[Federal Register Volume 65, Number 132 (Monday, July 10, 2000)]
[Proposed Rules]
[Pages 42309-42312]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-17182]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB19


Treatment of Unlocatable Application and Patent Files

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office is proposing to 
amend the rules of practice to provide for the replacement of 
application and patent files that cannot be located after a reasonable 
search. This change is designed to expedite the process of application 
and patent file reconstruction to minimize the processing or 
examination delays resulting when the Office cannot locate an 
application or patent file after a reasonable search.

DATES: Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before August 9, 2000. No public 
hearing will be held.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments may 
also be submitted by mail addressed to: Box Comments--Patents, 
Commissioner for Patents, Washington, DC 20231; or by facsimile to 
(703) 872-9411, marked to the attention of Robert W. Bahr. Although 
comments may be submitted by mail or facsimile, the Office prefers to 
receive comments via the Internet. If comments are submitted by mail, 
the Office would prefer that the comments be submitted on a DOS 
formatted 3\1/2\ inch disk accompanied by a paper copy.
    The comments will be available for public inspection at the Office 
of Patent

[[Page 42310]]

Legal Administration in the Office of the Deputy Commissioner for 
Patent Examination Policy, Room 3-C23 of Crystal Plaza 4, 2201 South 
Clark Place, Arlington, Virginia, and will be available through 
anonymous file transfer protocol (ftp) via the Internet (address: 
http://www.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: Robert W. Bahr by telephone at (703) 
308-6906, or by mail addressed to: Box Comments--Patents, Commissioner 
for Patents, Washington, DC 20231, or by facsimile to (703) 872-9411, 
marked to the attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: Over 330,000 patent applications 
(provisional and nonprovisional) were filed in the United States Patent 
and Trademark Office (Office) in fiscal year 1999. On occasion, an 
application or patent file cannot be located.
    When an application or patent file cannot be located after a 
reasonable search and the application or patent file is necessary to 
conduct business before the Office, the Office will ``reconstruct'' the 
application or patent file. This involves placing a duplicate of the 
original application papers and duplicates of all of the correspondence 
between the Office and applicant or patentee in a new file wrapper. The 
Office currently (since the spring of 1997) uses its Patent Application 
Capture and Review (PACR) system to image scan the application papers 
submitted on the filing date of the application (except for any 
appendix or information disclosure statement) and to create an 
electronic database (PACR database) containing the Office's archival 
record of the original application papers (application papers were 
microfilmed prior to the spring of 1997). Thus, the Office can obtain a 
copy of the original application papers from its archival PACR database 
(or microfilm records). The Office, however, does not possess a 
duplicate copy of subsequent correspondence from the applicant or 
patentee (e.g., applicant replies or other papers) concerning the 
application or patent. While the Office may have a copy of some Office 
correspondence (Office actions saved on a disc or computer hard drive), 
the Office often does not possess a complete copy of the Office 
correspondence concerning the application or patent (e.g., paper-based 
forms or notices). Thus, to accurately reconstruct a file, the Office 
must request that the applicant or patentee either provide a complete 
copy of his or her record of the correspondence between the Office and 
the applicant or patentee, or produce his or her record of the 
correspondence between the Office and the applicant or patentee for the 
Office to copy.
    In a pending application, the request that applicant provide a copy 
of (or produce) his or her record of the correspondence between the 
Office and the applicant does not, under current practice, require a 
reply within any set time period. This adds to the delay in processing 
and examination resulting from the inability to locate the application. 
To expedite the process of reconstructing the file of an application or 
patent file, the Office is proposing to amend the rules of practice to 
provide that the Office will now set a time period within which 
applicant or patentee must either provide a complete copy of his or her 
record of the correspondence between the Office and the applicant or 
patentee, or produce his or her record of the correspondence between 
the Office and the applicant or patentee for the Office to copy. Since 
it is axiomatic that the Office cannot continue to examine an 
application that it does not have a complete copy of, the failure to 
timely provide a copy of (or produce) his or her record of the 
correspondence between the Office and the applicant in a pending 
application will result in abandonment of the application.
    Corresponding with an applicant or patentee in an abandoned 
application or patent is often difficult because address information is 
often not kept up-to-date in abandoned applications and patents. There 
are many good reasons for keeping correspondence information up-to-date 
in an abandoned application or patent. Some examples follow: Patent 
applicants and patent owners should keep the correspondence address and 
any fee address for the patent up-to-date to ensure that correspondence 
is mailed to applicant's or patentee's current address. In an abandoned 
application, the Office may attempt to communicate with applicant 
regarding a petition for access. If the address has not been updated, 
then the Office may not be able to consider applicant's views in 
deciding whether to release the application to a member of the public. 
The Customer Number Practice described in section 403 of the Manual of 
Patent Examining Procedure (7th ed. 1998) (Rev. 1, Feb. 2000)(MPEP) 
provides a procedure where a patent applicant or owner can easily 
change the correspondence address for a number of patents or patent 
applications. In addition, the ``Fee Address'' Indication Form (PTO/SB/
47) (reproduced at MPEP 2595) enables a patent owner to complete one 
form to designate a single fee address for any number of patents or 
applications in which the issue fee has been paid.
    When changing the address(es) associated with a patent, the patent 
owner should bear in mind that the Office has a number of addresses 
related to the patent: (1) An application correspondence address; (2) 
the return address for the assignment documents; and (3) the fee 
address for maintenance fee purposes. See MPEP 2540. The correspondence 
address is generally the address to which the patent application 
prosecution was sent and is often not up-to-date within a few years of 
patent issuance. As a result, the regulations related to reexamination 
proceedings require that a patent owner be served with a copy of a 
Reexamination Request at the Office of Enrollment and Discipline 
address for the attorney or agent of record, if there is an attorney or 
agent of record. See MPEP 2220. If there is no attorney or agent of 
record, the copy is required to be served upon the patent owner. See 
Sec. 1.33(c). In the procedure to obtain a copy of a patent file set 
forth in this notice, the request will be directed to the 
correspondence address.
    The Office is planning for full electronic submission of 
applications and related documents by fiscal year 2003. Once the Office 
is able to transition to a total Electronic File Wrapper environment, 
the inability to locate a paper application file (and the consequent 
need for the Office to obtain a copy of applicant's or patentee's 
record of the correspondence between the Office and the applicant or 
patentee) should no longer be a significant issue. However, this rule 
change is necessary to provide for the replacement of unlocatable 
application and patent files until the Office has completely 
transitioned to a total Electronic File Wrapper environment.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1 is proposed to 
be amended as follows:
    Section 1.251 is proposed to be added to set forth a procedure for 
the reconstruction of the file of a patent application, patent, or 
other patent-related proceeding that cannot be located after a 
reasonable search.
    Section 1.251(a) provides that in the event the Office cannot 
locate the file of an application, patent, or other patent-related 
proceeding after a reasonable search, the Office will notify the

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applicant or patentee and set a time period within which the applicant 
or patentee must comply with Sec. 1.251(b). The phrase ``an 
application'' applies to any type of application (national or 
international), and regardless of the status (pending or abandoned) of 
the application.
    Section 1.251(b) provides that if an applicant or patentee has been 
given notice under Sec. 1.251(a) that the Office cannot locate the file 
of a patent, application, or other patent-related proceeding after a 
reasonable search, applicant or patentee must do one of the following 
within the time period set in the notice: (1) Provide a copy of his or 
her record of all of the correspondence between the Office and the 
applicant or patentee for such application, patent, or other 
proceeding, a list of such correspondence, and a statement that the 
copy is a complete and accurate copy of the correspondence between the 
Office and the applicant or patentee for such application, patent, or 
other proceeding; or (2) produce his or her record of all of the 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding for the Office to copy, 
and provide a statement that the papers are a complete and accurate 
record of the correspondence between the Office and the applicant or 
patentee for such application, patent, or other proceeding. Any 
appendix or information disclosure statement submitted with an 
application is not contained in the Office's archival PACR database; 
therefore, the applicant or patentee must also provide a copy of any 
appendix or information disclosure statement submitted with the 
application.
    Section 1.251(b) also provides for the situation in which an 
applicant or patentee does not possess a complete copy of the 
correspondence between the Office and the applicant or patentee. In 
such a situation, the applicant or patentee must provide: (1) A copy of 
his or her record (if any) of the correspondence between the Office and 
the applicant or patentee for such application, patent, or other 
proceeding; (2) a list of such correspondence; and (3) a statement that 
applicant or patentee does not possess a complete copy of the 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding and that the copy is a 
complete and accurate copy of his or her record of the correspondence 
between the Office and the applicant or patentee for such application, 
patent, or other proceeding.
    Thus, if the applicant or patentee possesses some (but not all) of 
the correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding, the applicant or 
patentee is to reply by providing a copy of all the correspondence 
contained in applicant's or patentee's records. If applicant or 
patentee does not possess any record of the correspondence between the 
Office and the applicant or patentee for such application, patent, or 
other proceeding, the applicant or patentee is to reply with a 
statement to that effect.
    Section 1.251(c) provides that with regard to a pending 
application, the failure to provide a timely reply to such a notice 
will result in abandonment of the application.

Classification

Regulatory Flexibility Act

    As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), an initial 
regulatory flexibility analysis under the Regulatory Flexibility Act (5 
U.S.C. 601 et seq.) is not required. See 5 U.S.C. 603.

Executive Order 13132

    This notice does not contain policies with federalism implications 
sufficient to warrant preparation of a Federalism Assessment under 
Executive Order 13132 (August 4, 1999).

Executive Order 12866

    This notice has been determined to be not significant for purposes 
of Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

    This notice involves 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 
collection of information involved in this notice has been submitted 
for approval by OMB under control number 0651-0031. The United States 
Patent and Trademark Office is resubmitting this information collection 
package to OMB for its review and approval because the changes in this 
notice affect the information collection requirements associated with 
that information collection package.
    The title, description, and respondent description of this 
information collection is shown below with an estimate of the annual 
reporting burdens. Included in the estimate is the time for reviewing 
instructions, gathering and maintaining the data needed, and completing 
and reviewing the collection of information. The principal impact of 
the changes in this notice is to set forth the procedures for obtaining 
a copy of applicant's or patentee's record of the correspondence 
between the Office and the applicant or patentee for an application, 
patent, or other proceeding when necessary to reconstruct the file of 
such application, patent, or other proceeding.
    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08/21-27/31/42/43/61/62/63/64/67/68/91/92/96/
97.
    Type of Review: Approved through October of 2002.
    Affected Public: Individuals or Households, business or other for-
profit institutions, not-for-profit institutions and Federal 
Government.
    Estimated Number of Respondents: 2,231,365.
    Estimated Time Per Response: 0.46 hours.
    Estimated Total Annual Burden Hours: 1,018,736 hours.
    Needs and Uses: During the processing for an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the United States Patent and Trademark Office 
concerning the examination of a specific application. The specific 
information required or which may be submitted includes: Information 
Disclosure Statements; Terminal Disclaimers; Petitions to Revive; 
Express Abandonments; Appeal Notices; Petitions for Access; Powers to 
Inspect; Certificates of Mailing or Transmission; Statements under 
Sec. 3.73(b); Amendments, Petitions and their Transmittal Letters; and 
Deposit Account Order Forms.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, United States 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: Desk Officer 
for the United States Patent and Trademark Office).
    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

[[Page 42312]]

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 record keeping 
requirements, Small Businesses.

    For the reasons set forth in the preamble, 37 CFR part 1 is 
proposed to be 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. 2(b)(2).

    2. Section 1.251 is added immediately following Sec. 1.248 to read 
as follows:


Sec. 1.251  Unlocatable file.

    (a) In the event that the Office cannot locate the file of an 
application, patent, or other patent-related proceeding after a 
reasonable search, the Office will notify the applicant or patentee and 
set a time period within which the applicant or patentee must comply 
with one of paragraphs (b)(1), (b)(2), or (b)(3) of this section.
    (b) If an applicant or patentee has been given notice under 
paragraph (a) of this section that the Office cannot locate the file of 
a patent, application, or other patent-related proceeding after a 
reasonable search, applicant or patentee must do one of the following 
within the time period set in the notice:
    (1) Provide a copy of the applicant's or patentee's record of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding, a list of such 
correspondence, and a statement that the copy is a complete and 
accurate copy of the correspondence between the Office and the 
applicant or patentee for such application, patent, or other 
proceeding;
    (2) Produce the applicant's or patentee's record of all of the 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding for the Office to copy, 
and provide a statement that the copy is a complete and accurate copy 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding; or
    (3) If applicant or patentee does not possess a complete copy of 
the correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding, provide a copy of the 
applicant's or patentee's record (if any) of the correspondence between 
the Office and the applicant or patentee for such application, patent, 
or other proceeding, a list of such correspondence, and a statement 
that applicant or patentee does not possess a complete copy of the 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding and that the copy 
provided is a complete and accurate copy of applicant's or patentee's 
record of the correspondence between the Office and the applicant or 
patentee for such application, patent, or other proceeding.
    (c) With regard to a pending application, failure to timely comply 
with one of paragraphs (b)(1), (b)(2), or (b)(3) of this section will 
result in abandonment of the application.

    Dated: June 30, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-17182 Filed 7-7-00; 8:45 am]
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