July 2009 Revision of Patent Cooperation Treaty Procedures, 31372-31373 [E9-15303]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office
• Patent and Trademark Office

[Federal Register Volume 74, Number 125 (Wednesday, July 1, 2009)]
[Rules and Regulations]
[Pages 31372-31373]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E9-15303]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2009-0025]
RIN 0651-AC34


July 2009 Revision of Patent Cooperation Treaty Procedures

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
revising the rules of practice in title 37 of the Code of Federal 
Regulations (CFR) to conform them to certain amendments made to the 
Regulations under the Patent Cooperation Treaty (PCT) that take effect 
on July 1, 2009. These amendments result in a change to the procedure 
under the PCT whereby applicants may make amendments to the claims in 
an international application.

DATES: Effective Date: The changes to 37 CFR 1.485 are effective on 
July 1, 2009.

FOR FURTHER INFORMATION CONTACT: Richard R. Cole, Senior Legal 
Examiner, Office of PCT Legal Administration (OPCTLA) directly by 
telephone at (571) 272-3281, or by facsimile at (571) 273-0459.

SUPPLEMENTARY INFORMATION: During the September 2008 meeting of the 
Governing Bodies of the World Intellectual Property Organization 
(WIPO), the PCT Assembly adopted various amendments to the Regulations 
under the PCT that enter into force on July 1, 2009. The amended PCT 
Regulations were published in the PCT Gazette of December 11, 2008 (38/
2008), at pages 166-167. The amendments include provisions which modify 
the procedures for making amendments to the claims in an international 
application.
    The Patent Cooperation Treaty (PCT) enables an applicant to file 
one application, ``an international application'' or a ``PCT 
application,'' in a standardized format in a PCT Receiving Office and 
have that application acknowledged as a regular national or regional 
filing in as many Contracting States to the PCT as the applicant 
desires. The requirements for PCT applications are specified in the PCT 
Treaty Articles and the Regulations issued under the PCT Treaty (the 
PCT Regulations). Certain requirements of the PCT Treaty and PCT 
Regulations are reiterated in the USPTO's rules of practice in 37 CFR 
for the convenience of patent applicants. Changes to the PCT 
Regulations (PCT Rules 46.5 and 66.8) that govern the manner of making 
amendments to the claims in international applications will become 
effective on July 1, 2009. Under the current PCT Regulations, 
applicants are required to submit replacement pages for only those 
pages which contain changes, where under the revised PCT Regulations 
applicants will be required to submit a complete set of the claims when 
amending any of the claims. The USPTO's rules of practice in 37 CFR (37 
CFR 1.485) set forth the current practice for amending claims and must 
be changed to be consistent with the changes to the PCT Regulations.
    The changes to 37 CFR 1.485 are effective on July 1, 2009, and 
apply to any amendment filed in an international application on or 
after that date regardless of the filing date of the international 
application.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, part 1, is amended as 
follows:
    Section 1.485: Section 1.485 is amended to require that amendments 
to the claims in a PCT international application must be made in 
accordance with PCT Rule 66.8.

Rulemaking Considerations

    A. Administrative Procedure Act: The change in this final rule 
merely revises the USPTO's rules of practice to conform to the 
requirements of the PCT Regulations that become effective on July 1, 
2009. 35 U.S.C. 364(a) provides that international applications shall 
be processed by the USPTO in accordance with the applicable provisions 
of the PCT, the Regulations under the PCT and Title 35 of the United 
States Code. Therefore, these rule changes involve interpretive rules 
or rules of agency practice and procedure under 5 U.S.C. 553(b)(A). 
Accordingly, the changes in this final rule may be adopted without 
prior notice and opportunity for public comment under 5 U.S.C. 553(b) 
and (c), or thirty-day advance publication under 5 U.S.C. 553(d). See 
Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 
1710 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment on rulemaking for 
```interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice.''' (quoting 5 U.S.C. 
553(b)(A))).
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 (or any 
other law), neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    D. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    E. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
Tribes; (2) impose substantial direct compliance costs on Indian Tribal 
governments; or (3) preempt Tribal law. Therefore, a Tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    F. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    G. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    H. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    I. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    J. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of

[[Page 31373]]

1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule the USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office.
    K. Unfunded Mandates Reform Act of 1995: The changes proposed in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and Tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    L. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    M. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions which involve the use of 
technical standards.
    N. Paperwork Reduction Act: This notice 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 notice has been reviewed and approved by OMB under OMB control 
number 0651-0021. The USPTO is not resubmitting an information 
collection package to OMB for its review and approval because the 
changes in this notice do not affect the information collection 
requirements associated with the information collection under OMB 
control number 0651-0021.
    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 A. Clarke, 
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 recordkeeping 
requirements, Small businesses.

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 1.485 is revised to read as follows:


Sec.  1.485   Amendments by applicant during international preliminary 
examination.

    The applicant may make amendments at the time of filing the Demand. 
The applicant may also make amendments within the time limit set by the 
International Preliminary Examining Authority for reply to any 
notification under Sec.  1.484(b) or to any written opinion. Any such 
amendments must be made in accordance with PCT Rule 66.8.

    Dated: June 24, 2009.
John J. Doll,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. E9-15303 Filed 6-30-09; 8:45 am]
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