Changes To Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005, 12281-12285 [06-2333]
Download as PDF
<![CDATA[
Federal Register / Vol. 71, No. 47 / Friday, March 10, 2006 / Rules and Regulations
List of Subjects
32 CFR Parts 371, 378, and 388
32 CFR Part 59
Organization and functions
(Government agencies).
Military personnel, Wages.
PARTS 59, 62b, 73, 158, 190, 216, 221,
224, 229, 238, 248, 252, 258, 261, 271,
336, 345, 347, 371, 378, and 388—
[REMOVED]
32 CFR Part 62b
Alcohol abuse, Drug abuse,
Government employees, Highway
safety, Military personnel.
Armed forces, Education, Government
procurement.
32 CFR Part 158
Classified information.
32 CFR Part 190
Armed forces, Federal buildings and
facilities, Natural resources.
Armed forces, Armed forces reserves,
Colleges and universities, Education.
32 CFR Part 221
37 CFR Part 1
32 CFR Part 224
[Docket No. 2004–P–038]
Advisory committees.
RIN 0651–AB79
32 CFR Part 229
Administrative practice and
procedure, Historic preservation,
Indians—lands, Penalties, Public lands,
Reporting and recordkeeping
requirements.
32 CFR Part 238
Armed forces, Intergovernmental
relations.
32 CFR Part 248
Armed forces, Government
publications.
32 CFR Part 252
Armed forces, Continental shelf.
32 CFR Part 258
Foreign relations, National defense,
Research.
32 CFR Part 261
Alcohol and alcoholic beverages,
Armed forces, Concessions, Federal
buildings and facilities.
32 CFR Part 271
Banks, banking, Credit, Privacy.
32 CFR Part 336
rwilkins on PROD1PC63 with RULES
DEPARTMENT OF COMMERCE
Patent and Trademark Office
Health professions, Reporting and
recordkeeping requirements.
Administrative practice and
procedure.
32 CFR Parts 345 and 347
Elementary and secondary education,
Organization and functions
(Government agencies).
19:15 Mar 09, 2006
Dated: March 6, 2006.
L.M. Bynum,
Alternate OSD Federal Register Liaison
Officer, Department of Defense.
[FR Doc. 06–2310 Filed 3–9–06; 8:45 am]
BILLING CODE 5001–08–P
32 CFR Part 216
VerDate Aug<31>2005
Accordingly, by the authority of 10
U.S.C. 301, 32 CFR parts 59, 62b, 73,
158, 190, 216, 221, 224, 229, 238, 248,
252, 258, 261, 271, 336, 345, 347, 371,
378, and 388 are removed.
I
32 CFR Part 73
Jkt 208001
Changes To Implement the Patent
Search Fee Refund Provisions of the
Consolidated Appropriations Act, 2005
United States Patent and
Trademark Office, Commerce.
ACTION: Final rule.
AGENCY:
SUMMARY: Among other changes to
patent and trademark fees, the
Consolidated Appropriations Act, 2005
(Consolidated Appropriations Act),
splits the patent application filing fee
into a separate filing fee, search fee and
examination fee. The Consolidated
Appropriations Act also provides that
the United States Patent and Trademark
Office (Office) may refund part or all of
the excess claims fee and the search fee
in certain situations. This final rule
revises the rules of practice to
implement the provisions for refunding
the search fee for applicants who file a
written declaration of express
abandonment before an examination has
been made of the application.
DATES: Effective Date: March 10, 2006.
Applicability Date: The changes in
this final rule apply to any patent
application filed under 35 U.S.C. 111(a)
on or after December 8, 2004, in which
a petition under 37 CFR 1.138(d) to
expressly abandon the application was
filed on or after March 10, 2006.
FOR FURTHER INFORMATION CONTACT:
Robert W. Bahr, Senior Patent Attorney,
Office of the Deputy Commissioner for
PO 00000
Frm 00005
Fmt 4700
Sfmt 4700
12281
Patent Examination Policy, by telephone
at (571) 272–8800, by mail addressed to:
Mail Stop Comments—Patents,
Commissioner for Patents, P.O. Box
1450, Alexandria, VA 22313–1450, or by
facsimile to (571) 273–7735, marked to
the attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: Among
other changes, the Consolidated
Appropriations Act (section 801 of
Division B) provides that 35 U.S.C.
41(a), (b), and (d) shall be administered
in a manner that revises patent
application fees (35 U.S.C. 41(a)) and
patent maintenance fees (35 U.S.C.
41(b)), and provides for a separate filing
fee (35 U.S.C. 41(a)), search fee (35
U.S.C. 41(d)(1)), and examination fee
(35 U.S.C. 41(a)(3)) during fiscal years
2005 and 2006. The Consolidated
Appropriations Act also provides that
the Office may, by regulation, provide
for a refund of: (1) Any part of the
excess claims fee specified in 35 U.S.C.
41(a)(2) for any claim that is canceled
before an examination on the merits has
been made of the application under 35
U.S.C. 131; (2) any part of the search fee
for any applicant who files a written
declaration of express abandonment as
prescribed by the Office before an
examination has been made of the
application under 35 U.S.C. 131; and (3)
any part of the search fee for any
applicant who provides a search report
that meets the conditions prescribed by
the Office. This final rule revises the
rules of practice to implement the
provision for a refund of the search fee
for any applicant who files a written
declaration of express abandonment as
prescribed by the Office before an
examination has been made of the
application under 35 U.S.C. 131, and
the provision for a refund of the excess
claims fee for any claim that is canceled
before an examination on the merits has
been made of the application under 35
U.S.C. 131.
Discussion of Specific Rules
Title 37 of the Code of Federal
Regulations, Part 1, is amended as
follows:
Section 1.138: Section 1.138(c) is
amended to change ‘‘section’’ (i.e.,
§ 1.138) to ‘‘paragraph’’ (i.e., § 1.138(c))
to clarify that a petition to expressly
abandon an application to avoid
publication of an application is filed
under § 1.138(c) (rather than § 1.138).
Section 1.138 is also amended to
include a new paragraph (d), which
implements the provision in 35 U.S.C.
41(d)(1)(D) that the Office may provide
for a refund of any part of the search fee
‘‘for any applicant who files a written
declaration of express abandonment as
prescribed by the Director before an
E:\FR\FM\10MRR1.SGM
10MRR1
rwilkins on PROD1PC63 with RULES
12282
Federal Register / Vol. 71, No. 47 / Friday, March 10, 2006 / Rules and Regulations
examination has been made of the
application under [35 U.S.C.] 131’’ (and
in part the provision in 35 U.S.C.
41(a)(2) that the Office may provide for
a refund of any part of the excess claims
fee ‘‘for any claim that is canceled
before an examination on the merits, as
prescribed by the Director, has been
made of the application under [35
U.S.C.] 131’’). Section 1.138(d)
specifically provides that an applicant
seeking to abandon an application filed
under 35 U.S.C. 111(a) and § 1.53(b) on
or after December 8, 2004, to obtain a
refund of the search fee and excess
claims fee paid in the application, must
submit a petition and declaration of
express abandonment before an
examination has been made of the
application.
A petition under § 1.138(d) will be
granted if it was filed before an
examination has been made of the
application and will be denied if it was
not filed before an examination has been
made of the application. This will avert
the situation in which an applicant files
a declaration of express abandonment to
obtain a refund of the search fee and
excess claims fee, the request for a
refund is not granted because the
declaration of express abandonment was
not filed before an examination has been
made of the application, the applicant
then wishes to rescind the declaration of
express abandonment upon learning
that the declaration of express
abandonment was not filed before an
examination has been made of the
application, and the Office cannot
revive the application (once the
declaration of express abandonment is
recognized) because the application was
expressly and intentionally abandoned
by the applicant.
An ‘‘examination has been made of
the application’’ for purposes of
§ 1.138(d) once an action (e.g.,
restriction or election of species
requirement, requirement for
information under § 1.105, first Office
action on the merits, notice of
Allowability or allowance, or action
under Ex parte Quayle, 1935 Dec.
Comm’r Pat. 11 (1935)) is shown in
PALM as having been counted. For
purposes of § 1.138(d), ‘‘before’’ means
occurring earlier in time, in that if a
petition under § 1.138(d) is filed and an
action is counted on the same day, the
petition under § 1.138(d) was not filed
before an examination has been made of
the application. In addition, the date
indicated on any certificate of mailing
or transmission under § 1.8 will not be
taken into account in determining
whether a petition under § 1.138(d) was
filed before an examination has been
made of the application. The Office
VerDate Aug<31>2005
19:15 Mar 09, 2006
Jkt 208001
recommends that petitions under
§ 1.138(d) be submitted by facsimile to
703–305–8568 using the Office’s
‘‘Petition for Express Abandonment to
Obtain a Refund’’ form (PTO/SB/24B) to
avoid delays in receiving and processing
the petition under § 1.138(d).
The Patent Application Locating and
Monitoring (PALM) system maintains
computerized contents records of all
patent applications and reexamination
proceedings. The PALM system will
show a status higher than 031 once an
action has been counted. If the status of
an application as shown in PALM is
higher than 031 before or on the day
that the petition under § 1.138(d) was
filed, the petition under § 1.138(d) will
be denied and the search fee and excess
claims fee will not be refunded.
The Patent Application Information
Retrieval (PAIR) system is a system that
provides public access to PALM for
patents and applications that have been
published. The PAIR system does not
provide public access to information
concerning applications that are
maintained in confidence under 35
U.S.C. 122(a). The private side of PAIR,
however, can be used by an applicant to
access confidential information about
his or her pending application. To
access the private side of PAIR, a
customer number must be associated
with the correspondence address for the
application, and the user of the system
must have a digital certificate. For
further information, contact the
Customer Support Center of the
Electronic Business Center at (571) 272–
4100 or toll free at (866) 217–9197.
Section 1.138(d) also provides that if
a request for refund of the search fee
and excess claims fee paid in the
application is not filed with the
declaration of express abandonment
under § 1.138(d) or within two months
(not extendable) from the date on which
the declaration of express abandonment
under § 1.138(d) was filed, the Office
may retain the entire search fee and
excess claims fee paid in the
application. Finally, § 1.138(d) provides
that if a declaration of express
abandonment under § 1.138(d) is not
filed before an examination has been
made of the application, the Office will
not refund any part of the search fee or
excess claims fee paid in the application
except as provided in § 1.26.
A petition under § 1.138(d) may not
be effective to stop publication of an
application unless the petition under
§ 1.138(d) is granted and the
abandonment processed before
technical preparations for publication of
the application has begun. Technical
preparations for publication of an
application generally begin four months
PO 00000
Frm 00006
Fmt 4700
Sfmt 4700
prior to the projected date of
publication.
Response to Comments: The Office
published a notice proposing changes to
implement the patent search fee refund
provisions of the Consolidated
Appropriations Act, 2005. See Changes
to Implement the Patent Search Fee
Refund Provisions of the Consolidated
Appropriations Act, 2005, 70 FR 35571
(Jun. 21, 2005), 1296 Off. Gaz. Pat.
Office 69 (Jul. 12, 2005) (proposed rule).
The Office received four written
comments (from an intellectual property
organization, law firm, and patent
practitioners) in response to this notice.
The comments and the Office’s
responses to the comments follow:
Comment 1: Several comments argued
that the Office’s decision to limit search
fee refunds to applications that have
been abandoned before being placed on
an examiner’s docket or before being
taken up for examination was
inconsistent with the Consolidated
Appropriations Act, which provides for
a search fee refund if the application is
abandoned ‘‘before an examination has
been made of the application.’’ The
comments further argued that the Office
cannot use information technology
issues as a justification for not
implementing this provision. Several
other comments argued that the Office’s
decision to limit search fee refunds to
applications that have been abandoned
before being placed on an examiner’s
docket will result in only limited use of
the process, which in turn would result
in the Office needing to examine more
applications than it would otherwise
need to examine.
Response: The Consolidated
Appropriations Act permits, but does
not require, the Office to refund, or
develop procedures to refund, search
fees or excess claims fees. See 35 U.S.C.
41(a)(2) and (d)(1)(D) (‘‘[t]he Director
may by regulation provide for a refund’’)
(emphasis added). The Consolidated
Appropriations Act (35 U.S.C.
41(d)(1)(D)) gives the Office the
authority to fix the time by which an
application must be expressly
abandoned for the applicant to obtain a
refund of the search fee. See H.R. Rep.
108–241, at 16 (2003) (H. R. Rep. 108–
241 contains an analysis and discussion
of an identical provision in H.R. 1561,
108th Cong. (2004)). The ‘‘before an
examination has been made of the
application under [35 U.S.C.] 131’’
provision (search fees) simply places a
restriction on this authority, in that the
Office does not have the authority to
refund, or develop procedures to refund,
the search fee in an application in
which the written declaration of express
abandonment is not filed before an
E:\FR\FM\10MRR1.SGM
10MRR1
rwilkins on PROD1PC63 with RULES
Federal Register / Vol. 71, No. 47 / Friday, March 10, 2006 / Rules and Regulations
examination has been made of the
application under 35 U.S.C. 131.
Nevertheless, the Office is seeking to
maximize any benefit that may be
obtained by the authority in 35 U.S.C.
41(d)(1)(D) to refund the search fee and
excess claims fee in applications that
are expressly abandoned before an
examination has been made of the
application under 35 U.S.C. 131.
Therefore, the Office is revising
§ 1.138(d) to change ‘‘must submit a
declaration of express abandonment by
way of a petition under this paragraph
in sufficient time to permit the
appropriate officials to recognize the
abandonment before the application has
been taken up for examination’’ to
‘‘must submit a declaration of express
abandonment by way of a petition under
this paragraph before an examination
has been made of the application,’’ and
is providing that an ‘‘examination has
been made of the application’’ for
purposes of § 1.138(d) once an action
(e.g., restriction or election of species
requirement, requirement for
information under § 1.105, first Office
action on the merits, notice of
Allowability or allowance, or action
under Ex parte Quayle, 1935 Dec.
Comm’r Pat. 11 (1935)) is shown in
PALM as having been counted.
Comment 2: Several comments
suggested that the Office should also
refund the excess claims fees paid in an
application if the application is
expressly abandoned under § 1.138(d).
Response: Section 1.138(d) has been
revised to provide that the Office will
also refund the excess claims fees paid
in an application if the application is
expressly abandoned under § 1.138(d).
Comment 3: One comment requested
confirmation that no petition or other
fee is required for a petition under
§ 1.138(d) to expressly abandon an
application.
Response: No petition or other fee is
required for a petition under § 1.138(d)
to expressly abandon an application.
Comment 4: One comment argued
that the term ‘‘any search fee’’ was
unclear and should be replaced with
‘‘the entire search fee’’ if the Office
plans to refund the entire search fee
paid in the application.
Response: Section 1.138(d) has been
revised to replace the term ‘‘any search
fee’’ with ‘‘the search fee.’’
Comment 5: One comment argued
that: (1) Pro se inventors without
knowledge of customer numbers and
private PAIR will not be able to access
their application to determine whether
it has been placed on an examiner’s
docket; (2) it is not clear which
docketing date will control for
transferred applications as the original
VerDate Aug<31>2005
19:15 Mar 09, 2006
Jkt 208001
docket assignment may be changed after
the transfer; (3) the proposed rule does
not address the filing of a request for a
continued examination in the
application; and (4) the time at which
an application is placed on an
examiner’s docket varies dramatically
from Art Unit to Art Unit and from
Technology Center to Technology
Center. One comment suggested a rule
that set a fixed time period within
which the applicant may expressly
abandon the application and obtain a
refund of the search fee, with the Office
notifying an applicant if the application
would be taken up for action prior to the
expiration of such fixed time period.
Another comment suggested that the
Office can avoid a significant
information technology investment by
just having the petition examiners use
the telephone or electronic mail
message to determine an application has
been taken up for action. The comment
also suggested that the Office simply
have the examiner place an entry on the
PALM system when a particular
application was taken up for action.
Response: The Office is revising
§ 1.138(d) to change ‘‘must submit a
declaration of express abandonment by
way of a petition under this paragraph
in sufficient time to permit the
appropriate officials to recognize the
abandonment before the application has
been taken up for examination’’ to
‘‘must submit a declaration of express
abandonment by way of a petition under
this paragraph before an examination
has been made of the application,’’ and
is providing that an ‘‘examination has
been made of the application’’ for
purposes of § 1.138(d) once an action
(e.g., restriction or election of species
requirement, requirement for
information under § 1.105, first Office
action on the merits, notice of
Allowability or allowance, or action
under Ex parte Quayle, 1935 Dec.
Comm’r Pat. 11 (1935)) is shown in
PALM as having been counted. As
discussed previously, an
implementation of the search fee refund
provisions of the Consolidated
Appropriations Act that requires a
significant information technology
investment (e.g., the ability to generate
notices to the applicant when an
application is about to be taken up for
action) is not warranted in the absence
of the enactment of legislation which
makes the patent fee structure provided
for in the Consolidated Appropriations
Act permanent.
PO 00000
Frm 00007
Fmt 4700
Sfmt 4700
12283
Rule Making Considerations
Regulatory Flexibility Act
For the reasons set forth herein, the
Deputy General Counsel for General
Law of the United States Patent and
Trademark Office has certified to the
Chief Counsel for Advocacy of the Small
Business Administration that changes in
this final rule will not have a significant
economic impact on a substantial
number of small entities. See 5 U.S.C.
605(b). This final rule changes the rules
of practice to implement the provisions
for a refund of the search fee and excess
claims fee for any applicant who files a
written declaration of express
abandonment as prescribed by the
Office before an examination has been
made of the application under 35 U.S.C.
131. The changes in this final rule
would not impose any additional fees or
requirements on any patent applicant.
Rather, the changes in this final rule
only provide for a refund of the search
fee and excess claims fee for patent
applicants (small or non-small entity) in
certain situations.
Executive Order 13132
This rule making does not contain
policies with federalism implications
sufficient to warrant preparation of a
Federalism Assessment under Executive
Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rule making has been determined
to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This final rule involves information
collection requirements which 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.). The changes in
this final rule concern the procedures
for refunding the search fee and excess
claims fee for any applicant who files a
written declaration of express
abandonment before an examination has
been made of the application under 35
U.S.C. 131. The collections of
information involved in this final rule
have been reviewed and previously
approved by OMB under the following
OMB control numbers: 0651–0031 and
0651–0032. The United States Patent
and Trademark Office is resubmitting
the information collections package to
OMB for its review and approval
because the changes in this final rule do
affect the information collection
requirements associated with the
information collection under these OMB
control numbers.
E:\FR\FM\10MRR1.SGM
10MRR1
rwilkins on PROD1PC63 with RULES
12284
Federal Register / Vol. 71, No. 47 / Friday, March 10, 2006 / Rules and Regulations
The title, description and respondent
description of the information
collections under OMB control numbers
0651–0031 and 0651–0032 are shown
below with estimates of the annual
reporting burdens. Included in the
estimates is the time for reviewing
instructions, gathering and maintaining
the data needed, and completing and
reviewing the collection of information.
OMB Number: 0651–0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A, PTO/
SB/08B, PTO/SB/17i, PTO/SB/17p,
PTO/SB/21–27, PTO/SB/30–37, PTO/
SB/42–43, PTO/SB/61–64, PTO/SB/64a,
PTO/SB/67–68, PTO/SB/91–92, PTO/
SB/96–97, PTO–2053–A/B, PTO–2054–
A/B, PTO–2055–A/B, POOL–413A.
Type of Review: Approved through
July of 2006.
Affected Public: Individuals or
Households, Business or Other ForProfit Institutions, Not-for-Profit
Institutions, Farms, Federal Government
and State, Local and Tribal
Governments.
Estimated Number of Respondents:
2,284,439.
Estimated Time per Response: 1
minute and 48 seconds to 8 hours.
Estimated Total Annual Burden
Hours: 2,732,441 hours.
Needs and Uses: During the
processing of an application for a
patent, the applicant/agent may be
required or desire to submit additional
information to the United States Patent
and Trademark Office concerning the
examination of a specific application.
The specific information required or
which may be submitted includes:
Information Disclosures and citation,
requests for extensions of time, the
establishment of small entity status,
abandonment and revival of abandoned
applications, disclaimers, appeals,
expedited examination of design
applications, transmittal forms, requests
to inspect, copy and access patent
applications, publication requests, and
certificates of mailing, transmittals, and
submission of priority documents and
amendments.
OMB Number: 0651–0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01–07, PTO/
SB/13PCT, PTO/SB/16–19, PTO/SB/29
and 29A, PTO/SB/101–110, Electronic
New Utility and Provisional Application
Forms.
Type of Review: Approved through
July of 2006.
Affected Public: Individuals or
Households, Business or Other ForProfit Institutions, Not-For-Profit
Institutions, Farms, Federal
Government, and State, Local, or Tribal
Governments.
VerDate Aug<31>2005
19:15 Mar 09, 2006
Jkt 208001
Estimated Number of Respondents:
454,287.
Estimated Time per Response: 22
minutes to 10 hours and 45 minutes.
Estimated Total Annual Burden
Hours: 4,171,568 hours.
Needs and Uses: The purpose of this
information collection is to permit the
Office to determine whether an
application meets the criteria set forth
in the patent statute and regulations.
The standard Fee Transmittal form, New
Utility Patent Application Transmittal
form, New Design Patent Application
Transmittal form, New Plant Patent
Application Transmittal form,
Declaration, Provisional Application
Cover Sheet, and Plant Patent
Application Declaration will assist
applicants in complying with the
requirements of the patent statute and
regulations, and will further assist the
Office in processing and examination of
the application.
Comments are invited on: (1) Whether
the collection of information is
necessary for proper performance of the
functions of the agency; (2) the accuracy
of the agency’s estimate of the burden;
(3) ways to enhance the quality, utility,
and clarity of the information to be
collected; and (4) ways to minimize the
burden of the collection of information
to respondents.
Interested persons are requested to
send comments regarding these
information collections, including
suggestions for reducing this burden, to:
(1) The Office of Information and
Regulatory Affairs, Office of
Management and Budget, New
Executive Office Building, Room 10202,
725 17th Street, NW., Washington, DC
20503, Attention: Desk Officer for the
Patent and Trademark Office; and (2)
Robert J. Spar, Director, Office of Patent
Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA
22313–1450.
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 displays a currently valid
OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and
procedure, Courts, Freedom of
Information, Inventions and patents,
Reporting and record keeping
requirements, Small Businesses.
I For the reasons set forth in the
preamble, 37 CFR part 1 is amended as
follows:
PO 00000
Frm 00008
Fmt 4700
Sfmt 4700
PART 1—RULES OF PRACTICE IN
PATENT CASES
1. The authority citation for 37 CFR
part 1 continues to read as follows:
I
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.138 is amended by
revising paragraph (c) and adding
paragraph (d) to read as follows:
I
§ 1.138
Express abandonment.
*
*
*
*
*
(c) An applicant seeking to abandon
an application to avoid publication of
the application (see § 1.211(a)(1)) must
submit a declaration of express
abandonment by way of a petition under
this paragraph including the fee set
forth in § 1.17(h) in sufficient time to
permit the appropriate officials to
recognize the abandonment and remove
the application from the publication
process. Applicants should expect that
the petition will not be granted and the
application will be published in regular
course unless such declaration of
express abandonment and petition are
received by the appropriate officials
more than four weeks prior to the
projected date of publication.
(d) An applicant seeking to abandon
an application filed under 35 U.S.C.
111(a) and § 1.53(b) on or after
December 8, 2004, to obtain a refund of
the search fee and excess claims fee
paid in the application, must submit a
declaration of express abandonment by
way of a petition under this paragraph
before an examination has been made of
the application. The date indicated on
any certificate of mailing or
transmission under § 1.8 will not be
taken into account in determining
whether a petition under § 1.138(d) was
filed before an examination has been
made of the application. If a request for
refund of the search fee and excess
claims fee paid in the application is not
filed with the declaration of express
abandonment under this paragraph or
within two months from the date on
which the declaration of express
abandonment under this paragraph was
filed, the Office may retain the entire
search fee and excess claims fee paid in
the application. This two-month period
is not extendable. If a petition and
declaration of express abandonment
under this paragraph are not filed before
an examination has been made of the
application, the Office will not refund
any part of the search fee and excess
claims fee paid in the application except
as provided in § 1.26.
E:\FR\FM\10MRR1.SGM
10MRR1
Federal Register / Vol. 71, No. 47 / Friday, March 10, 2006 / Rules and Regulations
Dated: March 2, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 06–2333 Filed 3–9–06; 8:45 am]
Stanley F. Mires,
Chief Counsel, Legislative.
[FR Doc. 06–2260 Filed 3–9–06; 8:45 am]
BILLING CODE 3510–16–P
BILLING CODE 7710–12–P
POSTAL SERVICE
ENVIRONMENTAL PROTECTION
AGENCY
39 CFR Part 230
40 CFR Part 52
Office of Inspector General; Arrest and
Investigative Powers of Criminal
Investigators
[EPA–R06–OAR–2004–TX–0006; FRL–8043–
9]
Postal Service.
ACTION: Final rule.
AGENCY:
SUMMARY: This rule describes the
procedures for service of administrative
subpoenas by criminal investigators
employed by the Office of Inspector
General.
EFFECTIVE DATE:
March 10, 2006.
FOR FURTHER INFORMATION CONTACT:
Gladis Griffith, Deputy General Counsel,
Office of Inspector General, (703) 248–
4683.
SUPPLEMENTARY INFORMATION: The Postal
Service has previously published rules,
at 67 FR 16025, that describe the
functions that may be performed by
criminal investigators employed by the
Office of Inspector General. This rule
adds the procedures for service of
administrative subpoenas by such
personnel.
List of Subjects in 39 CFR Part 230
Administrative practice and
procedure.
I For the reasons stated, the Postal
Service amends 39 CFR as follows:
PART 230—OFFICE OF INSPECTOR
GENERAL
1. The authority citation for part 230
continues to read as follows:
I
Authority: 5 U.S.C. App. 3; 39 U.S.C.
401(2) and 1001.
§ 230.4
[Amended]
2. Section 230.4 is amended by
designating the existing text as
paragraph (a), and adding the following
new paragraph (b):
(b) Administrative subpoenas may be
served by delivering a copy to a person
or by mailing a copy to the person’s last
known address. For the purposes of this
provision, delivery of a copy includes
handing it to the party or leaving it at
the party’s office or residence with a
person of suitable age and discretion
rwilkins on PROD1PC63 with RULES
I
VerDate Aug<31>2005
19:15 Mar 09, 2006
Jkt 208001
employed or residing therein. Service by
mail is complete upon mailing.
Approval and Promulgation of Air
Quality Implementation Plans; Texas;
Control of Air Pollution by Permits for
New Construction or Modification
Environmental Protection
Agency (EPA).
ACTION: Direct final rule.
AGENCY:
SUMMARY: EPA is taking direct final
action to approve revisions to the Texas
State Implementation Plan (SIP). This
action approves provisions for alternate
language public notice for certain
preconstruction permits or permit
renewals and provisions for
preconstruction permit renewals. It
approves SIP revisions that Texas
submitted to EPA on August 31, 1993;
April 29, 1994; August 17, 1994; and
July 22, 1998. The provisions that EPA
is approving supplement the current
requirements for new construction and
modifications and are more stringent
than the Federal Clean Air Act (CAA or
the Act) and EPA regulations. We are
approving the revisions under sections
110 and 116 of the Act.
DATES: This direct final rule is effective
on May 9, 2006 without further notice,
unless EPA receives significant adverse
comment by April 10, 2006. If EPA
receives such comment, EPA will
publish a timely withdrawal in the
Federal Register informing the public
that this rule will not take effect.
ADDRESSES: Submit your comments,
identified by Docket ID No. EPA–R06–
OAR–2004–TX–0006, by one of the
following methods:
• Federal eRulemaking Portal: https://
www.regulations.gov. Follow the on-line
instructions for submitting comments.
• U.S. EPA Region 6 ‘‘Contact Us’’
web site: https://epa.gov/region6/
r6coment.htm Please click on ‘‘6PD’’
(Multimedia) and select ‘‘Air’’ before
submitting comments.
• E-mail: Mr. David Neleigh at
neleigh.david@epa.gov. Please also cc
the person listed in the FOR FURTHER
INFORMATION CONTACT section below.
PO 00000
Frm 00009
Fmt 4700
Sfmt 4700
12285
• Fax: Mr. David Neleigh, Chief, Air
Permits Section (6PD–R), at fax number
214–665–7263.
• Mail: Mr. David Neleigh, Chief, Air
Permits Section (6PD–R), Environmental
Protection Agency, 1445 Ross Avenue,
Suite 1200, Dallas, Texas 75202–2733.
• Hand or Courier Delivery: Mr.
David Neleigh, Chief, Air Permits
Section (6PD–R), Environmental
Protection Agency, 1445 Ross Avenue,
Suite 1200, Dallas, Texas 75202–2733.
Such deliveries are accepted only
between the hours of 8:00 a.m. and 4:00
p.m. weekdays except for legal holidays.
Special arrangements should be made
for deliveries of boxed information.
Instructions: Direct your comments to
Docket ID No. EPA–R06–OAR–2004–
TX–0006. EPA’s policy is that all
comments received, including any
personal information provided, will be
included in the public file without
change and may be made available
online at https://docket.epa.gov/rmepub/
unless the comment includes
information claimed to be Confidential
Business Information (CBI) or other
information the disclosure of which is
restricted by statute. Do not submit
information that you consider to be CBI
or otherwise protected through
www.regulations.gov or e-mail. The
www.regulations.gov website is an
‘‘anonymous access’’ system, which
means EPA will not know your identity
or contact information unless you
provide it in the body of your comment.
If you send an e-mail comment directly
to EPA without going through
www.regulations.gov your e-mail
address will be automatically captured
and included as part of the comment
that is placed in the public docket and
made available on the Internet. If you
submit an electronic comment, EPA
recommends that you include your
name and other contact information in
the body of your comment and with any
disk or CD–ROM you submit. If EPA
cannot read your comment due to
technical difficulties and cannot contact
you for clarification, EPA may not be
able to consider your comment.
Electronic files should avoid the use of
special characters, any form of
encryption, and be free of any defects or
viruses.
Docket: All documents in the docket
are listed in the www.regulations.gov
index. Although listed in the index,
some information is not publicly
available, e.g., CBI or other information
whose disclosure is restricted by statute.
Certain other material, such as
copyrighted material, will be publicly
available only in hard copy. Publicly
available docket materials are available
either electronically in
E:\FR\FM\10MRR1.SGM
10MRR1
]]>Agencies
[Federal Register Volume 71, Number 47 (Friday, March 10, 2006)]
[Rules and Regulations]
[Pages 12281-12285]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 06-2333]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 2004-P-038]
RIN 0651-AB79
Changes To Implement the Patent Search Fee Refund Provisions of
the Consolidated Appropriations Act, 2005
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
-----------------------------------------------------------------------
SUMMARY: Among other changes to patent and trademark fees, the
Consolidated Appropriations Act, 2005 (Consolidated Appropriations
Act), splits the patent application filing fee into a separate filing
fee, search fee and examination fee. The Consolidated Appropriations
Act also provides that the United States Patent and Trademark Office
(Office) may refund part or all of the excess claims fee and the search
fee in certain situations. This final rule revises the rules of
practice to implement the provisions for refunding the search fee for
applicants who file a written declaration of express abandonment before
an examination has been made of the application.
DATES: Effective Date: March 10, 2006.
Applicability Date: The changes in this final rule apply to any
patent application filed under 35 U.S.C. 111(a) on or after December 8,
2004, in which a petition under 37 CFR 1.138(d) to expressly abandon
the application was filed on or after March 10, 2006.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent
Attorney, Office of the Deputy Commissioner for Patent Examination
Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450, or by facsimile to (571) 273-7735, marked to the
attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: Among other changes, the Consolidated
Appropriations Act (section 801 of Division B) provides that 35 U.S.C.
41(a), (b), and (d) shall be administered in a manner that revises
patent application fees (35 U.S.C. 41(a)) and patent maintenance fees
(35 U.S.C. 41(b)), and provides for a separate filing fee (35 U.S.C.
41(a)), search fee (35 U.S.C. 41(d)(1)), and examination fee (35 U.S.C.
41(a)(3)) during fiscal years 2005 and 2006. The Consolidated
Appropriations Act also provides that the Office may, by regulation,
provide for a refund of: (1) Any part of the excess claims fee
specified in 35 U.S.C. 41(a)(2) for any claim that is canceled before
an examination on the merits has been made of the application under 35
U.S.C. 131; (2) any part of the search fee for any applicant who files
a written declaration of express abandonment as prescribed by the
Office before an examination has been made of the application under 35
U.S.C. 131; and (3) any part of the search fee for any applicant who
provides a search report that meets the conditions prescribed by the
Office. This final rule revises the rules of practice to implement the
provision for a refund of the search fee for any applicant who files a
written declaration of express abandonment as prescribed by the Office
before an examination has been made of the application under 35 U.S.C.
131, and the provision for a refund of the excess claims fee for any
claim that is canceled before an examination on the merits has been
made of the application under 35 U.S.C. 131.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.138: Section 1.138(c) is amended to change ``section''
(i.e., Sec. 1.138) to ``paragraph'' (i.e., Sec. 1.138(c)) to clarify
that a petition to expressly abandon an application to avoid
publication of an application is filed under Sec. 1.138(c) (rather
than Sec. 1.138).
Section 1.138 is also amended to include a new paragraph (d), which
implements the provision in 35 U.S.C. 41(d)(1)(D) that the Office may
provide for a refund of any part of the search fee ``for any applicant
who files a written declaration of express abandonment as prescribed by
the Director before an
[[Page 12282]]
examination has been made of the application under [35 U.S.C.] 131''
(and in part the provision in 35 U.S.C. 41(a)(2) that the Office may
provide for a refund of any part of the excess claims fee ``for any
claim that is canceled before an examination on the merits, as
prescribed by the Director, has been made of the application under [35
U.S.C.] 131''). Section 1.138(d) specifically provides that an
applicant seeking to abandon an application filed under 35 U.S.C.
111(a) and Sec. 1.53(b) on or after December 8, 2004, to obtain a
refund of the search fee and excess claims fee paid in the application,
must submit a petition and declaration of express abandonment before an
examination has been made of the application.
A petition under Sec. 1.138(d) will be granted if it was filed
before an examination has been made of the application and will be
denied if it was not filed before an examination has been made of the
application. This will avert the situation in which an applicant files
a declaration of express abandonment to obtain a refund of the search
fee and excess claims fee, the request for a refund is not granted
because the declaration of express abandonment was not filed before an
examination has been made of the application, the applicant then wishes
to rescind the declaration of express abandonment upon learning that
the declaration of express abandonment was not filed before an
examination has been made of the application, and the Office cannot
revive the application (once the declaration of express abandonment is
recognized) because the application was expressly and intentionally
abandoned by the applicant.
An ``examination has been made of the application'' for purposes of
Sec. 1.138(d) once an action (e.g., restriction or election of species
requirement, requirement for information under Sec. 1.105, first
Office action on the merits, notice of Allowability or allowance, or
action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)) is shown
in PALM as having been counted. For purposes of Sec. 1.138(d),
``before'' means occurring earlier in time, in that if a petition under
Sec. 1.138(d) is filed and an action is counted on the same day, the
petition under Sec. 1.138(d) was not filed before an examination has
been made of the application. In addition, the date indicated on any
certificate of mailing or transmission under Sec. 1.8 will not be
taken into account in determining whether a petition under Sec.
1.138(d) was filed before an examination has been made of the
application. The Office recommends that petitions under Sec. 1.138(d)
be submitted by facsimile to 703-305-8568 using the Office's ``Petition
for Express Abandonment to Obtain a Refund'' form (PTO/SB/24B) to avoid
delays in receiving and processing the petition under Sec. 1.138(d).
The Patent Application Locating and Monitoring (PALM) system
maintains computerized contents records of all patent applications and
reexamination proceedings. The PALM system will show a status higher
than 031 once an action has been counted. If the status of an
application as shown in PALM is higher than 031 before or on the day
that the petition under Sec. 1.138(d) was filed, the petition under
Sec. 1.138(d) will be denied and the search fee and excess claims fee
will not be refunded.
The Patent Application Information Retrieval (PAIR) system is a
system that provides public access to PALM for patents and applications
that have been published. The PAIR system does not provide public
access to information concerning applications that are maintained in
confidence under 35 U.S.C. 122(a). The private side of PAIR, however,
can be used by an applicant to access confidential information about
his or her pending application. To access the private side of PAIR, a
customer number must be associated with the correspondence address for
the application, and the user of the system must have a digital
certificate. For further information, contact the Customer Support
Center of the Electronic Business Center at (571) 272-4100 or toll free
at (866) 217-9197.
Section 1.138(d) also provides that if a request for refund of the
search fee and excess claims fee paid in the application is not filed
with the declaration of express abandonment under Sec. 1.138(d) or
within two months (not extendable) from the date on which the
declaration of express abandonment under Sec. 1.138(d) was filed, the
Office may retain the entire search fee and excess claims fee paid in
the application. Finally, Sec. 1.138(d) provides that if a declaration
of express abandonment under Sec. 1.138(d) is not filed before an
examination has been made of the application, the Office will not
refund any part of the search fee or excess claims fee paid in the
application except as provided in Sec. 1.26.
A petition under Sec. 1.138(d) may not be effective to stop
publication of an application unless the petition under Sec. 1.138(d)
is granted and the abandonment processed before technical preparations
for publication of the application has begun. Technical preparations
for publication of an application generally begin four months prior to
the projected date of publication.
Response to Comments: The Office published a notice proposing
changes to implement the patent search fee refund provisions of the
Consolidated Appropriations Act, 2005. See Changes to Implement the
Patent Search Fee Refund Provisions of the Consolidated Appropriations
Act, 2005, 70 FR 35571 (Jun. 21, 2005), 1296 Off. Gaz. Pat. Office 69
(Jul. 12, 2005) (proposed rule). The Office received four written
comments (from an intellectual property organization, law firm, and
patent practitioners) in response to this notice. The comments and the
Office's responses to the comments follow:
Comment 1: Several comments argued that the Office's decision to
limit search fee refunds to applications that have been abandoned
before being placed on an examiner's docket or before being taken up
for examination was inconsistent with the Consolidated Appropriations
Act, which provides for a search fee refund if the application is
abandoned ``before an examination has been made of the application.''
The comments further argued that the Office cannot use information
technology issues as a justification for not implementing this
provision. Several other comments argued that the Office's decision to
limit search fee refunds to applications that have been abandoned
before being placed on an examiner's docket will result in only limited
use of the process, which in turn would result in the Office needing to
examine more applications than it would otherwise need to examine.
Response: The Consolidated Appropriations Act permits, but does not
require, the Office to refund, or develop procedures to refund, search
fees or excess claims fees. See 35 U.S.C. 41(a)(2) and (d)(1)(D)
(``[t]he Director may by regulation provide for a refund'') (emphasis
added). The Consolidated Appropriations Act (35 U.S.C. 41(d)(1)(D))
gives the Office the authority to fix the time by which an application
must be expressly abandoned for the applicant to obtain a refund of the
search fee. See H.R. Rep. 108-241, at 16 (2003) (H. R. Rep. 108-241
contains an analysis and discussion of an identical provision in H.R.
1561, 108th Cong. (2004)). The ``before an examination has been made of
the application under [35 U.S.C.] 131'' provision (search fees) simply
places a restriction on this authority, in that the Office does not
have the authority to refund, or develop procedures to refund, the
search fee in an application in which the written declaration of
express abandonment is not filed before an
[[Page 12283]]
examination has been made of the application under 35 U.S.C. 131.
Nevertheless, the Office is seeking to maximize any benefit that
may be obtained by the authority in 35 U.S.C. 41(d)(1)(D) to refund the
search fee and excess claims fee in applications that are expressly
abandoned before an examination has been made of the application under
35 U.S.C. 131. Therefore, the Office is revising Sec. 1.138(d) to
change ``must submit a declaration of express abandonment by way of a
petition under this paragraph in sufficient time to permit the
appropriate officials to recognize the abandonment before the
application has been taken up for examination'' to ``must submit a
declaration of express abandonment by way of a petition under this
paragraph before an examination has been made of the application,'' and
is providing that an ``examination has been made of the application''
for purposes of Sec. 1.138(d) once an action (e.g., restriction or
election of species requirement, requirement for information under
Sec. 1.105, first Office action on the merits, notice of Allowability
or allowance, or action under Ex parte Quayle, 1935 Dec. Comm'r Pat. 11
(1935)) is shown in PALM as having been counted.
Comment 2: Several comments suggested that the Office should also
refund the excess claims fees paid in an application if the application
is expressly abandoned under Sec. 1.138(d).
Response: Section 1.138(d) has been revised to provide that the
Office will also refund the excess claims fees paid in an application
if the application is expressly abandoned under Sec. 1.138(d).
Comment 3: One comment requested confirmation that no petition or
other fee is required for a petition under Sec. 1.138(d) to expressly
abandon an application.
Response: No petition or other fee is required for a petition under
Sec. 1.138(d) to expressly abandon an application.
Comment 4: One comment argued that the term ``any search fee'' was
unclear and should be replaced with ``the entire search fee'' if the
Office plans to refund the entire search fee paid in the application.
Response: Section 1.138(d) has been revised to replace the term
``any search fee'' with ``the search fee.''
Comment 5: One comment argued that: (1) Pro se inventors without
knowledge of customer numbers and private PAIR will not be able to
access their application to determine whether it has been placed on an
examiner's docket; (2) it is not clear which docketing date will
control for transferred applications as the original docket assignment
may be changed after the transfer; (3) the proposed rule does not
address the filing of a request for a continued examination in the
application; and (4) the time at which an application is placed on an
examiner's docket varies dramatically from Art Unit to Art Unit and
from Technology Center to Technology Center. One comment suggested a
rule that set a fixed time period within which the applicant may
expressly abandon the application and obtain a refund of the search
fee, with the Office notifying an applicant if the application would be
taken up for action prior to the expiration of such fixed time period.
Another comment suggested that the Office can avoid a significant
information technology investment by just having the petition examiners
use the telephone or electronic mail message to determine an
application has been taken up for action. The comment also suggested
that the Office simply have the examiner place an entry on the PALM
system when a particular application was taken up for action.
Response: The Office is revising Sec. 1.138(d) to change ``must
submit a declaration of express abandonment by way of a petition under
this paragraph in sufficient time to permit the appropriate officials
to recognize the abandonment before the application has been taken up
for examination'' to ``must submit a declaration of express abandonment
by way of a petition under this paragraph before an examination has
been made of the application,'' and is providing that an ``examination
has been made of the application'' for purposes of Sec. 1.138(d) once
an action (e.g., restriction or election of species requirement,
requirement for information under Sec. 1.105, first Office action on
the merits, notice of Allowability or allowance, or action under Ex
parte Quayle, 1935 Dec. Comm'r Pat. 11 (1935)) is shown in PALM as
having been counted. As discussed previously, an implementation of the
search fee refund provisions of the Consolidated Appropriations Act
that requires a significant information technology investment (e.g.,
the ability to generate notices to the applicant when an application is
about to be taken up for action) is not warranted in the absence of the
enactment of legislation which makes the patent fee structure provided
for in the Consolidated Appropriations Act permanent.
Rule Making Considerations
Regulatory Flexibility Act
For the reasons set forth herein, the Deputy General Counsel for
General Law of the United States Patent and Trademark Office has
certified to the Chief Counsel for Advocacy of the Small Business
Administration that changes in this final rule will not have a
significant economic impact on a substantial number of small entities.
See 5 U.S.C. 605(b). This final rule changes the rules of practice to
implement the provisions for a refund of the search fee and excess
claims fee for any applicant who files a written declaration of express
abandonment as prescribed by the Office before an examination has been
made of the application under 35 U.S.C. 131. The changes in this final
rule would not impose any additional fees or requirements on any patent
applicant. Rather, the changes in this final rule only provide for a
refund of the search fee and excess claims fee for patent applicants
(small or non-small entity) in certain situations.
Executive Order 13132
This rule making does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rule making has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This final rule involves information collection requirements which
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.). The
changes in this final rule concern the procedures for refunding the
search fee and excess claims fee for any applicant who files a written
declaration of express abandonment before an examination has been made
of the application under 35 U.S.C. 131. The collections of information
involved in this final rule have been reviewed and previously approved
by OMB under the following OMB control numbers: 0651-0031 and 0651-
0032. The United States Patent and Trademark Office is resubmitting the
information collections package to OMB for its review and approval
because the changes in this final rule do affect the information
collection requirements associated with the information collection
under these OMB control numbers.
[[Page 12284]]
The title, description and respondent description of the
information collections under OMB control numbers 0651-0031 and 0651-
0032 are shown below with estimates of the annual reporting burdens.
Included in the estimates is the time for reviewing instructions,
gathering and maintaining the data needed, and completing and reviewing
the collection of information.
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08A, PTO/SB/08B, PTO/SB/17i, PTO/SB/17p, PTO/
SB/21-27, PTO/SB/30-37, PTO/SB/42-43, PTO/SB/61-64, PTO/SB/64a, PTO/SB/
67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B, PTO-2054-A/B, PTO-
2055-A/B, POOL-413A.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions, Farms, Federal
Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,284,439.
Estimated Time per Response: 1 minute and 48 seconds to 8 hours.
Estimated Total Annual Burden Hours: 2,732,441 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosures and citation, requests for extensions of time, the
establishment of small entity status, abandonment and revival of
abandoned applications, disclaimers, appeals, expedited examination of
design applications, transmittal forms, requests to inspect, copy and
access patent applications, publication requests, and certificates of
mailing, transmittals, and submission of priority documents and
amendments.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07, PTO/SB/13PCT, PTO/SB/16-19, PTO/SB/29
and 29A, PTO/SB/101-110, Electronic New Utility and Provisional
Application Forms.
Type of Review: Approved through July of 2006.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-For-Profit Institutions, Farms, Federal
Government, and State, Local, or Tribal Governments.
Estimated Number of Respondents: 454,287.
Estimated Time per Response: 22 minutes to 10 hours and 45 minutes.
Estimated Total Annual Burden Hours: 4,171,568 hours.
Needs and Uses: The purpose of this information collection is to
permit the Office to determine whether an application meets the
criteria set forth in the patent statute and regulations. The standard
Fee Transmittal form, New Utility Patent Application Transmittal form,
New Design Patent Application Transmittal form, New Plant Patent
Application Transmittal form, Declaration, Provisional Application
Cover Sheet, and Plant Patent Application Declaration will assist
applicants in complying with the requirements of the patent statute and
regulations, and will further assist the Office in processing and
examination of the application.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert J. Spar,
Director, Office of Patent Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
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
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
Information, Inventions and patents, Reporting and record keeping
requirements, Small Businesses.
0
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 1.138 is amended by revising paragraph (c) and adding
paragraph (d) to read as follows:
Sec. 1.138 Express abandonment.
* * * * *
(c) An applicant seeking to abandon an application to avoid
publication of the application (see Sec. 1.211(a)(1)) must submit a
declaration of express abandonment by way of a petition under this
paragraph including the fee set forth in Sec. 1.17(h) in sufficient
time to permit the appropriate officials to recognize the abandonment
and remove the application from the publication process. Applicants
should expect that the petition will not be granted and the application
will be published in regular course unless such declaration of express
abandonment and petition are received by the appropriate officials more
than four weeks prior to the projected date of publication.
(d) An applicant seeking to abandon an application filed under 35
U.S.C. 111(a) and Sec. 1.53(b) on or after December 8, 2004, to obtain
a refund of the search fee and excess claims fee paid in the
application, must submit a declaration of express abandonment by way of
a petition under this paragraph before an examination has been made of
the application. The date indicated on any certificate of mailing or
transmission under Sec. 1.8 will not be taken into account in
determining whether a petition under Sec. 1.138(d) was filed before an
examination has been made of the application. If a request for refund
of the search fee and excess claims fee paid in the application is not
filed with the declaration of express abandonment under this paragraph
or within two months from the date on which the declaration of express
abandonment under this paragraph was filed, the Office may retain the
entire search fee and excess claims fee paid in the application. This
two-month period is not extendable. If a petition and declaration of
express abandonment under this paragraph are not filed before an
examination has been made of the application, the Office will not
refund any part of the search fee and excess claims fee paid in the
application except as provided in Sec. 1.26.
[[Page 12285]]
Dated: March 2, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 06-2333 Filed 3-9-06; 8:45 am]
BILLING CODE 3510-16-P
