Eliminating Unnecessary Regulations, 51977-51982 [2019-20908]

Download as PDF Federal Register / Vol. 84, No. 190 / Tuesday, October 1, 2019 / Rules and Regulations effect on the States, on the relationship between the national government and the States, or on the distribution of power and responsibilities among the various levels of government. We have analyzed this rule under that Order and have determined that it is consistent with the fundamental federalism principles and preemption requirements described in Executive Order 13132. Also, this rule does not have tribal implications under Executive Order 13175, Consultation and Coordination with Indian Tribal Governments, because it does not have a substantial direct effect on one or more Indian tribes, on the relationship between the Federal Government and Indian tribes, or on the distribution of power and responsibilities between the Federal Government and Indian tribes. If you believe this rule has implications for federalism or Indian tribes, please call or email the person listed in the FOR FURTHER INFORMATION CONTACT section above. jbell on DSK3GLQ082PROD with RULES E. Unfunded Mandates Reform Act The Unfunded Mandates Reform Act of 1995 (2 U.S.C. 1531–1538) requires Federal agencies to assess the effects of their discretionary regulatory actions. In particular, the Act addresses actions that may result in the expenditure by a State, local, or tribal government, in the aggregate, or by the private sector of $100,000,000 (adjusted for inflation) or more in any one year. Though this rule will not result in such an expenditure, we do discuss the effects of this rule elsewhere in this preamble. F. Environment We have analyzed this rule under Department of Homeland Security Directive 023–01 and Environmental Planning COMDTINST 5090.1 (series), which guide the Coast Guard in complying with the National Environmental Policy Act of 1969 (42 U.S.C. 4321–4370f), and have determined that this action is one of a category of actions that do not individually or cumulatively have a significant effect on the human environment. This rule involves a safety zone that will prohibit entry to the navigable waters of the San Jacinto River from the southern end of Southwest Shipyard, extending north of the I–10 bridge, just abreast of Buoy #14, without prior approval from Coast Guard Sector Houston-Galveston COTP. It is categorically excluded from further review under paragraph L60(a) in Table 3–1 of U.S. Coast Guard Environmental Planning Implementing Procedures. A Record of Environmental Consideration supporting this determination is VerDate Sep<11>2014 16:58 Sep 30, 2019 Jkt 250001 available in the docket where indicated under ADDRESSES. G. Protest Activities The Coast Guard respects the First Amendment rights of protesters. Protesters are asked to call or email the person listed in the FOR FURTHER INFORMATION CONTACT section to coordinate protest activities so that your message can be received without jeopardizing the safety or security of people, places or vessels. List of Subjects in 33 CFR Part 165 Harbors, Marine safety, Navigation (water), Reporting and recordkeeping, requirements, Security measures, Waterways. For the reasons discussed in the preamble, the Coast Guard amends 33 CFR part 165 as follows: PART 165—REGULATED NAVIGATION AREAS AND LIMITED ACCESS AREAS 1. The authority citation for part 165 continues to read as follows: ■ Authority: 46 U.S.C. 70034, 70051; 33 CFR 1.05–1, 6.04–1, 6.04–6, and 160.5; Department of Homeland Security Delegation No. 0170.1. 2. Add § 165.T08–0818 to read as follows: ■ § 165.T08–0818 Safety Zone; San Jacinto River, Channelview, TX. (a) Location. The following area is a safety zone: The navigable waters of the San Jacinto River from the southern end of Southwest Shipyard, extending north of the I–10 bridge, just abreast of Buoy #14, in Channelview, TX in approximate location 29°47′33.5″ N, 095°03′41.2″ W. (b) Enforcement period. This section will be enforced from September 25, 2019, through December 24, 2019, or until all hazardous conditions associated with salvage and over-water bridge repairs have been mitigated. (c) Regulations. (1) Transit of the safety zone is open to limited traffic with the following restrictions: (i) Only light boats and single barge tows may transit. (ii) Transit only during daylight hours (sunrise to sunset). (iii) There shall be no meeting or overtaking. (iv) All vessels must check in and out with Vessel Traffic Service Houston/ Galveston at least 15 minutes prior to entering the safety zone. (2) Persons and vessels desiring to enter the safety zone must request permission from the COTP or a designated representative. They may be contacted through Vessel Traffic Service PO 00000 Frm 00041 Fmt 4700 Sfmt 4700 51977 (VTS) on channels 13 or 16 VHF–FM, or by telephone at (281) 464–4837. (3) Permission to transit through the bridge will be based on weather, tide and current conditions, vessel size, horsepower, and availability of assist vessels. All persons and vessels permitted to enter this temporary safety zone shall comply with the lawful orders or directions given to them by COTP or a designated representative. (4) Intentional or unintentional contact with any part of the bridge or associated structure, including fendering systems, support columns, spans or any other portion of the bridge, is strictly prohibited. Report any contact with the bridge or associated structures immediately to VTS Houston/Galveston on channels 13 or 16 VHF–FM or by telephone at (281) 464–4837. (d) Informational broadcasts. The Coast Guard will inform the public through public of the effective period of this safety zone through VTS Advisories, Broadcast Notices to Mariners (BNMs), Local Notice to Mariners (LNMs), and/or Marine Safety Information Bulletins (MSIBs) as appropriate. Dated: September 25, 2019. Richard E. Howes, Captain, U.S. Coast Guard, Acting Captain of the Port Sector Houston-Galveston. [FR Doc. 2019–21277 Filed 9–30–19; 8:45 am] BILLING CODE 9110–04–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Parts 1 and 42 [Docket No.: PTO–P–2017–0034] RIN 0651–AD25 Eliminating Unnecessary Regulations United States Patent and Trademark Office, Department of Commerce. ACTION: Final rule. AGENCY: SUMMARY: The United States Patent and Trademark Office (USPTO or Office) hereby amends the Rules of Practice in Patent Cases and Trial Practice Before the Patent Trial and Appeal Board (PTAB) by removing provisions in the Code of Federal Regulations that are no longer necessary. This final rule removes the rules governing reservation clauses, petitions from the refusal of a primary examiner to admit an amendment, the publication of amendments to the regulations, and limits that the Director can impose on the number of inter partes reviews and E:\FR\FM\01OCR1.SGM 01OCR1 51978 Federal Register / Vol. 84, No. 190 / Tuesday, October 1, 2019 / Rules and Regulations jbell on DSK3GLQ082PROD with RULES post-grant reviews heard by the PTAB. USPTO has evaluated existing regulations to identify those that should be repealed, replaced, or modified because they are outdated, unnecessary, ineffective, costly, or unduly burdensome to both government and private-sector operations. USPTO carried out this work, in part, through its participation in the Regulatory Reform Task Force (Task Force), which the Department of Commerce (Department or Commerce) established in accordance with Executive Order 13777, ‘‘Enforcing the Regulatory Reform Agenda.’’ Removal of the regulations identified in this final rule achieves the objective of making USPTO regulations more effective and more streamlined, while enabling the USPTO to fulfill its mission goals. DATES: This rule is effective on October 31, 2019. FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, by email at raul.tamayo@uspto.gov, or by telephone at (571) 272–7728, for questions regarding the changes to 37 CFR 1.79 and/or 1.127; Scott C. Weidenfeller, Vice Chief Administrative Patent Judge, Patent Trial and Appeal Board, by email at scott.weidenfeller@uspto.gov, or by telephone at (571) 272–8723, for questions regarding the changes to 37 CFR part 42; and Nicolas Oettinger, Senior Counsel for Regulatory and Legislative Affairs, Office of the General Counsel, by email at nicolas.oettinger@ uspto.gov, or by telephone at (571) 272– 7832, for questions regarding the change to 37 CFR 1.351 and general questions regarding regulatory reform. SUPPLEMENTARY INFORMATION: I. Background To support its regulatory reform efforts as a participant in the Task Force, the USPTO assembled a Working Group on Regulatory Reform (Working Group), consisting of subject-matter experts from each of the business units that implement the USPTO’s regulations, to consider, review, and recommend ways that the regulations could be improved, revised, and streamlined. In considering the revisions, the USPTO, through its Working Group, incorporated into its analyses all presidential directives relating to regulatory reform. The Working Group reviewed existing regulations, both discretionary rules and those required by statute or judicial order. The USPTO also solicited comments from stakeholders through a web page established to provide information on the USPTO’s regulatory VerDate Sep<11>2014 16:58 Sep 30, 2019 Jkt 250001 reform efforts and through the Department’s Federal Register Notice titled ‘‘Impact of Federal Regulations on Domestic Manufacturing’’ (82 FR 12786, Mar. 7, 2017), which addressed the impact of regulatory burdens on domestic manufacturing. These efforts led to the development of candidate regulations for removal, based on the USPTO’s assessment that these regulations were not needed and/or that elimination could improve the USPTO’s body of regulations. This rule removes certain patent- and PTAB-related regulations in 37 CFR part 1 and part 42. As described below, USPTO also considered comments received on the proposed rule, which was published on January 19, 2018 (83 FR 2159). This final rule makes no changes to the repeals included in the proposed rule. Other rules removing regulations on other subject areas have been published separately. II. Regulations Being Removed This rule removes the regulations concerning reservation clauses, petitions from the refusal of a primary examiner to admit an amendment, and publication of amendments to the regulations in 37 CFR part 1. The rule also removes the regulations concerning limits that the Director can impose on the number of inter partes reviews and post-grant reviews in 37 CFR part 42. In particular, this rule removes 37 CFR 1.79. Section 1.79 prohibits reservation clauses, i.e., it prohibits a pending patent application from containing a reservation for a future patent application of subject matter disclosed but not claimed in the pending application. An applicant’s ability to claim benefit of a prior application is affirmatively provided elsewhere in statute and regulation, and the explicit prohibition of § 1.79 on reservation clauses (which do not confer this benefit) dates from a time when the mechanism for properly claiming benefit of a prior application was less clear and less fully developed in USPTO’s regulations and guidance. The removal of § 1.79 is not an endorsement of reservation clauses nor an invitation for applicants to include reservation clauses in applications. The Office does not expect the use of reservation clauses to significantly increase, because such reservation clauses provide no legal benefit, regardless of § 1.79. For example, the inclusion of a reservation clause in a pending application would not change any of the requirements for a future application to benefit from the earlier filing date of the pending application. The authority for the future application to benefit from the earlier PO 00000 Frm 00042 Fmt 4700 Sfmt 4700 filing date of the pending application would stem, as it does now, from the fulfillment of requirements set forth in statutory and regulatory provisions in which a reservation clause plays no role, e.g., 35 U.S.C. 120 and 37 CFR 1.78. Nor would the inclusion of a reservation clause protect against rejections for statutory or nonstatutory double patenting. In view of the fact that the inclusion of a reservation clause provides no legal benefit, and given that the affirmative ability to claim benefit of a prior application is more fully and completely described elsewhere in USPTO’s regulations and guidance (unlike when § 1.79 was first adopted), the prohibition of reservation clauses in § 1.79 is unnecessary. Section 1.79 also permits a patent application disclosing unclaimed subject matter to contain a reference to a later-filed application of the same applicant or owned by a common assignee disclosing and claiming that subject matter. This provision of § 1.79 is duplicative and therefore unnecessary. Section 1.78 provides for cross-references to other applications, including cross-references to applications for which a benefit is not claimed, which encompasses the laterfiled applications identified in § 1.79. Thus, applicants will continue to be able to include in a pending application a reference to a later-filed application as currently provided for in § 1.79. This rule removes § 1.127, which also is duplicative. Section 1.127 indicates that a petition to the Director under 37 CFR 1.181 may be filed upon a refusal by a primary examiner to admit an amendment, in whole or in part. Section 1.127 is unnecessary. The language of § 1.181(a)(1) makes clear that any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding, which is not subject to appeal to the PTAB or to a court, is petitionable to the Director. A refusal by a primary examiner to admit an amendment constitutes an action or requirement of an examiner and is not subject to appeal to the PTAB or to a court. Thus, applicants will continue to be able to petition to the Director under § 1.181 the refusal by a primary examiner to admit an amendment, in whole or in part. This rule additionally removes 37 CFR 1.351. Section 1.351 states that all amendments to the regulations in 37 CFR part 1 will be published in the Official Gazette and in the Federal Register. Section 1.351 is unnecessary. In accordance with the requirements of the Administrative Procedure Act (APA) and guidance from the Office of E:\FR\FM\01OCR1.SGM 01OCR1 Federal Register / Vol. 84, No. 190 / Tuesday, October 1, 2019 / Rules and Regulations jbell on DSK3GLQ082PROD with RULES Management and Budget (OMB), the Office publishes any amendments to 37 CFR part 1 in the Federal Register. The APA generally requires the Office to give public notice of any regulatory change, and OMB’s guidance with respect to rulemaking makes clear that publication in the Federal Register is the required means for giving public notice. Given that publication in the Official Gazette is entirely duplicative of publication in the Federal Register, the Office no longer intends to make these duplicate publications of amendments to regulations in the Official Gazette. Finally, this rule removes 37 CFR 42.102(b) and 42.202(b), both of which are now out of date. Section 42.102(b) provides that the Director may impose a limit on the number of inter partes reviews that may be instituted during each of the first four one-year periods that the Leahy-Smith America Invents Act (AIA) is in effect. Section 42.202(b) has a similar provision for post-grant reviews. Neither rule remains necessary because the fourth anniversary of the effective date of the AIA has passed. Removal of the regulations identified in this rule achieves the objective of making the USPTO regulations more effective and more streamlined, while enabling the USPTO to fulfill its mission goals. The USPTO’s economic analysis shows that while the removal of these regulations is not expected to substantially reduce the burden on the impacted community, the regulations are nonetheless being eliminated because they are ‘‘outdated, unnecessary, or ineffective’’ regulations encompassed by the directives in Executive Order 13777. III. Proposed Rule: Comments and Responses The USPTO published a proposed rule on January 19, 2018, at 83 FR 2759, soliciting comments on the proposed amendments. In response, the USPTO received eight comments relevant to the proposed rule from five commenters. None of the comments expresses disapproval for the proposed amendments. Four of the comments propose additional rules for revision or removal. The comments are addressed below. Two comments propose revising or removing 37 CFR 1.83(a). According to these comments, § 1.83(a), which states that ‘‘[t]he drawing in a nonprovisional application must show every feature of the invention specified in the claims,’’ is inconsistent with 35 U.S.C. 113, which states that ‘‘[t]he applicant shall furnish a drawing where necessary for the understanding of the subject matter VerDate Sep<11>2014 16:58 Sep 30, 2019 Jkt 250001 sought to be patented.’’ The Office has considered the comments concerning § 1.83(a) but is not revising or removing the regulation. Consistent with 35 U.S.C. 113, Office regulations already limit the requirement to furnish a drawing to cases where the drawing is necessary for the understanding of the subject matter sought to be patented. See 37 CFR 1.81(a). Section 1.83(a) merely adds that when a drawing is required in accordance with 35 U.S.C. 113 and § 1.81(a), the drawing must show every feature of the invention specified in the claims. Moreover, § 1.83(a) permits conventional features, a detailed illustration of which is not essential for a proper understanding of the invention, to be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). Thus, § 1.83(a) strikes a balance between maintaining a high level of quality for prior art (drawings in accordance with § 1.83 improve the understanding of the claimed subject matter in pre-grant publications and issued patents) and mitigating the drawing burden on applicants. Two comments propose revising or removing the requirement for a certified copy of the foreign application to be filed when making a claim for foreign priority under 37 CFR 1.55. One of the two comments proposes removing each instance of ‘‘certified’’ from § 1.55, such that § 1.55 instead would require only a copy of the foreign application. The other comment proposes allowing applicants to submit certified copies of foreign applications electronically through the Office’s Electronic Filing System (EFS-Web), or in the alternative, eliminating the requirement for a certified copy. The Office has considered the comments concerning § 1.55 but is not revising or removing the requirement for a certified copy of the foreign application to be filed when making a claim for foreign priority. A critical reason for the requirement under § 1.55 to provide a certified copy of a foreign patent application is that the foreign priority date could be a prior art date under 35 U.S.C. 102(a)(2). Without the requirement, the examiner and any member of the public interested in evaluating a 35 U.S.C. 102(a)(2) prior art date would be burdened with obtaining an actual certified copy of the priority document to do a complete analysis. This burden would be particularly acute for an examiner or member of the public seeking a certified copy from a jurisdiction with poor record-keeping practices. PO 00000 Frm 00043 Fmt 4700 Sfmt 4700 51979 Furthermore, the Office continues to make progress on alleviating applicants’ burden of providing a certified copy under § 1.55 through its electronic priority document exchange (PDX) program. The PDX program facilitates compliance with the certified copy requirement under § 1.55 through two modes of exchange with participating foreign offices: Direct bilateral exchange and exchange via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS) for Priority Documents. As of December 1, 2018, the Office electronically retrieves certified copies of foreign applications filed with 18 WIPO DAS depositing offices. For more information on the PDX program, visit https://www.uspto.gov/patentsgetting-started/international-protection/ electronic-priority-document-exchangepdx. For instances in which the certified copy required by § 1.55 must be obtained from a jurisdiction not currently participating in the PDX program, the burden of providing the certified copy is mitigated by 37 CFR 1.55(j). Section 1.55(j) provides for an ‘‘interim copy’’ procedure that gives an applicant more time to obtain and file the actual certified copy. One comment proposes revising the requirement for an assignee to establish its right to take action under 37 CFR 3.73(c) so that it no longer applies ‘‘to the original applicants named in patent applications subject to the AIA.’’ The Office has considered the comment concerning § 3.73(c) but is not revising the regulation. The language of § 3.73(c)(1) already excludes an assignee who is the original applicant from the purview of § 3.73(c) (‘‘In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director.’’). As stated in § 3.73(a), ‘‘[t]he original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom.’’ One comment identifies a number of initiatives undertaken by the Office, including the Collaborative Search Pilot Program, the Cooperative Patent Classification system, Global Dossier, and the Patent Prosecution Highway. The comment states that as a result of the initiatives, the requirement under 37 CFR 1.98(a)(2) for an applicant to provide the Office copies of foreign patent documents is unnecessarily burdensome where the documents have been cited in the prosecution of another application, including an international application, for which the applicant has notified the Office. The comment E:\FR\FM\01OCR1.SGM 01OCR1 jbell on DSK3GLQ082PROD with RULES 51980 Federal Register / Vol. 84, No. 190 / Tuesday, October 1, 2019 / Rules and Regulations proposes either removing § 1.98(a)(2) or revising § 1.98(d) so that it would not be necessary to provide a copy of any patent, publication, pending U.S. application or other information, if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in another application, including later-filed or co-filed U.S. or international applications and applications not relied on for an earlier effective filing date under 35 U.S.C. 120, and the other application has been properly identified in an information disclosure statement (IDS). The Office has considered the comment concerning § 1.98(a)(2) and (d) but is not removing § 1.98(a)(2) or revising § 1.98(d). The relevant initiatives that the Office currently is undertaking, including relevant initiatives identified by the comment, are not sufficient to permit removing § 1.98(a)(2) or revising § 1.98(d) in the proposed manner. The Office, however, continues to make progress on reducing applicants’ burden in connection with the duty of disclosure. As of November 1, 2018, the Office has implemented the first phase of the Access to Relevant Prior Art Initiative (RPA Initiative). See Access to Relevant Prior Art Initiative, 83 FR 53853 (Oct. 25, 2018). The RPA Initiative leverages electronic resources to improve examiners’ access to relevant information from applicants’ other related applications. In the first phase, the Office is importing the citations listed on forms PTO/SB/08 (or equivalents) and PTO–892 in the immediate parent application into the continuing application. The first phase consists of a targeted release of a newly developed interface to a subgroup of examiners from a limited number of selected art units. In subsequent phases of the RPA Initiative, the Office will consider providing examiners access to citation information from other sources such as other related U.S. applications, international applications under the PCT, and counterpart foreign applications of the same applicant. The selection of these sources and the timetable for expansion will be dictated, at least in part, by evaluating the first phase, including feedback on the RPA Initiative from the public and examiners. In addition, the USPTO plans to include more examiners in subsequent phases when the RPA Initiative proves scalable. One comment notes that 37 CFR 1.53(f)(3)(ii) requires applicants to file an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, no later than the date on which the VerDate Sep<11>2014 16:58 Sep 30, 2019 Jkt 250001 issue fee for the patent is paid. The comment proposes revising § 1.53(f)(3)(ii) to provide a time period to correct a defective oath, declaration, or substitute statement submitted no later than the date on which the issue fee for the patent is paid, but found defective after the date at which the issue fee is paid. The Office has considered the comment concerning § 1.53(f)(3)(ii) but is not revising the regulation. The requested revision is precluded by statute. Specifically, 35 U.S.C. 115(f) states that ‘‘[t]he applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee for the patent is paid.’’ One comment generally supports the proposed amendments as meeting the stated objectives. The USPTO appreciates this input. All of the comments are posted on the USPTO’s website at https:// www.uspto.gov/patent/laws-andregulations/comments-public/ comments-changes-eliminateunnecessary-regulations. IV. Discussion of Rules Changes Part 1 Section 1.79: Section 1.79 is removed and reserved. Section 1.127: Section 1.127 is removed and reserved. Section 1.351: Section 1.351 is removed and reserved. Part 42 Section 42.102(b): Section 42.102(b) is removed and reserved. Section 42.202(b): Section 42.202(b) is removed and reserved. Rulemaking Considerations A. Administrative Procedure Act: The changes in this rulemaking involve rules of agency practice and procedure, and/ or interpretive rules. See Perez v. Mortg. Bankers Ass’n, 135 S. Ct. 1199, 1204 (2015) (Interpretive rules ‘‘advise the public of the agency’s construction of the statutes and rules which it administers.’’ (citation and internal quotation marks omitted)); Nat’l Org. of Veterans’ Advocates v. Sec’y of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that clarifies interpretation of a statute is interpretive.); Bachow Commc’ns Inc. v. FCC, 237 F.3d 683, 690 (DC 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. PO 00000 Frm 00044 Fmt 4700 Sfmt 4700 2001) (Rules for handling appeals were procedural where they did not change the substantive standard for reviewing claims.). Accordingly, prior notice and opportunity for public comment for the changes in this rulemaking are not required pursuant to 5 U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (Notice-and-comment procedures are required neither when an agency ‘‘issue[s] an initial interpretive rule’’ nor ‘‘when it amends or repeals that interpretive rule.’’); 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))). However, the Office chose to seek public comment before implementing the rule to benefit from the public’s input. B. Regulatory Flexibility Act: For the reasons set forth herein, the Senior Counsel for Regulatory and Legislative Affairs, Office of General Law, of the USPTO has certified to the Chief Counsel for Advocacy of the Small Business Administration that this rule will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b). This rule removes the provisions at 37 CFR 1.79, concerning the prohibition of reservation clauses, § 1.127, concerning petitions from refusal to admit amendment, and § 1.351, concerning the publication of amendments to rules. These regulations are removed because they are not necessary. This rule also removes 37 CFR 42.102(b) and 42.202(b), which provide that the Director may impose a limit on the number of inter partes reviews and postgrant reviews that may be instituted during each of the first four one-year periods that the AIA is in effect. These regulations are no longer necessary because the fourth anniversary of the effective date of the AIA has passed. Removing these regulations achieves the objective of making the USPTO regulations more effective and more streamlined, while enabling the USPTO to fulfill its mission goals. The removal of these regulations is not expected to substantively impact parties. Parties either will continue to be able to take the same action under a different regulatory provision, or the rights or obligations of the parties will not change in any way. For these reasons, this rulemaking will not have a significant economic impact on a substantial number of small entities. E:\FR\FM\01OCR1.SGM 01OCR1 jbell on DSK3GLQ082PROD with RULES Federal Register / Vol. 84, No. 190 / Tuesday, October 1, 2019 / Rules and Regulations 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 (Jan. 18, 2011). 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 online 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 13771 (Reducing Regulation and Controlling Regulatory Costs): This rule is a deregulatory action under Executive Order 13771 (Jan. 30, 2017). F. 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). G. 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). H. 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). VerDate Sep<11>2014 16:58 Sep 30, 2019 Jkt 250001 I. 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). J. 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). K. 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). L. 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 USPTO will submit a report containing the final rule and other required information to the United States Senate, the United States House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this notice are not expected to result in an annual effect on the economy of 100 million dollars or more, a major increase in costs or prices, or significant adverse effects on competition, employment, investment, productivity, innovation, or the ability of United States-based enterprises to compete with foreignbased enterprises in domestic and export markets. Therefore, this notice is not expected to result in a ‘‘major rule’’ as defined in 5 U.S.C. 804(2). M. 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. N. 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. O. National Technology Transfer and Advancement Act: The requirements of PO 00000 Frm 00045 Fmt 4700 Sfmt 4700 51981 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 that involve the use of technical standards. P. 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 does not involve an information collection that is subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501– 3549). 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 37 CFR Part 1 Administrative practice and procedure, Biologics, Courts, Freedom of information, Inventions and patents, Reporting and recordkeeping requirements, Small businesses. 37 CFR Part 42 Administrative practice and procedure, Inventions and patents, Lawyers. For the reasons stated in the preamble, the Office amends parts 1 and 42 of title 37 as follows: PART 1—RULES OF PRACTICE IN PATENT CASES 1. The authority citation for part 1 continues to read as follows: ■ Authority: 35 U.S.C. 2(b)(2). § 1.79 [Removed and Reserved] 2. Section 1.79 is removed and reserved. ■ § 1.127 [Removed and Reserved] 3. Section 1.127 is removed and reserved. ■ § 1.351 [Removed and Reserved] 4. Section 1.351 is removed and reserved and the undesignated center heading above it, ‘‘Amendment of Rules,’’ is removed. ■ E:\FR\FM\01OCR1.SGM 01OCR1 51982 Federal Register / Vol. 84, No. 190 / Tuesday, October 1, 2019 / Rules and Regulations PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD 5. The authority citation for part 42 continues to read as follows: ■ Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, 321–326; Pub. L. 112–29, 125 Stat. 284; and Pub. L. 112–274, 126 Stat. 2456. § 42.102 [Amended] 6. Amend section 42.102 by removing and reserving paragraph (b). ■ § 42.202 [Amended] 7. Section 42.202 is amended by removing and reserving paragraph (b). ■ Dated: September 19, 2019. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2019–20908 Filed 9–30–19; 8:45 am] BILLING CODE 3510–16–P POSTAL SERVICE 39 CFR Part 111 Stamped Mail Postal ServiceTM. ACTION: Final rule. AGENCY: SUMMARY: The Postal Service is amending Mailing Standards of the United States Postal Service, Domestic Mail Manual (DMM®) in various sections to revise the previously adopted provision for stamped mail weighing more than 13 ounces and extend that provision to physical characteristics. DATES: Effective: October 1, 2019. jbell on DSK3GLQ082PROD with RULES FOR FURTHER INFORMATION CONTACT: L’Tisha Slagle at (202) 268–6271, or Garry Rodriguez at (202) 268–7281. SUPPLEMENTARY INFORMATION: The Postal Service published a final rule on October 9, 2009, (74 FR 52147–52148) announcing restrictions on the mailing of pieces weighing over 13 ounces bearing only postage stamps as the postage payment method. To enhance the safety and security of Postal Service employees and customers, the Postal Service is now updating the Aviation Security Program, also known as the Anonymous Mail Program, to restrict the method of deposit for all mailpieces bearing stamps as the only postage payment method that weigh more than 10 ounces or that measure more than one half inch in thickness. Under the revised standards set forth below, domestic and VerDate Sep<11>2014 16:58 Sep 30, 2019 Jkt 250001 international mailpieces that weigh more than 10 ounces or measure more than one half inch in thickness and bear only postage stamps as the postage payment method, may not be deposited into collection receptacles, including street, lobby, and apartment boxes, or other unattended locations. These stamped mailpieces also may not be picked up by a city, rural, or highway contract letter carrier for delivery, or through Pickup on Demand® service. Instead, mailpieces that bear only stamps as the postage payment method and that weigh more than 10 ounces or measure more than one half inch in thickness, must be presented by the sender at a Post Office® location. For most consumers and businesses, there should be little impact. These restrictions do not apply to any mailpiece that weighs 10 ounces or less and measures one half inch or less in thickness, nor do they affect any mailpieces, regardless of weight or thickness, for which postage is paid with a method other than stamps, such as a postage evidencing system (meter or PC Postage®) or a permit imprint. Customers also will retain the opportunity to obtain a full range of mailing services at their local post offices. In view of these factors, and because of the need to act expeditiously to protect the safety and security of the public, customers, postal employees, and the mail, the Postal Service has determined that the notice and public comment procedure on this change would be impracticable and inconsistent with the public interest, and that this change should take effect as quickly as possible. In addition, the Postal Service will update Mailing Standards of the United States Postal Service, International Mail Manual (IMM®), Hazardous, Restricted, and Perishable Mail, Publication 52, and applicable Quick Service Guides (QSGs) under separate cover. For the above reasons, the Postal Service adopts the following changes to Mailing Standards of the United States Postal Service, Domestic Mail Manual (DMM), incorporated by reference in the Code of Federal Regulations. See 39 CFR 111.1. We will publish an appropriate amendment to 39 CFR part 111 to reflect these changes. Accordingly, 39 CFR part 111 is amended as follows: List of Subjects in 39 CFR Part 111 Administrative practice and procedure, Postal Service. PO 00000 Frm 00046 Fmt 4700 Sfmt 4700 PART 111—[AMENDED] 1. The authority citation for 39 CFR part 111 continues to read as follows: ■ Authority: 5 U.S.C. 552(a); 13 U.S.C. 301– 307; 18 U.S.C. 1692–1737; 39 U.S.C. 101, 401, 403, 404, 414, 416, 3001–3011, 3201– 3219, 3403–3406, 3621, 3622, 3626, 3632, 3633, and 5001. ■ 2. Revise the Mailing Standards of the United States Postal Service, Domestic Mail Manual (DMM) as follows: Mailing Standards of the United States Postal Service, Domestic Mail Manual (DMM) 100 Retail Mail Letters, Cards, Flats, and Parcels * * * * * 110 Priority Mail Express * * 116 Deposit * * * 1.0 Priority Mail Express 1-Day and 2Day Delivery Retail Priority Mail Express must be deposited as follows: * * * * * [Revise the text of item a to read as follows:] a. Except as provided in 1.0b, items may be deposited at a Post Office location, deposited in a Priority Mail Express collection box, picked up during the normal delivery and collection of mail, or through Pickup on Demand service. [Revise the first sentence of item b to read as follows:] b. Items bearing only postage stamps as postage payment and that weigh more than 10 ounces, or measure more than 1⁄2-inch in thickness, may not be deposited into a Priority Mail Express collection box, picked up during the normal delivery and collection of mail, or through Pickup on Demand service. * * * * * * * * 120 Priority Mail * * 126 Deposit 1.0 Deposit * * * [Revise the heading and first sentence of 1.1 to read as follows:] 1.1 Pieces Weighing 10 Ounces or Less and One Half Inch in or Less in Thickness Priority Mail pieces that weigh 10 ounces or less and measure 1⁄2-inch or less in thickness, may be deposited into any collection box, mail chute, or mail receptacle or at any place where mail is E:\FR\FM\01OCR1.SGM 01OCR1

Agencies

[Federal Register Volume 84, Number 190 (Tuesday, October 1, 2019)]
[Rules and Regulations]
[Pages 51977-51982]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-20908]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 1 and 42

[Docket No.: PTO-P-2017-0034]
RIN 0651-AD25


Eliminating Unnecessary Regulations

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) hereby amends the Rules of Practice in Patent Cases and Trial 
Practice Before the Patent Trial and Appeal Board (PTAB) by removing 
provisions in the Code of Federal Regulations that are no longer 
necessary. This final rule removes the rules governing reservation 
clauses, petitions from the refusal of a primary examiner to admit an 
amendment, the publication of amendments to the regulations, and limits 
that the Director can impose on the number of inter partes reviews and

[[Page 51978]]

post-grant reviews heard by the PTAB. USPTO has evaluated existing 
regulations to identify those that should be repealed, replaced, or 
modified because they are outdated, unnecessary, ineffective, costly, 
or unduly burdensome to both government and private-sector operations. 
USPTO carried out this work, in part, through its participation in the 
Regulatory Reform Task Force (Task Force), which the Department of 
Commerce (Department or Commerce) established in accordance with 
Executive Order 13777, ``Enforcing the Regulatory Reform Agenda.'' 
Removal of the regulations identified in this final rule achieves the 
objective of making USPTO regulations more effective and more 
streamlined, while enabling the USPTO to fulfill its mission goals.

DATES: This rule is effective on October 31, 2019.

FOR FURTHER INFORMATION CONTACT: Raul Tamayo, Senior Legal Advisor, 
Office of Patent Legal Administration, by email at 
[email protected], or by telephone at (571) 272-7728, for questions 
regarding the changes to 37 CFR 1.79 and/or 1.127; Scott C. 
Weidenfeller, Vice Chief Administrative Patent Judge, Patent Trial and 
Appeal Board, by email at [email protected], or by telephone 
at (571) 272-8723, for questions regarding the changes to 37 CFR part 
42; and Nicolas Oettinger, Senior Counsel for Regulatory and 
Legislative Affairs, Office of the General Counsel, by email at 
[email protected], or by telephone at (571) 272-7832, for 
questions regarding the change to 37 CFR 1.351 and general questions 
regarding regulatory reform.

SUPPLEMENTARY INFORMATION:

I. Background

    To support its regulatory reform efforts as a participant in the 
Task Force, the USPTO assembled a Working Group on Regulatory Reform 
(Working Group), consisting of subject-matter experts from each of the 
business units that implement the USPTO's regulations, to consider, 
review, and recommend ways that the regulations could be improved, 
revised, and streamlined. In considering the revisions, the USPTO, 
through its Working Group, incorporated into its analyses all 
presidential directives relating to regulatory reform. The Working 
Group reviewed existing regulations, both discretionary rules and those 
required by statute or judicial order. The USPTO also solicited 
comments from stakeholders through a web page established to provide 
information on the USPTO's regulatory reform efforts and through the 
Department's Federal Register Notice titled ``Impact of Federal 
Regulations on Domestic Manufacturing'' (82 FR 12786, Mar. 7, 2017), 
which addressed the impact of regulatory burdens on domestic 
manufacturing. These efforts led to the development of candidate 
regulations for removal, based on the USPTO's assessment that these 
regulations were not needed and/or that elimination could improve the 
USPTO's body of regulations. This rule removes certain patent- and 
PTAB-related regulations in 37 CFR part 1 and part 42. As described 
below, USPTO also considered comments received on the proposed rule, 
which was published on January 19, 2018 (83 FR 2159). This final rule 
makes no changes to the repeals included in the proposed rule. Other 
rules removing regulations on other subject areas have been published 
separately.

II. Regulations Being Removed

    This rule removes the regulations concerning reservation clauses, 
petitions from the refusal of a primary examiner to admit an amendment, 
and publication of amendments to the regulations in 37 CFR part 1. The 
rule also removes the regulations concerning limits that the Director 
can impose on the number of inter partes reviews and post-grant reviews 
in 37 CFR part 42.
    In particular, this rule removes 37 CFR 1.79. Section 1.79 
prohibits reservation clauses, i.e., it prohibits a pending patent 
application from containing a reservation for a future patent 
application of subject matter disclosed but not claimed in the pending 
application. An applicant's ability to claim benefit of a prior 
application is affirmatively provided elsewhere in statute and 
regulation, and the explicit prohibition of Sec.  1.79 on reservation 
clauses (which do not confer this benefit) dates from a time when the 
mechanism for properly claiming benefit of a prior application was less 
clear and less fully developed in USPTO's regulations and guidance. The 
removal of Sec.  1.79 is not an endorsement of reservation clauses nor 
an invitation for applicants to include reservation clauses in 
applications. The Office does not expect the use of reservation clauses 
to significantly increase, because such reservation clauses provide no 
legal benefit, regardless of Sec.  1.79. For example, the inclusion of 
a reservation clause in a pending application would not change any of 
the requirements for a future application to benefit from the earlier 
filing date of the pending application. The authority for the future 
application to benefit from the earlier filing date of the pending 
application would stem, as it does now, from the fulfillment of 
requirements set forth in statutory and regulatory provisions in which 
a reservation clause plays no role, e.g., 35 U.S.C. 120 and 37 CFR 
1.78. Nor would the inclusion of a reservation clause protect against 
rejections for statutory or nonstatutory double patenting. In view of 
the fact that the inclusion of a reservation clause provides no legal 
benefit, and given that the affirmative ability to claim benefit of a 
prior application is more fully and completely described elsewhere in 
USPTO's regulations and guidance (unlike when Sec.  1.79 was first 
adopted), the prohibition of reservation clauses in Sec.  1.79 is 
unnecessary.
    Section 1.79 also permits a patent application disclosing unclaimed 
subject matter to contain a reference to a later-filed application of 
the same applicant or owned by a common assignee disclosing and 
claiming that subject matter. This provision of Sec.  1.79 is 
duplicative and therefore unnecessary. Section 1.78 provides for cross-
references to other applications, including cross-references to 
applications for which a benefit is not claimed, which encompasses the 
later-filed applications identified in Sec.  1.79. Thus, applicants 
will continue to be able to include in a pending application a 
reference to a later-filed application as currently provided for in 
Sec.  1.79.
    This rule removes Sec.  1.127, which also is duplicative. Section 
1.127 indicates that a petition to the Director under 37 CFR 1.181 may 
be filed upon a refusal by a primary examiner to admit an amendment, in 
whole or in part. Section 1.127 is unnecessary. The language of Sec.  
1.181(a)(1) makes clear that any action or requirement of any examiner 
in the ex parte prosecution of an application, or in ex parte or inter 
partes prosecution of a reexamination proceeding, which is not subject 
to appeal to the PTAB or to a court, is petitionable to the Director. A 
refusal by a primary examiner to admit an amendment constitutes an 
action or requirement of an examiner and is not subject to appeal to 
the PTAB or to a court. Thus, applicants will continue to be able to 
petition to the Director under Sec.  1.181 the refusal by a primary 
examiner to admit an amendment, in whole or in part.
    This rule additionally removes 37 CFR 1.351. Section 1.351 states 
that all amendments to the regulations in 37 CFR part 1 will be 
published in the Official Gazette and in the Federal Register. Section 
1.351 is unnecessary. In accordance with the requirements of the 
Administrative Procedure Act (APA) and guidance from the Office of

[[Page 51979]]

Management and Budget (OMB), the Office publishes any amendments to 37 
CFR part 1 in the Federal Register. The APA generally requires the 
Office to give public notice of any regulatory change, and OMB's 
guidance with respect to rulemaking makes clear that publication in the 
Federal Register is the required means for giving public notice. Given 
that publication in the Official Gazette is entirely duplicative of 
publication in the Federal Register, the Office no longer intends to 
make these duplicate publications of amendments to regulations in the 
Official Gazette.
    Finally, this rule removes 37 CFR 42.102(b) and 42.202(b), both of 
which are now out of date. Section 42.102(b) provides that the Director 
may impose a limit on the number of inter partes reviews that may be 
instituted during each of the first four one-year periods that the 
Leahy-Smith America Invents Act (AIA) is in effect. Section 42.202(b) 
has a similar provision for post-grant reviews. Neither rule remains 
necessary because the fourth anniversary of the effective date of the 
AIA has passed.
    Removal of the regulations identified in this rule achieves the 
objective of making the USPTO regulations more effective and more 
streamlined, while enabling the USPTO to fulfill its mission goals. The 
USPTO's economic analysis shows that while the removal of these 
regulations is not expected to substantially reduce the burden on the 
impacted community, the regulations are nonetheless being eliminated 
because they are ``outdated, unnecessary, or ineffective'' regulations 
encompassed by the directives in Executive Order 13777.

III. Proposed Rule: Comments and Responses

    The USPTO published a proposed rule on January 19, 2018, at 83 FR 
2759, soliciting comments on the proposed amendments. In response, the 
USPTO received eight comments relevant to the proposed rule from five 
commenters. None of the comments expresses disapproval for the proposed 
amendments. Four of the comments propose additional rules for revision 
or removal. The comments are addressed below.
    Two comments propose revising or removing 37 CFR 1.83(a). According 
to these comments, Sec.  1.83(a), which states that ``[t]he drawing in 
a nonprovisional application must show every feature of the invention 
specified in the claims,'' is inconsistent with 35 U.S.C. 113, which 
states that ``[t]he applicant shall furnish a drawing where necessary 
for the understanding of the subject matter sought to be patented.'' 
The Office has considered the comments concerning Sec.  1.83(a) but is 
not revising or removing the regulation. Consistent with 35 U.S.C. 113, 
Office regulations already limit the requirement to furnish a drawing 
to cases where the drawing is necessary for the understanding of the 
subject matter sought to be patented. See 37 CFR 1.81(a). Section 
1.83(a) merely adds that when a drawing is required in accordance with 
35 U.S.C. 113 and Sec.  1.81(a), the drawing must show every feature of 
the invention specified in the claims. Moreover, Sec.  1.83(a) permits 
conventional features, a detailed illustration of which is not 
essential for a proper understanding of the invention, to be 
illustrated in the drawing in the form of a graphical drawing symbol or 
a labeled representation (e.g., a labeled rectangular box). Thus, Sec.  
1.83(a) strikes a balance between maintaining a high level of quality 
for prior art (drawings in accordance with Sec.  1.83 improve the 
understanding of the claimed subject matter in pre-grant publications 
and issued patents) and mitigating the drawing burden on applicants.
    Two comments propose revising or removing the requirement for a 
certified copy of the foreign application to be filed when making a 
claim for foreign priority under 37 CFR 1.55. One of the two comments 
proposes removing each instance of ``certified'' from Sec.  1.55, such 
that Sec.  1.55 instead would require only a copy of the foreign 
application. The other comment proposes allowing applicants to submit 
certified copies of foreign applications electronically through the 
Office's Electronic Filing System (EFS-Web), or in the alternative, 
eliminating the requirement for a certified copy.
    The Office has considered the comments concerning Sec.  1.55 but is 
not revising or removing the requirement for a certified copy of the 
foreign application to be filed when making a claim for foreign 
priority. A critical reason for the requirement under Sec.  1.55 to 
provide a certified copy of a foreign patent application is that the 
foreign priority date could be a prior art date under 35 U.S.C. 
102(a)(2). Without the requirement, the examiner and any member of the 
public interested in evaluating a 35 U.S.C. 102(a)(2) prior art date 
would be burdened with obtaining an actual certified copy of the 
priority document to do a complete analysis. This burden would be 
particularly acute for an examiner or member of the public seeking a 
certified copy from a jurisdiction with poor record-keeping practices.
    Furthermore, the Office continues to make progress on alleviating 
applicants' burden of providing a certified copy under Sec.  1.55 
through its electronic priority document exchange (PDX) program. The 
PDX program facilitates compliance with the certified copy requirement 
under Sec.  1.55 through two modes of exchange with participating 
foreign offices: Direct bilateral exchange and exchange via the World 
Intellectual Property Organization (WIPO) Digital Access Service (DAS) 
for Priority Documents. As of December 1, 2018, the Office 
electronically retrieves certified copies of foreign applications filed 
with 18 WIPO DAS depositing offices. For more information on the PDX 
program, visit https://www.uspto.gov/patents-getting-started/international-protection/electronic-priority-document-exchange-pdx. For 
instances in which the certified copy required by Sec.  1.55 must be 
obtained from a jurisdiction not currently participating in the PDX 
program, the burden of providing the certified copy is mitigated by 37 
CFR 1.55(j). Section 1.55(j) provides for an ``interim copy'' procedure 
that gives an applicant more time to obtain and file the actual 
certified copy.
    One comment proposes revising the requirement for an assignee to 
establish its right to take action under 37 CFR 3.73(c) so that it no 
longer applies ``to the original applicants named in patent 
applications subject to the AIA.'' The Office has considered the 
comment concerning Sec.  3.73(c) but is not revising the regulation. 
The language of Sec.  3.73(c)(1) already excludes an assignee who is 
the original applicant from the purview of Sec.  3.73(c) (``In order to 
request or take action in a patent matter, an assignee who is not the 
original applicant must establish its ownership of the patent property 
of paragraph (a) of this section to the satisfaction of the 
Director.''). As stated in Sec.  3.73(a), ``[t]he original applicant is 
presumed to be the owner of an application for an original patent, and 
any patent that may issue therefrom.''
    One comment identifies a number of initiatives undertaken by the 
Office, including the Collaborative Search Pilot Program, the 
Cooperative Patent Classification system, Global Dossier, and the 
Patent Prosecution Highway. The comment states that as a result of the 
initiatives, the requirement under 37 CFR 1.98(a)(2) for an applicant 
to provide the Office copies of foreign patent documents is 
unnecessarily burdensome where the documents have been cited in the 
prosecution of another application, including an international 
application, for which the applicant has notified the Office. The 
comment

[[Page 51980]]

proposes either removing Sec.  1.98(a)(2) or revising Sec.  1.98(d) so 
that it would not be necessary to provide a copy of any patent, 
publication, pending U.S. application or other information, if the 
patent, publication, pending U.S. application or other information was 
previously submitted to, or cited by, the Office in another 
application, including later-filed or co-filed U.S. or international 
applications and applications not relied on for an earlier effective 
filing date under 35 U.S.C. 120, and the other application has been 
properly identified in an information disclosure statement (IDS).
    The Office has considered the comment concerning Sec.  1.98(a)(2) 
and (d) but is not removing Sec.  1.98(a)(2) or revising Sec.  1.98(d). 
The relevant initiatives that the Office currently is undertaking, 
including relevant initiatives identified by the comment, are not 
sufficient to permit removing Sec.  1.98(a)(2) or revising Sec.  
1.98(d) in the proposed manner. The Office, however, continues to make 
progress on reducing applicants' burden in connection with the duty of 
disclosure. As of November 1, 2018, the Office has implemented the 
first phase of the Access to Relevant Prior Art Initiative (RPA 
Initiative). See Access to Relevant Prior Art Initiative, 83 FR 53853 
(Oct. 25, 2018). The RPA Initiative leverages electronic resources to 
improve examiners' access to relevant information from applicants' 
other related applications. In the first phase, the Office is importing 
the citations listed on forms PTO/SB/08 (or equivalents) and PTO-892 in 
the immediate parent application into the continuing application. The 
first phase consists of a targeted release of a newly developed 
interface to a subgroup of examiners from a limited number of selected 
art units. In subsequent phases of the RPA Initiative, the Office will 
consider providing examiners access to citation information from other 
sources such as other related U.S. applications, international 
applications under the PCT, and counterpart foreign applications of the 
same applicant. The selection of these sources and the timetable for 
expansion will be dictated, at least in part, by evaluating the first 
phase, including feedback on the RPA Initiative from the public and 
examiners. In addition, the USPTO plans to include more examiners in 
subsequent phases when the RPA Initiative proves scalable.
    One comment notes that 37 CFR 1.53(f)(3)(ii) requires applicants to 
file an oath or declaration in compliance with 37 CFR 1.63, or a 
substitute statement in compliance with 37 CFR 1.64, no later than the 
date on which the issue fee for the patent is paid. The comment 
proposes revising Sec.  1.53(f)(3)(ii) to provide a time period to 
correct a defective oath, declaration, or substitute statement 
submitted no later than the date on which the issue fee for the patent 
is paid, but found defective after the date at which the issue fee is 
paid. The Office has considered the comment concerning Sec.  
1.53(f)(3)(ii) but is not revising the regulation. The requested 
revision is precluded by statute. Specifically, 35 U.S.C. 115(f) states 
that ``[t]he applicant for patent shall provide each required oath or 
declaration under subsection (a), substitute statement under subsection 
(d), or recorded assignment meeting the requirements of subsection (e) 
no later than the date on which the issue fee for the patent is paid.''
    One comment generally supports the proposed amendments as meeting 
the stated objectives. The USPTO appreciates this input.
    All of the comments are posted on the USPTO's website at https://www.uspto.gov/patent/laws-and-regulations/comments-public/comments-changes-eliminate-unnecessary-regulations.

IV. Discussion of Rules Changes

Part 1

    Section 1.79: Section 1.79 is removed and reserved.
    Section 1.127: Section 1.127 is removed and reserved.
    Section 1.351: Section 1.351 is removed and reserved.

Part 42

    Section 42.102(b): Section 42.102(b) is removed and reserved.
    Section 42.202(b): Section 42.202(b) is removed and reserved.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure, and/or interpretive 
rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015) 
(Interpretive rules ``advise the public of the agency's construction of 
the statutes and rules which it administers.'' (citation and internal 
quotation marks omitted)); Nat'l Org. of Veterans' Advocates v. Sec'y 
of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that 
clarifies interpretation of a statute is interpretive.); Bachow 
Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (DC 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.).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this rulemaking are not required pursuant to 5 U.S.C. 
553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (Notice-
and-comment procedures are required neither when an agency ``issue[s] 
an initial interpretive rule'' nor ``when it amends or repeals that 
interpretive rule.''); 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))). However, the Office chose to seek public comment before 
implementing the rule to benefit from the public's input.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, of the USPTO has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that this rule will not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    This rule removes the provisions at 37 CFR 1.79, concerning the 
prohibition of reservation clauses, Sec.  1.127, concerning petitions 
from refusal to admit amendment, and Sec.  1.351, concerning the 
publication of amendments to rules. These regulations are removed 
because they are not necessary. This rule also removes 37 CFR 42.102(b) 
and 42.202(b), which provide that the Director may impose a limit on 
the number of inter partes reviews and post-grant reviews that may be 
instituted during each of the first four one-year periods that the AIA 
is in effect. These regulations are no longer necessary because the 
fourth anniversary of the effective date of the AIA has passed.
    Removing these regulations achieves the objective of making the 
USPTO regulations more effective and more streamlined, while enabling 
the USPTO to fulfill its mission goals. The removal of these 
regulations is not expected to substantively impact parties. Parties 
either will continue to be able to take the same action under a 
different regulatory provision, or the rights or obligations of the 
parties will not change in any way. For these reasons, this rulemaking 
will not have a significant economic impact on a substantial number of 
small entities.

[[Page 51981]]

    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 (Jan. 18, 
2011). 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 13771 (Reducing Regulation and Controlling 
Regulatory Costs): This rule is a deregulatory action under Executive 
Order 13771 (Jan. 30, 2017).
    F. 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).
    G. 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).
    H. 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).
    I. 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).
    J. 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).
    K. 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).
    L. 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 USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    M. 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.
    N. 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.
    O. 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 that involve the use of 
technical standards.
    P. 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 does not involve an information collection that 
is subject to review by the Office of Management and Budget (OMB) under 
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).
    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

37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

37 CFR Part 42

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons stated in the preamble, the Office amends parts 1 
and 42 of title 37 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

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


Sec.  1.79  [Removed and Reserved]

0
2. Section 1.79 is removed and reserved.


Sec.  1.127  [Removed and Reserved]

0
3. Section 1.127 is removed and reserved.


Sec.  1.351  [Removed and Reserved]

0
4. Section 1.351 is removed and reserved and the undesignated center 
heading above it, ``Amendment of Rules,'' is removed.

[[Page 51982]]

PART 42--TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

0
5. The authority citation for part 42 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, 
321-326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 
Stat. 2456.


Sec.  42.102  [Amended]

0
6. Amend section 42.102 by removing and reserving paragraph (b).


Sec.  42.202  [Amended]

0
7. Section 42.202 is amended by removing and reserving paragraph (b).

    Dated: September 19, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-20908 Filed 9-30-19; 8:45 am]
BILLING CODE 3510-16-P