[Federal Register Volume 71, Number 66 (Thursday, April 6, 2006)]
[Proposed Rules]
[Pages 17399-17401]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E6-4833]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2006-0005]
RIN 0651-AC01


Changes to Eliminate the Disclosure Document Program

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The United States Patent and Trademark Office (Office) 
implemented the Disclosure Document Program in 1969 in order to provide 
an alternative form of evidence of conception of an invention to, for 
example, a ``self-addressed envelope'' containing a disclosure of an 
invention. It appears, however, that few, if any, inventors obtain any 
actual benefit from a disclosure document, and some inventors who use 
the Disclosure Document Program believe that they are actually filing 
an application for a patent. In addition, a provisional application for 
patent affords better benefits and protection to inventors than a 
disclosure document. Therefore, the Office is proposing to eliminate 
the Disclosure Document Program.
    Comment Deadline Date: To be ensured of consideration, written 
comments must be received on or before May 8, 2006. No public hearing 
will be held.

ADDRESSES: Comments should be sent by electronic mail message 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 (571) 273-7735, marked to the attention of Catherine M. 
Kirik. 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 prefers 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 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 the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Office Internet Web site (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: Catherine M. Kirik, Office of the 
Commissioner for Patents, by telephone at (571) 272-8040, 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-
0170, marked to the attention of Catherine M. Kirik.

SUPPLEMENTARY INFORMATION: An inventor may file a disclosure document 
with the Office which includes a written description and drawings of 
his or her invention in sufficient detail to enable a person of 
ordinary skill in the art to make and use the invention to establish a 
date of conception of an invention in the United States under 35 U.S.C. 
104 prior to the application filing date. The inventor must sign the 
disclosure document and include a separate signed cover letter 
identifying the papers as a disclosure document. A disclosure document 
does not require either a claim in compliance with 35 U.S.C. 112, ]2, 
or an inventor's oath (or declaration) under 35 U.S.C. 115, and is not 
accorded a patent application filing date. A disclosure document is to 
be destroyed by the Office after two years unless it is referred to in 
a separate letter in a related provisional or nonprovisional 
application filed within those two years. The filing fee for a 
disclosure document is $10. See 37 CFR 1.21(c).
    The Office published a notice in September of 1998 seeking input 
from the general public on whether the Office should eliminate the 
Disclosure Document Program. See Changes to Implement the Patent 
Business Goals, 63 FR 53498, 53527-28 (Oct. 5, 1998), 1215 Off. Gaz. 
Pat. Office 87 (Oct. 27, 1998) (advance proposed rule). The Office 
received a number of comments supporting the elimination of the 
Disclosure Document Program, but did not receive any input from the 
independent inventor community and, therefore, decided to delay 
eliminating the Disclosure Document Program. See Changes to Implement 
the Patent Business Goals, 64 FR 53772, 53776-77 (Oct. 4, 1998), 1215 
Off. Gaz. Pat. Office 87 (Oct. 27, 1998) (proposed rule). The Office 
has determined that it is now appropriate to propose elimination of the 
Disclosure Document Program because, inter alia, independent inventors 
have become more familiar with and are using provisional applications 
more often than they were in 1998, and provisional applications provide 
more protections for independent inventors than disclosure documents.
    The Office implemented the Disclosure Document Program in 1969 in 
order to provide an alternative form of evidence of conception of an 
invention to forms such as a ``self-addressed envelope'' form of 
evidence. See Disclosure Document Program, 34 FR 6003 (Apr. 2, 1969), 
861 Off. Gaz. Pat. Office 1 (May 6, 1969). Since June of 1995, however, 
applicants have been able to file a provisional application for patent, 
which provides better benefits and protection to inventors than a 
disclosure document. A provisional application must contain a 
specification

[[Page 17400]]

in compliance with 35 U.S.C. 112, ]1, and drawings, if drawings are 
necessary to understand the invention described in the specification. A 
provisional application must name the inventors and be accompanied by a 
separate cover sheet identifying the papers as a provisional 
application. The basic filing fee for a provisional application by a 
small entity is $100.00. See 37 CFR 1.16(d). A provisional application 
does not require a claim under 35 U.S.C. 112, ]2, or an inventor's oath 
(or declaration) under 35 U.S.C. 115. While a nonprovisional 
application must be filed within twelve months of the filing date of a 
provisional application in order for the inventor to claim the benefit 
of the provisional application under 35 U.S.C. 119(e), the file of a 
provisional application is retained by the Office for at least twenty 
years, or longer if it is referenced in a patent or patent application 
publication. With respect to an invention claimed in a nonprovisional 
application that is entitled under 35 U.S.C. 119(e) to the benefit of a 
provisional application, the provisional application is considered a 
constructive reduction to practice of an invention as of the filing 
date accorded the application, if it describes the invention in 
sufficient detail to enable a person of ordinary skill in the art to 
make and use the invention and discloses the best mode known by the 
inventor for carrying out the invention. Thus, the disclosure 
requirements for a provisional application are similar to the 
disclosure requirements for a disclosure document, and a provisional 
application provides users with a filing date without starting the 
patent term period. Therefore, almost any papers filed as a proper 
disclosure document may also be filed as a provisional application.
    A provisional application is, however, more valuable to an inventor 
than a disclosure document. A provisional application, just like a 
nonprovisional application, establishes a constructive reduction to 
practice date with respect to an invention claimed in a nonprovisional 
application that is entitled under 35 U.S.C. 119(e) to the benefit of 
the provisional application and disclosed in the provisional 
application in the manner required by 35 U.S.C. 112, ]1, and can be 
used under the Paris Convention to establish a priority date for 
foreign filing. A disclosure document, however, may only be used as 
evidence of a date of conception of an invention under 35 U.S.C. 104. A 
disclosure document is not a patent application and the filing of a 
disclosure document does not establish a constructive reduction to 
practice date for an invention described therein. Thus, to use a 
disclosure document to establish prior invention under 35 U.S.C. 102(g) 
or under 37 CFR 1.131, an inventor may rely on the disclosure document 
to demonstrate that he or she conceived of the invention first, but the 
inventor may also be required to demonstrate that he or she was 
reasonably diligent from a date just prior to: (1) The date of 
conception by the other party in an interference proceeding; or (2) 
effective date of a reference being used by the Office to reject one or 
more claims of an application until the inventor's actual or 
constructive reduction to practice. With respect to an invention 
claimed in a nonprovisional application that is entitled under 35 
U.S.C. 119(e) to the benefit of a provisional application and disclosed 
in the provisional application in the manner required by 35 U.S.C. 112, 
]1, however, the provisional application may be used to establish a 
constructive reduction to practice date as of the filing date of the 
provisional application.
    Under 35 U.S.C. 102(b), any public use or sale of an invention in 
the U.S. or description of an invention in a patent or a printed 
publication anywhere in the world more than one year prior to the 
filing of a patent application on that invention will bar the grant of 
a patent. In addition, many foreign countries currently have what is 
known as an ``absolute novelty'' requirement which means that a public 
disclosure of an invention anywhere in the world prior to the filing 
date of an application for patent will act as a bar to the granting of 
any patent directed to the invention disclosed. Since a disclosure 
document is not a patent application, it does not help an inventor 
avoid the forfeiture of U.S. or foreign patent rights.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.21: Section 1.21(c) currently sets forth a fee ($10.00) 
for filing a disclosure document. Section 1.21 is proposed to be 
amended to remove and reserve paragraph (c) in view of the proposed 
elimination of the Disclosure Document Program.

Rule Making Considerations

Regulatory Flexibility Act

    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 the 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). There is no statutory provision relating to the 
disclosure document program. The program dates back to 1969, when 
commercial services were not as abundantly available. Now, there are 
numerous commercially available ``electronic notebooks'' that may be 
used to document evidence of conception of an invention. In addition, 
inventors may still use a ``self-addressed envelope'' to mail documents 
to themselves or they may maintain a logbook containing fixed pages 
that may be witnessed to document evidence of conception of an 
invention. Thus, the program is no longer necessary.

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

    The information collection requirements being suspended by this 
rule were approved in accordance with the Paperwork Reduction Act of 
1995 (44 U.S.C. 3501 et seq.) by the Office of Management and Budget 
(OMB) under 0651-0030 disclosure documents. Suspension of the reporting 
requirements under 0651-0030 is expected to reduce the public reporting 
burden by 4,445 hours and $236,000. This proposed rule would thus not 
impose any additional reporting or record keeping requirements on the 
public.
    Interested persons are requested to send comments to the Office of 
Information and Regulatory Affairs, Office of Management and Budget, 
New Executive Office Building, Room 10202, 725 17th Street, NW., 
Washington, DC 20503, Attention: Desk Officer for the Patent and 
Trademark Office; and (2) Robert J. Spar, Director, Office of Patent 
Legal Administration, Commissioner for Patents, P.O. Box 1450, 
Alexandria, VA 22313-1450.
    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

[[Page 17401]]

Reduction Act unless that collection of information displays a 
currently valid OMB control number.

List of Subjects in 37 CFR Part 1

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

    For the reasons set forth in the preamble, 37 CFR part 1 is 
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 1.21 is amended by removing and reserving paragraph (c).


Sec.  1.21  Miscellaneous fees and charges.

* * * * *
    (c) [Reserved]
* * * * *

    Dated: March 29, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E6-4833 Filed 4-5-06; 8:45 am]
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