Changes To Facilitate Applicant's Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices, 65649-65655 [2015-27335]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 80, Number 207 (Tuesday, October 27, 2015)]
[Rules and Regulations]
[Pages 65649-65655]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2015-27335]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2014-0012]
RIN 0651-AC95


Changes To Facilitate Applicant's Authorization of Access to 
Unpublished U.S. Patent Applications by Foreign Intellectual Property 
Offices

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The electronic sharing of information and documents between 
intellectual property (IP) offices is critical for increasing the 
efficiency and quality of patent examination worldwide. Current 
examples of this sharing include the priority document exchange (PDX) 
program and the program by which U.S. search results are delivered to 
the European Patent Office (EPO). In support of electronic file 
sharing, the United States Patent and Trademark Office (Office) is 
revising its rules of practice to include a specific provision by which 
an applicant can authorize the Office to give a foreign IP office that 
is a party to an agreement with the Office access to all or part of the 
file contents of an unpublished U.S. patent application in order to 
satisfy a requirement for information imposed on a counterpart 
application filed with the foreign IP office. Previously, for 
unpublished U.S. patent applications, applicants followed one 
regulatory provision to provide the Office with authorization for a 
foreign IP office to access an application-as-filed and followed 
another regulatory provision to provide the Office with authorization 
to share the file contents with a foreign IP office. The final rule 
changes consolidate the specific provisions of the regulations by which 
applicants give the Office authority to provide a foreign IP office 
with access to an application in order to satisfy a requirement for 
information of the foreign IP office. The Office is also revising the 
rules of practice to indicate there is no fee for providing a foreign 
IP office with an electronic copy of an application-as-filed or an 
electronic copy of file contents pursuant to a bilateral or 
multilateral agreement. Additionally, along with changes to the 
application data sheet (ADS) form, the final rule changes simplify the 
process for how applicants provide the Office with the required 
authorization, thereby reducing the resources applicants must expend to 
comply with these foreign IP office requirements, and enhance the 
quality of patent examination.

DATES: Effective Date: The changes in this final rule are effective on 
November 30, 2015. The revised ADS form (PTO/AIA/14) will be posted on 
the Office's Web site on or before the effective date.
    Applicability Date: The changes to 37 CFR 1.14(h) apply to all 
patent applications filed before November 30, 2015, and to all patent 
applications filed on or after November 30, 2015.

FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Senior Legal 
Advisor (telephone (571) 272-7711; electronic mail message (susy.tsang-foster@uspto.gov)) or Joseph F. Weiss, Jr., Senior Legal Advisor 
(telephone (571) 272-2259; electronic mail message 
(joseph.weiss@uspto.gov)), of the Office of Patent Legal 
Administration, Office of the Deputy Commissioner for Patent 
Examination Policy.

SUPPLEMENTARY INFORMATION: 
    Executive Summary: Purpose: 37 CFR 1.14(h) regulates access by 
foreign IP offices to U.S. applications. Formerly, 37 CFR 1.14(h) 
contained only a specific provision by which an applicant could 
authorize the Office to give a foreign IP office participating with the 
Office in a bilateral or multilateral priority document exchange 
agreement access to a U.S. application-as-filed. 37 CFR 1.14(h) is now 
expanded to also include a specific provision by which, under certain 
circumstances, an applicant can authorize the Office to give a foreign 
IP office access to all or part of the file contents of a U.S. patent 
application in order to satisfy the foreign IP office's requirement for 
information.
    Summary of Major Provisions: This final rule primarily provides a 
specific provision by which an applicant can authorize the Office to 
provide a foreign IP office access to all or part of the file contents 
of a U.S. patent application where the foreign IP office has imposed a 
requirement for information on a counterpart application filed with 
that office and is a party to a bilateral or multilateral agreement 
with the Office to provide the required information from the U.S. 
application.
    This final rule also revises the rules of practice to indicate that 
there is no fee for providing a foreign IP office with an electronic 
copy of an application-as-filed or an electronic copy of file contents 
pursuant to a bilateral or multilateral agreement. Previously, the 
regulations only indicated that there was no fee for providing a 
foreign IP office with a copy of an application-as-filed pursuant to a 
priority document exchange agreement.

[[Page 65650]]

    Additionally, the Office is revising the ADS form (PTO/AIA/14) as 
well as the PTO/SB/39 and PTO/SB/69 forms to facilitate applicant's 
authorization of access to unpublished U.S. applications by foreign IP 
offices.
    Costs and Benefits: This rulemaking is not economically significant 
as that term is defined in Executive Order 12866 (Sept. 30, 1993).
    Background: The electronic sharing of information and documents 
between IP offices is critical for increasing the efficiency and 
quality of patent examination worldwide. The electronic sharing of 
documents between IP offices also benefits applicants by reducing the 
cost of ordering documents from one IP office and then filing them in 
another IP office where a counterpart application has been filed.
    Due to the confidential nature of unpublished U.S. patent 
applications, set forth in 35 U.S.C. 122, an applicant must provide the 
Office with written authority in accordance with 37 CFR 1.14 to grant a 
foreign IP office access to an unpublished U.S. patent application. 
With this grant of authority, the Office may provide the U.S. patent 
application-as-filed or the requested file contents, such as 
information and documents, from the U.S. patent application to the 
foreign IP office on behalf of the applicant. Previously, applicants 
used former 37 CFR 1.14(h) to authorize the Office to allow a foreign 
IP office participating in a bilateral or multilateral priority 
document exchange agreement access to an unpublished U.S. priority 
application-as-filed. Former 37 CFR 1.14(h), however, did not contain a 
specific provision by which an applicant could authorize the Office to 
provide a foreign IP office access to an unpublished U.S. patent 
application's file contents. As a result, U.S. applicants, unprompted 
by the rules, found it necessary to provide written authority for 
access by a foreign IP office to an unpublished application's contents 
in accordance with 37 CFR 1.14(c) in order to satisfy a requirement for 
information by the foreign IP office.
    General Discussion of the Changes to 37 CFR 1.14(h): The Office is 
revising 37 CFR 1.14(h) to include a specific provision by which an 
applicant can authorize the Office to give a foreign IP office access 
to all or part of the file contents (as opposed to a copy of the 
application-as-filed) of an unpublished patent application, including 
search results, to satisfy a foreign IP office requirement for 
information in a counterpart application filed by a U.S. applicant. The 
changes to 37 CFR 1.14(h) consolidate the provisions by which 
applicants can authorize the Office to give access to an unpublished 
application-as-filed or its file contents to a foreign IP office, while 
also clarifying for applicants the provision of 37 CFR 1.14 under which 
such access authorization can be provided. The final rule changes will 
further serve as a reminder of the opportunity for applicants to grant 
the Office the authority to provide a foreign IP office with access to 
file contents of an unpublished U.S. patent application.
    Any information concerning an unpublished application or documents 
from an unpublished application will only be shared in accordance with 
the authority provided by applicant and in accordance with the terms of 
an agreement between the Office and respective foreign IP offices. The 
Office is not requiring any fee for this service. In addition, sharing 
of information and documents would be limited to those foreign IP 
offices where applicant has filed a counterpart application and 
provided written authority to give a foreign IP office access to all or 
part of the file contents of an unpublished U.S. application.
    The changes to 37 CFR 1.14(h) emphasize the Office's continued 
support of work sharing efforts between IP offices to increase the 
quality of issued patents, as well as its commitment to assist in 
reducing the expenditure of resources of its applicants when complying 
with the requirements of a foreign IP office in a counterpart 
application.
    Revision to Application Data Sheet Form: In addition to the final 
rule changes, the Office is revising the application data sheet (ADS) 
form, PTO/AIA/14 (``the revised ADS form''). The revised ADS form 
includes separate access authorizations for the PDX program and for the 
program by which U.S. search results are delivered to the European 
Patent Office (EPO). The ADS form may be modified in the future to 
include access authorizations for new work sharing initiatives.
    In contrast to the previous version of the ADS form, the revised 
ADS form includes an ``opt-out'' check box for each access 
authorization and not an ``opt-in'' check box. Therefore, when an 
``opt-out'' check box for a specific authorization is selected, the 
Office would not provide access to the contents of the application 
identified in the authorization.
    The revised ADS form will make it easier for applicants to give the 
necessary authorization for access to an application, as well as afford 
an applicant the opportunity to inform the Office that the required 
authority to allow a foreign IP office specific access to an 
application has not been given. The ``Authorization to Permit Access'' 
section containing an opt-in check box for the PDX program in the 
previous version of the ADS form will be replaced by the 
``Authorization or Opt-Out of Authorization to Permit Access'' section 
in the first release of the revised ADS form, which is intended to 
contain two subsections. The first subsection will contain the 
authorization to permit access to the application-as-filed (the PDX 
program) and the authorization to permit access to the search results 
by the EPO. The second subsection will contain the corresponding ``opt-
out'' check box for each authorization in the first subsection.
    Appropriate authorization language for access in any ADS generated 
by applicant must be the same as the authorization language provided in 
the Office's revised ADS form. Use of the same language will permit the 
Office to readily recognize that applicant has given the necessary 
authorization. If an applicant-generated ADS does not include the 
required authorization language for access by a foreign IP office, the 
ADS will be interpreted as not providing the authorization necessary to 
give a foreign IP office access.
    The submission of a properly signed revised ADS form with the 
appropriate authorization language on filing of the patent application 
under 35 U.S.C. 111(a) would be a specific act authorizing access. In 
addition to an application filed under 35 U.S.C. 111(a), if an ADS is 
present upon the initial submission of a patent application under 35 
U.S.C. 371, the submitted ADS containing authorization would be a 
specific act authorizing access. Where a revised ADS form, including 
the authorization language for access by foreign IP office(s) and 
signed in accordance with 37 CFR 1.14(c) and 1.33(b), has been 
submitted with an application, the Office would give the foreign IP 
office(s) access to the contents in accordance with the specific 
authorization language, upon request of the foreign IP office.
    If, however, applicant files a corrected ADS form (i.e., PTO/AIA/
14) or a corrected applicant-generated ADS that was not submitted with 
an application, the authorization for access section will not be 
reviewed as any changes concerning authorization for access may not be 
readily apparent to the Office. Instead, applicants must use forms PTO/
SB/39 and PTO/SB/69 (or an applicant-generated equivalent), as 
appropriate, to give or rescind authorization for access after the 
filing of the application. Forms PTO/SB/39 and PTO/SB/69 will be

[[Page 65651]]

revised to include opt-in and opt-out check boxes for giving and 
rescinding the respective authorizations for access after the filing of 
an application. These two forms can be used in all applications, 
regardless of their filing dates. Therefore, a revised ADS form used to 
correct or update application data would only need to be signed in 
accordance with 37 CFR 1.33(b) because the authorization for access 
section is not effective if the revised ADS form is not submitted with 
the application.
    To avoid duplicative processing, the Office is removing the opt-in 
check box and associated authorization language for the PDX program 
from the inventor's oath or declaration form PTO/AIA/08 (for 
applications filed on or after September 16, 2012). Form PTO/SB/39 for 
the PDX authorization and Form PTO/SB/69 for the search results to the 
EPO authorization will remain available for applicants that do not use 
an ADS or have selected the check boxes for opting out of specific 
authorizations for access by a foreign IP office on the revised ADS 
form submitted with the application, but later decide to give a foreign 
IP office access to the application.
    The changes to the Office's ADS form PTO/AIA/14 should reduce those 
instances where an applicant inadvertently fails to provide the 
authorization necessary to participate in PDX (by not selecting the 
opt-in check box for priority document exchange authorization on the 
previous version of the PTO/AIA/14 form submitted with the application) 
and, as a result, must expend resources to obtain and file a copy of a 
U.S. priority document with a foreign IP office. Similarly, this 
approach will help eliminate those instances where an applicant 
inadvertently fails to give the Office authority (by filing the former 
version of form PTO/SB/69) to provide the EPO with the search results 
from an unpublished U.S. priority application and, as a consequence, 
must expend resources to file the results with the EPO.
    If applicant has not provided proper written authority for access, 
the Office will not deliver an unpublished priority document or file 
contents of an unpublished application to a foreign IP office, even 
where a counterpart application has been filed. As discussed above, the 
revised ADS form would need to be executed in accordance with 37 CFR 
1.33(b), and if there is written authority for any access by a foreign 
IP office, the revised ADS form also must be executed in accordance 
with 37 CFR 1.14(c). Applicants should be aware of the differences in 
signature requirements under 37 CFR 1.33(b) and under 37 CFR 1.14(c). 
For example, under 37 CFR 1.33(b) in applications filed on or after 
September 16, 2012, the following individuals can sign:
     A patent practitioner of record;
     A patent practitioner not of record who acts in a 
representative capacity under the provisions of 37 CFR 1.34; or
     The applicant under 37 CFR 1.42. Unless otherwise 
specified, all papers submitted on behalf of a juristic entity must be 
signed by a patent practitioner.
    By contrast, under 37 CFR 1.14(c) in applications filed on or after 
September 16, 2012, the following individuals can sign:
     The applicant;
     A patent practitioner of record;
     The assignee or an assignee of an undivided part interest;
     The inventor or a joint inventor; or
     A registered attorney or agent named in the papers 
accompanying the application papers filed under 37 CFR 1.53 or the 
national stage under 37 CFR 1.495, if a power of attorney has not been 
appointed under 37 CFR 1.32.
    If the revised ADS form submitted with an application is not signed 
in accordance with the relevant rules, then applicant has not provided 
written authority for access by a foreign IP office to an application. 
As can be seen by a comparison of the individuals listed in both 37 CFR 
1.33(b) and 37 CFR 1.14(c), in most instances an individual listed in 
37 CFR 1.33(b) that can sign the revised ADS form can also give access 
to the application. For example, a patent practitioner of record can 
sign under both of these regulations. However, if a power of attorney 
has been appointed under 37 CFR 1.32, which was effective on filing, 
and a patent practitioner not of record who acts in a representative 
capacity under the provisions of 37 CFR 1.34 signs the revised ADS form 
that is submitted with the application, the Office will not recognize 
that the applicant has provided written authority for access in the 
revised ADS form. Where forms PTO/SB/39 for PDX authorization and PTO/
SB/69 for search results to the EPO authorization are used instead of 
the revised ADS form, these forms must still be executed in accordance 
with 37 CFR 1.14(c) even though written authority is provided for under 
37 CFR 1.14(h) as amended by this final rule.
    The transaction of sharing documents and information from a U.S. 
application with a foreign IP office has several built in safeguards to 
ensure that only authorized sharing occurs. For example, in order for a 
foreign IP office to receive information about a U.S. application, the 
Office requires that the foreign IP office expressly identify the U.S. 
application number, along with other elements of bibliographic data for 
each U.S. application in its request, to ensure that only information 
pertaining to the correct U.S. application will be provided to the 
foreign IP office. Once the application is properly identified, the 
Office will then determine whether the requisite authorization for 
access exists in the U.S. application. The Office will only share 
information or other file content from a U.S. application with a 
foreign IP office when both the correct application is identified and 
the existence of proper authorization is confirmed. If an unpublished 
application, which has not been foreign filed, includes an unintended 
access authorization pursuant to revised 37 CFR 1.14(h), a foreign IP 
office would not obtain access because it would not have the 
information necessary to request access to that specific U.S. 
application.
    Further, the U.S. application's filing receipt will indicate 
whether applicant has provided written authority for access pursuant to 
37 CFR 1.14(h). Applicants should inspect the application filing 
receipt and request a corrected filing receipt if authorization for 
access under 37 CFR 1.14(h) was incorrectly captured from the revised 
ADS form or from an applicant-generated ADS filed along with the 
application. If authorization for access was inadvertently given, a 
request for rescission of the authorization can be made by filing 
either the PTO/SB/39 form or the PTO/SB/69 form in each application 
where the authorization has been recognized by the Office. The Office 
should be informed of such rescission as early as possible so the 
Office has time to recognize the request for rescission and act upon 
it.
    Discussion of Specific Rules: The following is a discussion of the 
amendments to Title 37 of the Code of Federal Regulations, part 1, in 
this final rule.
    Section 1.14: Section 1.14(h)(1) is amended to retain the first 
sentence of former Sec.  1.14(h)(1) and include the provisions from 
former Sec.  1.14(h)(3). Section 1.14(h)(1) also is amended to include 
that the date of filing of the written authority for priority document 
exchange may be provided to the respective participating foreign IP 
office, which codifies the practice set forth in the Official Gazette 
of the United States Patent and Trademark Office (1328 OG 90 (March 11, 
2008)). In Sec.  1.14(h)(1), the text added from former Sec.  
1.14(h)(3) has been amended to delete the language ``indicated in the 
written authority.'' This deleted language is not necessary

[[Page 65652]]

as written authority for access under former Sec.  1.14(h) and Sec.  
1.14(h) as amended in this final rule will result in access being 
granted to all PDX and WIPO Digital Access Service (DAS) participating 
foreign IP offices in which a subsequently filed application claims 
benefit of the earlier filed U.S. application.
    Sections 1.14(h)(1)(i) and (ii) also are amended to include the 
term ``bibliographic data'' to reflect that ``bibliographic data'' is 
used to ensure the correct application-as-filed is being provided to 
the participating foreign IP office requesting access in any access to 
the application-as-filed transaction. The term bibliographic data as 
used in Sec.  1.14(h)(1) covers certain bibliographic data set forth in 
WIPO standard ST.9 for bibliographic data. The bibliographic data used 
to confirm that the correct application-as-filed is being provided may 
include the patent document identification, filing data, priority data, 
publication data, data concerning technical information such as patent 
classification (international or domestic), and the title of the 
invention.
    Section 1.14(h)(2) is revised to include a provision by which an 
applicant can authorize the Office to grant a foreign IP office access 
to the file contents of an application where a counterpart application 
has been filed with a foreign IP office that has imposed a requirement 
for information on a counterpart application filed with the foreign IP 
office. The Office would only provide access to the relevant portion or 
portions of an unpublished U.S. application's file contents necessary 
to satisfy any requirement for information by the foreign IP office, 
triggered by the U.S. applicant filing a counterpart application with 
the foreign IP office. The Office and the foreign IP office would also 
need to have a bilateral or multilateral agreement for the Office to 
provide the required information. The agreement would provide for the 
secure transmission and receipt of any shared information. Section 
1.14(h)(2)(i) is amended to include the term ``bibliographic data'' to 
reflect that ``bibliographic data'' is used to ensure the information 
is from the correct application for which access has been requested by 
the foreign IP office in any access to the application. The term 
bibliographic data as used in Sec.  1.14(h)(2) includes the same types 
of bibliographic data set discussed above with respect to Sec.  
1.14(h)(1).
    Former 1.14(h)(2) has been moved to Sec.  1.14(h)(3).
    Section 1.14(h)(3) is amended to indicate that written authority 
provided under Sec. Sec.  1.14(h)(1) and (h)(2) should be submitted 
before the filing of any subsequent foreign application in which 
priority is claimed to the application. Section 1.14(h)(3) also is 
amended to indicate that the written authority under Sec. Sec.  
1.14(h)(1) and (2) must include the title of the invention (Sec.  
1.72(a)), comply with the requirements of Sec.  1.14(c), and must be 
submitted on an application data sheet (Sec.  1.76) or on a separate 
document (Sec.  1.4(c)).
    Section 1.19: Section 1.19(b)(1)(iv) is amended to indicate there 
is no fee for providing a foreign IP office with a copy of either an 
application-as-filed or patent related file wrapper and contents 
pursuant to a bilateral or multilateral agreement (see Sec.  1.14(h)).
    Comments and Responses to Comments: The Office published a notice 
of proposed rulemaking on July 11, 2014, proposing to amend its rules 
of practice to include a specific provision by which an applicant can 
authorize the Office to give a foreign intellectual property (IP) 
office access to all or part of the file contents of an unpublished 
U.S. patent application in order to satisfy a requirement for 
information imposed on a counterpart application filed with the foreign 
IP office. See Changes to Facilitate Applicant's Authorization of 
Access to Unpublished U.S. Patent Applications by Foreign Intellectual 
Property Offices, 79 FR 40035 (July 11, 2014). The Office received 
comments from two intellectual property organizations, a patent 
practitioner, and a member of the public in response to this notice of 
proposed rulemaking. Three comments were very positive and supported 
the proposed changes. One comment opposed the proposed changes. 
Comments that supported the proposed changes are not discussed. The 
remaining comments and the Office's responses to those comments follow:
    Comment 1: Three comments suggested removing the language 
``indicated in the written authority'' from ``all foreign intellectual 
property offices indicated in the written authority'' in proposed Sec.  
1.14(h)(2). Two comments noted that this specific language was excluded 
from proposed Sec.  1.14(h)(1) relating to access to an application-as-
filed. One comment asserted that this language may be inconsistent with 
the statement in the notice of proposed rulemaking that the written 
authority to provide access to this information would be provided on an 
``opt-out'' basis on the ADS and that any such provision on the ADS 
would not include a list of foreign intellectual property offices. One 
comment questioned whether an applicant will have to specify in advance 
all foreign IP offices that will receive pre-publication information.
    Response: Section 1.14(h)(2) as adopted in this final rule does not 
include the language ``indicated in the written authority.'' Each 
written authorization on the revised ADS form will indicate either the 
specific foreign IP office(s) that is being granted access to the 
associated pre-publication information or that all the foreign IP 
offices participating with the Office in a particular work sharing 
initiative program are being granted access to pre-publication data.
    Comment 2: One comment stated that access to pre-publication 
documents under the proposed rule change facilitates implementation of 
global projects like the IP5's Global Dossier project. Another comment 
raised concerns that the proposed rule change will require all of the 
IP5 Patent Offices to have mutual agreements with each other in order 
to implement the Global Dossier to cover pre-publication information 
and suggested that the Office review this requirement in light of the 
prospective Global Dossier System.
    Response: The sharing of documents or information from unpublished 
U.S. applications between the Office and any foreign IP office has 
historically required a mutual agreement to cover these shared 
information or documents. An agreement is needed to ensure that the 
parties are aware of their obligations to one another (e.g., keeping 
pre-publication information in confidence). Additionally, as stated in 
the notice of proposed rulemaking, the Office and the foreign IP office 
would need to have a bilateral or multilateral agreement that provides 
for the secure transmission and receipt of any shared information. 79 
FR at 40038. Furthermore, the agreement serves as notice to the public 
regarding what application information (with applicant's consent if the 
application is unpublished) the Office and other foreign IP office have 
agreed to share with one another to thereby reduce the resources 
applicants must expend to comply with any IP office's requirements for 
information imposed when a counterpart application is filed with a 
foreign IP office. Currently, the Office will not provide any 
information or documents from an unpublished U.S. application to a 
foreign IP office if the Office does not have an agreement to provide 
such information or documents. Should the Office determine that sharing 
documents from an unpublished U.S. application with other IP offices in 
the absence of an agreement would be beneficial, the Office would 
engage the public to seek its input.

[[Page 65653]]

    Comment 3: One comment requested seeing the proposed new ADS form 
before actual implementation of the final rule to be sure that the 
language in the ADS meets the needs of our applicants.
    Response: Due to IT constraints, the EFS-Web based version of the 
revised ADS form had to be finalized well in advance of the publication 
of the final rules. The public will have an opportunity to comment on 
the first release of the revised ADS form. The Office will consider 
these comments for the next release of the form.
    Comment 4: One comment asserted that the proposed rule change is 
based upon the assumption that a specific authority is required from an 
applicant in order to send out pre-publication information to a foreign 
IP office where applicant has filed an application and that the Office 
should reconsider this assumption. The comment further asserted that 
once an applicant files an application in a foreign IP office, 
applicant inherently agrees to the rules and requirements of that 
foreign IP office. Accordingly, the comment suggests that the Office 
does not need a separate authorization to either send a priority 
document or pre-publication information to that foreign IP office. 
Therefore, the comment requested that the Office reconsider the need 
for any authorization for access in this circumstance. The comment 
stated that if the Office adopts this position, then the entire 
authorization section from the ADS can be removed and a filing of an 
application in a foreign IP office by an applicant can serve as 
authorization for access to send priority documents and/or pre-
publication information to that foreign IP office(s).
    Response: After due consideration of the comment, the Office has 
decided to not adopt the position expressed in the comment. The written 
authority requirement is in accord with 35 U.S.C. 122(a), and 
consistent with current Office policy, practice, and procedure 
regarding access. Therefore, the Office is retaining the requirement 
for written authority from an applicant for access to the file contents 
of an unpublished application.
    Comment 5: One comment opposed the proposed rule and asserted that 
the proposed rule will do great harm to independent inventors, 
university technology licensing organizations, small entity inventors, 
and overall U.S. development. Specifically, the comment alleged that 
the majority of foreign patent offices are integral parts of their 
national industrial development efforts and serve as collectors of 
information about U.S. technologies and that permitting these foreign 
governments to have access to unpublished patent applications will 
significantly undermine U.S. inventors and U.S. innovation.
    Response: Neither the proposed rule nor the final rule establish a 
new program for providing unpublished applications to foreign 
governments. Under the final rule, the Office would only provide 
information to a foreign IP office where the applicant has already 
filed a counterpart application with that foreign IP office coupled 
with applicant's written authorization for access in the U.S. 
application. Specifically, the Office would be satisfying a duty placed 
on a U.S. applicant by the foreign IP office due to the U.S. applicant 
filing a counterpart application with that foreign IP office. For 
example, the Office, after receiving applicant's written authorization 
for access, would provide the foreign IP office where the counterpart 
application was filed the required information, along with sufficient 
bibliographic data to confirm that the correct U.S. and foreign 
counterpart applications have been matched. Finally, the Office will 
not deliver an unpublished priority document, file contents of an 
unpublished application, including information about an unpublished 
application, to a foreign IP office, even where a counterpart 
application has been filed, if applicant has not provided proper 
written authorization for access.

Rulemaking Considerations

A. Administrative Procedure Act

    This rulemaking amends the rules of practice to include a specific 
provision by which an applicant can authorize the Office to give a 
foreign IP office access to all or part of the file contents of an 
application, and thus pertains solely to the process for an applicant 
to provide a limited waiver of confidentiality under 35 U.S.C. 122(a) 
to allow a counterpart IP office access to all or part of the file 
contents of an application. Therefore, the changes in this final 
rulemaking involve rules of agency practice and procedure and/or 
interpretive rules. See 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). The Office received no public comment on this 
section or any of the sections under the Rulemaking Considerations.
    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). 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, published proposed changes for comment as it sought the 
benefit of the public's views on the Office's proposed changes to 
include a specific regulatory provision by which an applicant can 
provide the Office with authority to give a foreign IP office access to 
all or part of the file contents of an application.

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 in this final rule will not have a 
significant economic impact on a substantial number of small entities. 
See 5 U.S.C. 605(b).
    This rulemaking amends the rules of practice to include a specific 
provision by which an applicant can authorize the Office to give a 
foreign IP office access to all or part of the file contents of an 
application. This rulemaking consolidates and clarifies in one place--
37 CFR 1.14(h)--existing procedures in both 37 CFR 1.14(c) and (h) 
relevant to authorizing the Office to provide a foreign IP office 
access to all or part of the file contents of an application or to an 
application-as-filed. Moreover, the use of the revised forms discussed 
(PTO/AIA/14; PTO/SB/39; and PTO/SB/69) will provide applicants that 
wish to provide a foreign IP office access to their applications 
greater ease and efficiency in transmitting the requisite 
authorization. The changes in this rulemaking do not require any 
applicant to provide the Office with this authority. There is no fee 
for this service. Therefore, the changes in this final rule 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).

[[Page 65654]]

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 final rule and other 
required information to the United States Senate, the United States 
House of Representatives, and the Comptroller General of the Government 
Accountability Office. 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 expected to result in 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 final rule 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 rulemaking 
involves information collection requirements which are subject to 
review by the Office of Management and Budget (OMB) under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501-3549). The collection of 
information involved in this rulemaking has been reviewed and 
previously approved by OMB under OMB Control Numbers 0651-0031 and 
0651-0032. The Office is not resubmitting an information collection 
package to OMB for its review and approval because the changes in this 
rulemaking do not change patent fees or change the information 
collection requirements (the estimated number of respondents, time per 
response, total annual respondent burden hours, or total annual 
respondent cost burden) associated with the information collections 
approved under OMB Control Numbers 0651-0031 and 0651-0032. The revised 
ADS form (PTO/AIA/14) as well as the PTO/SB/39 and PTO/SB/69 forms have 
already been reviewed and approved by OMB, or have been determined to 
not collect ``information'' within the meaning of the Paperwork 
Reduction Act of 1995.
    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.

    For the reasons stated in the preamble, 37 CFR part 1 is amended as 
follows:

[[Page 65655]]

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).


0
2. Section 1.14 is amended by revising paragraph (h) to read as 
follows:


Sec.  1.14  Patent applications preserved in confidence.

* * * * *
    (h) Access by a Foreign Intellectual Property Office. (1) Access to 
an application-as-filed may be provided to any foreign intellectual 
property office participating with the Office in a bilateral or 
multilateral priority document exchange agreement (participating 
foreign intellectual property office), if the application contains 
written authority granting such access. Written authority provided 
under this paragraph (h)(1) will be treated as authorizing the Office 
to provide the following to all participating foreign intellectual 
property offices in accordance with their respective agreements with 
the Office:
    (i) A copy of the application-as-filed and its related 
bibliographic data;
    (ii) A copy of the application-as-filed of any application the 
filing date of which is claimed by the application in which written 
authority under this paragraph (h)(1) is filed and its related 
bibliographic data; and
    (iii) The date of filing of the written authorization under this 
paragraph (h)(1).
    (2) Access to the file contents of an application may be provided 
to a foreign intellectual property office that has imposed a 
requirement for information on a counterpart application filed with the 
foreign intellectual property office where the foreign intellectual 
property office is a party to a bilateral or multilateral agreement 
with the Office to provide the required information from the 
application filed with the Office and the application contains written 
authority granting such access. Written authority provided under this 
paragraph (h)(2) will be treated as authorizing the Office to provide 
the following to all foreign intellectual property offices in 
accordance with their respective agreements with the Office:
    (i) Bibliographic data related to the application; and
    (ii) Any content of the application file necessary to satisfy the 
foreign intellectual property office requirement for information 
imposed on the counterpart application as indicated in the respective 
agreement.
    (3) Written authority provided under paragraphs (h)(1) and (h)(2) 
of this section must include the title of the invention (Sec.  
1.72(a)), comply with the requirements of paragraph (c) of this 
section, and be submitted on an application data sheet (Sec.  1.76) or 
on a separate document (Sec.  1.4(c)). The written authority provided 
under these paragraphs should be submitted before filing any subsequent 
foreign application in which priority is claimed to the application.
* * * * *

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


Sec.  1.19  Document supply fees.

* * * * *
    (b) * * *
    (1) * * *
    (iv) If provided to a foreign intellectual property office pursuant 
to a bilateral or multilateral agreement (see Sec.  1.14(h)): $0.00.
* * * * *

    Dated: October 21, 2015.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2015-27335 Filed 10-26-15; 8:45 am]
BILLING CODE 3510-16-P