[Federal Register Volume 79, Number 133 (Friday, July 11, 2014)]
[Proposed Rules]
[Pages 40035-40040]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-16062]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2014-0012]
RIN 0651-AC95


Changes To Facilitate Applicant's Authorization of Access to 
Unpublished U.S. Patent Applications by Foreign Intellectual Property 
Offices

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The electronic sharing of information and documents between 
intellectual property (IP) offices is critical for increasing the 
efficiency and quality of patent examination worldwide. Current 
examples of this sharing include the priority document exchange (PDX) 
program and the program by which U.S. search results are delivered to 
the European Patent Office (EPO). In support of electronic file 
sharing, the United States Patent and Trademark Office (Office) is 
proposing to amend its rules of practice to include a specific 
provision by which an applicant can authorize the Office to give a 
foreign IP office access to all or part of the file contents of an 
unpublished U.S. patent application in order to satisfy a requirement 
for information imposed on a counterpart application filed with the 
foreign intellectual property office. Currently, for unpublished U.S. 
patent applications, applicants follow one regulatory provision to 
provide the Office with authorization for a foreign IP office to access 
an application-as-filed via a PDX program and follow another

[[Page 40036]]

regulatory provision to provide the Office with authorization to share 
the file contents with a foreign IP office. The proposed changes to the 
rules will consolidate the specific provisions of the regulations by 
which applicants give the Office authority to provide a foreign IP 
office with access to an application in order to satisfy a requirement 
for information of the foreign IP office. Additionally, along with 
changes to the application data sheet (ADS) form, the proposed rule 
changes will simplify the process for how applicants provide the Office 
with the required authorization, thereby reducing the resources 
applicants must expend to comply with these foreign IP office 
requirements, and enhance the quality of patent examination.

DATES: Written comments must be received on or before September 9, 
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 either Susy Tsang-Foster, Senior Legal 
Advisor, or Joseph F. Weiss, Jr., Senior Legal Advisor, Office of 
Patent Legal Administration, Office of the Deputy Commissioner for 
Patent Examination Policy.
    Comments further 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 are preferred to be submitted in 
plain text, but also may be submitted in ADOBE[supreg] portable 
document format or MICROSOFT WORD[supreg] format. Comments not 
submitted electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
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: Susy Tsang-Foster, Senior Legal 
Advisor ((571) 272-7711), or Joseph F. Weiss, Jr., Senior Legal Advisor 
((571) 272-2259), Office of Patent Legal Administration, Office of the 
Deputy Commissioner for Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The electronic sharing of information and 
documents between IP offices is critical for increasing the efficiency 
and quality of patent examination worldwide. The electronic sharing of 
documents between IP offices also benefits applicants by reducing the 
cost of ordering documents from one IP office and then filing them in 
another IP office where a counterpart application has been filed.
    Due to the confidential nature of unpublished U.S. patent 
applications, set forth in 35 U.S.C. 122, an applicant must provide the 
Office with written authority in accordance with 37 CFR 1.14 to grant a 
foreign IP office access to an unpublished U.S. patent application. 
With this grant of authority, the Office may electronically provide the 
U.S. patent application-as-filed or the requested file contents, such 
as information and documents, from the U.S. patent application to the 
foreign IP office on behalf of the applicant.
    Currently, applicants comply with 37 CFR 1.14(h) when authorizing 
the Office to give a foreign IP office participating in a bilateral or 
multilateral priority document exchange agreement access to an 
unpublished U.S. priority application-as-filed. 37 CFR 1.14(h), 
however, does not provide a specific provision by which an applicant 
can authorize the Office to provide a foreign IP office access to an 
unpublished U.S. patent application's file contents including documents 
and other information in order to satisfy a requirement for information 
imposed on a counterpart application from a U.S. applicant by the 
foreign IP office. As a result, U.S. applicants, unprompted by the 
rules, must provide written authority for access by a foreign IP office 
to an unpublished application's contents in accordance with 37 CFR 
1.14(c).
    The Office is proposing to amend 37 CFR 1.14(h) to include a 
specific provision by which an applicant can authorize the Office to 
give a foreign IP office access to all or part of the file contents (as 
opposed to a copy of the application-as-filed) of an unpublished patent 
application, including search results, to satisfy a foreign IP office 
requirement for information on a counterpart application filed by an 
U.S. applicant. The proposed changes to 37 CFR 1.14(h) would 
consolidate the provisions by which applicants authorize the Office to 
give access to an unpublished application-as-filed or its file contents 
to a foreign IP office, while also clarifying for applicants the 
provision of 37 CFR 1.14 under which such access authorization can be 
provided. The proposed rule change will further serve as a reminder of 
the opportunity for applicants to grant the Office with the authority 
to provide a foreign IP office with access to file contents of an 
unpublished U.S. patent application.
    Any information concerning an unpublished application or documents 
from an unpublished application will only be shared in accordance with 
the authority provided by applicant and in accordance with the terms of 
any agreement between the Office and respective foreign IP offices. The 
Office is not proposing any fee for this service. In addition, sharing 
of information and documents would be limited to those foreign IP 
offices where applicant has filed a counterpart application and 
provided written authority to give a foreign IP office access to all or 
part of the file contents of an unpublished U.S. application.
    The proposed changes to 37 CFR 1.14(h) emphasize the Office's 
continued support of work sharing efforts between IP offices to 
increase the quality of issued patents, as well as its commitment to 
assist in reducing the expenditure of resources of its applicants when 
complying with the requirements of a foreign IP office for a 
counterpart application.
    Revision to Application Data Sheet Form: In addition to the 
proposed rule changes, the Office is planning to revise the application 
data sheet (ADS) form, PTO/AIA/14 (ADS form). The revised ADS form 
would include separate access authorizations for the PDX program and 
certain work sharing initiatives for which the Office has an agreement 
with one or more foreign IP offices.
    The submission of a properly signed revised ADS form with the 
appropriate authorization language would be a specific act authorizing 
access. After a revised ADS form including the authorization language 
for access by foreign IP office(s) and signed in accordance with 37 CFR 
1.14(c) and

[[Page 40037]]

1.33(b) has been submitted and placed in the application file, the 
Office would give the foreign IP office(s) access to the contents in 
accordance with the specific authorization language upon request of the 
foreign IP office.
    In contrast to the current ADS form, the revised ADS form would 
include an ``opt-out'' check box for each access authorization and not 
an ``opt-in'' check box. Therefore, when an ``opt-out'' check box for a 
specific authorization to access is selected, the Office would not 
provide access to the contents of the application associated with that 
check box. The revised ADS form will make it easier for applicants to 
give the statutorily required authorization for access to specific file 
contents, as well as afford an applicant the opportunity to inform the 
Office that the required authority to allow a foreign IP office 
specific access to an application has not been given. Appropriate 
authorization language for access in any ADS generated by applicant 
must mirror the authorization language provided in the Office's revised 
ADS form. Where an applicant-generated ADS does not include the 
required authorization language for access by a foreign IP office, the 
ADS will be interpreted as not providing the authorization necessary to 
give a foreign IP office access.
    The changes to the Office's ADS form should reduce those instances 
where an applicant inadvertently fails to provide authorization 
necessary to participate in PDX (by not selecting the opt-in check box 
for priority document exchange authorization on the current ADS form) 
and, as a result, must expend resources to obtain and file a copy of a 
U.S. priority document with a foreign IP office. Similarly, this 
approach will help eliminate those instances where an applicant 
inadvertently fails to give the Office authority (by filing form PTO/
SB/69) to provide the EPO with the search results from an unpublished 
U.S. priority application and, as a consequence, must expend resources 
to file the results with the EPO.
    The Office will not deliver an unpublished priority document, file 
contents of an unpublished application, including information about an 
unpublished application, to a foreign IP office, even where a 
counterpart application has been filed, if applicant does not provide 
proper written authority for access. As discussed above, the revised 
ADS form would need to be executed in accordance with 37 CFR 1.33(b), 
and if there is written authority for any access by a foreign IP 
office, the revised ADS form also must be executed in accordance with 
37 CFR 1.14(c). Applicants should be aware of the differences in 
signature requirements under 37 CFR 1.33(b) and under 37 CFR 1.14(c). 
For example, under 37 CFR 1.33(b) in applications filed on or after 
September 16, 2012, the following individuals can sign:
     A patent practitioner of record;
     A patent practitioner not of record who acts in a 
representative capacity under the provisions of 37 CFR 1.34; or
     The applicant under 37 CFR 1.42. Unless otherwise 
specified, all papers submitted on behalf of a juristic entity must be 
signed by a patent practitioner.
    By contrast, under 37 CFR 1.14(c) in applications filed on or after 
September 16, 2012, the following individuals can sign:
     The applicant;
     A patent practitioner of record;
     The assignee or an assignee of an undivided part interest;
     The inventor or a joint inventor; or
     A registered attorney or agent named in the papers 
accompanying the application papers filed under 37 CFR 1.53 or the 
national stage under 37 CFR 1.495, if a power of attorney has not been 
appointed under 37 CFR 1.32.
    Where forms PTO/SB/39 for PDX authorization and PTO/SB/69 for 
search results authorization are used instead of the revised ADS form, 
these forms must still be executed in accordance with 37 CFR 1.14(c) 
even though written authority is provided for under proposed 37 CFR 
1.14(h). If the revised ADS form is not signed in accordance with the 
relevant rules, then applicant has not provided written authority for 
access by a foreign IP office to an application.
    The transaction of sharing documents and information from a U.S. 
application with a foreign IP office has several built in safeguards to 
ensure that only authorized sharing occurs. For example, in order for a 
foreign IP office to receive information about a U.S. application, the 
Office requires that the foreign IP office expressly identify the U.S. 
application serial number, along with other elements of bibliographic 
data for each U.S. application in its request, to ensure that only the 
correct U.S. application's information will be given to the foreign IP 
office. Once the application is properly identified, the Office will 
then determine whether the requisite authorization for access exists in 
the U.S. application. The Office will only share information or other 
file content from a U.S. application with a foreign IP office when both 
the correct application is identified and the existence of proper 
authorization is confirmed. If an unpublished application, which has 
not been foreign filed, includes an unintended access authorization 
pursuant to proposed 37 CFR 1.14(h), a foreign IP office would not 
obtain access because it would not have the information necessary to 
request access to that specific U.S. application. Further, the U.S. 
application's filing receipt will indicate whether applicant has 
provided written authority for access pursuant to proposed 37 CFR 
1.14(h). Applicants should inspect the application filing receipt and 
request a corrected filing receipt if authorization for access under 
proposed 37 CFR 1.14(h) was incorrectly captured from the revised ADS 
form or applicant-generated ADS. If authorization for access was 
inadvertently given, a request for rescission of the authorization can 
be made, and the Office should be informed of such rescission as early 
as possible so the Office has time to recognize the request for 
rescission and act upon it.
    To avoid inconsistent means of authorization for access and to 
avoid duplicative processing, the Office also is considering removal of 
the opt-in check box and associated authorization language for the PDX 
program from the inventor's oath or declaration form (PTO/SB/01 for 
applications filed before September 16, 2012 and PTO/AIA/08 for 
applications filed on or after September 16, 2012). Form PTO/SB/39 for 
the priority document exchange authorization and Form PTO/SB/69 for the 
search results authorization will remain available for applicants that 
do not use an ADS form or have selected the check boxes for opting out 
of specific authorizations for access by a foreign IP office on the 
revised ADS form, but later decide to give a foreign IP office access 
to the application.
    Discussion of Specific Rules: The following is a discussion of the 
amendments to title 37 of the Code of Federal Regulations, part 1, 
which are being proposed in this document.
    Section 1.14: Section 1.14(h)(1) is proposed to retain the first 
sentence of current Sec.  1.14(h)(1) and include the provisions from 
current Sec.  1.14(h)(3). Proposed Sec.  1.14(h)(1) also would be 
amended to include that the date of filing of the written authority for 
priority document exchange may be provided to the respective 
participating foreign IP office, which codifies the practice set forth 
in the Official Gazette of the United States Patent and Trademark 
Office (1328 OG 90 (March 11, 2008)). In proposed Sec.  1.14(h)(1), the 
text added from current Sec.  1.14(h)(3) has been amended to delete the 
language ``indicated in the written authority.'' This deleted language 
is not necessary

[[Page 40038]]

as written authority for access under current Sec.  1.14(h) and 
proposed Sec.  1.14(h) will result in access being granted to all PDX 
and WIPO Digital Access Service (DAS) participating foreign IP offices 
in which a subsequently filed application claims benefit of the earlier 
filed U.S. application. Within the WIPO DAS system, however, there is 
an option where an applicant may decide which WIPO DAS foreign IP 
office(s) are granted or not granted access.
    Proposed Sec.  1.14(h)(1)(i) and (ii) also are amended to include 
the term ``bibliographic data'' to reflect that ``bibliographic data'' 
is used to ensure the correct application-as-filed is being provided to 
the participating foreign IP office requesting access in any access to 
the application-as-filed transaction. The term bibliographic data as 
used in proposed Sec.  1.14(h)(1) covers certain bibliographic data set 
forth in WIPO standard ST.9 for bibliographic data. The bibliographic 
data used to confirm that the correct application-as-filed is being 
provided may include the patent document identification, filing data, 
priority data, publication data, data concerning technical information 
such as patent classification (international or domestic), and title of 
the invention.
    Proposed Sec.  1.14(h)(2) would permit an applicant to authorize 
the Office to grant a foreign IP office access to the file contents of 
an application where a counterpart application has been filed with a 
foreign IP office and the counterpart application is subject to a 
requirement for information from the application filed with the Office. 
The Office would only provide access to the relevant portion or 
portions of an unpublished U.S. application's file contents necessary 
to satisfy any requirement for information by the foreign IP office, 
triggered by the U.S. applicant filing a counterpart application with 
the foreign IP office. The Office and the foreign IP office would need 
to have a bilateral or multilateral agreement that provides for the 
secure transmission and receipt of any shared information. Proposed 
Sec.  1.14(h)(2)(i) includes the term ``bibliographic data'' to reflect 
that ``bibliographic data'' is used to ensure the information is from 
the correct application for which access has been requested by the 
foreign IP office in any access to the application. The term 
bibliographic data as used in Sec.  1.14(h)(2) includes the same types 
of bibliographic data set discussed above with respect to Sec.  
1.14(h)(1).
    Current Sec.  1.14(h)(2) has been moved to proposed Sec.  
1.14(h)(3).
    Section 1.14(h)(3) as proposed indicates that written authority 
provided under proposed Sec. Sec.  1.14(h)(1) and (h)(2) should be 
submitted before the filing of any subsequent foreign application in 
which priority is claimed to the application. Section 1.14(h)(3) as 
proposed also indicates that the written authority under Sec. Sec.  
1.14(h)(1) and (2) must include the title of the invention (Sec.  
1.72(a)), comply with the requirements of Sec.  1.14(c), and must be 
submitted on an application data sheet (Sec.  1.76) or on a separate 
document (Sec.  1.4(c)).
    Section 1.19: Section 1.19(b)(1)(iv) is proposed to be amended to 
indicate there is no fee for providing a foreign IP office with a copy 
of either an application-as-filed or patent related file wrapper and 
contents pursuant to a bilateral or multilateral agreement (see Sec.  
1.14(h)).

Rulemaking Considerations

    A. Administrative Procedure Act: This rulemaking amends the rules 
of practice to include a specific provision by which an applicant can 
authorize the Office to give a foreign IP office access to all or part 
of the file contents of an application, and thus pertains solely to the 
process for an applicant to provide a limited waiver of confidentiality 
under 35 U.S.C. 122(a) to allow a counterpart IP office access to all 
or part of the file contents of an application. Therefore, the changes 
proposed in this rulemaking involve rules of agency practice and 
procedure and/or interpretive rules. See 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).
    Accordingly, prior notice and opportunity for public comment are 
not required pursuant to 5 U.S.C. 553(b) or (c) (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)). The Office, 
however, is publishing these proposed changes for comment as it seeks 
the benefit of the public's views on the Office's proposed changes to 
provide the Office with authority to give a foreign IP office access to 
all or part of the file contents of an application.
    B. 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 changes proposed in this 
document will not have a significant economic impact on a substantial 
number of small entities. See 5 U.S.C. 605(b).
    This rulemaking amends the rules of practice to include a specific 
provision by which an applicant can authorize the Office to give a 
foreign IP office access to all or part of the file contents of an 
application. This rulemaking consolidates and clarifies in one place--
37 CFR 1.14(h)--existing procedures in both 37 CFR 1.14(c) and (h) 
relevant to authorizing the Office to provide a foreign IP office 
access to all or part of the file contents of an application or to an 
application-as-filed. The changes in this rulemaking do not require any 
applicant to provide the Office with this authority. There is no fee 
for this service. Therefore, the changes proposed in this document will 
not have a significant economic impact on a substantial number of small 
entities.
    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

[[Page 40039]]

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 submit a report 
containing the final 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 proposed 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 proposed 
rule is not expected to result in 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 proposed rule 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 rulemaking 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). 
The collection of information involved in this rulemaking has been 
reviewed and previously approved by OMB under OMB Control Numbers 0651-
0031 and 0651-0032. The Office is not resubmitting an information 
collection package to OMB for its review and approval because the 
changes in this rulemaking do not change patent fees or change the 
information collection requirements (the estimated number of 
respondents, time per response, total annual respondent burden hours, 
or total annual respondent cost burden) associated with the information 
collections approved under OMB Control Numbers 0651-0031 and 0651-0032.
    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 stated in the preamble, 37 CFR part 1 is proposed 
to be 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 1.14 is amended by revising paragraph (h) to read as 
follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (h) Access by a Foreign Intellectual Property Office. (1) Access to 
an application-as-filed may be provided to any foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating 
foreign intellectual property office), if the application contains 
written authority granting such access. Written authority provided 
under this paragraph (h)(1) will be treated as authorizing the Office 
to provide to all participating foreign intellectual property offices 
in accordance with their respective agreements with the Office:
    (i) A copy of the application-as-filed and its related 
bibliographic data;
    (ii) A copy of the application-as-filed of any application the 
filing date of which is claimed by the application in which written 
authority under this paragraph (h)(1) is filed and its related 
bibliographic data; and
    (iii) The date of filing of the written authorization under this 
paragraph (h)(1).
    (2) Access to the file contents of an application may be provided 
to a foreign intellectual property office if a counterpart application 
filed with the foreign intellectual property office is subject to a 
requirement for information from the application filed with the Office, 
the application contains written authority granting the foreign 
intellectual property office access to the required information, and 
the Office and the foreign intellectual property office have a 
bilateral or multilateral agreement to provide the required 
information. Written authority provided

[[Page 40040]]

under this paragraph (h)(2) will be treated as authorizing the Office 
to provide to all foreign intellectual property offices indicated in 
the written authority in accordance with their respective agreements 
with the Office:
    (i) Bibliographic data regarding the application; and
    (ii) Any content of the application file necessary to satisfy the 
foreign intellectual property office requirement for information 
indicated in the respective agreement.
    (3) Written authority provided under paragraphs (h)(1) and (h)(2) 
of this section must include the title of the invention (Sec.  
1.72(a)), comply with the requirements of paragraph (c) of this 
section, and be submitted on an application data sheet (Sec.  1.76) or 
on a separate document (Sec.  1.4(c)). The written authority provided 
under these paragraphs should be submitted before filing any subsequent 
foreign application in which priority is claimed to the application.
0
3. Section 1.19 is amended by revising paragraph (b)(1)(iv) to read as 
follows:


Sec.  1.19  Document supply fees.

* * * * *
    (b) * * *
    (1) * * *
    (iv) If provided to a foreign intellectual property office pursuant 
to a bilateral or multilateral agreement (see Sec.  1.14(h)): $0.00.
* * * * *

    Dated: July 2, 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. 2014-16062 Filed 7-10-14; 8:45 am]
BILLING CODE 3510-16-P