03-30150. January 2004 Revision of Patent Cooperation Treaty Application Procedure

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule and correction to final rule.

SUMMARY:

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register of October 20, 2003, revising the rules of practice in patent cases to conform them to certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT) that will take effect on January 1, 2004. This document corrects three errors in that final rule, and also corrects an additional error in the rules of practice in patent cases relating to PCT procedure.

EFFECTIVE DATE:

January 1, 2004.

FOR FURTHER INFORMATION CONTACT:

Richard R. Cole, Legal Examiner, Office of PCT Legal Administration (OPCTLA) directly by telephone at [phone], or by facsimile at [phone].

SUPPLEMENTARY INFORMATION:

During the September-October 2002 meeting of the Governing Bodies of the World Intellectual Property Organization (WIPO), the PCT Assembly adopted various amendments to the Regulations under the PCT that enter into force on January 1, 2004. The Office published a final rule in the Federal Register of October 20, 2003 (68 FR 59881), entitled “January 2004 Revision of Patent Cooperation Treaty Application Procedure,” revising the rules of practice in patent cases in title 37 of the Code of Federal Regulations (CFR) to conform them to the amendments to the PCT Regulations that will take effect on January 1, 2004. This document corrects errors to §§ 1.14, 1.421, and 1.431 in that final rule. This document also corrects an additional error in § 1.14 relating to PCT procedure.

Discussion of Specific Rules

Section 1.14: Section 1.14(g)(1)(ii) is corrected to change “International Search Authority” to “International Searching Authority”. Section 1.14(g)(5) is amended to change “paragraphs (a)(1)(i) through (a)(1)(vi) and (i)(3) of this section” to “paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section” for consistency with the changes to § 1.14 in the rule making Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 FR 38611 (June 30, 2003), 1272 Off. Gaz. Pat. Office 197 (July 29, 2003) (final rule).

Section 1.421: Section 1.421(a)(2) is amended to correct “a fee amount equivalent to that required by § 1.445(a)(5)” to “a fee amount equivalent to that required by § 1.445(a)(4)” for consistency with § 1.445 as amended in the final rule being corrected by this document.

Section 1.431: Section 1.431(c)(2) is corrected to change “the 25% of the international filing fee” to “fifty percent of the international filing fee” for consistency with the change to PCT Rule 16 bis.2(b) that was adopted during the September-October 2003 meeting of the WIPO Governing Bodies and that enters into force on January 1, 2004.

In rule FR Doc. 03-26338, published on October 20, 2003, make the following corrections and 37 CFR part 1 is amended as follows:

§ 1.14

[Corrected]

1. On page 59886, in the third column, § 1.14, paragraph (g)(1)(ii), line 8, correct “International Search Authority” to read “International Searching Authority”.

§ 1.431

[Corrected]

2. On page 59887, in the third column, § 1.431, paragraph (c)(2), line 2, correct “the 25%” to read “fifty percent”.

PART 1—RULES OF PRACTICE IN PATENT CASES

3. The authority citation for 37 CFR part 1 continues to read as follows:

Authority: 35 U.S.C. 2(b)(2).

4. Section 1.14 is amended by revising paragraph (g)(5) to read as follows:

§ 1.14

Patent applications preserved in confidence.

* * * * *

(g) * * *

(5) Access to international application files under paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accordance with PCT Article 38.

* * * * *

5. Section 1.421 is amended by revising paragraph (a)(2) to read as follows:

§ 1.421

Applicant for international application.

(a) * * *

(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 § 1.445(a)(4), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office (see also § 1.412(c)(6)).

* * * * *

Dated: November 24, 2003.

James E. Rogan,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.