[Federal Register Volume 63, Number 230 (Tuesday, December 1, 1998)]
[Rules and Regulations]
[Pages 66040-66041]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-31952]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 980511124-8284-02]


Revision of Patent Cooperation Treaty Application Procedure

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (Office or USPTO) is 
confirming the amendment of its rules of practice relating to 
applications filed under the Patent Cooperation Treaty (PCT). This 
amendment of the rules of practice conformed the United States rules of 
practice with the corresponding changes to the Regulations under the 
PCT which became effective July 1, 1998.

DATES: This final rule is effective on December 1, 1998. The interim 
rule, published at 63 FR 29614 (June 1, 1998), was effective on July 1, 
1998.

FOR FURTHER INFORMATION CONTACT: Richard Lazarus, PCT Legal Office 
Supervisor, by telephone at (703) 308-6451; or by mail addressed to: 
Box PCT, Assistant Commissioner for Patents, Washington, DC 20231; or 
by facsimile to (703) 308-6459, marked to the attention of Richard 
Lazarus.

SUPPLEMENTARY INFORMATION: During a September-October 1997 meeting of 
the Governing Bodies of the World Intellectual Property Organization 
(WIPO), the PCT Assembly adopted amendments to the PCT Regulations. 
These amendments to the PCT Regulations took effect on July 1, 1998, 
and the amended PCT Regulations were published in the Official Gazette 
at 1210 Off. Gaz. Pat. Office 29 (May 12, 1998). An interim rule 
conforming the United States rules of practice to the corresponding 
changes in the PCT Regulations was published in the Federal Register at 
63 FR 29614 (June 1, 1998), and in the Official Gazette at 1211 Off. 
Gaz. Pat. Office 76 (June 23, 1998).
    The Office has received no comments on the changes to 37 CFR 
contained in the interim rule. Accordingly, the changes to 37 CFR 
contained in the

[[Page 66041]]

above-mentioned interim rule are adopted as final in this final rule.
    Applicants are again notified that PCT Rules 20.4(c) and 26.3ter 
(a) and (c) as amended are not compatible with the national law of the 
United States, and thus the USPTO has taken a reservation on adherence 
to these Rules through its notification to the Director General of WIPO 
to such effect. See PCT Rules 20.4(d) and 26.3ter (b) and (d). 
Similarly, the USPTO continues not to adhere to the unchanged 
provisions of PCT Rule 49.5(cbis) and (k) with respect to the 
translation requirements for United States national stage applications 
(35 U.S.C. 371(c)(2)). See PCT Rule 49.5(l).
    The above-noted changes to the PCT Regulations include the addition 
of new PCT Rules 89bis and 89ter (directed to electronic filing and 
processing of international applications) which will enter into force 
at the same time as the modifications to the Administrative 
Instructions implementing those PCT Rules. Implementation of PCT Rules 
89bis and 89ter is optional with each national office. In the event 
that the USPTO decides to implement PCT Rules 89bis and 89ter, the 
USPTO will provide notice to that effect in the Federal Register and 
Official Gazette.

Discussion of Specific Rules

    A section-by-section discussion of the changes to title 37 of the 
Code of Federal Regulations adopted as final in this final rule is set 
forth in the above-mentioned interim rule at 63 FR 29614-17, and 1211 
Off. Gaz. Pat. Office 77-78.

Other Considerations

    The United States rules of practice contained in title 37, CFR, 
must conform to the PCT Articles and the Regulations annexed to the 
PCT. See PCT Article 27(1). This final rule adopts as final changes 
required to conform the United States rules of practice for 
international applications to the amendments to the PCT Regulations 
which became effective on July 1, 1998. Thus, this final rule is 
covered by the foreign affairs function exception of 5 U.S.C. 
553(a)(1), and may be adopted without prior notice and opportunity for 
public comment. See International Brotherhood of Teamsters v. Pena, 17 
F.3d 1478, 1486 (D.C. Cir. 1994).
    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. 601 et seq., 
are inapplicable. This final rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 12612 (October 26, 1987). 
This final rule has been determined not to be significant for purposes 
of Executive Order 12866 (September 30, 1993).
    This final rule contains information collection requirements which 
are subject to review by the Office of Management and Budget (OMB) 
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The 
principal impact of this final rule is to adopt as final changes that 
conform the United States rules of practice relating to applications 
filed under the PCT to the corresponding amendments made to the 
Regulations under the PCT.
    The general purpose of the PCT is to provide a single set of 
standards and procedures for the filing of patent applications on the 
same invention in any of the over ninety PCT member countries. The PCT 
provides a common filing procedure and a standardized application 
format for international applications.
    The collection of information in this final rule has been reviewed 
and approved by OMB under control number 0651-0021. The public 
reporting burden for this collection of information is estimated to 
average 0.95 hours per response, including the time for reviewing 
instructions, searching existing data sources, gathering and 
maintaining the information. Send comments regarding this burden 
estimate or any other aspect of the data requirement, including 
suggestions for reducing the burden to Richard Lazarus at the address 
specified above and to the Office of Information and Regulatory 
Affairs, OMB, 725 17th Street, N.W., Washington, D.C., 20503 (Attn: PTO 
Desk Officer).
    Notwithstanding any other provision of law, no person is required 
to respond to 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.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.
    For the reasons set forth in the preamble, the interim rule 
amending 37 CFR Part 1 which was published at 63 FR 29614-29620 on June 
1, 1998, is adopted as a final rule without change.

    Dated: November 23, 1998.
Q. Todd Dickinson,
Deputy Assistant Secretary of Commerce and Deputy Commissioner of 
Patents and Trademarks.
[FR Doc. 98-31952 Filed 11-30-98; 8:45 am]
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