[Federal Register Volume 70, Number 87 (Friday, May 6, 2005)]
[Notices]
[Pages 24005-24007]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-8876]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. 2005-P-059]


Changes to the Transitional Procedures for Limited Examination 
After Final Rejection in Certain Applications Filed Before June 8, 1995

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: The Uruguay Round Agreements Act (URAA) provided for a 
transitional procedure for the limited examination after final 
rejection in certain applications filed before June 8, 1995. The United 
States Patent and Trademark Office (Office) is changing its final 
action practice for the Office action immediately following a 
submission under the URAA transitional limited examination procedure. 
The Office is changing this final action practice to conform with the 
intent of the URAA and to facilitate the completion of prosecution of 
applications to which the URAA transitional limited examination 
procedure applies.

DATES: Effective Date: The change in practice in this notice applies to 
any submission under 37 CFR 1.129(a) filed on or after June 8, 2005.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent 
Attorney, Office of the Deputy Commissioner for Patent Examination 
Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA 22313-1450, or by facsimile to (571) 273-7735, marked to the 
attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The URAA provided (among other things) for 
the Office to prescribe regulations to provide further limited 
(re)examination after final rejection of applications that have been 
pending for two years or longer as of June 8, 1995, taking into account 
any reference made in such application to any earlier filed 
applications under 35 U.S.C. 120, 121, or 365(c). See Pub. L. 103-465, 
Sec.  532(a)(2)(A), 108 Stat. 4809, 4985 (1994). The Statement of 
Administration Action that accompanied the URAA indicated that the 
purpose of this transitional procedure for the limited examination of 
certain applications filed before June 8, 1995, was to facilitate the 
completion of the prosecution of applications pending in the Office as 
of June 8, 1995. See Uruguay Round Agreements Act: Statement of 
Administrative Action, H.R. Doc. No.

[[Page 24006]]

103-316, at 1005 (1994), reprinted in 1994 U.S.C.C.A.N. 4040, 4298 
(emphasis added). Section 102(d) of the URAA (19 U.S.C. 3512(d)) 
provides that ``[t]he statement of administrative action approved by 
the Congress under section 101(a) shall be regarded as an authoritative 
expression by the United States concerning the interpretation and 
application of the Uruguay Round Agreements and this Act in any 
judicial proceeding in which a question arises concerning such 
interpretation or application.'' See also RHP Bearings, Ltd. v. United 
States, 288 F.3d 1334, 1344 n.7 (Fed. Cir. 2002).
    The Office implemented this provision in the URAA for the further 
limited examination of certain applications filed before June 8, 1995, 
in a then new 37 CFR 1.129(a). See Changes to Implement 20-Year Patent 
Term and Provisional Applications, 60 FR 20195 (Apr. 25, 1995), 1174 
Off. Gaz. Pat. Office 15 (May 2, 1995) (final rule) (Twenty-Year Term 
Final Rule). With respect to the question of whether the Office action 
following a submission under 37 CFR 1.129(a) would be made final, the 
preamble to the Twenty-Year Term Final Rule indicated that: The next 
[Office] action following timely payment of the fee set forth in [37 
CFR] 1.17(r) will be equivalent to a first action in a continuing 
application. * * * Thus, under [37 CFR] 1.129(a), if the first 
submission after final rejection was initially denied entry in the 
application because (1) new issues were raised that required further 
consideration and/or search, or (2) the issue of new matter was raised, 
then the next action in the application will not be made final. 
Likewise, if the second submission after final rejection was initially 
denied entry in the application because (1) new issues were raised that 
required further consideration and/or search, or (2) the issue of new 
matter was raised, then the next action in the application will not be 
made final.
    See Changes to Implement 20-Year Patent Term and Provisional 
Applications, 60 FR at 20199, 1174 Off. Gaz. Pat. Office at 18. This 
statement of Office practice was subsequently incorporated into the 
Manual of Patent Examining Procedure (MPEP). See MPEP 706.07(g) (8th 
ed. 2001) (Rev. 2, May 2004).
    It has now been a decade since the change to twenty-year patent 
term in the URAA. Nevertheless, there are still applications filed 
before June 8, 1995, pending before the Office in which a second (or 
both first and second) submission under 37 CFR 1.129(a) may be filed, 
though the Office now receives fewer than 100 submissions under 37 CFR 
1.129(a) each year. This final action practice for the Office action 
immediately following a submission under 37 CFR 1.129(a) is having a 
greater than anticipated (in 1995) effect in working against the 
completion of prosecution of applications filed before June 8, 1995. In 
addition, a review of the Statement of Administration Action reveals 
that the final action practice for the Office action immediately 
following a submission under 37 CFR 1.129(a) (treating such Office 
action as the equivalent to a first action in a continuing application) 
was not the contemplated implementation of the transitional procedure 
provided for in Sec.  532(a)(2)(A) of the URAA. See Uruguay Round 
Agreements Act: Statement of Administrative Action, H.R. Doc. No. 103-
316, at 1006, reprinted in 1994 U.S.C.C.A.N. at 4298 (``[t]he [Office] 
will consider the merits of the first and second such submission, to 
the extent that such submissions would have been entitled to 
consideration if made prior to final rejection. The [Office] will 
modify such final rejection or allow such application, as appropriate, 
based upon consideration of such submissions''). Therefore, the Office 
is changing its final action practice for the Office action immediately 
following a submission under 37 CFR 1.129(a) to bring about the 
completion of prosecution of applications to which the transitional 
procedure set forth in 37 CFR 1.129(a) applies.
    Under the final action practice for the Office action immediately 
following a submission under 37 CFR 1.129(a) now being adopted by the 
Office: The next Office action following timely filing of a submission 
under 37 CFR 1.129(a) (and payment of the fee set forth in 37 CFR 
1.17(r)) will be equivalent to the next Office action following a reply 
to a non-final Office action. Under existing second Office action final 
practice, such an Office action on the merits shall be made final, 
except where the examiner introduces a new ground of rejection that is 
neither necessitated by applicant's amendment of the claims nor based 
on information submitted in an information disclosure statement filed 
during the period set forth in 37 CFR 1.97(c) with the fee set forth in 
37 CFR 1.17(p). See MPEP 706.07(a). Any information disclosure 
statement submitted under 37 CFR 1.129(a) without the statement 
specified in 37 CFR 1.97(e) will be treated as though it had been filed 
within the time period set forth in 37 CFR 1.97(c) with the fee set 
forth in 37 CFR 1.17(p) (in view of applicant's payment of the fee set 
forth in 37 CFR 1.17(r)).
    Under Sec.  532(a)(2)(A) of the URAA (and the Statement of 
Administration Action), an applicant whose application is eligible for 
the transitional further limited examination procedure set forth in 37 
CFR 1.129(a) is entitled to consideration of two after final 
submissions. Thus, if such an applicant has filed one submission under 
37 CFR 1.129(a) and the application is again under a final rejection, 
the applicant is entitled to only one additional submission under 37 
CFR 1.129(a). If such an applicant has filed two submissions under 37 
CFR 1.129(a) and the application is again under a final rejection, 
Sec.  532(a)(2)(A) of the URAA (and the Statement of Administration 
Action) and 37 CFR 1.129(a) do not entitle the applicant to 
consideration of any additional submissions under 37 CFR 1.129(a). The 
applicant is, of course, entitled to consideration of an additional 
submission if the submission meets the conditions set forth in 37 CFR 
1.116.
    The Office recognizes that its former final action practice for the 
Office action immediately following a submission under 37 CFR 1.129(a) 
resulted in some applicants effectively receiving consideration of more 
than two submissions under 37 CFR 1.129(a). Section 532(a)(2)(A) of the 
URAA and the Statement of Administration Action, however, provide only 
for consideration of a first and second submission under 37 CFR 
1.129(a), and do not contemplate each such submission being treated as 
the equivalent of a continuing application. That the Office's former 
final action practice for the Office action immediately following a 
submission under 37 CFR 1.129(a) resulted in some applicants 
effectively receiving consideration of more than two submissions under 
37 CFR 1.129(a) does not require the Office to continue to follow an 
after final practice having a result not contemplated by Sec.  
532(a)(2)(A) of the URAA and the Statement of Administration Action. 
See In re The Boulevard Entertainment, Inc., 334 F.3d 1336, 1343, 67 
USPQ2d 1475, 1480 (Fed. Cir. 2003) (that the Office has followed an 
improper practice in certain applications does not require the Office 
to follow that improper practice in all applications).
    Finally, the Twenty-Year Term Final Rule also indicated that the 
Office action following timely payment of the fee set forth in 37 CFR 
1.17(r) will be equivalent to a first action in a continuing 
application due to the amount of the fee specified in 37 CFR 1.17(r). 
See Changes to Implement 20-

[[Page 24007]]

Year Patent Term and Provisional Applications, 60 FR at 20199, 1174 
Off. Gaz. Pat. Office at 18. The fee amount specified in 37 CFR 1.17(r) 
does not justify a continuation of the final action practice set forth 
in the Twenty-Year Term Final Rule because: (1) The fee amount at 37 
CFR 1.17(r) is no longer equivalent to the fee required for filing an 
application (the filing, search, and examination fee); and (2) the 
applications still eligible for submissions under 37 CFR 1.129(a) tend 
to be more burdensome than the ``usual'' continuing application (e.g., 
these applications tend to have more claims, have more continuity 
information, and have more related copending applications). Therefore, 
the fee amount specified in 37 CFR 1.17(r) is no longer a sufficient 
justification for treating the Office action following a submission 
under 37 CFR 1.129(a) as the equivalent to a first action in a 
continuing application.
    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 0651-0031. The 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 OMB control number 0651-0031.
    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.
    Section 706.07(g) of the Manual of Patent Examining Procedure will 
be revised in due course to reflect this change in practice.

    Dated: April 20, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-8876 Filed 5-5-05; 8:45 am]
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