[Federal Register Volume 86, Number 232 (Tuesday, December 7, 2021)]
[Proposed Rules]
[Pages 69195-69198]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-26502]



[[Page 69195]]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2017-0011]
RIN 0651-AD21


Date of Receipt of Electronic Submissions of Patent 
Correspondence

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The USPTO proposes to amend the patent rules of practice to 
provide that the receipt date of correspondence officially submitted 
electronically by way of the Office electronic filing system is the 
date in the Eastern time zone of the United States (Eastern Time) when 
the USPTO received the correspondence, rather than the date on which 
the correspondence is received at the correspondence address in 
Alexandria, Virginia. This is because the USPTO is expecting to provide 
physical servers for receiving electronic submissions in locations that 
are separate from the USPTO headquarters in Alexandria, Virginia. This 
proposed change will ensure consistency and predictability with respect 
to correspondence receipt dates as the date of receipt accorded to 
correspondence submitted electronically will not depend upon the 
location of USPTO servers. The USPTO is also proposing to amend the 
patent rules of practice to make other clarifying changes regarding the 
receipt of electronic submissions, including providing a definition for 
Eastern Time. These changes will harmonize the patent rules with the 
trademark rules and provide clarity regarding the date of receipt of 
electronic submissions.

DATES: Comments must be received by February 7, 2022 to ensure 
consideration.

ADDRESSES: For reasons of government efficiency, comments must be 
submitted through the Federal eRulemaking Portal at 
www.regulations.gov. To submit comments via the portal, one should 
enter docket number PTO-P-2017-0011 on the homepage and click 
``search.'' The site will provide search results listing all documents 
associated with this docket. Commenters can find a reference to this 
notice and click on the ``Comment Now!'' icon, complete the required 
fields, and enter or attach their comments. Attachments to electronic 
comments will be accepted in Adobe [supreg] portable document format or 
Microsoft Word [supreg] format. 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.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of, or 
access to, comments is not feasible due to a lack of access to a 
computer and/or the internet, please contact the USPTO using the 
contact information below for special instructions.

FOR FURTHER INFORMATION CONTACT: For patent-related inquiries, please 
contact Mark O. Polutta, Senior Legal Advisor, Office of Patent Legal 
Administration, by telephone at 571-272-7709; or Kristie M. Kindred, 
Legal Advisor, Office of Patent Legal Administration, by telephone at 
571-272-9016; or you can send inquiries by email to 
[email protected].

SUPPLEMENTARY INFORMATION: Under current 37 CFR 1.6(a)(4), the receipt 
date of correspondence submitted to the USPTO by way of the Office 
electronic filing system is ``the date the correspondence is received 
at the correspondence address for the USPTO set forth in 37 CFR 1.1 
when it was officially submitted.'' Current 37 CFR 1.1 sets forth an 
Alexandria, Virginia, correspondence address for the Office. The 
USPTO's physical servers that receive electronic submissions are 
currently located in Alexandria, Virginia. However, in order to enhance 
resiliency, the USPTO is in the process of providing servers in 
Manassas, Virginia, and in the future may provide servers outside of 
the Eastern time zone. Once the USPTO begins receiving electronically 
submitted patent correspondence at locations other than Alexandria, 
Virginia, the language in current 37 CFR 1.6(a)(4) that defines the 
date the correspondence is received at Alexandria, Virginia, as the 
receipt date would be inapplicable. Thus, the USPTO is proposing to 
revise 37 CFR 1.6(a)(4) to specify that the receipt date of 
correspondence that is officially submitted electronically by way of 
the Office electronic filing system is the date in Eastern Time when 
the USPTO received the correspondence, regardless of the physical 
location of the USPTO server that receives the correspondence. Other 
clarifying changes regarding the receipt date of electronic 
submissions, including providing a definition for Eastern Time, are 
also proposed.
    In addition, the changes will align the patent rules with the Legal 
Framework for the Patent Electronic System, available at www.uspto.gov/patents/apply/filing-online/legal-framework-efs-web and in the Manual 
of Patent Examining Procedure (MPEP) section 502.05, subsection I. The 
Legal Framework already indicates that the time and date of receipt of 
an application filed via the Office electronic filing system is the 
local time and date (Eastern Time) at the USPTO headquarters in 
Alexandria, Virginia, when the USPTO received the submission. The date 
of receipt is recorded after the user clicks the ``SUBMIT'' button on 
the ``Confirm and Submit'' screen. This is the date shown on the 
Electronic Acknowledgement Receipt. Similarly, follow-on documents 
filed in a patent application after the initial filing of the 
application are also accorded the date when the document is received at 
the USPTO as the date of receipt under existing practice. See MPEP 
section 502.05, subsection I.C.
    With respect to patent correspondence, any references to the Office 
electronic filing system in this Notice (including in 37 CFR part 1) 
include EFS-Web and Patent Center. Patent Center is a new tool for the 
electronic filing and management of patent applications. Patent Center 
is currently in the Beta phase but is available for all users. Once 
fully developed, Patent Center will replace EFS-Web and the Patent 
Application Information Retrieval (PAIR) system. Users of Patent Center 
Beta are required to abide by the Legal Framework for the Patent 
Electronic System to the extent applicable and are expected to abide by 
the Patent Electronic System Subscriber Agreement. See the Patent 
Center Beta Release Guidelines available at www.uspto.gov/patents/apply/patent-center. In the future, as Patent Center gets closer to 
full development, the Legal Framework for the Patent Electronic System 
will be revised to expressly refer to and more specifically cover 
electronic submissions via Patent Center.
    The rules of practice in trademark cases already provide that 
filing dates of electronic submissions are based on Eastern Time. See 
37 CFR 2.195(a). Therefore, it is unnecessary to amend the trademark 
rules of practice.

Discussion of Specific Rules

    The following is a discussion of the proposed amendments to 37 CFR 
part 1.
    Section 1.1: Section 1.1(a) is amended to clarify the appropriate 
address information for patent-related correspondence. In particular, 
the clause ``[e]xcept as provided in paragraphs (a)(3)(i) and 
(a)(3)(ii) of this

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section'' is being changed to ``[e]xcept for correspondence submitted 
via the Office electronic filing system in accordance with Sec.  
1.6(a)(4).'' Further, the phrase ``to specific areas within the Office 
as set out in paragraphs (a)(1) and (a)(3)(iii) of this section'' is 
being replaced with ``to specific areas within the Office as provided 
in this section.'' Since the USPTO does not strictly require the 
provision of an address when patent-related correspondence is submitted 
via the Office electronic filing system, it is appropriate to exclude 
such correspondence from the address marking requirements of Sec.  
1.1(a). Applicants may continue to provide an address on correspondence 
submitted via the Office electronic filing system consistent with Sec.  
1.1(a), but it is not mandatory. The removal of references to specific 
sub-paragraphs (a)(3)(i) and (a)(3)(ii) from the introductory text of 
paragraph (a) is a technical correction in view of the remaining 
language in this section.
    Section 1.6: Section 1.6(a)(4) is proposed to be amended to remove 
the reference to the physical location where correspondence must be 
received, and to provide that the receipt date of patent correspondence 
submitted using the Office electronic filing system is the date in 
Eastern Time when the correspondence is received in the USPTO. 
Specifically, the USPTO proposes to change the phrase ``Correspondence 
submitted to the Office by way of the Office electronic filing system 
will be accorded a receipt date, which is the date the correspondence 
is received at the correspondence address for the Office set forth in 
Sec.  1.1 when it was officially submitted'' to ``Correspondence 
officially submitted to the Office by way of the Office electronic 
filing system will be accorded a receipt date, which is the date in 
Eastern Time when the correspondence is received in the Office.'' In 
view of the relocation of the servers, it is appropriate to eliminate 
the reference to the correspondence address set forth in Sec.  1.1 in 
connection with the receipt date of correspondence being filed 
electronically. Correspondence submitted via the Office electronic 
filing system will be accorded a receipt date based on the local time 
and date at the USPTO headquarters in Alexandria, Virginia, when the 
correspondence is received in the USPTO. Specifically, the Office 
electronic filing system will record the receipt date in Eastern Time 
after the user officially submits the correspondence by clicking the 
``SUBMIT'' button on the ``Confirm and Submit'' screen and the 
correspondence is successfully received in the USPTO. Furthermore, the 
phrase ``regardless of whether that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia'' is being added to 
provide clarity in the rule. This is not a change in practice. See MPEP 
502.05, subsection I.C.
    It should be noted that the Legal Framework for the Patent 
Electronic System does not permit certain patent correspondence to be 
officially submitted via the Office electronic filing system. See MPEP 
502.05, subsection I.B.2. Such correspondence will not be accorded a 
date of receipt or considered officially filed in the USPTO when 
submitted via the Office electronic filing system. For example, notices 
of appeal to a court, district court complaints, or other complaints or 
lawsuits involving the USPTO may not be filed via the Office electronic 
filing system. See MPEP 1216 for instructions on how to properly serve 
and/or file documents seeking judicial review of a decision by the 
Patent Trial and Appeal Board.
    Section 1.9: Section 1.9 is proposed to be amended to add a new 
paragraph (o) to set forth a definition for Eastern Time. In 
particular, Eastern Time is defined as meaning Eastern Standard Time or 
Eastern Daylight Time in the United States, as appropriate.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes proposed in this 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See 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 
are procedural where they do not change the substantive standard for 
reviewing claims); 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).
    Accordingly, prior notice and opportunity for public comment for 
the changes proposed in this rulemaking 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), 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, the USPTO has chosen to seek public comment 
before implementing the rule to benefit from the public's input.
    B. Regulatory Flexibility Act: Under the Regulatory Flexibility Act 
(5 U.S.C. 601 et seq.), whenever an agency is required by 5 U.S.C. 553 
(or any other law) to publish a notice of proposed rulemaking, the 
agency must prepare and make available for public comment an Initial 
Regulatory Flexibility Analysis, unless the agency certifies under 5 
U.S.C. 605(b) that the proposed rule, if implemented, will not have a 
significant economic impact on a substantial number of small entities. 
5 U.S.C. 603, 605. 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 the changes proposed in this rule 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 provide that the 
receipt date of correspondence officially submitted electronically by 
way of the Office electronic filing system is the date in Eastern Time 
when the Office received the correspondence. The USPTO is also 
proposing to amend the patent rules of practice to make other 
clarifying changes regarding the receipt of electronic submissions. 
These changes are procedural in nature and would not result in a change 
in the burden imposed on any patent applicant, including a small 
entity.
    For the reasons described above, the proposed changes 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 USPTO has complied with Executive Order 13563 (Jan. 18, 
2011). Specifically, the USPTO 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

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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 the 
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 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 requires that the USPTO consider the impact of paperwork and other 
information collection burdens imposed on the public. This rulemaking 
does not involve any new information collection requirements 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 et seq.).
    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.

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 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 1.1 is amended by revising the paragraph (a) introductory 
text to read as follows:


Sec.  1.1  Addresses for non-trademark correspondence with the United 
States Patent and Trademark Office.

    (a) In general. Except for correspondence submitted via the Office 
electronic filing system in accordance with Sec.  1.6(a)(4), all 
correspondence intended for the United States Patent and Trademark 
Office must be addressed to either ``Director of the United States 
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450'' or to specific areas within the Office as provided in this 
section. When appropriate, correspondence should also be marked for the 
attention of a particular office or individual.
* * * * *

0
3. Section 1.6 is amended by revising paragraph (a)(4) to read as 
follows:


Sec.  1.6  Receipt of Correspondence.

    (a) * * *
    (4) Correspondence may be submitted using the Office electronic 
filing system only in accordance with the Office electronic filing 
system requirements. Correspondence officially submitted to the Office 
by way of the Office electronic filing system will be accorded a 
receipt date, which is the date in Eastern Time when the correspondence 
is received in the Office, regardless of whether that date is a 
Saturday, Sunday, or Federal holiday within the District of Columbia.
* * * * *
    Section 1.9 is amended by adding a new paragraph (o) to read as 
follows:


Sec.  1.9  Definitions.

* * * * *
    (o) Eastern Time as used in this chapter means Eastern Standard 
Time or

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Eastern Daylight Time in the United States, as appropriate.

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. 2021-26502 Filed 12-6-21; 8:45 am]
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