[Federal Register Volume 65, Number 13 (Thursday, January 20, 2000)]
[Rules and Regulations]
[Pages 3127-3130]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-1359]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 4

[Docket No. 000105007-0007-01]
RIN 0651-AB12


Complaints Regarding Invention Promoters

AGENCY:  Patent and Trademark Office, Commerce.

ACTION:  Interim final rule; request for comments.

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SUMMARY:  The Patent and Trademark Office (Office) has added rules of 
practice to implement the Office's procedures for acceptance of 
complaints under the Inventors' Rights Act of 1999, Pub. L. 106-113, 
section 4001 (to be codified at 35 U.S.C. 297). The Act requires the 
Office to provide a forum for the publication of complaints concerning 
invention promoters. The Office is providing the public with an 
opportunity to comment on the new rules which have been adopted.

DATES:  The interim final rules are effective January 28, 2000; written 
comments must be submitted on or before February 22, 2000.

ADDRESSES:  Address written comments to the attention of Kevin Baer, 
Attorney Advisor, Commissioner of Patents and Trademarks, Box 4, 
Washington, D.C. 20231. In addition, written comments may be sent by 
facsimile transmission to (703) 305-8885 or by electronic mail messages 
over the Internet to kevin.baer uspto.gov. The written comments will be 
available in the Patent and Trademark Office, Public Search Room, room 
1A03, Crystal Plaza 3, Arlington, Virginia 20231, on or about February 
22, 2000.

FOR FURTHER INFORMATION CONTACT:  Kevin Baer, by telephone at (703) 
305-9300, by facsimile at (703) 305-8885, by electronic mail at 
uspto.gov">kevin.baer@uspto.gov, or by mail marked to the attention of Kevin Baer, 
Attorney Advisor, addressed to the Commissioner of Patents and 
Trademarks, Box 4, Washington, D.C. 20231.

SUPPLEMENTARY INFORMATION:  These interim rules implement the Office's 
procedures for handling complaints and replies filed under the 
Inventors' Rights Act of 1999, Pub. L. 106-113, section 4001 (to be 
codified at 35 U.S.C. 297). The Act requires the Office to provide a 
forum for the publication of complaints concerning invention promoters 
and replies from the invention promoters. The Office requests comments 
from any interested members of the public on the following interim 
rules.

Background

    Congress passed the Inventors' Rights Act of 1999 (Act) to protect 
the independent inventor from unscrupulous invention promoters who prey 
on independent inventors. Legitimate invention promoters assist novice 
inventors by providing

[[Page 3128]]

information on how to develop, finance, manufacture, and market their 
inventions. Congress recognized that invention promotion services are 
valuable to independent inventors but also understood that some 
invention promoters were asking for large sums of money up-front 
without providing any real services. 145 Cong. Rec. S14708, S14716 
(daily ed. Nov. 17, 1999) (Statement of Senator Lott introducing 
section-by-section analysis). Included within the Act is a requirement 
that the Office provide a forum for publishing complaints about 
invention promoters and replies from the invention promoters. Under the 
Act the Office has no role in enforcing the Act against invention 
promoters or investigating invention promoters. The Act provides 
customers of invention promoters with certain civil remedies, but 
neither the Office nor the interim rules govern the private legal 
rights of the invention promoter customers.
    The interim final rules explain how the Office will handle 
complaints and replies to the complaints by the invention promoters.

Discussion of Specific Rules

    The rules for implementing this Act will be found in new Part 4, of 
Title 37, Code of Federal Regulations (37 CFR Part 4).

Section 4.1

    Section 4.1 is being added to explain that: (i) these rules govern 
the Office's responsibility under the Inventors' Rights Act of 1999; 
(ii) the Office will not undertake any investigation of the invention 
promoter; and (iii) any civil remedies must be pursued by the injured 
party.

Section 4.2

    Section 4.2 is being added to include the definitions set out in 
the Act.

Section 4.3

    Section 4.3 is being added to explain that the Office will accept 
complaints about invention promoters. Anyone submitting a complaint 
should understand that the complaint may be forwarded to the invention 
promoter about which the complaint is made and that the complaint will 
likely be publicly available. The Act requires the Office to forward 
copies of the complaint to the invention promoter so that the invention 
promoter may respond. The Office will not accept any complaints under 
this system that request that the complaint be kept confidential. The 
Act requires the Office to make complaints publicly available. 
Likewise, any reply from the invention promoter will be made publicly 
available.
    In order for the Office to identify a submission as a complaint 
under this Act, the complaint must be clearly marked or otherwise 
indicate that it is a complaint filed under these rules or under the 
Act. General letters of complaint sent to the Office will not be 
treated under this complaint publication program.
    The complaint should fairly and impartially summarize the 
complaint. The purpose of the Act is to provide complainants with a 
forum for publicly making a complaint against an invention promoter. As 
with all submissions to the Office, persons should conduct themselves 
with decorum and courtesy. See 37 CFR 1.3. Submissions that do not 
provide the requested information will be returned. If a complainant's 
address is not provided, the submission will be destroyed. A complaint 
can be withdrawn by the complainant or named customer at any time prior 
to its publication.
    The Office is developing a form for the convenience of persons 
wishing to make a complaint. At a minimum, a complaint under these 
rules must provide: (1) the identity of the person making the 
complaint; (2) an address of the person complaining; (3) the name and 
address of the invention promoter; (4) the name of the customer of the 
invention promoter; (5) an explanation of the invention promotion 
services offered or performed; (6) the name of the mass media used to 
advertise the invention promoter's services; (7) an explanation of the 
relationship between the customer and the invention promotion services; 
and (8) a signature of the complainant.
    Complaints should be submitted to the Office of Independent 
Inventor Programs, U.S. Patent and Trademark Office, Washington, D.C. 
20231. No originals of documents should be included with the complaint.

Section 4.4(a)

    Section 4.4(a) is being added to explain that the Office will 
forward complaints to the invention promoter named in the complaint. 
The invention promoter will be given 30 days to respond to the 
complaint. The complaint and the invention promoter's reply, if any, 
will be made publicly available. The Office may return the 
complainant's submission for clarification if the Office is unable to 
determine whether a submission is intended to be a complaint under 
these rules. The Office may also return the submission if it fails to 
include any necessary information. Similarly, the Office may return 
multiple submissions concerning the same subject matter.

Section 4.4(b)

    Section 4.4(b) is being added to explain that the Office will 
accept responses from invention promoters. The party responding must 
identify the submission as a response to a particular complaint, 
identify the individual signing the response, and provide that 
individual's title or authority for signing the response.
    The Office intends to forward copies of the complaints to the 
invention promoter using regular first class U.S. mail. In the event 
the mailing is returned, section 4.5 will apply. In the absence of mail 
being returned undeliverable, the Office will presume that the 
invention promoter received the mailing. In the unlikely event the 
invention promoter does not receive the mailing and the mailing is not 
returned as undeliverable, then publication of the complaint provides 
the invention promoter with adequate notice that a complaint has been 
filed. A reply that is submitted after the complaint is made public 
will also be made available to the public.

Section 4.5

    Section 4.5 is being added to explain how the Office will handle 
situations where the copy of the complaint that is mailed to the 
invention promoter is returned undelivered. If this occurs, the Office 
will publish a notice alerting the invention promoter that a complaint 
has been filed. The notice will be published in the Official Gazette, 
in the Federal Register, or on the Office's Internet home page at 
www.uspto.gov. The invention promoter will have 30 days after 
publication of the notice to submit a response to the complaint. If the 
invention promoter does not submit a response to the complaint within 
30 days, then the complaint will be made public.

Section 4.6

    Section 4.6 is being added to clarify that routine complaints about 
registered attorneys or agents will not be treated under these rules. 
The Office may return a submission involving a registered attorney or 
agent to seek clarification as to whether or not the attorney or agent 
was involved with the invention promotion services. The Office does not 
plan on publishing complaints against registered attorneys or agents 
unless the complainant can fairly demonstrate that the attorney or 
agent is involved with invention promotion services. However, attorneys 
or agents who work with

[[Page 3129]]

invention promoters should realize that such work may cause their name 
or affiliation to be publicly disclosed in a complaint. In addition, 
the Office may forward any submission concerning a registered attorney 
or agent to the Office of Enrollment and Discipline.
    All submissions to the Office under this Part are subject to the 
criminal penalties under 18 U.S.C. 1001 for false statements.

Classification

Administrative Procedure Act

    This interim final rule sets forth the Office procedures to make 
complaints involving invention promoters publicly available, together 
with any response of the invention promoters as required by the 
Inventors' Rights Act of 1999, Pub. L. No. 106-113, section 4001. 
Therefore, prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553(b)(3)(A), or any other law.

Regulatory Flexibility Act

    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553(b)(3)(A), or any other law, the 
analytical requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 
et seq., are inapplicable.

Executive Order 13132

    This interim final rule does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132.

Executive Order 12866

    This interim final rule has been determined to be not significant 
for purposes of Executive Order 12866.

Paperwork Reduction Act

    This interim final rule contains a collection of information 
requirement that is subject to review by the Office of Management and 
Budget (OMB) under the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 
3501 et seq.). This rule provides procedures for persons desiring to 
voluntarily submit complaints to the Office concerning invention 
promoters so that the Office is able to: (1) Forward the complaint to 
the invention promoter for a response; and (2) publish the complaint. 
An information collection package supporting this new rule will be 
submitted to OMB for review and approval. The public reporting burden 
for this collection of information is estimated to average 15 minutes 
per response, including the time for reviewing instructions, searching 
existing data sources, gathering and maintaining the data needed, and 
completing and reviewing the collection of information.
    Comments are invited on: (a) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (b) 
the accuracy of the agency's estimate of the burden; (c) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (d) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding the 
burden estimate or any other aspects of the information requirements, 
including suggestions for reducing the burden, to Kevin Baer, Attorney 
Advisor, Box 4, Patent and Trademark Office, Washington, D.C. 20231, or 
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 PRA, unless that collection of information displays a currently 
valid OMB control number.

List of Subjects in 37 CFR Part 4

    Administrative practice and procedure, Inventions and patents

    For the reasons set forth in the preamble and pursuant to the 
authority contained in 35 U.S.C. 6 and 297, title 37 of the Code of 
Federal Regulations is amended by adding part 4 to read as follows:
    1. Part 4 is added to read as follows:

PART 4--COMPLAINTS REGARDING INVENTION PROMOTERS

Sec.
4.1  Complaints Regarding Invention Promoters.
4.2  Definitions
4.3  Submitting Complaints
4.4  Invention Promoter Reply
4.5  Notice by Publication
4.6  Attorneys and Agents

    Authority:  35 U.S.C. 6 and 297.


Sec. 4.1  Complaints Regarding Invention Promoters

    These regulations govern the Patent and Trademark Office's (Office) 
responsibilities under the Inventors' Rights Act of 1999, which can be 
found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to 
provide a forum for the publication of complaints concerning invention 
promoters. The Office will not conduct any independent investigation of 
the invention promoter. Although the Act provides additional civil 
remedies for persons injured by invention promoters, those remedies 
must be pursued by the injured party without the involvement of the 
Office.


Sec. 4.2  Definitions

    (a) Invention Promoter means any person, firm, partnership, 
corporation, or other entity who offers to perform or performs 
invention promotion services for, or on behalf of, a customer, and who 
holds itself out through advertising in any mass media as providing 
such services, but does not include--
    (1) Any department or agency of the Federal Government or of a 
State or local government;
    (2) Any nonprofit, charitable, scientific, or educational 
organization qualified under applicable State law or described under 
section 170(b)(1)(A) of the Internal Revenue Code of 1986;
    (3) Any person or entity involved in the evaluation to determine 
commercial potential of, or offering to license or sell, a utility 
patent or a previously filed nonprovisional utility patent application;
    (4) Any party participating in a transaction involving the sale of 
the stock or assets of a business; or
    (5) Any party who directly engages in the business of retail sales 
of products or the distribution of products.
    (b) Customer means any individual who enters into a contract with 
an invention promoter for invention promotion services.
    (c) Contract for Invention Promotion Services means a contract by 
which an invention promoter undertakes invention promotion services for 
a customer.
    (d) Invention Promotion Services means the procurement or attempted 
procurement for a customer of a firm, corporation, or other entity to 
develop and market products or services that include the invention of 
the customer.


Sec. 4.3  Submitting Complaints

    (a) A person may submit a complaint concerning an invention 
promoter with the Office. A person submitting a complaint should 
understand that the complaint may be forwarded to the invention 
promoter and may become publicly available. The Office will not accept 
any complaint that requests that it be kept confidential.
    (b) A complaint must be clearly marked, or otherwise identified, as 
a complaint under these rules. The complaint must include:
    (1) The name and address of the complainant;
    (2) The name and address of the invention promoter;

[[Page 3130]]

    (3) The name of the customer;
    (4) The invention promotion services offered or performed by the 
invention promoter;
    (5) The name of the mass media in which the invention promoter 
advertised providing such services;
    (6) An explanation of the relationship between the customer and the 
invention promoter; and
    (7) A signature of the complainant.
    (c) The complaint should fairly summarize the action of the 
invention promoter about which the person complains. Additionally, the 
complaint should include names and addresses of persons believed to be 
associated with the invention promoter. Complaints, and any replies, 
must be addressed to Office of Independent Inventor Programs, U.S. 
Patent and Trademark Office, Washington, D.C. 20231.
    (d) Complaints that do not provide the information requested in 
paragraphs (b) and (c) of this section will be returned. If 
complainant's address is not provided, the complaint will be destroyed.
    (e) No originals of documents should be included with the 
complaint.
    (f) A complaint can be withdrawn by the complainant or the named 
customer at any time prior to its publication.


Sec. 4.4  Invention Promoter Reply

    (a) If a submission appears to meet the requirements of a 
complaint, the invention promoter named in the complaint will be 
notified of the complaint and given 30 days to respond. The invention 
promoter's response will be made available to the public along with the 
complaint. If the invention promoter fails to reply within the 30-day 
time period set by the Office, the complaint will be made available to 
the public. Replies sent after the complaint is made available to the 
public will also be published.
    (b) A response must be clearly marked, or otherwise identified, as 
a response by an invention promoter. The response must contain:
    (1) The name and address of the invention promoter;
    (2) A reference to a complaint forwarded to the invention promoter 
or a complaint previously published;
    (3) The name of the individual signing the response; and
    (4) The title or authority of the individual signing the response.


Sec. 4.5  Notice by Publication

    If the copy of the complaint that is mailed to the invention 
promoter is returned undelivered, then the Office will publish a Notice 
of Complaint Received in the Official Gazette, the Federal Register, or 
on the Office's Internet home page. The invention promoter will be 
given 30 days from such notice to submit a reply to the complaint. If 
the Office does not receive a reply from the invention promoter within 
30 days, the complaint alone will become publicly available.


Sec. 4.6  Attorneys and Agents

    Complaints against registered patent attorneys and agents will not 
be treated under this section, unless a complaint fairly demonstrates 
that invention promotion services are involved. Persons having 
complaints about registered patent attorneys or agents should contact 
the Office of Enrollment and Discipline at the U.S. Patent and 
Trademark Office, Box OED, Washington, D.C. 20231, and the attorney 
discipline section of the attorney's state licensing bar if an attorney 
is involved.

    Dated: January 13, 2000.
Q. Todd Dickinson,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 00-1359 Filed 1-19-00; 8:45 am]
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