[Federal Register Volume 84, Number 227 (Monday, November 25, 2019)]
[Proposed Rules]
[Pages 64800-64803]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-24825]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 150

[Docket No.: PTO-C-2017-0033]
RIN 0651-AD24


Removal of Regulations Governing Requests for Presidential 
Proclamations Under the Semiconductor Chip Protection Act of 1984 
(SCPA) and Certain Rules of Practice Relating to Registration To 
Practice and Discipline

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking and request for comments.

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SUMMARY: In accordance with Executive Order 13777, ``Enforcing the 
Regulatory Reform Agenda,'' and Executive Order 13771, ``Reducing 
Regulation and Controlling Regulatory Costs,'' the United States Patent 
and Trademark Office (USPTO or Office) proposes to remove its 
regulations governing requests for Presidential Proclamations under the 
Semiconductor Chip Protection Act of 1984 (SCPA). In addition, this 
proposed rule would revise the rules of practice in patent cases to 
eliminate the requirement for handwritten personal signatures on 
correspondence relating to registration to practice before the Office, 
and other matters within the purview of the Office of Enrollment and 
Discipline (OED).

DATES: Written comments must be received on or before December 26, 
2019.

ADDRESSES: Comments on the changes set forth in this proposed 
rulemaking should be sent by electronic mail message to: 2017-0033. 
[email protected]. Comments may also be submitted by postal mail 
addressed to: Mail Stop OPIA, USPTO, P.O. Box 1450, Alexandria, VA 
22313-1450, ATTN: Docket No. PTO-C-2017-0033. Comments concerning ideas 
to improve, revise, and streamline other USPTO regulations, not 
discussed in this proposed rulemaking, should be submitted to: 
[email protected].
    Comments may also be submitted via the Federal eRulemaking Portal 
at http://www.regulations.gov. See the Federal eRulemaking Portal 
website 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 the Office may easily share such comments with the 
public. 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 Policy and International Affairs, currently located in Madison East, 
600 Dulany Street, Alexandria, Virginia. Comments also will be 
available for viewing via the Office's internet website (http://www.uspto.gov) and at http://www.regulations.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: For questions on the changes to 37 CFR 
part 1, contact Howard Reitz at (571) 272-4097. For questions on 
changes to 37 CFR part 150, please contact Darren Pogoda at (571) 272-
5519.

SUPPLEMENTARY INFORMATION: 

I. Background

    In accordance with Executive Order 13777, ``Enforcing the 
Regulatory Reform Agenda,'' the Department of Commerce established a 
Regulatory Reform Task Force (Task Force), comprising, among others, 
agency officials from the National Oceanic and Atmospheric 
Administration, the Bureau of Industry and Security, and the USPTO, and 
charged the Task Force with evaluating existing regulations and 
identifying those that should be repealed, replaced, or modified 
because they are potentially outdated, unnecessary, ineffective, 
costly, or unduly burdensome to both government and private sector 
operations.
    To support its regulatory reform efforts on the Task Force, the 
USPTO assembled a Working Group on Regulatory Reform (Working Group)--
consisting of subject-matter experts from each of the business units 
that implement the USPTO's regulations--to consider, review, and 
recommend ways that the regulations could be improved, revised, and 
streamlined. The Working Group reviewed existing regulations, both 
discretionary and required by statute or judicial order. The USPTO also 
solicited comments from stakeholders through a web page established to 
provide information on the USPTO's regulatory reform efforts, and 
through the Department's Federal Register Notice titled ``Impact of 
Federal Regulations on Domestic Manufacturing'' (82 FR 12786, Mar. 7, 
2017), which addressed the impact of regulatory burdens on domestic 
manufacturing. These efforts led to the development of candidate 
regulations for removal based on the USPTO's assessment that these 
regulations were

[[Page 64801]]

not needed and/or that elimination could improve the USPTO's body of 
regulations. To facilitate review and public comment, the USPTO 
consolidates and proposes in this rule revisions to those regulations 
relating to requests for Presidential Proclamations under the 
Semiconductor Chip Protection Act of 1984 (SCPA) under 37 CFR part 150 
and regulations governing the rules of practice in patent cases under 
37 CFR part 1. Other proposals to remove regulations on other subject 
areas may be published separately.

II. Regulations Proposed for Removal

    This proposed rule would remove the regulations concerning requests 
for Presidential Proclamations under the SCPA, 37 CFR part 150, 
specifically, the following sections: Sec.  150.1 Definitions; Sec.  
150.2 Initiation of evaluation; Sec.  150.3 Submission of requests; 
Sec.  150.4 Evaluation; Sec.  150.5 Duration of proclamation; and Sec.  
150.6 Mailing address.
    These regulations establish procedures by which protection of 
semiconductor chips, under Title 17, may be extended to nationals, 
domiciliaries, and sovereign authorities of foreign nations. Part 150 
sets forth the avenue for foreign governments and related parties to 
request, through the Secretary of Commerce, a Presidential Proclamation 
regarding the scope of protection for semiconductor chips, pursuant to 
the Semiconductor Chip Protection Act of 1984 (17 U.S.C. 901-914) and 
Executive Order 12504. Part 150 also addresses the Secretary of 
Commerce's now-expired authority to issue orders extending interim 
protection to foreign owners of semiconductor chips upon the 
satisfaction of certain conditions.
    As the desire to protect semiconductor chips under Title 17 has 
steadily diminished over time, and as most nations are already covered 
by President Proclamation 6780 (which indicated that once the TRIPS 
Agreement became effective, all WTO members would become eligible for 
full protection under chapter 9 of title 17, United States Code), there 
have been no recent requests made pursuant to the regulations. If these 
regulations are removed, it would still be possible for a foreign 
government or related party to file a request regarding a Presidential 
Proclamation. Given the diminished practical relevance of semiconductor 
chip protection and the existence of President Proclamation 6780, the 
USPTO expects such requests to be very rare.
    This proposed rule would also remove 37 CFR 1.4(e)(1), which 
requires handwritten personal signatures in dark ink on correspondence 
relating to registration to practice before the Office, and other 
matters within the purview of the OED. Elimination of this provision 
would allow, for example, the use of facsimile transmissions and S-
signatures in enrollment and disciplinary matters before the OED. 
Elimination of this provision would also facilitate implementation of 
an electronic filing system within the OED.
    The regulations proposed in this rule for removal and cost-savings 
achieve the objective of making the USPTO's regulations more effective 
and less burdensome, while enabling the USPTO to fulfill its mission 
goals. The USPTO's economic analysis shows that even though removal of 
these regulations is not expected to substantially reduce the burden on 
the impacted community, the regulations are nonetheless being 
eliminated because they are ``outdated, unnecessary, or ineffective'' 
regulations encompassed by the directives in Executive Order 13777.

III. Discussion of Proposed Rules Changes

    The proposed rule would remove and reserve part 150 of 37 CFR. In 
removing part 150, the following sections will be removed and reserved: 
Sec.  150.1 Definitions, which sets forth the meaning of terms of art 
regarding requests for Presidential Proclamations under the SCPA; Sec.  
150.2 Initiation of evaluation, which sets forth the manner by which 
the Under Secretary of Commerce for Intellectual Property and Director 
of the USPTO may initiate an evaluation of the propriety of 
recommending the issuance of a Presidential Proclamations under the 
SCPA; Sec.  150.3 Submission of requests, which sets forth the form and 
manner by which foreign governments may request the issuance of a 
Presidential Proclamations under the SCPA; Sec.  150.4 Evaluation, 
which sets forth the manner by which the Under Secretary of Commerce 
for Intellectual Property and Director of the USPTO was previously 
authorized to evaluate requests for orders extending interim protection 
to foreign owners of semiconductor chips, the manner by which it may 
evaluate requests regarding the issuance or revocation of a 
Presidential Proclamation under the SCPA, and the manner by which it 
may forward a recommendation regarding the issuance of a proclamation 
to the President; Sec.  150.5 Duration of proclamation, which sets 
forth the manner by which the Under Secretary of Commerce for 
Intellectual Property and Director of the USPTO may recommend the 
inclusion of terms and conditions on the duration of, or revocation of, 
a proclamation; and Sec.  150.6 Mailing address, which sets forth the 
address to be used for all requests and correspondence for requests for 
Presidential Proclamations under the SCPA.
    The proposed rule would also remove and reserve 37 CFR 1.4(e)(1), 
which sets forth certain correspondence and signature requirements.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes in this proposed 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 
1204 (2015) (Interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers.'' 
(citation and internal quotation marks omitted)); Nat'l Org. of 
Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 
(Fed. Cir. 2001) (Rule that clarifies interpretation of a statute is 
interpretive.); 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.).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this proposed rulemaking are not required pursuant to 5 
U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 
(Notice-and-comment procedures are required neither when an agency 
``issue[s] an initial interpretive rule'' nor ``when it amends or 
repeals that interpretive rule.''); 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 implementation of the proposed rule changes.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, of the USPTO has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that changes proposed in 
this notice will not have a

[[Page 64802]]

significant economic impact on a substantial number of small entities. 
See 5 U.S.C. 605(b).
    This proposed rule would remove regulations governing the 
procedures by which protection of semiconductor chips, under Title 17, 
may be extended to nationals, domiciliaries, and sovereign authorities 
of foreign nations because they are not necessary. Part 150 sets forth 
the avenue for foreign governments and related parties to request, 
through the Secretary of Commerce, a Presidential Proclamation 
regarding the scope of protection for semiconductor chips, pursuant to 
the Semiconductor Chip Protection Act of 1984 (17 U.S.C. 901-914) and 
Executive Order 12504. Part 150 also addresses the Secretary of 
Commerce's now-expired authority to issue orders extending interim 
protection to foreign owners of semiconductor chips upon the 
satisfaction of certain conditions.
    These regulations are proposed to be removed because there has been 
a steady decline in requests, and no recent requests, received by the 
USPTO to protect semiconductor chips under Title 17. The removal of 
these regulations is not expected to substantively impact regulated 
entities as it would still be possible for a foreign government or 
related party to file a request regarding a Presidential Proclamation 
without the regulations.
    This proposed rule would also remove 37 CFR 1.4(e)(1), which 
requires handwritten personal signatures in dark ink on correspondence 
relating to registration to practice before the Office, and other 
matters in the purview of the OED. Elimination of this provision would 
allow, for example, the use of facsimile transmissions and S-signatures 
in enrollment and disciplinary matters before the OED, thereby 
providing a modest benefit to impacted parties. For these reasons, this 
rulemaking 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.
    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 13771 (Reducing Regulation and Controlling 
Regulatory Costs): This proposed rule is expected to be an Executive 
Order 13771 deregulatory action.
    F. 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).
    G. 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).
    H. 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).
    I. 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).
    J. 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).
    K. 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).
    L. 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 USPTO 
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 notice 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 notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    M. 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.
    N. 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.
    O. 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 that involve the use of 
technical standards.
    P. 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 collections that 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 
information collections affected are 0651-0012 and 0651-0017.

[[Page 64803]]

    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 150

    Administrative practice and procedure, Computer technology, Foreign 
relations, Proclamations, Science and technology, Semiconductor chip 
products.

    For the reasons stated in the preamble, the USPTO proposes to amend 
chapter 1 of title 37 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for part 1 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.


Sec.  1.4  [Amended]

0
2. Section 1.4 is amended by removing and reserving paragraph (e)(1).

PART 150--[Removed and Reserved]

0
3. Under the authority of 35 U.S.C. 2(b)(2), part 150, consisting of 
Sec. Sec.  150.1 through 150.6, is removed and reserved.

    Dated: November 7, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-24825 Filed 11-22-19; 8:45 am]
 BILLING CODE 3510-16-P