[Federal Register Volume 79, Number 220 (Friday, November 14, 2014)]
[Rules and Regulations]
[Pages 68121-68124]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-27032]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
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: Final rule.
-----------------------------------------------------------------------
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
[[Page 68122]]
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. The Office published an
interim rule on March 5, 2014, to revise 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 so long as 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 (continued prosecution application interim rule). The Office
received no comments from the public in response to the continued
prosecution application interim rule published on March 5, 2014. This
final rule adopts as final the amendments to the rules of practice
originally set forth in the continued prosecution application interim
rule.
DATES: Effective Date: This final rule is effective on November 14,
2014. The continued prosecution application interim rule published on
March 5, 2014 at 79 FR 12384 was effective on March 5, 2014.
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: The previously published continued
prosecution application 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. See Changes to
Continued Prosecution Application Practice, 79 FR 12384 (Mar. 5, 2014).
The change in the continued prosecution application interim rule avoids
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. This final rule adopts as final the amendments to the
rules of practice originally set forth in the continued prosecution
application interim rule.
Summary of Major Provisions: The previously published continued
prosecution application 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 so long as the prior nonprovisional
application contains an application data sheet indicating the name,
residence, and mailing address of each inventor. As discussed
previously, this final rule adopts as final the amendments to the rules
of practice originally set forth in the continued prosecution
application interim rule.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: The Office revised the rules of practice pertaining to
the inventor's oath or declaration during implementation of the AIA
inventor's oath or declaration provisions 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) formerly required 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) (2013) (required 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). The
continued prosecution application 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 so long as 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.
This change avoids 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. This final rule adopts as
final the amendments to the rules of practice originally set forth in
the continued prosecution application interim rule.
Discussion of Specific Rules
The continued prosecution application interim rule published on
March 5, 2014, amended Sec. 1.53(d)(1)(ii) 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).''
Comments: The Office received no comments in response to the
continued prosecution application interim rule.
Rulemaking Considerations
A. Administrative Procedure Act: This final rule simply adopts as
final changes in the continued prosecution application interim rule,
which pertain to the procedures that apply to the filing of a continued
prosecution application and do not change the substantive criteria of
patentability. Therefore, the changes 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. FCC, 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), found good cause to adopt the changes in the continued
prosecution application interim rule without prior notice and an
opportunity for public comment, as such procedures would have been
contrary to the public interest. Delay in the promulgation of the
changes in the continued prosecution application
[[Page 68123]]
interim rule to provide notice and comment procedures would have caused
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 the continued prosecution application interim rule was in the public
interest because: (1) The public did not need time to conform its
conduct as the changes in the continued prosecution application interim
rule merely eased the requirements for filing a continued prosecution
application; and (2) those applicants who were ineligible to file a
continued prosecution application because the prior nonprovisional
application does not contain the inventor's oath or declaration
benefitted from the changes in the continued prosecution application
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 was
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 the continued prosecution application interim rule were
made immediately effective because they relieved 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 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
final 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 final 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 final 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
[[Page 68124]]
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.
0
For the reasons set forth in the preamble, the interim rule amending 37
CFR part 1 which was published at 79 FR 12384-12386 on March 5, 2014,
is adopted as a final rule without change.
Dated: November 6, 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. 2014-27032 Filed 11-13-14; 8:45 am]
BILLING CODE 3510-16-P