[Federal Register Volume 60, Number 84 (Tuesday, May 2, 1995)]
[Rules and Regulations]
[Pages 21438-21440]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-10743]



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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 1 and 10
[Docket No. 950403086-5086-01]
RIN 0651-AA72

Revisions of Patent Cooperation Treaty Provisions

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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

EFFECTIVE DATE: June 1, 1995.

FOR FURTHER INFORMATION CONTACT:
Charles Pearson at (703) 308-6515.

SUPPLEMENTARY INFORMATION: In a Notice of Proposed Rulemaking published 
in the Federal Register at 59 FR 33707 (June 30, 1994) and in the 
Patent and Trademark Office Official Gazette at 1164 Off. Gaz. Pat. 
Office 77 (July 26, 1994), the Office proposed to amend several rules 
of practice in patent cases. Recent changes to the PCT Regulations 
include 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. Under the regulations currently in effect, at least one 
applicant is required, on filing the international application in the 
United States, to be 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 does 
not name an applicant who is indicated as being a U.S. resident or 
national, but names an applicant who is indicated as a resident or 
national of another PCT Contracting State or if the indication of 
residence or nationality of the applicant is missing. 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 and 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 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) is added to 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) is amended to 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, be forwarded to the International Bureau for processing in 
its capacity as a Receiving Office.
    Section 1.445(a)(5) is added to 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 is amended to add a new provision consistent with PCT 
Rule 90.1, clarifying that an attorney or agent having the right to 
practice 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.
[[Page 21439]]

Response to Comments on the Rules

    The comments received in response to the notice of proposed 
rulemaking have been given careful consideration. The comments and 
responses are discussed below.
    Comment: One comment was received which approved of the proposed 
rule changes but noted other aspects of the U.S. National Phase filing 
procedures that could be changed to make the PCT more user-friendly.
    Response: The Office is interested in making the PCT more user 
friendly. Amendments to Secs. 1.494 and 1.495, which were effective on 
May 1, 1993, removed many of the differences in practice involving the 
filing of a regular U.S. application under 35 U.S.C. 111 and the entry 
of the national stage under 35 U.S.C. 371. These regulations now 
provide for a notice of missing requirements, similar to a notice under 
Sec. 1.53(d), where a defective oath or declaration or a defective 
translation is filed.
    Comment: Regarding Sec. 1.412(c), one comment suggested that the 
proposed rule should be made consistent with PCT Rule 19.4(b) which 
provides for the transmittal of international applications to the 
International Bureau as Receiving Office ``unless prescriptions 
concerning national security prevent the international application from 
being so transmitted'' by incorporating such language into the proposed 
rule.
    Response: The Office has adopted the suggestion and modified the 
rule by incorporating the suggested language from PCT Rule 19.4(b) in 
the regulation.
    Comment: One comment regarding Sec. 1.445(a)(5) mentioned that the 
word ``competent'' should be deleted because it is not ``necessary and 
may be inaccurate'' when no applicant in an international application 
is a ``resident or national of a PCT Contracting State.''
    Response: The Office has adopted the suggestion and modified the 
rule by deleting ``competent'' from Sec. 1.445(a)(5). The second 
occurrence of the word ``competent'' has also been deleted from 37 CFR 
1.412(c)(6), for the same reasons.
    Comment: Regarding Sec. 10.9(c), there were a few comments which 
focus on the wording. Specifically, one comment noted that the word 
``appointed'' is confusing because it is not clear if it includes ``an 
officer or employee of a legal-entity patent applicant'' in cases where 
the United States of America is not designated. An example was provided 
which noted ``if the only applicant was XYZ Company, would the 
president of the Company be authorized to prosecute the application 
before the USPTO as an International Searching and Preliminary 
Examining Authority? In countries permitting assignee filing it is 
normal for any authorized officer or employee of the company to be able 
to represent the company without regard as to whether he is authorized 
to practice as an agent or attorney before the patent office.''
    Response: The proposed regulation is sufficiently clear on this 
point. If a person has the authority to represent an applicant, either 
a legal entity applicant or a real person, before the International 
Bureau as Receiving Office, then that person has the right to represent 
that applicant before the United States International Searching 
Authority and the United States International Preliminary Examining 
Authority.
    Comment: Another comment about Rule 10.9(c) is that the word 
``only'' is overlimiting and should be deleted from the Rule because it 
excludes Article 19 amendments filed before the International Bureau. 
It was suggested that the Rule be changed as follows: --* * * prosecute 
an International Application before the United States Patent and 
Trademark Office acting as an International Searching or Preliminary 
Examining Authority, * * *
    Response: The Office will not adopt the suggestion. The word 
``only'' in the Rule signifies that such persons may not prosecute an 
international application in the national stage before the USPTO. The 
rule is not meant to control who may practice before the International 
Bureau. Such a person would clearly be allowed to file Article 19 
amendments with the International Bureau by virtue of PCT Rule 90.1(a).
    Comment: A final comment made about Rule 10.9(c) is that the last 
phrase added is ``too broad'' because it does not recite who is 
entitled to act before the International Bureau. It was suggested that 
the rule should be changed to include the phrase--* * * for a national 
Office of a Contracting State of which an applicant is a resident or 
national--at the end of the rule.
    Response: The Office has adopted the suggestion to the extent that 
an explicit reference to PCT Rule 83.1bis has been inserted in the 
regulation. Since PCT Rule 83.1bis clearly sets forth who may 
practice before the International Bureau, it is not necessary to repeat 
that information here. Thus, the regulation clearly sets forth who may 
practice before the United States International Searching and 
Preliminary Examining Authorities.

Other Considerations

    The 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. 
These rule changes have been determined to be not significant for the 
purposes of Executive Order 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 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 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 Office has also determined that these rule changes have 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.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 10

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

    For the reasons set forth in the preamble, 37 CFR parts 1 and 10 
are amended to read as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR part 1 continues to read as 
follows:

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

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


Sec. 1.412  The United States Receiving Office.

* * * * * [[Page 21440]] 
    (c) * * *
    (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 Receiving Office unless 
prescriptions concerning national security prevent the application from 
being so transmitted (PCT Rule 19.4).
    3. Section 1.421 is 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 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 Receiving 
Office (PCT Rule 19.4).
* * * * *
    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 amended by revising paragraph (c) to 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 pursuant to PCT Rules 83.1bis and 90.1.

    Dated: April 25, 1995.
Lawrence J. Goffney, Jr.,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.
[FR Doc. 95-10743 Filed 5-1-95; 8:45 am]
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