[Federal Register Volume 68, Number 104 (Friday, May 30, 2003)]
[Rules and Regulations]
[Pages 32376-32381]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-13534]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB37


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

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The American Inventors Protection Act of 1999 (AIPA) enacted 
provisions for the continued examination of a utility or plant 
application at the request of the applicant (request for continued 
examination or RCE practice). Since continued prosecution application 
(CPA) practice is largely redundant in view of RCE practice, the Office 
is eliminating CPA practice as to utility and plant applications. An 
applicant for a utility or plant patent may also continue to 
effectively obtain further examination of the application by filing a 
continuing application. Since RCE practice does not apply to design 
applications, CPA practice will remain in place for design 
applications.

EFFECTIVE DATE: July 14, 2003.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, by telephone at 
(703) 306-5586, or by mail addressed to: Box Comments--Patents, 
Commissioner for Patents, Washington, DC 20231, or by facsimile to 
(703) 872-9404, marked to the attention of Eugenia A. Jones.

SUPPLEMENTARY INFORMATION: The AIPA was enacted into law on November 
29, 1999. See Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 1501A-
591 (1999). Among other things, the AIPA amended title 35 of the United 
States Code to provide for a request for continued examination (RCE) 
practice. See 35 U.S.C. 132(b). RCE practice is applicable to any 
utility or plant application filed on or after June 8, 1995. See 113 
Stat. at 1501A-560 through 1501A-561. The Office amended the rules of 
practice in title 37 of the Code of Federal Regulations to implement 
the RCE provisions of the AIPA by an interim rule published in March of 
2000 and a final rule published in August of 2000. See Changes to 
Application Examination and Provisional Application Practice, 65 FR 
14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 47 (Apr. 11, 2000) 
(interim rule), and Request for Continued Examination Practice and 
Changes to Provisional Application Practice, 65 FR 50091 (Aug. 16, 
2000), 1238 Off. Gaz. Pat. Office 13 (Sept. 5, 2000) (final rule).
    The AIPA also amended title 35 of the United States Code to 
provide, with certain exceptions, for the publication of pending patent 
applications (other than design applications) eighteen months after the 
earliest claimed filing date. See 35 U.S.C. 122(b). The eighteen-month 
publication provisions of the AIPA apply to utility and plant 
applications filed on or after November 29, 2000, including any CPA 
filed on or after November 29, 2000. The Office amended the rules of 
practice in title 37 of the Code of Federal Regulations to implement 
the eighteen-month publication provisions of the AIPA by a final rule 
published in September of 2000. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, 65 FR 57023 (Sept. 20, 2000), 1239 
Off. Gaz. Pat. Office 63 (Oct. 10, 2000) (final rule). That notice 
indicated that the Office must create a patent application publication 
of a CPA using the copy of the prior application that is contained in 
the Office's Patent Application Capture and Review (PACR) system 
database or microfilm records. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, 65 FR at 57047, 1239 Off. Gaz. Pat. 
Office at 84 (comment 58 and response). The PACR system database or 
microfilm records for applications filed before November 29, 2000, 
however, are often inadequate for eighteen-month publication purposes. 
For example, the copy of the specification or drawings contained in the 
Office's PACR system database or microfilm records for applications 
filed before November 29, 2000, is often of too poor a quality for use 
in the eighteen-month publication process. Since the eighteen-month 
publication of a CPA often requires special handling, the Office has 
been obliged to create a special eighteen-month publication process for 
CPAs, which makes the eighteen-month publication of CPAs both costly 
and inefficient.
    The Office revised the rules of practice in December of 1997 to 
permit applicants to effectively obtain continued examination of an 
application using a streamlined continuing application practice (i.e., 
CPA practice). See 37 CFR 1.53(d). CPA practice was a regulatory 
substitute for statutory authority to provide continued examination of 
an application for a fee. See Changes to Patent Practice and 
Procedures, 62 FR 53131, 53142 (Oct. 10, 1997), 1203 Off. Gaz. Pat. 
Office 63, 72 (Oct. 21, 1997) (final rule) (comment 17 and response). 
As a convenience to applicants, the Office did not eliminate CPA 
practice as to utility and plant applications when RCE practice was 
implemented. The Office, however, did make CPA practice a transitional 
practice as to utility and plant applications, by requiring that the 
prior application have been filed before May 29, 2000. See Request for 
Continued Examination Practice and Changes to Provisional Application 
Practice, 65 FR at 50100, 1238 Off. Gaz. Pat. Office at 20. This change 
to CPA practice was designed to cause CPA filings to phase out over 
time in utility or plant applications. See Changes to Implement 
Eighteen-Month Publication of Patent Applications, 65 FR at 57047, 1239 
Off. Gaz. Pat. Office at 84 (comment 58 and response). Thus, CPA 
practice was retained only as a temporary transitional practice as to 
utility and plant applications after RCE practice was implemented.
    CPA filings are in the process of being phased out, but the phasing 
out of CPA filings is resulting in an ever increasing percentage of 
requests for a CPA being improper because the prior application was not 
filed before May 29, 2000. Continuing to permit the filing of a CPA in 
utility or plant applications (filed before May 29, 2000) requires the 
Office to: (1) check every request for a CPA to determine whether it is 
a proper CPA; and (2) maintain a special eighteen-

[[Page 32377]]

month publication process for an ever decreasing number of CPAs. Since 
CPA practice for utility or plant applications is largely redundant in 
view of RCE practice and is also costly and inefficient, the Office has 
determined that it is now appropriate to eliminate CPA practice as to 
utility and plant applications.

Discussion of Specific Rule

    Title 37 of the Code of Federal Regulations, part 1, is amended as 
follows:
    Section 1.53(d)(1) is amended to provide that an application may be 
filed as a CPA under Sec.  1.53(d) only if the application is for a 
design patent (either an original or reissue design patent) and the 
prior nonprovisional application (of which the CPA is a continuation or 
divisional) is a design application that is complete as defined by 
Sec.  1.51(b).
    Section 1.53(d)(3) is amended to provide that the filing fee for a 
CPA filed under Sec.  1.53(d) is the basic filing fee as set forth in 
Sec.  1.16(f). Since Sec.  1.53(d) no longer applies to utility or 
plant applications and a design application may contain only a single 
claim (Sec.  1.154(b)(6)), there is no need for Sec.  1.53(d)(3) to 
provide for additional claims fees.
    Section 1.53(e)(1) is amended to provide that if a request for an 
application under Sec.  1.53(d) (a CPA) does not meet the requirements 
of Sec.  1.53(d) because the application in which the request was filed 
is not a design application, and if the application in which the 
request was filed was itself filed on or after June 8, 1995, the 
request for an application under Sec.  1.53(d) will be treated as an 
RCE under Sec.  1.114. This change to Sec.  1.53(e)(1) incorporates 
into the rules of practice the Office's current procedures for handling 
improper CPAs.
    Experience has shown that such requests for a CPA may not satisfy 
the requirements of Sec.  1.114 to be a proper RCE (e.g., the request 
may lack a submission as defined by Sec.  1.114(c), or may not be 
accompanied by the fee set forth in Sec.  1.17(e)). In such situations, 
the Office will treat the improper request for a CPA as an RCE (albeit 
an improper RCE), and the time period set in the last Office action (or 
notice of allowance) will continue to run. If the time period 
(considering any available extension under Sec.  1.136(a)) has expired, 
the applicant must file a petition under Sec.  1.137 (with a submission 
as defined by Sec.  1.114(c), unless previously filed, and/or fee set 
forth in Sec.  1.17(e)) to revive the abandoned application.
    During the implementation of RCE practice, the Office indicated 
that if an applicant files a request for a CPA of an application to 
which CPA practice no longer applies and the applicant does not want 
the CPA request to be treated as an RCE (e.g., the CPA is a divisional 
CPA), the applicant may file a petition under Sec.  1.53(e) requesting 
that the improper CPA be converted to an application under Sec.  
1.53(b). See Request for Continued Examination Practice and Changes to 
Provisional Application Practice, 65 FR at 50093-94, 1238 Off. Gaz. 
Pat. Office at 15. Since RCE practice has been in place for over three 
years and it is burdensome on the Office to treat petitions requesting 
conversion of a CPA into an application under Sec.  1.53(b), the Office 
will no longer convert an improper CPA into an application under Sec.  
1.53(b) simply because it is requested by the applicant. Therefore, the 
Office will now convert an improper CPA into an application under Sec.  
1.53(b) only if the applicant shows that there are extenuating 
circumstances that warrant the burdensome process of converting a CPA 
into an application under Sec.  1.53(b) (e.g., restoring the 
application to pending status and correcting the improper RCE is not 
possible because the application has issued as a patent).
    In the event that an applicant files a request for a CPA of a 
utility or plant application that was filed before June 8, 1995, the 
Office will treat the improper CPA request as an improper application 
under the provisions set forth in the first sentence of Sec.  
1.53(e)(1).
    Response to comments: The Office published a notice proposing 
changes to the rules of practice to eliminate CPA practice as to 
utility and plant applications. See Elimination of Continued 
Prosecution Application Practice as to Utility and Plant Patent 
Applications, 66 FR 35763 (July 9, 2001), 1248 Off. Gaz. Pat. Office 
167 (July 31, 2001) (proposed rule). The Office received nineteen 
written comments (from intellectual property organizations, patent 
practitioners, and the general public) in response to this notice. The 
comments and the Office's responses to the comments follow:
    Comment 1: One comment that supported the proposal to eliminate CPA 
practice (as to utility and plant applications) also suggested that RCE 
practice be extended to design applications so that the Office could 
also eliminate CPA practice as to design applications, thus completely 
eliminating CPA practice.
    Response: Section 4404(b)(2) of the AIPA provides that the RCE 
provisions of 35 U.S.C. 132(b) do not apply to applications for a 
design patent. See 113 Stat. at 1501A-561. Therefore, the Office is 
prohibited by statute from making RCE practice applicable to design 
applications.
    Comment 2: Several comments opposing the proposed elimination of 
CPA practice as to utility and plant applications argued that an RCE is 
not the equivalent of a CPA, and that the Office has acknowledged as 
much in its publications. The comments specifically indicate that an 
RCE is not equivalent to a CPA because: (1) One must file a CPA in an 
application filed before November 29, 1999, to take advantage of the 
common prior art exclusion in 35 U.S.C. 103(c) as amended by Sec.  4807 
of the AIPA; (2) one must file a CPA in an application filed before May 
29, 2000, to take advantage of the patent term adjustment provisions of 
35 U.S.C. 154(b) as amended by Sec.  4402 of the AIPA; (3) one must 
file a CPA in an application filed before November 29, 2000, to take 
advantage of the eighteen-month publication provisions of the AIPA 
(without having to file a copy of the application by the Office's 
electronic filing system (EFS)); (4) one cannot file an RCE in an 
application filed before June 8, 1995; (5) one cannot file an RCE to 
obtain examination of a patentably distinct invention (i.e., analogous 
to a divisional CPA); (6) one cannot file an RCE to change inventorship 
without a request to correct inventorship under Sec.  1.48; (7) one 
cannot file an RCE without a submission; and (8) one cannot file an RCE 
before prosecution in the application is closed.
    Response: The Office recognizes that an RCE is not a complete 
equivalent to a CPA. The Office has addressed the public's concerns 
regarding the elimination of CPA practice by delaying the elimination 
of CPA practice (which was initially proposed in July of 2001) until 
July of 2003, after more than three years have passed since the 
enactment of the AIPA. Since CPA practice has remained in effect for 
over three years since the enactment of the AIPA, any applicant wishing 
to file a CPA to take advantage of the amendment to 35 U.S.C. 103(c) in 
the AIPA, the patent term adjustment provisions of the AIPA, or the 
eighteen-month publication provision of the AIPA, has had sufficient 
time to do so. Any applicant now wishing to file a CPA to take 
advantage of any provision of the AIPA should file a CPA before July 
14, 2003, the effective date of this change to Sec.  1.53(d).
    The RCE provisions of 35 U.S.C. 132(b) do not apply to applications 
filed before June 8, 1995. See 113 Stat. at 1501A-560 through 1501A-
561. Based upon the current low usage of Sec.  1.129(a) submission 
practice, it appears that there are relatively few applications

[[Page 32378]]

filed before June 8, 1995, that are still pending. In view of the 
patent term implications of abandoning an application filed before June 
8, 1995, in favor of a continuing application, maintaining a 
streamlined practice (CPA practice) for filing a continuing application 
may result in applicants inadvertently taking this course of action to 
their detriment.
    An applicant cannot obtain examination of a patentably distinct 
invention via an RCE (i.e., as with a divisional CPA). The Office's 
experience with divisional CPA practice, however, has shown that 
divisional CPA practice is less than desirable. See Request for 
Continued Examination Practice and Changes to Provisional Application 
Practice, 65 FR at 50100, 1238 Off. Gaz. Pat. Office at 20 (response to 
comment 10). Therefore, the ``benefits'' of divisional CPA practice do 
not warrant continuing to maintain a burdensome CPA practice.
    An applicant cannot file an RCE to change inventorship without a 
request to correct inventorship under Sec.  1.48 (as can be done in a 
CPA). The requirements of Sec.  1.48, however, have now been 
streamlined sufficiently that this benefit of CPA practice does not 
justify maintaining a burdensome CPA practice.
    A continuing application (unlike an RCE) can be filed without a 
submission and before prosecution in the prior application is closed. 
These courses of action, however, tend to extend application pendency 
and thus tend to have an effect that is contrary to the Office's goal 
of reducing patent application pendency. Therefore, the Office will not 
maintain CPA practice to allow applicants to easily file a continuing 
application without a submission to advance prosecution or before 
prosecution in the prior application is closed.
    Comment 3: One comment opposed the proposed change to CPA practice 
on the basis that it was unnecessary to abruptly end CPA practice as 
CPA practice is being phased out (as to utility and plant 
applications). Another comment suggested that the Office wait until all 
of the applications filed before May 29, 2000, are no longer pending 
before eliminating CPA practice.
    Response: The phasing out of CPA practice has resulted in many 
requests for a CPA now being improper because they are filed in utility 
or plant applications that were filed on or after May 29, 2000. The 
Office considers it appropriate to now eliminate CPA practice outright 
such that the Office can treat any subsequently filed request for a CPA 
as an RCE rather than continue the burdensome process of separately 
tracking proper CPAs and improper CPAs.
    Comment 4: One comment that opposed the proposed change to CPA 
practice suggested that abruptly eliminating CPA practice will likely 
result in an increase in CPA filings immediately before the effective 
date of the change.
    Response: The Office anticipates that eliminating CPA practice as 
to utility and plant application effective July 14, 2003, may result in 
an increase in the number of CPA filings between now and July 14, 2003.
    Comment 5: One comment that opposed the proposed change to CPA 
practice stated that eliminating CPA practice will likely result in an 
increase in the number of applications that are abandoned when a CPA 
(now treated as an RCE) is filed without a submission.
    Response: As discussed above, the practice of filing continuing 
applications without any submission to advance prosecution tends to 
extend application pendency and thus tends to have an effect that is 
contrary to the Office's goal of reducing patent application pendency. 
If an improper CPA (the CPA being improper because CPA practice has 
been eliminated as to utility and plant applications) does not satisfy 
the requirements of Sec.  1.114 to be treated as a proper RCE, the 
Office will treat the improper request for a CPA as an RCE (albeit an 
improper RCE). If the applicant does not supply a submission as defined 
by Sec.  1.114(c) and/or fee set forth in Sec.  1.17(e) within the time 
period for reply set in the Office action or notice of allowance 
(considering any available extension under Sec.  1.136(a)), the 
applicant will need to file a petition under Sec.  1.137 to revive the 
abandoned application and supply a submission as defined by Sec.  
1.114(c) and/or fee set forth in Sec.  1.17(e), unless previously 
submitted.
    Comment 6: One comment that opposed the proposed change to CPA 
practice stated that the increased cost of handling CPAs is offset by 
the publication fee. Another comment that opposed the proposed change 
to CPA practice stated that if CPAs are more costly to process, the 
Office should not eliminate CPAs but just charge additional fees for 
CPAs.
    Response: The Office cannot simply offset the additional costs of 
publishing CPAs under eighteen-month publication with additional fees 
(the publication fee or a higher publication fee for CPAs). The Office 
cannot spend the fees it collects absent authority from Congress to do 
so. Congress generally does not authorize the Office to spend all of 
the fees it collects; rather, Congress generally authorizes the Office 
to spend up to only a certain amount of the fees it collects and 
diverts the remaining fees to other programs. Thus, even if the Office 
collects additional publication fees (ostensibly to recover the 
Office's cost of publishing CPAs), such fee revenue would likely be 
diverted from the Office leaving the Office with no funding to actually 
cover the increased cost of publishing CPAs.
    Comment 7: One comment that opposed the proposed change to CPA 
practice suggested that the Office provide by rule that a CPA will not 
be published (under 35 U.S.C. 122(b) and Sec.  1.211). Another comment 
suggested that the Office require applicant to file a nonpublication 
request under Sec.  1.213(a) with any CPA, or require that any 
applicant filing a CPA without a nonpublication request under Sec.  
1.213(a) provide a copy of the application by the Office's electronic 
filing system (Sec.  1.215(c)).
    Response: 35 U.S.C. 122(b)(2) does not provide an exception to 
eighteen-month publication for CPAs. The Office cannot simply require 
every applicant filing a request for a CPA to also file a 
nonpublication request under Sec.  1.213(a) because not every applicant 
can properly make the certification required by 35 U.S.C. 
122(b)(2)(B)(i) and Sec.  1.213(a). In addition, the current CPA filing 
levels do not justify engaging in further refinements of CPA practice 
(as opposed to simply eliminating CPA practice as to utility and plant 
applications).
    Comment 8: One comment stated that after a notice of appeal has 
been filed but an agreement with the examiner is reached, the applicant 
cannot file an RCE and that a CPA is the most efficient mechanism to 
effect the agreement.
    Response: An applicant can file an RCE after a notice of appeal has 
been filed to effect any agreement with the examiner (or to obtain 
continued examination of the application before the examiner). See 
Sec.  1.114(a). There is no reason why a CPA would be a more effective 
mechanism than an RCE to effect any such agreement.
    Comment 9: One comment questioned whether the examination given to 
an application after the filing of an RCE is the same as for a CPA.
    Response: The examination given to an application after the filing 
of an RCE is the same as for a CPA, except that an applicant cannot 
file an RCE to obtain examination of a patentably distinct invention as 
in a divisional CPA. With regard to first action final practice, the 
action immediately subsequent to the filing of an RCE may be made final 
only

[[Page 32379]]

if the conditions set forth in section 706.07(b) of the Manual of 
Patent Examining Procedure for making a first action final in a 
continuing application (such as a CPA) are met. See Request for 
Continued Examination Practice and Changes to Provisional Application 
Practice, 65 FR at 50096, 1238 Off. Gaz. Pat. Office at 17.
    Comment 10: Several comments opposed the proposed change to 
eliminate CPA practice (as to utility and plant applications) on the 
basis that a continuing application under Sec.  1.53(b) (non-CPA) 
requires the applicant to copy and file papers to generate a new file 
and this is burdensome when compared with the single paper necessary to 
file a CPA (which the Office recognized when implementing CPA 
practice). One comment also argued that continuing applications under 
Sec.  1.53(b) place a greater burden on the Office than do CPAs because 
CPAs do not require any pre-examination processing and will be picked 
up by the examiner for action in a more timely fashion than continuing 
applications under Sec.  1.53(b). One comment noted that applicants 
with ``deep pockets'' will be able to file a continuing application 
under Sec.  1.53(b) but that small entities will be more severely 
impacted.
    Response: While a continuing application under Sec.  1.53(b) 
requires the applicant to copy and file papers to generate a new file, 
the Office must now publish applications (including CPAs) at eighteen 
months from its earliest claimed filing date and the application papers 
(specification, drawings, oath or declaration) are required for the 
eighteen-month publication process. In most situations in which an 
applicant would formerly have filed a CPA, the applicant will still be 
able to avoid filing the application papers necessary for a continuing 
application under Sec.  1.53(b) by filing an RCE.
    Comment 11: One comment opposing the elimination of CPA practice 
suggested that a substantial number of unnecessary CPAs are filed 
because the Office has failed to adequately warn the patent bar and its 
clients that a CPA can be more expensive for the client than an RCE. 
The comment stated that fewer CPAs would be filed if the Office were to 
better educate the public on that cost difference.
    Response: The Office has a Web page (http://www.uspto.gov/web/offices/dcom/olia/aipa/index.htm) devoted to information concerning the 
AIPA and the Office's implementation of the AIPA. The Web page contains 
(among other information) a chart explaining the various differences 
(including fees) between a CPA, an RCE, and a submission under Sec.  
1.129(a) (http://www.uspto.gov/web/offices/dcom/olia/aipa/comparison_of_cpa_practice.htm). The Office also provided numerous presentations 
during fiscal years 2000 and 2001 (including a series of road show 
presentations) to educate the patent bar and general public about the 
AIPA and the Office's implementation of the AIPA (including RCE 
practice). Nevertheless, the elimination of CPA practice (as to utility 
and plant applications) will moot the issue of unnecessary CPAs being 
filed.
    Comment 12: One comment opposing the elimination of CPA practice 
suggested that a substantial number of unnecessary CPAs are filed 
because the Office does not allow an applicant to voluntarily publish 
an application filed before but pending on November 29, 2000, unless a 
copy of the application is submitted under the new electronic filing 
system (EFS), and that EFS is impossible or extremely burdensome for 
many applicants, or for applications with many formulae or symbols, or 
for companies with ``firewall'' problems for transmissions of very 
large documents by electronic mail message. The comment stated that the 
filing of a CPA is by far the best way to obtain voluntary publications 
(and fully accurate reproductions) of most applications filed before 
November 29, 2000.
    Response: Any applicant wishing to file a CPA to effectively obtain 
publication of an application filed before November 29, 2000, would 
have filed a CPA for this purpose shortly after November 29, 2000. 
Nevertheless, the Office has received approximately 470 EFS submissions 
of a copy of an application for eighteen-month publication purposes 
(for publication of an application as-amended under Sec.  1.215(c), for 
publication of an application as-redacted under Sec.  1.217, for 
voluntary publication under Sec.  1.221(a), and for republication of an 
application under Sec.  1.221(a)). The Office has also received 
approximately 7,600 EFS submissions of new application filings. The 
Office has a Patent Electronic Business Center (EBC) to assist 
applicants who find EFS burdensome or have other problems using EFS. 
The Patent EBC Web page is located at (http://www.uspto.gov/ebc/index.html), and the EBC Customer Support Center can be reached by 
telephone at (703) 305-3028.
    Comment 13: One comment opposing the elimination of CPA practice 
suggested that the Office could reduce the number of CPAs by changing 
the current Office practice of refusing to consider even the most minor 
of amendments under Sec.  1.116 (not requiring any new art search).
    Response: The Office did not propose to change the practice 
concerning amendments after final action or appeal under Sec.  1.116. 
Section 1.116(c) permits entry of an amendment after final rejection or 
appeal upon a showing of good and sufficient reasons why the amendment 
is necessary and was not presented earlier. An applicant may file an 
RCE under Sec.  1.114 to obtain entry of an amendment that was refused 
entry under Sec.  1.116.

Rule Making Considerations

Regulatory Flexibility Act

    The Deputy General Counsel for General Law, United States Patent 
and Trademark Office certified to the Chief Counsel for Advocacy, Small 
Business Administration, that the changes in this final rule do not 
have a significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). This final rule 
eliminates CPA practice as to utility and plant applications. This 
change does not have a significant economic impact on any business 
because: (1) Any applicant (including small entities) in a utility or 
plant application filed before June 8, 1995, can obtain further 
examination of the application by filing either a continuing 
application under Sec.  1.53(b) or a submission under Sec.  1.129(a) 
(if the application is eligible for Sec.  1.129(a) practice); (2) any 
applicant (including small entities) in a utility or plant application 
filed on or after June 8, 1995, can obtain further examination of the 
application by filing either an RCE under 35 U.S.C. 132(b) and Sec.  
1.114 or a continuing application under Sec.  1.53(b); and (3) any 
applicant (including small entities) in a design application can 
continue to obtain further examination of the application by filing 
either a CPA under Sec.  1.53(d) or a continuing application under 
Sec.  1.53(b).

Executive Order 13132

    This 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 final rule involves information collection requirements which 
are subject to review by the Office of Management and Budget (OMB) 
under

[[Page 32380]]

the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). As 
required by the Paperwork Reduction Act of 1995 (44 U.S.C. 3507(d)), 
the Office submitted an information collection package to OMB for its 
review and approval of the proposed information collections under OMB 
control numbers 0651-0031 and 0651-0032. The Office submitted these 
information collections to OMB for its review and approval because this 
final rule will increase the number of RCEs. The principal impact of 
the changes in this final rule is to eliminate CPA practice with 
respect to utility and plant applications.
    The title, description and respondent description of each of the 
information collections are shown below with an estimate of each of the 
annual reporting burdens. Included in each estimate is the time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08/21-27/30-32/35-37/42/43/61/62/63/64/67/68/
91/92/96/97/PTO-2053/PTO-2055.
    Type of Review: Regular Submission (currently under review).
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 2,208,339.
    Estimated Time Per Response: Between 1 minute 48 seconds and 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 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 (currently under review).
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 454,287.
    Estimated Time Per Response: Between 24 minutes and 10 hours, 45 
minutes.
    Estimated Total Annual Burden Hours: 4,171,568 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the Office to determine whether an application meets the 
criteria set forth in the patent statute and regulations. The standard 
Fee Transmittal form, New Utility Patent Application Transmittal form, 
New Design Patent Application Transmittal form, New Plant Patent 
Application Transmittal form, Declaration, and Plant Patent Application 
Declaration will assist applicants in complying with the requirements 
of the patent statute and regulations, and will further assist the 
Office in the processing and examination of the application.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, United States Patent and Trademark Office, Washington, 
DC 20231, or to the Office of Information and Regulatory Affairs of 
OMB, New Executive Office Building, Room 10235, 725 17th Street NW., 
Washington, DC 20503, Attention: Desk Officer for the United States 
Patent and Trademark Office.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
requirements, Small Businesses.

0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as 
follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

0
2. Section 1.53 is amended by revising paragraphs (d)(1), (d)(3), and 
(e)(1) to read as follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (d) * * *
    (1) A continuation or divisional application (but not a 
continuation-in-part) of a prior nonprovisional application may be 
filed as a continued prosecution application under this paragraph, 
provided that:
    (i) The application is for a design patent;
    (ii) The prior nonprovisional application is a design application 
that is complete as defined by Sec.  1.51(b); and
    (iii) The application under this paragraph is filed before the 
earliest of:
    (A) Payment of the issue fee on the prior application, unless a 
petition under Sec.  1.313(c) is granted in the prior application;
    (B) Abandonment of the prior application; or
    (C) Termination of proceedings on the prior application.
* * * * *
    (3) The filing fee for a continued prosecution application filed 
under this paragraph is the basic filing fee as set forth in Sec.  
1.16(f).
* * * * *
    (e) * * *
    (1) If an application deposited under paragraph (b), (c), or (d) of 
this section does not meet the requirements of such paragraph to be 
entitled to a filing date, applicant will be so notified, if a 
correspondence address has been provided, and given a period of time 
within which to correct the filing error. If, however, a request for an 
application under paragraph (d) of this section does not meet the 
requirements of that paragraph because the application in which the 
request was filed is not a design application, and if the application 
in which the request was filed was itself filed on or after June 8, 
1995, the request for an application under paragraph (d) of this 
section will be treated as a request for continued examination under 
Sec.  1.114.
* * * * *


[[Page 32381]]


    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. 03-13534 Filed 5-29-03; 8:45 am]
BILLING CODE 3510-16-P