[Federal Register Volume 68, Number 202 (Monday, October 20, 2003)]
[Rules and Regulations]
[Pages 59881-59889]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-26338]


=======================================================================
-----------------------------------------------------------------------

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: Patent and Trademark Office, Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (Office) is 
amending 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 adjusting 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.

EFFECTIVE DATE: January 1, 2004.

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 25004-61. 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

[[Page 59882]]

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, the written opinion of the ISA will be considered 
to be 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 thirty months from the priority date.
    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) twenty-two 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 nineteen months from 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 thirty-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 twenty-eight 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 twenty-two 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., fifteen 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 
thirty sheets of paper and a second fee component for sheets of paper 
in excess of thirty) 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.

[[Page 59883]]

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.14: Sections 1.14(g)(1)(ii) and 1.14(g)(3) are amended to 
exclude members of the public from obtaining a copy of the written 
opinion of the United States International Searching 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 thirty months from the priority date unless 
authorized by the applicant.
    Section 1.413: Section 1.413(c) is 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 amended to remove reference to 
Sec.  1.425 (Sec.  1.425 is 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 amended to include the requirement of Sec.  
1.424 that joint inventors must jointly apply for an international 
application. Section 1.424 is removed (see discussion of Sec.  1.424).
    Section 1.421(c) is 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 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 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 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 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 removed. The requirement in Sec.  
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 removed (see discussion of Sec.  
1.421(b)).
    Section 1.431: Section 1.431(b)(3) is amended to remove reference 
to Sec.  1.424 (Sec.  1.424 is removed). Sections 1.431(c) and (d) are 
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 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 removed from Sec.  1.432.
    Section 1.434: Section 1.434(d) is 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 
redesignated as new Sec.  1.434(e) for clarity.
    Section 1.445: Section 1.445(a)(1) is 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 
http://www.uspto.gov).
    Section 1.445(a)(2)(i) is 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 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 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

[[Page 59884]]

international application, if such number is known. If 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 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 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 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 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 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 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 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 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 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 
increase is necessary to cover the additional cost associated with 
conducting the preliminary examination by the IPEA/US.
    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 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 amended to refer to revised PCT Rule 57 as it 
relates to handling fee requirements.
    Section 1.484: Section 1.484(b) is 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 redesignated as Sec. Sec.  
1.484(g) through (i), respectively. Section 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.
    Section 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 amended as a consequence of the amendment to 
Sec.  1.484(f).
    Section 1.484(h) is amended to provide clarification regarding 
conducting personal and telephonic interviews with the examiner under 
the revised system.
    Response to comments: The Office published a notice proposing 
changes to 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. See January 2004 Revision of 
Patent Cooperation Treaty Application Procedure, 68 FR 32441 (May 30, 
2003), 1271 Off. Gaz. Pat. Office 147 (June 24, 2003) (proposed rule). 
The Office received two written comments (one from an intellectual 
property organization and another by a patent practitioner) in response 
to this notice. The comments and the Office's responses to the comments 
follow:
    Comment 1: One comment suggested that Sec.  1.14 should provide 
that the written opinion of the International Searching Authority is 
available to third parties upon publication of the international 
application instead of at thirty months as provided in Sec.  1.14.
    Response: The suggestion has not been adopted. PCT Rule 44ter.1, 
which is set to enter into force on January 1, 2004, provides that the 
International Searching Authority, unless requested or authorized by 
the applicant, shall not allow access to the written opinion of the 
International Searching Authority by any person before the expiration 
of thirty months from the priority date. Therefore, the suggested 
change to Sec.  1.14 would be inconsistent with the requirements of the 
PCT.
    Comment 2: One comment suggested that the rules be amended to 
provide that if applicant timely files a Demand with Article 34 
amendments to the

[[Page 59885]]

claims, the examiner be required to render a new written opinion. The 
comment indicates that without such a provision, the IPEA/US, in 
adopting the written opinion as established by the ISA, will be 
delivering to applicants written opinions which are totally 
inconsistent with the claims as amended.
    Response: The suggestion has been adopted in part. Under the 
enhanced search and examination system, the IPEA/US will not deliver to 
applicants a written opinion which does not take into account the 
claims as amended. In general, under the procedures established under 
the enhanced search and examination system, a written opinion will be 
established by the ISA, and upon filing of a Demand by applicant, that 
written opinion will be considered to be the first written opinion of 
the IPEA. In turn, any amendments under PCT Article 34 which are timely 
filed, either with or subsequent to the Demand, will be considered to 
be a response to that written opinion. In response to the Demand and 
any amendments, the IPEA/US will then issue one of the following: (1) A 
further written opinion under Sec.  1.484(f) if such is warranted; or 
(2) an international preliminary examination report under Sec.  
1.484(g). In both instances, the response by the IPEA will fully take 
into consideration any amendments which have been timely filed by the 
applicant.
    Comment 3: One comment also opposed the proposed changes in the PCT 
fees set forth in Sec. Sec.  1.445 and 1.482. First, the comment 
indicated that the transmittal, search, and preliminary examination 
fees proposed in Sec. Sec.  1.445 and 1.482 would be sixty percent 
higher than the filing fee, search fee, and examination fee proposed in 
the 21st Century Strategic Plan. Second, the comment indicated that an 
applicant must also pay the preliminary examination fee to obtain the 
``same benefits'' under PCT Chapters I and II. The comment further 
indicated that a truer picture of the proposed fee change is revealed 
by comparing the existing and revised transmittal, search, and 
international preliminary examination fees on an item-by-item basis.
    Response: The Office indicated that the $300 transmittal fee amount 
in proposed Sec.  1.445(a)(1) would be consistent with the filing fee 
for applications under 35 U.S.C. 111(a) proposed by the Office in the 
21st Century Strategic Plan ($300). The Office did not state that the 
sum of the transmittal, search, and international preliminary 
examination fees would be consistent with the sum of the filing fee, 
search fee, and examination fees for applications under 35 U.S.C. 
111(a) proposed by the Office in the 21st Century Strategic Plan. The 
Office proposed search and examination fee amounts for international 
applications that are in certain situations higher than the 
corresponding fees for applications under 35 U.S.C. 111(a) because: (1) 
There are additional costs associated with searching international 
applications and international preliminary examination under the 
enhanced international search and preliminary examination system (see 
January 2004 Revision of Patent Cooperation Treaty Application 
Procedure, 68 FR 32441, 32444 (May 30, 2003), 1271 Off. Gaz. Pat. 
Office 147, 149 (June 24, 2003) (proposed rule)); and (2) the 
examination fee for applications under 35 U.S.C. 111(a) proposed by the 
Office in the 21st Century Strategic Plan does not recover the Office's 
cost of examining applications and is subsidized by fees that are not 
applicable during the PCT international stage (see H.R. Rep. 108-241, 
at 15 (2003)).
    The comment correctly notes that a PCT applicant must also pay the 
preliminary examination fee to amend the claims in an international 
application and obtain a written opinion reflecting the amended claims. 
Nevertheless, it is the Office's experience that PCT applicants who 
file a Demand for international preliminary examination rarely include 
an amendment under PCT Article 34 with the Demand. Therefore, the 
enhanced international search and preliminary examination system will 
reduce costs for most PCT applicants by providing them with the 
benefits they seek from PCT Chapter II, namely, an extension (from 
twenty to thirty months) of the time limit for entering the national 
stage and a written opinion indicating whether the claims are in 
compliance with PCT Article 33(2)-(4), without requiring them to file a 
timely Demand for international preliminary examination and pay the 
international preliminary examination fee.
    When making an item-by-item comparison of the existing transmittal, 
search, and international preliminary examination fees with the revised 
transmittal, search, and international preliminary examination fees, 
one would readily appreciate the following: The enhanced international 
search and preliminary examination system reduces costs for most PCT 
applicants by providing them with the benefits they seek from PCT 
Chapter II without requiring them to pay the international preliminary 
examination fee. The Office's costs for searching international 
applications are higher under the enhanced international search and 
preliminary examination system because international applications must 
be searched (and examined) under the PCT unity of invention standard 
and the search fee must also cover the preparation of a written 
opinion. The Office's costs for international preliminary examination 
will be higher in certain situations under the enhanced international 
search and preliminary examination system because the Office will be 
required to provide an international preliminary examination on the 
basis of one or more amendments under PCT Article 34 since applicants 
filing a Demand under the revised system will likely be doing so to 
obtain a positive ``International Preliminary Report on Patentability 
(Chapter II of the Patent Cooperation Treaty)'' and thus will file one 
or more amendments under PCT Article 34 in the international 
application (under the former system, the majority of Demands were 
filed for the sole purpose of extending the national stage entry period 
and thus were filed without any substantial amendments to the claims). 
Finally, the fees set forth in former Sec. Sec.  1.445 and 1.482 for 
search and examination of additional inventions were far too low to 
recover the Office's actual average cost for search and examination of 
additional inventions.
    Rule Making Considerations: Regulatory Flexibility Act: The USPTO 
published a proposed rule and certified that an initial Regulatory Act 
Analysis was not required. Only one comment was received which 
objected, in general, to the fee increases and made no reference to any 
impact of the fee increases on small entities. 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 in this final rule will not have a 
significant economic impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)).
    The changes in this final rule 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. The 
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

[[Page 59886]]

preliminary examination under the new process.
    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 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 final 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, PCT/RO/134, PCT/RO/144, PTO-1382, PCT/
IPEA/401, PCT/IB/328, PCT/SB/61/PCT, PCT/SB/64/PCT.
    Type of Review: Approved through December of 2003.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal 
Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 331,407.
    Estimated Time Per Response: Between 15 minutes and 4 hours.
    Estimated Total Annual Burden Hours: 401,202.
    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, PTO/SB/08B, PTO/SB/21-27, PTO/SB/30-32, 
PTO/SB/35-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/67-68, PTO/SB/91-92, 
PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-2055-A/B, PTOL-413A, 
eIDS, EFS form.
    Type of Review: Approved through July of 2006.
    Affected Public: Individuals or households, business or other for-
profit institutions, not-for-profit institutions, farms, Federal 
Government and State, Local and Tribal Governments.
    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 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, P.O. Box 
1450, Alexandria, Virginia, 22313-1450, 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 recordkeeping 
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 1.14 is amended by revising paragraphs (g)(1)(ii) and (g)(3) 
to read as follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (g) * * *
    (1) * * *
    (ii) With respect to the Search Copy (the copy of an international 
application kept by the Office in its capacity as the International 
Searching Authority, see PCT Article 12(1)), 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) Access to international application files for international 
applications which designate the U.S. and which have been published in 
accordance with PCT Article 21(2), or copies of a document in such 
application files, will be permitted in accordance with PCT Articles 30 
and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request 
including a showing that the publication of the application has 
occurred and that the U.S. was designated.
* * * * *

0
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

[[Page 59887]]

accordance with the 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.

0
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]

0
5. Section 1.424 is removed.


Sec.  1.425  [Removed]

0
6. Section 1.425 is removed.

0
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 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).

0
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.

0
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.

[[Page 59888]]

    (e) An international application may also include in the Request a 
declaration of the inventors as provided for in PCT Rule 4.17(iv).

0
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--$1,000.00
    (3) A supplemental search fee when required, per additional 
invention--$1,000.00
    (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.

0
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.
* * * * *

0
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)).

0
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.
* * * * *

0
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 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.

0
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

[[Page 59889]]

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: October 10, 2003.
Jon W. Dudas,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 03-26338 Filed 10-17-03; 8:45 am]
BILLING CODE 3510-16-P