[Federal Register Volume 86, Number 125 (Friday, July 2, 2021)]
[Rules and Regulations]
[Pages 35226-35229]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-14036]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-C-2017-0033]
RIN 0651-AD24
Removal of Certain Rules of Patent Practice
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) revises the rules of practice in patent cases to eliminate the
requirement for original handwritten signatures on certain
correspondence with the Office of Enrollment and Discipline (OED) and
certain payments made to the USPTO by credit card.
DATES: This rule is effective July 2, 2021.
FOR FURTHER INFORMATION CONTACT: For questions on this rule, please
contact
[[Page 35227]]
Howie Reitz, Staff Attorney, Office of Enrollment and Discipline,
USPTO, at 571-272-4097.
SUPPLEMENTARY INFORMATION:
I. Background
To support regulatory reform efforts, 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 of
Commerce'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 selection of certain
regulations related to the requirement for an original handwritten
signature for certain correspondence with the Office of Enrollment and
Discipline (OED) for removal based on the USPTO's assessment that they
were not needed and/or that elimination could improve the USPTO's body
of regulations.
In addition, as part of the USPTO's COVID-19 relief efforts, the
USPTO waived the requirement for an original handwritten signature for
certain correspondence with OED and certain payments by credit card in
an announcement made on March 19, 2020, and in a notice published in
the Federal Register on March 30, 2020 (85 FR 17502). In that
announcement, the USPTO determined that the effects of COVID-19 were an
``extraordinary situation'' within the meaning of 37 CFR 1.183 and
2.146(a)(5) for affected persons doing business before the Office that
warranted a waiver of the original handwritten signature requirements
of Sec. 1.4(e).
II. Regulations for Removal
In this final rule, the USPTO finalizes those provisions in its
proposed rule published on November 25, 2019 (84 FR 64800) related to
the removal of the requirement for original handwritten signatures in
dark ink on correspondence relating to registration to practice before
the Office and other matters within the purview of the OED, which
achieves the objective of making the USPTO's regulations more
effective, while enabling the USPTO to fulfill its mission-related
goals.
Although the Office proposed to remove only the original
handwritten signature requirement found in 37 CFR 1.4(e)(1), relating
to correspondence with the OED, in this final rule, the Office also
eliminates the original handwritten signature requirement found in
Sec. 1.4(e)(2), related to payments by credit card when the payment is
not being made via the Office's electronic filing systems. The removal
of Sec. 1.4(e)(2) makes permanent the USPTO's waiver of the original
handwritten signature requirement in payments by credit card announced
on March 19, 2020, and published in the Federal Register on March 30,
2020 (85 FR 17502). Elimination of the entirety of Sec. 1.4(e) allows,
for example, the use of facsimile transmissions and S-signatures in
enrollment and disciplinary matters before the OED, in addition to the
use of facsimile transmissions and S-signatures in payments by credit
card. Elimination of this section also facilitates the implementation
of an electronic filing system within the OED. As a conforming change,
this final rule also removes Sec. 1.6(d)(1) to eliminate an obsolete
cross reference to Sec. 1.4(e).
The USPTO intends to address its proposed revisions to its
regulations governing requests for Presidential Proclamations under the
Semiconductor Chip Protection Act (SCPA), as published in its proposed
rule on November 25, 2019 (84 FR 64800), in a separate notice.
III. Proposed Rule: Comments and Responses
The USPTO published a proposed rule on November 25, 2019 (84 FR
64800), soliciting comments on the proposed amendments. The USPTO
received no comments in response to the proposed rule.
IV. Discussion of Rule Changes
This final rule removes and reserves 37 CFR 1.4(e), which sets
forth certain correspondence and signature requirements. As a
corresponding change, this final rule removes and reserves Sec.
1.6(d)(1) to eliminate an obsolete cross reference to Sec. 1.4(e).
Rulemaking Considerations:
A. Administrative Procedure Act: The changes in this 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 that the 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 rulemaking were 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), do 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))). However, to benefit from the public's input, the Office
chose to seek public comment on the removal of its regulations
governing requests for Presidential Proclamations under the SCPA and on
the elimination of the requirement for original handwritten signatures
on certain correspondence with the OED before implementing the rule.
In addition, the Office, pursuant to the authority at 5 U.S.C.
553(b)(B), finds good cause to remove regulations requiring that
certain payments be made to the USPTO by credit card, found in 37 CFR
1.4(e)(2) and Sec. 1.6(d)(1), without prior notice and an opportunity
for public comment, as such procedures would be contrary to the public
interest. The public does not require additional time to conform its
conduct, as the changes in this final rule do not add any new
requirements, and the elimination of the provisions in this final rule
provides a modest benefit to impacted parties by making permanent the
use of alternative signature methods in certain payments by credit
card.
Furthermore, the Office finds good cause to waive the 30-day
delayed effectiveness period for this final rule, as provided by 5
U.S.C. 553(d)(3), because such delay would be contrary to the public
interest, as this final rule provides a modest benefit to impacted
parties by making permanent the use of
[[Page 35228]]
alternative signature methods in certain payments by credit card.
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 in this
final rule will not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b).
This final rule removes 37 CFR 1.4(e), which required original
handwritten signatures in dark ink on correspondence relating to
registration to practice before the Office and other matters in the
purview of the OED, and in payments by credit card where the payment is
not being made via the Office's electronic filing systems. Elimination
of this section allows for the use of facsimile transmissions and S-
signatures in enrollment and disciplinary matters before the OED and in
the payment of fees by credit card, thereby providing a modest benefit
to impacted parties. As a conforming change, this final rule also
removes Sec. 1.6(d)(1) to eliminate an obsolete cross reference to
Sec. 1.4(e). 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 online 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 effect 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 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 rulemaking are not expected
to result in an annual effect on the economy of $100 million 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
rulemaking 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 rulemaking 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 (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 (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 of 1969: 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 of 1995: 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.
O. Paperwork Reduction Act of 1995: 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). Removal of
the requirement for original handwritten signatures in dark ink does
not impact the current OMB approval of OMB control numbers 0651-0012,
0651-0017, and 0651-0043.
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
has a currently valid OMB control number.
P. E-Government Act Compliance: The USPTO is committed to
compliance with the E-Government Act to promote the use of the internet
and other information technologies, to provide increased opportunities
for citizen
[[Page 35229]]
access to Government information and services, and for other purposes.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons stated in the preamble, the USPTO amends 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).
Sec. 1.6 [Amended]
0
3. Section 1.6 is amended by removing and reserving paragraph (d)(1).
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2021-14036 Filed 7-1-21; 8:45 am]
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