[Federal Register Volume 70, Number 185 (Monday, September 26, 2005)]
[Rules and Regulations]
[Pages 56119-56129]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-19128]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1, 2, 3, 5, and 10

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


Provisions for Claiming the Benefit of a Provisional Application 
With a Non-English Specification and Other Miscellaneous Matters

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
amending 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 if a nonprovisional application claims the 
benefit of the provisional application; a copy of documentary evidence 
supporting a claim of ownership be recorded in the Office's assignment 
records when an assignee takes action in a patent matter; and 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: Effective November 25, 2005.
    Applicability Date: The changes apply to any paper, application or 
reexamination proceeding filed in the Office on or after November 25, 
2005. Further, if a nonprovisional patent application claims the 
benefit of the filing date of a non-English provisional application, a 
translation of the provisional application and a statement that the 
translation was accurate required by 37 CFR 1.78(a)(5)(iv) will not be 
required to be filed in the provisional application, if the translation 
and statement were filed in the nonprovisional application before 
November 25, 2005.

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, 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 final rule revises the rules of 
practice in title 37 of the Code of Federal Regulations (CFR) 
pertaining to records related to signature, availability of patent 
application files, power of attorney, provisional applications, and 
assignments.

Discussion of Specific Rules

    Section 1.4: Section 1.4(d)(2) is amended 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 amended to move the word ``only'' in the second 
sentence thereof from immediately preceding the word ``be'' to 
immediately following the word ``used'' and to change ``registered 
practitioner'' to ``patent practitioner (Sec.  1.32(a)(1)).'' The term 
``patent practitioner'' is defined in Sec.  1.32(a).
    Section 1.11: Section 1.11(a) is amended 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 
amended to remove ``abandoned'' before ``published application.'' 
Published applications are not physically available to the public to 
copy and inspect if the file is maintained in a paper file wrapper. If 
a published application is not maintained in paper, but is instead 
maintained in the image file wrapper (IFW) system, the application is 
made available for public inspection through the Patent Application 
Information Retrieval (PAIR) system pursuant to Sec.  1.14(a)(1)(iii) 
and 1.14(b). Since most

[[Page 56120]]

pending applications have become 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 amended 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 amended 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 change to Sec.  1.36(a). This 
change corrects 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 1.25: Section 1.25(c)(4) is amended to change the address 
for payment to replenish a deposit account submitted by mail with a 
private delivery service or hand-carrying the payment to: Director of 
the U.S. Patent and Trademark Office, Attn: Deposit Accounts, 2051 
Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
    Section 1.31: Section 1.31 is amended to change the title to 
``Applicant 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 revised rule. A definition for ``patent 
practitioner'' is added to Sec.  1.32(a), as discussed below, and the 
term ``patent practitioner'' is used in place of ``registered patent 
attorney or agent'' in Sec.  1.31, and in other rules. Further, Sec.  
1.31 is amended 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).
    Section 1.32: Section 1.32(a)(1) is amended to set forth the 
definition of ``patent practitioner'' and to renumber sections (a)(1) 
to (a)(4) as (a)(2) through (a)(5), respectively.
    Revised Sec.  1.32(a)(1) defines the term ``patent practitioner'' 
as ``a registered patent attorney or registered patent agent under 
Sec.  11.6.''
    Section 1.32(a)(1) is 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 patent practitioner(s) may be appointed in a 
power of attorney. Section 1.31 permits a power of attorney to be given 
to one or more patent practitioners or joint inventors, and this change 
is consistent therewith.
    Section 1.32(a)(2) is 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 
amended to change ``registered patent attorney or registered patent 
agent'' to ``patent practitioners or joint inventors.''
    Any power of attorney given to a practitioner who has been 
suspended or disbarred by the Office is ineffective, and does not 
authorize the person to practice before the Office or to represent 
applicants or patentees in patent matters.
    Section 1.32(a)(3) is renumbered as Sec.  1.32(a)(4), and further 
revised to change ``registered patent attorney or registered patent 
agent'' to ``patent practitioner or joint inventor.''
    Section 1.32(a)(4) is renumbered as Sec.  1.32(a)(5), and the 
resulting new paragraph Sec.  1.32(a)(5)(i) is amended to change both 
instances of ``patent application or patent'' to ``patent application, 
patent or other patent proceeding'' and the resulting new paragraph 
Sec.  1.32(a)(5)(iii) is amended to delete ``registered.''
    Section 1.32(c)(3) is amended such that the first sentence reads: 
``Ten or fewer patent practitioners, stating the name and registration 
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 amended to add a requirement for the registration number of the 
patent practitioner to assist the Office in making the practitioner of 
record. If the name submitted on the power of attorney does not match 
the name associated with the registration number provided in the Office 
of Enrollment and Discipline records for patent practitioners, the 
person that the Office will recognize as being of record will be the 
person associated with the registration number provided, because the 
Office enters the registration number, not the name, when making the 
practitioner of record. Accordingly, if the wrong registration number 
is provided, a new power of attorney will be required to correct the 
error.
    Section 1.33: Section 1.33(a) is amended to use the generic term 
``patent practitioner'' instead of ``registered patent attorney or 
patent agent.'' Specifically, Sec.  1.33(a) is amended to change 
``registered patent attorney or patent agent'' to ``patent 
practitioner'' in two places. In addition, Sec.  1.33(a) is amended to 
revise the sixth sentence to read: ``If more than one correspondence 
address is specified in a single document, the Office will select one 
of the specified addresses for use as the correspondence address and, 
if given, will select the address associated with a Customer Number 
over a typed correspondence address.'' Furthermore, Sec.  1.33(a)(1) is 
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.''
    Neither Sec.  1.33 nor any other rule authorize a practitioner who 
has been suspended or disbarred by the Office to practice before the 
Office.
    Section 1.33(b)(1) and Sec.  1.33(b)(2) are revised to change 
``registered patent attorney or patent agent'' to ``patent 
practitioner.''
    Section 1.33 is also revised to add new paragraph (e) to remind 
patent practitioners that the attorney roster must be updated 
separately from and in addition to any change of address filed in 
individual patent applications. Section 1.33 is amended 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 amended to change ``registered patent 
attorney or patent agent'' to ``patent practitioner'' in two places, to 
change ``in whose behalf'' to ``on whose behalf,'' and to change ``must 
specify his or her registration number and name with his or her 
signature'' to ``must set forth his or her registration number, his or 
her name, and signature'' in order to clarify that

[[Page 56121]]

the name and signature are separate requirements.
    Section 1.36: Section 1.36(a) is amended 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, ``only'' 
has been moved from immediately preceding the word ``revoke'' to 
immediately following the term ``power of attorney'' and ``registered 
patent attorney or patent agent'' is changed to ``patent 
practitioner.'' Section 402.01 of the Manual of Patent Examining 
Procedure (MPEP) provides additional information on a split power of 
attorney. See MPEP Sec.  402.01 (8th ed. 2001) (Rev. 3, August 2005).
    Section 1.52: Section 1.52 is amended by removing paragraphs 
(a)(5), (a)(7), and (b)(7), and by redesignating paragraph (a)(6) as 
paragraph (a)(5). The removed paragraphs explained the practice set 
forth in Sec.  1.135(c) wherein the Office will give applicant a new 
period of time to file a reply, if the initial reply was not complete 
or compliance with a requirement was inadvertently omitted. The 
paragraphs have been removed as unnecessary in view of Sec.  1.135(c).
    Section 1.78: Section 1.78(a)(5)(iv) is amended to require the 
English translation of a foreign-language provisional application be 
filed in the 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 amended 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. 
Previously, Sec.  1.78(a)(5)(iv) provided that when, pursuant to 35 
U.S.C. 119(e), benefit was being claimed of 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 have been filed in either: (1) 
The provisional application; or (2) each nonprovisional application 
that claims the benefit of the provisional application. Thus, if the 
translation and statement were not filed in the provisional 
application, they could have been 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 
were not filed in the provisional application because they were filed 
in each nonprovisional application(s) claiming the benefit of the 
provisional application, there was a burden on the public in finding 
the translation and statement, and on the Office in storing possibly 
duplicate copies of the documents. Further, when a translation of the 
provisional application was filed in the nonprovisional application, 
the Office sometimes confused the translation of the provisional with 
the specification papers to be used for the nonprovisional application. 
Because the option was available to file the translation and statement 
in the nonprovisional application, applicant's counsel may have 
inadvertently chosen that option in situations where there were many 
nonprovisional applications claiming the benefit of a single 
provisional application, and incurred substantial expense for having to 
file a translation 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 will be 
beneficial for applicants, the public, and the Office. Accordingly, 
Sec.  1.78(a)(5)(iv) is amended 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.
    Section 1.78(a)(5)(iv) is further revised to add ``, in the 
provisional application,'' after ``a period of time within which to 
file'' and the former last sentence of Sec.  1.78(a)(5)(iv) is further 
revised to read: ``If the notice is mailed in a pending nonprovisional 
application, a timely reply to such a notice must include the filing in 
the nonprovisional application of either a confirmation that the 
translation and statement were filed in the provisional application, or 
an amendment or Supplemental Application Data Sheet withdrawing the 
benefit claim, or the nonprovisional application will be abandoned.'' 
Lastly, the following sentence is added to the end of the paragraph: 
``The translation and statement may be filed in the provisional 
application, even if the provisional application has become 
abandoned.''
    Section 1.133: Section 1.133(a)(2) is amended to permit an 
interview before first Office action in any application if the examiner 
determines that such an interview would advance prosecution of the 
application. The Office conducted a pilot program permitting an 
interview before the first Office action in applications that were 
classified in class 705, subclasses 35 through 45, and assigned to 
Technology Center Art Units 3624 or 3628. See Notice of Pilot Program 
to Permit Pre-First Office Action Interview for Applications Assigned 
to Art Units 3624 and 3628 and Request for Comments on Pilot Programs, 
1281 Off. Gaz. Pat. Office 148 (Apr. 27, 2004). The Office received few 
requests for such interviews, but when such interviews were conducted, 
the feedback from examiners was that such interviews were usually 
beneficial and often assisted in focusing the issues for examination. 
Therefore, the Office sees no justification for maintaining the current 
prohibition in Sec.  1.133 on interviews before first Office action in 
non-continuing applications. Nevertheless, an interview before the 
first Office action in a non-continuing application will not be 
permitted unless the examiner determines that such an interview would 
advance prosecution of the application. Thus, the examiner may require 
that an applicant requesting an interview before first Office action 
provide a paper that includes a general statement of the state of the 
art at the time of the invention, and an identification of no more than 
three (3) references believed to be the ``closest'' prior art and an 
explanation as to how the broadest claim distinguishes over such 
references. See Notice of Pilot Program to Permit Pre-First Office 
Action Interview for Applications Assigned to Art Units 3624 and 3628 
and Request for Comments on Pilot Programs, 1281 Off. Gaz. Pat. Office 
at 149.
    Section 2.208: Section 2.208(c)(4) is amended to change the address 
for payment to replenish a deposit account submitted by mail with a 
private delivery service or hand-carrying the payment to: Director of 
the U.S. Patent and Trademark Office, Attn: Deposit Accounts, 2051 
Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
    Section 3.28: Section 3.28 previously directed that ``[o]nly one 
set of documents and cover sheets to be recorded should be filed'' 
which discouraged assignees from submitting one set of documents 
including a patent

[[Page 56122]]

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 could 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 could have led to the misconception by the Office 
that a document submitted for recordation has been omitted, or the 
document submitted belongs only 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 included: 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 have been clear that 
the trademark cover sheet was missing because the patent cover sheet 
and the document to be recorded would have themselves made a complete 
set of documents. To reduce confusion, Sec.  3.28 is revised 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 amended to state that each document to be recorded 
must be accompanied by a single cover sheet (and not multiple cover 
sheets), to put parentheses 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 
revised to delete the sentence which states that only one set of 
documents and cover sheets to be recorded must 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) must be submitted. 
Thus, a patent cover sheet and a copy of the document, and a trademark 
cover sheet and a copy of the document, must be submitted.
    Section 3.31: Section 3.31(a)(7) is 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 amended 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. 
In the prior version of the rule, the signed statement must have been 
accompanied by either: (1) Documentary evidence of a chain of title 
from the original owner to the assignee; or (2) a statement specifying 
where such documentary evidence is recorded in the Office's assignment 
records. Previously, where the first option was chosen, there was 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 required such recordation on a case-by-case basis. 
Such a requirement was made only in the rare situation where a question 
arose 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 previous system, which permitted an assignee to take action by 
submitting a copy of the assignment in a patent application or patent, 
but did not require the assignment to be recorded in the Office's 
patent assignment records, made 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) also encourages the late filing of 
assignment document(s) and defeats the benefits of timely recordation. 
See 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 amended to require that, for patent 
matters only, 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, or concurrently is, 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, or concurrently is, 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 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 trademark 
matter pending before the Office.
    Section 5.11: Section 5.11 is amended to correct cross references. 
Section 5.11(b) is amended to change ``15 CFR part 779'' to ``15 CFR 
part 734'' and ``Office of Export Administration, International Trade 
Administration'' to ``Bureau of Industry and Security.'' Section 
5.11(c) is amended to change ``data * * * is'' to ``data * * * are,'' 
``15 CFR parts 768-799'' to ``15 CFR parts 730-774,'' ``Export 
Administration'' to ``Bureau of Industry and Security,'' and ``15 CFR 
part 779'' to ``15 CFR part 734.''
    Section 5.19: Section 5.19 is amended to correct two cross 
references, and to update a reference to the Office. Section 5.19(a) is 
amended to change ``15 CFR 770.10(j)'' to ``15 CFR 734.3(b)(1)(v)'' and 
to add ``U.S.'' before ``Patent.'' Section 5.19(b) is amended to change 
``15 CFR 779A.3(e)'' to ``15 CFR 734.10(a).''
    Section 10.112: Section 10.112 is amended to correct the cross 
reference, changing ``10.6(c)'' to ``11.6(c).''
    Response to comments: The Office published a notice proposing 
changes to the rules of practice to: Allow a person acting with limited 
recognition to be given a power of attorney and authorization to sign 
amendments and other patent-related correspondence; require a copy of 
the English translation of a foreign-language provisional application 
be filed in the provisional application if a nonprovisional application 
claims the benefit of the provisional application; and require a copy 
of documentary evidence

[[Page 56123]]

supporting a claim of ownership be recorded in the Office's assignment 
records when an assignee takes action in a patent matter. See 
Provisions for Persons Granted Limited Recognition To Prosecute Patent 
Applications and Other Miscellaneous Matters, 70 FR 17629 (April 7, 
2005), 1294 Off. Gaz. Pat. Office 22 (May 3, 2005) (proposed rule). The 
Office received 11 written comments in response to this notice. 
Comments generally in support of a change are not discussed. Comments 
regarding limited recognition, other than comment 2, are not discussed. 
The other comments and the Office's responses to those comments follow:
    Comment 1: One comment addressed the proposed changes to Sec.  
1.11, noting that the change ``solidified a position held by the Patent 
Office in recent years that the act of publication at 18 months 
constitutes an inherent power to inspect.'' The comment raised a 
concern that having the inventor's signature available on the internet 
could assist someone in identity theft, and also questioned the 
Office's authority to make the file wrapper public.
    Response: In requiring publication of patent applications, Congress 
gave the Office the authority to determine how to publish patent 
applications. The Office has exercised this authority by publishing the 
specification, including the claims, in a searchable database, and by 
making the published application file available to the public, either 
on the internet, or through the Office of Public Records, or the File 
Information Unit, depending upon whether the file is available in image 
or paper form, and depending upon the status of the application 
(pending or abandoned). As to identity theft, the Office does not 
require Social Security Numbers, and takes steps to ensure that credit 
card information is not made part of a patent application file. Where 
an applicant elects to file a Petition to Make Special because of the 
age of the applicant, if the applicant uses a copy of his or her 
driver's license to support the petition, the Office will expunge the 
document from the images available to the public, if a petition under 
Sec.  1.59 is filed. The signature of the inventor on the oath or 
declaration for the patent application is required by 35 U.S.C. 116. 
The Office has always provided full access to the public to patented 
files so that the public can evaluate whether the statutory 
requirements (such as an oath or declaration required by 35 U.S.C. 116) 
were met, and to understand the prosecution history.
    Comment 2: One comment asked whether the proposed amendments would 
make private PAIR available to patent practitioners with limited 
recognition, i.e., whether someone with a limited recognition could be 
associated with a Customer Number.
    Response: Assignment of a limited recognition number would permit 
someone accorded limited recognition to have his or her limited 
recognition number associated with a Customer Number, and obtain a 
Public Key Infrastructure (PKI) certificate so as to obtain access to 
private PAIR. For further information on private PAIR, contact the 
Electronic Business Center by telephone at 866-217-9197 (toll free) or 
by e-mail to [email protected]. The Office has decided not to go forward 
with the proposed amendments regarding limited recognition at this 
time.
    Comment 3: One comment questions the statutory basis for the Office 
to require a translation of a foreign-language provisional application 
before the provisional application can be relied upon in a benefit 
claim. The comment suggests adding the following sentence to the 
beginning of Sec.  1.78(a)(5)(iv): ``Benefit to a provisional 
application may not be granted in any nonprovisional application or any 
international application designating the United States of America 
unless the provisional application is in English or an English-language 
translation is provided with a certification of the accuracy of the 
translation.''
    Response: The Office's authority to require an English translation 
is provided in 35 U.S.C. 2(b)(2)(A) (35 U.S.C. 6(a) at the time an 
English translation of a provisional application was originally added 
to the rules of practice). An English translation is a procedural 
requirement. As to the proposed insertion, the suggestion has not been 
adopted.
    Comment 4: One comment suggested that there not be a requirement 
for an applicant to file a statement in each nonprovisional application 
that an English language translation was filed in the provisional 
application, and suggested that a notice be mailed in a nonprovisional 
application near 14 months from the provisional application's filing 
date, if the English translation has not been filed in the provisional 
application.
    Response: The statement is required to be filed only when a notice 
has been mailed in the nonprovisional application requiring an English 
translation of the provisional application so that the examiner can 
evaluate the benefit claim. If a provisional application is filed in a 
language other than English, and an English language translation is 
later filed in the provisional application at the same time a 
nonprovisional application is filed that claims the benefit of the 
provisional application, then no statement that an English language 
translation was filed will be necessary. At the time the examiner 
evaluates the benefit claim, the English language translation will be 
in the provisional application and available to the examiner. 
Furthermore, if a provisional application was filed in a language other 
than English, an applicant filing a nonprovisional application claiming 
the benefit of the filing date of the provisional application could 
have filed the translation of the provisional application in the 
nonprovisional application or the provisional application according to 
Sec.  1.78(a)(5) before the effective date of the revision to Sec.  
1.78(a)(5).
    If the translation was elected to be filed in the nonprovisional 
application, according to prior Sec.  1.78(a)(5), a continuation, 
continuation-in-part or divisional application of the nonprovisional 
application would either need a new English translation of the 
provisional application to be filed in the continuation, continuation-
in-part or divisional application, or the translation to be filed in 
the provisional application. As revised, the translation of the non-
English specification must always be filed in the provisional 
application, and a notice will be mailed in the nonprovisional 
application only where the translation and the statement that the 
translation is accurate were not filed in the provisional application.
    As to the suggestion that the notice requiring the English language 
translation be mailed in the nonprovisional application 14 months after 
the provisional application was filed, the Office is seeking to 
continually improve processing of patent applications, and generally 
seeks to send out notices in a timely manner, with as many issues 
addressed at one time as possible. Applicants should be alert to the 
language of the provisional application and may be well advised to 
docket provisional applications in such a manner so that any necessary 
translation can be filed without a reminder from the Office.
    Comment 5: Another comment suggested that the need for a 
translation to be filed in a provisional application is an undue burden 
on the applicant, and suggested a public hearing before this change is 
made.
    Response: A translation is already required to be filed whenever an 
applicant claims the benefit of an application that was not filed in 
English and the applicant is notified of the need

[[Page 56124]]

for the translation by the Office. The change made in the amendment to 
Sec.  1.78 merely requires that the translation be filed in the 
provisional application, rather than in either the provisional or each 
nonprovisional application claiming the benefit of the provisional 
application. The Office has found that the translation of the 
provisional application has been confused with the specification for 
the application to be examined and minimizing this confusion should be 
beneficial for both applicants and the Office. In more than one 
instance, the Office has published the translation of the provisional 
patent application instead of a nonprovisional application for patent, 
and has been required to publish a corrected patent application 
publication to correct this error. Accordingly, requiring the 
translation of the provisional application to be filed in the 
provisional application is not an undue burden.
    Comment 6: Another comment stated that Sec.  1.78(a)(5)(iv) did not 
clearly confirm that the translation and statement could be filed in 
the provisional application both before and after abandonment of that 
application. A related comment argued that allowing papers to be filed 
in an abandoned provisional application was inconsistent with Sec.  
1.137(g), which provides for abandonment of provisional applications in 
limited situations.
    Response: The translation and statement can be filed in a 
provisional application after the provisional application becomes 
abandoned. Nothing in prior Sec.  1.78 precluded the translation from 
being filed in an abandoned provisional application. Many papers are 
filed in abandoned applications: Changes of address, powers of 
attorney, and powers to inspect. A sentence has been added to the rule 
to clarify this point. In permitting a paper to be placed in the file 
of an abandoned application, nothing suggests that the application has 
been revived. As to correcting a defective translation in an abandoned 
application, an applicant should simply file the corrected translation 
in the abandoned application.
    Comment 7: One comment suggested that applicants be required to 
file a translation of a provisional application in the corresponding 
nonprovisional application after the filing date of the nonprovisional 
application to avoid confusing the specification to be examined with 
the translation.
    Response: The option of having the translation filed after the 
filing date of the nonprovisional application does not avoid the 
likelihood of the translation being confused with a substitute 
specification, and has not been adopted.
    Comment 8: One comment suggested that the notice requiring the 
translation and statement that the is accurate be mailed in the 
provisional application about fourteen months after the provisional 
application was filed, instead of being mailed in the nonprovisional 
application.
    Response: The suggestion has not been adopted because, if the 
notice were to be mailed in the abandoned provisional application, the 
only consequence of a failure to comply would be waiver of right to 
make a claim of the benefit of the provisional application. More than 
one application may claim the benefit of the provisional application, 
and a translation may have already been filed in some of the 
nonprovisional applications. If the notice is mailed when a new 
application is filed that claims the benefit of the provisional 
application, and applicant failed to comply, having the benefit claim 
waived only as to the new application would be overly complicated. See 
also the discussion of comment 9.
    Comment 9: Two comments suggested that the rule should provide that 
the benefit claim be waived if the translation has not been filed in 
response to a notice requiring the translation to be filed in the 
provisional application, and confirmation in the nonprovisional 
application. Alternatively, the comments suggested that applicant be 
allowed to withdraw the claim of the benefit of the provisional 
application.
    Response: The suggestion that the benefit claim be considered 
waived if no response is filed to the notice has not been adopted. The 
analogy to a priority or benefit claim being waived when not made in a 
timely manner is not persuasive because, with a late benefit claim, no 
mention is made of the earlier application until the right to make a 
benefit claim has been waived. With the failure to file a translation, 
the right exists, but would be extinguished by the failure to timely 
file the translation if the suggestion were to be adopted. The sudden 
extinguishing of a right to make a benefit claim could have an impact 
upon the prior art applied by the examiner, and is better addressed as 
part of the standard procedures for failure to comply with the 
requirement of the Office. The Office also considered treating the 
benefit claim as waived if the translation is not filed by the time of 
publication or patenting of the application, which would be more 
analogous to the late benefit claims treatment, but the Office 
generally prefers to warn applicants of an impending loss of rights 
when feasible. If applicant desires to eliminate the benefit claim, an 
amendment to the first sentence of the specification or a supplemental 
application data sheet to remove the benefit claim should be filed 
promptly in response to the notice. If the Office were to wait for 
applicant's reply, the Office would be delaying prosecution 
unnecessarily, and the impact on patent term adjustment would be 
unclear.
    As to the suggestion that the rule provide for the express 
withdrawal of a benefit claim instead of filing a translation, this 
suggestion has been adopted by adding ``or an amendment or Supplemental 
Application Data Sheet withdrawing the benefit claim'' to Sec.  
1.78(a)(5)(iv).
    Comment 10: One comment requested clarification of the result of 
the Office failing to mail a notice requiring an English translation of 
a provisional application, and to comment on the position taken in a 
prior rule making that the applicant should file an English translation 
and statement that the translation is accurate before an application 
claiming the benefit of the nonprovisional application is published.
    Response: The consequence of an applicant who has filed a 
provisional application in a language other than English, failed to 
file a translation of the provisional application and a statement that 
the translation is accurate, and then filed an application claiming the 
benefit of the provisional application is that the applicant has 
engaged in conduct that leads the Office to expend resources mailing 
the applicant a letter requiring the translation. If the examiner of a 
nonprovisional application needed the translation to determine whether 
the application was entitled to the benefit of the provisional 
application, then another consequence would be a delay in the 
prosecution of the nonprovisional application. Applicants are 
encouraged to file any necessary translations in a timely manner so as 
to avoid the need for the Office to expend resources reminding 
applicant to file papers and fees that were previously omitted, 
preferably before publication of the nonprovisional application so that 
the appropriate date under 35 U.S.C. 102(e) can be determined without 
an independent translation of the provisional application.
    Comment 11: One comment alleged that the text ``given a period of 
time within which to file'' was vague and indefinite, and requested 
that a fixed period be set in the rule. The comment stated that 
sometimes an insufficient

[[Page 56125]]

period of time may be set for an applicant to obtain the translation.
    Response: The suggestion has not been adopted. When an applicant 
elects to claim the benefit of a non-English provisional application in 
a nonprovisional application (or by entry into the national stage), 
applicant should initiate the translation of the provisional 
application because Sec.  1.78(a)(5)(iv) requires a translation (and a 
statement that the translation is accurate) when the benefit claim of a 
provisional is claimed. Applicants should not wait until reminded by 
the Office of this requirement, and should obtain and file the 
translation without being required by the Office to do so. If the 
requirement is made before examination, a period of no less than thirty 
days will be set. If the requirement is made by the examiner, as part 
of an Office action, the period of time will be the time dictated by 
the other issues addressed in the Office action (i.e., an Ex parte 
Quayle action would be two months and a non-final Office action would 
be three months). The broad language used in the rule is desirable to 
maximize the Office's flexibility in setting the period for reply.
    Comment 12: One comment requested that the proposed revision to 
Sec.  1.78 apply only to provisional applications filed on or after the 
effective date of the rule change.
    Response: Applicants have been required to file a translation of a 
non-English provisional application since provisional applications were 
first accepted. The change in Sec.  1.78 is merely to indicate the 
application in which a translation is required. When the rule becomes 
effective, if a nonprovisional application claims the benefit of a non-
English provisional and a copy of the translation is not already in the 
nonprovisional application or the provisional application, then the 
translation will be required to be filed in the provisional 
application.
    Comment 13: One comment suggested that the rules be amended to 
provide for paralegals to prepare and file Information Disclosure 
Statements and responses to Notices To File Missing Parts.
    Response: The rules of practice provide that only a patent 
practitioner, the applicant or the assignee of the entire interest of 
the applicant may sign correspondence in a patent application. Requests 
for corrected filing receipts, Information Disclosure Statements and 
responses to Notices To File Missing Parts are examples of 
correspondence that must comply with the signature rules. No change is 
being considered at this time.
    Furthermore, paralegals or other non-registered personnel employed 
by the registered patent practitioner should not contact the Office to 
ask legal questions or other questions regarding the merits of a patent 
application. As paralegals and other personnel are not registered 
practitioners, only general information about Office procedures can be 
provided. Only registered practitioners are permitted to prosecute 
patent applications in accordance with Sec.  11.10. Thus, Office 
personnel have been instructed to discuss the merits of a patent 
application with only the patent practitioner of record, the applicant, 
or the assignee of the entire interest of the applicant. See MPEP 
Sec. Sec.  101 and 102.
    Comment 14: Another comment suggested that the proposed amendment 
to Sec.  3.73(b)(1)(i) be rephrased to clearly provide that the 
documentary evidence of assignment may be submitted concurrently with, 
as well as prior to, submission of a statement under Sec.  3.73(b).
    Response: This suggestion is adopted.

Rule Making Considerations

    Administrative Procedure Act: The notable changes in this final 
rule 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 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; (3) 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 in either the 
nonprovisional application claiming the benefit of the provisional 
application or the provisional application; and (4) 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 (except for the change to the petition fee for revocation of a 
power of attorney by fewer than all of the applicants) involve 
interpretive rules, or rules of agency practice and procedure under 5 
U.S.C. 553(b)(A). See Bachow Commc'n 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 extremely doubtful whether any 
of the rules formulated to govern patent and trade-mark practice are 
other than `interpretive 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: As prior notice and an opportunity for 
public comment were not required pursuant to 5 U.S.C. 553 (or any other 
law) for the changes proposed in this notice (except for the change to 
the petition fee for revocation of a power of attorney by fewer than 
all of the applicants), an initial or final regulatory flexibility 
analysis under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is 
not required for the 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 factual basis 
supporting the certification under the Regulatory Flexibility Act 
follows: 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)) 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 to be 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. While the Office does not track the entity 
status of such petitions, the small entity patent application filing 
rate is

[[Page 56126]]

about 31.0%. Thus, even if all of the affected patents were by a small 
entity, the proposed change would impact relatively few patent 
applications (0.0013% of all nonprovisional patent applications).
    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 numbers 0651-0012, 0651-0031, 0651-0032, 0651-0034, 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 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; (2) 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 in either the 
nonprovisional application claiming the benefit of the provisional 
application or the provisional application; and (3) requiring that the 
evidentiary evidence of ownership be recorded under 37 CFR part 3 when 
an 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, Commissioner for Patents, 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 recordkeeping 
requirements, Small businesses.

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 3

    Administrative practice and procedure, Inventions and patents, 
Reporting and recordkeeping requirements.

37 CFR Part 5

    Classified information, Exports, Foreign relations, Inventions and 
patents.

37 CFR Part 10

    Administrative practice and procedure, Inventions and patents, 
Lawyers, Reporting and recordkeeping requirements.

0
For the reasons set forth in the preamble, 37 CFR Parts 1, 2, 3, 5, and 
10 are 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 1.4 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 either as part of the S-signature, or immediately below or 
adjacent to the S-signature. The number () character may be 
used only as part of the S-signature when appearing before a 
practitioner's registration number; otherwise the number character may 
not be used in an S-signature.
* * * * *

0
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 of this title for 
trademark files.
* * * * *

0
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.

[[Page 56127]]

    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.
* * * * *

0
5. Section 1.25 is amended by revising paragraph (c)(4) to read as 
follows:


Sec.  1.25  Deposit accounts.

* * * * *
    (c) * * *
    (4) A payment to replenish a deposit account may be submitted by 
mail with a private delivery service or by hand-carrying the payment 
to: Director of the U.S. Patent and Trademark Office, Attn: Deposit 
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.
* * * * *

0
6. Section 1.31 is revised to read as follows:


Sec.  1.31  Applicant 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.

0
7. 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.
    (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;
    (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 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.

0
8. 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 select one of the specified addresses for use as the 
correspondence address and, if given, will select the address 
associated with a Customer Number 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 title.

0
9. 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 on whose behalf he or she acts. In filing such a 
paper, the patent

[[Page 56128]]

practitioner must set forth his or her registration number, his or her 
name and signature. Further proof of authority to act in a 
representative capacity may be required.

0
10. 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 
revoke the power of attorney only 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).
* * * * *


Sec.  1.52  [Amended]

0
11. Section 1.52 is amended by removing paragraphs (a)(5), (a)(7), and 
(b)(7), and by redesignating paragraph (a)(6) as paragraph (a)(5).

0
12. Section 1.78 is amended by revising paragraph (a)(5)(iv) to read as 
follows:


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

    (a) * * *
    (5)(i) * * *
    (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 prior-filed provisional 
application, the translation and the statement. If the notice is mailed 
in a pending nonprovisional application, a timely reply to such a 
notice must include the filing in the nonprovisional application of 
either a confirmation that the translation and statement were filed in 
the provisional application, or an amendment or Supplemental 
Application Data Sheet withdrawing the benefit claim, or the 
nonprovisional application will be abandoned. The translation and 
statement may be filed in the provisional application, even if the 
provisional application has become abandoned.
* * * * *

0
13. Section 1.133 is amended by revising paragraph (a)(2) to read as 
follows:


Sec.  1.133  Interviews.

    (a)(1) * * *
    (2) An interview for the discussion of the patentability of a 
pending application will not occur before the first Office action, 
unless the application is a continuing or substitute application or the 
examiner determines that such an interview would advance prosecution of 
the application.
* * * * *

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
14. The authority citation for 37 CFR part 2 continues to read as 
follows:

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


0
15. Section 2.208 is amended by revising paragraph (c)(4) to read as 
follows:


Sec.  2.208  Deposit accounts.

* * * * *
    (c) * * *
    (4) A payment to replenish a deposit account may be submitted by 
mail with a private delivery service or hand-carrying the payment to: 
Director of the U.S. Patent and Trademark Office, Attn: Deposit 
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, Virginia 22314.

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

0
16. 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).


0
17. 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, must 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.

0
18. 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
* * * * *

0
19. 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 or concurrently is being 
submitted for recordation pursuant to Sec.  3.11; or
* * * * *

[[Page 56129]]

PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND 
FILE APPLICATIONS IN FOREIGN COUNTRIES

0
20. The authority citation for 37 CFR part 5 is revised to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), 41, 181-188, as amended by the 
Patent Law Foreign Filing Amendments Act of 1988, Pub. L. 100-418, 
102 Stat. 1567; the Arms Export Control Act, as amended, 22 U.S.C. 
2571 et seq.; the Atomic Energy Act of 1954, as amended, 42 U.S.C. 
2011 et seq.; the Nuclear Non Proliferation Act of 1978; 22 U.S.C. 
3201 et seq.; and the delegations in the regulations under these 
Acts to the Director (15 CFR 734.3(b)(1)(v), 22 CFR 125.04, and 10 
CFR 810.7), as well as the Export Administration Act of 1979, 50 
U.S.C. app. 2401 et seq.; the International Emergency Economic 
Powers Act, 50 U.S.C. 1701 et seq.; E.O. 12938, 59 FR 59099, 3 CFR, 
1994 Comp., p. 950; E.O. 13222, 66 FR 44025, 3 CFR, 2001 Comp., p. 
783; Notice of August 2, 2005, 70 FR 45273 (August 5, 2005).


0
21. Section 5.11 is amended by revising paragraphs (b) and (c) to read 
as follows:


Sec.  5.11  License for filing in a foreign country an application on 
an invention made in the United States or for transmitting 
international application.

* * * * *
    (b) The license from the Commissioner for Patents referred to in 
paragraph (a) would also authorize the export of technical data abroad 
for purposes relating to the preparation, filing or possible filing and 
prosecution of a foreign patent application without separately 
complying with the regulations contained in 22 CFR parts 121 through 
130 (International Traffic in Arms Regulations of the Department of 
State), 15 CFR parts 730-774 (Regulations of the Bureau of Industry and 
Security, Department of Commerce) and 10 CFR part 810 (Foreign Atomic 
Energy Programs of the Department of Energy).
    (c) Where technical data in the form of a patent application, or in 
any form, are being exported for purposes related to the preparation, 
filing or possible filing and prosecution of a foreign patent 
application, without the license from the Commissioner for Patents 
referred to in paragraphs (a) or (b) of this section, or on an 
invention not made in the United States, the export regulations 
contained in 22 CFR parts 120 through 130 (International Traffic in 
Arms Regulations of the Department of State), 15 CFR parts 730-774 
(Bureau of Industry and Security Regulations, Department of Commerce) 
and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities 
Regulations of the Department of Energy) must be complied with unless a 
license is not required because a United States application was on file 
at the time of export for at least six months without a secrecy order 
under Sec.  5.2 being placed thereon. The term ``exported'' means 
export as it is defined in 22 CFR part 120, 15 CFR part 734 and 
activities covered by 10 CFR part 810.
* * * * *

0
22. Section 5.19 is revised to read as follows:


Sec.  5.19  Export of technical data.

    (a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the 
Department of Commerce, a license is not required in any case to file a 
patent application or part thereof in a foreign country if the foreign 
filing is in accordance with the regulations (Sec. Sec.  5.11 through 
5.25) of the U.S. Patent and Trademark Office.
    (b) An export license is not required for data contained in a 
patent application prepared wholly from foreign-origin technical data 
where such application is being sent to the foreign inventor to be 
executed and returned to the United States for subsequent filing in the 
U.S. Patent and Trademark Office (15 CFR 734.10(a)).

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

0
23. 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.


0
24. 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: September 19, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-19128 Filed 9-23-05; 8:45 am]
BILLING CODE 3510-16-P