Changes to Continued Prosecution Application Practice, 68121-68124 [2014-27032]

Agencies

• DEPARTMENT OF COMMERCE

[Federal Register Volume 79, Number 220 (Friday, November 14, 2014)]
[Rules and Regulations]
[Pages 68121-68124]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-27032]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2014-0001]
RIN 0651-AC92


Changes to Continued Prosecution Application Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Leahy-Smith America Invents Act (AIA) revised and 
streamlined the requirements for the inventor's oath or declaration. In 
implementing the AIA inventor's oath or declaration provisions, the 
United States Patent and Trademark Office (Office) provided that an 
applicant may postpone the filing of the inventor's oath or declaration 
until allowance if the applicant provides an application

[[Page 68122]]

data sheet indicating the name, residence, and mailing address of each 
inventor. The rules pertaining to continued prosecution applications 
(which are applicable only to design applications) require that the 
prior nonprovisional application of a continued prosecution application 
be complete, which requires that the prior nonprovisional application 
contain the inventor's oath or declaration. The Office published an 
interim rule on March 5, 2014, to revise the rules pertaining to 
continued prosecution applications to permit the filing of a continued 
prosecution application even if the prior nonprovisional application 
does not contain the inventor's oath or declaration so long as the 
continued prosecution application is filed on or after September 16, 
2012, and the prior nonprovisional application contains an application 
data sheet indicating the name, residence, and mailing address of each 
inventor (continued prosecution application interim rule). The Office 
received no comments from the public in response to the continued 
prosecution application interim rule published on March 5, 2014. This 
final rule adopts as final the amendments to the rules of practice 
originally set forth in the continued prosecution application interim 
rule.

DATES: Effective Date: This final rule is effective on November 14, 
2014. The continued prosecution application interim rule published on 
March 5, 2014 at 79 FR 12384 was effective on March 5, 2014.

FOR FURTHER INFORMATION CONTACT: Eugenia A. Jones, Senior Legal 
Advisor, Office of Patent Legal Administration, Office of the Deputy 
Commissioner for Patent Examination Policy, at (571) 272-7727.

SUPPLEMENTARY INFORMATION:
    Executive Summary: Purpose: The previously published continued 
prosecution application interim rule permits the filing of a continued 
prosecution application even if the prior nonprovisional application 
does not contain the inventor's oath or declaration. See Changes to 
Continued Prosecution Application Practice, 79 FR 12384 (Mar. 5, 2014). 
The change in the continued prosecution application interim rule avoids 
the need for applicants to file the inventor's oath or declaration in 
an application in order to file a continued prosecution application of 
that application. This final rule adopts as final the amendments to the 
rules of practice originally set forth in the continued prosecution 
application interim rule.
    Summary of Major Provisions: The previously published continued 
prosecution application interim rule provides that the prior 
nonprovisional application of a continued prosecution application that 
was filed on or after September 16, 2012, is not required to contain 
the inventor's oath or declaration so long as the prior nonprovisional 
application contains an application data sheet indicating the name, 
residence, and mailing address of each inventor. As discussed 
previously, this final rule adopts as final the amendments to the rules 
of practice originally set forth in the continued prosecution 
application interim rule.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    Background: The Office revised the rules of practice pertaining to 
the inventor's oath or declaration during implementation of the AIA 
inventor's oath or declaration provisions to permit an applicant to 
postpone the filing of the inventor's oath or declaration until payment 
of the issue fee if the applicant provides an application data sheet 
indicating the name, residence, and mailing address of each inventor. 
See Changes To Implement the Inventor's Oath or Declaration Provisions 
of the Leahy-Smith America Invents Act, 77 FR 48776, 48779-80 (Aug. 14, 
2012), and Changes To Implement the Patent Law Treaty, 78 FR 62367, 
62376 (Oct. 21, 2013). The rules of practice pertaining to continued 
prosecution applications (which are applicable only to design 
applications) formerly required that the prior nonprovisional 
application of a continued prosecution application be a design 
application that is complete as defined by 37 CFR 1.51(b). See 37 CFR 
1.53(d)(1)(ii) (2013) (required that the prior nonprovisional 
application of a continued prosecution application be a design 
application that is complete as defined by 37 CFR 1.51(b)). 37 CFR 
1.51(b) in turn requires that an application contain the inventor's 
oath or declaration to be complete. See 37 CFR 1.51(b)(2). The 
continued prosecution application interim rule amends 37 CFR 
1.53(d)(1)(ii) to permit the filing of a continued prosecution 
application even if the prior nonprovisional application does not 
contain the inventor's oath or declaration so long as the continued 
prosecution application is filed on or after September 16, 2012, and 
the prior nonprovisional application contains an application data sheet 
indicating the name, residence, and mailing address of each inventor. 
This change avoids the need for applicants to file the inventor's oath 
or declaration in an application in order to file a continued 
prosecution application of that application. This final rule adopts as 
final the amendments to the rules of practice originally set forth in 
the continued prosecution application interim rule.

Discussion of Specific Rules

    The continued prosecution application interim rule published on 
March 5, 2014, amended Sec.  1.53(d)(1)(ii) to change ``[t]he prior 
nonprovisional application is a design application that is complete as 
defined by Sec.  1.51(b)'' to ``[t]he prior nonprovisional application 
is a design application that is complete as defined by Sec.  1.51(b), 
except for the inventor's oath or declaration if the application is 
filed on or after September 16, 2012, and the prior nonprovisional 
application contains an application data sheet meeting the conditions 
specified in Sec.  1.53(f)(3)(i).''
    Comments: The Office received no comments in response to the 
continued prosecution application interim rule.

Rulemaking Considerations

    A. Administrative Procedure Act: This final rule simply adopts as 
final changes in the continued prosecution application interim rule, 
which pertain to the procedures that apply to the filing of a continued 
prosecution application and do not change the substantive criteria of 
patentability. Therefore, the changes in this rulemaking involve rules 
of agency practice and procedure, and/or interpretive rules. See JEM 
Broad. Co. v. FCC, 22 F.3d 320, 326 (D.C. Cir. 1994) (``[T]he critical 
feature of the procedural exception [in 5 U.S.C. 553(b)(A)] is that it 
covers agency actions that do not themselves alter the rights or 
interests of parties, although [they] may alter the manner in which the 
parties present themselves or their viewpoints to the agency'') 
(quoting Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980)); 
see also Bachow Commc'ns Inc. v. FCC, 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).
    In addition, the Office, pursuant to authority at 5 U.S.C. 
553(b)(3)(B), found good cause to adopt the changes in the continued 
prosecution application interim rule without prior notice and an 
opportunity for public comment, as such procedures would have been 
contrary to the public interest. Delay in the promulgation of the 
changes in the continued prosecution application

[[Page 68123]]

interim rule to provide notice and comment procedures would have caused 
harm to those applicants who file a continued prosecution application 
where the prior nonprovisional application does not contain the 
inventor's oath or declaration. Immediate implementation of the changes 
in the continued prosecution application interim rule was in the public 
interest because: (1) The public did not need time to conform its 
conduct as the changes in the continued prosecution application interim 
rule merely eased the requirements for filing a continued prosecution 
application; and (2) those applicants who were ineligible to file a 
continued prosecution application because the prior nonprovisional 
application does not contain the inventor's oath or declaration 
benefitted from the changes in the continued prosecution application 
interim rule. See Nat'l Customs Brokers & Forwarders Ass'n v. U.S., 59 
F.3d 1219, 1223-24 (Fed. Cir. 1995).
    Accordingly, prior notice and opportunity for public comment was 
not required pursuant to 5 U.S.C. 553(b) or (c), 35 U.S.C. 2(b)(2)(B), 
or any other law. 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)). In addition, pursuant to authority at 5 U.S.C. 553(d)(1), 
the changes in the continued prosecution application interim rule were 
made immediately effective because they relieved restrictions in the 
requirements for filing a continued prosecution application.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Order 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 affect 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 et seq.), prior to issuing any final rule, the 
United States Patent and Trademark Office will submit a report 
containing the rule and other required information to the United States 
Senate, the United States House of Representatives, and the Comptroller 
General of the Government Accountability Office. The changes in this 
final rule 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 final rule is not a ``major rule'' 
as defined in 5 U.S.C. 804(2).
    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. This final rule involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). 
This rulemaking

[[Page 68124]]

does not impose any additional collection requirements under the 
Paperwork Reduction Act which are subject to further review by OMB.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
Information, Inventions and patents, Reporting and recordkeeping 
requirements, Small Businesses.

0
For the reasons set forth in the preamble, the interim rule amending 37 
CFR part 1 which was published at 79 FR 12384-12386 on March 5, 2014, 
is adopted as a final rule without change.

    Dated: November 6, 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. 2014-27032 Filed 11-13-14; 8:45 am]
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