Revision of Patent Term Adjustment Provisions Relating to Appellate Review, 81432-81437 [2011-33150]

Download as PDF 81432 Federal Register / Vol. 76, No. 249 / Wednesday, December 28, 2011 / Proposed Rules Authority for This Rulemaking Title 49 of the United States Code specifies the FAA’s authority to issue rules on aviation safety. Subtitle I, section 106, describes the authority of the FAA Administrator. ‘‘Subtitle VII: Aviation Programs,’’ describes in more detail the scope of the Agency’s authority. We are issuing this rulemaking under the authority described in ‘‘Subtitle VII, Part A, Subpart III, Section 44701: General requirements.’’ Under that section, Congress charges the FAA with promoting safe flight of civil aircraft in air commerce by prescribing regulations for practices, methods, and procedures the Administrator finds necessary for safety in air commerce. This regulation is within the scope of that authority because it addresses an unsafe condition that is likely to exist or develop on products identified in this rulemaking action. Regulatory Findings We determined that this proposed AD would not have federalism implications under Executive Order 13132. This proposed AD would not have a substantial direct effect on the States, on the relationship between the national Government and the States, or on the distribution of power and responsibilities among the various levels of government. For the reasons discussed, I certify this proposed regulation: 1. Is not a ‘‘significant regulatory action’’ under Executive Order 12866; 2. Is not a ‘‘significant rule’’ under the DOT Regulatory Policies and Procedures (44 FR 11034, February 26, 1979); 3. Will not affect intrastate aviation in Alaska to the extent that it justifies making a regulatory distinction; and 4. Will not have a significant economic impact, positive or negative, on a substantial number of small entities under the criteria of the Regulatory Flexibility Act. We prepared an economic evaluation of the estimated costs to comply with this proposed AD and placed it in the AD docket. mstockstill on DSK4VPTVN1PROD with PROPOSALS List of Subjects in 14 CFR Part 39 Air transportation, Aircraft, Aviation safety, Incorporation by Reference, Safety. The Proposed Amendment Accordingly, under the authority delegated to me by the Administrator, the FAA proposes to amend 14 CFR part 39 as follows: VerDate Mar<15>2010 17:25 Dec 27, 2011 Jkt 226001 PART 39—AIRWORTHINESS DIRECTIVES (g) Subject Air Transport Association of America (ATA) Code 7600, Engine Control. 1. The authority citation for part 39 continues to read as follows: Issued in Fort Worth, Texas, on December 16, 2011. Jorge Castillo, Acting Manager, Rotorcraft Directorate, Aircraft Certification Service. Authority: 49 U.S.C. 106(g), 40113, 44701. § 39.13 [Amended] 2. The FAA amends § 39.13 by adding the following new AD: Eurocopter France: Docket No. FAA–2011– 1408; Directorate Identifier 2008–SW– 10–AD. (a) Applicability This AD applies to Model SA330F, G, J and AS332C, L, L1, and L2 helicopters, certificated in any category. [FR Doc. 2011–33248 Filed 12–27–11; 8:45 am] BILLING CODE 4910–13–P DEPARTMENT OF COMMERCE United States Patent and Trademark Office 37 CFR Part 1 (b) Unsafe Condition [Docket No. PTO–P–2011–0058] This AD defines the unsafe condition as jamming of one of the fuel shut-off control levers due to solidified grease in a tangential gearbox (gearbox). This condition could prevent the shut off of engine fuel and prevent the parallel-mounted electrical micro switches, normally activated by shutting off both of the fuel shut-off control levers, from switching off the electrical power system during an emergency shut down. RIN 0651–AC63 You are responsible for performing each action required by this AD within the specified compliance time unless it has already been accomplished prior to that time. (d) Actions Within 50 hours time-in-service, clean, inspect, and lubricate each gearbox and adjust, as necessary, the fuel shut-off control travel by following the Accomplishment Instructions, paragraph 2.B.2. (reference Figures 3 through 7), of Eurocopter Alert Service Bulletin (ASB) No. 76.03, Revision 1, dated March 22, 2007, for the Model SA330F, G, and J, or ASB No. 76.00.04, Revision 1, dated March 22, 2007, for the Model AS332C, L, L1, and L2 helicopters. (e) Alternative Methods of Compliance (AMOC) (1) The Manager, Safety Management Group, Rotorcraft Directorate, FAA, may approve AMOCs for this AD. Send your proposal to: Eric Haight, Aviation Safety Engineer, Regulations and Policy Group, Rotorcraft Directorate, FAA, 2601 Meacham Blvd., Fort Worth, Texas 76137; telephone (817) 222–5110; email eric.haight@faa.gov. (2) For operations conducted under a Part 119 operating certificate or under Part 91, Subpart K, we suggest that you notify your principal inspector or, lacking a principal inspector, the manager of the local flight standards district office or certificate holding district office before operating any aircraft complying with this AD through an AMOC. (f) Additional Information The subject of this AD is addressed in European Aviation Safety Agency (EASA) AD No. 2007–0082–E, dated March 27, 2007. Frm 00032 Fmt 4702 United States Patent and Trademark Office, Commerce. ACTION: Notice of proposed rule making. AGENCY: The United States Patent and Trademark Office (Office) is proposing to revise the patent term adjustment provisions of the rules of practice in patent cases. The patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) provide for patent term adjustment if, inter alia, the issuance of the patent was delayed due to appellate review by the Board of Patent Appeals and Interferences (BPAI) or by a Federal court and the patent was issued under a decision in the review reversing an adverse determination of patentability. The Office is proposing to change the rules of practice to indicate that the period of appellate review under the patent term adjustment provisions of the AIPA begins when jurisdiction over the application passes to the BPAI rather than the date on which a notice of appeal to the BPAI is filed. The Office recently published the final rule (eff. date Jan 23, 2012) concerning practice before the BPAI in ex parte appeals and defined that jurisdiction of the appeal passes to the BPAI at the earlier of the filing of the reply brief or upon the expiration of the time in which to file a reply brief. See Rules Of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals 76 FR 72270, 72273 (November 22, 2011). Accordingly, for purposes of calculating patent term adjustment based upon appellate review, the impact of the rule change would be to reduce the amount of patent term adjustment awarded for SUMMARY: (c) Compliance PO 00000 Revision of Patent Term Adjustment Provisions Relating to Appellate Review Sfmt 4702 E:\FR\FM\28DEP1.SGM 28DEP1 mstockstill on DSK4VPTVN1PROD with PROPOSALS Federal Register / Vol. 76, No. 249 / Wednesday, December 28, 2011 / Proposed Rules successful appeal under 35 USC 154(b)(1)(C)(iii). However, the impact may be offset by potentially increasing the amount of patent term adjustment awarded for failing to issue the patent within three years of the actual filing date in the United States under 35 USC 154(b)(1)(B). The patent term adjustment award for the three year provision may increase when the examiner reopens prosecution after a notice of appeal is filed (e.g., following a pre-appeal conference or an appeal conference) and the patent issues thereafter, because the period of time between the filing of the notice of appeal and the examiner’s reopening of prosecution would no longer be deducted under 35 USC 154(b)(1)(B)(ii). DATES: Comment Deadline Date: Written comments must be received on or before January 27, 2012. No public hearing will be held. ADDRESSES: Comments concerning this notice should be sent by electronic mail message over the Internet addressed to AC63.comments@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, marked to the attention of Kery A. Fries, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy. Although comments may be submitted by mail, the Office prefers to receive comments via the Internet. Comments may also be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site (https:// www.regulations.gov) for additional instructions on providing comments via the Federal eRulemaking Portal. The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the Internet (https:// www.uspto.gov). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments. FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Senior Legal Advisor, Office of Patent Legal Administration, by telephone at (571) 272–7757, by mail addressed to: Box Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Kery A. Fries. VerDate Mar<15>2010 17:25 Dec 27, 2011 Jkt 226001 The Uruguay Round Agreements Act (URAA) amended 35 U.S.C. 154 to provide that the term of a patent ends on the date that is twenty years from the filing date of the application, or the earliest filing date for which a benefit is claimed under 35 U.S.C. 120, 121, or 365(c). See Public Law 103–465, § 532(a)(1), 108 Stat. 4809, 4983–85 (1994). The URAA also contained provisions, codified at 35 U.S.C. 154(b), for patent term extension due to certain examination delays. Under the patent term extension provisions of 35 U.S.C. 154(b) as amended by the URAA, an applicant is entitled to patent term extension for delays due to interference, secrecy order, or successful appellate review. See 35 U.S.C. 154(b) (1995). The Office implemented the patent term extension provisions of the URAA in a final rule published in April of 1995. See Changes to Implement 20-Year Patent Term and Provisional Applications, 60 FR 20195 (Apr. 25, 1995) (twenty-year patent term final rule). The American Inventors Protection Act of 1999 (AIPA) further amended 35 U.S.C. 154(b) to expand the list of administrative delays which may give rise to patent term adjustment (characterized as ‘‘patent term adjustment’’ in the AIPA). See Public Law 106–113, 113 Stat. 1501, 1501A– 552 through 1501A–591 (1999). Specifically, under the patent term adjustment provisions of 35 U.S.C. 154(b) as amended by the AIPA, an applicant is entitled to patent term adjustment for the following reasons: (1) If the Office fails to take certain actions during the examination and issue process within specified time frames (known as the ‘‘A’’ provision, being in 35 U.S.C. 154(b)(1)(A)); (2) if the Office fails to issue a patent within three years of the actual filing date of the application in the United States (known as the ‘‘B’’ provision, being in 35 U.S.C. 154(b)(1)(B)); and (3) for delays due to interference, secrecy order, or successful appellate review (known as the ‘‘C’’ provision, being in 35 U.S.C. 154(b)(1)(C)). See 35 U.S.C. 154(b)(1). The Office implemented the patent term adjustment provisions of 35 U.S.C. 154(b) as amended by the AIPA in a final rule published in September of 2000. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56365 (Sept. 18, 2000) (patent term adjustment final rule). The patent term adjustment provisions of the AIPA apply to original (i.e., non-reissue) utility and plant applications filed on or after May 29, SUPPLEMENTARY INFORMATION: PO 00000 Frm 00033 Fmt 4702 Sfmt 4702 81433 2000. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR at 56367. The patent term extension provisions of the URAA (for delays due to secrecy order, interference or successful appellate review) continue to apply to original utility and plant applications filed on or after June 8, 1995, and before May 29, 2000. See id. In April 2011 the Office proposed to revise the patent term extension and adjustment provisions of the URAA and AIPA to provide, with certain exceptions, that the reopening of prosecution by an examiner would be considered a ‘‘decision in the review reversing an adverse determination of patentability,’’ since in many such situations the reopening of the application after a notice of appeal has been filed is the result of a decision in the pre-BPAI review that there is some weakness in the adverse patentability determination from which the appeal was taken, making it appropriate to treat such situations as a ‘‘decision in the review reversing an adverse determination of patentability’’ under the patent term adjustment and extension provisions. See Revision of Patent Term Extension and Adjustment Provisions Relating to Appellate Review and Information Disclosure Statements, 76 FR 18990 (Apr. 6, 2011). The Office received several comments suggesting that a better approach would be to treat the appellate review period as beginning when jurisdiction passes to the BPAI, rather than on the date a notice of appeal to the BPAI was filed. This approach would give applicants the possibility of obtaining patent term adjustment under the ‘‘B’’ provision for Office delays during the pre-BPAI process (including when prosecution is reopened). Specifically, the Office would not subtract from the ‘‘B’’ period the period of time from the filing of the notice of appeal to the earlier of the filing of a reply brief or the expiration of the period to file the reply brief. The Office has decided to seek public comment on this approach. Accordingly, the Office is proposing to change its interpretation of the appellate review language of the ‘‘B’’ provision (35 U.S.C. 154(b)(1)(B)(ii)), and provide that appellate review begins on the date on which jurisdiction over the application passes to the Board of Patent Appeals and Interferences under 37 CFR 41.35 (rather than the date on which a notice of appeal under 35 U.S.C. 134 was filed as in the current rule). The ‘‘B’’ provision provides for the possibility of patent term adjustment ‘‘if the issue of an original patent is delayed due to the failure of the United States E:\FR\FM\28DEP1.SGM 28DEP1 mstockstill on DSK4VPTVN1PROD with PROPOSALS 81434 Federal Register / Vol. 76, No. 249 / Wednesday, December 28, 2011 / Proposed Rules Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States.’’ 35 U.S.C. 154(b)(1)(B). The ‘‘B’’ provision also provides that certain periods are not included in determining whether the issue of a patent is delayed due to the failure of the Office to issue the patent within three years of its filing date, one of such periods being ‘‘any time consumed by appellate review by the Board of Patent Appeals and Interferences or by a Federal court.’’ 35 U.S.C. 154(b)(1)(B)(ii). Since the period of appellate review by the BPAI or a Federal court is not included in determining whether the issue of a patent is delayed due to the failure of the Office to issue the patent within three years of its filing date under the ‘‘B’’ provision, a later beginning of the appellate review by the BPAI, as now being proposed, would result in the possibility of a greater period of patent term adjustment under the ‘‘B’’ ` provision vis-a-vis the Office’s interpretation of this provision in 2000. The ‘‘C’’ provision provides for the possibility of patent term adjustment ‘‘if the issue of an original patent is delayed due to’’ inter alia ‘‘appellate review by the Board of Patent Appeals and Interferences or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.’’ 35 U.S.C 154(b)(1)(C). The Office is also proposing to change its interpretation of the appellate review language of the ‘‘C’’ provision (35 U.S.C. 154(b)(1)(C)(iii)). To change the interpretation of the appellate review language of the ‘‘B’’ provision without also changing the appellate review language of the ‘‘C’’ provision would be difficult to justify because it would require the Office to interpret the same statutory term, ‘‘appellate review by the Board,’’ appearing in two closely related provisions, in two different ways. Doing so violates the well-recognized canon of statutory interpretation that the same terms appearing in related statutory provisions are to be given the same meaning. See, e.g., Yi v. Fed. Bureau of Prisons, 412 F.3d 526, 531 (4th Cir. 2005). Since the period of adjustment under the appellate review portion of the ‘‘C’’ provision is the period of appellate review by the BPAI or by a Federal court, a later beginning of the appellate review by the BPAI, as now being proposed, would result in the possibility of a lesser period of patent term adjustment under the ‘‘C’’ ` provision vis-a-vis the Office’s interpretation of this provision in 2000. VerDate Mar<15>2010 17:25 Dec 27, 2011 Jkt 226001 The Office recognizes that there is a question as to whether the URAA should be considered instructive in interpreting the ‘‘C’’ provisions of 35 U.S.C. 154(b) as amended by the AIPA. The Office has, until now, treated the AIPA patent term adjustment provisions as an extension of, rather than a replacement for, the URAA patent term extension provisions. The AIPA (like the URAA) provided patent term adjustment for delays caused by secrecy order, interference proceedings, and successful appellate review (the ‘‘C’’ provision), with the legislative history characterizing this provision as the ‘‘existing’’ provisions. See H.R. Rep. No. 106–464, at 125 (1999). The appellate review provision of the URAA provides for patent term extension if ‘‘the issue of a patent is delayed due to appellate review by the Board of Patent Appeals and Interferences or by a Federal court and the patent is issued pursuant to a decision in the review reversing an adverse determination of patentability,’’ and specifically defines the period of appellate review as ‘‘includ[ing] any period beginning on the date on which an appeal is filed under section 134 or 141 of this title, or on which an action is commenced under section 145 of this title, and ending on the date of a final decision in favor of the applicant.’’ See 35 U.S.C. 154(b)(2) and 154(b)(3)(A) as amended by § 532(a) of the URAA, 108 Stat. at 4984. Since the appellate review provisions of the AIPA use the same phrase as the URAA appellate review provision (‘‘appellate review by the Board of Patent Appeals and Interferences or by a Federal court’’) and the AIPA provides no alternative definition of the date that is the beginning of the period of appellate review by the BPAI or by a Federal court, the Office originally interpreted the beginning of the pendency of ‘‘appellate review by the Board of Patent Appeals and Interferences or by a Federal court’’ (35 U.S.C. 154(b)(1)(C)(iii)) using the guidance provided in 35 U.S.C. 154(b)(3)(A) as amended by the URAA for the beginning of the period of appellate review, namely that the beginning of the period of appellate review is the date on which an appeal to the BPAI is filed under 35 U.S.C. 134. See Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR, 17215, 17218 and 17227 (Mar. 31, 2000). The USPTO did not receive any comment on its original interpretation of this provision. Finally, the U.S. Court of Appeals for the Federal Circuit has also in passing characterized the ‘‘C’’ provision of the PO 00000 Frm 00034 Fmt 4702 Sfmt 4702 35 U.S.C. 154(b)(1)(C) as the patent term extension provisions of the URAA. See Wyeth v. Kappos, 591 F.3d 1364, 1372 (Fed. Cir. 2010) (‘‘Before enactment of the AIPA, section 154(b) only provided extensions for the category that now fall under the C adjustments’’). The Office has reconsidered its prior position and now believes that the better view is that the URAA’s express definition of the appellate-review period should not carry over to the ‘‘C’’ provision of AIPA, because the URAA definition is completely absent from the AIPA. It is a canon of statutory construction that Congress is presumed to intend its statutory amendments to have ‘‘real and substantial effect.’’ Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 258–59 (2004). Thus, when Congress deletes a term or provision from a statute, it is inappropriate to read that term or provision back into the statute. See id. (holding that because Congress amended 28 U.S.C. 1782(a) to delete the requirement that proceedings covered by the statute be ‘‘pending,’’ Court rejected view that this statute comes into play only for pending proceedings). Likewise, the Office now believes that it is not appropriate to read back into the ‘‘C’’ provision of the AIPA the appellatereview definition that Congress deleted from Title 35. Therefore, the Office is also proposing to change its interpretation of the appellate review language of the ‘‘C’’ provision (35 U.S.C. 154(b)(1)(C)(iii)), and also to provide that appellate review begins on the date on which jurisdiction over the application passes to the BPAI under 37 CFR 41.35 (rather than the date on which a notice of appeal under 35 U.S.C. 134 was filed as in the current rule). The AIPA also sets forth a number of conditions and limitations on any patent term adjustment accrued under 35 U.S.C. 154(b)(1). Specifically, 35 U.S.C. 154(b)(2)(C) provides, in part, that ‘‘[t]he period of adjustment of the term of a patent under [35 U.S.C. 154(b)(1)] shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application’’ and that ‘‘[t]he Director shall prescribe regulations establishing the circumstances that constitute a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application.’’ 35 U.S.C. 154(b)(2)(C)(i) and (iii). The rules of practice (37 CFR 41.37) require that an appeal brief be filed within two months from the date of filing of the notice of appeal under 35 U.S.C. 134 E:\FR\FM\28DEP1.SGM 28DEP1 Federal Register / Vol. 76, No. 249 / Wednesday, December 28, 2011 / Proposed Rules mstockstill on DSK4VPTVN1PROD with PROPOSALS and 37 CFR 41.31. An applicant, however, may delay or prevent the passing of jurisdiction of the application to the BPAI by: (1) Obtaining an extension of time to file the appeal brief; (2) filing an appeal brief that does not comply with the requirements of 37 CFR 41.37; or (3) seeking further prosecution before the examiner by filing a request for continued examination under 37 CFR 1.114. Therefore, the Office is proposing, under its authority under 35 U.S.C. 154(b)(2)(C), to provide that the failure to file an appeal brief in compliance with 37 CFR 41.37 within two months from the date on which a notice of appeal to the BPAI was filed under 35 U.S.C. 134 and 37 CFR 41.31 constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. Discussion of Specific Rules Title 37 of the Code of Federal Regulations, Part 1, is proposed to be amended as follows: Section 1.703: Section 1.703(b)(4), which defines the period of appellate review in 35 U.S.C. 154(b)(1)(B)(ii), is amended to define this period as the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the BPAI under § 41.35 of this title and ending on the date of a final decision in favor of the applicant by the BPAI or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. Section 1.703(b)(4) currently defines this period as beginning on the date on which a notice of appeal to the BPAI was filed under 35 U.S.C. 134 and § 41.31. Section 1.703(e), which defines the period of appellate review in 35 U.S.C. 154(b)(1)(C)(iii), is amended to define this period as the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the BPAI under § 41.35 of this title and ending on the date of a final decision in favor of the applicant by the BPAI or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. Section 1.703(e) currently defines this period as beginning on the date on which a notice of appeal to the BPAI was filed under 35 U.S.C. 134 and § 41.31. Section 1.704: Section 1.704(c) is amended to provide that the failure to file an appeal brief in compliance with § 41.37 within two months from the date on which a notice of appeal to the BPAI was filed under 35 U.S.C. 134 and § 41.31 constitutes a failure of an applicant to engage in reasonable efforts VerDate Mar<15>2010 17:25 Dec 27, 2011 Jkt 226001 to conclude processing or examination of an application. Section 1.704(c) would also provide that in such a case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the date on which a notice of appeal to the Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and § 41.31 of this title and ending on the date an appeal brief was filed in compliance with 41.37 or a request for continued examination was filed in compliance with § 1.114. Rule Making Considerations: A. 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 proposed in this notice will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b). The changes to the rules of practice proposed in this notice: (1) Revise the provisions that define the beginning and ending dates of the period of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii) to provide that this period begins on the date on which jurisdiction over the application passes to the BPAI under 37 CFR 41.35; and (2) provide that that the failure to file a proper appeal brief within two months from the date on which a notice of appeal to the BPAI was filed, as required by 35 U.S.C. 134, constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. This notice does not propose to add any additional requirements (including information collection requirements) or fees for patent applicants or patentees. The proposed changes to 37 CFR 1.703(b)(4) and (e) merely reinterpret the beginning and ending dates of the period of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii). They do not impose any additional burden on applicants. The proposed change to 37 CFR 1.704(c) specifies that the failure to file a proper appeal brief within two months from the date on which a notice of appeal to the BPAI was filed, as required by 35 U.S.C. 134, constitutes failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application would not have will not have a significant economic impact on a substantial number of small entities because: (1) applicants are not entitled PO 00000 Frm 00035 Fmt 4702 Sfmt 4702 81435 to patent term adjustment for examination delays that result from their delay in prosecuting the application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR 1.704(a)); and (2) applicants may avoid any consequences from this provision simply by filing an appeal brief in compliance with 37 CFR 41.37 (or filing a request for continued examination under 37 CFR 1.114) within two months from the date on which a notice of appeal to the BPAI was filed as required by 35 U.S.C. 134 and § 41.31. For the foregoing reasons, neither of the changes proposed in this notice will have a significant economic impact on a substantial number of small entities. B. Executive Order 12866 (Regulatory Planning and Review): This rule making has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993). C. Executive Order 13563 (Improving Regulation and Regulatory Review): The Office has complied with Executive Order 13563. Specifically, the Office has, to the extent feasible and applicable: (1) Made a reasoned determination that the benefits justify the costs of the rule; (2) tailored the rule to impose the least burden on society consistent with obtaining the regulatory objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance objectives; (5) identified and assessed available alternatives; (6) involved the public in an open exchange of information and perspectives among experts in relevant disciplines, affected stakeholders in the private sector and the public as a whole, and provided on-line access to the rule making docket; (7) attempted to promote coordination, simplification and harmonization across government agencies and identified goals designed to promote innovation; (8) considered approaches that reduce burdens and maintain flexibility and freedom of choice for the public; and (9) ensured the objectivity of scientific and technological information and processes. D. Executive Order 13132 (Federalism): 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). E. Executive Order 13175 (Tribal Consultation): This rule making 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 E:\FR\FM\28DEP1.SGM 28DEP1 mstockstill on DSK4VPTVN1PROD with PROPOSALS 81436 Federal Register / Vol. 76, No. 249 / Wednesday, December 28, 2011 / Proposed Rules required under Executive Order 13175 (Nov. 6, 2000). F. Executive Order 13211 (Energy Effects): This rule making is not a significant energy action under Executive Order 13211 because this rule making 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 rule making 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 rule making 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 rule making 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 1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the United States Patent and Trademark Office will submit a report containing the final rule and other required information to the U.S. Senate, the U.S. House of Representatives and the Comptroller General of the Government Accountability Office. The changes in this notice are not expected to result in an annual effect on the economy of 100 million dollars or more, a major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-based enterprises to compete with foreignbased enterprises in domestic and export markets. Therefore, this notice is not expected to result in a ‘‘major rule’’ as defined in 5 U.S.C. 804(2). 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 VerDate Mar<15>2010 17:25 Dec 27, 2011 Jkt 226001 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 rule making 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 rule making does not contain provisions which involve the use of technical standards. N. Paperwork Reduction Act: The rules of practice pertaining to patent term adjustment and extension have been reviewed and approved by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) under OMB control number 0651–0020. The changes to the rules of practice proposed in this notice: (1) Revise the provisions that define the beginning and ending dates of the period of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii) to provide that this period begins on the date on which jurisdiction over the application passes to the BPAI under 37 CFR 41.35; and (2) provide that that the failure to file a proper appeal brief within two months from the date on which a notice of appeal to the BPAI was filed, as required by 35 U.S.C. 134, constitutes a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. This notice does not propose to add any additional requirements (including information collection requirements) or fees for patent applicants or patentees. Therefore, the Office is not resubmitting information collection packages to OMB for its review and approval because the changes proposed in this notice do not affect the information collection requirements associated with the information collections approved under OMB control number 0651–0020 or any other information collections. Notwithstanding any other provision of law, no person is required to respond to nor shall any 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. PO 00000 Frm 00036 Fmt 4702 Sfmt 4702 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. For the reasons set forth in the preamble, 37 CFR part 1 is proposed to be amended as follows: PART 1—RULES OF PRACTICE IN PATENT CASES 1. The authority citation for 37 CFR Part 1 continues to read as follows: Authority: 35 U.S.C. 2(b)(2). 2. Section 1.703 is amended by revising paragraph (b)(4) and (e) to read as follows: § 1.703 Period of adjustment of patent term due to examination delay. * * * * * (b) * * * (4) The number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Board of Patent Appeals and Interferences under § 41.35 of this title and ending on the date of the last decision by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. * * * * * (e) The period of adjustment under § 1.702(e) is the sum of the number of days, if any, in the period beginning on the date on which jurisdiction over the application passes to the Board of Patent Appeals and Interferences under § 41.35 of this title and ending on the date of a final decision in favor of the applicant by the Board of Patent Appeals and Interferences or by a Federal court in an appeal under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. * * * * * 3. Section 1.704 is amended by redesignating paragraph (c)(9) through (c)(11) as (c)(10) through (c)(12), respectively, and adding a new paragraph (c)(9) to read as follows: § 1.704 Reduction of period of adjustment of patent term. * * * * * (c) * * * (9) Failure to file an appeal brief in compliance with § 41.37 within two months from the date on which a notice of appeal to the Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and § 41.31 of this title, in which case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date two months from the date on which a notice of appeal to the E:\FR\FM\28DEP1.SGM 28DEP1 Federal Register / Vol. 76, No. 249 / Wednesday, December 28, 2011 / Proposed Rules Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 and § 41.31 of this title and ending on the date an appeal brief in compliance with 41.37 or a request for continued examination in compliance with § 1.114 was filed; * * * * * Dated: December 15, 2011. David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2011–33150 Filed 12–27–11; 8:45 am] BILLING CODE 3510–16–P ENVIRONMENTAL PROTECTION AGENCY 40 CFR Part 721 [EPA–HQ–OPPT–2011–0633; FRL–9325–9] RIN 2070–AB27 Proposed Significant New Use Rule for Phenol, 2,4-dimethyl-6-(1methylpentadecyl)Environmental Protection Agency (EPA). ACTION: Proposed rule. AGENCY: EPA is proposing a significant new use rule (SNUR) under section 5(a)(2) of the Toxic Substances Control Act (TSCA) for the chemical substance identified as phenol, 2,4-dimethyl-6-(1methylpentadecyl)- (PMN P–94–209; CAS No. 134701–20–5). This action would require persons who intend to manufacture, import, or process the substance for an activity that is designated as a significant new use by this proposed rule to notify EPA at least 90 days before commencing that activity. The required notification would provide EPA with the opportunity to evaluate the intended use and, if necessary, to prohibit or limit that activity before it occurs. DATES: Comments must be received on or before January 27, 2012. ADDRESSES: Submit your comments, identified by docket identification (ID) number EPA–HQ–OPPT–2011–0633, by one of the following methods: • Federal eRulemaking Portal: https:// www.regulations.gov. Follow the online instructions for submitting comments. • Mail: Document Control Office (7407M), Office of Pollution Prevention and Toxics (OPPT), Environmental Protection Agency, 1200 Pennsylvania Ave., NW., Washington, DC 20460– 0001. • Hand Delivery: OPPT Document Control Office (DCO), EPA East Bldg., mstockstill on DSK4VPTVN1PROD with PROPOSALS SUMMARY: VerDate Mar<15>2010 17:25 Dec 27, 2011 Jkt 226001 Rm. 6428, 1201 Constitution Ave. NW., Washington, DC. Attention: Docket ID Number EPA–HQ–OPPT–2011–0633. The DCO is open from 8 a.m. to 4 p.m., Monday through Friday, excluding legal holidays. The telephone number for the DCO is (202) 564–8930. Such deliveries are only accepted during the DCO’s normal hours of operation, and special arrangements should be made for deliveries of boxed information. Instructions: Direct your comments to docket ID number EPA–HQ–OPPT– 2011–0633. EPA’s policy is that all comments received will be included in the docket without change and may be made available online at https:// www.regulations.gov, including any personal information provided, unless the comment includes information claimed to be Confidential Business Information (CBI) or other information whose disclosure is restricted by statute. Do not submit information that you consider to be CBI or otherwise protected through regulations.gov or email. The regulations.gov Web site 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 email comment directly to EPA without going through regulations.gov, your email address will be automatically captured and included as part of the comment that is placed in the 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 docket index available at https://www.regulations.gov. 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 electronically at https://www.regulations.gov, or, if only available in hard copy, at the OPPT Docket. The OPPT Docket is located in the EPA Docket Center (EPA/DC) at Rm. 3334, EPA West Bldg., 1301 Constitution Ave. NW., Washington, DC. The EPA/DC Public Reading Room hours of operation are 8:30 a.m. to 4:30 PO 00000 Frm 00037 Fmt 4702 Sfmt 4702 81437 p.m., Monday through Friday, excluding legal holidays. The telephone number of the EPA/DC Public Reading Room is (202) 566–1744, and the telephone number for the OPPT Docket is (202) 566–0280. Docket visitors are required to show photographic identification, pass through a metal detector, and sign the EPA visitor log. All visitor bags are processed through an X-ray machine and subject to search. Visitors will be provided an EPA/DC badge that must be visible at all times in the building and returned upon departure. FOR FURTHER INFORMATION CONTACT: For technical information contact: Abeer Hashem, Chemical Control Division (7405M), Office of Pollution Prevention and Toxics, Environmental Protection Agency, 1200 Pennsylvania Ave., NW., Washington, DC 20460–0001; telephone number: (202) 564–1117; email address: hashem.abeer@epa.gov. For general information contact: The TSCA–Hotline, ABVI–Goodwill, 422 South Clinton Ave., Rochester, NY 14620; telephone number: (202) 554– 1404; email address: TSCA– Hotline@epa.gov. SUPPLEMENTARY INFORMATION: I. General Information A. Does this action apply to me? You may be potentially affected by this action if you manufacture, import, process, or use the chemical substance contained in this proposed rule. Potentially affected entities may include, but are not limited to: • Manufacturers, importers, or processors of the subject chemical substance (NAICS codes 325 and 324110), e.g., chemical manufacturing and petroleum refineries. This listing is not intended to be exhaustive, but rather provides a guide for readers regarding entities likely to be affected by this action. Other types of entities not listed in this unit could also be affected. The North American Industrial Classification System (NAICS) codes have been provided to assist you and others in determining whether this action might apply to certain entities. To determine whether you or your business may be affected by this action, you should carefully examine the applicability provisions in § 721.5. If you have any questions regarding the applicability of this action to a particular entity, consult the technical person listed under FOR FURTHER INFORMATION CONTACT. This action may also affect certain entities through pre-existing import certification and export notification rules under TSCA. Chemical importers are subject to the TSCA section 13 (15 E:\FR\FM\28DEP1.SGM 28DEP1

Agencies

[Federal Register Volume 76, Number 249 (Wednesday, December 28, 2011)]
[Proposed Rules]
[Pages 81432-81437]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-33150]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket No. PTO-P-2011-0058]
RIN 0651-AC63


Revision of Patent Term Adjustment Provisions Relating to 
Appellate Review

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
proposing to revise the patent term adjustment provisions of the rules 
of practice in patent cases. The patent term adjustment provisions of 
the American Inventors Protection Act of 1999 (AIPA) provide for patent 
term adjustment if, inter alia, the issuance of the patent was delayed 
due to appellate review by the Board of Patent Appeals and 
Interferences (BPAI) or by a Federal court and the patent was issued 
under a decision in the review reversing an adverse determination of 
patentability. The Office is proposing to change the rules of practice 
to indicate that the period of appellate review under the patent term 
adjustment provisions of the AIPA begins when jurisdiction over the 
application passes to the BPAI rather than the date on which a notice 
of appeal to the BPAI is filed. The Office recently published the final 
rule (eff. date Jan 23, 2012) concerning practice before the BPAI in ex 
parte appeals and defined that jurisdiction of the appeal passes to the 
BPAI at the earlier of the filing of the reply brief or upon the 
expiration of the time in which to file a reply brief. See Rules Of 
Practice Before the Board of Patent Appeals and Interferences in Ex 
Parte Appeals 76 FR 72270, 72273 (November 22, 2011). Accordingly, for 
purposes of calculating patent term adjustment based upon appellate 
review, the impact of the rule change would be to reduce the amount of 
patent term adjustment awarded for

[[Page 81433]]

successful appeal under 35 USC 154(b)(1)(C)(iii). However, the impact 
may be offset by potentially increasing the amount of patent term 
adjustment awarded for failing to issue the patent within three years 
of the actual filing date in the United States under 35 USC 
154(b)(1)(B). The patent term adjustment award for the three year 
provision may increase when the examiner reopens prosecution after a 
notice of appeal is filed (e.g., following a pre-appeal conference or 
an appeal conference) and the patent issues thereafter, because the 
period of time between the filing of the notice of appeal and the 
examiner's reopening of prosecution would no longer be deducted under 
35 USC 154(b)(1)(B)(ii).

DATES: Comment Deadline Date: Written comments must be received on or 
before January 27, 2012. No public hearing will be held.

ADDRESSES: Comments concerning this notice should be sent by electronic 
mail message over the Internet addressed to AC63.comments@uspto.gov. 
Comments may also be submitted by mail addressed to: Mail Stop 
Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, 
VA, 22313-1450, marked to the attention of Kery A. Fries, Senior Legal 
Advisor, Office of Patent Legal Administration, Office of the Associate 
Commissioner for Patent Examination Policy. Although comments may be 
submitted by mail, the Office prefers to receive comments via the 
Internet.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, located in Madison East, Tenth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Internet (https://www.uspto.gov). Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Kery A. Fries, Senior Legal Advisor, 
Office of Patent Legal Administration, by telephone at (571) 272-7757, 
by mail addressed to: Box Comments--Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
Kery A. Fries.

SUPPLEMENTARY INFORMATION: The Uruguay Round Agreements Act (URAA) 
amended 35 U.S.C. 154 to provide that the term of a patent ends on the 
date that is twenty years from the filing date of the application, or 
the earliest filing date for which a benefit is claimed under 35 U.S.C. 
120, 121, or 365(c). See Public Law 103-465, Sec.  532(a)(1), 108 Stat. 
4809, 4983-85 (1994). The URAA also contained provisions, codified at 
35 U.S.C. 154(b), for patent term extension due to certain examination 
delays. Under the patent term extension provisions of 35 U.S.C. 154(b) 
as amended by the URAA, an applicant is entitled to patent term 
extension for delays due to interference, secrecy order, or successful 
appellate review. See 35 U.S.C. 154(b) (1995). The Office implemented 
the patent term extension provisions of the URAA in a final rule 
published in April of 1995. See Changes to Implement 20-Year Patent 
Term and Provisional Applications, 60 FR 20195 (Apr. 25, 1995) (twenty-
year patent term final rule).
    The American Inventors Protection Act of 1999 (AIPA) further 
amended 35 U.S.C. 154(b) to expand the list of administrative delays 
which may give rise to patent term adjustment (characterized as 
``patent term adjustment'' in the AIPA). See Public Law 106-113, 113 
Stat. 1501, 1501A-552 through 1501A-591 (1999). Specifically, under the 
patent term adjustment provisions of 35 U.S.C. 154(b) as amended by the 
AIPA, an applicant is entitled to patent term adjustment for the 
following reasons: (1) If the Office fails to take certain actions 
during the examination and issue process within specified time frames 
(known as the ``A'' provision, being in 35 U.S.C. 154(b)(1)(A)); (2) if 
the Office fails to issue a patent within three years of the actual 
filing date of the application in the United States (known as the ``B'' 
provision, being in 35 U.S.C. 154(b)(1)(B)); and (3) for delays due to 
interference, secrecy order, or successful appellate review (known as 
the ``C'' provision, being in 35 U.S.C. 154(b)(1)(C)). See 35 U.S.C. 
154(b)(1). The Office implemented the patent term adjustment provisions 
of 35 U.S.C. 154(b) as amended by the AIPA in a final rule published in 
September of 2000. See Changes to Implement Patent Term Adjustment 
Under Twenty-Year Patent Term, 65 FR 56365 (Sept. 18, 2000) (patent 
term adjustment final rule).
    The patent term adjustment provisions of the AIPA apply to original 
(i.e., non-reissue) utility and plant applications filed on or after 
May 29, 2000. See Changes to Implement Patent Term Adjustment Under 
Twenty-Year Patent Term, 65 FR at 56367. The patent term extension 
provisions of the URAA (for delays due to secrecy order, interference 
or successful appellate review) continue to apply to original utility 
and plant applications filed on or after June 8, 1995, and before May 
29, 2000. See id.
    In April 2011 the Office proposed to revise the patent term 
extension and adjustment provisions of the URAA and AIPA to provide, 
with certain exceptions, that the reopening of prosecution by an 
examiner would be considered a ``decision in the review reversing an 
adverse determination of patentability,'' since in many such situations 
the reopening of the application after a notice of appeal has been 
filed is the result of a decision in the pre-BPAI review that there is 
some weakness in the adverse patentability determination from which the 
appeal was taken, making it appropriate to treat such situations as a 
``decision in the review reversing an adverse determination of 
patentability'' under the patent term adjustment and extension 
provisions. See Revision of Patent Term Extension and Adjustment 
Provisions Relating to Appellate Review and Information Disclosure 
Statements, 76 FR 18990 (Apr. 6, 2011). The Office received several 
comments suggesting that a better approach would be to treat the 
appellate review period as beginning when jurisdiction passes to the 
BPAI, rather than on the date a notice of appeal to the BPAI was filed. 
This approach would give applicants the possibility of obtaining patent 
term adjustment under the ``B'' provision for Office delays during the 
pre-BPAI process (including when prosecution is reopened). 
Specifically, the Office would not subtract from the ``B'' period the 
period of time from the filing of the notice of appeal to the earlier 
of the filing of a reply brief or the expiration of the period to file 
the reply brief. The Office has decided to seek public comment on this 
approach. Accordingly, the Office is proposing to change its 
interpretation of the appellate review language of the ``B'' provision 
(35 U.S.C. 154(b)(1)(B)(ii)), and provide that appellate review begins 
on the date on which jurisdiction over the application passes to the 
Board of Patent Appeals and Interferences under 37 CFR 41.35 (rather 
than the date on which a notice of appeal under 35 U.S.C. 134 was filed 
as in the current rule).
    The ``B'' provision provides for the possibility of patent term 
adjustment ``if the issue of an original patent is delayed due to the 
failure of the United States

[[Page 81434]]

Patent and Trademark Office to issue a patent within 3 years after the 
actual filing date of the application in the United States.'' 35 U.S.C. 
154(b)(1)(B). The ``B'' provision also provides that certain periods 
are not included in determining whether the issue of a patent is 
delayed due to the failure of the Office to issue the patent within 
three years of its filing date, one of such periods being ``any time 
consumed by appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court.'' 35 U.S.C. 154(b)(1)(B)(ii). 
Since the period of appellate review by the BPAI or a Federal court is 
not included in determining whether the issue of a patent is delayed 
due to the failure of the Office to issue the patent within three years 
of its filing date under the ``B'' provision, a later beginning of the 
appellate review by the BPAI, as now being proposed, would result in 
the possibility of a greater period of patent term adjustment under the 
``B'' provision vis-[agrave]-vis the Office's interpretation of this 
provision in 2000.
    The ``C'' provision provides for the possibility of patent term 
adjustment ``if the issue of an original patent is delayed due to'' 
inter alia ``appellate review by the Board of Patent Appeals and 
Interferences or by a Federal court in a case in which the patent was 
issued under a decision in the review reversing an adverse 
determination of patentability.'' 35 U.S.C 154(b)(1)(C). The Office is 
also proposing to change its interpretation of the appellate review 
language of the ``C'' provision (35 U.S.C. 154(b)(1)(C)(iii)). To 
change the interpretation of the appellate review language of the ``B'' 
provision without also changing the appellate review language of the 
``C'' provision would be difficult to justify because it would require 
the Office to interpret the same statutory term, ``appellate review by 
the Board,'' appearing in two closely related provisions, in two 
different ways. Doing so violates the well-recognized canon of 
statutory interpretation that the same terms appearing in related 
statutory provisions are to be given the same meaning. See, e.g., Yi v. 
Fed. Bureau of Prisons, 412 F.3d 526, 531 (4th Cir. 2005). Since the 
period of adjustment under the appellate review portion of the ``C'' 
provision is the period of appellate review by the BPAI or by a Federal 
court, a later beginning of the appellate review by the BPAI, as now 
being proposed, would result in the possibility of a lesser period of 
patent term adjustment under the ``C'' provision vis-[agrave]-vis the 
Office's interpretation of this provision in 2000.
    The Office recognizes that there is a question as to whether the 
URAA should be considered instructive in interpreting the ``C'' 
provisions of 35 U.S.C. 154(b) as amended by the AIPA. The Office has, 
until now, treated the AIPA patent term adjustment provisions as an 
extension of, rather than a replacement for, the URAA patent term 
extension provisions. The AIPA (like the URAA) provided patent term 
adjustment for delays caused by secrecy order, interference 
proceedings, and successful appellate review (the ``C'' provision), 
with the legislative history characterizing this provision as the 
``existing'' provisions. See H.R. Rep. No. 106-464, at 125 (1999). The 
appellate review provision of the URAA provides for patent term 
extension if ``the issue of a patent is delayed due to appellate review 
by the Board of Patent Appeals and Interferences or by a Federal court 
and the patent is issued pursuant to a decision in the review reversing 
an adverse determination of patentability,'' and specifically defines 
the period of appellate review as ``includ[ing] any period beginning on 
the date on which an appeal is filed under section 134 or 141 of this 
title, or on which an action is commenced under section 145 of this 
title, and ending on the date of a final decision in favor of the 
applicant.'' See 35 U.S.C. 154(b)(2) and 154(b)(3)(A) as amended by 
Sec.  532(a) of the URAA, 108 Stat. at 4984.
    Since the appellate review provisions of the AIPA use the same 
phrase as the URAA appellate review provision (``appellate review by 
the Board of Patent Appeals and Interferences or by a Federal court'') 
and the AIPA provides no alternative definition of the date that is the 
beginning of the period of appellate review by the BPAI or by a Federal 
court, the Office originally interpreted the beginning of the pendency 
of ``appellate review by the Board of Patent Appeals and Interferences 
or by a Federal court'' (35 U.S.C. 154(b)(1)(C)(iii)) using the 
guidance provided in 35 U.S.C. 154(b)(3)(A) as amended by the URAA for 
the beginning of the period of appellate review, namely that the 
beginning of the period of appellate review is the date on which an 
appeal to the BPAI is filed under 35 U.S.C. 134. See Changes to 
Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR, 
17215, 17218 and 17227 (Mar. 31, 2000). The USPTO did not receive any 
comment on its original interpretation of this provision. Finally, the 
U.S. Court of Appeals for the Federal Circuit has also in passing 
characterized the ``C'' provision of the 35 U.S.C. 154(b)(1)(C) as the 
patent term extension provisions of the URAA. See Wyeth v. Kappos, 591 
F.3d 1364, 1372 (Fed. Cir. 2010) (``Before enactment of the AIPA, 
section 154(b) only provided extensions for the category that now fall 
under the C adjustments'').
    The Office has reconsidered its prior position and now believes 
that the better view is that the URAA's express definition of the 
appellate-review period should not carry over to the ``C'' provision of 
AIPA, because the URAA definition is completely absent from the AIPA. 
It is a canon of statutory construction that Congress is presumed to 
intend its statutory amendments to have ``real and substantial 
effect.'' Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 
258-59 (2004). Thus, when Congress deletes a term or provision from a 
statute, it is inappropriate to read that term or provision back into 
the statute. See id. (holding that because Congress amended 28 U.S.C. 
1782(a) to delete the requirement that proceedings covered by the 
statute be ``pending,'' Court rejected view that this statute comes 
into play only for pending proceedings). Likewise, the Office now 
believes that it is not appropriate to read back into the ``C'' 
provision of the AIPA the appellate-review definition that Congress 
deleted from Title 35. Therefore, the Office is also proposing to 
change its interpretation of the appellate review language of the ``C'' 
provision (35 U.S.C. 154(b)(1)(C)(iii)), and also to provide that 
appellate review begins on the date on which jurisdiction over the 
application passes to the BPAI under 37 CFR 41.35 (rather than the date 
on which a notice of appeal under 35 U.S.C. 134 was filed as in the 
current rule).
    The AIPA also sets forth a number of conditions and limitations on 
any patent term adjustment accrued under 35 U.S.C. 154(b)(1). 
Specifically, 35 U.S.C. 154(b)(2)(C) provides, in part, that ``[t]he 
period of adjustment of the term of a patent under [35 U.S.C. 
154(b)(1)] shall be reduced by a period equal to the period of time 
during which the applicant failed to engage in reasonable efforts to 
conclude prosecution of the application'' and that ``[t]he Director 
shall prescribe regulations establishing the circumstances that 
constitute a failure of an applicant to engage in reasonable efforts to 
conclude processing or examination of an application.'' 35 U.S.C. 
154(b)(2)(C)(i) and (iii). The rules of practice (37 CFR 41.37) require 
that an appeal brief be filed within two months from the date of filing 
of the notice of appeal under 35 U.S.C. 134

[[Page 81435]]

and 37 CFR 41.31. An applicant, however, may delay or prevent the 
passing of jurisdiction of the application to the BPAI by: (1) 
Obtaining an extension of time to file the appeal brief; (2) filing an 
appeal brief that does not comply with the requirements of 37 CFR 
41.37; or (3) seeking further prosecution before the examiner by filing 
a request for continued examination under 37 CFR 1.114. Therefore, the 
Office is proposing, under its authority under 35 U.S.C. 154(b)(2)(C), 
to provide that the failure to file an appeal brief in compliance with 
37 CFR 41.37 within two months from the date on which a notice of 
appeal to the BPAI was filed under 35 U.S.C. 134 and 37 CFR 41.31 
constitutes a failure of an applicant to engage in reasonable efforts 
to conclude processing or examination of an application.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 1, is proposed to 
be amended as follows:
    Section 1.703: Section 1.703(b)(4), which defines the period of 
appellate review in 35 U.S.C. 154(b)(1)(B)(ii), is amended to define 
this period as the sum of the number of days, if any, in the period 
beginning on the date on which jurisdiction over the application passes 
to the BPAI under Sec.  41.35 of this title and ending on the date of a 
final decision in favor of the applicant by the BPAI or by a Federal 
court in an appeal under 35 U.S.C. 141 or a civil action under 35 
U.S.C. 145. Section 1.703(b)(4) currently defines this period as 
beginning on the date on which a notice of appeal to the BPAI was filed 
under 35 U.S.C. 134 and Sec.  41.31.
    Section 1.703(e), which defines the period of appellate review in 
35 U.S.C. 154(b)(1)(C)(iii), is amended to define this period as the 
sum of the number of days, if any, in the period beginning on the date 
on which jurisdiction over the application passes to the BPAI under 
Sec.  41.35 of this title and ending on the date of a final decision in 
favor of the applicant by the BPAI or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145. Section 
1.703(e) currently defines this period as beginning on the date on 
which a notice of appeal to the BPAI was filed under 35 U.S.C. 134 and 
Sec.  41.31.
    Section 1.704: Section 1.704(c) is amended to provide that the 
failure to file an appeal brief in compliance with Sec.  41.37 within 
two months from the date on which a notice of appeal to the BPAI was 
filed under 35 U.S.C. 134 and Sec.  41.31 constitutes a failure of an 
applicant to engage in reasonable efforts to conclude processing or 
examination of an application. Section 1.704(c) would also provide that 
in such a case the period of adjustment set forth in Sec.  1.703 shall 
be reduced by the number of days, if any, beginning on the day after 
the date two months from the date on which a notice of appeal to the 
Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 
and Sec.  41.31 of this title and ending on the date an appeal brief 
was filed in compliance with 41.37 or a request for continued 
examination was filed in compliance with Sec.  1.114.

Rule Making Considerations:

    A. 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 proposed in this notice 
will not have a significant economic impact on a substantial number of 
small entities. See 5 U.S.C. 605(b).
    The changes to the rules of practice proposed in this notice: (1) 
Revise the provisions that define the beginning and ending dates of the 
period of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and 
154(b)(1)(C)(iii) to provide that this period begins on the date on 
which jurisdiction over the application passes to the BPAI under 37 CFR 
41.35; and (2) provide that that the failure to file a proper appeal 
brief within two months from the date on which a notice of appeal to 
the BPAI was filed, as required by 35 U.S.C. 134, constitutes a failure 
of an applicant to engage in reasonable efforts to conclude processing 
or examination of an application. This notice does not propose to add 
any additional requirements (including information collection 
requirements) or fees for patent applicants or patentees.
    The proposed changes to 37 CFR 1.703(b)(4) and (e) merely 
reinterpret the beginning and ending dates of the period of appellate 
review under 35 U.S.C. 154(b)(1)(B)(ii) and 154(b)(1)(C)(iii). They do 
not impose any additional burden on applicants. The proposed change to 
37 CFR 1.704(c) specifies that the failure to file a proper appeal 
brief within two months from the date on which a notice of appeal to 
the BPAI was filed, as required by 35 U.S.C. 134, constitutes failure 
of an applicant to engage in reasonable efforts to conclude processing 
or examination of an application would not have will not have a 
significant economic impact on a substantial number of small entities 
because: (1) applicants are not entitled to patent term adjustment for 
examination delays that result from their delay in prosecuting the 
application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR 1.704(a)); and (2) 
applicants may avoid any consequences from this provision simply by 
filing an appeal brief in compliance with 37 CFR 41.37 (or filing a 
request for continued examination under 37 CFR 1.114) within two months 
from the date on which a notice of appeal to the BPAI was filed as 
required by 35 U.S.C. 134 and Sec.  41.31.
    For the foregoing reasons, neither of the changes proposed in this 
notice will have a significant economic impact on a substantial number 
of small entities.
    B. Executive Order 12866 (Regulatory Planning and Review): This 
rule making has been determined to be not significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    C. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
and provided on-line access to the rule making docket; (7) attempted to 
promote coordination, simplification and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    D. Executive Order 13132 (Federalism): 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).
    E. Executive Order 13175 (Tribal Consultation): This rule making 
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

[[Page 81436]]

required under Executive Order 13175 (Nov. 6, 2000).
    F. Executive Order 13211 (Energy Effects): This rule making is not 
a significant energy action under Executive Order 13211 because this 
rule making 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 rule making 
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 rule making 
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 rule 
making 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 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the final rule and other required information to the U.S. 
Senate, the U.S. House of Representatives and the Comptroller General 
of the Government Accountability Office. The changes in this notice are 
not expected to result in an annual effect on the economy of 100 
million dollars or more, a major increase in costs or prices, or 
significant adverse effects on competition, employment, investment, 
productivity, innovation, or the ability of United States-based 
enterprises to compete with foreign-based enterprises in domestic and 
export markets. Therefore, this notice is not expected to result in a 
``major rule'' as defined in 5 U.S.C. 804(2).
    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 rule making 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 rule making does not contain provisions which involve the use of 
technical standards.
    N. Paperwork Reduction Act: The rules of practice pertaining to 
patent term adjustment and extension have been reviewed and approved by 
the Office of Management and Budget (OMB) under the Paperwork Reduction 
Act of 1995 (44 U.S.C. 3501 et seq.) under OMB control number 0651-
0020. The changes to the rules of practice proposed in this notice: (1) 
Revise the provisions that define the beginning and ending dates of the 
period of appellate review under 35 U.S.C. 154(b)(1)(B)(ii) and 
154(b)(1)(C)(iii) to provide that this period begins on the date on 
which jurisdiction over the application passes to the BPAI under 37 CFR 
41.35; and (2) provide that that the failure to file a proper appeal 
brief within two months from the date on which a notice of appeal to 
the BPAI was filed, as required by 35 U.S.C. 134, constitutes a failure 
of an applicant to engage in reasonable efforts to conclude processing 
or examination of an application. This notice does not propose to add 
any additional requirements (including information collection 
requirements) or fees for patent applicants or patentees. Therefore, 
the Office is not resubmitting information collection packages to OMB 
for its review and approval because the changes proposed in this notice 
do not affect the information collection requirements associated with 
the information collections approved under OMB control number 0651-0020 
or any other information collections.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall any 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.

    For the reasons set forth in the preamble, 37 CFR part 1 is 
proposed to be amended as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

    Authority: 35 U.S.C. 2(b)(2).
    2. Section 1.703 is amended by revising paragraph (b)(4) and (e) to 
read as follows:


Sec.  1.703  Period of adjustment of patent term due to examination 
delay.

* * * * *
    (b) * * *
    (4) The number of days, if any, in the period beginning on the date 
on which jurisdiction over the application passes to the Board of 
Patent Appeals and Interferences under Sec.  41.35 of this title and 
ending on the date of the last decision by the Board of Patent Appeals 
and Interferences or by a Federal court in an appeal under 35 U.S.C. 
141 or a civil action under 35 U.S.C. 145.
* * * * *
    (e) The period of adjustment under Sec.  1.702(e) is the sum of the 
number of days, if any, in the period beginning on the date on which 
jurisdiction over the application passes to the Board of Patent Appeals 
and Interferences under Sec.  41.35 of this title and ending on the 
date of a final decision in favor of the applicant by the Board of 
Patent Appeals and Interferences or by a Federal court in an appeal 
under 35 U.S.C. 141 or a civil action under 35 U.S.C. 145.
* * * * *
    3. Section 1.704 is amended by redesignating paragraph (c)(9) 
through (c)(11) as (c)(10) through (c)(12), respectively, and adding a 
new paragraph (c)(9) to read as follows:


Sec.  1.704  Reduction of period of adjustment of patent term.

* * * * *
    (c) * * *
    (9) Failure to file an appeal brief in compliance with Sec.  41.37 
within two months from the date on which a notice of appeal to the 
Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 
and Sec.  41.31 of this title, in which case the period of adjustment 
set forth in Sec.  1.703 shall be reduced by the number of days, if 
any, beginning on the day after the date two months from the date on 
which a notice of appeal to the

[[Page 81437]]

Board of Patent Appeals and Interferences was filed under 35 U.S.C. 134 
and Sec.  41.31 of this title and ending on the date an appeal brief in 
compliance with 41.37 or a request for continued examination in 
compliance with Sec.  1.114 was filed;
* * * * *

    Dated: December 15, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-33150 Filed 12-27-11; 8:45 am]
BILLING CODE 3510-16-P
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