Changes to Patent Term Adjustment in View of the Federal Circuit Decision in Novartis v. Lee, 34681-34685 [2014-14186]
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Federal Register / Vol. 79, No. 117 / Wednesday, June 18, 2014 / Proposed Rules
Unfunded Mandates
Pursuant to Title II of the Unfunded
Mandates Reform Act of 1995 (2 U.S.C.
1531–1538), which the President signed
into law on March 22, 1995, the Agency
has assessed the effects of this proposed
rule on State, local, and Tribal
governments and the private sector.
This proposed rule would not compel
the expenditure of $100 million or more
by any State, local, or Tribal government
or anyone in the private sector.
Therefore, a statement under section
202 of the act is not required.
List of Subjects
36 CFR Part 212
Highways and roads, National forests,
Public lands—rights-of-way,
Transportation.
36 CFR Part 261
Law enforcement, National forests.
Therefore, for the reasons set out in
the preamble, the Forest Service
proposes to amend 36 CFR parts 212
and 261 as follows:
PART 212—TRAVEL MANAGEMENT
Subpart A—Administration of the
Forest Transportation System
1. The authority citation for part 212,
subpart A continues to read as follows:
■
Authority: 16 U.S.C. 551, 23 U.S.C. 205.
2. Amend § 212.1 by revising the
definition for ‘‘Area’’ and adding a
definition for ‘‘Designation of over-snow
vehicle use’’ in alphabetical order to
read as follows:
■
Definitions.
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Area. A discrete, specifically
delineated space that is smaller, and,
except for over-snow vehicle use, in
most cases much smaller, than a Ranger
District.
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Designation of over-snow vehicle use.
Designation of a National Forest System
road, National Forest System trail, or
area on National Forest System lands
where over-snow vehicle use is allowed,
restricted, or prohibited pursuant to
§ 212.81 on an over-snow vehicle use
map.
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■ 3. Revise subpart C to read as follows:
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(a) Purpose. The purpose of this
subpart is to require designation of
National Forest System roads, National
Forest System trails, and areas on
National Forest System lands where
over-snow vehicle use is allowed,
restricted, or prohibited.
(b) Scope. The responsible official
may incorporate previous
administrative decisions regarding oversnow vehicle use made under other
authorities in allowing, restricting, or
prohibiting over-snow vehicle use on
National Forest System roads, on
National Forest System trails, and in
areas on National Forest System lands
under this subpart.
(c) Definitions. For definitions of
terms used in this subpart, refer to
§ 212.1.
areas on National Forest System lands
over the entire administrative unit or
Ranger District, or parts of the
administrative unit or Ranger District,
where snowfall is adequate for OSV use
to occur and no change is proposed to
these previous decisions.
(c) Decision-making process. Except
as modified in paragraph (b) and this
paragraph, the requirements governing
designation of National Forest System
roads, National Forest System trails, and
areas on National Forest System lands
in §§ 212.52, 212.53, 212.54, 212.55,
212.56, and 212.57 shall apply to
decisions made under this subpart. In
making decisions under this subpart,
the responsible official shall recognize
the provisions concerning rights of
access in sections 811(b) and 1110(a) of
the Alaska National Interest Lands
Conservation Act (16 U.S.C. 3121(b) and
3170(a), respectively). National Forest
System roads, National Forest System
trails, and areas on National Forest
System lands where over-snow vehicle
use is allowed, restricted, or prohibited
shall be reflected on an over-snow
vehicle use map.
§ 212.81
full implementation would be
preempted; (2) no retroactive effect
would be given to the proposed rule;
and (3) it would not require
administrative proceedings before
parties may file suit in court challenging
its provisions.
§ 212.1
34681
PART 261—PROHIBITIONS
Subpart C—Over-Snow Vehicle Use
Sec.
2.12.80 Purpose, scope, and definitions.
212.81 Over-snow vehicle use.
Authority: 7 U.S.C. 1011(f), 16 U.S.C. 551,
E.O. 11644, 11989 (42 FR 26959).
§ 212.80
Purpose, scope, and definitions.
Over-snow vehicle use.
(a) General. Over-snow vehicle use on
National Forest System roads, on
National Forest System trails, and in
areas on National Forest System lands
shall be designated as allowed,
restricted, or prohibited by the
responsible official on administrative
units or Ranger Districts, or parts of
administrative units or Ranger Districts,
of the National Forest System where
snowfall is adequate for that use to
occur, provided that the following uses
are exempted from these decisions:
(1) Limited administrative use by the
Forest Service;
(2) Use of any fire, military,
emergency, or law enforcement vehicle
for emergency purposes;
(3) Authorized use of any combat or
combat support vehicle for national
defense purposes;
(4) Law enforcement response to
violations of law, including pursuit; and
(5) Over-snow vehicle use that is
specifically authorized under a written
authorization issued under Federal law
or regulations.
(b) Previous comprehensive over-snow
vehicle decisions. Public notice with no
further public involvement is sufficient
if an administrative unit or a Ranger
District has made previous
administrative decisions, under other
authorities and including public
involvement, that allow, restrict, or
prohibit over-snow vehicle use on
National Forest System roads, on
National Forest System trails, and in
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4. The authority citation for part 261
continues to read as follows:
■
Authority: 7 U.S.C. 1011(f); 16 U.S.C. 472,
551, 620(f), 1133(c), (d)(1), 1246(i).
Subpart A—General Prohibitions
5. Revise the heading of § 261.14 to
read as follows:
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§ 261.14
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Over-snow vehicle use.
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Dated: June 4, 2014.
Thomas L. Tidwell,
Chief, U.S. Forest Service.
[FR Doc. 2014–14273 Filed 6–17–14; 8:45 am]
BILLING CODE 3411–15–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
37 CFR Part 1
[Docket No.: PTO–P–2014–0023]
RIN 0651–AC96
Changes to Patent Term Adjustment in
View of the Federal Circuit Decision in
Novartis v. Lee
United States Patent and
Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
AGENCY:
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Federal Register / Vol. 79, No. 117 / Wednesday, June 18, 2014 / Proposed Rules
The United States Patent and
Trademark Office (Office) is proposing
changes to the rules of practice
pertaining to the patent term adjustment
provisions in view of the decision by
the U.S. Court of Appeals for the
Federal Circuit (Federal Circuit) in
Novartis AG v. Lee. The Federal Circuit
confirmed in Novartis that any time
consumed by continued examination is
subtracted in determining the extent to
which the period of application
pendency exceeds three years,
regardless when the continued
examination was initiated. The Federal
Circuit, however, decided that the time
consumed by continued examination
does not include the time after a notice
of allowance, unless the Office actually
resumes examination of the application
after allowance. The Office is proposing
changes to the rules of practice to
provide that the time consumed by
continued examination does not include
the time after a notice of allowance,
unless the Office actually resumes
examination of the application after
allowance. The Office also is proposing
changes to the rules of practice to
provide that the submission of a request
for continued examination after a notice
of allowance has been mailed will
constitute a failure of an applicant to
engage in reasonable efforts to conclude
processing or examination of an
application and thus result in a
reduction of any period of patent term
adjustment.
DATES: Comment Deadline Date: Written
comments must be received on or before
August 18, 2014.
ADDRESSES: Comments should be sent
by electronic mail message over the
Internet addressed to: AC96.comments@
uspto.gov. Comments also may be
submitted by postal mail addressed to:
Mail Stop Comments—Patents,
Commissioner for Patents, P.O. Box
1450, Alexandria, VA, 22313–1450,
marked to the attention of Kery Fries,
Senior Legal Advisor, Office of Patent
Legal Administration, Office of the
Deputy Commissioner for Patent
Examination Policy.
Comments further may 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.
Although comments may be
submitted by postal mail, the Office
prefers to receive comments by
electronic mail message over the
Internet because sharing comments with
the public is more easily accomplished.
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SUMMARY:
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Electronic comments submitted in plain
text are preferred, but may be submitted
in ADOBE® portable document format
or MICROSOFT WORD® format.
Comments not submitted electronically
should be submitted on paper in a
format that facilitates convenient digital
scanning into ADOBE® portable
document format.
Comments will be available for
viewing via the Office’s Internet Web
site (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.
Kery
Fries, Senior Legal Advisor, Office of
Patent Legal Administration, Office of
the Deputy Commissioner for Patent
Examination Policy, at telephone
number 571–272–7757.
FOR FURTHER INFORMATION CONTACT:
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The
Office is proposing changes to the rules
of practice pertaining to the patent term
adjustment provisions of 35 U.S.C.
154(b) in view of the decision by the
Federal Circuit in Novartis, 740 F.3d
593 (Fed. Cir. 2014). The Federal Circuit
confirmed in Novartis that any time
consumed by continued examination
under 35 U.S.C. 132(b) is subtracted in
determining the extent to which the
period defined in 35 U.S.C. 154(b)(1)(B)
exceeds three years, regardless when the
continued examination under 35 U.S.C.
132(b) was initiated. The Federal
Circuit, however, decided that the time
consumed by continued examination
under 35 U.S.C. 132(b) does not include
the time after a notice of allowance
unless the Office actually resumes
examination of the application after
allowance.
Summary of Major Provisions: The
Office is proposing changes to the rules
of practice to provide that the time
consumed by continued examination
under 35 U.S.C. 132(b) does not include
the time after a notice of allowance,
unless the Office actually resumes
examination of the application after
allowance. The Office also is proposing
changes to the rules of practice to
provide that the submission of a request
for continued examination under 35
U.S.C. 132(b) after a notice of allowance
under 35 U.S.C. 151 has been mailed
will constitute a failure of an applicant
to engage in reasonable efforts to
conclude processing or examination of
an application and thus result in a
reduction of any period of patent term
adjustment under 35 U.S.C. 154(b)(1).
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Costs and Benefits: This rulemaking is
not economically significant under
Executive Order 12866 (Sept. 30, 1993).
Background: In January 2014, the
Federal Circuit issued a decision in
Novartis pertaining to the patent term
adjustment provisions of 35 U.S.C.
154(b), and specifically the impact of
continued examination under 35 U.S.C.
132(b) on patent term adjustment under
the three-year pendency provision of 35
U.S.C. 154(b)(1)(B). The Federal Circuit
confirmed in Novartis that any time
consumed by continued examination
under 35 U.S.C. 132(b) is subtracted in
determining the extent to which the
period defined in 35 U.S.C. 154(b)(1)(B)
exceeds three years, regardless when the
continued examination under 35 U.S.C.
132(b) was initiated. See 740 F.3d at 601
(‘‘[t]he better reading of the language is
that the patent term adjustment time
should be calculated by determining the
length of the time between application
and patent issuance, then subtracting
any continued examination time (and
other time identified in (i), (ii), and (iii)
of [35 U.S.C. 154](b)(1)(B)), and
determining the extent to which the
result exceeds three years’’). The
Federal Circuit, however, decided that
the time consumed by continued
examination under 35 U.S.C. 132(b)
does not include the time after a notice
of allowance unless the Office actually
resumes examination of the application
after allowance. See 740 F.3d at 602
(‘‘[t]he common-sense understanding of
‘time consumed by continued
examination,’ 35 U.S.C. 154(b)(1)(B)(i),
is time up to allowance, but not later,
unless examination on the merits
resumes’’). Therefore, the Office is
proposing changes to the rules of
practice to provide that the time
consumed by continued examination
under 35 U.S.C. 132(b) does not include
the time after a notice of allowance,
unless the Office actually resumes
examination of the application after
allowance.
The Office makes the patent term
adjustment determination indicated in
the patent by a computer program that
uses the information recorded in the
Office’s Patent Application Locating and
Monitoring (PALM) system (except
when an applicant requests
reconsideration pursuant to § 1.705).
See Changes to Implement Patent Term
Adjustment Under Twenty-Year Patent
Term, 65 FR 56365, 56370, 56380–81
(Sept. 18, 2000) (final rule). The
decision in Novartis that the time
consumed by continued examination
under 35 U.S.C. 132(b) does not include
the time after a notice of allowance
unless the Office actually resumes
examination of the application after
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allowance requires modifications of the
Office’s patent term adjustment
program, and these modifications of the
Office’s patent term adjustment program
have not yet been completed. The
Office, however, calculates the patent
term adjustment manually when an
applicant requests reconsideration of a
patent term adjustment determination
pursuant to § 1.705. The Office is now
deciding requests for reconsideration of
a patent term adjustment filed pursuant
to § 1.705 consistent with the Federal
Circuit decision in Novartis.
The patent term adjustment statutory
provision also includes the provision
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.’’ See 35
U.S.C. 154(b)(2)(C)(i) and (iii). Under
the authority provided in 35 U.S.C.
154(b)(2)(C), the Office is proposing a
rule of practice that establishes the
submission of a request for continued
examination under 35 U.S.C. 132(b)
after a notice of allowance under 35
U.S.C. 151 has been mailed as
constituting a failure of an applicant to
engage in reasonable efforts to conclude
processing or examination of an
application. This rule of practice is
proposed to ensure that an applicant
does not obtain multiple periods of
patent term adjustment under 35 U.S.C.
154(b)(1)(B) for the time after a notice of
allowance under 35 U.S.C. 151 as a
consequence of delaying issuance of the
application by filing request for
continued examination under 35 U.S.C.
132(b) after a notice of allowance under
35 U.S.C. 151.
Discussion of Specific Rules
The following is a discussion of
proposed amendments to title 37 of the
Code of Federal Regulations, Part 1:
Section 1.703: Section 1.703(b)(1) is
proposed to be amended to provide that
the time consumed by continued
examination of the application under 35
U.S.C. 132(b) is the number of days, if
any, in the period beginning on the date
on which a request for continued
examination of the application under 35
U.S.C. 132(b) was filed and ending on
the date of mailing of a notice of
allowance under 35 U.S.C. 151, unless
prosecution in the application is
reopened. If prosecution in the
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application is reopened, the time
consumed by continued examination of
the application under 35 U.S.C. 132(b)
also includes the number of days, if any,
in the period or periods beginning on
the date on which a request for
continued examination of the
application under 35 U.S.C. 132(b) was
filed or the date of mailing of an action
under 35 U.S.C. 132, whichever occurs
first, and ending on the date of mailing
of a subsequent notice of allowance
under 35 U.S.C. 151. As discussed
previously, this proposed amendment is
consistent with the decision in Novartis
that the time consumed by continued
examination under 35 U.S.C. 132(b)
does not include the time after a notice
of allowance unless the Office actually
resumes examination of the application
after allowance.
Section 1.704: Section 1.704(c) is
proposed to be amended to include a
new provision that establishes the
submission of a request for continued
examination under 35 U.S.C. 132(b)
after a notice of allowance under 35
U.S.C. 151 has been mailed as
constituting a failure of an applicant to
engage in reasonable efforts to conclude
processing or examination of an
application, 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 date of mailing of the
notice of allowance under 35 U.S.C. 151
and ending on the date the request for
continued examination under 35 U.S.C.
132(b) was filed. As discussed
previously, this rule of practice is
proposed to ensure that an applicant
does not obtain multiple periods of
patent term adjustment under 35 U.S.C.
154(b)(1)(B) for the time after a notice of
allowance under 35 U.S.C. 151 as a
consequence of delaying issuance of the
application by filing request(s) for
continued examination under 35 U.S.C.
132(b) after a notice of allowance under
35 U.S.C. 151. The provisions of
§ 1.704(d) would not be applicable to
this new provision as the information
disclosure statement rules (§§ 1.97 and
1.98) provide for the submission of an
information disclosure statement after a
notice of allowance under 35 U.S.C. 151
has been mailed up until the issue fee
is paid without the need for the filing
of a request for continued examination
under 35 U.S.C. 132(b) (§ 1.97(d)), and
the Office has a program to allow for the
submission of an information disclosure
statement even after the payment of the
issue fee (Quick Path Information
Disclosure Statement (QPIDS) Pilot
Program, 77 FR 27443 (May 10, 2012)).
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Rulemaking Considerations
A. Administrative Procedure Act: This
rulemaking proposes to amend 37 CFR
1.703 to provide that the time consumed
by continued examination under 35
U.S.C. 132(b) does not include the time
after a notice of allowance has been
mailed, unless the Office actually
resumes examination of the application
after allowance. This rulemaking also
proposes to amend 37 CFR 1.704 to
include a provision that establishes the
submission of a request for continued
examination under 35 U.S.C. 132(b)
after a notice of allowance under 35
U.S.C. 151 has been mailed as
constituting a failure of an applicant to
engage in reasonable efforts to conclude
processing or examination of an
application. The proposed amendment
to 37 CFR 1.703 to provide that the time
consumed by continued examination
under 35 U.S.C. 132(b) does not include
the time after a notice of allowance has
been mailed, unless the Office actually
resumes examination of the application
after allowance, simply implements the
Federal Circuit’s ruling on the
provisions of 35 U.S.C. 154(b)(1)(B)(i) in
Novartis. Therefore, the proposed
amendment to 37 CFR 1.703 is simply
a procedural and/or interpretive rule.
See Bachow Commc’ns Inc. v. F.C.C.,
237 F.3d 683, 690 (D.C. Cir. 2001) (rules
governing an application process are
procedural under the Administrative
Procedure Act); Inova Alexandria Hosp.
v. Shalala, 244 F.3d 342, 350 (4th Cir.
2001) (rules for handling appeals were
procedural where they did not change
the substantive standard for reviewing
claims); Nat’l Org. of Veterans’
Advocates, Inc. v. Sec’y of Veterans
Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
2001) (rule that clarifies interpretation
of a statute is interpretive).
Accordingly, prior notice and
opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b) or
(c) (or any other law), with respect to
the proposed change to 37 CFR 1.703.
See Cooper Techs. Co. v. Dudas, 536
F.3d 1330, 1336–37 (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 rulemaking for
‘‘interpretative rules, general statements
of policy, or rules of agency
organization, procedure, or practice’’)
(quoting 5 U.S.C. 553(b)(A)). The Office,
however, is publishing all of these
proposed changes (rather than only the
proposed change to 37 CFR 1.704) for
comment as it seeks the benefit of the
public’s views on the Office’s proposed
implementation of the Federal Circuit’s
interpretation of the provisions of 35
U.S.C. 154(b)(1)(B)(i) in Novartis.
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Federal Register / Vol. 79, No. 117 / Wednesday, June 18, 2014 / Proposed Rules
B. 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 proposed changes to the patent
term adjustment reduction provisions
do not impose any additional
requirements or fees on applicants. The
proposed change to 37 CFR 1.703
simply implements the Federal Circuit’s
ruling on the provisions of 35 U.S.C.
154(b)(1)(B)(i) in Novartis and reflects
how patent term adjustment is now
calculated in response to a request for
reconsideration of patent term
adjustment. The proposed change to 37
CFR 1.704 specifies that the submission
of a request for continued examination
under 35 U.S.C. 132(b) after a notice of
allowance under 35 U.S.C. 151 has been
mailed constitutes a failure of an
applicant to engage in reasonable efforts
to conclude processing or examination
of an application. This proposed change
will not have a significant economic
impact on a substantial number of small
entities because applicants are not
entitled to patent term adjustment for
examination delays that result from an
applicant’s delay in prosecuting the
application (35 U.S.C. 154(b)(2)(C)(i)
and 37 CFR 1.704(a)) and because
applicants may avoid any consequences
from this provision simply by refraining
from filing a request for continued
examination under 35 U.S.C. 132(b)
after a notice of allowance under 35
U.S.C. 151 has been mailed.
For the foregoing reasons, the changes
proposed in this notice will not have a
significant economic impact on a
substantial number of small entities.
C. Executive Order 12866 (Regulatory
Planning and Review): This rulemaking
has been determined to be not
significant for purposes of Executive
Order 12866 (Sept. 30, 1993).
D. 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
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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 rulemaking 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.
E. 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).
F. 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).
G. 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).
H. 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).
I. 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).
J. 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).
K. Congressional Review Act: Under
the Congressional Review Act
provisions of the Small Business
Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801–808), the United
States Patent and Trademark Office will
submit a report containing any final rule
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resulting from this rulemaking and other
required information to the U.S. Senate,
the U.S. House of Representatives, and
the Comptroller General of the
Government Accountability Office.
L. Unfunded Mandates Reform Act of
1995: The changes set forth 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.
M. National Environmental Policy
Act: This rulemaking will not have any
effect on the quality of the environment
and is thus categorically excluded from
review under the National
Environmental Policy Act of 1969. See
42 U.S.C. 4321 et seq.
N. 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.
O. Paperwork Reduction Act: The
Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the
Office consider the impact of paperwork
and other information collection
burdens imposed on the public. 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 proposed in this
rulemaking would: (1) Provide that the
time consumed by continued
examination under 35 U.S.C. 132(b)
does not include the time after a notice
of allowance, unless the Office actually
resumes examination of the application
after allowance; and (2) provide that the
submission of a request for continued
examination under 35 U.S.C. 132(b)
after a notice of allowance under 35
U.S.C. 151 has been mailed constitutes
a failure of an applicant to engage in
reasonable efforts to conclude
processing or examination of an
application.
This rulemaking does not add any
additional requirements (including
information collection requirements) or
E:\FR\FM\18JNP1.SGM
18JNP1
Federal Register / Vol. 79, No. 117 / Wednesday, June 18, 2014 / Proposed Rules
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 in this rulemaking 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 recordkeeping
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
respectively, and by adding a new
paragraph (c)(12) to read as follows:
§ 1.704 Reduction of period of adjustment
of patent term.
*
*
*
*
*
(c) * * *
(12) Submission of a request for
continued examination under 35 U.S.C.
132(b) after a notice of allowance under
35 U.S.C. 151 has been mailed, 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
date of mailing of the notice of
allowance under 35 U.S.C. 151 and
ending on the date the request for
continued examination under 35 U.S.C.
132(b) was filed;
*
*
*
*
*
Dated: June 11, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of
the United States Patent and Trademark
Office.
[FR Doc. 2014–14186 Filed 6–17–14; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF THE INTERIOR
Fish and Wildlife Service
1. The authority citation for 37 CFR
part 1 continues to read as follows:
■
50 CFR Part 17
Authority: 35 U.S.C. 2(b)(2), unless
otherwise noted.
2. Section 1.703 is amended by
revising paragraph (b)(1) to read as
follows:
[Docket No. FWS–R1–ES–2013–0088;
4500030114]
RIN 1018–AZ56
■
Endangered and Threatened Wildlife
and Plants; Designation of Critical
Habitat for the Oregon Spotted Frog
*
emcdonald on DSK67QTVN1PROD with PROPOSALS
§ 1.703 Period of adjustment of patent
term due to examination delay.
AGENCY:
*
*
*
*
(b) * * *
(1) The number of days, if any, in the
period beginning on the date on which
a request for continued examination of
the application under 35 U.S.C. 132(b)
was filed and ending on the date of
mailing of a notice of allowance under
35 U.S.C. 151, unless prosecution in the
application is reopened, in which case
the period of adjustment under
§ 1.702(b) also does not include the
number of days, if any, in the period or
periods beginning on the date on which
a request for continued examination of
the application under 35 U.S.C. 132(b)
was filed or the date of mailing of an
action under 35 U.S.C. 132, whichever
occurs first, and ending on the date of
mailing of a subsequent notice of
allowance under 35 U.S.C. 151;
*
*
*
*
*
■ 2. Section 1.704 is amended by
redesignating paragraphs (c)(12) and
(13) as paragraphs (c)(13) and (14),
VerDate Mar<15>2010
17:25 Jun 17, 2014
Jkt 232001
Fish and Wildlife Service,
Interior.
ACTION: Proposed rule; reopening of
comment period.
We, the U.S. Fish and
Wildlife Service (Service), announce the
reopening of the public comment period
on the August 29, 2013, proposed
designation of critical habitat for the
Oregon spotted frog (Rana pretiosa)
under the Endangered Species Act of
1973, as amended (Act). We are
proposing changes to four of the
proposed critical habitat units based on
new information we have received. We
also announce the availability of a draft
economic analysis (DEA) of the
proposed designation of critical habitat
for the Oregon spotted frog and an
amended required determinations
section of the proposal. We are
reopening the comment period to allow
all interested parties an opportunity to
comment simultaneously on the
SUMMARY:
PO 00000
Frm 00045
Fmt 4702
Sfmt 4702
34685
proposed designation of critical habitat,
the associated DEA, the amended
required determinations section, and the
proposed changes to the critical habitat
units described in this document.
Comments previously submitted need
not be resubmitted, as they will be fully
considered in preparation of the final
rule.
The comment period for the
proposed rule published August 29,
2013 (at 78 FR 53538), is reopened. We
will consider comments on that
proposed rule or the changes to it
proposed in this document that we
receive or that are postmarked on or
before July 18, 2014. Comments
submitted electronically using the
Federal eRulemaking Portal (see
ADDRESSES section, below) must be
received by 11:59 p.m. Eastern Time on
the closing date.
ADDRESSES: Document availability: You
may obtain copies of the proposed rule
and the associated draft economic
analysis on the Internet at https://
www.regulations.gov at Docket No.
FWS–R1–ES–2013–0088 or by mail
from the Washington Fish and Wildlife
Office (see FOR FURTHER INFORMATION
CONTACT).
Written comments: You may submit
written comments by one of the
following methods:
(1) Electronically: Go to the Federal
eRulemaking Portal: https://
www.regulations.gov. Submit comments
on the critical habitat proposal and
associated draft economic analysis by
searching for Docket No. FWS–R1–ES–
2013–0088, which is the docket number
for this rulemaking.
(2) By hard copy: Submit comments
on the critical habitat proposal and
associated draft economic analysis U.S.
mail or hand-delivery to: Public
Comments Processing, Attn: FWS–R1–
ES–2013–0088; Division of Policy and
Directives Management; U.S. Fish and
Wildlife Service; 4401 N. Fairfax Drive,
MS 2042–PDM; Arlington, VA 22203.
We request that you send comments
only by the methods described above.
We will post all comments on https://
www.regulations.gov. This generally
means that we will post any personal
information you provide us (see the
Public Comments section below for
more information).
FOR FURTHER INFORMATION CONTACT: Ken
S. Berg, Manager, U.S. Fish and Wildlife
Service, Washington Fish and Wildlife
Office, 510 Desmond Drive SE., Suite
102, Lacey, WA 98503; telephone 360–
753–9440; or facsimile 360–753–9445.
Persons who use a telecommunications
device for the deaf (TDD) may call the
DATES:
E:\FR\FM\18JNP1.SGM
18JNP1
Agencies
[Federal Register Volume 79, Number 117 (Wednesday, June 18, 2014)]
[Proposed Rules]
[Pages 34681-34685]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-14186]
=======================================================================
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0023]
RIN 0651-AC96
Changes to Patent Term Adjustment in View of the Federal Circuit
Decision in Novartis v. Lee
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
-----------------------------------------------------------------------
[[Page 34682]]
SUMMARY: The United States Patent and Trademark Office (Office) is
proposing changes to the rules of practice pertaining to the patent
term adjustment provisions in view of the decision by the U.S. Court of
Appeals for the Federal Circuit (Federal Circuit) in Novartis AG v.
Lee. The Federal Circuit confirmed in Novartis that any time consumed
by continued examination is subtracted in determining the extent to
which the period of application pendency exceeds three years,
regardless when the continued examination was initiated. The Federal
Circuit, however, decided that the time consumed by continued
examination does not include the time after a notice of allowance,
unless the Office actually resumes examination of the application after
allowance. The Office is proposing changes to the rules of practice to
provide that the time consumed by continued examination does not
include the time after a notice of allowance, unless the Office
actually resumes examination of the application after allowance. The
Office also is proposing changes to the rules of practice to provide
that the submission of a request for continued examination after a
notice of allowance has been mailed will constitute a failure of an
applicant to engage in reasonable efforts to conclude processing or
examination of an application and thus result in a reduction of any
period of patent term adjustment.
DATES: Comment Deadline Date: Written comments must be received on or
before August 18, 2014.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: AC96.comments@uspto.gov. Comments also may be
submitted by postal mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450,
marked to the attention of Kery Fries, Senior Legal Advisor, Office of
Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy.
Comments further may 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.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments submitted in plain text are
preferred, but may be submitted in ADOBE[supreg] portable document
format or MICROSOFT WORD[supreg] format. Comments not submitted
electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
Comments will be available for viewing via the Office's Internet
Web site (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 Fries, Senior Legal Advisor,
Office of Patent Legal Administration, Office of the Deputy
Commissioner for Patent Examination Policy, at telephone number 571-
272-7757.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The Office is proposing changes to the
rules of practice pertaining to the patent term adjustment provisions
of 35 U.S.C. 154(b) in view of the decision by the Federal Circuit in
Novartis, 740 F.3d 593 (Fed. Cir. 2014). The Federal Circuit confirmed
in Novartis that any time consumed by continued examination under 35
U.S.C. 132(b) is subtracted in determining the extent to which the
period defined in 35 U.S.C. 154(b)(1)(B) exceeds three years,
regardless when the continued examination under 35 U.S.C. 132(b) was
initiated. The Federal Circuit, however, decided that the time consumed
by continued examination under 35 U.S.C. 132(b) does not include the
time after a notice of allowance unless the Office actually resumes
examination of the application after allowance.
Summary of Major Provisions: The Office is proposing changes to the
rules of practice to provide that the time consumed by continued
examination under 35 U.S.C. 132(b) does not include the time after a
notice of allowance, unless the Office actually resumes examination of
the application after allowance. The Office also is proposing changes
to the rules of practice to provide that the submission of a request
for continued examination under 35 U.S.C. 132(b) after a notice of
allowance under 35 U.S.C. 151 has been mailed will constitute a failure
of an applicant to engage in reasonable efforts to conclude processing
or examination of an application and thus result in a reduction of any
period of patent term adjustment under 35 U.S.C. 154(b)(1).
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: In January 2014, the Federal Circuit issued a decision
in Novartis pertaining to the patent term adjustment provisions of 35
U.S.C. 154(b), and specifically the impact of continued examination
under 35 U.S.C. 132(b) on patent term adjustment under the three-year
pendency provision of 35 U.S.C. 154(b)(1)(B). The Federal Circuit
confirmed in Novartis that any time consumed by continued examination
under 35 U.S.C. 132(b) is subtracted in determining the extent to which
the period defined in 35 U.S.C. 154(b)(1)(B) exceeds three years,
regardless when the continued examination under 35 U.S.C. 132(b) was
initiated. See 740 F.3d at 601 (``[t]he better reading of the language
is that the patent term adjustment time should be calculated by
determining the length of the time between application and patent
issuance, then subtracting any continued examination time (and other
time identified in (i), (ii), and (iii) of [35 U.S.C. 154](b)(1)(B)),
and determining the extent to which the result exceeds three years'').
The Federal Circuit, however, decided that the time consumed by
continued examination under 35 U.S.C. 132(b) does not include the time
after a notice of allowance unless the Office actually resumes
examination of the application after allowance. See 740 F.3d at 602
(``[t]he common-sense understanding of `time consumed by continued
examination,' 35 U.S.C. 154(b)(1)(B)(i), is time up to allowance, but
not later, unless examination on the merits resumes''). Therefore, the
Office is proposing changes to the rules of practice to provide that
the time consumed by continued examination under 35 U.S.C. 132(b) does
not include the time after a notice of allowance, unless the Office
actually resumes examination of the application after allowance.
The Office makes the patent term adjustment determination indicated
in the patent by a computer program that uses the information recorded
in the Office's Patent Application Locating and Monitoring (PALM)
system (except when an applicant requests reconsideration pursuant to
Sec. 1.705). See Changes to Implement Patent Term Adjustment Under
Twenty-Year Patent Term, 65 FR 56365, 56370, 56380-81 (Sept. 18, 2000)
(final rule). The decision in Novartis that the time consumed by
continued examination under 35 U.S.C. 132(b) does not include the time
after a notice of allowance unless the Office actually resumes
examination of the application after
[[Page 34683]]
allowance requires modifications of the Office's patent term adjustment
program, and these modifications of the Office's patent term adjustment
program have not yet been completed. The Office, however, calculates
the patent term adjustment manually when an applicant requests
reconsideration of a patent term adjustment determination pursuant to
Sec. 1.705. The Office is now deciding requests for reconsideration of
a patent term adjustment filed pursuant to Sec. 1.705 consistent with
the Federal Circuit decision in Novartis.
The patent term adjustment statutory provision also includes the
provision 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.'' See 35 U.S.C. 154(b)(2)(C)(i) and (iii). Under the
authority provided in 35 U.S.C. 154(b)(2)(C), the Office is proposing a
rule of practice that establishes the submission of a request for
continued examination under 35 U.S.C. 132(b) after a notice of
allowance under 35 U.S.C. 151 has been mailed as constituting a failure
of an applicant to engage in reasonable efforts to conclude processing
or examination of an application. This rule of practice is proposed to
ensure that an applicant does not obtain multiple periods of patent
term adjustment under 35 U.S.C. 154(b)(1)(B) for the time after a
notice of allowance under 35 U.S.C. 151 as a consequence of delaying
issuance of the application by filing request for continued examination
under 35 U.S.C. 132(b) after a notice of allowance under 35 U.S.C. 151.
Discussion of Specific Rules
The following is a discussion of proposed amendments to title 37 of
the Code of Federal Regulations, Part 1:
Section 1.703: Section 1.703(b)(1) is proposed to be amended to
provide that the time consumed by continued examination of the
application under 35 U.S.C. 132(b) is the number of days, if any, in
the period beginning on the date on which a request for continued
examination of the application under 35 U.S.C. 132(b) was filed and
ending on the date of mailing of a notice of allowance under 35 U.S.C.
151, unless prosecution in the application is reopened. If prosecution
in the application is reopened, the time consumed by continued
examination of the application under 35 U.S.C. 132(b) also includes the
number of days, if any, in the period or periods beginning on the date
on which a request for continued examination of the application under
35 U.S.C. 132(b) was filed or the date of mailing of an action under 35
U.S.C. 132, whichever occurs first, and ending on the date of mailing
of a subsequent notice of allowance under 35 U.S.C. 151. As discussed
previously, this proposed amendment is consistent with the decision in
Novartis that the time consumed by continued examination under 35
U.S.C. 132(b) does not include the time after a notice of allowance
unless the Office actually resumes examination of the application after
allowance.
Section 1.704: Section 1.704(c) is proposed to be amended to
include a new provision that establishes the submission of a request
for continued examination under 35 U.S.C. 132(b) after a notice of
allowance under 35 U.S.C. 151 has been mailed as constituting a failure
of an applicant to engage in reasonable efforts to conclude processing
or examination of an application, 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 date of mailing of the notice of
allowance under 35 U.S.C. 151 and ending on the date the request for
continued examination under 35 U.S.C. 132(b) was filed. As discussed
previously, this rule of practice is proposed to ensure that an
applicant does not obtain multiple periods of patent term adjustment
under 35 U.S.C. 154(b)(1)(B) for the time after a notice of allowance
under 35 U.S.C. 151 as a consequence of delaying issuance of the
application by filing request(s) for continued examination under 35
U.S.C. 132(b) after a notice of allowance under 35 U.S.C. 151. The
provisions of Sec. 1.704(d) would not be applicable to this new
provision as the information disclosure statement rules (Sec. Sec.
1.97 and 1.98) provide for the submission of an information disclosure
statement after a notice of allowance under 35 U.S.C. 151 has been
mailed up until the issue fee is paid without the need for the filing
of a request for continued examination under 35 U.S.C. 132(b) (Sec.
1.97(d)), and the Office has a program to allow for the submission of
an information disclosure statement even after the payment of the issue
fee (Quick Path Information Disclosure Statement (QPIDS) Pilot Program,
77 FR 27443 (May 10, 2012)).
Rulemaking Considerations
A. Administrative Procedure Act: This rulemaking proposes to amend
37 CFR 1.703 to provide that the time consumed by continued examination
under 35 U.S.C. 132(b) does not include the time after a notice of
allowance has been mailed, unless the Office actually resumes
examination of the application after allowance. This rulemaking also
proposes to amend 37 CFR 1.704 to include a provision that establishes
the submission of a request for continued examination under 35 U.S.C.
132(b) after a notice of allowance under 35 U.S.C. 151 has been mailed
as constituting a failure of an applicant to engage in reasonable
efforts to conclude processing or examination of an application. The
proposed amendment to 37 CFR 1.703 to provide that the time consumed by
continued examination under 35 U.S.C. 132(b) does not include the time
after a notice of allowance has been mailed, unless the Office actually
resumes examination of the application after allowance, simply
implements the Federal Circuit's ruling on the provisions of 35 U.S.C.
154(b)(1)(B)(i) in Novartis. Therefore, the proposed amendment to 37
CFR 1.703 is simply a procedural and/or interpretive rule. See Bachow
Commc'ns Inc. v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules
governing an application process are procedural under the
Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims); Nat'l Org. of Veterans' Advocates, Inc. v. Sec'y of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law),
with respect to the proposed change to 37 CFR 1.703. See Cooper Techs.
Co. v. Dudas, 536 F.3d 1330, 1336-37 (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 rulemaking for ``interpretative rules, general statements of
policy, or rules of agency organization, procedure, or practice'')
(quoting 5 U.S.C. 553(b)(A)). The Office, however, is publishing all of
these proposed changes (rather than only the proposed change to 37 CFR
1.704) for comment as it seeks the benefit of the public's views on the
Office's proposed implementation of the Federal Circuit's
interpretation of the provisions of 35 U.S.C. 154(b)(1)(B)(i) in
Novartis.
[[Page 34684]]
B. 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 proposed changes to the patent term adjustment reduction
provisions do not impose any additional requirements or fees on
applicants. The proposed change to 37 CFR 1.703 simply implements the
Federal Circuit's ruling on the provisions of 35 U.S.C. 154(b)(1)(B)(i)
in Novartis and reflects how patent term adjustment is now calculated
in response to a request for reconsideration of patent term adjustment.
The proposed change to 37 CFR 1.704 specifies that the submission of a
request for continued examination under 35 U.S.C. 132(b) after a notice
of allowance under 35 U.S.C. 151 has been mailed constitutes a failure
of an applicant to engage in reasonable efforts to conclude processing
or examination of an application. This proposed change will not have a
significant economic impact on a substantial number of small entities
because applicants are not entitled to patent term adjustment for
examination delays that result from an applicant's delay in prosecuting
the application (35 U.S.C. 154(b)(2)(C)(i) and 37 CFR 1.704(a)) and
because applicants may avoid any consequences from this provision
simply by refraining from filing a request for continued examination
under 35 U.S.C. 132(b) after a notice of allowance under 35 U.S.C. 151
has been mailed.
For the foregoing reasons, the changes proposed in this notice will
not have a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. 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 rulemaking 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.
E. 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).
F. 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).
G. 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).
H. 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).
I. 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).
J. 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).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801-808), the United States Patent and Trademark Office
will submit a report containing any final rule resulting from this
rulemaking and other required information to the U.S. Senate, the U.S.
House of Representatives, and the Comptroller General of the Government
Accountability Office.
L. Unfunded Mandates Reform Act of 1995: The changes set forth 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.
M. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
N. 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.
O. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. 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 proposed
in this rulemaking would: (1) Provide that the time consumed by
continued examination under 35 U.S.C. 132(b) does not include the time
after a notice of allowance, unless the Office actually resumes
examination of the application after allowance; and (2) provide that
the submission of a request for continued examination under 35 U.S.C.
132(b) after a notice of allowance under 35 U.S.C. 151 has been mailed
constitutes a failure of an applicant to engage in reasonable efforts
to conclude processing or examination of an application.
This rulemaking does not add any additional requirements (including
information collection requirements) or
[[Page 34685]]
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 in this rulemaking 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 recordkeeping
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
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 1.703 is amended by revising paragraph (b)(1) to read as
follows:
Sec. 1.703 Period of adjustment of patent term due to examination
delay.
* * * * *
(b) * * *
(1) The number of days, if any, in the period beginning on the date
on which a request for continued examination of the application under
35 U.S.C. 132(b) was filed and ending on the date of mailing of a
notice of allowance under 35 U.S.C. 151, unless prosecution in the
application is reopened, in which case the period of adjustment under
Sec. 1.702(b) also does not include the number of days, if any, in the
period or periods beginning on the date on which a request for
continued examination of the application under 35 U.S.C. 132(b) was
filed or the date of mailing of an action under 35 U.S.C. 132,
whichever occurs first, and ending on the date of mailing of a
subsequent notice of allowance under 35 U.S.C. 151;
* * * * *
0
2. Section 1.704 is amended by redesignating paragraphs (c)(12) and
(13) as paragraphs (c)(13) and (14), respectively, and by adding a new
paragraph (c)(12) to read as follows:
Sec. 1.704 Reduction of period of adjustment of patent term.
* * * * *
(c) * * *
(12) Submission of a request for continued examination under 35
U.S.C. 132(b) after a notice of allowance under 35 U.S.C. 151 has been
mailed, 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 date
of mailing of the notice of allowance under 35 U.S.C. 151 and ending on
the date the request for continued examination under 35 U.S.C. 132(b)
was filed;
* * * * *
Dated: June 11, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-14186 Filed 6-17-14; 8:45 am]
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