[Federal Register Volume 59, Number 125 (Thursday, June 30, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-15946]


[[Page Unknown]]

[Federal Register: June 30, 1994]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 10

[Docket No. 940547-4147]
RIN 0651-AA72

 

Revision of Patent Cooperation Treaty Provisions

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

-----------------------------------------------------------------------

SUMMARY: The Patent and Trademark Office (Office) proposes to amend the 
rules of practice relating to applications filed under the Patent 
Cooperation Treaty (PCT) in accordance with revised regulations under 
the PCT. The proposed changes will result in a procedure whereby 
international applications improperly filed in the United States 
Receiving Office (RO/US) will, for a fee, be forwarded for processing 
by the International Bureau as Receiving Office.

DATES: Written comments must be submitted on or before August 29, 1994.

ADDRESSES: Address written comments to the Commissioner of Patents and 
Trademarks, Washington, D.C. 20231, Attention: Charles Pearson, Crystal 
Park II, Room 919, or by Fax to (703) 308-6459. No oral hearing will be 
held.

FOR FURTHER INFORMATION CONTACT:
Charles Pearson by telephone at (703) 308-6515 or by mail marked to his 
attention and addressed as above.

SUPPLEMENTARY INFORMATION: These proposed rule changes will improve 
filing and processing procedures for applicants in the filing of 
international applications.
    On September 20 to 29, 1993, representatives of the patent offices 
of the member countries, in a series of meetings held in Geneva, 
Switzerland, agreed upon several changes to the PCT regulations which 
are designed to make the PCT more user-friendly. One of the significant 
changes to the PCT regulations was the addition of a new section (PCT 
Rule 19.4) which provides for transmittal of an international 
application to the International Bureau, acting in its capacity as 
Receiving Office, in certain instances. Several other changes were 
agreed upon including modifications to certain existing regulations. 
Some of these adopted changes require corresponding changes in Title 
37, CFR.
    Under the regulations currently in effect, an applicant is 
required, on filing the international application in the United States, 
to specify an applicant who is a resident or national of the United 
States.
    The practice under the revised PCT regulations permits an 
international application filed with the United States Receiving Office 
to be forwarded to the International Bureau for processing in its 
capacity as a receiving office if the international application has an 
applicant who is a resident or national of a PCT Contracting State or 
has no residence or nationality indicated, but does not have an 
applicant who is indicated as being a U.S. resident or national. The 
Receiving Office of the International Bureau will consider the 
international application to be received as of the date accorded by the 
United States Receiving Office. This practice will avoid the loss of a 
filing date in those instances where the United States Receiving Office 
is not competent to act, but where the international application is 
filed by an applicant who is a national or resident of a PCT 
Contracting State. Where questions arise regarding residence or 
nationality, e.g., where residence and nationality are not clearly set 
forth, the application will be forwarded to the International Bureau as 
Receiving Office. If all of the applicants are indicated to be 
residents and nationals of non-PCT Contracting States, PCT Rule 19.4 
does not apply and the application is denied an international filing 
date.

Discussion of Specific Rules

    Section 1.412(c)(6), if added as proposed, would reflect that the 
United States Receiving Office, where it is not a competent Receiving 
Office under PCT Rule 19.1 or 19.2, could transmit the international 
application to the International Bureau for processing in its capacity 
as a Receiving Office.
    Section 1.421(a), if amended as proposed, would clarify that 
applications filed by applicants who are not residents or nationals of 
the United States, but who are residents or nationals of a PCT 
Contracting state or who indicate no residence or nationality, will, 
upon timely payment of the proper fee, have their application forwarded 
to the International Bureau for processing in its capacity as a 
Receiving Office.
    Section 1.445(a)(5), if added as proposed, would establish 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.
    Section 10.9, if amended as proposed, would add a new provision to 
be consistent with the change to PCT Rule 90.1, clarifying that an 
attorney or agent having the right to act before the International 
Bureau when acting as Receiving Office may represent the applicant 
before the U.S. International Searching Authority or the U.S. 
International Preliminary Examining Authority. An individual who has 
the right to practice before the International Bureau when acting as 
Receiving Office, and who is not registered under Sec. 10.6, may not 
prosecute patent applications in the national stage in the Office.

Other Considerations

    The proposed rule changes are in conformity with the requirements 
of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive 
Order 12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et 
seq. This proposed rule has been determined to be not significant for 
the purposes of E.O. 12866.
    The General Counsel of the Department of Commerce has certified to 
the Chief Counsel for Advocacy, Small Business Administration, that the 
proposed rule changes will not have a significant economic impact on a 
substantial number of small entities (Regulatory Flexibility Act, 5 
U.S.C. 605(b)), because the proposed rules would affect only a small 
number of international applications and would provide more streamlined 
and simplified procedures for filing and prosecuting international 
applications under the PCT.
    The Patent and Trademark Office has also determined that this 
notice has no federalism implications affecting the relationship 
between the National government and the States as outlined in Executive 
Order 12612.
    These rule changes will not impose any additional burden under the 
Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. The paperwork 
burden imposed by adherence to the PCT is currently approved by the 
Office of Management and Budget under control number 0651-0021.
    Notice is hereby given that pursuant to the authority granted to 
the Commissioner of Patents and Trademarks by 35 U.S.C. 6, the Patent 
and Trademark Office proposes to amend Title 37 of the Code of Federal 
Regulations as set forth below.

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.

37 CFR Part 10

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and record keeping requirements, Trademarks.

    For the reasons set forth in the preamble, 37 CFR Parts 1 and 10 
are proposed to be amended as follows, with removals indicated by 
brackets ([ ]) and additions by arrows (> <):

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 would continue to read 
as follows:

    Authority: 35 U.S.C. 6 unless otherwise noted.

    2. Section 1.412 is proposed to be amended by adding new paragraph 
(c)(6) to read as follows:


Sec. 1.412  The United States Receiving Office.

* * * * *
    (c) The major functions of the Receiving Office include:
* * * * *
    >(6) Reviewing and, where the United States Receiving Office is not 
the competent Receiving Office under Sec. 1.421(a) and PCT Rule 19.1 or 
19.2, transmitting the international application to the International 
Bureau for processing in its capacity as a competent Receiving Office 
(PCT Rule 19.4).<

    3. Section 1.421 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.421  Applicant for international application.

    (a) Only residents or nationals of the United States of America may 
file international applications in the United States Receiving Office. 
>If an international application does not include an applicant who is 
indicated as being a resident or national of the United States of 
America, and at least one applicant:
    (1) Has indicated a residence or nationality in a PCT Contracting 
State, or
    (2) Has no residence or nationality indicated;

applicant will be so notified and, if the international application 
includes a fee amount equivalent to that required by Sec. 1.445(a)(5), 
the international application will be forwarded for processing to the 
International Bureau acting as a Receiving Office. (See also 
Sec. 1.412(c)(6)).

    4. Section 1.445 is proposed to be amended by adding new paragraph 
(a)(5) to read as follows:


Sec. 1.445  International application filing, processing and search 
fees.

    (a) * * *
    >(5) 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 competent 
Receiving Office (PCT Rule 19.4).<
* * * * *

PART 10--[AMENDED]

    5. The authority citation for 37 CFR Part 10 would continue to read 
as follows:

    Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 
41.

    6. Section 10.9 is proposed to be amended by revising paragraph (c) 
read as follows:


Sec. 10.9  Limited recognition in patent cases.

* * * * *
    (c) An individual not registered under Sec. 10.6 may, if appointed 
by applicant to do so, prosecute an international application only 
before the U.S. International Searching Authority and the U.S. 
International Preliminary Examining Authority, provided: the individual 
has the right to practice before the national office with which the 
international application is filed (PCT Art. 49, Rule 90 and 
Sec. 1.455) >or before the International Bureau when acting as 
Receiving Office (PCT Rule 90.1)<.

    Dated: June 23, 1994.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 94-15946 Filed 6-29-94; 8:45 am]
BILLING CODE 3510-16-M