[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]


=======================================================================
-----------------------------------------------------------------------

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.

-----------------------------------------------------------------------

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]
BILLING CODE 3510-16-P