[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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