[Federal Register: February 16, 2007 (Volume 72, Number 32)]
[Proposed Rules]
[Page 7583-7587]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr16fe07-18]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-C-2006-0057]
RIN 0651-AC09
April 2007 Revision of Patent Cooperation Treaty Procedures
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is proposing to amend the rules of practice in title 37 of the
Code of Federal Regulations (CFR) to conform them to certain amendments
made to the Regulations under the Patent Cooperation Treaty (PCT) that
will take effect on April 1, 2007. These amendments will result in the
addition of a mechanism to the PCT system whereby applicants may
request that the
[[Page 7584]]
right to claim priority be restored in applications that meet certain
requirements. In addition, these amendments will provide a means for
applicants to insert a missing portion of an international application
without the loss of the international filing date. These amendments
also will clarify the circumstances and procedures under which the
correction of an obvious mistake may be made in an international
application. Finally, the Office is proposing to revise the search fee
for international applications.
Comment Deadline Date: Written comments must be received on or
before March 19, 2007. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message via the
Internet addressed to: AC9.comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments-Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or
by facsimile to (571) 273-0459, marked to the attention of Mr. Richard
Cole. Although comments may be submitted by mail or facsimile, the
Office prefers to receive comments via the Internet.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site (address: http://www.uspto.gov). Because
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: Richard R. Cole, Legal Examiner,
Office of PCT Legal Administration (OPCTLA) directly by telephone at
(571) 272-3281, or by facsimile at (571) 273-0459.
SUPPLEMENTARY INFORMATION: During the September-October 2005 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted various amendments to the Regulations
under the PCT that enter into force on April 1, 2007. The amended PCT
Regulations were published in the PCT Gazette of February 23, 2006 (08/
2006), in section IV, at pages 5496-5541. The purposes of these
amendments are to: (1) Bring the provisions of the PCT into closer
alignment with the provisions of the Patent Law Treaty (PLT); and (2)
clarify the circumstances and procedures under which the correction of
an obvious mistake may be made in an international application.
Alignment with the PLT: The PLT provides for: (1) Restoration of
applicant's right to claim priority under certain situations (PLT
Article 13(2)); (2) insertion of a missing portion of an application
without the loss of the filing date (PLT Article 5(6)); and (3)
substitution of the description and drawings upon filing with a
reference to a previously filed application (PLT Article 5(7)). The
present amendments to the PCT Regulations will provide similar
mechanisms for applicants using the PCT system.
With regard to restoration of applicant's right to claim priority
under certain situations (PLT Article 13(2)), PCT Rule 26bis has been
amended to provide for the restoration of the right to claim priority
in international applications which have been filed between twelve and
fourteen months after the priority date and in which the delay in
filing the international application was either in spite of due care or
unintentional. It must be noted that PCT Rule 49ter provides for
designated Offices whose national law is incompatible with the PCT
provisions concerning restoration of the right of priority to take a
reservation with respect to the effects of this provision on national
applications. The United States has taken this reservation pending
passage of legislation that would implement the PLT in the United
States. Therefore, any restoration of a right of priority by the United
States Receiving Office under this section, or by any other Receiving
Office under the provisions of PCT Rule 26bis.3, will not entitle
applicants to a right of priority in any application which has entered
the national stage under 35 U.S.C. 371, or in any application filed
under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and
365(c) to an international application in which the right of priority
has been restored. Whether or not applicant is entitled to the right of
priority continues to be governed by whether applicant has satisfied
the provisions of 35 U.S.C. 119, 120, and 365.
It must also be noted that even though restoration of such a right
will not entitle applicant to the right of priority in a subsequent
United States application, the priority date will still govern all PCT
time limits, including the thirty-month period for filing national
stage papers and fees under 37 CFR 1.495. PCT Article 2(ix), which
defines ``priority date'' for purposes of computing time limits,
contains no limitation that the priority claim be valid. Thus, for
example, in an international application containing an earliest
priority claim to a German application filed thirteen months prior to
the filing date of the international application, the filing date of
the German application will be used as the basis for computing time
limits under the PCT, including the thirty-month time period set forth
in 37 CFR 1.495 to submit the basic national fee (Sec. 1.492(a)) to
avoid abandonment, even though applicant would not be entitled to
priority to the German application in the United States national phase
since the German application was filed more than twelve months from the
international filing date. See 35 U.S.C. 119(a) and 365(b).
Concerning insertion of a missing portion of an application without
the loss of the filing date (PLT Article 5(6)) and substitution of the
description and drawings upon filing with a reference to a previously
filed application, these provisions could not be implemented to the
extent provided in the PLT absent amendment of the PCT Articles.
However, similar provisions have been made in the PCT by amending PCT
Rules 4 and 20 to allow for the inclusion of an incorporation by
reference statement on the PCT Request form. Applicants may then rely
on this statement to insert portions of the international application
(including the entire description, claims, and/or drawings) which were
missing upon the international filing date. 37 CFR 1.412(c)(1) already
provides that the USPTO, in its capacity as a PCT Receiving Office,
will accord international filing dates in accordance with PCT Rule 20.
Therefore, no change to the rules of practice in title 37 CFR is
necessary to implement these provisions, other than the deletion of 37
CFR 1.437(b) due to the fact that missing drawings are no longer
handled in a manner different from the description and claims.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, part 1, is proposed to
be amended as follows:
Section 1.17: Section 1.17(t) is proposed to be amended to set
forth the fee for requesting restoration of the right of priority.
Section 1.57: Section 1.57(a)(2) is proposed to be amended to
reflect that omitted portions of international applications, which
applicant desires to be effective in other designated States, must be
submitted in accordance with PCT Rule 20.
Section 1.437: Section 1.437(a) is proposed to be amended for
clarity and to remove inaccurate language currently
[[Page 7585]]
present in the paragraph. Section 1.437(b) is proposed to be deleted to
reflect the fact that missing drawings will no longer be treated
differently from missing parts of the description or claims. Section
1.437(c) is proposed to be redesignated as Sec. 1.437(b).
Section 1.445: Section 1.445(a) is proposed to be amended to set a
search fee that more accurately reflects the cost of conducting a
search and preparing a Chapter I written opinion in an international
application. The Activity-Based-Cost analysis for the search and
preparation of search and preparing Chapter I written opinions for
international applications reveals that the average cost of this
activity is over $1,800.00. Therefore, the Office is proposing to
revise Sec. 1.445(a) to provide for a search fee (and supplemental
search fee) of $1,800.00. In addition, the Office is proposing to
revise Sec. 1.445(a) to provide that this $1,800.00 search fee is
applicable, regardless of whether there is a corresponding prior
nonprovisional application under 35 U.S.C. 111(a), a corresponding
prior provisional application under 35 U.S.C. 111(b), or no
corresponding prior provisional or nonprovisional application under 35
U.S.C. 111. The Office currently provides a reduced search fee if there
is a corresponding prior nonprovisional application under 35 U.S.C.
111(a) and such application is adequately identified in the
international application or accompanying papers at the time of filing
the international application. The current backlog of applications
under 35 U.S.C. 111(a) awaiting examination is such that it is no
longer deemed appropriate to provide a reduced fee or other incentive
for applicants to file an application under 35 U.S.C. 111(a) prior to
or essentially parallel with the filing of an international
application.
Section 1.452: Section 1.452 is proposed to be added to provide for
restoration of the right of priority in international applications
(subject to the enumerated conditions and limitations).
Section 1.452(a) provides that applicants may request restoration
of the right of priority if the international application was filed
within fourteen months from the priority date and the delay in filing
the international application was unintentional.
Section 1.452(b) provides that any request for restoration must be
filed within fourteen months from the priority date and must be
accompanied by: (1) A notice adding the priority claim, if applicable;
(2) the requisite fee; and (3) a statement that the entire delay was
unintentional.
Section 1.452(c) provides that, in cases where applicant has
requested early publication, the requirements under Sec. 1.452(b) must
be submitted prior to completion of the technical preparations for
international publication.
Section 1.452(d) sets forth that restoration of a priority claim by
the United States Receiving Office under this section, or by any other
Receiving Office under the provisions of PCT Rule 26bis.3, will not
entitle applicants to a right of priority in any application which has
entered the national stage under 35 U.S.C. 371, or in any application
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120
and 365(c) to an international application in which the right to
priority has been restored.
Section 1.465: Section 1.465(b) is proposed to be amended for
clarity and to remove the limitation that the priority claim must be
``valid'' in order to be used as the basis for computing time limits
under the PCT.
Section 1.465(c) is proposed to be deleted as unnecessary, as the
obligation of the United States Receiving Office to proceed under PCT
Rule 26bis.2 arises under 35 U.S.C. 361. In addition, reference to Rule
20.2(a)(i) or (iii) is no longer appropriate in view of the amendments
to PCT Rule 20.
Rule Making Considerations
Regulatory Flexibility Act: For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that the changes proposed in this notice
(if adopted) will not have a significant economic impact on a
substantial number of small entities. See 5 U.S.C. 605(b). The
significant changes proposed in this notice are: (1) Provisions for a
restoration of a right of priority in certain limited situations; and
(2) an adjustment of the search and supplemental search fee to more
accurately reflect the cost of conducting a search and preparing a
Chapter I written opinion in an international application.
The PCT enables United States applicants to file one application
(an international or PCT application) in a standardized format in
English in the United States Receiving Office (the United States Patent
and Trademark Office) and have that application acknowledged as a
regular national or regional filing in as many PCT Contracting States
as the applicants desire to seek patent protection. See Manual of
Patent Examining Procedure (MPEP) 1801. The primary benefit of the PCT
system is the ability to delay the expense of submitting papers and
fees to the PCT national offices. See MPEP 1881.
35 U.S.C. 376(b) provides that the Director shall prescribe the
amount of the search fee, the supplemental search fee, and such other
fees as established by the Director. Pursuant to the authority in 35
U.S.C. 376(b), this notice proposes to adjust the search fee in Sec.
1.445(b)(2)(iii) and the supplemental search fee in Sec. 1.445(b)(3)
from $1,000.00 to $1,800.00 (an increase of $800.00). This proposed
adjustment to the search fee and supplemental search fee is to make
these fees more accurately reflect the cost of conducting a search and
preparing a Chapter I written opinion in an international application.
The PCT does not preclude United States applicants from filing
patent applications directly in the patent offices of those countries
which are Contracting States of the PCT (with or without previously
having filed a regular national application under 35 U.S.C. 111(a) or
111(b) in the United States) and taking advantage of the priority
rights and other advantages provided under the Paris Convention and the
World Trade Organization (WTO) administered Agreement on Trade-Related
Aspects of Intellectual Property (TRIPs Agreement). See MPEP 1801. That
is, the PCT is not the exclusive mechanism for seeking patent
protection in foreign countries, but is instead simply an optional
alternative route available to United States patent applicants for
seeking patent protection in those countries that are Contracting
States of the PCT. See id.
In addition, an applicant filing an international application under
the PCT in the United States Receiving Office (the United States Patent
and Trademark Office) is not required to use the United States Patent
and Trademark Office as the International Searching Authority. The
European Patent Office (except for applications containing business
method claims) or the Korean Intellectual Property Office may be
elected as the International Searching Authority for international
applications filed in the United States Receiving Office. The
applicable search fee if the European Patent Office is elected as the
International Searching Authority European is $2,059.00 (set by the
European Patent Office), and the applicable search fee if the Korean
Intellectual Property Office is elected as the International Searching
Authority is $232.00 (set by the Korean Intellectual Property Office).
[[Page 7586]]
In 2003, the Government Accountability Office (GAO) released a
report containing the results of a survey of an expert panel of patent
law attorneys concerning small businesses considering foreign patent
protection with respect to the ``cradle to grave'' costs of foreign
patent protection. See Experts'' Advice for Small Businesses Seeking
Foreign Patents, GAO-03-910 (2003). The GAO concluded that the cost of
obtaining and maintaining foreign patents to be in the range of
$160,000 to $330,000. See Id. at 41.
Therefore, the international search fee increase of $800.00 is not
significant in comparison to the overall costs that a small entity must
incur to obtain international patent protection. In addition, filing an
international application under the PCT is an optional route for an
applicant seeking foreign patent protection, and an applicant who does
not choose to seek foreign patent protection by filing an international
application under the PCT in the United States Receiving Office (the
United States Patent and Trademark Office) is not required to use the
United States Patent and Trademark Office as the International
Searching Authority.
Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes
to eliminate the reduced search fee in Sec. 1.445(b)(2)(i) or (ii)
when there is a corresponding prior nonprovisional application under 35
U.S.C. 111(a) and thereby adjusting the search fee in the situation in
which there is a corresponding prior nonprovisional application under
35 U.S.C. 111(a) from $300.00 to $1,800.00 (an increase of $1,500.00).
As discussed previously, this proposed adjustment to the search fee is
to make these fees more accurately reflect the cost of conducting a
search and preparing a Chapter I written opinion in an international
application. An applicant has the option of filing a provisional
application under 35 U.S.C. 111(b) (rather than a nonprovisional
application under 35 U.S.C. 111(a)) or not filing a prior application
before filing an international application. These alternatives are
available at a lower overall cost in patent fees (even with the
proposed adjustment in the search fee) than the cost in patent fees of
filing a nonprovisional application under 35 U.S.C. 111(a) before
filing an international application. This is the case even taking into
account the current reduced search fee for there being a corresponding
prior nonprovisional application under 35 U.S.C. 111(a).
Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes
to establish a fee for filing a request for the restoration of the
right of priority of $1,370.00. This fee amount is identical to the fee
amount for petitions to accept an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) (37 CFR 1.55 and
1.78). In addition, the Office anticipates that very few applicants
will file a request for the restoration of the right of priority (about
100 each year, in comparison to the over 45,000 international
applications filed in the United States Receiving Office each year).
For the reasons stated previously, the changes proposed in this
notice (if adopted) will not have a significant economic impact on a
substantial number of small entities.
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
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 approved by OMB under OMB control
number 0651-0021. The United States Patent and Trademark Office is not
resubmitting an 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 OMB control number 0651-0021.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert A. Clarke,
Deputy Director, Office of Patent Legal Administration, Commissioner
for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
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
proposed to be 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 1.17 is amended by revising paragraph (t) to read as
follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(t) For the acceptance of an unintentionally delayed claim for
priority under 35 U.S.C. 119, 120, 121, or 365(a) (Sec. Sec. 1.55 and
1.78) or for filing a request for the restoration of the right of
priority under Sec. 1.452--$1,370.00.
3. Section 1.57 is amended by revising paragraph (a)(2) to read as
follows:
Sec. 1.57 Incorporation by reference.
(a) * * *
(2) Any amendment to an international application pursuant to this
paragraph shall be effective only as to the United States, and shall
have no effect on the international filing date of the application. In
addition, no request under this section to add the inadvertently
omitted portion of the specification or drawings in an international
application designating the United States will be acted upon by the
Office prior to the entry and commencement of the national stage (Sec.
1.491) or the filing of an application under 35 U.S.C. 111(a) which
claims benefit of the international application. Any omitted portion of
the international application which applicant desires to be effective
as to all designated States, subject to PCT Rule 20.8(b), must be
submitted in accordance with PCT Rule 20.
* * * * *
4. Section 1.437 is revised to read as follows:
Sec. 1.437 The drawings.
(a) Drawings are required when they are necessary for the
understanding of the invention (PCT Art. 7).
(b) The physical requirements for drawings are set forth in PCT
Rule 11 and shall be adhered to.
[[Page 7587]]
5. Section 1.445 is amended by revising paragraphs (a)(2) and
(a)(3) to read as follows:
Sec. 1.445 International application filing, processing and search
fees.
(a) * * *
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16)--$1,800.00
(3) A supplemental search fee when required, per additional
invention--$1,800.00.
* * * * *
6. Section 1.452 is added to read as follows:
Sec. 1.452 Restoration of right of priority.
(a) If the international application has an international filing
date which is later than twelve months from the priority date but
within the period of fourteen months from the priority date, the right
of priority in the international application may be restored upon
request if the delay in filing the international application within the
period of twelve months from the priority date was unintentional.
(b) A request to restore the right of priority in an international
application under paragraph (a) must be filed not later than fourteen
months from the priority date and must include:
(1) A notice under PCT Rule 26bis.1(a) adding the priority claim,
if the priority claim in respect of the earlier application is not
contained in the international application;
(2) The fee set forth in Sec. 1.17(t); and
(3) A statement that the entire delay was unintentional. The
Director may require additional information where there is a question
whether the delay was unintentional.
(c) If the applicant makes a request for early publication under
PCT Article 21(2)(b), any requirement under paragraph (b) of this
section filed after the technical preparations for international
publication have been completed by the International Bureau shall be
considered as not having been submitted in time.
(d) Restoration of a right of priority to a prior application by
the United States Receiving Office under this section, or by any other
Receiving Office under the provisions of PCT Rule 26bis.3, will not
entitle applicants to a right of priority in any application which has
entered the national stage under 35 U.S.C. 371, or in any application
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120
and 365(c) to an international application in which the right to
priority has been restored.
7. Section 1.465 is amended by revising paragraph (b) to read as
follows:
Sec. 1.465 Timing of application processing based on the priority
date.
* * * * *
(b) When a claimed priority date is corrected under PCT Rule
26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a),
withdrawn under PCT Rule 90bis.3, or considered not to have been made
under PCT Rule 26bis.2, the priority date for the purposes of computing
any non-expired time limits will be the filing date of the earliest
remaining priority claim under PCT Article 8 of the international
application, or if none, the international filing date.
* * * * *
Dated: February 12, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property, and Director of
the United States Patent and Trademark Office.
[FR Doc. E7-2761 Filed 2-15-07; 8:45 am]
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