Changes to Implement Priority Document Exchange Between Intellectual Property Offices, 1664-1668 [E7-113]

Download as PDF 1664 Federal Register / Vol. 72, No. 9 / Tuesday, January 16, 2007 / Rules and Regulations (iii) Provides to each existing participant in a pool that the person elects to operate as described in paragraph (a)(3) or (a)(4) of this section a right to redeem the participant’s interest in the pool, and informs each such participant of that right no later than the time the person commences to operate the pool as described in paragraph (a)(3) or (a)(4) of this section. * * * * * I 8. In § 4.14, introductory text of paragraph (a) and introductory text of paragraph (a)(8) is republished and paragraph (a)(8)(iii)(A) introductory text and paragraphs (a)(8)(iii)(A)(3), (a)(8)(iii)(B) and (a)(8)(iii)(D) are revised to read as follows: (D) Each person who has filed a notice of exemption from registration under this section must, in the event that any of the information contained or representations made in the notice becomes inaccurate or incomplete, amend the notice electronically through National Futures Association’s electronic exemption filing system as may be necessary to render the notice accurate and complete. This amendment must be filed within 15 business days after the trading advisor becomes aware of the occurrence of such event. * * * * * * cprice-sewell on PROD1PC66 with RULES § 4.14 Exemption from registration as a commodity trading advisor. Issued in Washington, DC, on January 5, 2007 by the Commission. Eileen A. Donovan, Acting Secretary of the Commission. [FR Doc. E7–174 Filed 1–12–07; 8:45 am] BILLING CODE 6351–01–P * * * * (a) A person is not required to register under the Act as a commodity trading advisor if: * * * * * (8) It is a registered as an investment adviser under the Investment Advisers Act of 1940 or with the applicable securities regulatory agency of any State, or it is exempt from such registration, or it is excluded from the definition of the term ‘‘investment adviser’’ pursuant to the provisions of section 202(a)(2) and 202(a)(11) of the Investment Advisers Act of 1940, Provided, That: * * * * * (iii)(A) A person who desires to claim the relief from registration provided by this § 4.14(a)(8) must file electronically a notice of exemption from commodity trading advisor registration with the National Futures Association through its electronic exemption filing system. The notice must: * * * * * (3) Be filed by a representative duly authorized to bind the person. (B) The person must file the notice by no later than the time it delivers an advisory agreement for the trading program pursuant to which it will offer commodity interest advice to a client; Provided, That where the advisor is registered with the Commission as a commodity trading advisor, it must notify its clients in written communication physically delivered or delivered through electronic transmission that it intends to withdraw from registration and claim the exemption and must provide each such client with a right to terminate its advisory agreement prior to the person filing a notice of exemption from registration. * * * * * VerDate Aug<31>2005 15:35 Jan 12, 2007 Jkt 211001 DEPARTMENT OF COMMERCE United States Patent and Trademark Office 37 CFR Part 1 [Docket No.: PTO–P–2005–0015] RIN 0651–AB75 Changes to Implement Priority Document Exchange Between Intellectual Property Offices United States Patent and Trademark Office, Commerce. ACTION: Final rule. AGENCY: SUMMARY: The United States Patent and Trademark Office (Office) has established a 21st Century Strategic Plan to transform the Office into a more quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system. One goal of the 21st Century Strategic Plan is the electronic exchange of information and documents between intellectual property offices. Consistent with this goal, the Office is revising the rules of practice to provide for the electronic transfer of certified copies of applications for which priority is claimed under the Paris Convention (priority applications) from other intellectual property offices with which the Office has negotiated priority document exchange agreements. The Office is also revising the rules of practice to permit applicants to request that the Office permit other participating intellectual property offices to electronically retrieve certified copies of United States patent applications without payment of a fee. PO 00000 Frm 00008 Fmt 4700 Sfmt 4700 This electronic exchange of copies of priority documents will benefit applicants by reducing the cost of ordering paper certified copies of priority applications for filing in other participating intellectual property offices, and will benefit participating intellectual property offices by reducing the administrative costs associated with handling paper copies of priority documents and scanning them into their electronic image record management systems. DATES: Effective Date: January 16, 2007. FOR FURTHER INFORMATION CONTACT: Diana Oleksa, ((571) 272–3291), Legal Advisor for IT Policy, Office of Patent Cooperation Treaty Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, or Robert A. Clarke ((571) 272– 7735), Deputy Director, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at PatentEFW.comments@uspto.gov or directly by phone, or by facsimile to (571) 273–7735, marked to the attention of Ms. Oleksa, or by mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450. SUPPLEMENTARY INFORMATION: The Office has established a 21st Century Strategic Plan to transform the Office into a more quality-focused, highly productive, responsive organization supporting a market-driven intellectual property system. One goal of the 21st Century Strategic Plan is the electronic exchange of information and documents between intellectual property offices. The Office plans to leverage its image file wrapper (IFW) technology by negotiating agreements with other patent offices to permit the Office to obtain and provide electronic copies of priority documents. See 35 U.S.C. 2(b)(6) (authorizes the Office, subject to certain conditions, to use the services, records, facilities, or personnel of any instrumentality or foreign patent and trademark office or international organization to perform functions on its behalf) and 11 (authorizes the Office to exchange copies of specifications and drawings of United States patents and published applications for patents for those of other NAFTA or WTO member countries). Agreements to obtain and provide such copies have been established with the European Patent Office (EPO) and its member states, and are being considered with the Japan Patent Office (JPO), both of which offices will have the technical ability to provide and retrieve certified electronic copies of priority documents via E:\FR\FM\16JAR1.SGM 16JAR1 cprice-sewell on PROD1PC66 with RULES Federal Register / Vol. 72, No. 9 / Tuesday, January 16, 2007 / Rules and Regulations automated mechanisms. An intellectual property office with which the Office has such an agreement will be referred to as a ‘‘participating intellectual property office.’’ Consistent with this goal, the Office is revising the rules of practice in title 37 of the Code of Federal Regulations (CFR) to provide for the electronic transfer of certified copies of priority documents from other intellectual property offices with which the Office has negotiated priority document exchange agreements. The Office is also revising the rules of practice to permit applicants to request that the Office permit other participating intellectual property offices to electronically retrieve certified copies of United States patent applications without payment of a fee. This electronic exchange of copies of priority documents will benefit applicants by reducing the cost of ordering paper certified copies of priority documents for filing in other participating intellectual property offices, and will benefit participating intellectual property offices by reducing the administrative costs associated with handling paper copies of priority applications and scanning them into electronic image record management systems. This direct electronic exchange of copies of priority documents is an exception to the requirement that applicant must provide a certified copy of a counterpart foreign application to be entitled to a right of priority under 35 U.S.C. 119(a)–(d). The American Inventors Protection Act of 1999 (AIPA), Pub. L. 106–113, 113 Stat. 1501, 1501A– 552 through 1501A–591 (1999), amended 35 U.S.C. 119(b) to (inter alia) provide that: ‘‘[t]he Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary.’’ See 35 U.S.C. 119(b)(3) (2000) (emphasis added). Prior to the enactment of the AIPA, 35 U.S.C. 119(b) required that a certified copy of the original foreign application be filed in the Office for an application to be entitled to a right of priority under 35 U.S.C. 119(a)–(d). See 35 U.S.C. 119(b) (1994) (‘‘[n]o application for patent shall be entitled to this right of priority unless a claim therefor and a certified copy of the original foreign application, specification, and drawings upon which it is based are filed in the Patent and Trademark Office before the patent is granted, or at such time during the pendency of the application as required by the Commissioner not earlier than six VerDate Aug<31>2005 15:35 Jan 12, 2007 Jkt 211001 months after the filing of the application in this country’’). If an applicant makes a proper request and an electronic copy of the counterpart foreign application is imported from another participating intellectual property office by the Office, the obligation to provide a certified copy of the foreign application would be satisfied (although the applicant may be required to provide an English-language translation of a nonEnglish language foreign application under certain circumstances or such other information as the Director considers necessary). The agreements would also permit another participating intellectual property office to obtain electronic copies of priority documents from the Office (at no charge to the applicant) when an applicant furnishes the Office with written authority or after the application has been published. The agreements will enable a participating intellectual property office (e.g., the JPO, EPO, or the Office) to obtain an electronic copy of a priority document that was filed in another participating intellectual property office in accordance with the terms of the agreement. Likewise, the agreements will also enable a participating intellectual property office to obtain an electronic copy of a priority document that was filed in a non-participating intellectual property office from a participating intellectual property office in which a certified copy of the priority document has been filed and stored. The Office will provide forms for applicants to: (1) Request that the Office retrieve an electronic copy of an earlier filed foreign application (PTO/SB/38); and (2) permit other participating intellectual property offices to retrieve an electronic copy of an application filed in the Office (PTO/SB/39). Use of Office forms is strongly encouraged. The first form (PTO/SB/38) will permit applicants to request that the Office retrieve an electronic copy of any foreign application filed in an intellectual property office participating with the Office in a direct agreement to retrieve electronic copies of priority documents. The foreign application may have been filed directly with the participating intellectual property office, in which case the applicant would merely request that the Office retrieve an electronic copy of the priority application for which priority was claimed. Alternatively, the applicant may request that the Office retrieve an electronic copy of a foreign application originally filed in a nonparticipating intellectual property office that is stored in a patent application file in a participating intellectual property PO 00000 Frm 00009 Fmt 4700 Sfmt 4700 1665 office. The Office intends to post a notification of such agreements in the Official Gazette including the date when applicants may take advantage of these agreements and any special provisions made in the agreement. If the foreign application was originally filed in a non-participating intellectual property office, but is stored in an application file or dossier of a participating intellectual property office, the request form must indicate the participating intellectual property office application number which contains the certified copy of the foreign application. Upon receipt of a timely filed request, the Office anticipates that at least two attempts will be made to retrieve a copy of the foreign application from the participating office. Applicants should consult the private Patent Application Information Retrieval (PAIR) system to determine if the copy of the foreign application was retrieved by the Office. Applicants are encouraged to contact the Electronic Business Center, rather than the examiner, if the counterpart foreign application has not been entered in the application file. The copy of the counterpart foreign application retrieved by the Office will be included in the Office’s IFW system records pertaining to the application for which the counterpart foreign application was requested. Applicants will be able to inspect the counterpart foreign application through the private PAIR system. In addition, once the application has been published under 35 U.S.C. 122(b) or issued as a patent, any member of the public will be able to inspect the counterpart foreign application through the public PAIR system. The second form (PTO/SB/39) would be used to provide the Office with written authority to provide a copy of a patent application to participating foreign intellectual property offices at no cost to the applicant. Such written authority would be treated as authorizing the Office to provide the participating intellectual property offices indicated in the written authority with a copy of the application-as-filed as well as a copy of the application-asfiled of its parent applications stored in electronic image form. Once an application is published under 35 U.S.C. 122(b), the application is open to the public and therefore the applicant’s written authority is not necessary to permit other participating intellectual property offices to retrieve a certified copy of the priority application or a copy of the complete application file. E:\FR\FM\16JAR1.SGM 16JAR1 1666 Federal Register / Vol. 72, No. 9 / Tuesday, January 16, 2007 / Rules and Regulations cprice-sewell on PROD1PC66 with RULES Discussion of Specific Rules Section 1.14 Sections 1.14(a)(1)(iii), (a)(1)(v), (a)(1)(vi), and (a)(1)(vii) are amended to change their reference to § 1.14(h) to a reference to § 1.14(i) for consistency with the redesignating of § 1.14(h) as § 1.14(i). Section 1.14(a)(2) is amended to add ‘‘in a published patent document or in an application as set forth’’ to more clearly explain that the Office will provide information about a patent application if the application is identified in a published patent document such as a patent document of a foreign intellectual property office. Section 1.14(b) is amended to delete the reference to ‘‘paragraphs (a)(1)(i) through (a)(1)(vi)’’. The reference to the specific paragraphs in § 1.14 that define when an application may be made available is not necessary, and the reference to only paragraphs (a)(1)(i) through (a)(1)(vi) is overly limiting as the Office may elect to only provide electronic access in other situations as well (e.g., where the application is maintained in the IFW system and has been published, the file may be made available through the public PAIR system). Current § 1.14(h) is redesignated as § 1.14(i), and a new § 1.14(h) is added. New § 1.14(h) defines under what circumstances an electronic copy of an application-as-filed may be retrieved from the Office by a participating intellectual property office. Section 1.14(h)(1) indicates that access to an application-as-filed may be provided to any participating foreign intellectual property office if the application contains written authority granting such access. The Office will publish a list of participating foreign intellectual property offices in the Official Gazette. In addition, § 1.14(h)(1) would indicate that the written authority should be submitted prior to the filing of a subsequent foreign application, in which priority is claimed to the patent application, with a participating intellectual property office. The written authority should be submitted prior to the filing of a subsequent foreign application to ensure that it is likely that the authorized participating foreign intellectual property office will be successful in its attempt to retrieve a copy of the priority application from the Office. However, a participating foreign intellectual property office would be able to retrieve an electronic copy of a priority application from the Office at no cost to the applicant without written authority if the application was published before a request for a copy of VerDate Aug<31>2005 15:35 Jan 12, 2007 Jkt 211001 the priority application was received by the Office. Section 1.14(h)(2) indicates that the written authority must include the title of the invention (§ 1.71(a)), comply with the requirements of § 1.14(c), and be submitted on a separate document (§ 1.4(c)). Accordingly, § 1.14(h)(2) requires the written authority to be signed by: (1) an applicant; (2) an attorney or agent of record; (3) an authorized official of an assignee of record, made of record pursuant to § 3.71 of this chapter; or (4) a registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if an executed oath or declaration pursuant to § 1.63 or § 1.497 has not been filed. Section 1.14(h)(3) indicates that written authority provided under § 1.14(h)(1) will be treated as authorizing the Office to provide the participating foreign intellectual property offices indicated in the written authority: (1) A copy of the applicationas-filed; and (2) a copy of the application-as-filed for any application the filing date of which is claimed by the application in which the written authority has been filed. Section 1.19 Section 1.19(b)(1)(iv) is added to indicate there is no fee for providing a foreign intellectual property office with a copy of an application as filed pursuant to a priority document exchange agreement (see § 1.14(h)). Section 1.55 Section 1.55(d) is added to permit the acceptance of an electronic copy of a counterpart foreign application under 35 U.S.C. 119(b) or Patent Cooperation Treaty (PCT) Rule 17 received from a participating intellectual property office, as an alternative to requiring the certified copy of such foreign application from the applicant. If the foreign application was filed in a participating intellectual property office and the applicant requests, in a separate document, that the Office obtain a copy of the foreign application from the participating intellectual property office, the Office will attempt to do so. If the Office is successful in its attempt to retrieve the electronic copy before the patent is granted, the applicant would be relieved of the existing duty to provide a certified copy of the foreign application. The applicant can confirm that the Office has received a copy of the foreign application by viewing the records in the private PAIR system. Section 1.55(d) also indicates that a copy of a foreign application obtained from a participating intellectual property office, where the foreign PO 00000 Frm 00010 Fmt 4700 Sfmt 4700 application was filed in a nonparticipating intellectual property office, will also be considered to satisfy the certified copy requirement. Thus, for example, an electronic copy of a foreign application from a participating intellectual property office will be considered to satisfy the requirement for a ‘‘certified copy of the foreign application’’ under § 1.55 if an applicant: (1) Files a foreign application in a non-participating intellectual property office; (2) files a copy of the foreign application in a participating intellectual property office; (3) files a U.S. application with a proper request under § 1.55(d); and (4) the Office obtains an electronic copy of the foreign application from the participating intellectual property office. Section 1.55(d) is an exception to the existing certified copy requirement. Section 1.55(d)(1) addresses the situation where the foreign application was filed in a participating foreign intellectual property office. Sections 1.55(d)(1)(i) through (d)(1)(iii) define under what circumstances a copy of a foreign application, obtained in accordance with an international agreement from a participating foreign intellectual property office, is an acceptable alternative to the current procedure of filing a certified copy of the foreign application. Section 1.55(d)(1)(i) indicates that, in order to take advantage of the international agreement, the applicant must file, in a separate document, a request that the Office obtain a copy of the foreign application from a participating foreign intellectual property office. A request form (PTO/SB/38) will be provided on the Office’s Internet Web site for this purpose. Section 1.55(d)(1)(ii) indicates that the foreign application must be identified in the oath or declaration (§ 1.63(c)) or an application data sheet (§ 1.76(a)(6)). Section 1.55(d)(1)(iii) indicates that the Office must receive the copy before the patent is granted (consistent with the general rule in § 1.55(a)(2)). Section 1.55(d)(1)(iii) also indicates that the request should be made within the later of four months from the filing date of the application or sixteen months from the filing date of the foreign application in order to facilitate receipt of the copy of the foreign application by the Office before patent grant. Section 1.55(d)(2) addresses the situation where the foreign application was originally filed in a nonparticipating foreign intellectual property office, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office. E:\FR\FM\16JAR1.SGM 16JAR1 Federal Register / Vol. 72, No. 9 / Tuesday, January 16, 2007 / Rules and Regulations Under these circumstances, the request under § 1.55(d)(1)(i) must identify the participating foreign intellectual property office and the application number of the subsequent application in which the copy of the foreign application was filed. It is envisioned that the agreement with certain participating intellectual property offices may obviate the need for this information in the future. This change to § 1.55 does not affect the requirement in § 1.55(a)(4) that applicant provide an English language translation of a non-English language foreign application (together with a statement that the translation of the certified copy is accurate) when the application is involved in an interference (§ 1.630), when necessary to overcome the date of a reference relied upon by the examiner, or when specifically required by the examiner. Rule Making Considerations cprice-sewell on PROD1PC66 with RULES Administrative Procedure Act This notice adopts changes to the rules of practice that facilitate electronic image record management of patent application files. The changes are limited to permitting and facilitating direct exchange of priority documents among intellectual property offices. Therefore, these rule changes involve interpretive rules, or rules of agency practice and procedure. See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application process are ‘‘rules of agency organization, procedure, or practice’’ and exempt from the Administrative Procedure Act’s notice and comment requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549–50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not substantive rules (to which the notice and comment requirements of the Administrative Procedure Act apply)), and Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) (‘‘it is extremely doubtful whether any of the rules formulated to govern patent or trade-mark practice are other than ‘interpretive rules, general statements of policy, * * * procedure, or practice.’ ’’) (quoting C.W. Ooms, The United States Patent Office and the Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)). Accordingly, prior notice and an opportunity for public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any other law), and thirtyday advance publication is not required VerDate Aug<31>2005 15:35 Jan 12, 2007 Jkt 211001 pursuant to 5 U.S.C. 553(d) (or any other law). Regulatory Flexibility Act As discussed previously, the changes in this final rule involve rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and prior notice and an opportunity for public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any other law). As prior notice and an opportunity for public comment were not required pursuant to 5 U.S.C. 553 (or any other law) for the changes in this final rule, a regulatory flexibility analysis under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is not required for the changes in this final rule. See 5 U.S.C. 603. Executive Order 13132 This rulemaking 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 rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993). Paperwork Reduction Act This rulemaking 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 collection of information involved in this final rule have been previously reviewed and approved by OMB under control number 0651–0031. 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 to 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 PO 00000 Frm 00011 Fmt 4700 Sfmt 4700 1667 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, Biologics, Courts, Freedom of information, Inventions and patents, Reporting and recordkeeping requirements, Small businesses. For the reasons set forth in the preamble, 37 CFR part 1 is amended as follows: I 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), unless otherwise noted. 2. Section 1.14 is amended by revising paragraph (a)(1)(iii), (a)(1)(v), (a)(1)(vi), (a)(1)(vii), the introductory text of paragraph (a)(2), and paragraph (b), redesignating paragraph (h) as paragraph (i), and adding a new paragraph (h) to read as follows: I § 1.14 Patent applications preserved in confidence. (a) * * * (1) * * * (iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a specific document in the file of a pending application that has been published as a patent application publication may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (i) of this section. * * * * * (v) Unpublished pending applications (including provisional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application E:\FR\FM\16JAR1.SGM 16JAR1 cprice-sewell on PROD1PC66 with RULES 1668 Federal Register / Vol. 72, No. 9 / Tuesday, January 16, 2007 / Rules and Regulations publication, or an international patent application publication that was published in accordance with PCT Article 21(2). A copy of the applicationas-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section. (vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section. (vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2), are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (i)), or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application. (2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated VerDate Aug<31>2005 15:35 Jan 12, 2007 Jkt 211001 to the public (i.e., status information) includes: * * * * * (b) Electronic access to an application. Where a copy of the application file or access to the application may be made available pursuant to this section, the Office may at its discretion provide access to only an electronic copy of the specification, drawings, and file contents of the application. * * * * * (h) Access by a Foreign Intellectual Property Office. (1) Access to the application-as-filed may be provided to any foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office), if the application contains written authority granting such access. Written authority under this paragraph should be submitted prior to filing a subsequent foreign application with a participating intellectual property office in which priority is claimed to the patent application. (2) Written authority provided under paragraph (h)(1) of this section must include the title of the invention (§ 1.71(a)), comply with the requirements of paragraph (c) of this section, and be submitted on a separate document (§ 1.4(c)). (3) Written authority provided under paragraph (h)(1) of this section will be treated as authorizing the Office to provide to all participating foreign intellectual property offices indicated in the written authority in accordance with their respective agreements with the Office: (i) A copy of the application-as-filed; and (ii) A copy of the application-as-filed with respect to any application the filing date of which is claimed by the application in which written authority under paragraph (h)(1) of this section is filed. * * * * * I 3. Section 1.19 is amended by adding paragraph (b)(1)(iv) to read as follows: § 1.19 Document supply fees. * * * * * (b) * * * (1) * * * (iv) If provided to a foreign intellectual property office pursuant to a priority document exchange agreement (see § 1.14(h)(1)) ...... 0.00 * * * * * I 4. Section 1.55 is amended by adding a new paragraph (d) to read as follows: PO 00000 Frm 00012 Fmt 4700 Sfmt 4700 § 1.55 Claim for foreign priority. * * * * * (d)(1) The requirement in this section for the certified copy of the foreign application will be considered satisfied if: (i) The applicant files a request, in a separate document, that the Office obtain a copy of the foreign application from a foreign intellectual property office participating with the Office in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office (see § 1.14(h)(1)); (ii) The foreign application is identified in the oath or declaration (§ 1.63(c)) or an application data sheet (§ 1.76(a)(6)); and (iii) The copy of the foreign application is received by the Office within the period set forth in paragraph (a) of this section. Such a request should be made within the later of four months from the filing date of the application or sixteen months from the filing date of the foreign application. (2) If the foreign application was filed at a foreign intellectual property office that is not participating with the Office in a priority document exchange agreement, but a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office, the request under paragraph (d)(1)(i) of this section must identify the participating foreign intellectual property office and the application number of the subsequent application in which a copy of the foreign application was filed. Dated: December 18, 2006. Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. E7–113 Filed 1–9–07; 8:45 am] BILLING CODE 3510–16–P ENVIRONMENTAL PROTECTION AGENCY 40 CFR Part 62 [Docket No. EPA–R02–OAR–2006–0615, FRL–8268–9] Approval and Promulgation of Plans for Designated Facilities; New Jersey; Delegation of Authority Environmental Protection Agency (EPA). ACTION: Final rule. AGENCY: SUMMARY: The Environmental Protection Agency (EPA) is approving a request from the New Jersey Department of E:\FR\FM\16JAR1.SGM 16JAR1

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[Federal Register Volume 72, Number 9 (Tuesday, January 16, 2007)]
[Rules and Regulations]
[Pages 1664-1668]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-113]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2005-0015]
RIN 0651-AB75


Changes to Implement Priority Document Exchange Between 
Intellectual Property Offices

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) has 
established a 21st Century Strategic Plan to transform the Office into 
a more quality-focused, highly productive, responsive organization 
supporting a market-driven intellectual property system. One goal of 
the 21st Century Strategic Plan is the electronic exchange of 
information and documents between intellectual property offices. 
Consistent with this goal, the Office is revising the rules of practice 
to provide for the electronic transfer of certified copies of 
applications for which priority is claimed under the Paris Convention 
(priority applications) from other intellectual property offices with 
which the Office has negotiated priority document exchange agreements. 
The Office is also revising the rules of practice to permit applicants 
to request that the Office permit other participating intellectual 
property offices to electronically retrieve certified copies of United 
States patent applications without payment of a fee. This electronic 
exchange of copies of priority documents will benefit applicants by 
reducing the cost of ordering paper certified copies of priority 
applications for filing in other participating intellectual property 
offices, and will benefit participating intellectual property offices 
by reducing the administrative costs associated with handling paper 
copies of priority documents and scanning them into their electronic 
image record management systems.

DATES: Effective Date: January 16, 2007.

FOR FURTHER INFORMATION CONTACT: Diana Oleksa, ((571) 272-3291), Legal 
Advisor for IT Policy, Office of Patent Cooperation Treaty Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy, or Robert A. Clarke ((571) 272-7735), Deputy 
Director, Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, at 
PatentEFW.comments@uspto.gov or directly by phone, or by facsimile to 
(571) 273-7735, marked to the attention of Ms. Oleksa, or by mail 
addressed to: Mail Stop Comments-Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450.

SUPPLEMENTARY INFORMATION: The Office has established a 21st Century 
Strategic Plan to transform the Office into a more quality-focused, 
highly productive, responsive organization supporting a market-driven 
intellectual property system. One goal of the 21st Century Strategic 
Plan is the electronic exchange of information and documents between 
intellectual property offices. The Office plans to leverage its image 
file wrapper (IFW) technology by negotiating agreements with other 
patent offices to permit the Office to obtain and provide electronic 
copies of priority documents. See 35 U.S.C. 2(b)(6) (authorizes the 
Office, subject to certain conditions, to use the services, records, 
facilities, or personnel of any instrumentality or foreign patent and 
trademark office or international organization to perform functions on 
its behalf) and 11 (authorizes the Office to exchange copies of 
specifications and drawings of United States patents and published 
applications for patents for those of other NAFTA or WTO member 
countries). Agreements to obtain and provide such copies have been 
established with the European Patent Office (EPO) and its member 
states, and are being considered with the Japan Patent Office (JPO), 
both of which offices will have the technical ability to provide and 
retrieve certified electronic copies of priority documents via

[[Page 1665]]

automated mechanisms. An intellectual property office with which the 
Office has such an agreement will be referred to as a ``participating 
intellectual property office.''
    Consistent with this goal, the Office is revising the rules of 
practice in title 37 of the Code of Federal Regulations (CFR) to 
provide for the electronic transfer of certified copies of priority 
documents from other intellectual property offices with which the 
Office has negotiated priority document exchange agreements. The Office 
is also revising the rules of practice to permit applicants to request 
that the Office permit other participating intellectual property 
offices to electronically retrieve certified copies of United States 
patent applications without payment of a fee. This electronic exchange 
of copies of priority documents will benefit applicants by reducing the 
cost of ordering paper certified copies of priority documents for 
filing in other participating intellectual property offices, and will 
benefit participating intellectual property offices by reducing the 
administrative costs associated with handling paper copies of priority 
applications and scanning them into electronic image record management 
systems.
    This direct electronic exchange of copies of priority documents is 
an exception to the requirement that applicant must provide a certified 
copy of a counterpart foreign application to be entitled to a right of 
priority under 35 U.S.C. 119(a)-(d). The American Inventors Protection 
Act of 1999 (AIPA), Pub. L. 106-113, 113 Stat. 1501, 1501A-552 through 
1501A-591 (1999), amended 35 U.S.C. 119(b) to (inter alia) provide 
that: ``[t]he Director may require a certified copy of the original 
foreign application, specification, and drawings upon which it is 
based, a translation if not in the English language, and such other 
information as the Director considers necessary.'' See 35 U.S.C. 
119(b)(3) (2000) (emphasis added). Prior to the enactment of the AIPA, 
35 U.S.C. 119(b) required that a certified copy of the original foreign 
application be filed in the Office for an application to be entitled to 
a right of priority under 35 U.S.C. 119(a)-(d). See 35 U.S.C. 119(b) 
(1994) (``[n]o application for patent shall be entitled to this right 
of priority unless a claim therefor and a certified copy of the 
original foreign application, specification, and drawings upon which it 
is based are filed in the Patent and Trademark Office before the patent 
is granted, or at such time during the pendency of the application as 
required by the Commissioner not earlier than six months after the 
filing of the application in this country'').
    If an applicant makes a proper request and an electronic copy of 
the counterpart foreign application is imported from another 
participating intellectual property office by the Office, the 
obligation to provide a certified copy of the foreign application would 
be satisfied (although the applicant may be required to provide an 
English-language translation of a non-English language foreign 
application under certain circumstances or such other information as 
the Director considers necessary). The agreements would also permit 
another participating intellectual property office to obtain electronic 
copies of priority documents from the Office (at no charge to the 
applicant) when an applicant furnishes the Office with written 
authority or after the application has been published.
    The agreements will enable a participating intellectual property 
office (e.g., the JPO, EPO, or the Office) to obtain an electronic copy 
of a priority document that was filed in another participating 
intellectual property office in accordance with the terms of the 
agreement. Likewise, the agreements will also enable a participating 
intellectual property office to obtain an electronic copy of a priority 
document that was filed in a non-participating intellectual property 
office from a participating intellectual property office in which a 
certified copy of the priority document has been filed and stored. The 
Office will provide forms for applicants to: (1) Request that the 
Office retrieve an electronic copy of an earlier filed foreign 
application (PTO/SB/38); and (2) permit other participating 
intellectual property offices to retrieve an electronic copy of an 
application filed in the Office (PTO/SB/39). Use of Office forms is 
strongly encouraged.
    The first form (PTO/SB/38) will permit applicants to request that 
the Office retrieve an electronic copy of any foreign application filed 
in an intellectual property office participating with the Office in a 
direct agreement to retrieve electronic copies of priority documents. 
The foreign application may have been filed directly with the 
participating intellectual property office, in which case the applicant 
would merely request that the Office retrieve an electronic copy of the 
priority application for which priority was claimed. Alternatively, the 
applicant may request that the Office retrieve an electronic copy of a 
foreign application originally filed in a non-participating 
intellectual property office that is stored in a patent application 
file in a participating intellectual property office. The Office 
intends to post a notification of such agreements in the Official 
Gazette including the date when applicants may take advantage of these 
agreements and any special provisions made in the agreement. If the 
foreign application was originally filed in a non-participating 
intellectual property office, but is stored in an application file or 
dossier of a participating intellectual property office, the request 
form must indicate the participating intellectual property office 
application number which contains the certified copy of the foreign 
application.
    Upon receipt of a timely filed request, the Office anticipates that 
at least two attempts will be made to retrieve a copy of the foreign 
application from the participating office. Applicants should consult 
the private Patent Application Information Retrieval (PAIR) system to 
determine if the copy of the foreign application was retrieved by the 
Office. Applicants are encouraged to contact the Electronic Business 
Center, rather than the examiner, if the counterpart foreign 
application has not been entered in the application file.
    The copy of the counterpart foreign application retrieved by the 
Office will be included in the Office's IFW system records pertaining 
to the application for which the counterpart foreign application was 
requested. Applicants will be able to inspect the counterpart foreign 
application through the private PAIR system. In addition, once the 
application has been published under 35 U.S.C. 122(b) or issued as a 
patent, any member of the public will be able to inspect the 
counterpart foreign application through the public PAIR system.
    The second form (PTO/SB/39) would be used to provide the Office 
with written authority to provide a copy of a patent application to 
participating foreign intellectual property offices at no cost to the 
applicant. Such written authority would be treated as authorizing the 
Office to provide the participating intellectual property offices 
indicated in the written authority with a copy of the application-as-
filed as well as a copy of the application-as-filed of its parent 
applications stored in electronic image form. Once an application is 
published under 35 U.S.C. 122(b), the application is open to the public 
and therefore the applicant's written authority is not necessary to 
permit other participating intellectual property offices to retrieve a 
certified copy of the priority application or a copy of the complete 
application file.

[[Page 1666]]

Discussion of Specific Rules

Section 1.14

    Sections 1.14(a)(1)(iii), (a)(1)(v), (a)(1)(vi), and (a)(1)(vii) 
are amended to change their reference to Sec.  1.14(h) to a reference 
to Sec.  1.14(i) for consistency with the redesignating of Sec.  
1.14(h) as Sec.  1.14(i).
    Section 1.14(a)(2) is amended to add ``in a published patent 
document or in an application as set forth'' to more clearly explain 
that the Office will provide information about a patent application if 
the application is identified in a published patent document such as a 
patent document of a foreign intellectual property office.
    Section 1.14(b) is amended to delete the reference to ``paragraphs 
(a)(1)(i) through (a)(1)(vi)''. The reference to the specific 
paragraphs in Sec.  1.14 that define when an application may be made 
available is not necessary, and the reference to only paragraphs 
(a)(1)(i) through (a)(1)(vi) is overly limiting as the Office may elect 
to only provide electronic access in other situations as well (e.g., 
where the application is maintained in the IFW system and has been 
published, the file may be made available through the public PAIR 
system).
    Current Sec.  1.14(h) is redesignated as Sec.  1.14(i), and a new 
Sec.  1.14(h) is added. New Sec.  1.14(h) defines under what 
circumstances an electronic copy of an application-as-filed may be 
retrieved from the Office by a participating intellectual property 
office. Section 1.14(h)(1) indicates that access to an application-as-
filed may be provided to any participating foreign intellectual 
property office if the application contains written authority granting 
such access. The Office will publish a list of participating foreign 
intellectual property offices in the Official Gazette. In addition, 
Sec.  1.14(h)(1) would indicate that the written authority should be 
submitted prior to the filing of a subsequent foreign application, in 
which priority is claimed to the patent application, with a 
participating intellectual property office. The written authority 
should be submitted prior to the filing of a subsequent foreign 
application to ensure that it is likely that the authorized 
participating foreign intellectual property office will be successful 
in its attempt to retrieve a copy of the priority application from the 
Office. However, a participating foreign intellectual property office 
would be able to retrieve an electronic copy of a priority application 
from the Office at no cost to the applicant without written authority 
if the application was published before a request for a copy of the 
priority application was received by the Office.
    Section 1.14(h)(2) indicates that the written authority must 
include the title of the invention (Sec.  1.71(a)), comply with the 
requirements of Sec.  1.14(c), and be submitted on a separate document 
(Sec.  1.4(c)). Accordingly, Sec.  1.14(h)(2) requires the written 
authority to be signed by: (1) an applicant; (2) an attorney or agent 
of record; (3) an authorized official of an assignee of record, made of 
record pursuant to Sec.  3.71 of this chapter; or (4) a registered 
attorney or agent named in the papers accompanying the application 
papers filed under Sec.  1.53 or the national stage documents filed 
under Sec.  1.495, if an executed oath or declaration pursuant to Sec.  
1.63 or Sec.  1.497 has not been filed.
    Section 1.14(h)(3) indicates that written authority provided under 
Sec.  1.14(h)(1) will be treated as authorizing the Office to provide 
the participating foreign intellectual property offices indicated in 
the written authority: (1) A copy of the application-as-filed; and (2) 
a copy of the application-as-filed for any application the filing date 
of which is claimed by the application in which the written authority 
has been filed.
    Section 1.19
    Section 1.19(b)(1)(iv) is added to indicate there is no fee for 
providing a foreign intellectual property office with a copy of an 
application as filed pursuant to a priority document exchange agreement 
(see Sec.  1.14(h)).
    Section 1.55
    Section 1.55(d) is added to permit the acceptance of an electronic 
copy of a counterpart foreign application under 35 U.S.C. 119(b) or 
Patent Cooperation Treaty (PCT) Rule 17 received from a participating 
intellectual property office, as an alternative to requiring the 
certified copy of such foreign application from the applicant. If the 
foreign application was filed in a participating intellectual property 
office and the applicant requests, in a separate document, that the 
Office obtain a copy of the foreign application from the participating 
intellectual property office, the Office will attempt to do so. If the 
Office is successful in its attempt to retrieve the electronic copy 
before the patent is granted, the applicant would be relieved of the 
existing duty to provide a certified copy of the foreign application. 
The applicant can confirm that the Office has received a copy of the 
foreign application by viewing the records in the private PAIR system.
    Section 1.55(d) also indicates that a copy of a foreign application 
obtained from a participating intellectual property office, where the 
foreign application was filed in a non-participating intellectual 
property office, will also be considered to satisfy the certified copy 
requirement. Thus, for example, an electronic copy of a foreign 
application from a participating intellectual property office will be 
considered to satisfy the requirement for a ``certified copy of the 
foreign application'' under Sec.  1.55 if an applicant: (1) Files a 
foreign application in a non-participating intellectual property 
office; (2) files a copy of the foreign application in a participating 
intellectual property office; (3) files a U.S. application with a 
proper request under Sec.  1.55(d); and (4) the Office obtains an 
electronic copy of the foreign application from the participating 
intellectual property office.
    Section 1.55(d) is an exception to the existing certified copy 
requirement. Section 1.55(d)(1) addresses the situation where the 
foreign application was filed in a participating foreign intellectual 
property office. Sections 1.55(d)(1)(i) through (d)(1)(iii) define 
under what circumstances a copy of a foreign application, obtained in 
accordance with an international agreement from a participating foreign 
intellectual property office, is an acceptable alternative to the 
current procedure of filing a certified copy of the foreign 
application. Section 1.55(d)(1)(i) indicates that, in order to take 
advantage of the international agreement, the applicant must file, in a 
separate document, a request that the Office obtain a copy of the 
foreign application from a participating foreign intellectual property 
office. A request form (PTO/SB/38) will be provided on the Office's 
Internet Web site for this purpose. Section 1.55(d)(1)(ii) indicates 
that the foreign application must be identified in the oath or 
declaration (Sec.  1.63(c)) or an application data sheet (Sec.  
1.76(a)(6)). Section 1.55(d)(1)(iii) indicates that the Office must 
receive the copy before the patent is granted (consistent with the 
general rule in Sec.  1.55(a)(2)). Section 1.55(d)(1)(iii) also 
indicates that the request should be made within the later of four 
months from the filing date of the application or sixteen months from 
the filing date of the foreign application in order to facilitate 
receipt of the copy of the foreign application by the Office before 
patent grant.
    Section 1.55(d)(2) addresses the situation where the foreign 
application was originally filed in a non-participating foreign 
intellectual property office, but a copy of the foreign application was 
filed in an application subsequently filed in a participating foreign 
intellectual property office.

[[Page 1667]]

Under these circumstances, the request under Sec.  1.55(d)(1)(i) must 
identify the participating foreign intellectual property office and the 
application number of the subsequent application in which the copy of 
the foreign application was filed. It is envisioned that the agreement 
with certain participating intellectual property offices may obviate 
the need for this information in the future.
    This change to Sec.  1.55 does not affect the requirement in Sec.  
1.55(a)(4) that applicant provide an English language translation of a 
non-English language foreign application (together with a statement 
that the translation of the certified copy is accurate) when the 
application is involved in an interference (Sec.  1.630), when 
necessary to overcome the date of a reference relied upon by the 
examiner, or when specifically required by the examiner.

Rule Making Considerations

Administrative Procedure Act

    This notice adopts changes to the rules of practice that facilitate 
electronic image record management of patent application files. The 
changes are limited to permitting and facilitating direct exchange of 
priority documents among intellectual property offices. Therefore, 
these rule changes involve interpretive rules, or rules of agency 
practice and procedure. See Bachow Communications Inc. v. FCC, 237 F.3d 
683, 690 (D.C. Cir. 2001) (rules governing an application process are 
``rules of agency organization, procedure, or practice'' and exempt 
from the Administrative Procedure Act's notice and comment 
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 
1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice 
promulgated under the authority of former 35 U.S.C. 6(a) (now in 35 
U.S.C. 2(b)(2)) are not substantive rules (to which the notice and 
comment requirements of the Administrative Procedure Act apply)), and 
Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) (``it is 
extremely doubtful whether any of the rules formulated to govern patent 
or trade-mark practice are other than `interpretive rules, general 
statements of policy, * * * procedure, or practice.' '') (quoting C.W. 
Ooms, The United States Patent Office and the Administrative Procedure 
Act, 38 Trademark Rep. 149, 153 (1948)). Accordingly, prior notice and 
an opportunity for public comment were not required pursuant to 5 
U.S.C. 553(b)(A) (or any other law), and thirty-day advance publication 
is not required pursuant to 5 U.S.C. 553(d) (or any other law).

Regulatory Flexibility Act

    As discussed previously, the changes in this final rule involve 
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and 
prior notice and an opportunity for public comment were not required 
pursuant to 5 U.S.C. 553(b)(A) (or any other law). As prior notice and 
an opportunity for public comment were not required pursuant to 5 
U.S.C. 553 (or any other law) for the changes in this final rule, a 
regulatory flexibility analysis under the Regulatory Flexibility Act (5 
U.S.C. 601 et seq.) is not required for the changes in this final rule. 
See 5 U.S.C. 603.

Executive Order 13132

    This rulemaking 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 rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act

    This rulemaking 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 
collection of information involved in this final rule have been 
previously reviewed and approved by OMB under control number 0651-0031.
    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 to 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, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
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), unless otherwise noted.


0
2. Section 1.14 is amended by revising paragraph (a)(1)(iii), 
(a)(1)(v), (a)(1)(vi), (a)(1)(vii), the introductory text of paragraph 
(a)(2), and paragraph (b), redesignating paragraph (h) as paragraph 
(i), and adding a new paragraph (h) to read as follows:


Sec.  1.14  Patent applications preserved in confidence.

    (a) * * *
    (1) * * *
    (iii) Published pending applications. A copy of the application-as-
filed, the file contents of the application, or a specific document in 
the file of a pending application that has been published as a patent 
application publication may be provided to any person upon request, and 
payment of the appropriate fee set forth in Sec.  1.19(b). If a 
redacted copy of the application was used for the patent application 
publication, the copy of the specification, drawings, and papers may be 
limited to a redacted copy. The Office will not provide access to the 
paper file of a pending application that has been published, except as 
provided in paragraph (c) or (i) of this section.
* * * * *
    (v) Unpublished pending applications (including provisional 
applications) whose benefit is claimed. A copy of the file contents of 
an unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec.  1.19(b)), if 
the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 
121, or 365 in an application that has issued as a U.S. patent, an 
application that has published as a statutory invention registration, a 
U.S. patent application

[[Page 1668]]

publication, or an international patent application publication that 
was published in accordance with PCT Article 21(2). A copy of the 
application-as-filed, or a specific document in the file of the pending 
application may also be provided to any person upon written request, 
and payment of the appropriate fee (Sec.  1.19(b)). The Office will not 
provide access to the paper file of a pending application, except as 
provided in paragraph (c) or (i) of this section.
    (vi) Unpublished pending applications (including provisional 
applications) that are incorporated by reference or otherwise 
identified. A copy of the application as originally filed of an 
unpublished pending application may be provided to any person, upon 
written request and payment of the appropriate fee (Sec.  1.19(b)), if 
the application is incorporated by reference or otherwise identified in 
a U.S. patent, a statutory invention registration, a U.S. patent 
application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2). 
The Office will not provide access to the paper file of a pending 
application, except as provided in paragraph (c) or (i) of this 
section.
    (vii) When a petition for access or a power to inspect is required. 
Applications that were not published or patented, that are not the 
subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in 
an application that has issued as a U.S. patent, an application that 
has published as a statutory invention registration, a U.S. patent 
application publication, or an international patent application 
publication that was published in accordance with PCT Article 21(2), or 
are not identified in a U.S. patent, a statutory invention 
registration, a U.S. patent application publication, or an 
international patent application that was published in accordance with 
PCT Article 21(2), are not available to the public. If an application 
is identified in the file contents of another application, but not the 
published patent application or patent itself, a granted petition for 
access (see paragraph (i)), or a power to inspect (see paragraph (c)) 
is necessary to obtain the application, or a copy of the application.
    (2) Information concerning a patent application may be communicated 
to the public if the patent application is identified in a published 
patent document or in an application as set forth in paragraphs 
(a)(1)(i) through (a)(1)(vi) of this section. The information that may 
be communicated to the public (i.e., status information) includes:
* * * * *
    (b) Electronic access to an application. Where a copy of the 
application file or access to the application may be made available 
pursuant to this section, the Office may at its discretion provide 
access to only an electronic copy of the specification, drawings, and 
file contents of the application.
* * * * *
    (h) Access by a Foreign Intellectual Property Office. (1) Access to 
the application-as-filed may be provided to any foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating 
foreign intellectual property office), if the application contains 
written authority granting such access. Written authority under this 
paragraph should be submitted prior to filing a subsequent foreign 
application with a participating intellectual property office in which 
priority is claimed to the patent application.
    (2) Written authority provided under paragraph (h)(1) of this 
section must include the title of the invention (Sec.  1.71(a)), comply 
with the requirements of paragraph (c) of this section, and be 
submitted on a separate document (Sec.  1.4(c)).
    (3) Written authority provided under paragraph (h)(1) of this 
section will be treated as authorizing the Office to provide to all 
participating foreign intellectual property offices indicated in the 
written authority in accordance with their respective agreements with 
the Office:
    (i) A copy of the application-as-filed; and
    (ii) A copy of the application-as-filed with respect to any 
application the filing date of which is claimed by the application in 
which written authority under paragraph (h)(1) of this section is 
filed.
* * * * *

0
3. Section 1.19 is amended by adding paragraph (b)(1)(iv) to read as 
follows:


Sec.  1.19  Document supply fees.

* * * * *
    (b) * * *
    (1) * * *
    (iv) If provided to a foreign intellectual property office pursuant 
to a priority document exchange agreement (see Sec.  1.14(h)(1)) ...... 
0.00
* * * * *

0
4. Section 1.55 is amended by adding a new paragraph (d) to read as 
follows:


Sec.  1.55  Claim for foreign priority.

* * * * *
    (d)(1) The requirement in this section for the certified copy of 
the foreign application will be considered satisfied if:
    (i) The applicant files a request, in a separate document, that the 
Office obtain a copy of the foreign application from a foreign 
intellectual property office participating with the Office in a 
bilateral or multilateral priority document exchange agreement 
(participating foreign intellectual property office (see Sec.  
1.14(h)(1));
    (ii) The foreign application is identified in the oath or 
declaration (Sec.  1.63(c)) or an application data sheet (Sec.  
1.76(a)(6)); and
    (iii) The copy of the foreign application is received by the Office 
within the period set forth in paragraph (a) of this section. Such a 
request should be made within the later of four months from the filing 
date of the application or sixteen months from the filing date of the 
foreign application.
    (2) If the foreign application was filed at a foreign intellectual 
property office that is not participating with the Office in a priority 
document exchange agreement, but a copy of the foreign application was 
filed in an application subsequently filed in a participating foreign 
intellectual property office, the request under paragraph (d)(1)(i) of 
this section must identify the participating foreign intellectual 
property office and the application number of the subsequent 
application in which a copy of the foreign application was filed.

    Dated: December 18, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E7-113 Filed 1-9-07; 8:45 am]
BILLING CODE 3510-16-P