[Federal Register Volume 87, Number 221 (Thursday, November 17, 2022)]
[Rules and Regulations]
[Pages 68900-68904]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-24335]
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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: Final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is amending the patent rules of practice to provide that the
receipt date of correspondence officially submitted electronically by
way of the USPTO patent 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 change is necessary because the USPTO is expecting to
provide servers for receiving electronic submissions in locations that
are separate from the USPTO headquarters in Alexandria, Virginia. This
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 on the location
of USPTO servers. The USPTO is also amending 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 harmonize the patent rules with the trademark rules
and provide clarity regarding the date of receipt of electronic
submissions.
DATES: This rule is effective on December 19, 2022.
FOR FURTHER INFORMATION CONTACT: For patent-related inquiries, please
contact Mark O. Polutta, Senior Legal Advisor, Office of Patent Legal
Administration, at 571-272-7709; or Kristie M. Kindred, Legal Advisor,
Office of Patent Legal Administration, at 571-272-9016; or you can send
inquiries to [email protected].
SUPPLEMENTARY INFORMATION: The USPTO's servers that receive electronic
submissions are currently located in Alexandria, Virginia. However, to
enhance resiliency, the USPTO is in the
[[Page 68901]]
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 rule language that
defines the receipt date as the date the correspondence is received at
the correspondence address in Alexandria, Virginia, would be
inapplicable. Thus, the USPTO is revising 37 CFR 1.6(a)(4) to specify
that the receipt date of correspondence that is officially submitted
electronically by way of the USPTO patent 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 being made.
In addition, the changes align the patent rules with the Legal
Framework for the Patent Electronic System (October 23, 2019) (Legal
Framework), available at www.uspto.gov/patents/apply/filing-online/legal-framework-efs-web and incorporated in the Manual of Patent
Examining Procedure (9th ed., Rev. 10.2019) (MPEP) section 502.05,
subsection I. The Legal Framework indicates that the time and date of
receipt of an application filed via the USPTO patent 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 (Eastern Time)
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 reference to the USPTO
patent electronic filing system (EFS) in this final rule (including in
37 CFR part 1) includes EFS-Web and Patent Center. Patent Center is a
new tool for the electronic filing and management of patent
applications. Patent Center is available for all users. Patent Center
has replaced the public Patent Application Information Retrieval (PAIR)
system and, once fully developed, will replace EFS-Web and the private
PAIR system as well. Users of Patent Center are required to abide by
the Legal Framework to the extent applicable and the Patent Electronic
System Subscriber Agreement. See the Patent Center information web page
available at www.uspto.gov/patents/apply/patent-center. In the future,
as Patent Center gets closer to full development, the Legal Framework
will be revised to expressly refer to and more specifically cover
electronic submissions via Patent Center. The rules use generic
terminology to refer to the system for electronically filing patent
applications and patent correspondence in order to accommodate any name
changes to the system that may occur in the future.
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 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 section'' is being changed to ``[e]xcept for
correspondence submitted via the USPTO patent 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 USPTO patent 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 USPTO patent electronic
filing system consistent with Sec. 1.1(a), but it is not mandatory.
The removal of references to specific paragraphs (a)(3)(i) and (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 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 USPTO patent electronic filing system is the date in Eastern Time
when the correspondence is received in the USPTO. Specifically, 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''
has been changed to ``Correspondence officially submitted to the Office
by way of the USPTO patent 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 USPTO patent 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 USPTO patent 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 fully, successfully, and
officially 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 section 502.05,
subsection I.C3.
One should note that the Legal Framework does not permit certain
patent correspondence to be officially submitted via the USPTO patent
electronic filing system. See MPEP section 502.05, subsection I.B2.
Such correspondence will not be accorded a date of receipt or
considered officially filed in the USPTO when submitted via the USPTO
patent 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 USPTO patent electronic
filing system. See MPEP section 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 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
[[Page 68902]]
Eastern Daylight Time in the United States, as appropriate.
Changes to standardize references to the USPTO patent electronic
filing system: 37 CFR part 1 is amended to revise all references to
``Office's electronic filing system'' and ``Office electronic filing
system'' to ``USPTO patent electronic filing system.''
Comments and Responses
The USPTO published a notice of proposed rulemaking on December 7,
2021, at 86 FR 69195, soliciting public comments on the proposed
amendments to 37 CFR part 1 being adopted in this final rule. The USPTO
received written input from three commenters on the proposed rule.
Summaries of the comments and the Office's responses to the written
comments follow.
Comment 1: One commenter expressed support for the rule changes.
Response: The USPTO appreciates the feedback from the commenter.
Comment 2: One commenter questioned whether the new definition of
filing in the Eastern time zone will have any effect on the use of a
certificate of transmission based on the local time zone for patent
filings.
Response: There is no change being made to certificate of mailing
or transmission practice under 37 CFR 1.8. Applicants may still use a
certificate of mailing or transmission in accordance with the
provisions of 37 CFR 1.8 for the filing of patent correspondence in
patent applications where permitted. One should note that the
certificate of mailing or transmission practice under 37 CFR 1.8 is not
applicable to the filing of new patent applications or other patent
correspondence necessary for the purpose of obtaining an application
filing date.
Comment 3: One commenter stated that the definition in the notice
of proposed rulemaking of the ``Office electronic filing system'' as
including EFS-Web and Patent Center was ambiguous since it was unclear
whether it applies to other Office electronic filing systems in
addition to EFS-Web and Patent Center.
Response: This final rule amends 37 CFR part 1 to replace all
references to ``Office electronic filing system'' to ``USPTO patent
electronic filing system.'' The only electronic filing systems for
filing new patent applications or correspondence in existing patent
applications are EFS-Web and Patent Center. While other electronic
systems exist, such as the Electronic Patent Assignment System for
recording assignment documents or the Certified Copy Center for
ordering patent and trademark documents, these are not electronic
filing systems encompassed by the phrase ``Office electronic filing
system'' or ``USPTO patent electronic filing system'' as used in the
notice of proposed rulemaking or in this final rule. These other
electronic systems are not used for filing new patent applications or
correspondence in existing patent applications. While it is possible to
indicate on the cover sheet for the assignment document that the
document also serves as the inventor's oath or declaration under 37 CFR
1.63, and the USPTO will then place a copy of the document in the
application file, this is not a situation in which an applicant is
filing correspondence directly into an existing application. The rules
use generic terminology to refer to the electronic filing system
because the system name(s) may change over time. As mentioned in this
final rule, EFS-Web is being phased out and will be replaced by Patent
Center.
Comment 4: One commenter stated that the notice of proposed
rulemaking is inconsistent with 35 U.S.C. 111(a)(4) regarding filing
dates for patent applications. The commenter noted that the statute
does not state that the filing date is the date after the user clicks
the ``Submit'' button on the ``Confirm and Submit'' screen, and the
statute does not state that the filing date is the date shown on the
Electronic Acknowledgement Receipt. The commenter also noted that the
USPTO server may delay generating ``the date shown on the Electronic
Acknowledgement Receipt.'' The commenter further stated that the filing
date for an application should be the date a specification, with or
without claims, is received by a USPTO server, which occurs prior to
the USPTO server acknowledging receipt, and prior to the filer pressing
the ``Submit'' button.
Response: As noted by the commenter, 35 U.S.C. 111(a)(4) provides
that ``[t]he filing date of an application shall be the date on which a
specification, with or without claims, is received in the United States
Patent and Trademark Office.'' Similarly, 35 U.S.C. 111(b)(4) provides
that ``[t]he filing date of a provisional application shall be the date
on which a specification, with or without claims, is received in the
United States Patent and Trademark Office.'' The regulations at 37 CFR
1.6 define what ``received in the U.S. Patent and Trademark Office'' in
the statute means, and it is consistent with the statute. Contrary to
the argument made by the commenter, it would be inconsistent with the
statute for the USPTO to accord a filing date to an application on the
date it was sent or transmitted to the USPTO (except as permitted by 35
U.S.C. 21(a) and provided for in 37 CFR 1.10) rather than received in
the USPTO, or the date an application was uploaded to a server without
the user having completed the filing process. The Legal Framework sets
forth what must occur in order for an electronic filing to be completed
and for the submission to be accorded a receipt date. The filer must
press the ``Submit'' button to actually file an application or document
and complete the filing process. Users can upload documents and save
submissions for later review and filing for up to 7 days in EFS-Web and
for up to 14 days in Patent Center. Accordingly, until the filer
actually clicks on the ``Submit'' button on the ``Confirm and Submit''
screen, the application or document has not been filed in the USPTO.
The receipt date on the Electronic Acknowledgement Receipt reflects the
date that the application or document was actually received in the
USPTO. While there may be a delay in the sending of an Electronic
Acknowledgement Receipt in some cases, that does not mean there has
been a delay in recording the actual date of receipt.
Rulemaking Considerations
A. Administrative Procedure Act: The changes 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 in this rulemaking were 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 chose to seek public comment before
implementing the rule to benefit from the public's input.
[[Page 68903]]
B. Regulatory Flexibility Act: For the reasons set forth in this
final rule, 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 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 USPTO patent electronic filing system is the date in Eastern
Time when the Office received the correspondence. The USPTO is also
amending the patent rules of practice to make other clarifying changes
regarding the receipt of electronic submissions. These changes are
procedural in nature and do not result in a change in the burden
imposed on any patent applicant, including a small entity.
For the reasons described above, the 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 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.), 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:
[[Page 68904]]
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), unless otherwise noted.
0
2. In 37 CFR part 1, remove ``Office's electronic filing system'' and
``Office electronic filing system'' wherever they appear and add in
their place ``USPTO patent electronic filing system.''
0
3. Section 1.1 is amended by revising 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 U.S.
Patent and Trademark Office (USPTO) patent electronic filing system in
accordance with Sec. 1.6(a)(4), all correspondence intended for the
USPTO 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
4. 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 USPTO patent
electronic filing system only in accordance with the USPTO patent
electronic filing system requirements. Correspondence officially
submitted to the Office by way of the USPTO patent 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.
* * * * *
0
5. Section 1.9 is amended by:
0
a. Adding paragraph (o); and
0
b. Removing the parenthetical authority citation at the end of the
section.
The revision reads as follows:
Sec. 1.9 Definitions.
* * * * *
(o) Eastern Time as used in this chapter means Eastern Standard
Time or Eastern Daylight Time in the United States, as appropriate.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-24335 Filed 11-16-22; 8:45 am]
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