[Federal Register Volume 59, Number 189 (Friday, September 30, 1994)]
[Unknown Section]
[Page 0]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 94-24236]
[[Page Unknown]]
[Federal Register: September 30, 1994]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 940965-4265]
RIN: 0651-AA67
Revision of Affidavits Under 37 CFR 1.131
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office (Office) proposes to amend the
rules of practice relating to submission of affidavits or declarations
under 37 CFR 1.131(a) to implement the relevant provisions of Public
Law No. 103-182 and the GATT (General Agreement on Trade and Tariffs),
and to provide relief in certain circumstances where a common assignee
holds both an application and a patent claiming patentably indistinct,
but not identical, inventions.
DATES: Written comments must be submitted on or before December 1,
1994. No oral hearing will be held.
ADDRESSES: Address written comments to the Commissioner of Patents and
Trademarks, Washington, D.C. 20231, Attention: Charles E. Van Horn,
Deputy Assistant Commissioner for Patent Policy and Projects, or by fax
to (703) 305-8825.
FOR FURTHER INFORMATION CONTACT: Charles E. Van Horn by telephone at
(703) 305-9054 or Hiram Bernstein by telephone at (703) 305-9282 or by
mail marked to the attention of Charles E. Van Horn, Deputy Assistant
Commissioner for Patent Policy and Projects, and addressed as above.
SUPPLEMENTARY INFORMATION: Public Law No. 103-182 (November 4, 1993)
implementing the North American Free Trade Agreement (NAFTA), amended
35 U.S.C. 104 to provide that for the purpose of obtaining a patent, an
applicant can show a date of invention in the United States, or in a
NAFTA country which occurred after the date of implementation (i.e.,
December 8, 1993). Although GATT enabling legislation has not been
passed, these proposed rule changes assume that it will be passed, and
therefore changes to 37 CFR 1.131(a) similar to NAFTA would be
required. See Article 27, paragraph 1, of the Agreement on Trade-
related Aspects of Intellectual Property Rights, Including Trade in
Counterfeit Goods, of the GATT. In the event that the GATT enabling
legislation is not enacted when the final rules are published, the
proposed rule changes relative to the GATT will be withdrawn.
The Office proposes to amend 37 CFR 1.131(a), which is currently
limited to facts showing a completion of the invention in the United
States, to allow for a submission of facts in an affidavit or
declaration that show completion of the invention in a NAFTA or a World
Trade Organization (WTO) Member country. The WTO is established under
the GATT agreement to resolve disputes between signatories to the
agreement. The facts presented must demonstrate completion of the
invention prior to the effective date of a reference thought to bar the
grant of a patent or the patentability of a claim in a patent under
reexamination.
Additionally, the Office recognizes that there is a potential
conflict between existing 37 CFR 1.131(a) and 37 CFR 1.602(a). Section
1.131(a) prohibits affidavits or declarations thereunder when the same
patentable invention as defined in 37 CFR 1.601(n) (i.e., patentably
indistinct inventions) is claimed. An interference under 35 U.S.C. 135,
rather than antedating under Sec. 1.131(a), is generally the available
remedy. However, 37 CFR 1.602(a) provides that when the applications or
the application and patent are owned by a single party, interferences
are not declared or continued unless good cause is shown. This can
result in a hardship where there is an issued patent that can no longer
be amended as by filing a continuation-in-part application. Where there
are two or more pending applications, the conflict can be avoided by
filing a continuation-in-part application incorporating the conflicting
inventions in a single application.
The Office proposes to amend 37 CFR 1.131 to broaden its
application to a single party where inventions of a pending application
and a patent held by the party are patentably indistinct but not
identical. Under the proposed additions to Sec. 1.131, an affidavit or
declaration could be filed by a party to avoid a 35 U.S.C. 103
rejection based on a 35 U.S.C. 102(a) or (e) patent owned by that
party, where the patent claimed an invention that was patentably
indistinct, but not identical to an invention claimed in an application
or patent undergoing reexamination.
The proposed addition to Sec. 1.131 would not affect the use of the
issued patent in a rejection based on double patenting. However, where
patentably indistinct but not identical inventions are claimed, a
double patenting rejection can be avoided by filing an appropriate
terminal disclaimer. In addition, petitions under Sec. 1.183 will be
entertained for waiver of Sec. 1.131 requirements in appropriate
instances where two pending applications claiming patentably indistinct
but not identical inventions are held by a single party.
Discussion of Specific Rules
Section 1.131(a), if amended to (a)(1) as proposed, would allow a
Sec. 1.131 affiant or declarant to rely upon facts occurring in a NAFTA
or a WTO Member country to show completion of the invention. The term
``domestic'' would be changed to ``U.S.'' The section is proposed to be
amended from a single sentence to three sentences.
Section 1.131(a)(2), if added as proposed, would limit the
availability of acts showing completion of the invention in a NAFTA or
WTO Member country to those acts occurring subsequent to the effective
date of the agreements.
Section 1.131(a)(3), if added as proposed, would allow a showing of
prior invention to be made in a pending application or a patent that is
undergoing reexamination where a single party holds both the
application or patent undergoing reexamination and another patent where
the claimed inventions were, at the time the later invention was made,
both owned by the single party or subject to an obligation of
assignment to that party. Further, in order to rely on proposed
Sec. 1.131(a)(3), the inventions claimed in the application or in the
patent undergoing reexamination and in the other patent must not be
identical as set forth in 35 U.S.C. 102.
Other Considerations
The proposed 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. The Office of Management and Budget has determined that the
proposed rule changes are not significant for the purposes of E.O.
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 proposed 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
proposed rules would affect only a small number of applications and
would provide a streamlined and simplified procedure, eliminating the
need for requesting waiver of the rules.
The Patent and Trademark Office has also determined that this
notice has 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.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Inventions and patents,
Lawyers, Reporting and record keeping requirements.
For the reasons set forth in the preamble, and pursuant to the
authority granted to the Commissioner of Patents and Trademarks by 35
U.S.C. 6, the Office proposes to amend Title 37 of the Code of Federal
Regulations as set forth below, with deletions indicated by brackets
([]) and additions indicated by arrows (><). part="" 1--rules="" of="" practice="" in="" patent="" cases="" 1.="" the="" authority="" citation="" for="" 37="" cfr,="" part="" 1,="" would="" continue="" to="" read="" as="" follows:="" authority:="" 35="" u.s.c.="" 6,="" unless="" otherwise="" noted.="" 2.="" section="" 1.131="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 1.131="" affidavit="" or="" declaration="" of="" prior="" invention="" to="" overcome="" cited="" patent="" or="" publication.="" (a)="">(1)< when="" any="" claim="" of="" an="" application="" or="" a="" patent="" under="" reexamination="" is="" rejected="" on="" reference="" to="" a="" [domestic]="">U.S.< patent="" which="" substantially="" shows="" or="" describes="" but="" does="" not="" claim="" the="" same="" patentable="" invention,="" as="" defined="" in="" sec.="" 1.601(n),="" as="" the="" rejected="" invention,="" or="" on="" reference="" to="" a="" foreign="" patent="" or="" to="" a="" printed="" publication,="" [and]="" the="" inventor="" of="" the="" subject="" matter="" of="" the="" rejected="" claim,="" the="" owner="" of="" the="" patent="" under="" reexamination,="" or="" the="" person="" qualified="" under="" secs.="" 1.42,="" 1.43="" or="" 1.47,="" [shall="" make]="">may overcome
the patent or publication by filing an appropriate< oath="" or="" declaration="">.< [as="" to]="">The oath or declaration must include< facts="" showing="" a="" completion="" of="" the="" invention="" in="" this="" country="">or in a NAFTA or WTO
Member country< before="" the="" filing="" date="" of="" the="" application="" on="" which="" the="" [domestic]="">U.S.< patent="" issued,="" or="" before="" the="" date="" of="" the="" foreign="" patent,="" or="" before="" the="" date="" of="" the="" printed="" publication="">.< [,="" then]="">When an appropriate oath or declaration is made,< the="" patent="" or="" publication="" cited="" shall="" not="" bar="" the="" grant="" of="" a="" patent="" to="" the="" inventor="" or="" the="" confirmation="" of="" the="" patentability="" of="" the="" claims="" of="" the="" patent,="" unless="" the="" date="" of="" such="" patent="" or="" printed="" publication="" is="" more="" than="" one="" year="" prior="" to="" the="" date="" on="" which="" the="" inventor's="" or="" patent="" owner's="" application="" was="" filed="" in="" this="" country.="">(2) A date of completion of the invention may not be established
under this section before December 8, 1993, in a NAFTA country, or
before----in a WTO Member country other than a NAFTA country.
(3) Notwithstanding the provisions of paragraph (a)(1), a showing
may be made under this section where the inventions defined by a claim
in an application or a patent under reexamination and by a claim in
another U.S. patent are not identical as set forth in 35 U.S.C. 102,
and where the inventions were, at the time the later invention was
made, owned by the same person or subject to an obligation of
assignment to the same person.< *="" *="" *="" *="" *="" dated:="" september="" 26,="" 1994.="" bradford="" r.="" huther,="" acting="" assistant="" secretary="" of="" commerce="" and="" acting="" commissioner="" of="" patents="" and="" trademarks.="" [fr="" doc.="" 94-24236="" filed="" 9-29-94;="" 8:45="" am]="" billing="" code="" 3510-16-m="">