95-10743. Revisions of Patent Cooperation Treaty Provisions  

  • [Federal Register Volume 60, Number 84 (Tuesday, May 2, 1995)]
    [Rules and Regulations]
    [Pages 21438-21440]
    From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
    [FR Doc No: 95-10743]
    
    
    
    =======================================================================
    -----------------------------------------------------------------------
    
    DEPARTMENT OF COMMERCE
    Patent and Trademark Office
    37 CFR Parts 1 and 10
    [Docket No. 950403086-5086-01]
    RIN 0651-AA72
    
    Revisions of Patent Cooperation Treaty Provisions
    
    AGENCY: Patent and Trademark Office, Commerce.
    
    ACTION: Final rule.
    
    -----------------------------------------------------------------------
    
    SUMMARY: The Patent and Trademark Office (Office) is amending the rules 
    of practice relating to applications filed under the Patent Cooperation 
    Treaty (PCT) in accordance with revised regulations under the PCT. The 
    changes will result in a procedure whereby international applications 
    improperly filed with the United States Receiving Office (RO/US) will, 
    for a fee, be forwarded for processing to the International Bureau as 
    Receiving Office.
    
    EFFECTIVE DATE: June 1, 1995.
    
    FOR FURTHER INFORMATION CONTACT:
    Charles Pearson at (703) 308-6515.
    
    SUPPLEMENTARY INFORMATION: In a Notice of Proposed Rulemaking published 
    in the Federal Register at 59 FR 33707 (June 30, 1994) and in the 
    Patent and Trademark Office Official Gazette at 1164 Off. Gaz. Pat. 
    Office 77 (July 26, 1994), the Office proposed to amend several rules 
    of practice in patent cases. Recent changes to the PCT Regulations 
    include the addition of a new section (PCT Rule 19.4) which provides 
    for transmittal of an international application to the International 
    Bureau, acting in its capacity as Receiving Office, in certain 
    instances. Under the regulations currently in effect, at least one 
    applicant is required, on filing the international application in the 
    United States, to be a resident or national of the United States.
        The practice under the revised PCT Regulations permits an 
    international application filed with the United States Receiving Office 
    to be forwarded to the International Bureau for processing in its 
    capacity as a Receiving Office if the international application does 
    not name an applicant who is indicated as being a U.S. resident or 
    national, but names an applicant who is indicated as a resident or 
    national of another PCT Contracting State or if the indication of 
    residence or nationality of the applicant is missing. The Receiving 
    Office of the International Bureau will consider the international 
    application to be received as of the date accorded by the United States 
    Receiving Office. This practice will avoid the loss of a filing date in 
    those instances where the United States Receiving Office is not 
    competent to act, but where the international application is filed by 
    an applicant who is a national or resident of a PCT Contracting State. 
    Where questions arise regarding residence and nationality, e.g., where 
    residence and nationality are not clearly set forth, the application 
    will be forwarded to the International Bureau as Receiving Office. If 
    all applicants are indicated to be residents and nationals of non-PCT 
    Contracting States, PCT Rule 19.4 does not apply and the application is 
    denied an international filing date.
    
    Discussion of Specific Rules
    
        Section 1.412(c)(6) is added to reflect that the United States 
    Receiving Office, where it is not a competent Receiving Office under 
    PCT Rule 19.1 or 19.2, could transmit the international application to 
    the International Bureau for processing in its capacity as a Receiving 
    Office.
        Section 1.421(a) is amended to clarify that applications filed by 
    applicants who are not residents or nationals of the United States, but 
    who are residents or nationals of a PCT Contracting State or who 
    indicate no residence or nationality, will, upon timely payment of the 
    proper fee, be forwarded to the International Bureau for processing in 
    its capacity as a Receiving Office.
        Section 1.445(a)(5) is added to establish a fee equivalent to the 
    transmittal fee in paragraph (a)(1) of this section for transmittal of 
    an international application to the International Bureau for processing 
    in its capacity as a Receiving Office.
        Section 10.9 is amended to add a new provision consistent with PCT 
    Rule 90.1, clarifying that an attorney or agent having the right to 
    practice before the International Bureau when acting as Receiving 
    Office may represent the applicant before the U.S. International 
    Searching Authority or the U.S. International Preliminary Examining 
    Authority. An individual who has the right to practice before the 
    International Bureau when acting as Receiving Office, and who is not 
    registered under Sec. 10.6, may not prosecute patent applications in 
    the national stage in the Office.
    [[Page 21439]]
    
    Response to Comments on the Rules
    
        The comments received in response to the notice of proposed 
    rulemaking have been given careful consideration. The comments and 
    responses are discussed below.
        Comment: One comment was received which approved of the proposed 
    rule changes but noted other aspects of the U.S. National Phase filing 
    procedures that could be changed to make the PCT more user-friendly.
        Response: The Office is interested in making the PCT more user 
    friendly. Amendments to Secs. 1.494 and 1.495, which were effective on 
    May 1, 1993, removed many of the differences in practice involving the 
    filing of a regular U.S. application under 35 U.S.C. 111 and the entry 
    of the national stage under 35 U.S.C. 371. These regulations now 
    provide for a notice of missing requirements, similar to a notice under 
    Sec. 1.53(d), where a defective oath or declaration or a defective 
    translation is filed.
        Comment: Regarding Sec. 1.412(c), one comment suggested that the 
    proposed rule should be made consistent with PCT Rule 19.4(b) which 
    provides for the transmittal of international applications to the 
    International Bureau as Receiving Office ``unless prescriptions 
    concerning national security prevent the international application from 
    being so transmitted'' by incorporating such language into the proposed 
    rule.
        Response: The Office has adopted the suggestion and modified the 
    rule by incorporating the suggested language from PCT Rule 19.4(b) in 
    the regulation.
        Comment: One comment regarding Sec. 1.445(a)(5) mentioned that the 
    word ``competent'' should be deleted because it is not ``necessary and 
    may be inaccurate'' when no applicant in an international application 
    is a ``resident or national of a PCT Contracting State.''
        Response: The Office has adopted the suggestion and modified the 
    rule by deleting ``competent'' from Sec. 1.445(a)(5). The second 
    occurrence of the word ``competent'' has also been deleted from 37 CFR 
    1.412(c)(6), for the same reasons.
        Comment: Regarding Sec. 10.9(c), there were a few comments which 
    focus on the wording. Specifically, one comment noted that the word 
    ``appointed'' is confusing because it is not clear if it includes ``an 
    officer or employee of a legal-entity patent applicant'' in cases where 
    the United States of America is not designated. An example was provided 
    which noted ``if the only applicant was XYZ Company, would the 
    president of the Company be authorized to prosecute the application 
    before the USPTO as an International Searching and Preliminary 
    Examining Authority? In countries permitting assignee filing it is 
    normal for any authorized officer or employee of the company to be able 
    to represent the company without regard as to whether he is authorized 
    to practice as an agent or attorney before the patent office.''
        Response: The proposed regulation is sufficiently clear on this 
    point. If a person has the authority to represent an applicant, either 
    a legal entity applicant or a real person, before the International 
    Bureau as Receiving Office, then that person has the right to represent 
    that applicant before the United States International Searching 
    Authority and the United States International Preliminary Examining 
    Authority.
        Comment: Another comment about Rule 10.9(c) is that the word 
    ``only'' is overlimiting and should be deleted from the Rule because it 
    excludes Article 19 amendments filed before the International Bureau. 
    It was suggested that the Rule be changed as follows: --* * * prosecute 
    an International Application before the United States Patent and 
    Trademark Office acting as an International Searching or Preliminary 
    Examining Authority, * * *
        Response: The Office will not adopt the suggestion. The word 
    ``only'' in the Rule signifies that such persons may not prosecute an 
    international application in the national stage before the USPTO. The 
    rule is not meant to control who may practice before the International 
    Bureau. Such a person would clearly be allowed to file Article 19 
    amendments with the International Bureau by virtue of PCT Rule 90.1(a).
        Comment: A final comment made about Rule 10.9(c) is that the last 
    phrase added is ``too broad'' because it does not recite who is 
    entitled to act before the International Bureau. It was suggested that 
    the rule should be changed to include the phrase--* * * for a national 
    Office of a Contracting State of which an applicant is a resident or 
    national--at the end of the rule.
        Response: The Office has adopted the suggestion to the extent that 
    an explicit reference to PCT Rule 83.1bis has been inserted in the 
    regulation. Since PCT Rule 83.1bis clearly sets forth who may 
    practice before the International Bureau, it is not necessary to repeat 
    that information here. Thus, the regulation clearly sets forth who may 
    practice before the United States International Searching and 
    Preliminary Examining Authorities.
    
    Other Considerations
    
        The rule changes are in conformity with the requirements of the 
    Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive Order 
    12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. 
    These rule changes have been determined to be not significant for the 
    purposes of Executive Order 12866.
        The Assistant General Counsel for Legislation and Regulation of the 
    Department of Commerce has certified to the Chief Counsel for Advocacy, 
    Small Business Administration, that the rule changes will not have a 
    significant economic impact on a substantial number of small entities 
    (Regulatory Flexibility Act, 5 U.S.C. 605(b)), because the rules would 
    affect only a small number of international applications and would 
    provide more streamlined and simplified procedures for filing and 
    prosecuting international applications under the PCT.
        The Office has also determined that these rule changes have no 
    federalism implications affecting the relationship between the National 
    government and the States as outlined in Executive Order 12612.
        These rule changes will not impose any additional burden under the 
    Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. The paperwork 
    burden imposed by adherence to the PCT is currently approved by the 
    Office of Management and Budget under control number 0651-0021.
    
    List of Subjects
    
    37 CFR Part 1
    
        Administrative practice and procedure, Courts, Freedom of 
    information, Inventions and patents, Reporting and recordkeeping 
    requirements, Small businesses.
    
    37 CFR Part 10
    
        Administrative practice and procedure, Inventions and patents, 
    Lawyers, Reporting and recordkeeping requirements, Trademarks.
    
        For the reasons set forth in the preamble, 37 CFR parts 1 and 10 
    are amended to read as follows:
    
    PART 1--RULES OF PRACTICE IN PATENT CASES
    
        1. The authority citation for 37 CFR part 1 continues to read as 
    follows:
    
        Authority: 35 U.S.C. 6 unless otherwise noted.
    
        2. Section 1.412 is amended by adding new paragraph (c)(6) to read 
    as follows:
    
    
    Sec. 1.412  The United States Receiving Office.
    
    * * * * * [[Page 21440]] 
        (c) * * *
        (6) Reviewing and, where the United States Receiving Office is not 
    the competent Receiving Office under Sec. 1.421(a) and PCT Rule 19.1 or 
    19.2, transmitting the international application to the International 
    Bureau for processing in its capacity as a Receiving Office unless 
    prescriptions concerning national security prevent the application from 
    being so transmitted (PCT Rule 19.4).
        3. Section 1.421 is amended by revising paragraph (a) to read as 
    follows:
    
    
    Sec. 1.421  Applicant for international application.
    
        (a) Only residents or nationals of the United States of America may 
    file international applications in the United States Receiving Office. 
    If an international application does not include an applicant who is 
    indicated as being a resident or national of the United States of 
    America, and at least one applicant:
        (1) Has indicated a residence or nationality in a PCT Contracting 
    State, or
        (2) Has no residence or nationality indicated; applicant will be so 
    notified and, if the international application includes a fee amount 
    equivalent to that required by Sec. 1.445(a)(5), the international 
    application will be forwarded for processing to the International 
    Bureau acting as a Receiving Office. (See also Sec. 1.412(c)(6)).
    * * * * *
        4. Section 1.445 is amended by adding new paragraph (a)(5) to read 
    as follows:
    
    
    Sec. 1.445  International application filing, processing and search 
    fees.
    
        (a) * * *
        (5) A fee equivalent to the transmittal fee in paragraph (a)(1) of 
    this section for transmittal of an international application to the 
    International Bureau for processing in its capacity as a Receiving 
    Office (PCT Rule 19.4).
    * * * * *
        5. The authority citation for 37 CFR part 10 would continue to read 
    as follows:
    
        Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 
    41.
    
        6. Section 10.9 is amended by revising paragraph (c) to read as 
    follows:
    
    
    Sec. 10.9  Limited recognition in patent cases.
    
    * * * * *
        (c) An individual not registered under Sec. 10.6 may, if appointed 
    by applicant to do so, prosecute an international application only 
    before the U.S. International Searching Authority and the U.S. 
    International Preliminary Examining Authority, provided: The individual 
    has the right to practice before the national office with which the 
    international application is filed (PCT Art. 49, Rule 90 and 
    Sec. 1.455) or before the International Bureau when acting as Receiving 
    Office pursuant to PCT Rules 83.1bis and 90.1.
    
        Dated: April 25, 1995.
    Lawrence J. Goffney, Jr.,
    Acting Assistant Secretary of Commerce and Acting Commissioner of 
    Patents and Trademarks.
    [FR Doc. 95-10743 Filed 5-1-95; 8:45 am]
    BILLING CODE 3510-16-M
    
    

Document Information

Effective Date:
6/1/1995
Published:
05/02/1995
Department:
Patent and Trademark Office
Entry Type:
Rule
Action:
Final rule.
Document Number:
95-10743
Dates:
June 1, 1995.
Pages:
21438-21440 (3 pages)
Docket Numbers:
Docket No. 950403086-5086-01
RINs:
0651-AA72
PDF File:
95-10743.pdf
CFR: (5)
37 CFR 1.455)
37 CFR 1.412
37 CFR 1.421
37 CFR 1.445
37 CFR 10.9