[Federal Register Volume 72, Number 32 (Friday, February 16, 2007)]
[Proposed Rules]
[Pages 7583-7587]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E7-2761]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-C-2006-0057]
RIN 0651-AC09


April 2007 Revision of Patent Cooperation Treaty Procedures

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 (USPTO or 
Office) is proposing to amend the rules of practice in title 37 of the 
Code of Federal Regulations (CFR) to conform them to certain amendments 
made to the Regulations under the Patent Cooperation Treaty (PCT) that 
will take effect on April 1, 2007. These amendments will result in the 
addition of a mechanism to the PCT system whereby applicants may 
request that the

[[Page 7584]]

right to claim priority be restored in applications that meet certain 
requirements. In addition, these amendments will provide a means for 
applicants to insert a missing portion of an international application 
without the loss of the international filing date. These amendments 
also will clarify the circumstances and procedures under which the 
correction of an obvious mistake may be made in an international 
application. Finally, the Office is proposing to revise the search fee 
for international applications.
    Comment Deadline Date: Written comments must be received on or 
before March 19, 2007. No public hearing will be held.

ADDRESSES: Comments should be sent by electronic mail message via 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) 273-0459, marked to the attention of Mr. Richard 
Cole. Although comments may be submitted by mail or facsimile, the 
Office prefers to receive comments via the Internet.
    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: Richard R. Cole, Legal Examiner, 
Office of PCT Legal Administration (OPCTLA) directly by telephone at 
(571) 272-3281, or by facsimile at (571) 273-0459.

SUPPLEMENTARY INFORMATION: During the September-October 2005 meeting of 
the Governing Bodies of the World Intellectual Property Organization 
(WIPO), the PCT Assembly adopted various amendments to the Regulations 
under the PCT that enter into force on April 1, 2007. The amended PCT 
Regulations were published in the PCT Gazette of February 23, 2006 (08/
2006), in section IV, at pages 5496-5541. The purposes of these 
amendments are to: (1) Bring the provisions of the PCT into closer 
alignment with the provisions of the Patent Law Treaty (PLT); and (2) 
clarify the circumstances and procedures under which the correction of 
an obvious mistake may be made in an international application.
    Alignment with the PLT: The PLT provides for: (1) Restoration of 
applicant's right to claim priority under certain situations (PLT 
Article 13(2)); (2) insertion of a missing portion of an application 
without the loss of the filing date (PLT Article 5(6)); and (3) 
substitution of the description and drawings upon filing with a 
reference to a previously filed application (PLT Article 5(7)). The 
present amendments to the PCT Regulations will provide similar 
mechanisms for applicants using the PCT system.
    With regard to restoration of applicant's right to claim priority 
under certain situations (PLT Article 13(2)), PCT Rule 26bis has been 
amended to provide for the restoration of the right to claim priority 
in international applications which have been filed between twelve and 
fourteen months after the priority date and in which the delay in 
filing the international application was either in spite of due care or 
unintentional. It must be noted that PCT Rule 49ter provides for 
designated Offices whose national law is incompatible with the PCT 
provisions concerning restoration of the right of priority to take a 
reservation with respect to the effects of this provision on national 
applications. The United States has taken this reservation pending 
passage of legislation that would implement the PLT in the United 
States. Therefore, any restoration of a right of priority by the United 
States Receiving Office under this section, or by any other Receiving 
Office under the provisions of PCT Rule 26bis.3, will not entitle 
applicants to a right of priority in any application which has entered 
the national stage under 35 U.S.C. 371, or in any application filed 
under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and 
365(c) to an international application in which the right of priority 
has been restored. Whether or not applicant is entitled to the right of 
priority continues to be governed by whether applicant has satisfied 
the provisions of 35 U.S.C. 119, 120, and 365.
    It must also be noted that even though restoration of such a right 
will not entitle applicant to the right of priority in a subsequent 
United States application, the priority date will still govern all PCT 
time limits, including the thirty-month period for filing national 
stage papers and fees under 37 CFR 1.495. PCT Article 2(ix), which 
defines ``priority date'' for purposes of computing time limits, 
contains no limitation that the priority claim be valid. Thus, for 
example, in an international application containing an earliest 
priority claim to a German application filed thirteen months prior to 
the filing date of the international application, the filing date of 
the German application will be used as the basis for computing time 
limits under the PCT, including the thirty-month time period set forth 
in 37 CFR 1.495 to submit the basic national fee (Sec.  1.492(a)) to 
avoid abandonment, even though applicant would not be entitled to 
priority to the German application in the United States national phase 
since the German application was filed more than twelve months from the 
international filing date. See 35 U.S.C. 119(a) and 365(b).
    Concerning insertion of a missing portion of an application without 
the loss of the filing date (PLT Article 5(6)) and substitution of the 
description and drawings upon filing with a reference to a previously 
filed application, these provisions could not be implemented to the 
extent provided in the PLT absent amendment of the PCT Articles. 
However, similar provisions have been made in the PCT by amending PCT 
Rules 4 and 20 to allow for the inclusion of an incorporation by 
reference statement on the PCT Request form. Applicants may then rely 
on this statement to insert portions of the international application 
(including the entire description, claims, and/or drawings) which were 
missing upon the international filing date. 37 CFR 1.412(c)(1) already 
provides that the USPTO, in its capacity as a PCT Receiving Office, 
will accord international filing dates in accordance with PCT Rule 20. 
Therefore, no change to the rules of practice in title 37 CFR is 
necessary to implement these provisions, other than the deletion of 37 
CFR 1.437(b) due to the fact that missing drawings are no longer 
handled in a manner different from the description and claims.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, part 1, is proposed to 
be amended as follows:
    Section 1.17: Section 1.17(t) is proposed to be amended to set 
forth the fee for requesting restoration of the right of priority.
    Section 1.57: Section 1.57(a)(2) is proposed to be amended to 
reflect that omitted portions of international applications, which 
applicant desires to be effective in other designated States, must be 
submitted in accordance with PCT Rule 20.
    Section 1.437: Section 1.437(a) is proposed to be amended for 
clarity and to remove inaccurate language currently

[[Page 7585]]

present in the paragraph. Section 1.437(b) is proposed to be deleted to 
reflect the fact that missing drawings will no longer be treated 
differently from missing parts of the description or claims. Section 
1.437(c) is proposed to be redesignated as Sec.  1.437(b).
    Section 1.445: Section 1.445(a) is proposed to be amended to set a 
search fee that more accurately reflects the cost of conducting a 
search and preparing a Chapter I written opinion in an international 
application. The Activity-Based-Cost analysis for the search and 
preparation of search and preparing Chapter I written opinions for 
international applications reveals that the average cost of this 
activity is over $1,800.00. Therefore, the Office is proposing to 
revise Sec.  1.445(a) to provide for a search fee (and supplemental 
search fee) of $1,800.00. In addition, the Office is proposing to 
revise Sec.  1.445(a) to provide that this $1,800.00 search fee is 
applicable, regardless of whether there is a corresponding prior 
nonprovisional application under 35 U.S.C. 111(a), a corresponding 
prior provisional application under 35 U.S.C. 111(b), or no 
corresponding prior provisional or nonprovisional application under 35 
U.S.C. 111. The Office currently provides a reduced search fee if there 
is a corresponding prior nonprovisional application under 35 U.S.C. 
111(a) and such application is adequately identified in the 
international application or accompanying papers at the time of filing 
the international application. The current backlog of applications 
under 35 U.S.C. 111(a) awaiting examination is such that it is no 
longer deemed appropriate to provide a reduced fee or other incentive 
for applicants to file an application under 35 U.S.C. 111(a) prior to 
or essentially parallel with the filing of an international 
application.
    Section 1.452: Section 1.452 is proposed to be added to provide for 
restoration of the right of priority in international applications 
(subject to the enumerated conditions and limitations).
    Section 1.452(a) provides that applicants may request restoration 
of the right of priority if the international application was filed 
within fourteen months from the priority date and the delay in filing 
the international application was unintentional.
    Section 1.452(b) provides that any request for restoration must be 
filed within fourteen months from the priority date and must be 
accompanied by: (1) A notice adding the priority claim, if applicable; 
(2) the requisite fee; and (3) a statement that the entire delay was 
unintentional.
    Section 1.452(c) provides that, in cases where applicant has 
requested early publication, the requirements under Sec.  1.452(b) must 
be submitted prior to completion of the technical preparations for 
international publication.
    Section 1.452(d) sets forth that restoration of a priority claim by 
the United States Receiving Office under this section, or by any other 
Receiving Office under the provisions of PCT Rule 26bis.3, will not 
entitle applicants to a right of priority in any application which has 
entered the national stage under 35 U.S.C. 371, or in any application 
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 
and 365(c) to an international application in which the right to 
priority has been restored.
    Section 1.465: Section 1.465(b) is proposed to be amended for 
clarity and to remove the limitation that the priority claim must be 
``valid'' in order to be used as the basis for computing time limits 
under the PCT.
    Section 1.465(c) is proposed to be deleted as unnecessary, as the 
obligation of the United States Receiving Office to proceed under PCT 
Rule 26bis.2 arises under 35 U.S.C. 361. In addition, reference to Rule 
20.2(a)(i) or (iii) is no longer appropriate in view of the amendments 
to PCT Rule 20.

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 
(if adopted) will not have a significant economic impact on a 
substantial number of small entities. See 5 U.S.C. 605(b). The 
significant changes proposed in this notice are: (1) Provisions for a 
restoration of a right of priority in certain limited situations; and 
(2) an adjustment of the search and supplemental search fee to more 
accurately reflect the cost of conducting a search and preparing a 
Chapter I written opinion in an international application.
    The PCT enables United States applicants to file one application 
(an international or PCT application) in a standardized format in 
English in the United States Receiving Office (the United States Patent 
and Trademark Office) and have that application acknowledged as a 
regular national or regional filing in as many PCT Contracting States 
as the applicants desire to seek patent protection. See Manual of 
Patent Examining Procedure (MPEP) 1801. The primary benefit of the PCT 
system is the ability to delay the expense of submitting papers and 
fees to the PCT national offices. See MPEP 1881.
    35 U.S.C. 376(b) provides that the Director shall prescribe the 
amount of the search fee, the supplemental search fee, and such other 
fees as established by the Director. Pursuant to the authority in 35 
U.S.C. 376(b), this notice proposes to adjust the search fee in Sec.  
1.445(b)(2)(iii) and the supplemental search fee in Sec.  1.445(b)(3) 
from $1,000.00 to $1,800.00 (an increase of $800.00). This proposed 
adjustment to the search fee and supplemental search fee is to make 
these fees more accurately reflect the cost of conducting a search and 
preparing a Chapter I written opinion in an international application.
    The PCT does not preclude United States applicants from filing 
patent applications directly in the patent offices of those countries 
which are Contracting States of the PCT (with or without previously 
having filed a regular national application under 35 U.S.C. 111(a) or 
111(b) in the United States) and taking advantage of the priority 
rights and other advantages provided under the Paris Convention and the 
World Trade Organization (WTO) administered Agreement on Trade-Related 
Aspects of Intellectual Property (TRIPs Agreement). See MPEP 1801. That 
is, the PCT is not the exclusive mechanism for seeking patent 
protection in foreign countries, but is instead simply an optional 
alternative route available to United States patent applicants for 
seeking patent protection in those countries that are Contracting 
States of the PCT. See id.
    In addition, an applicant filing an international application under 
the PCT in the United States Receiving Office (the United States Patent 
and Trademark Office) is not required to use the United States Patent 
and Trademark Office as the International Searching Authority. The 
European Patent Office (except for applications containing business 
method claims) or the Korean Intellectual Property Office may be 
elected as the International Searching Authority for international 
applications filed in the United States Receiving Office. The 
applicable search fee if the European Patent Office is elected as the 
International Searching Authority European is $2,059.00 (set by the 
European Patent Office), and the applicable search fee if the Korean 
Intellectual Property Office is elected as the International Searching 
Authority is $232.00 (set by the Korean Intellectual Property Office).

[[Page 7586]]

    In 2003, the Government Accountability Office (GAO) released a 
report containing the results of a survey of an expert panel of patent 
law attorneys concerning small businesses considering foreign patent 
protection with respect to the ``cradle to grave'' costs of foreign 
patent protection. See Experts'' Advice for Small Businesses Seeking 
Foreign Patents, GAO-03-910 (2003). The GAO concluded that the cost of 
obtaining and maintaining foreign patents to be in the range of 
$160,000 to $330,000. See Id. at 41.
    Therefore, the international search fee increase of $800.00 is not 
significant in comparison to the overall costs that a small entity must 
incur to obtain international patent protection. In addition, filing an 
international application under the PCT is an optional route for an 
applicant seeking foreign patent protection, and an applicant who does 
not choose to seek foreign patent protection by filing an international 
application under the PCT in the United States Receiving Office (the 
United States Patent and Trademark Office) is not required to use the 
United States Patent and Trademark Office as the International 
Searching Authority.
    Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes 
to eliminate the reduced search fee in Sec.  1.445(b)(2)(i) or (ii) 
when there is a corresponding prior nonprovisional application under 35 
U.S.C. 111(a) and thereby adjusting the search fee in the situation in 
which there is a corresponding prior nonprovisional application under 
35 U.S.C. 111(a) from $300.00 to $1,800.00 (an increase of $1,500.00). 
As discussed previously, this proposed adjustment to the search fee is 
to make these fees more accurately reflect the cost of conducting a 
search and preparing a Chapter I written opinion in an international 
application. An applicant has the option of filing a provisional 
application under 35 U.S.C. 111(b) (rather than a nonprovisional 
application under 35 U.S.C. 111(a)) or not filing a prior application 
before filing an international application. These alternatives are 
available at a lower overall cost in patent fees (even with the 
proposed adjustment in the search fee) than the cost in patent fees of 
filing a nonprovisional application under 35 U.S.C. 111(a) before 
filing an international application. This is the case even taking into 
account the current reduced search fee for there being a corresponding 
prior nonprovisional application under 35 U.S.C. 111(a).
    Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes 
to establish a fee for filing a request for the restoration of the 
right of priority of $1,370.00. This fee amount is identical to the fee 
amount for petitions to accept an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365(a) (37 CFR 1.55 and 
1.78). In addition, the Office anticipates that very few applicants 
will file a request for the restoration of the right of priority (about 
100 each year, in comparison to the over 45,000 international 
applications filed in the United States Receiving Office each year).
    For the reasons stated previously, the changes proposed in this 
notice (if adopted) will not have a significant economic impact on a 
substantial number of small entities.
    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 
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 approved by OMB under OMB control 
number 0651-0021. The United States Patent and Trademark Office is not 
resubmitting an information collection package to OMB for its review 
and approval because the changes in this notice do not affect the 
information collection requirements associated with the information 
collection under OMB control number 0651-0021.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to: (1) 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 A. Clarke, 
Deputy 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 in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and record keeping 
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 1.17 is amended by revising paragraph (t) to read as 
follows:


Sec.  1.17  Patent application and reexamination processing fees.

* * * * *
    (t) For the acceptance of an unintentionally delayed claim for 
priority under 35 U.S.C. 119, 120, 121, or 365(a) (Sec. Sec.  1.55 and 
1.78) or for filing a request for the restoration of the right of 
priority under Sec.  1.452--$1,370.00.
    3. Section 1.57 is amended by revising paragraph (a)(2) to read as 
follows:


Sec.  1.57  Incorporation by reference.

    (a) * * *
    (2) Any amendment to an international application pursuant to this 
paragraph shall be effective only as to the United States, and shall 
have no effect on the international filing date of the application. In 
addition, no request under this section to add the inadvertently 
omitted portion of the specification or drawings in an international 
application designating the United States will be acted upon by the 
Office prior to the entry and commencement of the national stage (Sec.  
1.491) or the filing of an application under 35 U.S.C. 111(a) which 
claims benefit of the international application. Any omitted portion of 
the international application which applicant desires to be effective 
as to all designated States, subject to PCT Rule 20.8(b), must be 
submitted in accordance with PCT Rule 20.
* * * * *
    4. Section 1.437 is revised to read as follows:


Sec.  1.437  The drawings.

    (a) Drawings are required when they are necessary for the 
understanding of the invention (PCT Art. 7).
    (b) The physical requirements for drawings are set forth in PCT 
Rule 11 and shall be adhered to.

[[Page 7587]]

    5. Section 1.445 is amended by revising paragraphs (a)(2) and 
(a)(3) to read as follows:


Sec.  1.445  International application filing, processing and search 
fees.

    (a) * * *
    (2) A search fee (see 35 U.S.C. 361(d) and PCT Rule 16)--$1,800.00
    (3) A supplemental search fee when required, per additional 
invention--$1,800.00.
* * * * *
    6. Section 1.452 is added to read as follows:


Sec.  1.452  Restoration of right of priority.

    (a) If the international application has an international filing 
date which is later than twelve months from the priority date but 
within the period of fourteen months from the priority date, the right 
of priority in the international application may be restored upon 
request if the delay in filing the international application within the 
period of twelve months from the priority date was unintentional.
    (b) A request to restore the right of priority in an international 
application under paragraph (a) must be filed not later than fourteen 
months from the priority date and must include:
    (1) A notice under PCT Rule 26bis.1(a) adding the priority claim, 
if the priority claim in respect of the earlier application is not 
contained in the international application;
    (2) The fee set forth in Sec.  1.17(t); and
    (3) A statement that the entire delay was unintentional. The 
Director may require additional information where there is a question 
whether the delay was unintentional.
    (c) If the applicant makes a request for early publication under 
PCT Article 21(2)(b), any requirement under paragraph (b) of this 
section filed after the technical preparations for international 
publication have been completed by the International Bureau shall be 
considered as not having been submitted in time.
    (d) Restoration of a right of priority to a prior application by 
the United States Receiving Office under this section, or by any other 
Receiving Office under the provisions of PCT Rule 26bis.3, will not 
entitle applicants to a right of priority in any application which has 
entered the national stage under 35 U.S.C. 371, or in any application 
filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 
and 365(c) to an international application in which the right to 
priority has been restored.
    7. Section 1.465 is amended by revising paragraph (b) to read as 
follows:


Sec.  1.465  Timing of application processing based on the priority 
date.

* * * * *
    (b) When a claimed priority date is corrected under PCT Rule 
26bis.1(a), or a priority claim is added under PCT Rule 26bis.1(a), 
withdrawn under PCT Rule 90bis.3, or considered not to have been made 
under PCT Rule 26bis.2, the priority date for the purposes of computing 
any non-expired time limits will be the filing date of the earliest 
remaining priority claim under PCT Article 8 of the international 
application, or if none, the international filing date.
* * * * *

    Dated: February 12, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property, and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E7-2761 Filed 2-15-07; 8:45 am]
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