[Federal Register Volume 66, Number 131 (Monday, July 9, 2001)]
[Proposed Rules]
[Pages 35763-35765]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-17100]


 ========================================================================
 Proposed Rules
                                                 Federal Register
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 This section of the FEDERAL REGISTER contains notices to the public of 
 the proposed issuance of rules and regulations. The purpose of these 
 notices is to give interested persons an opportunity to participate in 
 the rule making prior to the adoption of the final rules.
 
 ========================================================================
 

  Federal Register / Vol. 66, No. 131 / Monday, July 9, 2001 / Proposed 
Rules  

[[Page 35763]]



DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: 010606145-1145-01]
RIN 0651-AB37


Elimination of Continued Prosecution Application Practice as to 
Utility and Plant Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The American Inventors Protection Act of 1999 (AIPA) enacted 
provisions for the continued examination of a utility or plant 
application at the request of the applicant (request for continued 
examination or RCE practice). Therefore, there no longer appears to be 
a need for continued prosecution application (CPA) practice as to 
utility and plant applications. Thus, the Office is proposing to 
eliminate CPA practice as to utility and plant applications. An 
applicant for a utility or plant patent may also continue to 
effectively obtain further examination of the application by filing a 
continuing application under section 1.53(b). Since RCE practice does 
not apply to design applications, CPA practice will remain in place for 
design applications.

DATES: To be ensured of consideration, written comments must be 
received on or before September 7, 2001. 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 Eugenia A. Jones. 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 prefers 
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 the Commissioner for Patents, located in Crystal Park 2, Suite 910, 
2121 Crystal Drive, 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: Eugenia A. Jones, by telephone at 
(703) 306-5586, 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 Eugenia A. Jones.

SUPPLEMENTARY INFORMATION: The AIPA was enacted into law on November 
29, 1999. See Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-
591 (1999). Among other things, the AIPA amended Title 35 of the United 
States Code to provide for a request for continued examination (RCE) 
practice. See 35 U.S.C. 132(b). RCE practice is applicable to any 
utility or plant application filed on or after June 8, 1995. See 113 
Stat. at 1501A-560 through 1501A-561. The Office amended the rules of 
practice in Title 37 of the Code of Federal Regulations to implement 
the RCE provisions of the AIPA via an interim rule published in March 
2000 and a final rule published in August 2000. See Changes to 
Application Examination and Provisional Application Practice, 65 FR 
14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000) 
(interim rule), and Request for Continued Examination Practice and 
Changes to Provisional Application Practice, 65 FR 50091 (Aug. 16, 
2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000) (final rule).
    The AIPA also amended Title 35 of the United States Code to 
provide, with certain exceptions, for the publication of pending patent 
applications (other than design applications) eighteen months after the 
earliest claimed priority date. See 35 U.S.C. 122(b) (applies to 
utility and plant applications filed on or after November 29, 2000, 
including any CPA filed on or after November 29, 2000). The Office 
amended the rules of practice in Title 37 of the Code of Federal 
Regulations to implement the eighteen-month publication provisions of 
the AIPA by a final rule published in September of 2000. See Changes to 
Implement Eighteen-Month Publication of Patent Applications, 65 FR 
57023 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63 (Oct. 10, 2000) 
(final rule). That notice indicated that the publication of a CPA is 
both costly and inefficient. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, 65 FR at 57047, 1239 Off. Gaz. Pat. 
Office at 84 (comment 58 and response).
    The Office created CPA practice under Sec. 1.53(d) in 1997 to 
permit applicants to effectively obtain continued examination of an 
application using a streamlined continuing application practice (i.e., 
CPA practice). CPA practice was a substitute for a continued 
examination practice. See Changes to Patent Practice and Procedures, 62 
FR 53131, 53142 (Oct. 10, 1997), 1203 Off. Gaz. Pat. Office 63, 72 
(Oct. 21, 1997) (final rule) (comment 17 and response). While the 
Office did not completely eliminate CPA practice for utility and plant 
applications (as a convenience to applicants) when it implemented RCE 
practice, it has now determined that CPA practice for utility or plant 
applications is redundant (in view of RCE practice), costly, and 
inefficient. Thus, the Office is now proposing to eliminate CPA 
practice as to utility and plant applications.

Discussion of Specific Rule

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.53(d)(1)(i) is proposed to be amended to provide that an 
application may be filed as a CPA under Sec. 1.53(d) only for a design 
patent (either an original or reissue design patent) and the prior 
nonprovisional application (of which the CPA is a continuation or 
divisional) is a design application that is complete as defined by 
Sec. 1.51(b).
    In the event that an applicant files a request for a CPA of a 
utility or plant application (to which CPA practice no longer applies) 
and the utility or plant application was filed on or after June 8, 
1995, the Office will automatically treat the improper request for a 
CPA as an

[[Page 35764]]

RCE under Sec. 1.114 of the utility or plant application identified in 
the request for CPA. Experience, however, has shown that such requests 
for a CPA may not satisfy the requirements of Sec. 1.114 to be a proper 
RCE (e.g., the request may lack a submission under Sec. 1.114(b), or 
may not be accompanied by the fee set forth in Sec. 1.17(e)). In such 
situations, the Office will treat the improper request for a CPA as an 
RCE (albeit an improper RCE), and the time period set in the last 
Office action (or notice of allowance) will continue to run. If the 
time period (considering any available extension under Sec. 1.136(a)) 
has expired, the applicant must file a petition under Sec. 1.137 (with 
the lacking submission under Sec. 1.114(b) and/or fee set forth in 
Sec. 1.17(e)) to revive the abandoned application.
    In the event that an applicant files a request for a CPA of a 
utility or plant application and the utility or plant application was 
filed before June 8, 1995, the Office will treat the improper request 
for a CPA as an improper application under the provisions set forth in 
Sec. 1.53(e).
    Section 1.53(d)(3) is proposed to be amended to provide that the 
filing fee for a CPA filed under Sec. 1.53(d) is the basic filing fee 
as set forth in Sec. 1.16(f) if the application is for an original 
design patent or Sec. 1.16(h) if the application is for a reissue 
design patent. Since Sec. 1.53(d) as proposed would no longer apply to 
utility or plant applications and a design application may contain only 
a single claim (Sec. 1.154(b)(6)), there is no need for Sec. 1.53(d)(3) 
to provide for additional claims fees.

Classification

Regulatory Flexibility Act

    The Chief Counsel for Regulation of the Department of Commerce 
certified to the Chief Counsel for Advocacy, Small Business 
Administration, that the changes proposed in this notice, if adopted, 
would not have a significant impact on a substantial number of small 
entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The changes 
proposed in this notice (if adopted) would eliminate CPA practice as to 
utility and plant applications. The changes proposed in this notice (if 
adopted) would not have a significant economic impact on any business 
because: (1) Any applicant (including small entities) in a utility or 
plant application filed before June 8, 1995, can obtain further 
examination of the application by filing either a continuing 
application under Sec. 1.53(b) or a submission under Sec. 1.129(a) (if 
the application is eligible for Sec. 1.129(a) practice); (2) any 
applicant (including small entities) in a utility or plant application 
filed on or after June 8, 1995, can obtain further examination of the 
application by filing either an RCE under 35 U.S.C. 132(b) and 
Sec. 1.114 or a continuing application under Sec. 1.53(b); and (3) any 
applicant (including small entities) in a design application can 
continue to obtain further examination of the application by filing 
either a CPA under Sec. 1.53(d) or a continuing application under 
Sec. 1.53(b).

Executive Order 13132

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

Paperwork Reduction Act

    This notice of proposed rulemaking 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.). As required by the Paperwork Reduction Act of 1995 (44 
U.S.C. 3507(d)), the Office has submitted an information collection 
package to OMB for its review and approval of the proposed information 
collections under OMB control numbers 0651-0031 and 0651-0032. The 
Office is submitting these information collections to OMB for its 
review and approval because this notice of proposed rulemaking will 
increase the number of RCEs. The principal impact of the changes in 
this notice of proposed rulemaking is to eliminate CPA practice with 
respect to utility and plant applications.
    The title, description and respondent description of each of the 
information collections are shown below with an estimate of each of the 
annual reporting burdens. Included in each estimate is the time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information.
    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08/21-27/30/31/35/36/42/43/61/62/63/64/67/68/
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: 2,247,389.
    Estimated Time Per Response: 0.45 hours.
    Estimated Total Annual Burden Hours: 1,021,941 hours.
    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.
    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
    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: 319,350.
    Estimated Time Per Response: 9.35 hours.
    Estimated Total Annual Burden Hours: 2,984,360 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statute and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Declaration, and Plant Patent Application 
Declaration will assist applicants in complying with the requirements 
of the patent statute and regulations, and will further assist the 
Office in the processing and examination of the application.
    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

[[Page 35765]]

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 of 
OMB, New Executive Office Building, Room 10235, 725 17th Street NW., 
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 
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 1.53 is proposed to be amended by revising paragraphs 
(d)(1) and (d)(3) to read as follows:
* * * * *
    (d) * * *
    (1) A continuation or divisional application (but not a 
continuation-in-part) of a prior nonprovisional application may be 
filed as a continued prosecution application under this paragraph, 
provided that:
    (i) The application is for a design patent;
    (ii) The prior nonprovisional application is a design application 
that is complete as defined by Sec. 1.51(b); and
    (iii) The application under this paragraph is filed before the 
earliest of:
    (A) Payment of the issue fee on the prior application, unless a 
petition under Sec. 1.313(c) is granted in the prior application;
    (B) Abandonment of the prior application; or
    (C) Termination of proceedings on the prior application.
* * * * *
    (3) The filing fee for a continued prosecution application filed 
under this paragraph is the basic filing fee as set forth in 
Sec. 1.16(f) or Sec. 1.16(h).
* * * * *

    Dated: June 22, 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. 01-17100 Filed 7-6-01; 8:45 am]
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