[Federal Register Volume 68, Number 104 (Friday, May 30, 2003)]
[Proposed Rules]
[Pages 32441-32448]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-13533]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. 2003-P-021]
RIN 0651-AB61


January 2004 Revision of Patent Cooperation Treaty Application 
Procedure

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to amend the rules of practice to conform them to certain 
amendments made to the Regulations under the Patent Cooperation Treaty 
(PCT) that will take effect on January 1, 2004. These amendments will 
result in the addition of a written opinion in PCT chapter I, as well 
as a simplification of PCT designations and the PCT fee structure. In 
addition, the Office is proposing to adjust the transmittal, search, 
and international preliminary examination fees for international 
applications filed under the PCT to be more closely aligned with the 
actual average costs of processing a PCT application and conducting a 
PCT search and international preliminary examination under the new 
process.

Comment Deadline Date: To be ensured of consideration, written comments 
must be received on or before June 30, 2003. No public hearing will be 
held.

ADDRESSES: Comments should be sent by electronic mail message via the 
Internet addressed to [email protected]. Comments may also be 
submitted by mail addressed to: Mail Stop Comments-Patents, 
Commissioner for Patents, PO Box 1450, Alexandria, VA, 22313-1450, or 
by facsimile to (703) 308-6459, marked to the attention of Mr. Richard 
Cole. 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 would appreciate the comments to be 
electronically filed on a DOS formatted 3\1/2\ inch disk with a paper 
copy of the comments.
    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: Richard R. Cole, Legal Examiner, 
Office of PCT Legal Administration (OPCTLA) directly by telephone at 
(703) 305-6639, or by facsimile at (703) 308-6459.

SUPPLEMENTARY INFORMATION: During the September-October 2002 meeting of 
the Governing Bodies of the World Intellectual Property Organization 
(WIPO), the PCT Assembly adopted various amendments to the Regulations 
under the PCT that enter into force on January 1, 2004. The amended PCT 
Regulations were published in the PCT Gazette of December 5, 2002 (49/
2002), in section IV, at pages 25004-25061. The purposes of these 
amendments are to: (1) Improve coordination of international search 
(chapter I of the PCT) and international preliminary examination 
(chapter II of the PCT) through the provision of an enhanced 
international search and preliminary examination system; (2) simplify 
the PCT by changing the concept and operation of the designation system 
and the fee system; and (3) simplify signature and other filing 
requirements.
    Enhanced International Search and Preliminary Examination System: 
Under the enhanced international search and preliminary examination 
system, the written opinion currently established during the chapter II 
procedure by the International Preliminary Examining Authority (IPEA) 
has been added to the chapter I procedure. Accordingly, the 
International Searching Authority (ISA) will be responsible for 
establishing a preliminary and non-binding written opinion on whether 
the claimed invention appears to be novel, to involve an inventive step 
and to be industrially applicable. In the event that a Demand for 
international preliminary examination is timely filed by applicant 
without a PCT Article 34 amendment,

[[Page 32442]]

the written opinion of the ISA will become the written opinion of the 
IPEA. If a Demand is not timely filed, the written opinion of the ISA 
will form the basis for the issuance, by the International Bureau (IB) 
on behalf of the ISA, of an ``International Preliminary Report on 
Patentability (chapter I of the Patent Cooperation Treaty)'' 
(``IPRP''), which will be communicated to all designated Offices and 
made available for public inspection after the expiration of 30 months 
from the priority date.
    This revised system will result in a slight increase in the 
workload on the ISA, but should result in a substantial decrease in the 
workload on the IPEA. In addition, smaller Offices will benefit by the 
availability of an international preliminary report on patentability 
equivalent to the chapter II international preliminary examination 
report (i.e., the IPRP) even if no Demand has been filed.
    Under the revised system, the time limit for filing a Demand for 
international preliminary examination has changed. Specifically, the 
Demand must be filed within the later of: (1) Three months from 
issuance of the international search report and the written opinion of 
the ISA (or, if a search cannot be made, of the declaration under 
Article 17.2(a)); or (2) 22 months from the priority date. See PCT rule 
54bis.1(a). Any Demand made after the expiration of this time limit 
will be considered as if it had not been submitted. See PCT rule 
54bis.1(b). Any arguments or amendments in response to the written 
opinion of the ISA must be submitted within the time limit for filing 
the Demand to ensure consideration by the IPEA. It is noted that 
applicants may still desire to file the Demand prior to the expiration 
of 19 months of the priority date in order to delay entry into the 
national stage for those few remaining Contracting States that have 
taken a reservation to the 30-month time limit in Article 22(1).
    As in current PCT chapter II procedures, the IPEA will still 
establish an international preliminary examination report, though the 
report will now bear the title ``International Preliminary Report on 
Patentability (Chapter II of the Patent Cooperation Treaty).'' This 
report will be established within the applicable time limit under PCT 
rule 69 (usually within 28 months from the priority date).
    Under the revised system, payment of the international preliminary 
examination fee and handling fee is not required until the later of one 
month from the filing of the Demand or 22 months from the priority 
date. See PCT rules 57.3(a) and 58.1(b). However, where the IPEA and 
the ISA are the same and the IPEA wishes to start examination at the 
same time as the international search, the IPEA may require that the 
examination and handling fees be paid within one month of an invitation 
by the IPEA to pay such fees. See PCT rule 57.3(c).
    Automatic Indication of All Designations Possible under the PCT; 
Relaxed Signature and other Filing Requirements; Simplified Fee System: 
Under the amendments to the Regulations of the PCT, upon filing an 
international application, applicant will obtain automatic and all-
inclusive coverage of all designations available under the PCT, 
including all kinds of protection as well as both national and regional 
patent protection. See PCT rule 4.9. Similarly, the mere filing of a 
Demand will constitute the election of all designated States. See PCT 
rule 53.7. Thus, applicants need not, at the time of filing the 
international application, specifically designate individual 
Contracting States, or choose certain kinds of protection or indicate 
expressly whether national or regional protection is sought. Such 
matters will be resolved in the national phase.
    This automatic and all-inclusive designation system overcomes a 
current pitfall for applicants who have inadvertently omitted specific 
designations upon filing the international application and such 
designations were not, or could not be, timely confirmed under PCT rule 
4.9(c). For example, if the original international application papers 
did not contain at least one designation, an international filing date 
could not be accorded as of the initial receipt date of the application 
papers. See PCT Article 11(1)(iii)(b). Furthermore, even in those 
applications containing at least one designation, PCT rule 4.9(b) 
required that any additional States and/or additional kinds of 
protection be confirmed by the submission of a written notice, 
accompanied by payment of the appropriate confirmation fee, within a 
relatively short time period (i.e., 15 months from the priority date). 
This time period was frequently overlooked by applicants. Under the new 
system of automatic designations/elections, the current procedures for 
precautionary designations and later elections become unnecessary and 
have been eliminated from the PCT Rules. This will reduce the workload 
on the PCT Receiving Office (RO) and IPEA by eliminating processing of 
precautionary designations and later elections, as well as petitions 
relating to omitted designations.
    As a further benefit of the automatic designation system is the 
simplification of the PCT fee system. Under the current PCT fee 
structure, both a ``basic'' fee and a ``designation'' fee are required. 
Moreover, these fees are due at different times in different amounts 
depending on when they are paid. Under the new system, these fees have 
been eliminated in favor of a single international filing fee 
(comprised of two fee components, a first fee component for up to 30 
sheets of paper and a second fee component for sheets of paper in 
excess of 30) due at one time.
    As a consequence of the automatic designation system, applicant/
inventors will have to be named in the international application. To 
alleviate hardships with regard to obtaining signatures of all the 
applicants named on the Request, PCT rule 26 has been amended to 
provide that, for purposes of Article 14(a)(i), the international 
application will be considered as signed in accordance with the PCT 
Regulations if the Request has been signed by at least one applicant. 
See PCT rule 26.2bis(a). In addition, if there is more than one 
applicant, PCT rule 26.2bis(b) provides that, for purposes of PCT 
Article 14(1)(a)(ii), it is sufficient that the identifying information 
(i.e., address, residence and nationality) be provided for only one 
applicant who is entitled under PCT rule 19.1 to file the international 
application with the RO. This means that for purposes of filing an 
international application with the United States Receiving Office (RO/
US) as the competent RO, this information must be provided with respect 
to at least one applicant who is a citizen or resident of the United 
States. Notwithstanding the amendments to PCT rule 26, a designated/
elected Office may still require applicants to furnish, during the 
national stage, confirmation of the international application by the 
signature of any applicant who has not signed the Request and any 
missing identifying information. See PCT rule 51bis.1(a).
    PCT rule 90.4 has been revised to permit the RO, ISA, or IPEA to 
waive the requirement for a power of attorney, except in instances of 
applicant initiated withdrawals under PCT rule 90bis.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, part 1, is proposed to 
be amended as follows:
    Section 1.14: Section 1.14(i)(1)(ii) is proposed to be amended to 
exclude members of the public from obtaining a copy of the written 
opinion of the United States International Searching

[[Page 32443]]

Authority (ISA/US) until the expiration of thirty months from the 
priority date of the international application. Under PCT rule 44ter.1 
(as amended), the ISA is not permitted to allow access to the written 
opinion of the ISA before the expiration of 30 months from the priority 
date unless authorized by the applicant.
    Section 1.413: Section 1.413(c) is proposed to be amended to 
reflect the additional major function of the ISA/US of preparing and 
transmitting written opinions.
    Section 1.421: Section 1.421(b) is proposed to be amended to remove 
reference to Sec.  1.425, which will be removed. Under PCT rule 
26.2bis(a) (as amended), the international application will be 
considered to satisfy the signature requirement for purposes of PCT 
Article 14(1)(a)(i) if the request is signed by at least one applicant 
(except that all of the applicants' signatures will still be required 
for withdrawals, see discussion of Sec.  1.421(g)). Accordingly, the 
current requirement in Sec.  1.425 that the failure of an inventor to 
sign the request in an international application designating the United 
States will only be excused where the inventor could not be found or 
reached after diligent effort or refused to sign the request will no 
longer be applicable. Section 1.421(b) is also proposed to be amended 
to include the requirement of Sec.  1.424 that joint inventors must 
jointly apply for an international application. Section 1.424 is 
proposed to be removed (see discussion of Sec.  1.424).
    Section 1.421(c) is proposed to be amended as a consequence of the 
change to PCT rule 4.9, as the United States will always be designated 
upon filing of an international application.
    Section 1.421(d) is proposed to be amended to reflect the change to 
PCT rule 90.4(d) permitting the RO to waive the requirement for a 
separate power of attorney.
    Section 1.421(f) is proposed to be amended to clarify that for 
purposes of requests under PCT rule 92bis to effect a change in an 
indication concerning the applicant, agent or common representative, 
such requests may be required to be signed by all applicants.
    Section 1.421(g) is proposed to be amended to remove the text of 
PCT rule 92bis as unnecessary and to clarify that for purposes of 
withdrawals under PCT rule 90bis of the international application, 
designations, priority claim, Demand or elections, the request for 
withdrawal must be signed by all applicants. Furthermore, where the 
request for withdrawal is signed by an attorney, agent, or common 
representative, a power of attorney from the applicants appointing that 
attorney, agent or common representative will be required. This 
proposed clarification is consistent with PCT rule 90.4(e) (as 
amended), which prohibits the RO, ISA, IPEA, and IB from waiving the 
separate power of attorney requirement in cases of withdrawals under 
rule 90bis. An exception to this signature requirement is made in cases 
where an inventor cannot be found or reached after diligent effort. See 
PCT rule 90bis.5(b).
    Section 1.424: This section is proposed to be removed. The 
requirement in 1.424 regarding the naming of joint inventors in 
international applications will be moved to Sec.  1.421(b). The further 
requirement relating to signature requirements of joint inventors, 
including reference to Sec.  1.425, will no longer be applicable (see 
discussion of Sec.  1.421(b)).
    Section 1.425: This section is proposed to be removed (see 
discussion of Sec.  1.421(b)).
    Section 1.431: Section 1.431(b)(3) is proposed to be amended to 
remove reference to 1.424, which is proposed to be removed. Sections 
1.431(c) and (d) are proposed to be amended to reflect the new fee 
structure applicable to international applications under revised PCT 
rule 15. Specifically, the international ``basic fee'' and 
``designation fee'' have been combined into a single ``international 
filing fee.'' In addition, the late payment fee provision of Sec.  
1.431(c)(1) is proposed to be amended as a consequence of this new fee 
structure, consistent with amended PCT rule 16bis.2.
    Section 1.432: Section 1.432 is amended to reflect the change to 
PCT rule 4.9, which provides that the filing of the request shall 
constitute: (1) The designation of all Contracting States that are 
bound by the PCT on the international filing date; (2) an indication 
that for those States for which PCT Articles 43 or 44 apply, the filing 
of the request constitutes an indication for the grant of every kind of 
protection which is available by way of the designation of that State; 
and (3) an indication that the international application is, for those 
States to which PCT Article 45(1) applies, for the grant of a regional 
patent and also, unless PCT Article 45(2) applies, a national patent. 
As a consequence of the ``automatic'' designation system provided under 
revised PCT rule 4.9, the procedure under former PCT rule 4.9(b) and 
(c) regarding confirmation of precautionary designations has been 
eliminated from that rule, and therefore, is proposed to be removed 
from Sec.  1.432.
    Section 1.434: Section 1.434(d) is proposed to be amended to remove 
the requirement that international applications designating the United 
States must include the address and the signature of the inventor 
except as provided by Sec. Sec.  1.421(d), 1.422, 1.423 and 1.425. 
Under PCT rule 26.2bis (as amended), if there is more than one 
applicant, it is sufficient that the request is signed by only one of 
them, and that the address is provided with respect to one of the 
applicants who is entitled, in accordance with rule 19.1, to file the 
international application with the RO. Section 1.434(d)(3) is also 
proposed to be redesignated as new Sec.  1.434(e) for clarity.
    Section 1.445: Section 1.445(a)(1) is proposed to be amended to 
increase the transmittal fee from $240.00 to $300.00. 35 U.S.C. 376(b) 
authorizes the Office to (inter alia) prescribe the transmittal fee, 
search fee, supplemental search fee, and preliminary examination fee 
for PCT international applications. This transmittal fee amount more 
accurately reflects the Office's actual average costs of processing 
international applications, and is also consistent with the filing fee 
for applications under 35 U.S.C. 111(a) proposed by the Office in the 
21st Century Strategic Plan (information concerning the Office's 21st 
Century Strategic Plan is available on the Office's Internet Web site 
www.uspto.gov).
    Section 1.445(a)(2)(i) is proposed to be amended to reduce the 
search fee charged by the ISA/US where there is a corresponding prior 
U.S. application filed under 35 U.S.C. 111(a) from $450 to $300. 
Section 1.445(a)(2)(i) is also proposed to be amended to clarify the 
conditions for obtaining benefit of the reduced search fee where there 
is such a prior corresponding application. Pursuant to PCT rule 42.1, 
the ISA/US has, in most cases, only three months to establish the 
International Search Report. In order for the ISA/US to be able to 
utilize the benefits of a search conducted in a prior corresponding 
application filed under 35 U.S.C. 111(a), the Office must be informed 
of the prior corresponding application in sufficient time and in such 
manner so as to permit the Office to utilize the search and examination 
conducted in the prior application. Accordingly, Sec.  1.445(a)(2)(i) 
is proposed to be amended to require applicants to timely furnish 
adequate identifying information of the prior U.S. application in order 
to qualify for the lower search fee. Specifically, applicant must 
identify the prior nonprovisional application by U.S. application 
number upon filing the international application, if such number is 
known. If

[[Page 32444]]

such number is not known, then applicant must identify the prior 
application by filing date, title, and name of applicant (and 
preferably the application docket number) so that the Office will be 
able to identify the prior application.
    Section 1.445(a)(2)(ii) is proposed to be amended to increase the 
search fee charged by the ISA/US in situations not covered by Sec.  
1.445(a)(2)(i) from $700 to $1,000. This search fee amount more 
accurately reflects the Office's actual average costs of searching 
international applications in situations not covered by Sec.  
1.445(a)(2)(i). This search fee amount is higher than the search fee 
amount for applications under 35 U.S.C. 111(a) as proposed by the 
Administration because of additional costs associated with both 
searching international applications and the preparation and 
transmittal of a written opinion of the ISA. Additionally, 
international applications must be searched (and examined) under the 
PCT unity of invention standard, where applications under 35 U.S.C. 
111(a) are searched (and examined) under the restriction standard set 
forth in 35 U.S.C. 121. Moreover, the search fee set forth in Sec.  
1.445(a)(2)(i) must also cover preparation of a written opinion (the 
``International Preliminary Report on Patentability (Chapter I of the 
Patent Cooperation Treaty)'' (``IPRP'')) under the revised system.
    In addition, the fee charged by the ISA/US for searching an 
additional invention is proposed to be increased from $210 to $1,000. 
This amount more accurately reflects the Office's actual average costs 
of searching and examining additional inventions. In this regard, it is 
noted that the search fee and the supplemental search fee charged by 
every other international searching authority are the same (except for 
the ISA/JP, which charges a supplemental search fee that is only 
slightly lower than the search fee).
    Section 1.445(a)(4) is proposed to be deleted, as confirmation fees 
will no longer be applicable.
    Section 1.445(b) is amended to reflect the combining of the basic 
and designation fees into a single ``international filing fee''.
    Section 1.455: Section 1.455(b) is proposed to be amended to be 
consistent with PCT rule 90.4 as it relates to the manner of 
appointment of agent, attorney or common representative.
    Section 1.480: Section 1.480(a) is proposed to be amended to 
reflect the new time limits in PCT rule 57.3 and 58.2 for submitting 
the handling and preliminary examination fees.
    Section 1.480(d) is proposed to be added, consistent with PCT rule 
53.7 (as amended), to provide that the filing of a Demand shall 
constitute the election of all Contracting States that are designated 
and bound by chapter II of the Treaty on the international filing date. 
Accordingly, it will no longer be necessary to specify in the Demand 
those States that are elected.
    Section 1.480(e) is proposed to be added to provide that any Demand 
filed after the expiration of the applicable time limit in PCT rule 
54bis.1(a) shall be considered as if it had not been submitted. See PCT 
rule 54bis.1(b) (as amended).
    Section 1.481: Section 1.481(a) is proposed to be amended to 
provide that the handling fee and preliminary examination fee that are 
due are those fees in effect on the date of payment of the handling and 
preliminary examination fees. See PCT rules 57.3(d) and 58.1(b).
    Section 1.482: Section 1.482(a)(1) is proposed to be amended to 
increase the preliminary examination fee charged by the IPEA/US from 
$490 to $600 if the international search fee was paid to the United 
States Patent and Trademark Office as an ISA (the preliminary 
examination fee charged by the IPEA/US if the international search fee 
was not paid to the United States Patent and Trademark Office as an ISA 
will remain at $750). This proposed increase is necessary to cover the 
additional cost associated with conducting the preliminary examination 
by the IPEA/US. Under the enhanced international search and preliminary 
examination system, a written opinion will be established by the ISA 
and sent to applicant. As a result of the change to the time limit in 
PCT Article 22(1), it is no longer necessary, in most cases, to file a 
Demand in order to delay entry into the national stage to thirty months 
from the priority date. In view of these changes, it is anticipated the 
majority of applicants filing a Demand under the revised system will no 
longer be doing so to simply further delay entry into the national 
stage, but rather will be doing so to obtain a positive ``International 
Preliminary Report on Patentability (Chapter II of the Patent 
Cooperation Treaty)'' by the IPEA. As such applicant will need to file 
one or more amendments under PCT Article 34 in the international 
application to overcome any negative determinations set forth in the 
written opinion by the ISA, the Office's costs of examining each 
international application as the US/IPEA for applicants who file a 
Demand under the revised system will increase.
    For the same reason, as well as reasons set forth with regard to 
the increase in the supplemental search fee under Sec.  1.445(a)(3), 
Sec.  1.482(a)(2) is proposed to be amended to increase the additional 
preliminary examination fee for examining additional inventions to $600 
(regardless of whether the international search fee was paid to the 
United States Patent and Trademark Office as an ISA).
    Section 1.482(b) is proposed to be amended to refer to revised PCT 
rule 57 as it relates to handling fee requirements.
    Section 1.484: Section 1.484(b) is proposed to be amended to refer 
to revised PCT rule 69.1 as to when the IPEA/US may start international 
preliminary examination. PCT rule 69.1 was revised to prohibit the IPEA 
from starting preliminary examination until it is in possession of, 
inter alia, the written opinion of the ISA. PCT rule 69.1 provides for 
two exceptions to this requirement. Both exceptions apply when the IPEA 
and the ISA for the international application are the same authority. 
The first exception permits the IPEA to start examination at the same 
time as the international search, subject to certain limitations. See 
PCT rule 69.1(b). The second exception occurs when the ISA considers 
the conditions under PCT Article 34(2)(c)(i) to (iii) to be fulfilled. 
In such cases, a written opinion by the ISA need not be established. 
See PCT rule 69.1(b)bis.
    Sections 1.484(e) through (g) are proposed to be redesignated as 
Sec. Sec.  1.484(g) through (i), respectively. Proposed Sec.  1.484(e) 
now provides, consistent with PCT rule 66.1bis, that the written 
opinion of the ISA shall be considered to be the written opinion of the 
IPEA/US.
    Proposed Sec.  1.484(f) now provides that the IPEA may establish 
further written opinions, subject to the conditions specified in Sec.  
1.484(d). Establishment of additional written opinions by the IPEA is 
provided for in PCT rule 66.4(a).
    Section 1.484(g) is proposed to be amended as a consequence of the 
amendment to Sec.  1.484(f).
    Section 1.484(h) is proposed to be amended to provide clarification 
regarding conducting personal and telephonic interviews with the 
examiner under the revised system.

Rulemaking Considerations

    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law of the United States Patent and Trademark Office has certified to 
the Chief Counsel for Advocacy of the Small Business Administration 
that changes proposed in this notice will not have a significant

[[Page 32445]]

impact on a substantial number of small entities (Regulatory 
Flexibility Act, 5 U.S.C. 605(b)). The changes proposed in this notice 
primarily implement corresponding changes required to conform United 
States rules for international applications to the amendments to the 
PCT Regulations which become effective on January 1, 2004. The 
amendments to the PCT Regulations will simplify the PCT application 
process and fee structure, and as such, will benefit all patent 
applicants (including small entities) using the PCT system.
    The proposed changes to the PCT international stage fees are to 
adjust these fees to be in alignment with the actual average costs of 
conducting a PCT search and international preliminary examination under 
the new process. This realignment does result in a proposed increase in 
the search fee for applicants who do not have a corresponding U.S. 
application under 35 U.S.C. 111(a) in which the filing fee was paid, a 
proposed increase in the supplemental search fee, and a proposed 
increase in the preliminary examination fee. However, as PCT Article 22 
was amended (effective April 1, 2002) to extend its time limit for 
entering the national stage to 30 months from the priority date of the 
PCT application, PCT applicants are no longer required to file a Demand 
for preliminary examination under PCT Article 31 (and pay the 
preliminary examination fee) in order to delay commencement of the 
national stage until 30 months from the priority date. See Revision of 
the Time Limit for National Stage Commencement in the United States for 
Patent Cooperation Treaty Applications, 67 FR 520 (Jan. 4, 2002), 1254 
Off. Gaz. Pat. Office 204 (Jan. 29, 2002). In addition, the 
International Searching Authority will now be providing a written 
opinion as part of the PCT Chapter I processing. Thus, any PCT 
applicant (including a small entity) with a corresponding U.S. 
application under 35 U.S.C. 111(a) in which the filing fee was paid 
will pay as little as $600 (a transmittal fee of $300 and a search fee 
of $300) to obtain the benefits for which it was previously necessary 
to pay $1,180 (a transmittal fee of $240 and a search fee of $450, and 
a preliminary examination fee of $490), and any PCT applicant 
(including a small entity) without a corresponding U.S. application 
under 35 U.S.C. 111(a) (e.g., an applicant with no corresponding U.S. 
application, or only a corresponding U.S. provisional application under 
35 U.S.C. 111(b)) will still pay only $1,300 (a transmittal fee of $300 
and a search fee of $1,000) to obtain the benefits for which it was 
previously necessary to pay $1,430 (a transmittal fee of $240 and a 
search fee of $700, and a preliminary examination fee of $490).
    Some PCT applicants will still file a Demand for preliminary 
examination under the revised PCT system to obtain a positive 
``International Preliminary Report on Patentability (Chapter II of the 
Patent Cooperation Treaty)'' by the IPEA and thus expedite the national 
examination process. A PCT applicant (including a small entity) without 
a corresponding U.S. application under 35 U.S.C. 111(a) who still 
wishes to file a Demand for preliminary examination under the revised 
PCT system will pay $1,900 (a transmittal fee of $300, a search fee of 
$1,000, and a preliminary examination fee of $600), where it was 
previously necessary to pay only $1,430 (a transmittal fee of $240 and 
a search fee of $700, and a preliminary examination fee of $490), for 
an increase of $470 in fees. This increase is insignificant in 
comparison to the cost (for any business entity) of obtaining foreign 
patent protection. See International Trade: Federal Action Needed to 
help Small Businesses Address Foreign Patent Challenges, GAO-02-789 at 
2 (July 2002) (noting that extending patent protection to nine other 
countries could cost between $160,000 and $330,000).
    Executive Order 13132: This rule making 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 rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: This proposed 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 collections of information involved in 
this proposed rule have been reviewed and previously approved by OMB 
under the following control numbers: 0651-0021 and 0651-0031. The 
United States Patent and Trademark Office is not resubmitting any 
information collection package to OMB for its review and approval 
because the changes in this notice do not affect the information 
collection requirements associated with the information collection 
under these OMB control numbers.
    The title, description and respondent description of the 
information collection is shown below with an estimate of the annual 
reporting burden. 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.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08A/08B/21/22/23/24/25/26/27/30/31/32/35/37/
36/42/43/61 61/PCT/62/63/64 64/PCT/67/68/91/92/96/97, PTO-2053-A/B, 
PTO-2054-A/B, PTO-2055-A/B.
    Type of Review: Currently under review.
    Affected Public: Individuals or households, State or local 
governments, farms, business or other for-profit institutions, not-for-
profit institutions, small businesses or organizations, and Federal 
government.
    Estimated Number of Respondents: 2,208,339.
    Estimated Time Per Response: 1 minute 48 seconds to 8 hours.
    Estimated Total Annual Burden Hours: 830,629 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 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

[[Page 32446]]

Sec.  3.73(b); Amendments, Petitions and their Transmittal Letters; and 
Deposit Account Order Forms.
    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 1.14 is amended by revising paragraph (i)(1)(ii) to read 
as follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (i) * * *
    (1) * * *
    (ii) With respect to the Search Copy, the U.S. acted as the 
International Searching Authority, except for the written opinion of 
the International Search Authority which shall not be available until 
the expiration of thirty months from the priority date; or
* * * * *
    3. Section 1.413 is amended by revising paragraphs (a) and (c) to 
read as follows:


Sec.  1.413  The United States International Searching Authority.

    (a) Pursuant to appointment by the Assembly, the United States 
Patent and Trademark Office will act as an International Searching 
Authority for international applications filed in the United States 
Receiving Office and in other Receiving Offices as may be agreed upon 
by the Director, in accordance with agreement between the Patent and 
Trademark Office and the International Bureau (PCT Art. 16(3)(b)).
* * * * *
    (c) The major functions of the International Searching Authority 
include:
    (1) Approving or establishing the title and abstract;
    (2) Considering the matter of unity of invention;
    (3) Conducting international and international-type searches and 
preparing international and international-type search reports (PCT Art. 
15, 17 and 18, and PCT rules 25, 33 to 45 and 47), and issuing 
declarations that no international search report will be established 
(PCT Article 17(2)(a));
    (4) Preparing written opinions of the International Searching 
Authority in accordance with PCT Rule 43bis (when necessary); and
    (5) Transmitting the international search report and the written 
opinion of the International Searching Authority to the applicant and 
the International Bureau.
    4. Section 1.421 is amended by revising paragraphs (b) through (g) 
as follows:


Sec.  1.421  Applicant for international application.

* * * * *
    (b) Although the United States Receiving Office will accept 
international applications filed by any resident or national of the 
United States of America for international processing, for the purposes 
of the designation of the United States an international application 
must be filed, and will be accepted by the Patent and Trademark Office 
for the national stage only if filed, by the inventor or as provided in 
Sec. Sec.  1.422 or 1.423. Joint inventors must jointly apply for an 
international application.
    (c) For the purposes of designations other than the United States, 
international applications may be filed by the assignee or owner.
    (d) A registered attorney or agent of the applicant may sign the 
international application Request and file the international 
application for the applicant. A separate power of attorney from each 
applicant may be required.
    (e) Any indication of different applicants for the purpose of 
different Designated Offices must be shown on the Request portion of 
the international application.
    (f) Requests for changes in the indications concerning the 
applicant, agent, or common representative of an international 
application shall be made in accordance with PCT Rule 92bis and may be 
required to be signed by all applicants.
    (g) Requests for withdrawals of the international application, 
designations, priority claims, the Demand, or elections shall be made 
in accordance with PCT Rule 90bis and must be signed by all applicants. 
A separate power of attorney from the applicants will be required for 
the purposes of any request for a withdrawal in accordance with PCT 
Rule 90bis which is not signed by all applicants. The submission of a 
separate power of attorney may be excused upon the request of another 
applicant where one or more inventors cannot be found or reached after 
diligent effort. Such a request must be accompanied by a statement 
explaining to the satisfaction of the Director the lack of the 
signature concerned.


Sec.  1.424  [Removed]

    5. Section 1.424 is removed.


Sec.  1.425  [Removed]

    6. Section 1.425 is removed.
    7. Section 1.431 is amended by revising paragraphs (b)(3), (c) and 
(d) to read as follows:


Sec.  1.431  International application requirements.

* * * * *
    (b) * * *
    (3) The international application contains at least the following 
elements (PCT Art. 11(1)(iii)):
    (i) An indication that it is intended as an international 
application (PCT Rule 4.2);
    (ii) The designation of at least one Contracting State of the 
International Patent Cooperation Union (Sec.  1.432);
    (iii) The name of the applicant, as prescribed (note Sec. Sec.  
1.421-1.423);
    (iv) A part which on the face of it appears to be a description; 
and
    (v) A part which on the face of it appears to be a claim.
    (c) Payment of the international filing fee (PCT Rule 15.2) and the 
transmittal and search fees (Sec.  1.445) may be made in full at the 
time the international application papers required by

[[Page 32447]]

paragraph (b) of this section are deposited or within one month 
thereafter. The international filing, transmittal, and search fee 
payable is the international filing, transmittal, and search fee in 
effect on the receipt date of the international application.
    (1) If the international filing, transmittal and search fees are 
not paid within one month from the date of receipt of the international 
application and prior to the sending of a notice of deficiency which 
imposes a late payment fee, applicant will be notified and given one 
month within which to pay the deficient fees plus the late payment fee. 
Subject to paragraph (c)(2) of this section, the late payment fee will 
be equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees; or
    (ii) An amount equal to the transmittal fee;
    (2) The late payment fee shall not exceed an amount equal to the 
25% of the international filing fee not taking into account any fee for 
each sheet of the international application in excess of thirty sheets 
(PCT Rule 16bis).
    (3) The one-month time limit set pursuant to paragraph (c) of this 
section to pay deficient fees may not be extended.
    (d) If the payment needed to cover the transmittal fee, the 
international filing fee, the search fee, and the late payment fee 
pursuant to paragraph (c) of this section is not timely made in 
accordance with PCT Rule 16bis.1(e), the Receiving Office will declare 
the international application withdrawn under PCT Article 14(3)(a).
    8. Section 1.432 is revised to read as follows:


Sec.  1.432  Designation of States by filing an international 
application.

    The filing of an international application request shall 
constitute:
    (a) The designation of all Contracting States that are bound by the 
Treaty on the international filing date;
    (b) An indication that the international application is, in respect 
of each designated State to which PCT Article 43 or 44 applies, for the 
grant of every kind of protection which is available by way of the 
designation of that State; and
    (c) An indication that the international application is, in respect 
of each designated State to which PCT Article 45(1) applies, for the 
grant of a regional patent and also, unless PCT Article 45(2) applies, 
a national patent.
    9. Section 1.434 is amended by revising paragraph (d) and adding 
paragraph (e) to read as follows:


Sec.  1.434  The request.

* * * * *
    (d) For the purposes of the designation of the United States of 
America, an international application shall include:
    (1) The name of the inventor; and
    (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.
    (e) An international application may also include in the Request a 
declaration of the inventors as provided for in PCT Rule 4.17(iv).
    10. Section 1.445 is revised to read follows:


Sec.  1.445  International application filing, processing and search 
fees.

    (a) The following fees and charges for international applications 
are established by the Director under the authority of 35 U.S.C. 376:
    (1) A transmittal fee (see 35 U.S.C. 361(d) and PCT Rule 14)--
$300.00
    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16):
    (i) If a corresponding prior United States National application 
filed under 35 U.S.C. 111(a) with the filing fee under Sec.  1.16(a) 
has been filed and the corresponding prior United States National 
application is identified by application number, if known, or if the 
application number is not known by the filing date, title, and name of 
applicant (and preferably the application docket number), in the 
international application or accompanying papers at the time of filing 
the international application--$300.00
    (ii) For all situations not provided for in paragraph (a)(2)(i) of 
this section--$1000.00
    (3) A supplemental search fee when required, per additional 
invention--$1000.00
    (4) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
this section for transmittal of an international application to the 
International Bureau for processing in its capacity as a Receiving 
Office (PCT Rule 19.4).
    (b) The international filing fee shall be as prescribed in PCT Rule 
15.
    11. Section 1.455 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.455  Representation in international applications.

* * * * *
    (b) Appointment of an agent, attorney or common representative (PCT 
Rule 4.8) must be effected either in the Request form, signed by 
applicant, in the Demand form, signed by applicant, or in a separate 
power of attorney submitted either to the United States Receiving 
Office or to the International Bureau.
* * * * *
    12. Section 1.480 is amended by revising paragraph (a) and adding 
paragraphs (d) and (e) to read as follows:


Sec.  1.480  Demand for international preliminary examination.

    (a) On the filing of a proper Demand in an application for which 
the United States International Preliminary Examining Authority is 
competent and for which the fees have been paid, the international 
application shall be the subject of an international preliminary 
examination. The preliminary examination fee (Sec.  1.482(a)(1)) and 
the handling fee (Sec.  1.482(b)) shall be due within the applicable 
time limit set forth in PCT Rule 57.3.
* * * * *
    (d) The filing of a Demand shall constitute the election of all 
Contracting States which are designated and are bound by Chapter II of 
the Treaty on the international filing date (PCT Rule 53.7).
    (e) Any Demand filed after the expiration of the applicable time 
limit set forth in PCT Rule 54bis.1(a) shall be considered as if it had 
not been submitted (PCT Rule 54bis.1(b)).
    13. Section 1.481 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.481  Payment of international preliminary examination fees.

    (a) The handling and preliminary examination fees shall be paid 
within the time period set in PCT Rule 57.3. The handling fee or 
preliminary examination fee payable is the handling fee or preliminary 
examination fee in effect on the date of payment.
    (1) If the handling and preliminary examination fees are not paid 
within the time period set in PCT Rule 57.3, applicant will be notified 
and given one month within which to pay the deficient fees plus a late 
payment fee equal to the greater of:
    (i) Fifty percent of the amount of the deficient fees, but not 
exceeding an amount equal to double the handling fee; or
    (ii) An amount equal to the handling fee (PCT Rule 58bis.2).
    (2) The one-month time limit set in this paragraph to pay deficient 
fees may not be extended.
* * * * *
    14. Section 1.482 is revised to read as follows:


Sec.  1.482  International preliminary examination fees.

    (a) The following fees and charges for international preliminary 
examination

[[Page 32448]]

are established by the Director under the authority of 35 U.S.C. 376:
    (1) The following preliminary examination fee is due on filing the 
Demand:
    (i) If an international search fee as set forth in Sec.  
1.445(a)(2) has been paid on the international application to the 
United States Patent and Trademark Office as an International Searching 
Authority--$600.00
    (ii) If the International Searching Authority for the international 
application was an authority other than the United States Patent and 
Trademark Office--$750.00
    (2) An additional preliminary examination fee when required, per 
additional invention--$600.00
    (b) The handling fee is due on filing the Demand and shall be as 
prescribed in PCT Rule 57.
    15. Section 1.484 is amended by revising paragraphs (b), (e) 
through (g) and adding paragraphs (h) and (i) to read as follows:


Sec.  1.484  Conduct of international preliminary examination.

* * * * *
    (b) International preliminary examination will begin in accordance 
with PCT Rule 69.1.
* * * * *
    (e) The written opinion established by the International Searching 
Authority under PCT Rule 43bis.1 shall be considered to be a written 
opinion of the United States International Preliminary Examining 
Authority for the purposes of paragraph (d) of this section.
    (f) The International Preliminary Examining Authority may establish 
further written opinions under paragraph (d) of this section.
    (g) If no written opinion under paragraph (d) of this section is 
necessary, or if no further written opinion under paragraph (f) of this 
section is to be established, or after any written opinion and the 
reply thereto or the expiration of the time limit for reply to such 
written opinion, an international preliminary examination report will 
be established by the International Preliminary Examining Authority. 
One copy will be submitted to the International Bureau and one copy 
will be submitted to the applicant.
    (h) An applicant will be permitted a personal or telephone 
interview with the examiner, which may be requested after the filing of 
a Demand, and must be conducted during the period between the 
establishment of the written opinion and the establishment of the 
international preliminary examination report. Additional interviews may 
be conducted where the examiner determines that such additional 
interviews may be helpful to advancing the international preliminary 
examination procedure. A summary of any such personal or telephone 
interview must be filed by the applicant or, if not filed by applicant 
be made of record in the file by the examiner.
    (i) 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 report 
may be established as if the priority had not been claimed.

    Dated: May 23, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 03-13533 Filed 5-29-03; 8:45 am]
BILLING CODE 3510-16-P