[Federal Register Volume 70, Number 66 (Thursday, April 7, 2005)]
[Proposed Rules]
[Pages 17629-17636]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-6931]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 3, and 10

[Docket No.: 2005-P-053]
RIN 0651-AB85


Provisions for Persons Granted Limited Recognition To Prosecute 
Patent Applications and Other Miscellaneous Matters

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 changes to the rules of practice concerning persons acting 
with limited recognition in a patent matter, the filing of the English 
translation of foreign-language provisional applications, and the 
submission of evidence ownership when an assignee takes action in a 
patent matter. The Office is proposing changes to the rules of practice 
to allow a person acting with limited recognition to be given a power 
of attorney and authorized to sign amendments and other correspondence 
respecting patent applications, reexamination proceedings, and other 
proceedings. A person granted limited recognition is not a registered 
patent attorney or agent. The Office is also proposing changes to the 
rules of practice to require that a copy of the English translation of 
a foreign-language provisional application be filed in the provisional 
application (rather than in either the provisional application or the 
nonprovisional application) if a non-provisional application claims the 
benefit of the provisional application. In addition, the Office is 
proposing changes to require that a copy of documentary evidence of 
ownership be recorded in the Office's assignment records when an 
assignee takes action in a patent matter, and that separate copies of a 
document be submitted to the Office for recording in the Office's 
assignment records, each accompanied by a cover sheet, if the document 
to be recorded includes an interest in, or a transaction involving, 
both patents and trademarks.

DATES: To be ensured of consideration, written comments must be 
received on or before June 6, 2005. No public hearing will be held.

ADDRESSES: Comments should be sent by electronic mail over the Internet 
addressed to: [email protected]. Comments may also be submitted 
by mail addressed to: Mail Stop Comments-Patents, Commissioner for 
Patents, P.O. Box 1450, Alexandria, VA 22313-1450; or by facsimile to 
(703) 273-7744, marked to the attention of Karin Ferriter. 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 prefer that the comments be submitted on a DOS 
formatted 3 \1/2\-inch disk accompanied by a paper copy.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking

[[Page 17630]]

Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy, currently located at Room 7D74 of Madison 
West, 600 Dulany Street, Alexandria, Virginia, and will be available 
through anonymous file transfer protocol (ftp) via the Internet 
(address: http://www.uspto.gov). Because 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: Karin Ferriter ((571) 272-7744), 
Senior Legal Advisor, Office of Patent Legal Administration, Office of 
the Deputy Commissioner for Patent Examination Policy; Harry I. Moatz 
((571) 272-4097), Director of the Office of Enrollment and Discipline 
(OED Director); or Robert J. Spar ((571) 272-7700) Director of the 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, directly by phone, or by 
facsimile to (571) 273-7744, or by mail addressed to: Mail Stop 
Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450.

SUPPLEMENTARY INFORMATION: This notice proposes changes in the rules of 
practice in title 37 of the Code of Federal Regulations (CFR) 
pertaining to the availability of patent application files, persons 
acting with limited recognition in a patent matter, the filing of the 
English translation of foreign-language provisional applications, and 
the submission of evidence ownership when an assignee takes action in a 
patent matter and for recording in the Office's assignment records. The 
proposed changes concerning the availability of patent application 
files relate to Sec.  1.11. The proposed changes concerning persons 
acting with limited recognition in a patent matter relate to Sec. Sec.  
1.4, 1.17, 1.31, 1.32, 1.33, 1.34, and 1.36. The proposed changes 
concerning the filing of the English translation of foreign-language 
provisional applications relate to Sec.  1.78. The proposed changes 
concerning the submission of evidence ownership when an assignee takes 
action in a patent matter and for recording in the Office's assignment 
records relate to Sec. Sec.  3.28, 3.31, 3.73, and 10.112.

Discussion of Specific Rules

    Section 1.4: The title is proposed to be revised to read: ``Nature 
of correspondence and Signature Requirements.'' Section 1.4(d)(2) is 
proposed to be revised to delete ``with a signature in permanent dark 
ink or its equivalent,'' because dark ink applies to handwritten 
signatures, not S-signatures. Section 1.4(d)(2)(ii) is proposed to be 
revised to change ``registered practitioner'' to ``patent practitioner 
(Sec.  1.32(a)(1))'' and to insert ``or limited recognition number'' 
after ``registration number'' in two places so that a person acting 
with limited recognition can use an S-signature. The term ``patent 
practitioner'' is defined in Sec.  1.32(a).
    Section 1.11: Section 1.11(a) is proposed to be revised for clarity 
and to reflect the policy regarding availability to the public of 
papers in the files of applications that have been published. For 
example, Sec.  1.11(a) is proposed to be revised to remove 
``abandoned'' before ``published application.'' Published applications 
are not physically available to the public if the file was maintained 
in a paper file wrapper, but any electronic file relating to a 
published application is made available through the Patent Application 
Information Retrieval (PAIR) system pursuant to Sec.  1.14(a)(1)(iii) 
and 1.14(b). Since most pending applications are now available through 
PAIR, the reference to only abandoned published applications in Sec.  
1.11 may have been misleading. In addition, Sec.  1.11(a) is proposed 
to be revised to include: ``If an application was published in redacted 
form pursuant to Sec.  1.217, the complete file wrapper and contents of 
the patent application will not be available if: The requirements of 
paragraphs (d)(1), (d)(2), and (d)(3) of Sec.  1.217 have been met in 
the application; and the application is still pending.''
    Section 1.17: Section 1.17(f) is proposed to be revised to add 
``Sec.  1.36(a)--for revocation of a power of attorney by fewer than 
all of the applicants.'' See the discussion of the proposed change to 
Sec.  1.36(a). This proposed change would correct Sec.  1.17 by 
including Sec.  1.36(a) in the list of petitions for which a fee set 
forth in Sec.  1.17 can be charged, and also groups the fee for a 
petition under Sec.  1.36(a) with similar petitions (under Sec.  1.182 
and Sec.  1.183).
    Section 1.31: Section 1.31 is proposed to be revised to change the 
title to ``Applicants may be represented by one or more patent 
practitioners or joint inventors'' in order to make the title of the 
rule more descriptive of the proposed revised rule. A definition for 
``patent practitioner'' is proposed to be added to Sec.  1.32(a), as 
discussed below, and the term ``patent practitioner'' is proposed to be 
used in place of ``registered patent attorney or agent'' in Sec.  1.31, 
and in other rules. Further, Sec.  1.31 is proposed to be revised to 
indicate that one or more patent practitioners or joint inventors may 
be given a power of attorney, to thereby recognize that there may be a 
single person appointed or an appointment of more than one practitioner 
or joint inventor to represent the applicant. Section 1.32(c)(1) 
permits one or more joint inventors to be given power of attorney to 
represent the other joint inventor or inventors; accordingly, the 
revision to Sec.  1.31 is necessary for consistency with Sec.  
1.32(c)(1). Furthermore, Sec.  1.31 is proposed to be amended to delete 
the cross references to Sec. Sec.  11.6 and 11.9, which would no longer 
be useful in view of the definition of patent practitioner proposed to 
be added to Sec.  1.32(a).
    Section 1.32: Section 1.32(a)(1) is proposed to be revised to set 
forth the definition of ``patent practitioner'' and to renumber 
sections (a)(1) to (a)(4) as (a)(2) through (a)(5), respectively.
    Proposed new Sec.  1.32(a)(1) defines the term ``patent 
practitioner'' as ``a registered patent attorney or registered patent 
agent under Sec.  11.6, or individual granted limited recognition to 
file or prosecute a patent application, or other patent proceeding, 
before the United States Patent and Trademark Office under Sec.  
11.9(a) or Sec.  11.9(b).'' This definition is consistent with the 
definition of ``practitioner'' in Sec.  11.1 as ``(1) An attorney or 
agent registered to practice before the Office in patent matters* * *or 
(3) An individual authorized to practice before the Office in a patent 
case or matters under Sec.  11.9(a) or (b).'' A person with limited 
recognition pursuant to Sec.  11.9(a) and Sec.  11.9(b) is not a 
registered patent practitioner, but is someone who has been given 
limited recognition to prosecute a patent application. Individuals 
granted limited recognition pursuant to Sec.  11.9(a) are given such 
recognition for one or more specified patent applications or other 
patent proceedings. For example, a parent or spouse may be given 
limited recognition to represent the inventor where the inventor is 
competent and 35 U.S.C. 117 and Sec.  1.43 do not apply. Limited 
recognition pursuant to Sec.  11.9(b) is granted to individuals who 
have passed the patent examination and are U.S. residents, but are 
neither citizens of the U.S. nor permanent residents and thus are not 
eligible to become registered.

[[Page 17631]]

Because these individuals have a visa to work in the U.S., they are 
accorded limited recognition consistent with the visa. The term 
``patent practitioner'' is limited to those that are registered or 
authorized by the Office to act in patent matters.
    Section 1.32(a)(1) is proposed to be renumbered as Sec.  1.32(a)(2) 
and further revised to change ``registered patent attorneys or 
registered patent agents'' to ``one or more patent practitioners or 
joint inventors'' to reflect that one, or more than one, patent 
practitioner may be appointed in a power of attorney. Section 1.32(c) 
permits a power of attorney to be to one or more patent practitioners 
or joint inventors, and this change is consistent therewith.
    Section 1.32(a)(2) is proposed to be renumbered as Sec.  1.32(a)(3) 
and further revised to add ``or, in a reexamination proceeding, the 
assignee of the entirety of ownership of a patent'' to reflect that the 
assignee of the entire interest in a patent may authorize a patent 
practitioner to represent the assignee in reexamination proceedings, 
for example, in addition to patent applications. In addition, Sec.  
1.32(a)(3) is proposed to be revised to change ``registered patent 
attorney or registered patent agent'' to ``patent practitioners'' and 
``joint inventor'' to ``joint inventors.'' As explained above, use of 
the term ``patent practitioner'' expands the rule to also apply to 
individuals granted limited recognition to file (present) or prosecute 
a patent application or other patent proceeding before the United 
States Patent and Trademark Office, as well as registered patent 
attorneys and registered patent agents.
    Section 1.32(a)(3) is proposed to be renumbered as Sec.  
1.32(a)(4), and further proposed to be revised to change ``registered 
patent attorney or registered patent agent'' to ``patent practitioner 
or joint inventor.''
    Section 1.32(a)(4) is proposed to be renumbered as Sec.  
1.32(a)(5), and the resulting new paragraph Sec.  1.32(a)(5)(i) is 
proposed to be revised to change ``patent application or patent'' to 
``patent application, patent or other patent proceeding'' and the 
resulting new paragraph 1.32(a)(5)(iii) is proposed to be revised to 
delete ``registered.''
    Section 1.32(c)(3) is proposed to be revised such that the first 
sentence reads: ``Ten or fewer patent practitioners, stating the name 
and registration number or limited recognition number of each patent 
practitioner.'' The Office needs the registration number of the patent 
practitioner to make the practitioner of record. Because the former 
rules did not require a registration number, registration numbers were 
sometimes omitted, leading to delays in Office processing of powers of 
attorney. Accordingly, Sec.  1.32(c)(3) is proposed to be amended to 
add a requirement for the registration number or limited recognition 
number of the patent practitioner to assist the Office in making the 
practitioner of record. Limited recognition numbers recently began to 
be assigned by the Office of Enrollment and Discipline.
    Section Sec.  1.33: Section 1.33(a) is proposed to be revised to 
use the generic term ``patent practitioner'' instead of ``registered 
patent attorney or patent agent'' so as to also include those acting 
with limited recognition. Specifically, Sec.  1.33(a) is proposed to be 
amended to change ``registered patent attorney or patent agent'' to 
``patent practitioner'' in two places. In addition, Sec.  1.33(a)(1) is 
proposed to be amended to change ``If the application was filed by a 
registered attorney or agent, any other registered practitioner named 
in the transmittal papers may also change the correspondence address'' 
to ``If the application was filed by a patent practitioner, any other 
patent practitioner named in the transmittal papers may also change the 
correspondence address.''
    Section 1.33(b)(1) and Sec.  1.33(b)(2) are proposed to be amended 
to change registered patent attorney or patent agent'' to ``patent 
practitioner.''
    Section 1.33 is also proposed to be revised to add new paragraph 
(e) to remind patent practitioners that the attorney roster must be 
updated separately from individual patent applications. Section 1.33 is 
proposed to be revised to state: ``(e) A change of address filed in a 
patent application or patent does not change the address for a patent 
practitioner in the roster of patent attorneys and agents. See Sec.  
11.11 of this part.''
    Section 1.34: Section 1.34 is proposed to be revised to change 
``registered patent attorney or patent agent'' to ``patent 
practitioner'' in two places, and change ``must specify his or her 
registration number and name with his or her signature'' to ``must set 
forth his or her registration number, or limited recognition number, 
and his or her name and signature'' in order to provide support for 
someone accorded limited recognition to act in a representative 
capacity.
    Section 1.36: Section 1.36(a) is proposed to be revised to change 
Sec.  1.17(h) to Sec.  1.17(f). The fee for a petition to allow a split 
power of attorney should be the same regardless of whether the split 
power of attorney results from revocation by fewer than all of the 
inventors, as provided in Sec.  1.36(a), or from a petition under Sec.  
1.183 to waive the provisions of Sec.  1.32(b)(4) requiring that a 
power of attorney be signed by the applicant for patent (Sec.  1.41(b)) 
or the assignee of the entire interest of the applicant. Furthermore, 
``registered patent attorney or patent agent'' is proposed to be 
changed to ``patent practitioner.''
    Section 1.78: Section 1.78(a)(2)(i) is proposed to be revised to 
add ``, or international application designating the United States of 
America,'' to require international applications to contain a specific 
reference to the earlier nonprovisional application.
    Section 1.78(a)(5)(iv) is proposed to be revised to require the 
English translation of a provisional application to be filed in a 
provisional application, instead of also permitting the translation to 
be filed in each nonprovisional application that claims the benefit of 
the filing date of the provisional application. Section 1.78(a)(5)(iv) 
is also proposed to be revised to provide that applicant must file, in 
a nonprovisional application, confirmation of the filing of the 
translation and statement, when a notice is mailed in the 
nonprovisional application requiring the translation and statement. 
Currently, Sec.  1.78(a)(5)(iv) provides that when, pursuant to 35 
U.S.C. 119(e), benefit is being claimed to a provisional application 
which was filed in a language other than English, an English language 
translation of the provisional application, accompanied by a statement 
that the translation is accurate, must be filed in either: (a) the 
provisional application or (b) each nonprovisional application that 
claims the benefit of the provisional application. Thus, if the 
translation and statement are not filed in the provisional application, 
they may be filed in each application that claims the benefit of the 
filing date of the provisional application (to satisfy the requirement 
of the rule). A provisional application is open to the public if the 
benefit of the provisional application is claimed in an application 
that has either been published or patented. Where the translation and 
statement are not filed in the provisional application because they are 
filed in each nonprovisional application(s) claiming the benefit of the 
provisional application, there is a burden on the public in finding the 
translation and statement, and to the Office in storing possibly 
duplicate copies of the documents. Further, when a translation of the 
provisional application is filed in the nonprovisional application, the 
Office

[[Page 17632]]

has sometimes confused the translation of the provisional with the 
specification papers to be used for the application. Since the option 
is available to file the translation and statement in the 
nonprovisional application, applicant's counsel may inadvertently 
choose that option in situations where there are many nonprovisional 
applications claiming the benefit of a single provisional application, 
and incur substantial expense for having to file a copy in each 
nonprovisional application. Having only one copy of the translation 
(and statement) ``centrally'' filed in the provisional application, 
regardless of how many nonprovisional applications claim benefit of 
that provisional application, would be beneficial for applicants, the 
public, and the Office. Accordingly, Sec.  1.78(a)(5)(iv) is proposed 
to be revised to delete from the first sentence ``or the later-filed 
nonprovisional application'' to thereby eliminate the option to file 
the translation and statement in the nonprovisional application. 
Furthermore, Sec.  1.78(a)(5)(iv) is further proposed to be revised to 
add ``, in the provisional application,'' after ``a period of time 
within which to file.'' Lastly, the last sentence of Sec.  
1.78(a)(5)(iv) is further proposed to be revised to read ``If the 
notice is mailed in a pending nonprovisional application, a timely 
reply to such a notice must include the filing of a confirmation in the 
nonprovisional application that the translation and statement were 
filed in the provisional application or the nonprovisional application 
will be abandoned.''
    Section 3.28: Section 3.28 currently directs that ``[o]nly one set 
of documents and cover sheets to be recorded should be filed'' which 
discourages assignees from submitting one set of documents including a 
patent cover sheet and the document to be recorded, and another set of 
documents including a trademark cover sheet and another copy of the 
document to be recorded. While the Office can process a set of 
documents that includes a patent cover sheet, trademark cover sheet, 
and only one copy of the document to be recorded, submitting only one 
copy of the document can lead to the misconception that a document 
submitted for recordation has been omitted, or the document submitted 
only belongs to the second cover sheet, particularly when the documents 
are submitted by facsimile and there is a break in the transmission. 
For example, if a submission includes: a trademark sheet on pages 1 and 
2, a patent cover sheet on page 3, and a document for recording on 
pages 4-7, then, if pages 1 and 2 are separated from the remainder of 
the set of documents, it may not be clear that the trademark cover 
sheet is missing since the patent cover sheet and the document to be 
recorded would have themselves made a complete set of documents. To 
reduce confusion, it is proposed to revise Sec.  3.28 to require that a 
separate copy of the document to be recorded be submitted with each 
cover sheet. Note that even if the term ``copy of the document to be 
recorded'' is not used in this discussion, the document submitted for 
recordation must be a copy, and not the original document, and the term 
``document to be recorded'' has been used to emphasize that the 
document is to be recorded, not to suggest that an original may be 
submitted.
    Section 3.28 is proposed to be revised to state that each document 
to be recorded must be accompanied by a single cover sheet (and not 
multiple cover sheets), to put parenthesis around ``as specified in 
Sec.  3.31,'' and to delete the statement that at least one cover sheet 
must be included with each document submitted for recording. Section 
3.28 is also proposed to be revised to delete the sentence that states 
that only one set of documents and cover sheets to be recorded should 
be filed, and to make it clear that if an assignment includes interests 
in, or transactions involving, both patents and trademarks, then two 
copies of each document (each document with its own cover sheet) would 
have to be submitted. Thus, a patent cover sheet and a copy of the 
document, and a trademark cover sheet and a copy of the document, would 
be submitted.
    Section 3.31: Section 3.31(a)(7) is proposed to be amended to 
delete ``submission'' before ``(e.g./Thomas O'Malley III/)'' to correct 
an obvious error.
    Section 3.73: Section 3.73(b)(1)(i) is proposed to be revised to 
require, for patent matters, that the document(s) submitted to 
establish ownership under Sec.  3.73(b) be recorded pursuant to Sec.  
3.11 in the assignment records.
    In order to take action in a patent application or a patent, a 
party must comply with Sec.  3.73 to establish ownership of the rights 
to a patent application or a patent (i.e., a patent property) by 
submitting to the Office a signed statement identifying the assignee. 
The signed statement must be accompanied by either: (i) Documentary 
evidence of a chain of title from the original owner to the assignment, 
or (ii) a statement specifying where such documentary evidence is 
recorded in the Office's assignment records. Where option (i) is 
chosen, there is no requirement that the document(s) submitted to 
establish ownership also be recorded pursuant to Sec.  3.11 in the 
assignment records, unless the Office explicitly requires such 
recordation on a case-by-case basis. Such a requirement is made only in 
the rare situation where a question arises as to ownership of the 
property. It is desirable, however, that the Office's patent assignment 
records should, as a rule, reflect the assignment of any assignee 
seeking to take action in a patent application or patent. The current 
system which permits an assignee to take action by submitting a copy of 
the assignment in a patent application or patent, but not requiring the 
assignment to be recorded in the Office's patent assignment records, 
makes a search of the Office's patent assignment records unreliable. 
Permitting an assignee to take action in an application or patent 
without also recording the assignment (in the Office's assignment 
records) can also serve to discourage an assignee from recording its 
assignment document(s), and thus lose the right to rely upon 
recordation pursuant to 35 U.S.C. 261 (''An assignment, grant or 
conveyance shall be void as against any subsequent purchaser or 
mortgagee for a valuable consideration, without notice, unless it is 
recorded in the Patent and Trademark Office within three months from 
its date or prior to the date of such subsequent purchase or 
mortgage.'')
    Section 3.73(b)(1)(i) is proposed to be revised to require that the 
submission of the documentary evidence to establish ownership must be 
accompanied by a statement affirming that the documentary evidence of 
the chain of title from the original owner to the assignee was 
submitted for recordation pursuant to Sec.  3.11. Thus, when filing a 
Sec.  3.73(b) statement to establish ownership an applicant or patent 
owner must also submit the assignment document(s) to the Office for 
recordation, if such a submission has not been previously made. If the 
Sec.  3.73(b) statement is not accompanied by a statement affirming 
that the documentary evidence was submitted for recordation pursuant to 
Sec.  3.11, then the Sec.  3.73(b) statement will not be accepted, and 
the assignee(s) will not have established the right to take action in 
the patent application or the patent for which the Sec.  3.73(b) 
statement was submitted. For trademark matters, there would continue to 
be no requirement that the submission of the documentary evidence be 
accompanied by a statement affirming that the documentary evidence was 
submitted

[[Page 17633]]

for recordation. Rather, paragraph (b)(1)(i) would continue to set 
forth that the Office may require (as deemed appropriate in any 
individual case) the documents submitted to establish ownership to be 
recorded pursuant to Sec.  3.11 in the assignment records of the Office 
as a condition to permitting the assignee to take action in a matter 
pending before the Office.
    Section 10.112: Section 10.112 is proposed to be revised to correct 
the cross reference, changing ``10.6(c)'' to ``11.6(c).''

Rule Making Considerations

    Administrative Procedure Act: The changes proposed in this notice 
(except for the petition fee change for a split power of attorney 
resulting from revocation of the power of attorney by fewer than all of 
the applicants or assignees of the applicants) relate solely to the 
procedures to be followed during the prosecution of a patent 
application. Specifically, the changes proposed in this notice concern: 
(1) Providing the proper S-signature by someone acting with limited 
recognition pursuant to Sec.  11.9(a) and Sec.  11.9(b); (2) providing 
for a power of attorney to a person acting with limited recognition 
pursuant to Sec.  11.9(a) and Sec.  11.9(b); (3) providing that the 
petition fee for a split power of attorney resulting from revocation of 
the power of attorney by fewer than all of the applicants or assignees 
of the applicants be the same as the petition fee to waive the rules to 
appoint a split power of attorney initially; (4) requiring that the 
translation of a non-English language provisional application and 
statement that the translation is accurate be filed in a provisional 
application, rather than either the nonprovisional application claiming 
the benefit of the provisional application or the provisional 
application; and (5) requiring that the evidentiary evidence of 
ownership be recorded under 37 CFR part 3 when an assignee takes action 
in a patent application. Therefore, these rule changes involve 
interpretive rules, or rules of agency practice and procedure under 5 
U.S.C. 553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 
690 (D.C. Cir. 2001) (rules governing an application process are 
``rules of agency organization, procedure, or practice'' and are exempt 
from the Administrative Procedure Act's notice and comment 
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 
1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice 
promulgated under the authority of former 35 U.S.C. 6(a) (now in 35 
U.S.C. 2(b)(2)) are not substantive rules to which the notice and 
comment requirements of the Administrative Procedure Act apply), and 
Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) (``it is 
doubtful whether any of the rules formulated to govern patent and 
trade-mark practice are other than `interpretative rules, general 
statements of policy, * * * procedure, or practice.''') (quoting C.W. 
Ooms, The United States Patent Office and the Administrative Procedure 
Act, 38 Trademark Rep. 149, 153 (1948)).
    Regulatory Flexibility Act: Prior notice and an opportunity for 
public comment were not required pursuant to 5 U.S.C. 553 (or any other 
law) for the procedural changes proposed in this notice. Therefore, an 
initial regulatory flexibility analysis under the Regulatory 
Flexibility Act (5 U.S.C. 601 et seq.) is not required for those 
changes proposed in this notice (with the sole exception of the change 
to the petition fee for revocation of a power of attorney by fewer than 
all of the applicants). See 5 U.S.C. 603.
    With respect to the petition fee change, the proposed rule will 
increase the petition fee for revocation of a power of attorney by 
fewer than all of the applicants. This notice proposes to change the 
petition fee (from the $130.00 fee specified in Sec.  1.17(h) to the 
$400.00 fee specified in Sec.  1.17(f)) in situations where a split 
power of attorney results from revocation of the power of attorney by 
fewer than all of the applicants or assignees of the applicants. The 
proposed rule will bring the fees in line with the actual cost of 
treating such petitions (in view of the special handling required for 
the split power of attorney resulting from revocation of the power of 
attorney). This petition fee is established pursuant to the Office's 
authority under 35 U.S.C. 41(d) to establish fees for all processing, 
services, or materials relating to patents not otherwise specified in 
35 U.S.C. 41 to recover the estimated average cost to the Office of 
such processing, services, or materials.
    The Office received over 376,000 nonprovisional patent applications 
and over 102,000 provisional patent applications in fiscal year 2004. 
The Office receives fewer than five petitions for revocation of the 
power of attorney by fewer than all of the applicants or assignees of 
the applicants each year. On this basis alone, the fee change will not 
have an impact on a substantial number of small businesses. While the 
Office does not track the entity status of such petitions, the small 
entity patent application filing rate has not been greater than 31.0% 
during the last five fiscal years. Thus, this proposed change (even if 
all of the affected patents were by a small entity) would impact no 
more than two small entities in any calendar year.
    Accordingly, for the reasons set forth herein, 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 economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(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 notice involves information 
collection requirements which 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 collection of information involved in 
this notice has been reviewed and previously approved by OMB under OMB 
control number 0651-0012, 0651-0027, 0651-0031, 0651-0032, and 0651-
0035. 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 principal impacts of the changes 
proposed in this notice are: (1) Providing for the proper S-signature 
by someone acting with limited recognition pursuant to Sec.  11.9(a) 
and Sec.  11.9(b); (2) providing for power of attorney to a person 
acting with limited recognition pursuant to Sec.  11.9(a) and Sec.  
11.9(b); (3) providing that the fee for a split power of attorney 
resulting from revocation of the power of attorney by fewer than all of 
the applicants or assignees of the applicants be the same as the fee to 
waive the rules to appoint a split power of attorney initially; (4) 
requiring that the translation of a non-English language provisional 
application and statement that the translation is accurate be filed in 
a provisional application, rather than either the nonprovisional 
application claiming the benefit of the provisional application or the 
provisional application; and (5) requiring that the evidentiary 
evidence of ownership be recorded under 37 CFR part 3 when an

[[Page 17634]]

assignee takes action in a patent application.
    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, Office of the Deputy Commissioner for Patent 
Examination Policy, P.O. Box 1450, Alexandria, VA 22313-1450, or to the 
Office of Information and Regulatory Affairs, Office of Management and 
Budget, New Executive Office Building, Room 10235, 725 17th Street, 
NW., Washington, DC 20503, Attention: Desk Officer for the 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

37 CFR Part 1

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

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents, 
Reporting and record keeping requirements.

37 CFR Part 10

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and record keeping requirements.

    For the reasons set forth in the preamble, 37 CFR parts 1, 3, and 
10 are 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 1.4 is amended by revising paragraph (d)(2) introductory 
text, and paragraph (d)(2)(ii) to read as follows:


Sec.  1.4  Nature of correspondence and Signature Requirements.

* * * * *
    (d) * * *
    (2) S-signature. An S-signature is a signature inserted between 
forward slash marks, but not a handwritten signature as defined by 
Sec.  1.4(d)(1). An S-signature includes any signature made by 
electronic or mechanical means, and any other mode of making or 
applying a signature not covered by either a handwritten signature of 
Sec.  1.4(d)(1) or an Office Electronic Filing System (EFS) character 
coded signature of Sec.  1.4(d)(3). Correspondence being filed in the 
Office in paper, by facsimile transmission as provided in Sec.  1.6(d), 
or via the Office Electronic Filing System as an EFS Tag(ged) Image 
File Format (TIFF) attachment, for a patent application, patent, or a 
reexamination proceeding may be S-signature signed instead of being 
personally signed (i.e., with a handwritten signature) as provided for 
in paragraph (d)(1) of this section. The requirements for an S-
signature under this paragraph (d)(2) are as follows.
* * * * *
    (ii) A patent practitioner (Sec.  1.32(a)(1)), signing pursuant to 
Sec. Sec.  1.33(b)(1) or 1.33(b)(2), must supply his/her registration 
number or limited recognition number either as part of the S-signature, 
or immediately below or adjacent to the S-signature. The number 
() character may only be used as part of the S-signature when 
appearing before a practitioner's registration number or limited 
recognition number; otherwise the number character may not be used in 
an S-signature.
* * * * *
    3. Section 1.11 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.11  Files open to the public.

    (a) The specification, drawings, and all papers relating to the 
file of: a published application; a patent; or a statutory invention 
registration are open to inspection by the public, and copies may be 
obtained upon the payment of the fee set forth in Sec.  1.19(b)(2). If 
an application was published in redacted form pursuant to Sec.  1.217, 
the complete file wrapper and contents of the patent application will 
not be available if: the requirements of paragraphs (d)(1), (d)(2), and 
(d)(3) of Sec.  1.217 have been met in the application; and the 
application is still pending. See Sec.  2.27 for trademark files.
* * * * *
    4. Section 1.17 is amended by revising paragraph (f) to read as 
follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (f) For filing a petition under one of the following sections which 
refers to this paragraph: $400.00.

    Sec.  1.36(a)--for revocation of a power of attorney by fewer 
than all of the applicants.
    Sec.  1.53(e)--to accord a filing date.
    Sec.  1.57(a)--to accord a filing date.
    Sec.  1.182--for decision on a question not specifically 
provided for.
    Sec.  1.183--to suspend the rules.
    Sec.  1.378(e)--for reconsideration of decision on petition 
refusing to accept delayed payment of maintenance fee in an expired 
patent.
    Sec.  1.741(b)--to accord a filing date to an application under 
Sec.  1.740 for extension of a patent term.
* * * * *
    5. Section 1.31 is revised to read as follows:


Sec.  1.31  Applicants may be represented by one or more patent 
practitioners or joint inventors.

    An applicant for patent may file and prosecute his or her own case, 
or he or she may give a power of attorney so as to be represented by 
one or more patent practitioners or joint inventors. The United States 
Patent and Trademark Office cannot aid in the selection of a patent 
practitioner.
    6. Section 1.32 is amended by revising paragraphs (a) and (c)(3) to 
read as follows:


Sec.  1.32  Power of attorney.

    (a) Definitions--(1) Patent practitioner means a registered patent 
attorney or registered patent agent under Sec.  11.6 of this chapter, 
or an individual granted limited recognition to file or prosecute a 
patent application, or other patent proceeding, before the United 
States Patent and Trademark Office under Sec.  11.9(a) or Sec.  
11.9(b).
    (2) Power of attorney means a written document by which a principal 
authorizes one or more patent practitioners or joint inventors to act 
on his or her behalf.
    (3) Principal means either an applicant for patent (Sec.  1.41(b)) 
or an assignee of entire interest of the applicant for patent or in a 
reexamination proceeding, the assignee of the entirety of ownership of 
a patent. The principal executes a power of attorney designating one or 
more patent practitioners or joint inventors to act on his or her 
behalf.
    (4) Revocation means the cancellation by the principal of the 
authority previously given to a patent practitioner or joint inventor 
to act on his or her behalf.
    (5) Customer Number means a number that may be used to:
    (i) Designate the correspondence address of a patent application or 
patent such that the correspondence address for the patent application, 
patent or other patent proceeding would be the address associated with 
the Customer Number;

[[Page 17635]]

    (ii) Designate the fee address (Sec.  1.363) of a patent such that 
the fee address for the patent would be the address associated with the 
Customer Number; and
    (iii) Submit a list of patent practitioners such that those patent 
practitioners associated with the Customer Number would have power of 
attorney.
* * * * *
    (c) * * *
    (3) Ten or fewer patent practitioners, stating the name and 
registration number or limited recognition number of each patent 
practitioner. Except as provided in paragraph (c)(1) or (c)(2) of this 
section, the Office will not recognize more than ten patent 
practitioners as being of record in an application or patent. If a 
power of attorney names more than ten patent practitioners, such power 
of attorney must be accompanied by a separate paper indicating which 
ten patent practitioners named in the power of attorney are to be 
recognized by the Office as being of record in the application or 
patent to which the power of attorney is directed.
    7. Section 1.33 is amended by revising paragraphs (a) introductory 
text, (a)(1), (b)(1) and (b)(2) and by adding paragraph (e) to read as 
follows:


Sec.  1.33  Correspondence respecting patent applications, 
reexamination proceedings, and other proceedings.

    (a) Correspondence address and daytime telephone number. When 
filing an application, a correspondence address must be set forth in 
either an application data sheet (Sec.  1.76), or elsewhere, in a 
clearly identifiable manner, in any paper submitted with an application 
filing. If no correspondence address is specified, the Office may treat 
the mailing address of the first named inventor (if provided, see 
Sec. Sec.  1.76(b)(1) and 1.63(c)(2)) as the correspondence address. 
The Office will direct all notices, official letters, and other 
communications relating to the application to the correspondence 
address. The Office will not engage in double correspondence with an 
applicant and a patent practitioner, or with more than one patent 
practitioner except as deemed necessary by the Director. If more than 
one correspondence address is specified in a single document, the 
Office will establish one as the correspondence address and will use 
the address associated with a Customer Number, if given, over a typed 
correspondence address. For the party to whom correspondence is to be 
addressed, a daytime telephone number should be supplied in a clearly 
identifiable manner and may be changed by any party who may change the 
correspondence address. The correspondence address may be changed as 
follows:
    (1) Prior to filing of Sec.  1.63 oath or declaration by any of the 
inventors. If a Sec.  1.63 oath or declaration has not been filed by 
any of the inventors, the correspondence address may be changed by the 
party who filed the application. If the application was filed by a 
patent practitioner, any other patent practitioner named in the 
transmittal papers may also change the correspondence address. Thus, 
the inventor(s), any patent practitioner named in the transmittal 
papers accompanying the original application, or a party that will be 
the assignee who filed the application, may change the correspondence 
address in that application under this paragraph.
* * * * *
    (b) * * *
    (1) A patent practitioner of record appointed in compliance with 
Sec.  1.32(b);
    (2) A patent practitioner not of record who acts in a 
representative capacity under the provisions of Sec.  1.34;
* * * * *
    (e) A change of address filed in a patent application or patent 
does not change the address for a patent practitioner in the roster of 
patent attorneys and agents. See Sec.  11.11 of this chapter.
    8. Section 1.34 is revised to read as follows:


Sec.  1.34  Acting in a representative capacity.

    When a patent practitioner acting in a representative capacity 
appears in person or signs a paper in practice before the United States 
Patent and Trademark Office in a patent case, his or her personal 
appearance or signature shall constitute a representation to the United 
States Patent and Trademark Office that under the provisions of this 
subchapter and the law, he or she is authorized to represent the 
particular party in whose behalf he or she acts. In filing such a 
paper, the patent practitioner must set forth his or her registration 
number, or limited recognition number, and his or her name and 
signature. Further proof of authority to act in a representative 
capacity may be required.
    9. Section 1.36 is amended by revising paragraph (a) to read as 
follows:


Sec.  1.36  Revocation of power of attorney; withdrawal of patent 
attorney or agent.

    (a) A power of attorney, pursuant to Sec.  1.32(b), may be revoked 
at any stage in the proceedings of a case by an applicant for patent 
(Sec.  1.41(b)) or an assignee of the entire interest of the applicant, 
or the owner of the entire interest of a patent. A power of attorney to 
the patent practitioners associated with a Customer Number will be 
treated as a request to revoke any powers of attorney previously given. 
Fewer than all of the applicants (or fewer than all of the assignees of 
the entire interest of the applicant or, in a reexamination proceeding, 
fewer than all the owners of the entire interest of a patent) may only 
revoke the power of attorney upon a showing of sufficient cause, and 
payment of the petition fee set forth in Sec.  1.17(f). A patent 
practitioner will be notified of the revocation of the power of 
attorney. Where power of attorney is given to the patent practitioners 
associated with a Customer Number (Sec.  1.32(c)(2)), the practitioners 
so appointed will also be notified of the revocation of the power of 
attorney when the power of attorney to all of the practitioners 
associated with the Customer Number is revoked. The notice of 
revocation will be mailed to the correspondence address for the 
application (Sec.  1.33) in effect before the revocation. An assignment 
will not of itself operate as a revocation of a power previously given, 
but the assignee of the entire interest of the applicant may revoke 
previous powers of attorney and give another power of attorney of the 
assignee's own selection as provided in Sec.  1.32(b).
* * * * *
    10. Section 1.78 is amended by revising paragraphs (a)(2)(i) and 
(a)(5)(iv) to read as follows:


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

    (a) * * *
    (2)(i) Except for a continued prosecution application filed under 
Sec.  1.53(d), any nonprovisional application, or international 
application designating the United States of America, claiming the 
benefit of one or more prior-filed copending nonprovisional 
applications or international applications designating the United 
States of America must contain or be amended to contain a reference to 
each such prior-filed application, identifying it by application number 
(consisting of the series code and serial number) or international 
application number and international filing date and indicating the 
relationship of the applications. Cross references to other related 
applications may be made when appropriate (see Sec.  1.14).
* * * * *
    (5) * * *

[[Page 17636]]

    (iv) If the prior-filed provisional application was filed in a 
language other than English and both an English-language translation of 
the prior-filed provisional application and a statement that the 
translation is accurate were not previously filed in the prior-filed 
provisional application, applicant will be notified and given a period 
of time within which to file, in the provisional application, an 
English-language translation of the non-English-language prior-filed 
provisional application and a statement that the translation is 
accurate. If the notice is mailed in a pending nonprovisional 
application, a timely reply to such a notice must include the filing of 
a confirmation in the nonprovisional application that the translation 
and statement were filed in the provisional application or the 
nonprovisional application will be abandoned.
* * * * *

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

    11. The authority citation for 37 CFR part 3 continues to read as 
follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).

    12. Section 3.28 is revised to read as follows:


Sec.  3.28  Requests for recording.

    Each document submitted to the Office for recording must include a 
single cover sheet (as specified in Sec.  3.31) referring either to 
those patent applications and patents, or to those trademark 
applications and registrations, against which the document is to be 
recorded. If a document to be recorded includes interests in, or 
transactions involving, both patents and trademarks, then separate 
patent and trademark cover sheets, each accompanied by a copy of the 
document to be recorded, should be submitted. If a document to be 
recorded is not accompanied by a completed cover sheet, the document 
and the incomplete cover sheet will be returned pursuant to Sec.  3.51 
for proper completion, in which case the document and a completed cover 
sheet should be resubmitted.
    13. Section 3.31 is amended by revising paragraph (a)(7)(i) to read 
as follows:


Sec.  3.31  Cover sheet content.

    (a) * * *
    (7) * * *
    (i) Place a symbol comprised of letters, numbers, and/or 
punctuation marks between forward slash marks (e.g. /Thomas O'Malley 
III/) in the signature block on the electronic submission; or
* * * * *
    14. Section 3.73 is amended by revising paragraph (b)(1)(i) to read 
as follows:


Sec.  3.73  Establishing right of assignee to take action.

* * * * *
    (b)(1) * * *
    (i) Documentary evidence of a chain of title from the original 
owner to the assignee (e.g., copy of an executed assignment). For 
trademark matters only, the documents submitted to establish ownership 
may be required to be recorded pursuant to Sec.  3.11 in the assignment 
records of the Office as a condition to permitting the assignee to take 
action in a matter pending before the Office. For patent matters only, 
the submission of the documentary evidence must be accompanied by a 
statement affirming that the documentary evidence of the chain of title 
from the original owner to the assignee was submitted for recordation 
pursuant to Sec.  3.11; or
* * * * *

PART 10--REPRESENTATION OF OTHERS BEFORE THE PATENT AND TRADEMARK 
OFFICE

    15. The authority citation for 37 CFR part 10 continues to read as 
follows:

    Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41.

    16. Section 10.112 is amended by revising paragraph (a) to read as 
follows:


Sec.  10.112  Preserving identity of funds and property of client.

    (a) All funds of clients paid to a practitioner or a practitioner's 
firm, other than advances for costs and expenses, shall be deposited in 
one or more identifiable bank accounts maintained in the United States 
or, in the case of a practitioner having an office in a foreign country 
or registered under Sec.  11.6(c), in the United States or the foreign 
country.
* * * * *

    Dated: April 1, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-6931 Filed 4-6-05; 8:45 am]
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