[Federal Register: October 20, 2003 (Volume 68, Number 202)]
[Rules and Regulations]
[Page 59881-59889]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr20oc03-5]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 2003-P-021]
RIN 0651-AB61
January 2004 Revision of Patent Cooperation Treaty Application
Procedure
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office) is
amending the rules of practice to conform them to certain amendments
made to the Regulations under the Patent Cooperation Treaty (PCT) that
will take effect on January 1, 2004. These amendments will result in
the addition of a written opinion in PCT Chapter I, as well as a
simplification of PCT designations and the PCT fee structure. In
addition, the Office is adjusting the transmittal, search, and
international preliminary examination fees for international
applications filed under the PCT to be more closely aligned with the
actual average costs of processing a PCT application and conducting a
PCT search and international preliminary examination under the new
process.
EFFECTIVE DATE: January 1, 2004.
FOR FURTHER INFORMATION CONTACT: Richard R. Cole, Legal Examiner,
Office of PCT Legal Administration (OPCTLA) directly by telephone at
(703) 305-6639, or by facsimile at (703) 308-6459.
SUPPLEMENTARY INFORMATION: During the September-October 2002 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 January 1, 2004. The amended PCT
Regulations were published in the PCT Gazette of December 5, 2002 (49/
2002), in Section IV, at pages 25004-61. The purposes of these
amendments are to: (1) Improve coordination of international search
(Chapter I of the PCT) and international preliminary examination
(Chapter II of the PCT) through the provision of an enhanced
international search and preliminary examination system; (2) simplify
the PCT by changing the concept and operation of the designation system
and the fee system; and (3) simplify signature and other filing
requirements.
Enhanced International Search and Preliminary Examination System:
Under the enhanced international search and
[[Page 59882]]
preliminary examination system, the written opinion currently
established during the Chapter II procedure by the International
Preliminary Examining Authority (IPEA) has been added to the Chapter I
procedure. Accordingly, the International Searching Authority (ISA)
will be responsible for establishing a preliminary and non-binding
written opinion on whether the claimed invention appears to be novel,
to involve an inventive step and to be industrially applicable. In the
event that a Demand for international preliminary examination is timely
filed by applicant, the written opinion of the ISA will be considered
to be the written opinion of the IPEA. If a Demand is not timely filed,
the written opinion of the ISA will form the basis for the issuance, by
the International Bureau (IB) on behalf of the ISA, of an
``International Preliminary Report on Patentability (Chapter I of the
Patent Cooperation Treaty)'' (``IPRP''), which will be communicated to
all designated Offices and made available for public inspection after
the expiration of thirty months from the priority date.
Under the revised system, the time limit for filing a Demand for
international preliminary examination has changed. Specifically, the
Demand must be filed within the later of: (1) Three months from
issuance of the international search report and the written opinion of
the ISA (or, if a search cannot be made, of the declaration under
Article 17.2(a)); or (2) twenty-two months from the priority date. See
PCT Rule 54bis.1(a). Any Demand made after the expiration of this time
limit will be considered as if it had not been submitted. See PCT Rule
54bis.1(b). Any arguments or amendments in response to the written
opinion of the ISA must be submitted within the time limit for filing
the Demand to ensure consideration by the IPEA. It is noted that
applicants may still desire to file the Demand prior to the expiration
of nineteen months from the priority date in order to delay entry into
the national stage for those few remaining Contracting States that have
taken a reservation to the thirty-month time limit in Article 22(1).
As in current PCT Chapter II procedures, the IPEA will still
establish an international preliminary examination report, though the
report will now bear the title ``International Preliminary Report on
Patentability (Chapter II of the Patent Cooperation Treaty).'' This
report will be established within the applicable time limit under PCT
Rule 69 (usually within twenty-eight months from the priority date).
Under the revised system, payment of the international preliminary
examination fee and handling fee is not required until the later of one
month from the filing of the Demand or twenty-two months from the
priority date. See PCT Rules 57.3(a) and 58.1(b). However, where the
IPEA and the ISA are the same and the IPEA wishes to start examination
at the same time as the international search, the IPEA may require that
the examination and handling fees be paid within one month of an
invitation by the IPEA to pay such fees. See PCT Rule 57.3(c).
Automatic Indication of All Designations Possible under the PCT;
Relaxed Signature and other Filing Requirements; Simplified Fee System:
Under the amendments to the Regulations of the PCT, upon filing an
international application, applicant will obtain automatic and all-
inclusive coverage of all designations available under the PCT,
including all kinds of protection as well as both national and regional
patent protection. See PCT Rule 4.9. Similarly, the mere filing of a
Demand will constitute the election of all designated States. See PCT
Rule 53.7. Thus, applicants need not, at the time of filing the
international application, specifically designate individual
Contracting States, or choose certain kinds of protection or indicate
expressly whether national or regional protection is sought. Such
matters will be resolved in the national phase.
This automatic and all-inclusive designation system overcomes a
current pitfall for applicants who have inadvertently omitted specific
designations upon filing the international application and such
designations were not, or could not be, timely confirmed under PCT Rule
4.9(c). For example, if the original international application papers
did not contain at least one designation, an international filing date
could not be accorded as of the initial receipt date of the application
papers. See PCT Article 11(1)(iii)(b). Furthermore, even in those
applications containing at least one designation, PCT Rule 4.9(b)
required that any additional States and/or additional kinds of
protection be confirmed by the submission of a written notice,
accompanied by payment of the appropriate confirmation fee, within a
relatively short time period (i.e., fifteen months from the priority
date). This time period was frequently overlooked by applicants. Under
the new system of automatic designations/elections, the current
procedures for precautionary designations and later elections become
unnecessary and have been eliminated from the PCT Rules. This will
reduce the workload on the PCT Receiving Office (RO) and IPEA by
eliminating processing of precautionary designations and later
elections, as well as petitions relating to omitted designations.
As a further benefit of the automatic designation system is the
simplification of the PCT fee system. Under the current PCT fee
structure, both a ``basic'' fee and a ``designation'' fee are required.
Moreover, these fees are due at different times in different amounts
depending on when they are paid. Under the new system, these fees have
been eliminated in favor of a single international filing fee
(comprised of two fee components, a first fee component for up to
thirty sheets of paper and a second fee component for sheets of paper
in excess of thirty) due at one time.
As a consequence of the automatic designation system, applicant/
inventors will have to be named in the international application. To
alleviate hardships with regard to obtaining signatures of all the
applicants named on the Request, PCT Rule 26 has been amended to
provide that, for purposes of Article 14(a)(i), the international
application will be considered as signed in accordance with the PCT
Regulations if the Request has been signed by at least one applicant.
See PCT Rule 26.2bis(a). In addition, if there is more than one
applicant, PCT Rule 26.2bis(b) provides that, for purposes of PCT
Article 14(1)(a)(ii), it is sufficient that the identifying information
(i.e., address, residence and nationality) be provided for only one
applicant who is entitled under PCT Rule 19.1 to file the international
application with the RO. This means that for purposes of filing an
international application with the United States Receiving Office (RO/
US) as the competent RO, this information must be provided with respect
to at least one applicant who is a citizen or resident of the United
States. Notwithstanding the amendments to PCT Rule 26, a designated/
elected Office may still require applicants to furnish, during the
national stage, confirmation of the international application by the
signature of any applicant who has not signed the Request and any
missing identifying information. See PCT Rule 51bis.1(a).
PCT Rule 90.4 has been revised to permit the RO, ISA, or IPEA to
waive the requirement for a power of attorney, except in instances of
applicant initiated withdrawals under PCT Rule 90bis.
[[Page 59883]]
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.14: Sections 1.14(g)(1)(ii) and 1.14(g)(3) are amended to
exclude members of the public from obtaining a copy of the written
opinion of the United States International Searching Authority (ISA/US)
until the expiration of thirty months from the priority date of the
international application. Under PCT Rule 44ter.1 (as amended), the ISA
is not permitted to allow access to the written opinion of the ISA
before the expiration of thirty months from the priority date unless
authorized by the applicant.
Section 1.413: Section 1.413(c) is amended to reflect the
additional major function of the ISA/US of preparing and transmitting
written opinions.
Section 1.421: Section 1.421(b) is amended to remove reference to
Sec. 1.425 (Sec. 1.425 is removed). Under PCT Rule 26.2bis(a) (as
amended), the international application will be considered to satisfy
the signature requirement for purposes of PCT Article 14(1)(a)(i) if
the request is signed by at least one applicant (except that all of the
applicants' signatures will still be required for withdrawals, see
discussion of Sec. 1.421(g)). Accordingly, the current requirement in
Sec. 1.425 that the failure of an inventor to sign the request in an
international application designating the United States will only be
excused where the inventor could not be found or reached after diligent
effort or refused to sign the request will no longer be applicable.
Section 1.421(b) is also amended to include the requirement of Sec.
1.424 that joint inventors must jointly apply for an international
application. Section 1.424 is removed (see discussion of Sec. 1.424).
Section 1.421(c) is amended as a consequence of the change to PCT
Rule 4.9, as the United States will always be designated upon filing of
an international application.
Section 1.421(d) is amended to reflect the change to PCT Rule
90.4(d) permitting the RO to waive the requirement for a separate power
of attorney.
Section 1.421(f) is amended to clarify that for purposes of
requests under PCT Rule 92bis to effect a change in an indication
concerning the applicant, agent or common representative, such requests
may be required to be signed by all applicants.
Section 1.421(g) is amended to remove the text of PCT Rule 92bis as
unnecessary and to clarify that for purposes of withdrawals under PCT
Rule 90bis of the international application, designations, priority
claim, demand or elections, the request for withdrawal must be signed
by all applicants. Furthermore, where the request for withdrawal is
signed by an attorney, agent, or common representative, a power of
attorney from the applicants appointing that attorney, agent or common
representative will be required. This clarification is consistent with
PCT Rule 90.4(e) (as amended), which prohibits the RO, ISA, IPEA, and
IB from waiving the separate power of attorney requirement in cases of
withdrawals under Rule 90bis. An exception to this signature
requirement is made in cases where an inventor cannot be found or
reached after diligent effort. See PCT Rule 90bis.5(b).
Section 1.424: This section is removed. The requirement in Sec.
1.424 regarding the naming of joint inventors in international
applications will be moved to Sec. 1.421(b). The further requirement
relating to signature requirements of joint inventors, including
reference to Sec. 1.425, will no longer be applicable (see discussion
of Sec. 1.421(b)).
Section 1.425: This section is removed (see discussion of Sec.
1.421(b)).
Section 1.431: Section 1.431(b)(3) is amended to remove reference
to Sec. 1.424 (Sec. 1.424 is removed). Sections 1.431(c) and (d) are
amended to reflect the new fee structure applicable to international
applications under revised PCT Rule 15. Specifically, the international
``basic fee'' and ``designation fee'' have been combined into a single
``international filing fee.'' In addition, the late payment fee
provision of Sec. 1.431(c)(1) is amended as a consequence of this new
fee structure, consistent with amended PCT Rule 16bis.2.
Section 1.432: Section 1.432 is amended to reflect the change to
PCT Rule 4.9, which provides that the filing of the request shall
constitute: (1) The designation of all Contracting States that are
bound by the PCT on the international filing date; (2) an indication
that for those States for which PCT Articles 43 or 44 apply, the filing
of the request constitutes an indication for the grant of every kind of
protection which is available by way of the designation of that State;
and (3) an indication that the international application is, for those
States to which PCT Article 45(1) applies, for the grant of a regional
patent and also, unless PCT Article 45(2) applies, a national patent.
As a consequence of the ``automatic'' designation system provided under
revised PCT Rule 4.9, the procedure under former PCT Rule 4.9(b) and
(c) regarding confirmation of precautionary designations has been
eliminated from that rule, and therefore, is removed from Sec. 1.432.
Section 1.434: Section 1.434(d) is amended to remove the
requirement that international applications designating the United
States must include the address and the signature of the inventor
except as provided by Sec. Sec. 1.421(d), 1.422, 1.423 and 1.425.
Under PCT Rule 26.2bis (as amended), if there is more than one
applicant, it is sufficient that the request is signed by only one of
them, and that the address is provided with respect to one of the
applicants who is entitled, in accordance with Rule 19.1, to file the
international application with the RO. Section 1.434(d)(3) is also
redesignated as new Sec. 1.434(e) for clarity.
Section 1.445: Section 1.445(a)(1) is amended to increase the
transmittal fee from $240.00 to $300.00. 35 U.S.C. 376(b) authorizes
the Office to (inter alia) prescribe the transmittal fee, search fee,
supplemental search fee, and preliminary examination fee for PCT
international applications. This transmittal fee amount more accurately
reflects the Office's actual average costs of processing international
applications, and is also consistent with the filing fee for
applications under 35 U.S.C. 111(a) proposed by the Office in the 21st
Century Strategic Plan (information concerning the Office's 21st
Century Strategic Plan is available on the Office's Internet Web site
http://www.uspto.gov).
Section 1.445(a)(2)(i) is amended to reduce the search fee charged
by the ISA/US where there is a corresponding prior U.S. application
filed under 35 U.S.C. 111(a) from $450 to $300. Section 1.445(a)(2)(i)
is also amended to clarify the conditions for obtaining benefit of the
reduced search fee where there is such a prior corresponding
application.
Pursuant to PCT Rule 42.1, the ISA/US has, in most cases, only
three months to establish the International Search Report. In order for
the ISA/US to be able to utilize the benefits of a search conducted in
a prior corresponding application filed under 35 U.S.C. 111(a), the
Office must be informed of the prior corresponding application in
sufficient time and in such manner so as to permit the Office to
utilize the search and examination conducted in the prior application.
Accordingly, Sec. 1.445(a)(2)(i) is amended to require applicants to
timely furnish adequate identifying information of the prior U.S.
application in order to qualify for the lower search fee. Specifically,
applicant must identify the prior nonprovisional application by U.S.
application number upon filing the
[[Page 59884]]
international application, if such number is known. If such number is
not known, then applicant must identify the prior application by filing
date, title, and name of applicant (and preferably the application
docket number) so that the Office will be able to identify the prior
application.
Section 1.445(a)(2)(ii) is amended to increase the search fee
charged by the ISA/US in situations not covered by Sec. 1.445(a)(2)(i)
from $700 to $1,000. This search fee amount more accurately reflects
the Office's actual average costs of searching international
applications in situations not covered by Sec. 1.445(a)(2)(i). This
search fee amount is higher than the search fee amount for applications
under 35 U.S.C. 111(a) as proposed by the Administration because of
additional costs associated with both searching international
applications and the preparation and transmittal of a written opinion
of the ISA. Additionally, international applications must be searched
(and examined) under the PCT unity of invention standard, where
applications under 35 U.S.C. 111(a) are searched (and examined) under
the restriction standard set forth in 35 U.S.C. 121. Moreover, the
search fee set forth in Sec. 1.445(a)(2)(i) must also cover
preparation of a written opinion (the ``International Preliminary
Report on Patentability (Chapter I of the Patent Cooperation Treaty)''
(``IPRP'')) under the revised system.
In addition, the fee charged by the ISA/US for searching an
additional invention is increased from $210 to $1,000. This amount more
accurately reflects the Office's actual average costs of searching and
examining additional inventions. In this regard, it is noted that the
search fee and the supplemental search fee charged by every other
international searching authority are the same (except for the ISA/JP,
which charges a supplemental search fee that is only slightly lower
than the search fee).
Section 1.445(a)(4) is deleted, as confirmation fees will no longer
be applicable.
Section 1.445(b) is amended to reflect the combining of the basic
and designation fees into a single ``international filing fee''.
Section 1.455: Section 1.455(b) is amended to be consistent with
PCT Rule 90.4 as it relates to the manner of appointment of agent,
attorney or common representative.
Section 1.480: Section 1.480(a) is amended to reflect the new time
limits in PCT Rule 57.3 and 58.2 for submitting the handling and
preliminary examination fees.
Section 1.480(d) is added, consistent with PCT Rule 53.7 (as
amended), to provide that the filing of a Demand shall constitute the
election of all Contracting States that are designated and bound by
Chapter II of the Treaty on the international filing date. Accordingly,
it will no longer be necessary to specify in the Demand those States
that are elected.
Section 1.480(e) is added to provide that any Demand filed after
the expiration of the applicable time limit in PCT Rule 54bis.1(a)
shall be considered as if it had not been submitted. See PCT Rule
54bis.1(b) (as amended).
Section 1.481: Section 1.481(a) is amended to provide that the
handling fee and preliminary examination fee that are due are those
fees in effect on the date of payment of the handling and preliminary
examination fees. See PCT Rules 57.3(d) and 58.1(b).
Section 1.482: Section 1.482(a)(1) is amended to increase the
preliminary examination fee charged by the IPEA/US from $490 to $600 if
the international search fee was paid to the United States Patent and
Trademark Office as an ISA (the preliminary examination fee charged by
the IPEA/US if the international search fee was not paid to the United
States Patent and Trademark Office as an ISA will remain at $750). This
increase is necessary to cover the additional cost associated with
conducting the preliminary examination by the IPEA/US.
For the same reason, as well as reasons set forth with regard to
the increase in the supplemental search fee under Sec. 1.445(a)(3),
Sec. 1.482(a)(2) is amended to increase the additional preliminary
examination fee for examining additional inventions to $600 (regardless
of whether the international search fee was paid to the United States
Patent and Trademark Office as an ISA).
Section 1.482(b) is amended to refer to revised PCT Rule 57 as it
relates to handling fee requirements.
Section 1.484: Section 1.484(b) is amended to refer to revised PCT
Rule 69.1 as to when the IPEA/US may start international preliminary
examination. PCT Rule 69.1 was revised to prohibit the IPEA from
starting preliminary examination until it is in possession of, inter
alia, the written opinion of the ISA. PCT Rule 69.1 provides for two
exceptions to this requirement. Both exceptions apply when the IPEA and
the ISA for the international application are the same authority. The
first exception permits the IPEA to start examination at the same time
as the international search, subject to certain limitations. See PCT
Rule 69.1(b). The second exception occurs when the ISA considers the
conditions under PCT Article 34(2)(c)(i) to (iii) to be fulfilled. In
such cases, a written opinion by the ISA need not be established. See
PCT Rule 69.1(b)bis.
Sections 1.484(e) through (g) are redesignated as Sec. Sec.
1.484(g) through (i), respectively. Section 1.484(e) now provides,
consistent with PCT Rule 66.1bis, that the written opinion of the ISA
shall be considered to be the written opinion of the IPEA/US.
Section 1.484(f) now provides that the IPEA may establish further
written opinions, subject to the conditions specified in Sec.
1.484(d). Establishment of additional written opinions by the IPEA is
provided for in PCT Rule 66.4(a).
Section 1.484(g) is amended as a consequence of the amendment to
Sec. 1.484(f).
Section 1.484(h) is amended to provide clarification regarding
conducting personal and telephonic interviews with the examiner under
the revised system.
Response to comments: The Office published a notice proposing
changes to the rules of practice to conform them to certain amendments
made to the Regulations under the Patent Cooperation Treaty (PCT) that
will take effect on January 1, 2004. See January 2004 Revision of
Patent Cooperation Treaty Application Procedure, 68 FR 32441 (May 30,
2003), 1271 Off. Gaz. Pat. Office 147 (June 24, 2003) (proposed rule).
The Office received two written comments (one from an intellectual
property organization and another by a patent practitioner) in response
to this notice. The comments and the Office's responses to the comments
follow:
Comment 1: One comment suggested that Sec. 1.14 should provide
that the written opinion of the International Searching Authority is
available to third parties upon publication of the international
application instead of at thirty months as provided in Sec. 1.14.
Response: The suggestion has not been adopted. PCT Rule 44ter.1,
which is set to enter into force on January 1, 2004, provides that the
International Searching Authority, unless requested or authorized by
the applicant, shall not allow access to the written opinion of the
International Searching Authority by any person before the expiration
of thirty months from the priority date. Therefore, the suggested
change to Sec. 1.14 would be inconsistent with the requirements of the
PCT.
Comment 2: One comment suggested that the rules be amended to
provide that if applicant timely files a Demand with Article 34
amendments to the
[[Page 59885]]
claims, the examiner be required to render a new written opinion. The
comment indicates that without such a provision, the IPEA/US, in
adopting the written opinion as established by the ISA, will be
delivering to applicants written opinions which are totally
inconsistent with the claims as amended.
Response: The suggestion has been adopted in part. Under the
enhanced search and examination system, the IPEA/US will not deliver to
applicants a written opinion which does not take into account the
claims as amended. In general, under the procedures established under
the enhanced search and examination system, a written opinion will be
established by the ISA, and upon filing of a Demand by applicant, that
written opinion will be considered to be the first written opinion of
the IPEA. In turn, any amendments under PCT Article 34 which are timely
filed, either with or subsequent to the Demand, will be considered to
be a response to that written opinion. In response to the Demand and
any amendments, the IPEA/US will then issue one of the following: (1) A
further written opinion under Sec. 1.484(f) if such is warranted; or
(2) an international preliminary examination report under Sec.
1.484(g). In both instances, the response by the IPEA will fully take
into consideration any amendments which have been timely filed by the
applicant.
Comment 3: One comment also opposed the proposed changes in the PCT
fees set forth in Sec. Sec. 1.445 and 1.482. First, the comment
indicated that the transmittal, search, and preliminary examination
fees proposed in Sec. Sec. 1.445 and 1.482 would be sixty percent
higher than the filing fee, search fee, and examination fee proposed in
the 21st Century Strategic Plan. Second, the comment indicated that an
applicant must also pay the preliminary examination fee to obtain the
``same benefits'' under PCT Chapters I and II. The comment further
indicated that a truer picture of the proposed fee change is revealed
by comparing the existing and revised transmittal, search, and
international preliminary examination fees on an item-by-item basis.
Response: The Office indicated that the $300 transmittal fee amount
in proposed Sec. 1.445(a)(1) would be consistent with the filing fee
for applications under 35 U.S.C. 111(a) proposed by the Office in the
21st Century Strategic Plan ($300). The Office did not state that the
sum of the transmittal, search, and international preliminary
examination fees would be consistent with the sum of the filing fee,
search fee, and examination fees for applications under 35 U.S.C.
111(a) proposed by the Office in the 21st Century Strategic Plan. The
Office proposed search and examination fee amounts for international
applications that are in certain situations higher than the
corresponding fees for applications under 35 U.S.C. 111(a) because: (1)
There are additional costs associated with searching international
applications and international preliminary examination under the
enhanced international search and preliminary examination system (see
January 2004 Revision of Patent Cooperation Treaty Application
Procedure, 68 FR 32441, 32444 (May 30, 2003), 1271 Off. Gaz. Pat.
Office 147, 149 (June 24, 2003) (proposed rule)); and (2) the
examination fee for applications under 35 U.S.C. 111(a) proposed by the
Office in the 21st Century Strategic Plan does not recover the Office's
cost of examining applications and is subsidized by fees that are not
applicable during the PCT international stage (see H.R. Rep. 108-241,
at 15 (2003)).
The comment correctly notes that a PCT applicant must also pay the
preliminary examination fee to amend the claims in an international
application and obtain a written opinion reflecting the amended claims.
Nevertheless, it is the Office's experience that PCT applicants who
file a Demand for international preliminary examination rarely include
an amendment under PCT Article 34 with the Demand. Therefore, the
enhanced international search and preliminary examination system will
reduce costs for most PCT applicants by providing them with the
benefits they seek from PCT Chapter II, namely, an extension (from
twenty to thirty months) of the time limit for entering the national
stage and a written opinion indicating whether the claims are in
compliance with PCT Article 33(2)-(4), without requiring them to file a
timely Demand for international preliminary examination and pay the
international preliminary examination fee.
When making an item-by-item comparison of the existing transmittal,
search, and international preliminary examination fees with the revised
transmittal, search, and international preliminary examination fees,
one would readily appreciate the following: The enhanced international
search and preliminary examination system reduces costs for most PCT
applicants by providing them with the benefits they seek from PCT
Chapter II without requiring them to pay the international preliminary
examination fee. The Office's costs for searching international
applications are higher under the enhanced international search and
preliminary examination system because international applications must
be searched (and examined) under the PCT unity of invention standard
and the search fee must also cover the preparation of a written
opinion. The Office's costs for international preliminary examination
will be higher in certain situations under the enhanced international
search and preliminary examination system because the Office will be
required to provide an international preliminary examination on the
basis of one or more amendments under PCT Article 34 since applicants
filing a Demand under the revised system will likely be doing so to
obtain a positive ``International Preliminary Report on Patentability
(Chapter II of the Patent Cooperation Treaty)'' and thus will file one
or more amendments under PCT Article 34 in the international
application (under the former system, the majority of Demands were
filed for the sole purpose of extending the national stage entry period
and thus were filed without any substantial amendments to the claims).
Finally, the fees set forth in former Sec. Sec. 1.445 and 1.482 for
search and examination of additional inventions were far too low to
recover the Office's actual average cost for search and examination of
additional inventions.
Rule Making Considerations: Regulatory Flexibility Act: The USPTO
published a proposed rule and certified that an initial Regulatory Act
Analysis was not required. Only one comment was received which
objected, in general, to the fee increases and made no reference to any
impact of the fee increases on small entities. 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 in this final rule will not have a
significant economic impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)).
The changes in this final rule primarily implement corresponding
changes required to conform United States rules for international
applications to the amendments to the PCT Regulations, which become
effective on January 1, 2004. The amendments to the PCT Regulations
will simplify the PCT application process and fee structure. The
changes to the PCT international stage fees are to adjust these fees to
be in alignment with the actual average costs of conducting a PCT
search and international
[[Page 59886]]
preliminary examination under the new process.
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 final rule involves information
collection requirements that 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 collections of information involved in
this final rule have been reviewed and previously approved by OMB under
the following control numbers: 0651-0021 and 0651-0031. 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 title, description and respondent description of the
information collection is shown below with an estimate of the annual
reporting burden. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, PCT/RO/134, PCT/RO/144, PTO-1382, PCT/
IPEA/401, PCT/IB/328, PCT/SB/61/PCT, PCT/SB/64/PCT.
Type of Review: Approved through December of 2003.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 331,407.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,202.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify
the filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a
standardized application format.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/21-27, PTO/SB/30-32,
PTO/SB/35-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/67-68, PTO/SB/91-92,
PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL-413A,
eIDS, EFS form.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,208,339.
Estimated Time Per Response: 1 minute 48 seconds to 8 hours.
Estimated Total Annual Burden Hours: 830,629 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the Office concerning the examination of a
specific application. The specific information required or which may be
submitted includes: Information Disclosure Statements; Terminal
Disclaimers; Petitions to Revive; Express Abandonments; Appeal Notices;
Petitions for Access; Powers to Inspect; Certificates of Mailing or
Transmission; Statements under Sec. 3.73(b); Amendments, Petitions and
their Transmittal Letters; and Deposit Account Order Forms.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, P.O. Box
1450, Alexandria, Virginia, 22313-1450, or to the Office of Information
and Regulatory Affairs of OMB, New Executive Office Building, 725 17th
Street, NW., Room 10235, Washington, DC 20503, Attention: Desk Officer
for the United States Patent and Trademark Office.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
0
For the reasons set forth in the preamble, 37 CFR Part 1 is amended as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.14 is amended by revising paragraphs (g)(1)(ii) and (g)(3)
to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(g) * * *
(1) * * *
(ii) With respect to the Search Copy (the copy of an international
application kept by the Office in its capacity as the International
Searching Authority, see PCT Article 12(1)), the U.S. acted as the
International Searching Authority, except for the written opinion of
the International Search Authority which shall not be available until
the expiration of thirty months from the priority date; or
* * * * *
(3) Access to international application files for international
applications which designate the U.S. and which have been published in
accordance with PCT Article 21(2), or copies of a document in such
application files, will be permitted in accordance with PCT Articles 30
and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request
including a showing that the publication of the application has
occurred and that the U.S. was designated.
* * * * *
0
3. Section 1.413 is amended by revising paragraphs (a) and (c) to read
as follows:
Sec. 1.413 The United States International Searching Authority.
(a) Pursuant to appointment by the Assembly, the United States
Patent and Trademark Office will act as an International Searching
Authority for international applications filed in the United States
Receiving Office and in other Receiving Offices as may be agreed upon
by the Director, in
[[Page 59887]]
accordance with the agreement between the Patent and Trademark Office
and the International Bureau (PCT Art. 16(3)(b)).
* * * * *
(c) The major functions of the International Searching Authority
include:
(1) Approving or establishing the title and abstract;
(2) Considering the matter of unity of invention;
(3) Conducting international and international-type searches and
preparing international and international-type search reports (PCT Art.
15, 17 and 18, and PCT Rules 25, 33 to 45 and 47), and issuing
declarations that no international search report will be established
(PCT Article 17(2)(a));
(4) Preparing written opinions of the International Searching
Authority in accordance with PCT Rule 43bis (when necessary); and
(5) Transmitting the international search report and the written
opinion of the International Searching Authority to the applicant and
the International Bureau.
0
4. Section 1.421 is amended by revising paragraphs (b) through (g) as
follows:
Sec. 1.421 Applicant for international application.
* * * * *
(b) Although the United States Receiving Office will accept
international applications filed by any resident or national of the
United States of America for international processing, for the purposes
of the designation of the United States, an international application
must be filed, and will be accepted by the Patent and Trademark Office
for the national stage only if filed, by the inventor or as provided in
Sec. Sec. 1.422 or 1.423. Joint inventors must jointly apply for an
international application.
(c) For the purposes of designations other than the United States,
international applications may be filed by the assignee or owner.
(d) A registered attorney or agent of the applicant may sign the
international application Request and file the international
application for the applicant. A separate power of attorney from each
applicant may be required.
(e) Any indication of different applicants for the purpose of
different Designated Offices must be shown on the Request portion of
the international application.
(f) Requests for changes in the indications concerning the
applicant, agent, or common representative of an international
application shall be made in accordance with PCT Rule 92bis and may be
required to be signed by all applicants.
(g) Requests for withdrawals of the international application,
designations, priority claims, the Demand, or elections shall be made
in accordance with PCT Rule 90bis and must be signed by all applicants.
A separate power of attorney from the applicants will be required for
the purposes of any request for a withdrawal in accordance with PCT
Rule 90bis which is not signed by all applicants. The submission of a
separate power of attorney may be excused upon the request of another
applicant where one or more inventors cannot be found or reached after
diligent effort. Such a request must be accompanied by a statement
explaining to the satisfaction of the Director the lack of the
signature concerned.
Sec. 1.424 [Removed]
0
5. Section 1.424 is removed.
Sec. 1.425 [Removed]
0
6. Section 1.425 is removed.
0
7. Section 1.431 is amended by revising paragraphs (b)(3), (c) and (d)
to read as follows:
Sec. 1.431 International application requirements.
* * * * *
(b) * * *
(3) The international application contains at least the following
elements (PCT Art. 11(1)(iii)):
(i) An indication that it is intended as an international
application (PCT Rule 4.2);
(ii) The designation of at least one Contracting State of the
International Patent Cooperation Union (Sec. 1.432);
(iii) The name of the applicant, as prescribed (note Sec. Sec.
1.421-1.423);
(iv) A part which on the face of it appears to be a description;
and
(v) A part which on the face of it appears to be a claim.
(c) Payment of the international filing fee (PCT Rule 15.2) and the
transmittal and search fees (Sec. 1.445) may be made in full at the
time the international application papers required by paragraph (b) of
this section are deposited or within one month thereafter. The
international filing, transmittal, and search fee payable is the
international filing, transmittal, and search fee in effect on the
receipt date of the international application.
(1) If the international filing, transmittal and search fees are
not paid within one month from the date of receipt of the international
application and prior to the sending of a notice of deficiency which
imposes a late payment fee, applicant will be notified and given one
month within which to pay the deficient fees plus the late payment fee.
Subject to paragraph (c)(2) of this section, the late payment fee will
be equal to the greater of:
(i) Fifty percent of the amount of the deficient fees; or
(ii) An amount equal to the transmittal fee;
(2) The late payment fee shall not exceed an amount equal to the
25% of the international filing fee not taking into account any fee for
each sheet of the international application in excess of thirty sheets
(PCT Rule 16bis).
(3) The one-month time limit set pursuant to paragraph (c) of this
section to pay deficient fees may not be extended.
(d) If the payment needed to cover the transmittal fee, the
international filing fee, the search fee, and the late payment fee
pursuant to paragraph (c) of this section is not timely made in
accordance with PCT Rule 16bis.1(e), the Receiving Office will declare
the international application withdrawn under PCT Article 14(3)(a).
0
8. Section 1.432 is revised to read as follows:
Sec. 1.432 Designation of States by filing an international
application.
The filing of an international application request shall
constitute:
(a) The designation of all Contracting States that are bound by the
Treaty on the international filing date;
(b) An indication that the international application is, in respect
of each designated State to which PCT Article 43 or 44 applies, for the
grant of every kind of protection which is available by way of the
designation of that State; and
(c) An indication that the international application is, in respect
of each designated State to which PCT Article 45(1) applies, for the
grant of a regional patent and also, unless PCT Article 45(2) applies,
a national patent.
0
9. Section 1.434 is amended by revising paragraph (d) and adding
paragraph (e) to read as follows:
Sec. 1.434 The request.
* * * * *
(d) For the purposes of the designation of the United States of
America, an international application shall include:
(1) The name of the inventor; and
(2) A reference to any prior-filed national application or
international application designating the United States of America, if
the benefit of the filing date for the prior-filed application is to be
claimed.
[[Page 59888]]
(e) An international application may also include in the Request a
declaration of the inventors as provided for in PCT Rule 4.17(iv).
0
10. Section 1.445 is revised to read follows:
Sec. 1.445 International application filing, processing and search
fees.
(a) The following fees and charges for international applications
are established by the Director under the authority of 35 U.S.C. 376:
(1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)--
$300.00
(2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
(i) If a corresponding prior United States National application
filed under 35 U.S.C. 111(a) with the filing fee under Sec. 1.16(a)
has been filed and the corresponding prior United States National
application is identified by application number, if known, or if the
application number is not known by the filing date, title, and name of
applicant (and preferably the application docket number), in the
international application or accompanying papers at the time of filing
the international application--$300.00
(ii) For all situations not provided for in paragraph (a)(2)(i) of
this section--$1,000.00
(3) A supplemental search fee when required, per additional
invention--$1,000.00
(4) A fee equivalent to the transmittal fee in paragraph (a)(1) of
this section for transmittal of an international application to the
International Bureau for processing in its capacity as a Receiving
Office (PCT Rule 19.4).
(b) The international filing fee shall be as prescribed in PCT Rule
15.
0
11. Section 1.455 is amended by revising paragraph (b) to read as
follows:
Sec. 1.455 Representation in international applications.
* * * * *
(b) Appointment of an agent, attorney or common representative (PCT
Rule 4.8) must be effected either in the Request form, signed by
applicant, in the Demand form, signed by applicant, or in a separate
power of attorney submitted either to the United States Receiving
Office or to the International Bureau.
* * * * *
0
12. Section 1.480 is amended by revising paragraph (a) and adding
paragraphs (d) and (e) to read as follows:
Sec. 1.480 Demand for international preliminary examination.
(a) On the filing of a proper Demand in an application for which
the United States International Preliminary Examining Authority is
competent and for which the fees have been paid, the international
application shall be the subject of an international preliminary
examination. The preliminary examination fee (Sec. 1.482(a)(1)) and
the handling fee (Sec. 1.482(b)) shall be due within the applicable
time limit set forth in PCT Rule 57.3.
* * * * *
(d) The filing of a Demand shall constitute the election of all
Contracting States which are designated and are bound by Chapter II of
the Treaty on the international filing date (PCT Rule 53.7).
(e) Any Demand filed after the expiration of the applicable time
limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had
not been submitted (PCT Rule 54bis.1(b)).
0
13. Section 1.481 is amended by revising paragraph (a) to read as
follows:
Sec. 1.481 Payment of international preliminary examination fees.
(a) The handling and preliminary examination fees shall be paid
within the time period set in PCT Rule 57.3. The handling fee or
preliminary examination fee payable is the handling fee or preliminary
examination fee in effect on the date of payment.
(1) If the handling and preliminary examination fees are not paid
within the time period set in PCT Rule 57.3, applicant will be notified
and given one month within which to pay the deficient fees plus a late
payment fee equal to the greater of:
(i) Fifty percent of the amount of the deficient fees, but not
exceeding an amount equal to double the handling fee; or
(ii) An amount equal to the handling fee (PCT Rule 58bis.2).
(2) The one-month time limit set in this paragraph to pay deficient
fees may not be extended.
* * * * *
0
14. Section 1.482 is revised to read as follows:
Sec. 1.482 International preliminary examination fees.
(a) The following fees and charges for international preliminary
examination are established by the Director under the authority of 35
U.S.C. 376:
(1) The following preliminary examination fee is due on filing the
Demand:
(i) If an international search fee as set forth in Sec.
1.445(a)(2) has been paid on the international application to the
United States Patent and Trademark Office as an International Searching
Authority--$600.00
(ii) If the International Searching Authority for the international
application was an authority other than the United States Patent and
Trademark Office--$750.00
(2) An additional preliminary examination fee when required, per
additional invention--$600.00
(b) The handling fee is due on filing the Demand and shall be as
prescribed in PCT Rule 57.
0
15. Section 1.484 is amended by revising paragraphs (b), (e) through
(g) and adding paragraphs (h) and (i) to read as follows:
Sec. 1.484 Conduct of international preliminary examination.
* * * * *
(b) International preliminary examination will begin in accordance
with PCT Rule 69.1.
* * * * *
(e) The written opinion established by the International Searching
Authority under PCT Rule 43bis.1 shall be considered to be a written
opinion of the United States International Preliminary Examining
Authority for the purposes of paragraph (d) of this section.
(f) The International Preliminary Examining Authority may establish
further written opinions under paragraph (d) of this section.
(g) If no written opinion under paragraph (d) of this section is
necessary, or if no further written opinion under paragraph (f) of this
section is to be established, or after any written opinion and the
reply thereto or the expiration of the time limit for reply to such
written opinion, an international preliminary examination report will
be established by the International Preliminary Examining Authority.
One copy will be submitted to the International Bureau and one copy
will be submitted to the applicant.
(h) An applicant will be permitted a personal or telephone
interview with the examiner, which may be requested after the filing of
a Demand, and must be conducted during the period between the
establishment of the written opinion and the establishment of the
international preliminary examination report. Additional interviews may
be conducted where the examiner determines that such additional
interviews may be helpful to advancing the international preliminary
examination procedure. A summary of any such personal or telephone
interview must be filed by the applicant or, if not filed by applicant
be made of record in the file by the examiner.
(i) If the application whose priority is claimed in the
international application
[[Page 59889]]
is in a language other than English, the United States International
Preliminary Examining Authority may, where the validity of the priority
claim is relevant for the formulation of the opinion referred to in
Article 33(1), invite the applicant to furnish an English translation
of the priority document within two months from the date of the
invitation. If the translation is not furnished within that time limit,
the international preliminary report may be established as if the
priority had not been claimed.
Dated: October 10, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 03-26338 Filed 10-17-03; 8:45 am]
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