[Federal Register Volume 68, Number 40 (Friday, February 28, 2003)]
[Rules and Regulations]
[Pages 9551-9553]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-4428]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 4

RIN 0651-AB12


Complaints Regarding Invention Promoters

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO) has 
added rules of practice to implement the USPTO's procedures for 
acceptance of complaints under the Inventors' Rights Act of 1999 (the 
``Act''). The Act requires the USPTO to provide a forum for the 
publication of complaints concerning invention promoters. The USPTO 
provided the public with an opportunity to comment on the new rules, 
received comments, and considered comments in drafting this final rule.

DATES: Effective Date: February 28, 2003.

FOR FURTHER INFORMATION CONTACT: Office of Commissioner for Patents, 
Ms. Cathie Kirik, (703) 305-8800 or [email protected].

SUPPLEMENTARY INFORMATION: An interim final rule and request for 
comments was published in the Federal Register (65 FR 3127) on January 
20, 2000. That interim rule implemented regulations 37 CFR part 4, 
concerning complaints regarding invention promoters.
    Three (3) individuals, three (3) law firms, and two (2) 
organizations submitted written comments regarding the proposal to 
implement Part 4.

Section 4.2: Definitions Section

    With regard to the definition of ``invention promoter'' in Sec.  
4.2(a), Commentator wants to know whether the Act is being interpreted 
to end protection once a regular application is filed under the 
exclusion in Sec.  4.2(a)(3). Commentator believes any business that 
collects compensation for doing ``an evaluation to determine commercial 
potential of * * * patent application'' should be included within the 
scope of the Act.
    Response: The rule and the Act contain an identical definition of 
``invention promoter.''
    With regard to Sec.  4.2(d), Commentator believes the use of the 
term ``procurement'' could be confusing because it is often used as a 
synonym for ``acquire'' and suggests replacing the term with ``locate 
or identify'' or ``procurement of an arrangement or contract.''
    Response: This definition of ``invention promotion services'' is 
identical to that contained in the Act. The definition is unambiguous.

Section 4.3: Submitting Complaints Section

    Since Sec.  4.3(b)(5) \1\ requires that the complaint identify the 
name of the mass media in which the invention promoter advertises, 
Commentators believe that the address of the mass media entity should 
also be included in the complaint so that complainant or USPTO could 
send a copy of the complaint and reply to the media entity.
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    \1\ It appears that Commentators mistakenly refer to Sec.  
4.3(a)(5). The correct citation is Sec.  4.3(b)(5).
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    Response: This is an additional requirement beyond the requirements 
of the Act. See additional comment below under section 4.5.
    Commentator suggests a ``Sunset provision'' which provides that 
complaints will not be ``made public after three years from the date 
first received.'' Commentator believes this is necessary in order to 
preclude stale complaints and complaints that do not

[[Page 9552]]

take into account a company's modified and improved current practices.
    Response: It is the USPTO's intent that complaints will be removed 
from its Internet home page three (3) years from the date of their 
publication. However, to the extent that the USPTO is required to make 
such documents publicly available under other statutory authority, the 
documents shall be retained.

Section 4.4: Invention Promotion Reply Section

    Commentator suggests extending the proposed thirty (30) day 
response time to sixty (60) days to allow invention promoters 
sufficient time to investigate and respond to a complaint.
    Response: Presently invention promoters respond to letters of 
complaint within the thirty (30) day time frame and additional time 
does not appear to be necessary. A response can include a statement 
that further investigation into the complaint is being done by the 
invention promoter. A second response will be accepted and published 
upon receipt as is provided in this section of the proposed rule. 
Furthermore, the USPTO will publish an invention promoter's response, 
even if it is received after the 30-day response period.

Section 4.5: Notice of Publication Section

    Commentator feels that the word ``complaint'' at the end of the 
sentence, ``The invention promoter will be given 30 days from such 
notice to submit a reply to the complaint'' should read ``notice which 
reply includes name and address information where the complaint can be 
served by mail.''
    Response: The final rule is modified because only a ``Notice of 
Complaint'' will have been reviewed by the invention promoter.
    Commentators believe the Office's Internet home page should be the 
primary source of publication of the Notice of Complaint because 
inventors and the public at large do not have access to the Official 
Gazette or Federal Register.
    Response: Change will be made in the final rule to specify that 
Notice of Complaints will be posted on the USPTO Internet home page 
only: http://www.uspto.gov.
    In Commentator's experience only a small percentage of inventors 
use the Internet and, thus, publication of complaint and reply should 
be by paper publication, i.e., the Official Gazette or Federal 
Register.
    Response: With today's knowledge-based economy and the move toward 
e-business it would be ineffective to use the print media to publish 
the complaints. By using USPTO's Internet web page, no further change 
to the rules would be needed in the future.
    Commentators believe that the Office should forward a copy of a 
Notice of Complaint to the Federal Communications Commission (``FCC'') 
since the complaint discloses the name of the mass media entity that 
ran the advertisement for the invention promoter.
    Response: Name of mass media may not reflect actual vendor or 
station where advertisements were placed. The FCC may access the Notice 
of Complaints through publicly available means.
    With regard to the language: ``If the Office does not receive a 
reply from the invention promoter within 30 days, the complaint alone 
will become publicly available.'' Commentators believe that publicly 
available should include (1) publication on the Office's Internet home 
page, (2) sending a copy of the complaint and reply to the mass media 
entity, and (3) sending a copy of the complaint to the FCC. 
Commentators assert that mass media entities cannot do anything unless 
complaints are brought to their attention, and if so, these entities 
will take steps to check the credibility of the invention promoters.
    Response: For reasons discussed above, complaints will be published 
on the USPTO Internet home page.
    Commentator believes that to require invention promoters to monitor 
the Official Gazette, Federal Register, or Office's Internet home page 
for notice of complaints places an unfair burden on invention promoters 
in situations where a complaint has been returned undeliverable. 
Commentator does not, however, offer an alternative notice scheme.
    Response: The source of publication will be the USPTO's Internet 
home page, thereby making the Notices of Complaint searchable and 
available at the earliest possible date.

Section 4.6: Attorneys and Agents Section

    Commentator believes that Sec.  4.6 (in conjunction with Sec.  
4.3(c)) should be modified so that complaints are not required or 
permitted to include information about patent attorneys, unless the 
attorneys are engaged in invention promotion services, and these 
services are the basis for the complaint. Without this modification, 
commentator believes the Office is soliciting complaints concerning 
attorneys, regardless of whether the attorney's work is the basis for 
complaint. Commentator asserts that it is not improper or unethical for 
attorneys to accept referrals from invention promoters and that 
attorney complaints should be handled by the Office of Enrollment and 
Discipline (OED).
    Response: The Act provides which attorneys or agents may be 
identified in a complaint. Any other complaint specifically addressing 
an attorney or agent is forwarded to OED or returned to complainant. A 
preliminary review of the complaint is conducted to determine the 
proper place for the complaint prior to any complaints being forwarded 
to an invention promoter, OED or returned to the complainant.

Paperwork Reduction Act

    Commentators state that if their suggestions were adopted, they 
would ``enhance the quality, utility, and clarity of information to be 
collected.''
    Response: See above comments.

Rulemaking Requirements

    As prior notice and opportunity for public comment were not 
required pursuant to 5 U.S.C. 553(b)(3)(A), or any other law, the 
analytical requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 
et seq., are inapplicable.
    This rule does not contain policies with federalism implications 
sufficient to warrant preparation of a Federalism Assessment under 
Executive Order 13132.
    This rule has been determined to be not significant for purposes of 
Executive Order 12866.
    This rule contains a collection of information requirement subject 
to the Paperwork Reduction Act (PRA) and which OMB has approved under 
control number 0651-0044. Public reporting burden for this collection 
is estimated to average 15 minutes per response, including the time for 
reviewing instructions, gathering information, and completing and 
reviewing the collection of information.
    Notwithstanding any other provision of the law, no person is 
required to respond to, nor shall any person be subject to a penalty 
for failure to comply with, a collection of information subject to the 
requirements of the PRA, unless that collection of information displays 
a currently valid OMB Control Number.

List of Subjects in 37 CFR Part 4

    Administrative practice and procedure, Inventions and patents, 
Reporting and recordkeeping requirements.

    Accordingly, the USPTO adopts the interim rule promulgating 37 CFR 
part 4 that was published in the Federal

[[Page 9553]]

Register at 65 FR 3127, January 20, 2000, as a final rule with the 
following change:
    1. The authority citation for 37 CFR part 4 continues to read as 
follows:

PART 4--[AMENDED]

    Authority: 35 U.S.C. 6 and 297.

    2. Section 4.5 is revised to read as follows:


Sec.  4.5  Notice by publication.

    If the copy of the complaint that is mailed to the invention 
promoter is returned undelivered, then the USPTO will primarily publish 
a Notice of Complaint Received on the USPTO's Internet home page at 
http://www.uspto.gov. Only where the USPTO's Web site is unavailable 
for publication will the USPTO publish the Notice of Complaint in the 
Official Gazette and/or the Federal Register. The invention promoter 
will be given 30 days from such notice to submit a reply to the Notice 
of Complaint. If the USPTO does not receive a reply from the invention 
promoter within 30 days, the complaint alone will become publicly 
available.
* * * * *

    Dated: February 14, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-4428 Filed 2-27-03; 8:45 am]
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