[Federal Register Volume 79, Number 43 (Wednesday, March 5, 2014)]
[Rules and Regulations]
[Pages 12384-12386]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-04807]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2014-0001]
RIN 0651-AC92


Changes to Continued Prosecution Application Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interim rule.

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SUMMARY: The Leahy-Smith America Invents Act (AIA) revised and 
streamlined the requirements for the inventor's oath or declaration. In 
implementing the AIA inventor's oath or declaration provisions, the 
United States Patent and Trademark Office (Office) provided that an 
applicant may postpone the filing of the inventor's oath or declaration 
until allowance if the applicant provides an application data sheet 
indicating the name, residence, and mailing address of each inventor. 
The rules pertaining to continued prosecution applications (which are 
applicable only to design applications) require that the prior 
nonprovisional application of a continued prosecution application be 
complete, which requires that the prior nonprovisional application 
contain the inventor's oath or declaration. This interim rule revises 
the rules pertaining to continued prosecution applications to permit 
the filing of a continued prosecution application even if the prior 
nonprovisional application does not contain the inventor's oath or 
declaration if the continued prosecution application is filed on or 
after September 16, 2012, and the prior nonprovisional application 
contains an application data sheet indicating the name, residence, and 
mailing address of each inventor.

DATES: Effective Date: March 5, 2014.
    Comment Deadline Date: Written comments must be received on or 
before May 5, 2014.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected]. Comments also may be 
submitted by postal mail addressed to: Mail Stop Comments--Patents, 
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, 
marked to the attention of Eugenia A. Jones, Senior Legal Advisor, 
Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy.
    Comments likewise may 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.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because sharing comments with the public is more easily 
accomplished. Electronic comments in plain text are preferred, but 
comments in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format are also acceptable. Comments not submitted 
electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    Comments will be available for viewing via the Office's Internet 
Web site (http://www.uspto.gov). Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal 
Advisor, Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, at (571) 272-7727.

SUPPLEMENTARY INFORMATION: 
    Executive Summary: Purpose: This interim rule permits the filing of 
a continued prosecution application even if the prior nonprovisional 
application does not contain the inventor's oath or declaration. This 
change is to avoid the need for applicants to file the inventor's oath 
or declaration in an application in order to file a continued 
prosecution application of that application.
    Summary of Major Provisions: This interim rule provides that the 
prior nonprovisional application of a continued prosecution application 
that was filed on or after September 16, 2012 is not required to 
contain the inventor's oath or declaration if the prior nonprovisional 
application contains an application data sheet indicating the name, 
residence, and mailing address of each inventor.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    Background: The Office has revised the rules of practice pertaining 
to the inventor's oath or declaration to permit an applicant to 
postpone the filing of the inventor's oath or declaration until payment 
of the issue fee if the applicant provides an application data sheet 
indicating the name, residence, and mailing address of each inventor. 
See Changes To Implement the Inventor's Oath or Declaration Provisions 
of the Leahy-Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 
2012), and Changes to Implement the Patent Law Treaty, 78 FR 62367, 
62376 (Oct. 21, 2013). The rules of practice pertaining to continued 
prosecution applications (which are applicable only to design 
applications) require that the prior nonprovisional application of a 
continued prosecution application be a design application that is 
complete as defined by 37 CFR 1.51(b). See 37 CFR 1.53(d)(1)(ii) 
(requires that the prior nonprovisional application of a continued 
prosecution application be a design application that is complete as 
defined by 37 CFR 1.51(b)). 37 CFR 1.51(b) in turn requires that an 
application contain the inventor's oath or declaration to be complete. 
See 37 CFR 1.51(b)(2). This interim rule amends 37 CFR 1.53(d)(1)(ii) 
to permit the filing of a continued prosecution application even if the 
prior nonprovisional application does not contain the inventor's oath 
or declaration if the continued prosecution application is filed on or 
after September 16, 2012, and the prior nonprovisional application 
contains an

[[Page 12385]]

application data sheet indicating the name, residence, and mailing 
address of each inventor. This change is to avoid the need for 
applicants to file the inventor's oath or declaration in an application 
in order to file a continued prosecution application of that 
application.

Discussion of Specific Rules

    The following is a discussion of the amendments to Title 37 of the 
Code of Federal Regulations, Part 1.
    Section 1.53: Section 1.53(d)(1)(ii) is amended to change ``[t]he 
prior nonprovisional application is a design application that is 
complete as defined by Sec.  1.51(b)'' to ``[t]he prior nonprovisional 
application is a design application that is complete as defined by 
Sec.  1.51(b), except for the inventor's oath or declaration if the 
application is filed on or after September 16, 2012, and the prior 
nonprovisional application contains an application data sheet meeting 
the conditions specified in Sec.  1.53(f)(3)(i).''

Rulemaking Considerations

    A. Administrative Procedure Act: This interim rule revises the 
procedures that apply to the filing of a continued prosecution 
application. The changes in this interim rule do not change the 
substantive criteria of patentability. Therefore, the changes proposed 
in this rulemaking involve rules of agency practice and procedure, and/
or interpretive rules. See JEM Broad. Co. v. FCC, 22 F.3d 320, 326 
(D.C. Cir. 1994) (``[T]he critical feature of the procedural exception 
[in 5 U.S.C. 553(b)(A)] is that it covers agency actions that do not 
themselves alter the rights or interests of parties, although [they] 
may alter the manner in which the parties present themselves or their 
viewpoints to the agency'') (quoting Batterton v. Marshall, 648 F.2d 
694, 707 (D.C. Cir. 1980)); see also Bachow Commc'ns Inc. v. F.C.C., 
237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application 
process are procedural under the Administrative Procedure Act); Inova 
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules 
for handling appeals were procedural where they did not change the 
substantive standard for reviewing claims).
    In addition, the Office, pursuant to authority at 5 U.S.C. 
553(b)(3)(B), finds good cause to adopt the changes in this interim 
rule without prior notice and an opportunity for public comment, as 
such procedures are contrary to the public interest. Delay in the 
promulgation of this rule to provide notice and comment procedures 
would cause harm to those applicants who file a continued prosecution 
application where the prior nonprovisional application does not contain 
the inventor's oath or declaration. Immediate implementation of the 
changes in this interim rule is in the public interest because: (1) The 
public does not need time to conform its conduct as the changes in this 
interim rule merely ease the requirements for filing a continued 
prosecution application; and (2) those applicants who are currently 
ineligible to file a continued prosecution application because the 
prior nonprovisional application does not contain the inventor's oath 
or declaration will benefit from the changes in this interim rule. See 
Nat'l. Customs Brokers & Forwarders Ass'n v. U.S., 59 F.3d 1219, 1223-
24 (Fed. Cir. 1995).
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c), 35 U.S.C. 2(b)(2)(B), 
or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'') (quoting 5 U.S.C. 
553(b)(A)). In addition, pursuant to authority at 5 U.S.C. 553(d)(1), 
the changes in this interim rule may be made immediately effective 
because they relieve restrictions in the requirements for filing a 
continued prosecution application.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will

[[Page 12386]]

submit a report containing the rule and other required information to 
the United States Senate, the United States House of Representatives, 
and the Comptroller General of the Government Accountability Office. 
The changes in this interim rule are not expected to result in an 
annual effect on the economy of 100 million dollars or more, a major 
increase in costs or prices, or significant adverse effects on 
competition, employment, investment, productivity, innovation, or the 
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this 
interim rule is not a ``major rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    M. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This interim rule 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. 3501-3549). 
This rulemaking does not impose any additional collection requirements 
under the Paperwork Reduction Act which are subject to further review 
by OMB.
    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 recordkeeping 
requirements, Small businesses.

    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).


0
2. Section 1.53 is amended by revising paragraph (d)(1)(ii) to read as 
follows:


Sec.  1.53  Application number, filing date, and completion of 
application.

* * * * *
    (d) * * *
    (1) * * *
    (ii) The prior nonprovisional application is a design application 
that is complete as defined by Sec.  1.51(b), except for the inventor's 
oath or declaration if the application is filed on or after September 
16, 2012, and the prior nonprovisional application contains an 
application data sheet meeting the conditions specified in Sec.  
1.53(f)(3)(i).
* * * * *

    Dated: February 27, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-04807 Filed 3-4-14; 8:45 am]
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