition fee set forth in Sec. 1.17(f). A patent practitioner will be
notified of the revocation of the power of attorney. Where power of
attorney is given to the patent practitioners associated with a Customer
Number (Sec. 1.32(c)(2)), the practitioners so appointed will also be
notified of the revocation of the power of attorney when the power of
attorney to all of the practitioners associated with the Customer Number is
revoked. The notice of revocation will be mailed to the correspondence
address for the application (Sec. 1.33) in effect before the revocation. An
assignment will not of itself operate as a revocation of a power previously
given, but the assignee of the entire interest of the applicant may revoke
previous powers of attorney and give another power of attorney of the
assignee's own selection as provided in Sec. 1.32(b).
* * * * *
Sec. 1.52 [Amended]
. 11. Section 1.52 is amended by removing paragraphs (a)(5), (a)(7), and
(b)(7), and by redesignating paragraph (a)(6) as paragraph (a)(5).
. 12. Section 1.78 is amended by revising paragraph (a)(5)(iv) to read as
follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-references to
other applications.
(a) * * *
(5)(i) * * *
(iv) If the prior-filed provisional application was filed in a language
other than English and both an English-language translation of the
prior-filed provisional application and a statement that the translation is
accurate were not previously filed in the prior-filed provisional
application, applicant will be notified and given a period of time within
which to file, in the prior-filed provisional application, the translation
and the statement. If the notice is mailed in a pending nonprovisional
application, a timely reply to such a notice must include the filing in the
nonprovisional application of either a confirmation that the translation
and statement were filed in the provisional application, or an amendment or
Supplemental Application Data Sheet withdrawing the benefit claim, or the
nonprovisional application will be abandoned. The translation and statement
may be filed in the provisional application, even if the provisional
application has become abandoned.
* * * * *
. 13. Section 1.133 is amended by revising paragraph (a)(2) to read as
follows:
Sec. 1.133 Interviews.
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(a)(1) * * *
(2) An interview for the discussion of the patentability of a pending
application will not occur before the first Office action, unless the
application is a continuing or substitute application or the examiner
determines that such an interview would advance prosecution of the
application.
* * * * *
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
. 14. The authority citation for 37 CFR part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
. 15. Section 2.208 is amended by revising paragraph (c)(4) to read as
follows:
Sec. 2.208 Deposit accounts.
* * * * *
(c) * * *
(4) A payment to replenish a deposit account may be submitted by mail
with a private delivery service or hand-carrying the payment to: Director
of the U.S. Patent and Trademark Office, Attn: Deposit Accounts, 2051
Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
. 16. The authority citation for 37 CFR part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
. 17. Section 3.28 is revised to read as follows:
Sec. 3.28 Requests for recording.
Each document submitted to the Office for recording must include a
single cover sheet (as specified in Sec. 3.31) referring either to those
patent applications and patents, or to those trademark applications and
registrations, against which the document is to be recorded. If a document
to be recorded includes interests in, or transactions involving, both
patents and trademarks, then separate patent and trademark cover sheets,
each accompanied by a copy of the document to be recorded, must be
submitted. If a document to be recorded is not accompanied by a completed
cover sheet, the document and the incomplete cover sheet will be returned
pursuant to Sec. 3.51 for proper completion, in which case the document and
a completed cover sheet should be resubmitted.
. 18. Section 3.31 is amended by revising paragraph (a)(7)(i) to read as
follows:
Sec. 3.31 Cover sheet content.
(a) * * *
(7) * * *
(i) Place a symbol comprised of letters, numbers, and/or punctuation
marks between forward slash marks (e.g. /Thomas O'Malley III/) in the
signature block on the electronic submission; or
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* * * * *
. 19. Section 3.73 is amended by revising paragraph (b)(1)(i) to read as
follows:
Sec. 3.73 Establishing right of assignee to take action.
* * * * *
(b)(1) * * *
(i) Documentary evidence of a chain of title from the original owner to
the assignee (e.g., copy of an executed assignment). For trademark matters
only, the documents submitted to establish ownership may be required to be
recorded pursuant to Sec. 3.11 in the assignment records of the Office as a
condition to permitting the assignee to take action in a matter pending
before the Office. For patent matters only, the submission of the
documentary evidence must be accompanied by a statement affirming that the
documentary evidence of the chain of title from the original owner to the
assignee was or concurrently is being submitted for recordation pursuant to
Sec. 3.11; or
* * * * *
PART 5 - SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND FILE
APPLICATIONS IN FOREIGN COUNTRIES
. 20. The authority citation for 37 CFR part 5 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the Patent Law
Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 102 Stat. 1567; the
Arms Export Control Act, as amended, 22 U.S.C. 2571 et seq.; the Atomic
Energy Act of 1954, as amended, 42 U.S.C. 2011 et seq.; the Nuclear Non
Proliferation Act of 1978; 22 U.S.C. 3201 et seq.; and the delegations in
the regulations under these Acts to the Director (15 CFR 734.3(b)(1)(v), 22
CFR 125.04, and 10 CFR 810.7), as well as the Export Administration Act of
1979, 50 U.S.C. app. 2401 et seq.; the International Emergency Economic
Powers Act, 50 U.S.C. 1701 et seq.; E.O. 12938, 59 FR 59099, 3 CFR, 1994
Comp., p. 950; E.O. 13222, 66 FR 44025, 3 CFR, 2001 Comp., p. 783; Notice
of August 2, 2005, 70 FR 45273 (August 5, 2005).
. 21. Section 5.11 is amended by revising paragraphs (b) and (c) to read as
follows:
Sec. 5.11 License for filing in a foreign country an application on an
invention made in the United States or for transmitting international
application.
* * * * *
(b) The license from the Commissioner for Patents referred to in
paragraph (a) would also authorize the export of technical data abroad for
purposes relating to the preparation, filing or possible filing and
prosecution of a foreign patent application without separately complying
with the regulations contained in 22 CFR parts 121 through 130
(International Traffic in Arms Regulations of the Department of State), 15
CFR parts 730-774 (Regulations of the Bureau of Industry and Security,
Department of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs
of the Department of Energy).
(c) Where technical data in the form of a patent application, or in any
form, are being exported for purposes related to the preparation, filing or
possible filing and prosecution of a foreign patent application, without
the license from the Commissioner for Patents referred to in paragraphs (a)
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or (b) of this section, or on an invention not made in the United States,
the export regulations contained in 22 CFR parts 120 through 130
(International Traffic in Arms Regulations of the Department of State), 15
CFR parts 730-774 (Bureau of Industry and Security Regulations, Department
of Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy
Activities Regulations of the Department of Energy) must be complied with
unless a license is not required because a United States application was on
file at the time of export for at least six months without a secrecy order
under Sec. 5.2 being placed thereon. The term "exported" means export as it
is defined in 22 CFR part 120, 15 CFR part 734 and activities covered by 10
CFR part 810.
* * * * *
. 22. Section 5.19 is revised to read as follows:
Sec. 5.19 Export of technical data.
(a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the
Department of Commerce, a license is not required in any case to file a
patent application or part thereof in a foreign country if the foreign
filing is in accordance with the regulations (Secs. 5.11 through 5.25) of
the U.S. Patent and Trademark Office.
(b) An export license is not required for data contained in a patent
application prepared wholly from foreign-origin technical data where such
application is being sent to the foreign inventor to be executed and
returned to the United States for subsequent filing in the U.S. Patent and
Trademark Office (15 CFR 734.10(a)).
PART 10 - REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK OFFICE
. 23. The authority citation for 37 CFR part 10 continues to read as
follows:
Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.
. 24. Section 10.112 is amended by revising paragraph (a) to read as
follows:
Sec. 10.112 Preserving identity of funds and property of client.
(a) All funds of clients paid to a practitioner or a practitioner's
firm, other than advances for costs and expenses, shall be deposited in
one or more identifiable bank accounts maintained in the United States or,
in the case of a practitioner having an office in a foreign country or
registered under Sec. 11.6(c), in the United States or the foreign country.
* * * * *
September 19, 2005 JON W. DUDAS
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office
[1299 OG 142]