[Federal Register Volume 66, Number 169 (Thursday, August 30, 2001)]
[Rules and Regulations]
[Pages 45775-45777]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-21879]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: 010815207]
RIN 0651-AB41


Timing of National Stage Commencement in the United States for 
Patent Cooperation Treaty Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Temporary rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
amending the regulations to include the current statutory provisions 
that define when national stage commencement occurs in an application 
filed under the Patent Cooperation Treaty (PCT). The Office is making 
this change due to a possible change in the patent statute to provide 
that the time period for commencement of the national stage that is 
currently set forth by statute will be set forth in the regulations.

DATES: Effective Date: August 30, 2001 through June 3, 2002.
    Applicability Date: The change to 37 CFR 1.491 applies to any 
international application pending before, on, or after August 30, 2001.

FOR FURTHER INFORMATION CONTACT: Charles A. Pearson, Director, Office 
of PCT Legal Administration, by telephone at (703) 306-4145, or Boris 
Milef, Legal Examiner, Office of PCT Legal Administration, by telephone 
at (703) 308-3659, or by mail addressed to: Box PCT--Patents, 
Commissioner for Patents, Washington, DC 20231, or by facsimile to 
(703) 308-6459, marked to the attention of Boris Milef.

SUPPLEMENTARY INFORMATION: 35 U.S.C. 371(b) currently sets forth the 
time period for commencement of the national stage in an application 
filed under the PCT. Due to a possible statutory revision of 35 U.S.C. 
371(b) to provide that the time period for commencement of the national 
stage will be set forth in the regulations, the Office is amending 37 
CFR 1.491 (Sec. 1.491) such that the regulations set forth the current 
language of 35 U.S.C. 371(b) (as amended by Pub. L. 99-616, section 
7(b), 100 Stat. 3485, 3485 (1986)) that defines when national stage 
commencement occurs. Certain U.S. statutes and regulations provide for 
requirements that are tied to the date of national stage 
``commencement'' (e.g., the date of national stage

[[Page 45776]]

commencement is relevant to the due date for the national fee, an oath 
or declaration, and any required translation of the international 
application or amendments under PCT Article 19 (35 U.S.C. 371(d)), and 
in determining whether patentees are entitled to a patent term 
adjustment pursuant to 35 U.S.C. 154(b)(1)(B) (37 CFR 1.702(b)). 
Therefore, it is important that the regulations provide for a date of 
commencement of the national stage as to the United States in advance 
of any statutory revision to 35 U.S.C. 371(b).
    The Office will publish in the near future a notice proposing 
changes to the time period for claiming the benefit of a prior-filed 
application in an application filed under the PCT, and making other 
technical corrections to the rules of practice related to eighteen-
month publication. The Office is also including the change to 
Sec. 1.491 in this temporary rule in the notice of proposed rulemaking 
to be published in the near future. Comments on this change to 
Sec. 1.491 may be submitted in response to that notice of proposed 
rulemaking, and the Office will take such comments into consideration 
before publishing a final rule resulting from the notice of proposed 
rulemaking.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.491: Section 1.491 is amended to define both commencement 
of the national stage and entry into the national stage. Because these 
two events (commencement of the national stage and entry into the 
national stage) may not take place at the same time, the Office is 
amending Sec. 1.491 to clarify when each of these two events takes 
place. Section 1.491(a) specifically indicates that, subject to 35 
U.S.C. 371(f), the national stage shall commence with the expiration of 
the applicable time limit under PCT Article 22(1) or (2), or under PCT 
Article 39(1)(a). Thus, Sec. 1.491(a) merely incorporates the statutory 
language contained in 35 U.S.C. 371(b) (as amended by Pub. L. 99-616, 
section 7(b), 100 Stat. 3485, 3485 (1986)). Section 1.491(b) contains 
the provisions of former Sec. 1.491, and provides that an international 
application enters the national stage when the applicant has filed the 
documents and fees required by 35 U.S.C. 371(c) within the period set 
in Sec. 1.494 or Sec. 1.495.

Classification

Administrative Procedure Act

    This temporary rule simply amends Sec. 1.491 to include the current 
provisions in 35 U.S.C. 371(b) that define when national stage 
commencement occurs in an application filed under the PCT. This 
amendment to Sec. 1.491 does not change the current time limits for 
entering the national phase in the United States and does not alter any 
applicant's substantive rights. In addition, this amendment to 
Sec. 1.491 is of an exigent nature because there is an impending change 
to 35 U.S.C. 371(b) that if enacted before the Office amends Sec. 1.491 
would result in a period of time during which the timing of national 
stage commencement in an application filed under the PCT would be 
undefined. 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 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 temporary rule involves information collection requirements 
that 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 temporary rule has been 
reviewed and previously approved by OMB under the control number 0651-
0021. The Office is not resubmitting an information collection package 
to OMB for its review and approval because the changes in this 
temporary rule do not affect the information collection requirements 
associated with the information collection under OMB control number 
0651-0021.
    The title, description and respondent description of the 
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.
    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 Institutions, Federal Agencies or Employees, Not-for-Profit 
Institutions, Small Businesses or Organizations.
    Estimated Number of Respondents: 331,288.
    Estimated Time Per Response: Between 15 minutes and 4 hours.
    Estimated Total Annual Burden Hours: 401,083.
    Needs and Uses: The information collected is required by the Patent 
Cooperation Treaty (PCT). 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 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 of 
OMB, New Executive Office Building, 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.

[[Page 45777]]

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 1.491 is revised to read as follows:


Sec. 1.491.  National stage commencement and entry.

    (a) Subject to 35 U.S.C. 371(f), the national stage shall commence 
with the expiration of the applicable time limit under PCT Article 
22(1) or (2), or under PCT Article 39(1)(a).
    (b) An international application enters the national stage when the 
applicant has filed the documents and fees required by 35 U.S.C. 371(c) 
within the period set in Sec. 1.494 or Sec. 1.495.

    Dated: August 24, 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. 01-21879 Filed 8-29-01; 8:45 am]
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