[Federal Register Volume 71, Number 213 (Friday, November 3, 2006)]
[Rules and Regulations]
[Pages 64636-64639]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E6-18606]
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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: Final rule.
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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 erroneously 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 and could be used for the same
purposes as a disclosure document if necessary. Therefore, the Office
is eliminating the Disclosure Document Program.
DATES: Effective Date: February 1, 2007.
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: The Disclosure Document Program allows an
inventor to file a 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 $10.00. See 37 CFR 1.21(c).
The Office implemented the Disclosure Document Program in 1969 in
order to provide a form of evidence of conception of an invention as an
alternative to forms such as a ``self-addressed envelope.'' 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 more benefits and protections to inventors than a disclosure
document. A provisional application must contain a specification 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 (an abandoned provisional application is still retained for
at least five years from the filing date of the provisional application
if no nonprovisional application claiming benefit of the provisional
application under 35 U.S.C. 119(e) has been filed). 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,
any benefit derived from the filing of a disclosure document may also
be obtained from the filing of a provisional application.
A provisional application is, however, more useful to an inventor
than a disclosure document. A provisional application, just like a
nonprovisional application, establishes a constructive reduction to
practice date with respect
[[Page 64637]]
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, which is not a patent application, may only be
used as evidence of a conception date of an invention under 35 U.S.C.
104 and therefore 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) the
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.
The Office has determined that it is now appropriate to eliminate
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 will continue to accept disclosure documents until
February 1, 2007, and plans to return a flyer to each person submitting
a disclosure document notifying him or her that the Office is
terminating the Disclosure Document Program and will no longer accept
disclosure documents on or after February 1, 2007. For disclosure
documents received in the Office on or after February 1, 2007
(regardless of the date indicated on a postmark), the Office will
return the disclosure document (with any fee included) to the person
who submitted it (if possible) with a flyer notifying him or her that
the Office has terminated the Disclosure Document Program.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is 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 amended to remove and
reserve paragraph (c) in view of the elimination of the Disclosure
Document Program.
Response to comments: The Office published a notice proposing
changes to eliminate the Disclosure Document Program. See Changes to
Eliminate the Disclosure Document Program, 71 FR 17399 (Apr. 6, 2006),
1306 Off. Gaz. Pat. Office 22 (May 2, 2006) (proposed rule). The Office
received comments from the American Intellectual Property Law
Association (AIPLA), the United Inventors Association (UIA), and 23
individuals. The comments and the Office's responses to the comments
follow:
Comment 1: Several comments supported the Office proposal to
eliminate the Disclosure Document Program, citing confusion by
independent inventors regarding the benefits supplied by a disclosure
document.
Response: The Office is in this final rule proceeding with the
elimination of the Disclosure Document Program.
Comment 2: Several comments suggested it was in the best interest
of independent inventors to spend $10.00 for a disclosure document
filing rather than spending $100.00 for a provisional application
filing, and that only large entities could afford the provisional
application filing fee. Another comment argued that independent
inventors do not have the funds to pay an attorney to file a
provisional application.
Response: It is inappropriate to just compare fees. The benefits of
a provisional application are far greater than any benefit provided by
a disclosure document. The majority of provisional applications filed
since fiscal year 2002 are by small entity applicants, which does not
support the position that small entities cannot afford the provisional
application filing fee or the costs involved in preparing a provisional
application.
Comment 3: Several comments argued that the one-year protection
period afforded by a provisional application was too short.
Response: It is not appropriate to compare the one-year time period
in 35 U.S.C. 119(e) to the two-year time period during which the Office
will retain a disclosure document. A disclosure document is not a
patent application and is not accorded a patent application filing
date. A disclosure document has no more evidentiary value than an
abandoned provisional application for which no benefit is ever claimed
under 35 U.S.C. 119(e). The Office will retain an abandoned provisional
application for at least five years from the filing date of the
provisional application, even if no nonprovisional application claiming
benefit of the provisional application under 35 U.S.C. 119(e) has been
filed.
Comment 4: Several comments argued benefits to filing a provisional
application cannot be compared to the benefits of filing a disclosure
document because the benefit of constructive reduction to practice is
the same regardless of which type of patent application is filed.
Response: A provisional application is, 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,
considered a constructive reduction to practice of an invention as of
the filing date accorded the application if the provisional application
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. A
disclosure document, however, is not a patent application and therefore
is not considered a constructive reduction to practice of an invention
and may only be used as evidence of a date of conception of an
invention under 35 U.S.C. 104.
Comment 5: Several comments argued that the Disclosure Document
Program should not be eliminated as long as the United States remains a
first-to-invent country, and also that inventors should
[[Page 64638]]
have the right to use the government as a witness through the
Disclosure Document Program without relying upon a third party for
corroboration.
Response: The fact that the United States uses a first-to-invent
standard in determining the right to a patent does not make the
Disclosure Document Program necessary. The United States used a first-
to-invent standard in determining the right to a patent prior to 1969
without the need for a Disclosure Document Program. In addition, the
core mission of the Office is the granting and issuing of patents and
the registration of trademarks, and the disseminating to the public
information with respect to patents and trademarks. See 35 U.S.C. 2(a).
There is no reason why it is necessary or germane to its core missions
for the Office to act as witness for inventors through the Disclosure
Document Program. Furthermore, to the extent that the Disclosure
Document Program acts as an evidence depository for the purpose of
establishing a conception date, a provisional application can be used
in the same fashion if necessary.
Comment 6: One comment argued that the Office assertions 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'' are
not supported by verifiable evidence, such as opinion surveys. One
comment argued that because of the long duration between submitting a
disclosure document and obtaining a benefit from it, it is difficult to
measure actual benefit. Another comment argued that it is unfair to
judge the ``conversion rate'' of disclosure documents into provisional
applications as an indicator of actual benefit.
Response: The Office issued over three million patents since 1976,
and of these three million patents only 1,330 (0.04%) reference a
disclosure document. Between fiscal years 2002 and 2005, the Office
issued over 700,000 patents. While 86,087 disclosure documents were
filed with the Office between fiscal years 2002 and 2005, of the over
700,000 patents issued between fiscal years 2002 and 2005, only 223
(0.03%) reference a disclosure document. That is, while the Office
receives a large number of disclosure documents, there are relatively
few instances in which a disclosure document is referenced in a
subsequent patent. Thus, the Office maintains that few, if any,
inventors obtain any actual benefit from a disclosure document (i.e.,
through the filing of a subsequent patent application). The Office has
received sufficient feedback through its independent inventor outreach
programs and from other Government agencies (e.g., the Federal Trade
Commission) to conclude that some inventors who use the Disclosure
Document Program believe that they are actually filing an application
for a patent. The Office has also been sued by an inventor who was
under the impression that a disclosure document was a patent
application. See Akbar v. Dickinson, Civil Action No. 99-1286 HHK
(D.D.C. 1999) (Office motion to dismiss granted).
Comment 7: Several comments argued a disclosure document filing
permits an independent inventor to tell potential investors the
invention is ``registered'' with the Office, and encourages potential
investors to sign non-disclosure agreements. One comment argued the
Disclosure Document Program gives an ``actual benefit'' to inventors by
easing fears that someone will steal their invention.
Response: The Document Disclosure Program was not and is not
intended to be a vehicle for obtaining ``registrations'' from the
Office. The Office does not ``register'' materials submitted in a
disclosure document. There are commercial invention registries
available that might be able to serve the registration functions
desired by inventors. An inventor can ease fears that someone will
steal his or her invention by taking other steps, such as the filing of
a provisional application, or through the use of a commercial invention
registry.
Comment 8: One comment cited a disclosure document as being
instrumental in the receipt of his patent.
Response: A disclosure document may be relied upon as evidence of
conception of invention in support of an affidavit or declaration under
Sec. 1.131. See MPEP 1706. A disclosure document, however, is only one
of the types of evidence that may be relied upon as evidence of
conception of invention in support of an affidavit or declaration under
Sec. 1.131. See MPEP 715.07 (an affidavit or declaration under Sec.
1.131 may be supported by, for example, attached sketches, attached
blueprints, attached photographs, attached reproductions of notebook
entries, an accompanying model, attached supporting statements by
witnesses, testimony given in an interference, or a disclosure
document). The overwhelming majority of affidavits or declarations
under Sec. 1.131 do not rely upon a disclosure document as evidence of
conception of invention and are acceptable without a disclosure
document. Thus, a disclosure document is not necessary for an applicant
to establish a prior date of invention in an affidavit or declaration
under Sec. 1.131.
A disclosure document may also be relied upon during an
interference proceeding to provide corroboration for a conception of
the invention. The actual use of a disclosure document during an
interference proceeding occurs about once every decade. In contrast,
between 86 (fiscal year 2004) and 287 (fiscal year 1997) interferences
have been declared each year during the last ten fiscal years. This
incidental use of disclosure documents during interference proceedings
likewise does not justify continuation of the Disclosure Document
Program.
Comment 9: Many comments argued that independent inventors do not
generally keep a fully documented, updated, and witnessed inventor's
notebook and thus rely on the Disclosure Document Program. One comment
argued that elimination of the Disclosure Document Program would lead
to increased use of self-addressed stamped envelopes (SASE) and a
decrease of intellectual property creators registering a copyright with
the Library of Congress. One comment argued individual inventors can
achieve stronger protections through the use of an inventor's notebook,
because of possibility of witnesses, a disclosure more thorough than
that in the Disclosure Document Program, and the lack of an expiration
date.
Response: There is no reason why inventors could not use a properly
maintained inventor's laboratory notebook as an alternative to the
Disclosure Document Program. An inventor's laboratory notebook requires
no filing fee and has no expiration date.
Comment 10: One comment included a proposal to privatize and manage
the Disclosure Document Program should the Office decide to eliminate
the Disclosure Document Program.
Response: The Disclosure Document Program is not an inherently
governmental function of the Office, and there are no statutory
provisions relating to the Disclosure Document Program. Therefore, it
is not necessary for any non-governmental entity that wishes to manage
a ``disclosure document'' type program to obtain approval from the
Office.
Comment 11: One comment stated the Disclosure Document Program
should remain in effect, with filings re-named ``Non-Patent Information
Record'' to record idea conception. One comment argued for the
retention of the Disclosure Document Program, along with the creation
of a new ``independent
[[Page 64639]]
inventor patent'' having a term of seven years.
Response: As discussed previously, the core mission of the Office
is the granting and issuing of patents and the registration of
trademarks, and the disseminating to the public information with
respect to patents and trademarks. Renaming or enhancing the Disclosure
Document Program would not advance the core missions of the Office. In
addition, viable alternatives to disclosure documents, such as
notebooks and commercial invention registries, and provisional patent
applications, currently exist. The creation of a new ``independent
inventor patent'' having different rights and/or patent term would
require a change to the patent statutes, and thus extends beyond the
issues relating to the existing 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 in this final rule 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
commercially available ``electronic notebooks'' that may be used to
document evidence of conception of an invention. In addition, inventors
may maintain a logbook containing fixed pages that may be witnessed to
document evidence of conception of an invention. These alternatives to
a disclosure document are available to inventors at a cost that is
comparable to or less than the fee for a disclosure document. 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 final rule will thus not
impose any additional reporting or recordkeeping 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 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.
0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
Sec. 1.21 [Amended]
0
2. Section 1.21 is amended by removing and reserving paragraph (c).
Dated: October 27, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E6-18606 Filed 11-2-06; 8:45 am]
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