[Federal Register Volume 66, Number 56 (Thursday, March 22, 2001)]
[Rules and Regulations]
[Pages 16004-16007]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-7132]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket Number 010202029-1029-01]
RIN 0651-AB35


Revision of Patent Cooperation Treaty Application Procedure

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
amending its rules of practice relating to applications filed under the 
Patent Cooperation Treaty (PCT). These changes conform the United 
States rules of practice to the Regulations under the PCT which became 
effective March 1, 2001. The result will be more streamlined procedures 
for filing and prosecuting international applications under the PCT.

DATES: Effective Date: March 1, 2001.
    Applicability Date: The changes to Secs. 1.434, 1.451, 1.471, and 
1.484 apply to all international applications filed before, on, or 
after March 1, 2001. The changes to Secs. 1.494, 1.495, and 1.497 apply 
to international applications entering the national phase on or after 
March 1, 2001 (irrespective of their filing date).

FOR FURTHER INFORMATION CONTACT: Charles Pearson, Director, Office of 
PCT Legal Administration, by telephone at (703) 306-4145; or by mail 
addressed to: Box PCT, Commissioner for Patents, Washington, DC 20231; 
or by facsimile to (703) 308-6459, marked to the attention of Charles 
Pearson.

SUPPLEMENTARY INFORMATION: During a March 2000 meeting of the Governing 
Bodies of the World Intellectual Property Organization (WIPO), the PCT 
Assembly adopted amendments to the PCT Regulations, which took effect 
on March 1, 2001. The amended PCT Regulations were published in PCT 
Gazette 42/2000, Section IV, October 19, 2000. The resulting changes to 
PCT practice improve filing and processing procedures for applicants 
filing international applications. This final rule amends the rules of 
practice in title 37 of the Code of Federal Regulations to conform them 
to corresponding changes made to the PCT Regulations that took effect 
on March 1, 2001.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.434(d) is amended to reflect that newly added PCT Rule 
4.17(iv) allows applicants for the United States to file a declaration 
of inventorship as part of the PCT Request (Form PCT/RO/101).
    Section 1.451(b) is amended to reflect a change in PCT Rule 
4.1(c)(ii), which clarifies that a request for the receiving Office to 
prepare and transmit copies of priority documents, in which the 
priority documents were filed with the United States Patent and 
Trademark Office, may appear in the Request.
    Section 1.471(c) is added to reflect that applicants may correct or 
add to the Request any declaration referred to in new PCT Rule 4.17 by 
a notice submitted to the International Bureau in accordance with new 
PCT Rule 26ter. Pursuant to PCT Rule 26ter, applicant may make such a 
correction or addition within a time limit of 16 months from the 
priority date or if the notice is received by the International Bureau

[[Page 16005]]

after the time limit, the notice will be considered to have been 
received on the last day of the time limit if it reaches the 
International Bureau before technical preparations for international 
publication have been completed.
    Section 1.484(g) is added to reflect a change to PCT Rule 66.7(b). 
PCT Rule 66.7 allows an International Preliminary Examining Authority 
to ask for a translation of the priority document where the validity of 
the priority claim is relevant for the formulation of the opinion 
referred to in Article 33(1). Section 1.484 allows the United States 
International Preliminary Examining Authority, where the validity of 
the priority claim is relevant for the formulation of the opinion 
referred to in Article 33(1), to invite the applicant to furnish an 
English translation of the priority document within two months from the 
date of the invitation. If the translation is not furnished within that 
time limit, the international preliminary examination report may be 
established as if such priority had not been claimed.
    Sections 1.494(c)(2), 1.495(c)(2) and 1.497(a) are amended to 
reflect new PCT Rules 4.17(iv), 26ter.1 and 51bis.2(b)(iii). Newly 
added PCT Rule 4.17(iv) allows applicants for the United States to file 
a declaration either as part of the originally filed Request or within 
the time limit set forth in new PCT Rule 26ter.1. A declaration in 
accordance with PCT Rule 4.17(iv) is equivalent to the declaration 
required under Sec. 1.63. If the declaration is not in accordance with 
PCT Rule 4.17(iv), but it is in compliance with Sec. 1.497, the 
declaration will be accepted for the purposes of entry into the 
national stage in the United States. However, in such an instance, a 
supplemental oath or declaration complying with Sec. 1.63 may still be 
required. In addition, Sec. 1.497(a)(2) is also amended to conform to 
the current language of Sec. 1.63(b)(1). See Changes to Implement the 
Patent Business Goals, 65 FR 54603, 54667 (Sept. 8, 2000), 1238 Off. 
Gaz. Pat. Office 77, 133 (Sept. 19, 2000) (Final Rule).
    Sections 1.494(c) and (d) are amended and Sec. 1.497(f) is added to 
indicate that applicants will be required to file a new oath or 
declaration, where applicants for the United States executed a 
declaration in accordance with PCT Rule 4.17(iv), and subsequently made 
changes to: (1) The application under PCT Rule 20.2; or (2) the 
inventorship under PCT Rule 92bis. In addition, where the inventorship 
has been changed under PCT Rule 92bis after the execution of any 
declaration under PCT Rule 4.17(iv), applicant must provide the 
following: (1) A statement from each person being added as an inventor 
and from each person being deleted as an inventor that any error in 
inventorship in the international application occurred without 
deceptive intention on his or her part; (2) the processing fee set 
forth in 37 CFR 1.17(i); and (3) if an assignment has been executed by 
any of the original named inventors, the written consent of the 
assignee (see Sec. 3.73(b)).
    Section 1.494(g) is added to indicate that applicants will be 
required to file a new oath, declaration, or application data sheet 
where applicants for the United States filed a declaration in 
accordance with PCT Rule 4.17(iv), but made changes to the priority 
claim under PCT Rule 26bis after execution of the declaration under PCT 
Rule 4.17(iv).

Classification

Administrative Procedure Act

    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 merely implements corresponding 
changes required to conform United States rules for international 
applications to the amendments to the PCT Regulations which became 
effective on March 1, 2001. Accordingly, 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 
under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under 
5 U.S.C. 553(d). See International Brotherhood of Teamsters v. Pena, 17 
F.3d 1478, 1486 (D.C. Cir. 1994).

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), the analytical 
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) 
are inapplicable.

Executive Order 13132

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

Paperwork Reduction Act

    This final rule 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 final rule has been reviewed 
and previously approved by OMB under the following control number 0651-
0021.
    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 
this final rule is to 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.
    OMB Number: 0651-0021.
    Title: Patent Cooperation Treaty.
    Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401, 
PCT/IB/328.
    Type of Review: Approved through December of 2003.
    Affected Public: Individuals or Households, Business or Other For-
Profit, Federal Agencies or Employees, Not-for-Profit Institutions, 
Small Businesses or Organizations.
    Estimated Number of Respondents: 439,554.
    Estimated Time Per Response: 0.25 to 4.0 hrs.
    Estimated Total Annual Burden Hours: 595,060 hours.
    Needs and Uses: The information collected is required by the Patent 
Cooperation Treaty. The general purpose of the PCT is to simplify the 
filing of patent applications on the same invention in different 
countries. It provides for a centralized filing procedure and a 
standardized application format.
    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 Charles Pearson, Director, Office of PCT Legal 
Administration, United States Patent and Trademark Office, Washington, 
DC 20231, or to the Office of Information and Regulatory Affairs of 
OMB, New Executive Office Building,

[[Page 16006]]

725 17th Street, NW., Room 10235, Washington, DC 20503, Attention: 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 1.434 is amended by revising paragraph (d) to read as 
follows:


Sec. 1.434  The request.

* * * * *
    (d) International applications which designate the United States of 
America:
    (1) Shall include the name, address and signature of the inventor, 
except as provided by Secs. 1.421(d), 1.422, 1.423 and 1.425;
    (2) Shall include a reference to any copending national application 
or international application designating the United States of America, 
if the benefit of the filing date for the prior copending application 
is to be claimed; and
    (3) May include in the Request a declaration of the inventors as 
provided for in PCT Rule 4.17(iv).

    3. Section 1.451 is amended by revising paragraph (b) to read as 
follows:


Sec. 1.451  The priority claim and the priority document in an 
international application.

* * * * *
    (b) Whenever the priority of an earlier United States national 
application or international application filed with the United States 
Receiving Office is claimed in an international application, the 
applicant may request in the Request or in a letter of transmittal 
accompanying the international application upon filing with the United 
States Receiving Office or in a separate letter filed in the United 
States Receiving Office not later than 16 months after the priority 
date, that the United States Patent and Trademark Office prepare a 
certified copy of the prior application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 17). The fee for 
preparing a certified copy is set forth in Sec. 1.19(b)(1).
* * * * *

    4. Section 1.471 is amended by adding paragraph (c) to read as 
follows:


Sec. 1.471  Corrections and amendments during international processing.

* * * * *
    (c) Corrections or additions to the Request of any declarations 
under PCT Rule 4.17 should be submitted to the International Bureau as 
prescribed by PCT Rule 26ter.

    5. Section 1.484 is amended by adding paragraph (g) to read as 
follows:


Sec. 1.484  Conduct of international preliminary examination

* * * * *
    (g) If the application whose priority is claimed in the 
international application is in a language other than English, the 
United States International Preliminary Examining Authority may, where 
the validity of the priority claim is relevant for the formulation of 
the opinion referred to in Article 33(1), invite the applicant to 
furnish an English translation of the priority document within two 
months from the date of the invitation. If the translation is not 
furnished within that time limit, the international preliminary 
examination report may be established as if the priority had not been 
claimed.

    6. Section 1.494 is amended by revising paragraph (c)(2) to read as 
follows:


Sec. 1.494  Entering the national stage in the United States of America 
as a designated office.

* * * * *
    (c) * * *
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), and a declaration of inventorship in compliance with 
Sec. 1.497 has not been previously submitted in the international 
application under PCT Rule 4.17(iv) within the time limits provided for 
in PCT Rule 26ter.1, applicant will be so notified and given a period 
of time within which to file the translation and/or oath or declaration 
in order to prevent abandonment of the application.
* * * * *

    7. Section 1.495 is amended by revising paragraph (c)(2) to read as 
follows:


Sec. 1.495  Entering the national stage in the United States of America 
as an elected office.

* * * * *
    (c) * * *
    (2) The oath or declaration of the inventor (35 U.S.C. 371(c)(4); 
see Sec. 1.497), and a declaration of inventorship in compliance with 
Sec. 1.497 has not been previously submitted in the international 
application under PCT Rule 4.17(iv) within the time limits provided for 
in PCT Rule 26ter.1, applicant will be so notified and given a period 
of time within which to file the translation and/or oath or declaration 
in order to prevent abandonment of the application.
* * * * *

    8. Section 1.497 is amended by revising paragraphs (a), (c) and 
(d), and adding paragraphs (f) and (g) to read as follows:


Sec. 1.497  Oath or declaration under 35 U.S.C. 371(c)(4).

    (a) When an applicant of an international application desires to 
enter the national stage under 35 U.S.C. 371 pursuant to Secs. 1.494 or 
1.495, and a declaration in compliance with this section has not been 
previously submitted in the international application under PCT Rule 
4.17(iv) within the time limits provided for in PCT Rule 26ter.1, he or 
she must file an oath or declaration that:
    (1) Is executed in accordance with either 1.66 or 1.68;
    (2) Identifies the application to which it is directed;
    (3) Identifies each inventor and the country of citizenship of each 
inventor; and
    (4) States that the person making the oath or declaration believes 
the named inventor or inventors to be the original and first inventor 
or inventors of the subject matter which is claimed and for which a 
patent is sought.
* * * * *
    (c) Subject to paragraph (f) of this section, if the oath or 
declaration meets the requirements of paragraphs (a) and (b) of this 
section, the oath or declaration will be accepted as complying with 35 
U.S.C. 371(c)(4) and Secs. 1.494(c) or 1.495(c). However, if the oath 
or declaration does not also meet the requirements of Sec. 1.63, a 
supplemental oath or declaration in compliance with Sec. 1.63 or an 
application data sheet will be required in accordance with Sec. 1.67.
    (d) If the oath or declaration filed pursuant to 35 U.S.C. 
371(c)(4) and this section names an inventive entity different from the 
inventive entity set

[[Page 16007]]

forth in the international application, or a change to the inventive 
entity has been effected under PCT Rule 92bis subsequent to the 
execution of any declaration which was filed under PCT Rule 4.17(iv), 
the oath or declaration must be accompanied by:
    (1) A statement from each person being added as an inventor and 
from each person being deleted as an inventor that any error in 
inventorship in the international application occurred without 
deceptive intention on his or her part;
    (2) The processing fee set forth in Sec. 1.17(i); and
    (3) If an assignment has been executed by any of the original named 
inventors, the written consent of the assignee (see Sec. 3.73(b) of 
this chapter).
* * * * *
    (f) A new oath or declaration in accordance with this section must 
be filed to satisfy 35 U.S.C. 371(c)(4) if the declaration was filed 
under PCT Rule 4.17(iv), and:
    (1) There was a change in the international filing date pursuant to 
PCT Rule 20.2 after the declaration was executed; or
    (2) A change in the inventive entity was effected under PCT Rule 
92bis after the declaration was executed.
    (g) If a priority claim has been corrected or added pursuant to PCT 
Rule 26bis during the international stage after the declaration of 
inventorship was executed in the international application under PCT 
Rule 4.17(iv), applicant will be required to submit either a new oath 
or declaration or an application data sheet as set forth in Sec. 1.76 
correctly identifying the application upon which priority is claimed.

    Dated: March 16, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 01-7132 Filed 3-21-01; 8:45 am]
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