(111) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket #: 980108007-8007-01]
RIN 0651-AA97
Changes to Continued Prosecution Application Practice
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Interim Rule with Request for Comments.
SUMMARY: The Patent and Trademark Office (Office) is amending
1.53(d)(1)(i) to remove the requirement that the prior application of a
continued prosecution application (CPA) under 1.53 (d) must have been
filed on or after June 8, 1995. This requirement is being removed in
response to requests from the public.
DATES: EFFECTIVE DATE: February 4, 1998.
APPLICABILITY DATE: This rule change applies to all continued
prosecution applications filed on or after December 1, 1997.
COMMENT DEADLINE DATE: To be ensured of consideration, written comments
must be received on or before April 6, 1998. No public hearing will be
held.
ADDRESSES: Comments should be sent by mail message over the Internet
addressed to regreform@uspto.gov. Comments may also be submitted by mail
addressed to: Box Comments -- Patents, Assistant Commissioner for
Patents, Washington, D.C. 20231, or by facsimile to (703) 308-6916,
marked to the attention of Hiram H. Bernstein. Although comments may be
submitted by mail or facsimile, the Office prefers to receive comments
via the Internet. Where comments are submitted by mail, the Office would
prefer that the comments be submitted on a DOS formatted 3 1/4 inch disk
accompanied by a paper copy.
The comments will be available for public inspection in Suite 520, of
One Crystal Park, 2011 Crystal Drive, Arlington, Virginia, and will be
available through anonymous file transfer protocol (ftp) via the
Internet (address: ftp.uspto.gov). Since comments will be made available
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Concerning this Interim Rule: Hiram H.
Bernstein or Robert W. Bahr, Senior Legal Advisors, by telephone at
(703) 305-9285, or by mail addressed to: Box Comments--Patents,
Assistant Commissioner for Patents, Washington, D.C. 20231, or by
facsimile to (703) 308-6916, marked to the attention of Mr. Bernstein.
Concerning 1.53 in General: John F. Gonzales, Fred A. Silverberg, or
Robert W. Bahr, Senior Legal Advisors, at the above-mentioned telephone
number.
SUPPLEMENTARY INFORMATION: Section 1.53(d), as amended on December 1,
1997, provides for the filing of a continued prosecution application
(CPA). See Changes to Patent Practice and Procedure; Final Rule, 62 FR
53131 (October 10, 1997), 1203 Off. Gaz. Pat. Office 63 (October 21,
1997) (Final Rule). Section 1.53(d)(1)(i) requires, inter alia, that the
prior application of a CPA under 1.53(d) had been filed on or after
June 8, 1995. See Final Rule, 62 FR at 53186, 1203 Off. Gaz. Pat. Office
at 112. The rationale for this requirement was:
Permitting the continued prosecution application practice to be
applicable in instances in which the prior application was filed prior
to June 8, 1995, would result in confusion as to whether the patent
issuing from the continued prosecution application is entitled to the
provisions of 35 U.S.C. 154(c). As the continued prosecution application
practice was not in effect prior to June 8, 1995, no patent issuing from
a continued prosecution application is entitled to the provisions of 35
U.S.C. 154(c).
[The] application number of a continued prosecution application will be
the application number of the prior application, and the filing date
indicated on any patent issuing from a continued prosecution application
will be the filing date of the prior application (or, in a chain of
continued prosecution applications, the filing date of the application
immediately preceding the first continued prosecution application in the
chain). Thus, any patent issuing from a continued prosecution
application, where the prior application was filed prior to June 8,
1995, will indicate that the filing date of the application for that
patent was prior to June 8, 1995, which will confuse the public (and
possible [sic] the patentee) into believing that such patent is entitled
to the provisions of 35 U.S.C. 154(c).
See Final Rule, 62 FR at 53144, 1203 Off. Gaz. Pat. Office at 74
(response to comment 25).
The rules of practice formerly permitted an applicant to obtain further
examination by the filing of a file wrapper continuing (FWC) application
under 1.62. Effective December 1, 1997, however, FWC practice under
1.62 was abolished in favor of CPA practice under 1.53(d). See Final
Rule, 62 FR at 53147, 1203 Off. Gaz. Pat. Office at 76-77. As discussed
above, 1.53(d)(1)(i) requires that the prior application of a CPA be
filed on or after June 8, 1995. When the prior application was filed
before June 8, 1995, and an applicant desires to file what would
formerly have been a file wrapper continuation (or divisional), 1.53
as adopted requires that such a continuation (or divisional) application
be filed under 1.53(b).
Section 1.53(b) requires that any application filed thereunder
(including a continuation or divisional) contain a specification
(including at least one claim) and any necessary drawing. While
1.53(b) permits the submission of a rewritten specification (with all
prior amendments incorporated), such an option is only practical to
those who have the prior application in electronic form. For those
applicants who do not have the prior application in electronic form,
their only option is to submit a copy of the prior application
(including any appendix) along with a copy of all the amendments made in
the prior application, as well as copies of all other papers filed in
the prior application (e.g., information disclosure statements (IDS's),
affidavits, declarations) that are to be considered in the continuing
application.
Subsequent to the adoption of the change to 1.53(d), the Office has
received a number of comments indicating that it will take a
considerable amount of time to prepare the papers required by
1.53(b), even when copied from a prior application.
In view of these concerns, the Office is amending 1.53(d)(1)(i) to
eliminate the requirement that the prior application of a CPA had been
filed on or after June 8, 1995. Section 1.53(d)(1)(i) as adopted will
require that the prior application of a CPA be a nonprovisional
application that is either: (1) complete as defined by 1.51(b); or
(2) the national stage of an international application in compliance
with 35 U.S.C. 371.
As noted in the Final Rule (quoted above), no patent issuing from a CPA
under 1.53(d) is entitled to the provisions of 35 U.S.C. 154(c). To
avoid confusion as to the term of any patent issuing on a CPA of an
application filed before June 8, 1995, the Office will include a notice
on any patent issuing on a CPA, other than a reissue or a design patent,
that: (1) the patent issued on a CPA; and (2) the patent is subject to
the twenty-year patent term set forth in 35 U.S.C. 154(a)(2). The term
of a design patent is defined in 35 U.S.C. 173 as fourteen (14) years
from the date of grant. The term of a reissue patent is defined in 35
U.S.C. 251 as the unexpired part of the term of the original patent.
Since the term of any reissue or design patent is not affected by the
filing of a CPA, no notice will be printed on either a reissue or a
design patent.
Interested members of the public are invited to present written comments
on the change to 1.53(d)(1)(i) contained in this Interim Rule.
Other Considerations.
The Commissioner of Patents and Trademarks, pursuant to authority at 5
U.S.C. 553(b)(3)(B), finds good cause to adopt the changes made in this
Interim Rule without prior notice and an opportunity for public comment,
as such procedures are contrary to the public interest. Delay in the
promulgation of this rule to provide notice and comment procedures would
cause harm to those applicants who must file a continuation or
divisional application promptly to meet the copendency requirements of
35 U.S.C. 120 and who would not be permitted to file a CPA due to the
restriction in 1.53(d)(1)(i). Moreover, immediate implementation of
this rule is in the public interest because those applicants currently
subject to the prohibition will benefit from the efficiencies and
savings resulting from the new rule. See Nat. Customs Brokers &
Forwarders Ass'n v. U.S., 59 F.3d 1219, 1223-24 (Fed. Cir. 1995).
Finally, pursuant to authority at 5 U.S.C. 553(d)(1), this rule may be
made immediately effective because it relieves a restriction.
As prior notice and an opportunity for public comment are not required
pursuant to 5 U.S.C. 553, or any other law, the analytical requirements
of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., are
inapplicable.
This rule involves a collection of information subject to the Paperwork
Reduction Act, 44 U.S.C. ch. 35, previously approved by the Office of
Management and Budget under OMB Control Number 0651-0032.
Notwithstanding any other provision of law, no person is required to
respond 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.
This rule does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 12612 (October 26, 1987).
This rule has been determined to be not significant for purposes of
Executive Order 12866 (September 30, 1993).
List of Subjects
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. 6, unless otherwise noted.
2. Section 1.53 is revised by amending paragraph (d)(1)(i) to read as
follows:
1.53 Application number, filing date, and completion of application.
* * * * *
(d) * * *
(1) * * *
(i) The prior nonprovisional application is either:
(A) Complete as defined by 1.51(b); or
(B) The national stage of an international application in compliance
with 35 U.S.C. 371; and
* * * * *
January 28, 1998 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks
[1217 OG 83]