[Federal Register Volume 66, Number 172 (Wednesday, September 5, 2001)]
[Proposed Rules]
[Pages 46409-46415]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-22273]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: 010815207-1207-01]
RIN 0651-AB41


Requirements for Claiming the Benefit of Prior-Filed Applications 
Under Eighteen-Month Publication of Patent Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: In implementing the provisions of the American Inventors 
Protection Act of 1999 related to the eighteen-month publication of 
patent applications, the United States Patent and Trademark Office 
(Office) revised the rules of practice related to requirements for 
claiming the benefit of a prior-filed application. The Office is now 
proposing to revise the time period for claiming the benefit of a 
prior-filed application in an application filed under the Patent 
Cooperation Treaty (PCT), revise the time period for filing an English 
language translation of a non-English language provisional application, 
and make other technical corrections to the rules of practice related 
to eighteen-month publication. The Office is also proposing to make 
permanent a temporary rule that amends the rules of practice to include 
the current statutory provisions that define when national stage 
commencement occurs in an application filed under the PCT.

DATES: To be ensured of consideration, written comments must be 
received on or before October 5, 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) 872-9399, 
marked to the attention of Robert A. Clarke. 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

[[Page 46410]]

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: Robert A. Clarke or Joni Y. Chang, 
Legal Advisors, Office of Patent Legal Administration, 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) 872-9399, marked to the attention of Robert A. Clarke.

SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 
1999 was enacted into law on November 29, 1999. See Public Law 106-113, 
113 Stat. 1501, 1501A-552 through 1501A-591 (1999). The American 
Inventors Protection Act of 1999 contained a number of changes to title 
35, United States Code, including provisions for the publication of 
pending applications for patent, with certain exceptions, promptly 
after the expiration of a period of eighteen months from the earliest 
filing date for which a benefit is sought under title 35, United States 
Code (``eighteen-month publication''). The Office implemented the 
eighteen-month publication provisions of the American Inventors 
Protection Act of 1999 in 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).
    Section 4503(b) of the American Inventors Protection Act of 1999 
amended 35 U.S.C. 119(e) and 120 to provide that no application shall 
be entitled to the benefit of a prior-filed application unless an 
amendment containing the specific reference to the prior-filed 
application is submitted at such time during the pendency of the 
application as required by the Office. Section 4503(b) of the American 
Inventors Protection Act of 1999 also amended 35 U.S.C. 119(e) and 120 
to permit the Office to establish procedures for accepting an 
unintentionally delayed claim for the benefit of a prior-filed 
application. This notice proposes to amend 37 CFR 1.78 to: (1) Clarify 
the requirements for claiming the benefit of a prior-filed application 
in an application filed under the PCT; and (2) revise the time period 
and requirements for filing an English language translation of a non-
English language provisional application.
    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 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 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).

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:

Section 1.78

    Section 1.78(a)(1) is proposed to be amended to make its provisions 
applicable to international applications designating the United States 
of America. The phrase ``nonprovisional application'' as used in the 
rules of practice means either an application filed under 35 U.S.C. 
111(a) or an international application filed under 35 U.S.C. 363 that 
entered the national stage after compliance with 35 U.S.C. 371. See 
Sec. 1.9(a)(3). Thus, provisions which apply only to a nonprovisional 
application (e.g., the requirement in Sec. 1.78(a)(2)(iii) for a 
specific reference in an application data sheet (Sec. 1.76) or the 
specification) do not apply to any international application that does 
not enter national stage processing under 35 U.S.C. 371. The specific 
reference requirements of 35 U.S.C. 119(e) and 120 are met in such an 
international application by a specific reference to the prior-filed 
application in the international application papers (e.g., in the 
Request (PCT Rule 4.10 and Sec. 1.434(d)(2)), or a correction or 
addition in accordance with PCT Rule 26bis).
    Section 1.78(a)(2) is proposed to be amended to place its 
provisions in separate paragraphs (a)(2)(i) through (a)(2)(iv) for 
clarity. Sections 1.78(a)(2) is also proposed to be amended to also 
make its provisions applicable to international applications 
designating the United States of America, and to set forth the time 
period for making a claim (providing the specific reference required by 
Sec. 1.78(a)(2)(i)) for both an application filed under 35 U.S.C. 
111(a) and an international application designating the United States 
of America which entered the national stage after compliance with 35 
U.S.C. 371.
    Specifically, if the later-filed application is an application 
filed under 35 U.S.C. 111(a), the specific reference required by 
Sec. 1.78(a)(2)(i) must be submitted within the later of four months 
from the actual filing date of the later-filed application or sixteen 
months from the filing date of the prior application. If, however, the 
later-filed application is a nonprovisional application which entered 
the national stage from an international application after compliance 
with 35 U.S.C. 371, the specific reference required by 
Sec. 1.78(a)(2)(i) must be submitted within the later of four months 
from the date on which the national stage commenced under 35 U.S.C. 
371(b) or (f) or sixteen months from the filing date of the prior 
application. This reference must, in any event, be submitted during the 
pendency of the later-filed application. The provisions relating to an 
application filed under 35 U.S.C. 111(a) do not change the time period 
for submitting a specific reference in such applications. The 
provisions relating to an international application designating the 
United States of America which entered the national stage after 
compliance with 35 U.S.C. 371, however, do change the time period for 
submitting a specific reference in such applications in that the four-
month period is measured from the date on which the national stage 
commenced under 35 U.S.C. 371(b) or (f) rather than the actual filing 
date of the international application under 35 U.S.C. 363.
    Section 1.78(a)(2) is also amended to eliminate the requirement 
that if the application claims the benefit of an international 
application, the first sentence of the specification must include an 
indication of whether the international application was published under 
PCT Article 21(2) in English. The Office is eliminating this 
requirement because: (1) The Office will not delay publication of the 
application if this

[[Page 46411]]

requirement is not met; and (2) this information can be obtained from 
other sources (e.g., the language of publication can usually be 
determined by the country of origin of the international application).
    Section 1.78(a)(2) is also amended to change the sentence ``(t)he 
identification of an application by application number under this 
section is the specific reference required by 35 U.S.C. 120 to every 
application assigned that application number'' to ``(t)he 
identification of an application by application number under this 
section is the identification of every application assigned that 
application number necessary for a specific reference required by 35 
U.S.C. 120 to every such application assigned that application 
number.'' This change clarifies that the other provisions of 
Sec. 1.78(a)(2) (e.g., that the claim be in the application data sheet 
or the first sentence of the specification) remain applicable when an 
application under Sec. 1.53(b) claims the benefit under 35 U.S.C. 120 
of a continued prosecution application filed under Sec. 1.53(d). See 
Changes to Patent Practice and Procedure, 62 FR 53131, 53144 (Oct. 10, 
1997), 1203 Off. Gaz. Pat. Office 63, 73 (Oct. 21, 1997) (final rule).
    Section 1.78(a)(3) is proposed to be amended to change 
``nonprovisional application'' to ``application,'' and change 
``paragraph (a)(2)'' to paragraph ``(a)(2)(ii)'' for consistency with 
the changes to Sec. 1.78(a)(2).
    Section 1.78(a)(3) provides that if the reference required by 35 
U.S.C. 120 and Sec. 1.78(a)(2) of this section is presented in an 
application after the time period provided by Sec. 1.78(a)(2)(ii), the 
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed copending nonprovisional application or international application 
designating the United States may be accepted if the applicant files a 
petition to accept the delayed claim that is accompanied by: (1) The 
surcharge set forth in Sec. 1.17(t); and (2) a statement that the 
entire delay between the date the claim was due under 
Sec. 1.78(a)(2)(ii) and the date the claim was filed was unintentional.
    If an applicant includes a claim to the benefit of a prior-filed 
nonprovisional application or international application designating the 
United States elsewhere in the application but not in the manner 
specified in Sec. 1.78(a)(2)(i) (e.g., if the claim is included in an 
unexecuted oath or declaration or the application transmittal letter) 
within the time period set forth in Sec. 1.78(a)(2)(ii), the Office 
will not require a petition (and the surcharge under Sec. 1.17(t)) to 
correct the claim if the information concerning the claim contained 
elsewhere in the application was recognized by the Office as shown by 
its inclusion on a filing receipt. This is because the application will 
have been scheduled for publication on the basis of the information 
concerning the claim contained elsewhere in the application within the 
time period set forth in Sec. 1.78(a)(2)(ii). If, however, an applicant 
includes such a claim elsewhere in the application and not in the 
manner specified in Sec. 1.78(a)(2)(i), and the claim is not recognized 
by the Office as shown by its absence on a filing receipt (e.g., if the 
claim is in a part of the application where priority or continuity 
claims are not conventionally located, such as the body of the 
specification), the Office will require a petition (and the surcharge 
under Sec. 1.17(t)) to correct such claim. This is because the 
application will not have been scheduled for publication on the basis 
of the information concerning the claim contained elsewhere in the 
application.
    Section 1.78(a)(4) is proposed to be amended to make its provisions 
applicable to international applications designating the United States 
of America.
    Section 1.78(a)(5) is proposed to be amended to place its 
provisions in separate paragraphs (a)(5)(i) through (a)(5)(iv) for 
clarity. Section 1.78(a)(5) is also proposed to be amended to: (1) Make 
its provisions applicable to international applications designating the 
United States of America; (2) set forth the time period for making a 
claim (providing the specific reference required by Sec. 1.78(a)(5)) 
for both an application filed under 35 U.S.C. 111(a) and an 
international application designating the United States of America 
which entered the national stage after compliance with 35 U.S.C. 371; 
and (3) change the time period and requirements for filing an English 
language translation of a non-English language provisional application.
    Specifically, if the later-filed application is an application 
filed under 35 U.S.C. 111(a), the specific reference required by 
Sec. 1.78(a)(5)(i) must be submitted within the later of four months 
from the actual filing date of the later-filed application or sixteen 
months from the filing date of the prior application. If, however, the 
later-filed application is a nonprovisional application which entered 
the national stage from an international application after compliance 
with 35 U.S.C. 371, the specific reference required by 
Sec. 1.78(a)(5)(i) must be submitted within the later of four months 
from the date on which the national stage commenced under 35 U.S.C. 
371(b) or (f) or sixteen months from the filing date of the prior 
application. This reference must, in any event, be submitted during the 
pendency of the later-filed application. The provisions relating to an 
application filed under 35 U.S.C. 111(a) do not change the time period 
for submitting a specific reference in such applications. The 
provisions relating to an international application designating the 
United States of America which entered the national stage after 
compliance with 35 U.S.C. 371, however, do change the time period for 
submitting a specific reference in such applications in that the four-
month period is measured from the date on which the national stage 
commenced under 35 U.S.C. 371(b) or (f) rather than the actual filing 
date of the international application under 35 U.S.C. 363.
    Section 1.78(a)(5) is also proposed to be amended to provide that 
if a provisional application was filed in a language other than English 
and an English-language translation of the provisional application and 
a statement that the translation is accurate were not previously filed 
in the provisional application or the nonprovisional application, 
applicant will be notified and given a period of time within which to 
file an English-language translation of the non-English-language 
provisional application and a statement that the translation is 
accurate to avoid abandonment of the nonprovisional application. Thus, 
Sec. 1.78(a)(5) will no longer provide that if a provisional 
application was filed in a language other than English, a claim to the 
benefit of such provisional application is waived if an English 
language translation of a non-English language provisional application 
is not submitted within the later of four months from the actual filing 
date of the nonprovisional application or sixteen months from the 
filing date of the prior provisional application. In the event that the 
Office schedules for publication an application that claims the benefit 
of a provisional application filed in a language other than English 
without issuing a notice requiring the applicant to file English-
language translation of the non-English-language provisional 
application, the applicant should file the English-language translation 
of the non-English-language provisional application and a statement 
that the translation is accurate before the scheduled publication date. 
This change to Sec. 1.78(a)(5) will also allow applicant to file an 
English-language translation of a non-English language provisional 
application either in the provisional application or in each 
nonprovisional application that claims

[[Page 46412]]

the benefit of the provisional application.
    Section 1.78(a)(5) is also proposed to be amended to delete the 
term ``copending,'' as 35 U.S.C. 119(e) no longer requires copendency 
between a nonprovisional application and a provisional application for 
the nonprovisional application to claim the benefit of the filing date 
of the provisional application under 35 U.S.C. 119(e). 35 U.S.C. 
119(e)(1) continues to require that any nonprovisional application 
claiming the benefit of a provisional application be filed within 
twelve months after the filing date of the provisional application (or 
the next succeeding business day if the date that is twelve months 
after the filing date of the provisional application falls on a 
Saturday, Sunday, or Federal holiday). See Request for Continued 
Examination Practice and Changes to Provisional Application Practice, 
65 FR 50092, 50098 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13, 18-
19 (Sept. 5, 2000) (final rule) (comment 2 and response).
    Section 1.78(a)(6) provides that if the reference required by 35 
U.S.C. 119(e) and paragraph (a)(5) of this section is presented in an 
application after the time period provided by Sec. 1.78(a)(5)(ii), the 
claim under 35 U.S.C. 119(e) for the benefit of a prior-filed 
provisional application may be accepted if the applicant files a 
petition to accept the delayed claim that is accompanied by: (1) The 
surcharge set forth in Sec. 1.17(t); and (2) a statement that the 
entire delay between the date the claim was due under 
Sec. 1.78(a)(5)(ii) and the date the claim was filed was unintentional.
    If an applicant includes a claim to the benefit of a prior-filed 
provisional application elsewhere in the application but not in the 
manner specified in Sec. 1.78(a)(5)(i) (e.g., if the claim is included 
in an unexecuted oath or declaration or the application transmittal 
letter) within the time period set forth in Sec. 1.78(a)(5)(ii), the 
Office will not require a petition (and the surcharge under 
Sec. 1.17(t)) to correct the claim if the information concerning the 
claim contained elsewhere in the application was recognized by the 
Office as shown by its inclusion on a filing receipt. This is because 
the application will have been scheduled for publication on the basis 
of the information concerning the claim contained elsewhere in the 
application within the time period set forth in Sec. 1.78(a)(5)(ii). 
If, however, an applicant includes such a claim elsewhere in the 
application and not in the manner specified in Sec. 1.78(a)(5)(i), and 
the claim is not recognized by the Office as shown by its absence on a 
filing receipt (e.g., if the claim is in a part of the application 
where priority or continuity claims are not conventionally located, 
such as the body of the specification), the Office will require a 
petition (and the surcharge under Sec. 1.17(t)) to correct such claim. 
This is because the application will not have been scheduled for 
publication on the basis of the information concerning the claim 
contained elsewhere in the application.

Section 1.311

    Section 1.311(a) is proposed to be amended to correct the 
parenthetical reference to ``(Sec. 1.211(f))'' to ``(Sec. 1.211(e)).''

Section 1.434

    Section 1.434(d)(2) is proposed to be amended by deleting the term 
``copending,'' as the prior national application may be a provisional 
application and 35 U.S.C. 119(e) no longer requires copendency for a 
nonprovisional application to claim the benefit of the filing date of a 
provisional application under 35 U.S.C. 119(e).

Section 1.491

    Section 1.491 is proposed to be 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, 
Sec. 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.
    On August 30, 2001, the Office published a temporary rule that 
amends Sec. 1.491 to define both commencement of the national stage and 
entry into the national stage in the manner discussed above. This 
notice proposes to make the amendment to Sec. 1.491 in that temporary 
rule permanent.

Classification

Administrative Procedure Act

    The changes proposed in this notice concern only the procedures for 
filing claims for the benefit of a prior-filed application under 35 
U.S.C. 119(e) or 120, the procedures for filing an English language 
translation of a non-English language provisional application, and 
technical corrections to the provisions of Secs. 1.78, 1.311, 1.434, 
and 1.491. Because all of the changes relate to Office practices and 
procedures, prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553(b)(A) (or any other law). However, 
because the Office desires the benefit of public comment on this topic, 
the Office is voluntarily accepting comments.

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 notice 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 
collections of information involved in this notice have been reviewed 
and previously approved by OMB under the following control numbers: 
0651-0021, 0651-0031, 0651-0032, and 0651-0033. The Office is not 
resubmitting information collection packages to OMB for its review and 
approval because the changes in this notice do not affect the 
information collection requirements associated with the information 
collections under these OMB control numbers.
    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

[[Page 46413]]

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: Regular submission (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.
    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: Regular submission (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: Regular submission (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.
    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
    Type of Review: Regular submission (approved through September of 
2000).
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions and Federal 
Government.
    Estimated Number of Respondents: 135,250.
    Estimated Time Per Response: 0.325 hour.
    Estimated Total Annual Burden Hours: 43,893 hours.
    Needs and Uses: This collection of information is required to 
administer the patent laws pursuant to title 35, U.S.C., concerning the 
issuance of patents and related actions including correcting errors in 
printed patents, refiling of patent applications, requesting 
reexamination of a patent, and requesting a reissue patent to correct 
an error in a patent. The affected public includes any individual or 
institution whose application for a patent has been allowed or who 
takes action as covered by the applicable rules.
    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 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.

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 1.78 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.78  Claiming benefit of earlier filing date and cross references 
to other applications.

    (a)(1) A nonprovisional application or international application 
designating the United States of America may claim an invention 
disclosed in one or more prior-filed copending nonprovisional 
applications or copending international applications designating the 
United States of America. In order for an application to claim the 
benefit of a prior-filed copending nonprovisional application or 
copending international application designating the United States of 
America, each prior application must name as an inventor at least one 
inventor named in the later-filed application and disclose the named 
inventor's invention claimed in at least one claim of the later-filed 
application in the manner provided by the first paragraph of 35 U.S.C. 
112. In addition, each prior application must be:
    (i) An international application entitled to a filing date in 
accordance

[[Page 46414]]

with PCT Article 11 and designating the United States of America; or
    (ii) Complete as set forth in Sec. 1.51(b); or
    (iii) Entitled to a filing date as set forth in Sec. 1.53(b) or 
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16; 
or
    (iv) Entitled to a filing date as set forth in Sec. 1.53(b) and 
have paid therein the processing and retention fee set forth in 
Sec. 1.21(l) within the time period set forth in Sec. 1.53(f).
    (2)(i) Except for a continued prosecution application filed under 
Sec. 1.53(d), any nonprovisional application or international 
application designating the United States of America claiming the 
benefit of one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America must contain or be amended to contain a reference to 
each such prior application, identifying it by application number 
(consisting of the series code and serial number) or international 
application number and international filing date and indicating the 
relationship of the applications. Cross references to other related 
applications may be made when appropriate (see Sec. 1.14).
    (ii) This reference must be submitted during the pendency of the 
later-filed application. If the later-filed application is an 
application filed under 35 U.S.C. 111(a), this reference must also be 
submitted during the pendency of the later-filed application and within 
the later of four months from the actual filing date of the later-filed 
application or sixteen months from the filing date of the prior 
application. If the later-filed application is a nonprovisional 
application which entered the national stage from an international 
application after compliance with 35 U.S.C. 371, this reference must 
also be submitted during the pendency of the later-filed application 
and within the later of four months from the date on which the national 
stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from 
the filing date of the prior application. These time periods are not 
extendable. Except as provided in paragraph (a)(3) of this section, the 
failure to timely submit the reference required by 35 U.S.C. 120 and 
paragraph (a)(2)(i) of this section is considered a waiver of any 
benefit under 35 U.S.C. 120, 121, or 365(c) to such prior application. 
The time periods set forth in this paragraph do not apply to an 
application for a design patent.
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec. 1.76) or the specification must 
contain or be amended to contain such reference in the first sentence 
following the title.
    (iv) The request for a continued prosecution application under 
Sec. 1.53(d) is the specific reference required by 35 U.S.C. 120 to the 
prior application. The identification of an application by application 
number under this section is the identification of every application 
assigned that application number necessary for a specific reference 
required by 35 U.S.C. 120 to every such application assigned that 
application number.
    (3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) 
of this section is presented in an application after the time period 
provided by paragraph (a)(2)(ii) of this section, the claim under 35 
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed copending 
nonprovisional application or international application designating the 
United States of America may be accepted if the reference identifying 
the prior application by application number or international 
application number and international filing date was unintentionally 
delayed. A petition to accept an unintentionally delayed claim under 35 
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application 
must be accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(2)(ii) of this section and the date the 
claim was filed was unintentional. The Commissioner may require 
additional information where there is a question whether the delay was 
unintentional.
    (4) A nonprovisional application other than for a design patent or 
an international application designating the United States of America 
may claim an invention disclosed in one or more prior-filed provisional 
applications. In order for an application to claim the benefit of one 
or more prior-filed provisional applications, each prior provisional 
application must name as an inventor at least one inventor named in the 
later-filed application and disclose the named inventor's invention 
claimed in at least one claim of the later-filed application in the 
manner provided by the first paragraph of 35 U.S.C. 112. In addition, 
each prior provisional application must be entitled to a filing date as 
set forth in Sec. 1.53(c), and the basic filing fee set forth in 
Sec. 1.16(k) must be paid within the time period set forth in 
Sec. 1.53(g).
    (5)(i) Any nonprovisional application or international application 
designating the United States of America claiming the benefit of one or 
more prior-filed provisional applications must contain or be amended to 
contain a reference to each such prior provisional application, 
identifying it by the provisional application number (consisting of 
series code and serial number).
    (ii) This reference must be submitted during the pendency of the 
later-filed application. If the later-filed application is an 
application filed under 35 U.S.C. 111(a), this reference must also be 
submitted within the later of four months from the actual filing date 
of the later-filed application or sixteen months from the filing date 
of the prior provisional application. If the later-filed application is 
a nonprovisional application which entered the national stage from an 
international application after compliance with 35 U.S.C. 371, this 
reference must also be submitted and within the later of four months 
from the date on which the national stage commenced under 35 U.S.C. 
371(b) or (f) or sixteen months from the filing date of the prior 
provisional application. These time periods are not extendable. Except 
as provided in paragraph (a)(6) of this section, the failure to timely 
submit the reference is considered a waiver of any benefit under 35 
U.S.C. 119(e) to such prior provisional application.
    (iii) If the later-filed application is a nonprovisional 
application, the reference required by this paragraph must be included 
in an application data sheet (Sec. 1.76) or the specification must 
contain or be amended to contain such reference in the first sentence 
following the title.
    (iv) If the provisional application was filed in a language other 
than English and an English-language translation of the provisional 
application and a statement that the translation is accurate were not 
previously filed in the provisional application or the nonprovisional 
application, applicant will be notified and given a period of time 
within which to file an English-language translation of the non-
English-language provisional application and a statement that the 
translation is accurate to avoid abandonment of the nonprovisional 
application.
    (6) If the reference required by 35 U.S.C. 119(e) and paragraph 
(a)(5) of this section is presented in an application after the time 
period provided by paragraph (a)(5)(ii) of this section, the claim 
under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional 
application may be accepted during the pendency of the later-filed

[[Page 46415]]

application if the reference identifying the prior application by 
provisional application number was unintentionally delayed. A petition 
to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for 
the benefit of a prior-filed provisional application must be 
accompanied by:
    (i) The surcharge set forth in Sec. 1.17(t); and
    (ii) A statement that the entire delay between the date the claim 
was due under paragraph (a)(5)(ii) of this section and the date the 
claim was filed was unintentional. The Commissioner may require 
additional information where there is a question whether the delay was 
unintentional.
* * * * *
    3. Section 1.311 is amended by revising paragraph (a) to read as 
follows:


Sec. 1.311  Notice of allowance.

    (a) If, on examination, it appears that the applicant is entitled 
to a patent under the law, a notice of allowance will be sent to the 
applicant at the correspondence address indicated in Sec. 1.33. The 
notice of allowance shall specify a sum constituting the issue fee 
which must be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. The sum 
specified in the notice of allowance may also include the publication 
fee, in which case the issue fee and publication fee (Sec. 1.211(e)) 
must both be paid within three months from the date of mailing of the 
notice of allowance to avoid abandonment of the application. This 
three-month period is not extendable.
* * * * *
    4. Section 1.434 is amended by revising paragraph (d)(2) to read as 
follows:


Sec. 1.434  The request.

* * * * *
    (d) * * *
    (2) A reference to any prior-filed national application or 
international application designating the United States of America, if 
the benefit of the filing date for the prior-filed application is to be 
claimed.
    5. 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 29, 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. 01-22273 Filed 9-4-01; 8:45 am]
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