[Federal Register Volume 65, Number 223 (Friday, November 17, 2000)]
[Rules and Regulations]
[Pages 69446-69451]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-29411]



[[Page 69446]]

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB19


Treatment of Unlocatable Patent Application and Patent Files

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office is amending the 
rules of practice to provide for the replacement of patent 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.

EFFECTIVE DATE: November 17, 2000.

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 a patent 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 copy of 
the original application papers and 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 a duplicate 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 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 reconstruct a file accurately, 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.
    Formerly, the request that applicant provide a copy of (or produce) 
his or her record of the correspondence between the Office and the 
applicant did not require a reply within any set time period. In a 
pending application, this added to the delay in processing and 
examination resulting from the inability to locate the application 
file. To expedite the process of reconstructing the file of an 
application or patent file, the Office is amending 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 the Office cannot continue to examine an 
application for which it does not have a complete copy, the failure to 
provide a copy of (or produce) his or her record of the correspondence 
between the Office and the applicant in a pending application within 
this time period will result in abandonment of the application. See 35 
U.S.C. 133 (failure to prosecute an application in a timely manner 
``after any action therein'' shall be regarded as abandonment of the 
application).
    Corresponding with an applicant or patentee when an application is 
abandoned or patented is often difficult because address information is 
often not current. There are many good reasons for keeping 
correspondence information current in an abandoned application or 
patent. Patent applicants and patent owners should keep the 
correspondence address and any fee address current for the patent 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 
(MPEP) (7th ed. 1998) (Rev. 1, Feb. 2000) 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 the address to which Office actions and notices are mailed 
during the patent application process and is often not current 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 37 CFR 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 
transitions to a total Electronic File Wrapper environment, the 
inability to locate a paper application file 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 amended as 
follows:

[[Page 69447]]

    Section 1.251 is added to set forth a procedure for the 
reconstruction of the file of a patent application, patent, or any 
other patent-related proceeding that cannot be located after a 
reasonable search. 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(a) provides that in the event the Office cannot 
locate the file of an application, patent, or any 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 the notice. The applicant or patentee may 
comply with a notice under Sec. 1.251 by providing: (1) A copy of his 
or her record (if any) of all of the correspondence between the Office 
and the applicant or patentee for such application, patent, or other 
proceeding (except for U.S. patent documents); (2) a list of such 
correspondence; and (3) a statement that the copy is a complete and 
accurate 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 (except for U.S. patent 
documents), and whether applicant or patentee is aware of any 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding that is not among 
applicant's or patentee's records (Sec. 1.251(a)(1)). The applicant or 
patentee may also comply with a notice under Sec. 1.251 by: (1) 
Producing his or her record (if any) 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 (except for U.S. 
patent documents); and (2) providing a statement that the papers 
produced by applicant or patentee are applicant's or patentee's 
complete record of all of the correspondence between the Office and the 
applicant or patentee for such application, patent, or other proceeding 
(except for U.S. patent documents), and whether applicant or patentee 
is aware of any correspondence between the Office and the applicant or 
patentee for such application, patent, or other proceeding that is not 
among applicant's or patentee's records (Sec. 1.251(a)(2)). 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 must comply with 
a notice under Sec. 1.251 by providing a statement that 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 (Sec. 1.251(a)(3)).
    According to Sec. 1.251(a), if the applicant or patentee possesses 
all or just some 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 (or producing) his or her record of all of the correspondence 
between the Office and the applicant or patentee for such application, 
patent, or other proceeding (Secs. 1.251(a)(1) or (a)(2)). 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 (Sec. 1.251(a)(3)).
    Any appendix or information disclosure statement submitted with an 
application is not contained in the Office's PACR database. Therefore, 
the applicant or patentee must also provide a copy of any appendix or 
information disclosure statement (except in the limited circumstance 
discussed below) submitted with the application. Since the Office can 
obtain copies of U.S. patent documents (U.S. patent application 
publications and patents) from its internal databases, the Office is 
not requiring applicants or patentees to provide copies of U.S. patent 
application publications and patents that are among the applicant's or 
patentee's record of the correspondence between the Office and the 
applicant or patentee for the application, patent, or other proceeding.
    Section 1.251(b) provides that with regard to a pending 
application, the failure to provide a reply to such a notice within the 
time period set in the notice will result in abandonment of the 
application.

Response to Comments

    The Office published a notice proposing changes to the rules of 
practice to provide for the replacement of application and patent files 
that cannot be located after a reasonable search. See Treatment of 
Unlocatable Application and Patent Files, Notice of Proposed 
Rulemaking, 65 FR 42309 (July 10, 2000), 1237 Off. Gaz. Pat. Office 28 
(Aug. 1, 2000) (notice of proposed rulemaking). The Office received 
eleven written comments (from intellectual property organizations, 
patent practitioners, and the general public) in response to the notice 
of proposed rulemaking. Comments generally in support of the change are 
not discussed. The comments and the Office's responses to the remaining 
comments follow:
    Comment 1: Several comments inquired as to how long an applicant or 
patentee will be given to provide a copy of the file in reply to a 
notice under Sec. 1.251. The comments suggested that: (1) Applicants be 
given a minimum period of three months to reply to a notice under 
Sec. 1.251; (2) this period for reply be set forth in Sec. 1.251 
(rather than merely set forth in the MPEP or left completely up to the 
discretion of Office officials); and (3) this period for reply be 
extendable under Sec. 1.136(a). One comment also suggested that 
patentees be given at least five months to reply to a notice under 
Sec. 1.251.
    Response: The Office will set a time period of three months for 
reply in a notice under Sec. 1.251 in an application. The time period 
will be extendable under Sec. 1.136(a) (unless the notice indicates 
otherwise) by three months up to a maximum period for reply of six 
months in an application. See 35 U.S.C. 133.
    The Office will set a time period of six months for reply in a 
notice under Sec. 1.251 in a patent. The time period will not be 
extendable under Sec. 1.136(a) in a patent because 35 U.S.C. 41(a)(8) 
only authorizes the Office to charge fees for extensions of time in 
proceedings involving an application. See MPEP 2265.
    Section 1.251 will not include these time periods. These time 
periods, however, will be included in the MPEP and not left to the 
complete discretion of various Office officials.
    Comment 2: One comment suggested that there should be no reduction 
in patent term adjustment for the entire delay for the initial search 
and for compliance with a notice under Sec. 1.251. Another comment 
suggested that for purposes of patent term adjustment, all of the time 
taken to reconstruct the file ``should be charged against the Office.''
    Response: Patent term and patent term adjustment are provided for 
by statute. See 35 U.S.C. 154(a)(2) and (b) and 173. The inability to 
locate an application file in and of itself does not give rise to 
patent term adjustment under 35 U.S.C. 154(b). Rather, patent term 
adjustment is an issue only if the inability to locate the application 
file causes the Office to miss one of the time frames specified in 35 
U.S.C. 154(b)(1)(A) or (B), or prolongs the duration of one of the 
proceedings specified in 35 U.S.C. 154(b)(1)(C). In addition, if an 
applicant fails to reply to a notice under Sec. 1.251 within three

[[Page 69448]]

months of its mailing date, any patent term adjustment under 35 U.S.C. 
154(b) will be reduced by a period equal to the number of days (if any) 
beginning on the day after the date that is three months after the 
mailing date of the notice under Sec. 1.251 and ending on the date the 
reply to the notice under Sec. 1.251 was filed. See 35 U.S.C. 
154(b)(2)(C)(ii) and Sec. 1.704(b).
    Comment 3: Several comments inquired as to what steps are taken to 
search for a file before it is determined to be unlocatable (i.e., 
inquired as to what is a reasonable search). One comment expressed 
concern that the procedure in Sec. 1.251 not be used as a substitute 
for a reasonable search for such a file. Another comment suggested that 
a reasonable time limit (e.g., three months) be established for such a 
search so that reconstruction of the file (if necessary) can begin 
promptly.
    Response: When an application file is determined to be unlocatable, 
the Official Search Unit or a Technology Center designee conducts a 
search for the application file in every location where the application 
file might reasonably be located: e.g., its location as indicated in 
the Office automated application tracking system (the Patent 
Application Locating and Monitoring or PALM system), the examiner's 
office, and the Technology Center's central files, technical support, 
and receptionist areas. If the application file still cannot be 
located, the application is flagged as ``lost'' in the PALM system. The 
flagging of an application in the PALM system as ``lost'' causes the 
PALM system to signal any person who then attempts a PALM transaction 
for the application (for which the application file is required) that 
the application file was previously unlocatable and should be taken to 
the person who was conducting a search for the application file. If no 
PALM transaction for the application occurs within thirty days, the 
Office then begins the file reconstruction process.
    Comment 4: One comment opposed the proposed change on the basis 
that it did not address the problem (i.e., the Office's inability to 
locate certain files). The comment indicated that the Office should 
better train its staff to track application and patent files, and to 
conduct a more diligent search for an application or patent files.
    Response: The Office is addressing this issue by: (1) Revising 
procedures for searches for applications; and (2) moving towards a 
total Electronic File Wrapper environment. Nevertheless, the majority 
of comments recognize that establishing procedures for the prompt 
reconstruction of unlocatable files is important not only to the 
conduct of business before the Office, but is also important to the 
public (third parties) which relies upon the information in a patent 
file when conducting an infringement or validity analysis.
    Comment 5: One comment suggested that the Office provide a printout 
of the contents entries from the Office's PALM system with any notice 
under Sec. 1.251 to assist the applicant or patentee.
    Response: The suggestion is adopted.
    Comment 6: One comment inquired as to how long it takes the Office 
to realize it has lost a file.
    Response: The Office usually realizes that it cannot locate a 
patent file when a member of the public requests a copy of the file. 
The Office usually realizes that it cannot locate an application file 
when its PALM system indicates that the application is due for some 
action.
    Comment 7: One comment inquired as to how long it will take for the 
Office to act on an application once the file has been reconstructed.
    Response: Once an application file has been reconstructed, it is 
docketed for action based upon its stage in the application examination 
process. In most situations, the application will be acted upon 
immediately.
    Comment 8: Several comments suggested that the Office should take 
special steps with files that have been reconstructed to ensure that 
the applicant or patentee is not again required to provide a copy of 
the file.
    Response: The Office takes the steps that can reasonably be taken 
to avoid misplacing any application or patent file. Thus, there are no 
further ``special'' steps that could reasonably be taken to avoid 
misplacing reconstructed application or patent files.
    Comment 9: One comment suggested that the Office should first 
attempt to reconstruct the file based upon the material it has (i.e., 
copies of Office actions, and sequence listings), and then require the 
applicant or patentee to supply the specific materials that the Office 
does not have. Another comment suggested that the applicant or patentee 
should not be required to produce copies of documents available to the 
Office from other sources (e.g., U.S. or foreign patents or patent 
publications).
    Response: The Office has considered attempting to reconstruct 
portions of the application or patent file based upon material 
contained in other Office databases. These databases, however, do not 
always contain accurate or complete copies of the papers actually in 
the application or patent file (e.g., Office actions may be draft or 
incomplete and may not include the pre-printed forms sent with Office 
actions). The best way to reconstruct an application or patent file 
quickly, completely, and accurately is to obtain a copy of the 
applicant or patentee's records of correspondence between the Office 
and applicant or patentee for the application or patent.
    The Office can obtain copies of U.S. patent application 
publications and patents from its databases. Therefore, the Office is 
not requiring applicants or patentees to provide copies of U.S. patent 
application publications and patents that are among the applicant's or 
patentee's record of the correspondence between the Office and the 
applicant or patentee for the application, patent, or other proceeding. 
The Office, however, may not be able to obtain copies of foreign patent 
documents or nonpatent literature from its databases. Therefore, the 
Office is requiring applicants or patentees to provide copies of 
foreign patent documents and nonpatent literature that are among the 
applicant's or patentee's record of the correspondence between the 
Office and the applicant or patentee for the application, patent, or 
other proceeding.
    Comment 10: One comment suggested that the applicant or patentee be 
required to provide a copy of only the papers formally of record in the 
application or patent file (i.e., not proposed amendments submitted to 
an examiner for consideration on an informal basis).
    Response: The applicant or patentee is required to provide a copy 
of 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. While an ``informal'' (or ``proposed'') 
amendment submitted to an examiner for consideration is not entered 
into the specification or drawings of the application, Office practice 
is to make such an informal or proposed amendment of record in the 
application file (usually by attachment to an interview summary 
record). Thus, ``informal'' amendments submitted to examiners for 
consideration are part of the correspondence between the Office and the 
applicant (or patentee) that must be submitted (if contained in 
applicant's or patentee's records of the application or patent).
    Comment 11: One comment questioned whether Sec. 1.251 applies when 
the file is otherwise available, but is missing specific documents.
    Response: Section 1.251 generally applies only to situations in 
which the file of an application or patent (not just certain documents) 
is unlocatable. When a document is missing from an application, Office 
practice is to call the applicant's representative and request

[[Page 69449]]

submission (generally by facsimile) of a copy of the missing document. 
While the Office intends to continue to treat missing documents in this 
relatively informal manner (rather than issuing a notice under 
Sec. 1.251), the Office may issue a notice under Sec. 1.251 to obtain a 
copy of a missing document if the Office's informal attempts to obtain 
a copy of the document are unsuccessful.
    Comment 12: One comment questioned what the Office does with the 
original file if it is discovered after the file has been 
reconstructed.
    Response: The Office will combine the papers into a single file 
wrapper and then destroy the other file wrapper (as well as any 
duplicate papers).
    Comment 13: One comment argued that the provisions of Sec. 1.251 
are not effective as to a patentee since there is no threat (e.g., 
threat of abandonment) if a patentee does not comply with a notice 
requiring a copy of the patent file. Another comment suggested that the 
Office expressly indicate that there is no consequence if a patentee 
fails to comply with a notice under Sec. 1.251 because a statutory 
change would be required for the Office to be able to impose a 
consequence such as lapse of the patent on a patentee.
    Response: If a patentee does not timely reply to a notice under 
Sec. 1.251, the patent will not ``lapse'' or expire. Nevertheless, it 
is incorrect to say that there is no consequence to a patentee who 
fails to comply with a notice under Sec. 1.251. If a patentee fails to 
timely comply with a notice under Sec. 1.251, the only certified copy 
of the patent file that the Office will be able to produce will be a 
copy of the patent and a copy of the application-as-filed (which may 
have an adverse impact during attempts to enforce the patent). In 
addition, if the patent is involved in a proceeding before the Office, 
the Office may take action under Sec. 1.616 or Sec. 10.18. Thus, the 
provisions of Sec. 1.251 will be effective as to a patentee even in the 
absence of a statutory change to impose some other consequence (e.g., 
lapse of the patent).
    Comment 14: Several comments argued that the threat of holding an 
application abandoned when the file was lost by the Office was patently 
unfair. One comment suggested that the sanction for noncooperation with 
a requirement for a copy of the application file for applications 
subject to the twenty-year patent term provisions of 35 U.S.C. 
154(a)(2) be a reduction of any patent term adjustment under 35 U.S.C. 
154(b), and that the sanction for noncooperation with a requirement for 
a copy of the application file for applications not subject to the 
twenty-year patent term provisions of 35 U.S.C. 154(a)(2) be a 
requirement for a terminal disclaimer.
    Response: As discussed above, the Office cannot process or examine 
an application if its file is unlocatable. Treating noncooperation with 
a requirement for a copy of the application file for applications 
solely by a reduction of any patent term adjustment or requirement for 
a terminal disclaimer would give rise to an open-ended suspension of 
action for any application in which the applicant chooses not to timely 
reply to a notice under Sec. 1.251.
    It is well established that keeping an application pending before 
the Office for an indeterminate period of time with no prospect of 
action being taken by either the Office or the applicant is not 
consistent with the spirit of the patent application examination 
process. See Planning-Machine Co. v. Keith, 101 U.S. (11 Otto) 479, 485 
(1879) (applicant cannot without cause hold an application pending 
during a long period without prosecuting the application). If an 
applicant fails to cooperate with the Office's attempt to reconstruct 
the file of an unlocatable application, there is no prospect of action 
being taken by either the Office or the applicant until the applicant 
replies to the notice under Sec. 1.251. Therefore, if the file of an 
application is unlocatable and the applicant fails to cooperate with 
the Office's attempt to reconstruct the file, it is appropriate to 
terminate proceedings in that application and treat the application as 
abandoned.
    Comment 15: One comment suggested that if an application becomes 
abandoned for failure to reply to a notice under Sec. 1.251, the 
applicant should be able to revive the application. Another comment 
suggested that the Office should permit the applicant to revive the 
application for unintentional abandonment at no cost to the applicant 
(the cost being absorbed by the Office).
    Response: An application abandoned for failure to timely reply to a 
notice under Sec. 1.251 may be revived pursuant to Sec. 1.137, provided 
that the conditions specified in Sec. 1.137 can be met (i.e., the delay 
in reply to the notice under Sec. 1.215 was unavoidable or 
unintentional). 35 U.S.C. 41(a)(7) requires the Office to charge a fee 
for filing a petition to revive an abandoned application, regardless of 
whether the delay was unintentional or unavoidable. In any event, an 
application abandoned for failure to timely reply to a notice under 
Sec. 1.251 is not abandoned because the Office cannot locate the 
application, but because the applicant failed to timely reply to the 
notice under Sec. 1.251.
    Comment 16: Several comments argued that applicants and patentees 
are unable to state with absolute confidence that their records are a 
complete and accurate copy of the correspondence between the Office and 
the applicant or patentee for the application, patent, or other 
proceeding (since correspondence from the Office may have been lost in 
the mail). Some comments suggested that an applicant or patentee be 
required to state only that the copy is a complete and accurate copy of 
the applicant or patentee's record of the correspondence between the 
Office and the applicant or patentee for the application, patent, or 
other proceeding. Another comment suggested that an applicant or 
patentee be required to state only that the copy is complete and 
accurate to the best of the individual's knowledge and belief, upon 
reasonable investigation.
    Response: Sections 1.251(b)(1) and (b)(2) as proposed provided for 
the situation in which the applicant or patentee possessed a complete 
and accurate 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, and Sec. 1.251(b)(3) as 
proposed provided for the situation in which an applicant or patentee 
did not possess a complete and accurate 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. Since applicants and patentees cannot be certain of whether 
their records are a complete and accurate copy of all of the 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding, Secs. 1.251(a)(1) and 
(a)(2) as adopted provide for the situation in which the applicant or 
patentee possesses some record (whether complete or incomplete) of the 
correspondence between the Office and the applicant or patentee, and 
Sec. 1.251(a)(3) provides for the rare situation in which an applicant 
or patentee does not possess any record of the correspondence between 
the Office and the applicant or patentee.
    Sections 1.251(a)(1) and (a)(2) will require a statement that the 
copy produced by applicant or patentee is a complete and accurate 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 (except for U.S. patent documents), and 
whether applicant or patentee is aware of any correspondence between 
the

[[Page 69450]]

Office and the applicant or patentee for such application, patent, or 
other proceeding that is not among applicant's or patentee's records. 
An applicant or patentee should be able to state with confidence that 
the copy provided to or produced for the Office is a complete and 
accurate copy of the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee, 
and whether applicant or patentee is aware of any correspondence 
between the Office and the applicant or patentee for such application, 
patent, or other proceeding that is not among applicant's or patent's 
records.
    Comment 17: One comment suggested that Sec. 1.251 was unclear as to 
whether the applicant or patentee was being required to state that the 
copy being produced by the applicant or patentee for copying by the 
Office, or the copy produced by the Office, was a complete and accurate 
copy of the correspondence between the Office and the applicant or 
patentee for the application, patent, or other proceeding.
    Response: Section 1.251(a)(2) requires a statement that the copy 
produced by applicant or patentee (not the copy produced by the Office) 
is a complete and accurate copy of 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.
    Comment 18: One comment required that the Office indicate where or 
to whom the applicant or patentee is to produce the applicant's or 
patentee's record of the correspondence between the Office and the 
applicant or patentee for the application, patent, or other proceeding 
for copying by the Office.
    Response: If an applicant or patentee decides to produce his or her 
record of the correspondence between the Office and the applicant or 
patentee for the application, patent, or other proceeding for copying 
by the Office under Sec. 1.251(a)(2) (rather than provide a copy under 
Sec. 1.251(a)(1)), the record should be brought to the Customer Service 
Center in the Office of Initial Patent Examination (Crystal Plaza 2, 
2011 South Clark Place, Arlington, VA 22202).
    Comment 19: One comment noted that Sec. 1.251 provides the option 
of producing 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 
when the applicant or patentee possesses a complete copy of the 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding. The comment suggests 
that the Office should also provide the option of producing 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 when the 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.
    Response: Section 1.251(a)(2) provides the option of producing 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 even when the 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.
    Comment 20: Several comments suggested that the Office should 
reimburse applicants or patentees for the costs of copying the 
application or patent file and delivering the copy to the Office.
    Response: The Office does not currently reimburse applicants or 
patentees for the costs of copying the application or patent file and 
delivering the copy to the Office. The changes in this final rule will 
not affect the costs of copying the application or patent file and 
delivering the copy to the Office as compared to current practice. The 
Office will study the reimbursement question to consider the costs and 
operational considerations associated with such a proposal.

Classification

Administrative Procedure Act

    The changes in this final rule concern only 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. Therefore, 
prior notice and an opportunity for public comment are not required 
pursuant to 5 U.S.C. 553(b)(A) (or any other law), and thirty-day 
advance publication is not required pursuant to 5 U.S.C. 553(d) (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 (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 document does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

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

Paperwork Reduction Act

    This document 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 document was submitted for 
approval by OMB under control number 0651-0031. The United States 
Patent and Trademark Office submitted 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.

[[Page 69451]]

    Needs and Uses: During the processing of 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, 
DC 20231, or to the Office of Information and Regulatory Affairs, OMB, 
725 17th Street, NW., Washington, DC 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 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 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 the notice in accordance with one of paragraphs (a)(1), (a)(2), or 
(a)(3) of this section.
    (1) Applicant or patentee may comply with a notice under this 
section by providing:
    (i) A copy of the applicant's or patentee's record (if any) of all 
of the correspondence between the Office and the applicant or patentee 
for such application, patent, or other proceeding (except for U.S. 
patent documents);
    (ii) A list of such correspondence; and
    (iii) A statement that the copy is a complete and accurate 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 (except for U.S. patent documents), and 
whether applicant or patentee is aware of any correspondence between 
the Office and the applicant or patentee for such application, patent, 
or other proceeding that is not among applicant's or patentee's 
records.
    (2) Applicant or patentee may comply with a notice under this 
section by:
    (i) Producing the applicant's or patentee's record (if any) 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 (except for U.S. patent documents); and
    (ii) Providing a statement that the papers produced by applicant or 
patentee are applicant's or patentee's complete record of all of the 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding (except for U.S. patent 
documents), and whether applicant or patentee is aware of any 
correspondence between the Office and the applicant or patentee for 
such application, patent, or other proceeding that is not among 
applicant's or patentee's records.
    (3) 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, applicant or patentee 
must comply with a notice under this section by providing a statement 
that 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.
    (b) With regard to a pending application, failure to comply with 
one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the 
time period set in the notice will result in abandonment of the 
application.

    Dated: October 31, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-29411 Filed 11-16-00; 8:45 am]
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