[Federal Register Volume 63, Number 23 (Wednesday, February 4, 1998)]
[Rules and Regulations]
[Pages 5732-5734]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-2732]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 980108007-8007-01]
RIN 0651-AA97
Changes to Continued Prosecution Application Practice
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Interim rule with request for comments.
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SUMMARY: The Patent and Trademark Office (Office) is amending its
regulations to remove the requirement that the prior application of a
continued prosecution application (CPA) must have been filed on or
after June 8, 1995. This requirement is being removed in response to
requests from the public.
DATES: Effective Date: February 4, 1998.
Applicability Date: This rule change applies to all continued
prosecution applications filed on or after December 1, 1997.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before April 6, 1998. No public hearing
will be held.
ADDRESSES: Comments should be sent by mail message over the Internet
addressed to [email protected]. Comments may also be submitted by
mail addressed to: Box Comments--Patents, Assistant Commissioner for
Patents, Washington, DC 20231, or by facsimile to (703) 308-6916,
marked to the attention of Hiram H. Bernstein. Although comments may be
submitted by mail or facsimile, the Office prefers to receive comments
via the Internet. Where comments are submitted by mail, the Office
would prefer that the comments be submitted on a DOS formatted 3\1/4\
inch disk accompanied by a paper copy.
The comments will be available for public inspection in Suite 520,
of One Crystal Park, 2011 Crystal Drive, Arlington, Virginia, and will
be available through anonymous file transfer protocol (ftp) via the
Internet (address: ftp.uspto.gov). Since 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: Concerning this Interim Rule: Hiram H.
Bernstein or Robert W. Bahr, Senior Legal Advisors, by telephone at
(703) 305-9285, or by mail addressed to: Box
[[Page 5733]]
Comments--Patents, Assistant Commissioner for Patents, Washington, DC
20231, or by facsimile to (703) 308-6916, marked to the attention of
Mr. Bernstein.
Concerning Sec. 1.53 in General: John F. Gonzales, Fred A.
Silverberg, or Robert W. Bahr, Senior Legal Advisors, at the above-
mentioned telephone number.
SUPPLEMENTARY INFORMATION: Section 1.53(d), as amended on December 1,
1997, provides for the filing of a continued prosecution application
(CPA). See Changes to Patent Practice and Procedure; Final Rule, 62 FR
53131 (October 10, 1997), 1203 Off. Gaz. Pat. Office 63 (October 21,
1997) (Final Rule). Section 1.53(d)(1)(i) requires, inter alia, that
the prior application of a CPA under Sec. 1.53(d) had been filed on or
after June 8, 1995. See Final Rule, 62 FR at 53186, 1203 Off. Gaz. Pat.
Office at 112. The rationale for this requirement was:
Permitting the continued prosecution application practice to be
applicable in instances in which the prior application was filed
prior to June 8, 1995, would result in confusion as to whether the
patent issuing from the continued prosecution application is
entitled to the provisions of 35 U.S.C. 154(c). As the continued
prosecution application practice was not in effect prior to June 8,
1995, no patent issuing from a continued prosecution application is
entitled to the provisions of 35 U.S.C. 154(c).
[The] application number of a continued prosecution application
will be the application number of the prior application, and the
filing date indicated on any patent issuing from a continued
prosecution application will be the filing date of the prior
application (or, in a chain of continued prosecution applications,
the filing date of the application immediately preceding the first
continued prosecution application in the chain). Thus, any patent
issuing from a continued prosecution application, where the prior
application was filed prior to June 8, 1995, will indicate that the
filing date of the application for that patent was prior to June 8,
1995, which will confuse the public (and possible [sic] the
patentee) into believing that such patent is entitled to the
provisions of 35 U.S.C. 154(c).
See Final Rule, 62 FR at 53144, 1203 Off. Gaz. Pat. Office at 74
(response to comment 25).
The rules of practice formerly permitted an applicant to obtain
further examination by the filing of a file wrapper continuing (FWC)
application under Sec. 1.62. Effective December 1, 1997, however, FWC
practice under Sec. 1.62 was abolished in favor of CPA practice under
Sec. 1.54(d). See Final Rule, 62 FR at 53147, 1203 Off. Gaz. Pat.
Office at 76-77. As discussed above, Sec. 1.53(d)(1)(i) requires that
the prior application of a CPA be filed on or after June 8, 1995. When
the prior application was filed before June 8, 1995, and an applicant
desires to file what would formerly have been a file wrapper
continuation (or divisional), Sec. 1.53 as adopted requires that such a
continuation (or divisional) application be filed under Sec. 1.53(b).
Section 1.53(b) requires that any application filed thereunder
(including a continuation or divisional) contain a specification
(including at least one claim) and any necessary drawing. While
Sec. 1.53(b) permits the submission of a rewritten specification (with
all prior amendments incorporated), such an option is only practical to
those who have the prior application in electronic form. For those
applicants who do not have the prior application in electronic form,
their only option is to submit a copy of the prior application
(including any appendix) along with a copy of all the amendments made
in the prior application, as well as copies of all other papers filed
in the prior application (e.g., information disclosure statements
(IDS's), affidavits, declarations) that are to be considered in the
continuing application.
Subsequent to the adoption of the change to Sec. 1.53(d), the
Office has received a number of comments indicating that it will take a
considerable amount of time to prepare the papers required by
Sec. 1.53(b), even when copied from a prior application.
In view of these concerns, the Office is amending
Sec. 1.53(d)(1)(i) to eliminate the requirement that the prior
application of a CPA had been filed on or after June 8, 1995. Section
1.53(d)(1)(i) as adopted will require that the prior application of a
CPA be a nonprovisional application that is either: (1) complete as
defined by Sec. 1.51(b); or (2) the national stage of an international
application in compliance with 35 U.S.C. 371.
As noted in the Final Rule (quoted above), no patent issuing from a
CPA under Sec. 1.53(d) is entitled to the provisions of 35 U.S.C.
154(c). To avoid confusion as to the term of any patent issuing on a
CPA of an application filed before June 8, 1995, the Office will
include a notice on any patent issuing on a CPA, other than a reissue
or a design patent, that: (1) the patent issued on a CPA; and (2) the
patent is subject to the twenty-year patent term set forth in 35 U.S.C.
154(a)(2). The term of a design patent is defined in 35 U.S.C. 173 as
fourteen (14) years from the date of grant. The term of a reissue
patent is defined in 35 U.S.C. 251 as the unexpired part of the term of
the original patent. Since the term of any reissue or design patent is
not affected by the filing of a CPA, no notice will be printed on
either a reissue or a design patent.
Interested members of the public are invited to present written
comments on the change to Sec. 1.53(d)(1)(i) contained in this Interim
Rule.
Other Considerations
The Commissioner of Patents and Trademarks, pursuant to authority
at 5 U.S.C. 553(b)(3)(B), finds good cause to adopt the changes made in
this Interim Rule without prior notice and an opportunity for public
comment, as such procedures are contrary to the public interest. Delay
in the promulgation of this rule to provide notice and comment
procedures would cause harm to those applicants who must file a
continuation or divisional application promptly to meet the copendency
requirements of 35 U.S.C. 120 and who would not be permitted to file a
CPA due to the restriction in Sec. 1.53(d)(1)(i). Moreover, immediate
implementation of this rule is in the public interest because those
applicants currently subject to the prohibition will benefit from the
efficiencies and savings resulting from the new rule. See Nat. Customs
Brokers & Forwarders Ass'n v. U.S., 59 F.3d 1219, 1223-24 (Fed. Cir.
1995). Finally, pursuant to authority at 5 U.S.C. 553 (d)(1), this rule
may be made immediately effective because it relieves a restriction.
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553, or any other law, the analytical
requirements of the Regulatory Flexibility Act, 5 U.S.C. 6012 et seq.,
are inapplicable.
This rule involves a collection of information subject to the
Paperwork Reduction Act, 44 U.S.C. ch. 35, previously approved by the
Office of Management and Budget under OMB Control Number 0651-0032.
Notwithstanding any other provision of law, no person is required to
respond 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.
This rule does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 12612 (October 26, 1987).
This rule has been determined to be not significant for purposes of
Executive Order 12866 (September 30, 1993).
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
[[Page 5734]]
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is 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. 6, unless otherwise noted.
2. Section 1.53 is amended by revising paragraph (d)(1)(i) to read
as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(d) * * *
(1) * * *
(i) The prior nonprovisional application is either:
(A) Complete as defined by Sec. 1.51(b); or
(B) The national stage of an international application in
compliance with 35 U.S.C. 371; and
* * * * *
Dated: January 28, 1998.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 98-2732 Filed 2-3-98; 8:45 am]
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