[Federal Register Volume 59, Number 189 (Friday, September 30, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-24236]


[[Page Unknown]]

[Federal Register: September 30, 1994]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. 940965-4265]
RIN: 0651-AA67

 

Revision of Affidavits Under 37 CFR 1.131

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (Office) proposes to amend the 
rules of practice relating to submission of affidavits or declarations 
under 37 CFR 1.131(a) to implement the relevant provisions of Public 
Law No. 103-182 and the GATT (General Agreement on Trade and Tariffs), 
and to provide relief in certain circumstances where a common assignee 
holds both an application and a patent claiming patentably indistinct, 
but not identical, inventions.

DATES: Written comments must be submitted on or before December 1, 
1994. No oral hearing will be held.

ADDRESSES: Address written comments to the Commissioner of Patents and 
Trademarks, Washington, D.C. 20231, Attention: Charles E. Van Horn, 
Deputy Assistant Commissioner for Patent Policy and Projects, or by fax 
to (703) 305-8825.

FOR FURTHER INFORMATION CONTACT: Charles E. Van Horn by telephone at 
(703) 305-9054 or Hiram Bernstein by telephone at (703) 305-9282 or by 
mail marked to the attention of Charles E. Van Horn, Deputy Assistant 
Commissioner for Patent Policy and Projects, and addressed as above.

SUPPLEMENTARY INFORMATION: Public Law No. 103-182 (November 4, 1993) 
implementing the North American Free Trade Agreement (NAFTA), amended 
35 U.S.C. 104 to provide that for the purpose of obtaining a patent, an 
applicant can show a date of invention in the United States, or in a 
NAFTA country which occurred after the date of implementation (i.e., 
December 8, 1993). Although GATT enabling legislation has not been 
passed, these proposed rule changes assume that it will be passed, and 
therefore changes to 37 CFR 1.131(a) similar to NAFTA would be 
required. See Article 27, paragraph 1, of the Agreement on Trade-
related Aspects of Intellectual Property Rights, Including Trade in 
Counterfeit Goods, of the GATT. In the event that the GATT enabling 
legislation is not enacted when the final rules are published, the 
proposed rule changes relative to the GATT will be withdrawn.
    The Office proposes to amend 37 CFR 1.131(a), which is currently 
limited to facts showing a completion of the invention in the United 
States, to allow for a submission of facts in an affidavit or 
declaration that show completion of the invention in a NAFTA or a World 
Trade Organization (WTO) Member country. The WTO is established under 
the GATT agreement to resolve disputes between signatories to the 
agreement. The facts presented must demonstrate completion of the 
invention prior to the effective date of a reference thought to bar the 
grant of a patent or the patentability of a claim in a patent under 
reexamination.
    Additionally, the Office recognizes that there is a potential 
conflict between existing 37 CFR 1.131(a) and 37 CFR 1.602(a). Section 
1.131(a) prohibits affidavits or declarations thereunder when the same 
patentable invention as defined in 37 CFR 1.601(n) (i.e., patentably 
indistinct inventions) is claimed. An interference under 35 U.S.C. 135, 
rather than antedating under Sec. 1.131(a), is generally the available 
remedy. However, 37 CFR 1.602(a) provides that when the applications or 
the application and patent are owned by a single party, interferences 
are not declared or continued unless good cause is shown. This can 
result in a hardship where there is an issued patent that can no longer 
be amended as by filing a continuation-in-part application. Where there 
are two or more pending applications, the conflict can be avoided by 
filing a continuation-in-part application incorporating the conflicting 
inventions in a single application.
    The Office proposes to amend 37 CFR 1.131 to broaden its 
application to a single party where inventions of a pending application 
and a patent held by the party are patentably indistinct but not 
identical. Under the proposed additions to Sec. 1.131, an affidavit or 
declaration could be filed by a party to avoid a 35 U.S.C. 103 
rejection based on a 35 U.S.C. 102(a) or (e) patent owned by that 
party, where the patent claimed an invention that was patentably 
indistinct, but not identical to an invention claimed in an application 
or patent undergoing reexamination.
    The proposed addition to Sec. 1.131 would not affect the use of the 
issued patent in a rejection based on double patenting. However, where 
patentably indistinct but not identical inventions are claimed, a 
double patenting rejection can be avoided by filing an appropriate 
terminal disclaimer. In addition, petitions under Sec. 1.183 will be 
entertained for waiver of Sec. 1.131 requirements in appropriate 
instances where two pending applications claiming patentably indistinct 
but not identical inventions are held by a single party.

Discussion of Specific Rules

    Section 1.131(a), if amended to (a)(1) as proposed, would allow a 
Sec. 1.131 affiant or declarant to rely upon facts occurring in a NAFTA 
or a WTO Member country to show completion of the invention. The term 
``domestic'' would be changed to ``U.S.'' The section is proposed to be 
amended from a single sentence to three sentences.
    Section 1.131(a)(2), if added as proposed, would limit the 
availability of acts showing completion of the invention in a NAFTA or 
WTO Member country to those acts occurring subsequent to the effective 
date of the agreements.
    Section 1.131(a)(3), if added as proposed, would allow a showing of 
prior invention to be made in a pending application or a patent that is 
undergoing reexamination where a single party holds both the 
application or patent undergoing reexamination and another patent where 
the claimed inventions were, at the time the later invention was made, 
both owned by the single party or subject to an obligation of 
assignment to that party. Further, in order to rely on proposed 
Sec. 1.131(a)(3), the inventions claimed in the application or in the 
patent undergoing reexamination and in the other patent must not be 
identical as set forth in 35 U.S.C. 102.

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. The Office of Management and Budget has determined that the 
proposed rule changes are not significant for the purposes of E.O. 
12866.
    The Assistant General Counsel for Legislation and Regulation 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 applications and 
would provide a streamlined and simplified procedure, eliminating the 
need for requesting waiver of the rules.
    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.

List of Subjects in 37 CFR Part 1

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

    For the reasons set forth in the preamble, and pursuant to the 
authority granted to the Commissioner of Patents and Trademarks by 35 
U.S.C. 6, the Office proposes to amend Title 37 of the Code of Federal 
Regulations as set forth below, with deletions indicated by brackets 
([]) and additions indicated 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 1.131 is proposed to be amended by revising paragraph 
(a) to read as follows:


Sec. 1.131  Affidavit or declaration of prior invention to overcome 
cited patent or publication.

    (a) >(1)< When any claim of an application or a patent under 
reexamination is rejected on reference to a [domestic] >U.S.< patent 
which substantially shows or describes but does not claim the same 
patentable invention, as defined in Sec. 1.601(n), as the rejected 
invention, or on reference to a foreign patent or to a printed 
publication, [and] the inventor of the subject matter of the rejected 
claim, the owner of the patent under reexamination, or the person 
qualified under Secs. 1.42, 1.43 or 1.47, [shall make] >may overcome 
the patent or publication by filing an appropriate< oath or declaration 
>.< [as to] >The oath or declaration must include< facts showing a 
completion of the invention in this country >or in a NAFTA or WTO 
Member country< before the filing date of the application on which the 
[domestic] >U.S.< patent issued, or before the date of the foreign 
patent, or before the date of the printed publication >.< [, then] 
>When an appropriate oath or declaration is made,< the patent or 
publication cited shall not bar the grant of a patent to the inventor 
or the confirmation of the patentability of the claims of the patent, 
unless the date of such patent or printed publication is more than one 
year prior to the date on which the inventor's or patent owner's 
application was filed in this country.
    >(2) A date of completion of the invention may not be established 
under this section before December 8, 1993, in a NAFTA country, or 
before----in a WTO Member country other than a NAFTA country.
    (3) Notwithstanding the provisions of paragraph (a)(1), a showing 
may be made under this section where the inventions defined by a claim 
in an application or a patent under reexamination and by a claim in 
another U.S. patent are not identical as set forth in 35 U.S.C. 102, 
and where the inventions were, at the time the later invention was 
made, owned by the same person or subject to an obligation of 
assignment to the same person.<
* * * * *
    Dated: September 26, 1994.
Bradford R. Huther,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.
[FR Doc. 94-24236 Filed 9-29-94; 8:45 am]
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