Facilitating the Use of the World Intellectual Property Organization's ePCT System To Prepare International Applications for Filing With the United States Receiving Office, 61604-61608 [2020-18743]
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Federal Register / Vol. 85, No. 190 / Wednesday, September 30, 2020 / Rules and Regulations
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[FR Doc. 2020–20625 Filed 9–29–20; 8:45 am]
BILLING CODE 9110–04–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 5
[Docket No. PTO–P–2019–0033]
RIN 0651–AD43
Facilitating the Use of the World
Intellectual Property Organization’s
ePCT System To Prepare International
Applications for Filing With the United
States Receiving Office
United States Patent and
Trademark Office, Department of
Commerce.
ACTION: Final rule.
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AGENCY:
The United States Patent and
Trademark Office (USPTO or Office) is
amending the foreign filing license rules
to facilitate the use of ePCT (a World
Intellectual Property Organization
(WIPO) online service) to prepare an
SUMMARY:
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international application for filing with
the USPTO in its capacity as a Receiving
Office (RO/US) under the Patent
Cooperation Treaty (PCT). While the
former foreign filing license rules
authorized the export of technical data
to ePCT for purposes of preparing an
international application for filing in a
foreign PCT Receiving Office, they did
not authorize the export of technical
data to ePCT for purposes of preparing
an international application for filing
with the RO/US. As a foreign filing
license addresses the export of technical
data, the USPTO is amending the
foreign filing license rules to further
provide that a foreign filing license from
the USPTO authorizes the export of
technical data abroad for purposes
related to the use of ePCT to prepare an
international application for filing with
the RO/US under the PCT.
DATES: This final rule is effective on
September 30, 2020.
FOR FURTHER INFORMATION CONTACT:
Michael Neas, Deputy Director,
International Patent Legal
Administration, at 571–272–3289, or
Boris Milef, Senior Legal Examiner,
International Patent Legal
Administration, at 571–272–3288.
SUPPLEMENTARY INFORMATION: Executive
Summary: Purpose: The rules of
practice in 37 CFR part 5 are amended
to expand the scope of a foreign filing
license from the USPTO to allow U.S.
applicants to use WIPO’s ePCT webbased service to help prepare their
international applications for filing with
the RO/US, as they are already
permitted to do for filing with foreign
ROs.
Summary of Major Provisions: Under
former 37 CFR 5.11(b), a foreign filing
license from the Commissioner for
Patents authorized the export of
technical data abroad for purposes
related to the preparation, filing or
possible filing, and prosecution of a
foreign application, including an
international application for filing in a
PCT Receiving Office other than the RO/
US. See 37 CFR 5.1(b)(2). Former 37
CFR 5.11 did not authorize the export of
technical data abroad for purposes
related to the preparation of an
international application for filing with
the RO/US. As a foreign filing license
addresses the export of technical data,
the provisions of 37 CFR 5.11(b) are
amended to further provide that a
foreign filing license from the
Commissioner for Patents authorizes the
export of technical data abroad for
purposes related to the use of WIPO’s
online service for preparing an
international application for filing with
the RO/US.
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Costs and Benefits: This rulemaking is
not economically significant under
Executive Order 12866 (Sept. 30, 1993).
Background: The notice of proposed
rulemaking, published January 30, 2020
(85 FR 5362), provides background
information on this rulemaking. That
information is not repeated here.
This final rule updates the foreign
filing license rules to provide that a
foreign filing license from the USPTO,
which are routinely applied for and
granted as a matter of course in new
application filings, would authorize the
export of technical data abroad for
purposes relating to the use of ePCT to
prepare an international application for
filing with the USPTO in its capacity as
a Receiving Office under the PCT.
Applicants who are residents and/or
nationals of the United States and its
territories can file international
applications directly with the Receiving
Office of the International Bureau via
ePCT or other means, provided that any
national security provisions have been
met prior to filing, including obtaining
any required foreign filing license. See
37 CFR 5.11 and Manual of Patent
Examining Procedure 140. The
provisions of former 37 CFR 5.11(b)
authorized U.S. applicants having a
foreign filing license to export technical
data abroad to servers located outside
the United States hosting ePCT to
prepare international applications for
filing with the International Bureau as a
Receiving Office, without having to
separately comply with the regulations
contained in 22 CFR parts 120 through
130 (International Traffic in Arms
Regulations of the Department of State),
15 CFR parts 730 through 774 (Export
Administration Regulations of the
Bureau of Industry and Security,
Department of Commerce), and 10 CFR
part 810 (Assistance to Foreign Atomic
Energy Activities Regulations of the
Department of Energy). Id. The
provisions of former 37 CFR 5.11(b),
however, did not authorize the export of
technical data to such servers for the
purpose of preparing international
applications for filing with the RO/US.
The provisions of former 37 CFR
5.11(b) were last revised prior to the
date the RO/US began accepting
international applications prepared
using ePCT and thus did not address
whether applicants having a foreign
filing license from the USPTO could use
ePCT to prepare an international
application for filing with the RO/US.
Therefore, the USPTO updates the
regulations in this final rule to permit
applicants having a foreign filing license
from the USPTO to use ePCT to prepare
an international application for filing
with the RO/US without having to
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separately comply with the regulations
set forth in 37 CFR 5.11(b).
Discussion of Specific Rules
The following is a discussion of the
amendments to 37 CFR part 5.
Section 5.1: Section 5.1(b)(2) is
amended to change the text ‘‘foreign
patent office, foreign patent agency, or
international agency’’ to ‘‘foreign or
international intellectual property
authority,’’ for consistency, as the term
‘‘intellectual property authority’’ is
generally used in the patent statutes and
other patent rules. See, e.g., 35 U.S.C.
111(c) and 119(b)(1) and (b)(3), and 37
CFR 1.55, 1.57(a), and 1.76(b)(6).
Section 5.11: Section 5.11(a) is
amended to change the text ‘‘foreign
patent office, foreign patent agency, or
any international agency’’ to ‘‘foreign or
international intellectual property
authority,’’ consistent with the change
to § 5.1(b)(2).
Section 5.11(b) is amended to provide
that a license from the Commissioner for
Patents under 35 U.S.C. 184 referred to
in § 5.11(a) (‘‘foreign filing license’’)
would additionally authorize the export
of technical data abroad for purposes
related to the use of a WIPO online
service for preparing an international
application for filing with the RO/US
under the PCT.
The amendment would authorize
applicants having a foreign filing license
from the USPTO to use ePCT to prepare
an international application for filing
with the RO/US without having to
separately comply with the regulations
identified in § 5.11(b), i.e., the
regulations contained in 22 CFR parts
120 through 130 (International Traffic in
Arms Regulations of the Department of
State), 15 CFR parts 730 through 774
(Export Administration Regulations of
the Bureau of Industry and Security,
Department of Commerce), and 10 CFR
part 810 (Assistance to Foreign Atomic
Energy Activities Regulations of the
Department of Energy).
Section 5.11(e)(3) is amended to
change ‘‘foreign patent application’’ to
‘‘foreign application’’ for consistency
with the definition of foreign
application in § 5.1(b)(2).
Section 5.12: Section 5.12(a) is
amended to clarify that for an
application on an invention made in the
United States to be considered to
include a petition for license under 35
U.S.C. 184, the application must be filed
in the USPTO. An application that is
filed abroad on an invention made in
the United States but that comes to the
United States for examination, for
example, in the case of an international
design application designating the
United States that is filed abroad, would
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not be considered to include a petition
for a foreign filing license. Where an
application was filed abroad through
error without the required license under
§ 5.11 first having been obtained,
applicants should consider filing a
petition for retroactive license under
§ 5.25.
Section 5.15: Section 5.15(a) is
amended for clarity to include a
reference to § 5.11(b) concerning the
export of technical data. In addition,
‘‘foreign patent agency or international
patent agency’’ is changed to ‘‘foreign or
international intellectual property
authority.’’ See discussion of § 5.1(b)(2),
supra. Section 5.15(a) is also amended
to clarify that the grant of the license
also covers material submitted under
§ 5.13, where there is no corresponding
U.S. application.
Paragraphs (b) and (e) of § 5.15 are
amended consistent with the
amendments to § 5.15(a).
Comments and Responses to
Comments: The USPTO published a
notice of proposed rulemaking on
January 30, 2020, proposing to change
the rules of practice to facilitate the use
of WIPO’s ePCT system for U.S.
applicants. See Facilitating the Use of
WIPO’s ePCT System To Prepare
International Applications for Filing
With the United States Receiving Office,
85 FR 5362 (Jan. 30, 2020). The USPTO
received three comments from five
submitters—more particularly, from a
law firm, individual patent
practitioners, and the general public—in
response to the notice of proposed
rulemaking. The summarized comments
and the USPTO’s responses to those
comments follow:
Comment 1: While all the written
submissions received supported the
proposed rule changes, several
submitters also requested that the
USPTO expressly state, in this final
rule, that the warnings set forth in the
notice titled Use of WIPO’s ePCT System
for Preparing the PCT Request for Filing
as Part of an International Application
with the USPTO as Receiving Office, 81
FR 27417 (May 6, 2016) (hereafter ‘‘2016
notice’’) no longer apply. Those
comments explained that such a
statement would help in training and
outreach efforts to encourage the use of
ePCT, which, in turn, would benefit
applicants, patent practitioners, and
offices.
Response: The USPTO agrees that as
a result of this rulemaking, the warning
in the 2016 notice regarding exporting
subject matter, pursuant to a foreign
filing license from the USPTO, into
ePCT for preparing an international
application for filing with the RO/US no
longer applies. However, applicants are
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cautioned that the warnings in the 2016
notice are still applicable in the limited
situations where the applicant either
does not have a foreign filing license or
would be exporting additional subject
matter not included within the scope of
the foreign filing license from the
USPTO.
Comment 2: Several submitters
requested the USPTO develop a
mechanism to facilitate updating
bibliographic data in PCT applications,
similar to the mechanism available
through ePCT.
Response: The USPTO notes the
request to develop a mechanism to
facilitate updating of bibliographic data
in PCT applications. While such a
mechanism would provide some
benefits to PCT users, the process for
evaluating and prioritizing information
technology projects within the USPTO
is beyond the scope of this final rule.
The USPTO intends to consider the
request raised in the comment through
the appropriate internal process.
Comment 3: One submitter, while
supporting the proposed rule changes
stated that the changes would make it
easier for foreign filers to file their PCT
applications in the United States, and
said that this was necessary because
U.S. inventors already have this benefit
when filing a PCT application in the
other member states.
Response: The commenter appears to
have misunderstood the purpose of this
rule. The revised rules change neither
who may file a PCT application with the
RO/US, nor who may represent such
applicants before the RO/US. See 35
U.S.C. 361 and § 1.421 regarding who
may file a PCT application with the RO/
US, and § 1.455 regarding who may
represent a PCT applicant before the
USPTO.
Rulemaking Considerations
A. Administrative Procedure Act: This
document makes changes to the rules of
practice to facilitate the use of WIPO’s
ePCT system to prepare international
applications for filing with the RO/US.
The changes being made in this
document do not change the substantive
criteria of patentability. These changes
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 are
procedural where they do not change
the substantive standard for reviewing
claims); Nat’l Org. of Veterans’
Advocates v. Sec’y of Veterans Affairs,
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260 F.3d 1365, 1375 (Fed. Cir. 2001)
(rule that clarifies interpretation of a
statute is interpretive).
Accordingly, prior notice and
opportunity for public comment for
these changes 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), do 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
USPTO, however, published the
proposed changes for comment because
it sought the benefit of the public’s
views on the USPTO’s implementation
of the proposed rule changes.
B. Regulatory Flexibility Act: For the
reasons set forth herein, the Senior
Counsel for Regulatory and Legislative
Affairs in the Office of General Law of
the USPTO has certified to the Chief
Counsel for Advocacy of the Small
Business Administration that changes in
this document will not have a
significant economic impact on a
substantial number of small entities. See
5 U.S.C. 605(b).
The changes made in this document
will facilitate the use of WIPO’s ePCT
system to prepare international
applications for filing with the RO/US
and will apply to any entity, including
a small or micro entity, that uses ePCT
to prepare an international patent
application under the PCT for filing
with the RO/US. The changes made in
this document will not result in a
change in the burden imposed on any
patent applicant, including a small
entity.
For the foregoing reasons, the changes
made in this document will not have a
significant economic impact on a
substantial number of small entities.
C. Executive Order 12866 (Regulatory
Planning and Review): This rulemaking
has been determined to be not
significant for purposes of Executive
Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving
Regulation and Regulatory Review): The
USPTO has complied with Executive
Order 13563. Specifically, the USPTO
has, to the extent feasible and
applicable: (1) Made a reasoned
determination that the benefits justify
the costs of the rule; (2) tailored the rule
to impose the least burden on society
consistent with obtaining the regulatory
objectives; (3) selected a regulatory
approach that maximizes net benefits;
(4) specified performance objectives; (5)
identified and assessed available
alternatives; (6) involved the public in
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an open exchange of information and
perspectives among experts in relevant
disciplines, affected stakeholders in the
private sector, and the public as a
whole, and provided 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 final rule is not expected to
be an Executive Order 13771 regulatory
action because the final rule would not
be significant under Executive Order
12866.
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).
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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 document are not expected to result
in an annual effect on the economy of
$100 million 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
document 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
document 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 (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 (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
of 1969: 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 of 1995: 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 of 1995:
The Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.) requires that the
USPTO consider the impact of
paperwork and other information
collection burdens imposed on the
public. This rulemaking involves
information collection requirements that
are subject to review by Office of
Management and Budget (OMB) under
the Paperwork Reduction Act of 1995
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(44 U.S.C. 3501–3549). The collection of
information involved in this rulemaking
has been reviewed and previously
approved by OMB under control
number 0651–0021. This rulemaking
does not impose any additional
collection requirements under the
Paperwork Reduction Act that are
subject to further review by OMB. The
collections of information already
approved under control number 0651–
0021 support the actions proposed in
this rulemaking. Therefore, no changes
are required in the collection.
Notwithstanding any other provision
of law, no person is required to respond
to, nor shall any person be subject to a
penalty for failure to comply with a
collection of information subject to the
requirements of the Paperwork
Reduction Act unless that collection of
information displays a currently valid
OMB control number.
List of Subjects in 37 CFR Part 5
Classified information, Exports,
Foreign relations, Inventions and
patents.
For the reasons set forth in the
preamble, 37 CFR part 5 is amended as
follows:
PART 5—SECRECY OF CERTAIN
INVENTIONS AND LICENSES TO
EXPORT AND FILE APPLICATIONS IN
FOREIGN COUNTRIES
1. The authority citation for 37 CFR
part 5 is revised to read as follows:
■
Authority: 35 U.S.C. 2(b)(2), 41, 181–188;
22 U.S.C. 2751 et seq.; 42 U.S.C. 2011 et seq.;
22 U.S.C. 3201 et seq.; and the delegations to
the Director in 15 CFR 370.10(j), 22 CFR
125.04, and 10 CFR 810.7.
2. Section 5.1 is amended by revising
paragraph (b)(2) to read as follows:
■
§ 5.1 Applications and correspondence
involving national security.
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(b) * * *
(2) Foreign application as used in this
part includes, for filing in a foreign
country or in a foreign or international
intellectual property authority (other
than the United States Patent and
Trademark Office acting as a Receiving
Office for international applications (35
U.S.C. 361, 37 CFR 1.412) or as an office
of indirect filing for international design
applications (35 U.S.C. 382, 37 CFR
1.1002)) any of the following: An
application for patent; international
application; international design
application; or application for the
registration of a utility model, industrial
design, or model.
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3. Section 5.11 is amended by revising
paragraphs (a), (b), and (e)(3)
introductory text to read as follows:
■
§ 5.11 License for filing in, or exporting to,
a foreign country an application on an
invention made in the United States or
technical data relating thereto.
(a) A license from the Commissioner
for Patents under 35 U.S.C. 184 is
required before filing any application
for patent, including any modifications,
amendments, or supplements thereto or
divisions thereof, or for the registration
of a utility model, industrial design, or
model, in a foreign country or in a
foreign or international intellectual
property authority (other than the
United States Patent and Trademark
Office acting as a Receiving Office for
international applications (35 U.S.C.
361, 37 CFR 1.412) or as an office of
indirect filing for international design
applications (35 U.S.C. 382, 37 CFR
1.1002)), if the invention was made in
the United States, and:
(1) An application on the invention
has been filed in the United States less
than six months prior to the date on
which the application is to be filed; or
(2) No application on the invention
has been filed in the United States.
(b) The license from the
Commissioner for Patents referred to in
paragraph (a) of this section would also
authorize the export of technical data
abroad for purposes related to:
(1) The preparation, filing or possible
filing, and prosecution of a foreign
application; and
(2) The use of a World Intellectual
Property Organization online service for
preparing an international application
for filing with the United States Patent
and Trademark Office acting as a
Receiving Office (35 U.S.C. 361, 37 CFR
1.412) without separately complying
with the regulations contained in 22
CFR parts 120 through 130
(International Traffic in Arms
Regulations of the Department of State),
15 CFR parts 730 through 774 (Export
Administration Regulations of the
Bureau of Industry and Security,
Department of Commerce), and 10 CFR
part 810 (Assistance to Foreign Atomic
Energy Activities Regulations of the
Department of Energy).
*
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(e) * * *
(3) For subsequent modifications,
amendments, and supplements
containing additional subject matter to,
or divisions of, a foreign application if:
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■ 4. Section 5.12 is amended by revising
paragraph (a) and removing the
parenthetical authority at the end of the
section to read as follows:
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§ 5.12
61607
Petition for license.
(a) Filing of an application in the
United States Patent and Trademark
Office on an invention made in the
United States will be considered to
include a petition for license under 35
U.S.C. 184 for the subject matter of the
application. The filing receipt or other
official notice will indicate if a license
is granted. If the initial automatic
petition is not granted, a subsequent
petition may be filed under paragraph
(b) of this section.
*
*
*
*
*
■ 5. Section 5.15 is amended by revising
paragraphs (a) introductory text, (a)(1),
(b), and (e) to read as follows:
§ 5.15
Scope of license.
(a) Applications or other materials
reviewed pursuant to §§ 5.12 through
5.14, which were not required to be
made available for inspection by
defense agencies under 35 U.S.C. 181,
will be eligible for a license of the scope
provided in this paragraph (a). This
license permits subsequent
modifications, amendments, and
supplements containing additional
subject matter to, or divisions of, a
foreign application, if such changes to
the application do not alter the general
nature of the invention in a manner that
would require the United States
application to have been made available
for inspection under 35 U.S.C. 181.
Grant of this license authorizes the
export of technical data pursuant to
§ 5.11(b) and the filing of an application
in a foreign country or with any foreign
or international intellectual property
authority when the technical data and
the subject matter of the foreign
application correspond to that of the
application or other materials reviewed
pursuant to §§ 5.12 through 5.14, upon
which the license was granted. This
license includes the authority:
(1) To export and file all duplicate
and formal application papers in foreign
countries or with foreign or
international intellectual property
authorities;
*
*
*
*
*
(b) Applications or other materials
that were required to be made available
for inspection under 35 U.S.C. 181 will
be eligible for a license of the scope
provided in this paragraph (b). Grant of
this license authorizes the export of
technical data pursuant to § 5.11(b) and
the filing of an application in a foreign
country or with any foreign or
international intellectual property
authority. Further, this license includes
the authority to export and file all
duplicate and formal papers in foreign
countries or with foreign or
E:\FR\FM\30SER1.SGM
30SER1
61608
Federal Register / Vol. 85, No. 190 / Wednesday, September 30, 2020 / Rules and Regulations
international intellectual property
authorities and to make amendments,
modifications, and supplements to; file
divisions of; and take any action in the
prosecution of the foreign application,
provided subject matter additional to
that covered by the license is not
involved.
*
*
*
*
*
(e) Any paper filed abroad or
transmitted to a foreign or international
intellectual property authority following
the filing of a foreign application that
changes the general nature of the subject
matter disclosed at the time of filing in
a manner that would require such
application to have been made available
for inspection under 35 U.S.C. 181 or
that involves the disclosure of subject
matter listed in paragraph (a)(3)(i) or (ii)
of this section must be separately
licensed in the same manner as a foreign
application. Further, if no license has
been granted under § 5.12(a) after filing
the corresponding United States
application, any paper filed abroad or
with a foreign or international
intellectual property authority that
involves the disclosure of additional
subject matter must be licensed in the
same manner as a foreign application.
*
*
*
*
*
stations, and classified branches. The
Mailing Standards of the United States
Postal Service, Domestic Mail Manual is
available for examination on the
internet at https://pe.usps.gov.
(3) Inspection—NARA. It is for
inspection at the National Archives and
Records Administration (NARA). For
information on the availability of this
material at NARA, call 202–741–6030 or
go to www.archives.gov/federal-register/
cfr/ibr-locations.html.
(b) The Director of the Federal
Register approved IMM, updated July 1,
2020, for incorporation by reference as
of September 30, 2020.
■ 3. Revise § 20.2 to read as follows:
List of Subjects in 39 CFR Part 20
Foreign relations; Incorporation by
reference.
In view of the considerations
discussed above, the Postal Service
hereby amends 39 CFR part 20 as
follows:
The provisions of the International
Mail Manual issued July 1, 2020,
(incorporated by reference, see § 20.1)
are applicable with respect to the
international mail services of the Postal
Service.
PART 20—INTERNATIONAL POSTAL
SERVICE
■
1. The authority citation for part 20
continues to read as follows:
§ 20.4 Amendments to the International
Mail Manual.
■
Dated: August 19, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
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, 407, 414, 416, 3001–3011,
3201–3219, 3403–3406, 3621, 3622, 3626,
3632, 3633, and 5001.
[FR Doc. 2020–18743 Filed 9–29–20; 8:45 am]
■
BILLING CODE 3510–16–P
39 CFR Part 20
International Mail Manual;
Incorporation by Reference
Postal ServiceTM.
ACTION: Final rule.
AGENCY:
The Postal Service announces
the issuance of the Mailing Standards of
the United States Postal Service,
International Mail Manual (IMM®)
dated July 1, 2020, and its incorporation
by reference in the Code of Federal
Regulations.
DATES: This final rule is effective on
September 30, 2020. The incorporation
by reference of the IMM is approved by
the Director of the Federal Register as of
September 30, 2020.
FOR FURTHER INFORMATION CONTACT: Dale
Kennedy, (202) 268–6592.
SUPPLEMENTARY INFORMATION: The
International Mail Manual was issued
on July 1, 2020, and was updated with
SUMMARY:
VerDate Sep<11>2014
16:10 Sep 29, 2020
2. Revise § 20.1 to read as follows:
§ 20.1 Incorporation by reference; Mailing
Standards of the United States Postal
Service, International Mail Manual.
POSTAL SERVICE
jbell on DSKJLSW7X2PROD with RULES
Postal Bulletin revisions through June
18, 2020. It replaced all previous
editions. The IMM continues to enable
the Postal Service to fulfill its longstanding mission of providing
affordable, universal mail service. It
continues to: (1) Increase the user’s
ability to find information; (2) increase
the user’s confidence that he or she has
found the information they need; and
(3) reduce the need to consult multiple
sources to locate necessary information.
The provisions throughout this issue
support the standards and mail
preparation changes implemented since
the version of March 4, 2019. The
International Mail Manual is available
to the public on the Postal Explorer®
internet site at https://pe.usps.com.
Jkt 250001
(a) Mailing Standards of the United
States Postal Service, International Mail
Manual (IMM) is incorporated by
reference into this part with the
approval of the Director of the Federal
Register under 5 U.S.C. 552(a) and 1
CFR part 51.
(1) Purchase. Copies of Mailing
Standards of the United States Postal
Service, International Mail Manual can
be purchased by the public from the
Superintendent of Documents,
Washington, DC 20402–9375.
(2) Inspection—USPS. Copies of the
Mailing Standards of the United States
Postal Service, International Mail
Manual are available during regular
business hours for reference and public
inspection at the U.S. Postal Service
Library, U.S. Postal Service Library, 475
L’Enfant Plaza West SW, Washington,
DC 20260–1641, 202–268–2906. They
are also available during regular
business hours for public inspection at
area and district offices of the Postal
Service and at all post offices, classified
PO 00000
Frm 00038
Fmt 4700
Sfmt 4700
§ 20.2 Effective date of the International
Mail Manual.
§ 20.3
■
[Removed and Reserved]
3. Remove and reserve § 20.3.
4. Revise § 20.4 to read as follows:
(a) The current issue of the IMM is
incorporated by reference, see § 20.1.
(b) New issues of the International
Mail Manual will be incorporated by
reference into this part and will be
available at https://pe.usps.gov. The text
of amendments to the International Mail
Manual will be published in the Federal
Register and will be available in the
Postal Bulletin, copies of which may be
accessed at https://www.usps.com/cpim/
ftp/bulletin/pb.htm. Successive issues of
the IMM are listed in Table 1 to this
section.
TABLE 1 TO § 20.4—INTERNATIONAL
MAIL MANUAL
International Mail
Manual
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
Issue
E:\FR\FM\30SER1.SGM
1 .......................
2 .......................
3 .......................
4 .......................
5 .......................
6 .......................
7 .......................
8 .......................
9 .......................
10 .....................
11 .....................
12 .....................
13 .....................
14 .....................
15 .....................
16 .....................
17 .....................
30SER1
Date of issuance
November 13, 1981.
March 1, 1983.
July 4, 1985.
September 18, 1986.
April 21, 1988.
October 5, 1988.
July 20, 1989.
June 28, 1990.
February 3, 1991.
June 25, 1992.
December 24, 1992.
July 8, 1993.
February 3, 1994.
August 4, 1994.
July 9, 1995.
January 4, 1996.
September 12, 1996.
]]>Agencies
[Federal Register Volume 85, Number 190 (Wednesday, September 30, 2020)]
[Rules and Regulations]
[Pages 61604-61608]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-18743]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 5
[Docket No. PTO-P-2019-0033]
RIN 0651-AD43
Facilitating the Use of the World Intellectual Property
Organization's ePCT System To Prepare International Applications for
Filing With the United States Receiving Office
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) is amending the foreign filing license rules to facilitate the
use of ePCT (a World Intellectual Property Organization (WIPO) online
service) to prepare an international application for filing with the
USPTO in its capacity as a Receiving Office (RO/US) under the Patent
Cooperation Treaty (PCT). While the former foreign filing license rules
authorized the export of technical data to ePCT for purposes of
preparing an international application for filing in a foreign PCT
Receiving Office, they did not authorize the export of technical data
to ePCT for purposes of preparing an international application for
filing with the RO/US. As a foreign filing license addresses the export
of technical data, the USPTO is amending the foreign filing license
rules to further provide that a foreign filing license from the USPTO
authorizes the export of technical data abroad for purposes related to
the use of ePCT to prepare an international application for filing with
the RO/US under the PCT.
DATES: This final rule is effective on September 30, 2020.
FOR FURTHER INFORMATION CONTACT: Michael Neas, Deputy Director,
International Patent Legal Administration, at 571-272-3289, or Boris
Milef, Senior Legal Examiner, International Patent Legal
Administration, at 571-272-3288.
SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: The rules of
practice in 37 CFR part 5 are amended to expand the scope of a foreign
filing license from the USPTO to allow U.S. applicants to use WIPO's
ePCT web-based service to help prepare their international applications
for filing with the RO/US, as they are already permitted to do for
filing with foreign ROs.
Summary of Major Provisions: Under former 37 CFR 5.11(b), a foreign
filing license from the Commissioner for Patents authorized the export
of technical data abroad for purposes related to the preparation,
filing or possible filing, and prosecution of a foreign application,
including an international application for filing in a PCT Receiving
Office other than the RO/US. See 37 CFR 5.1(b)(2). Former 37 CFR 5.11
did not authorize the export of technical data abroad for purposes
related to the preparation of an international application for filing
with the RO/US. As a foreign filing license addresses the export of
technical data, the provisions of 37 CFR 5.11(b) are amended to further
provide that a foreign filing license from the Commissioner for Patents
authorizes the export of technical data abroad for purposes related to
the use of WIPO's online service for preparing an international
application for filing with the RO/US.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
Background: The notice of proposed rulemaking, published January
30, 2020 (85 FR 5362), provides background information on this
rulemaking. That information is not repeated here.
This final rule updates the foreign filing license rules to provide
that a foreign filing license from the USPTO, which are routinely
applied for and granted as a matter of course in new application
filings, would authorize the export of technical data abroad for
purposes relating to the use of ePCT to prepare an international
application for filing with the USPTO in its capacity as a Receiving
Office under the PCT.
Applicants who are residents and/or nationals of the United States
and its territories can file international applications directly with
the Receiving Office of the International Bureau via ePCT or other
means, provided that any national security provisions have been met
prior to filing, including obtaining any required foreign filing
license. See 37 CFR 5.11 and Manual of Patent Examining Procedure 140.
The provisions of former 37 CFR 5.11(b) authorized U.S. applicants
having a foreign filing license to export technical data abroad to
servers located outside the United States hosting ePCT to prepare
international applications for filing with the International Bureau as
a Receiving Office, without having to separately comply with the
regulations contained in 22 CFR parts 120 through 130 (International
Traffic in Arms Regulations of the Department of State), 15 CFR parts
730 through 774 (Export Administration Regulations of the Bureau of
Industry and Security, Department of Commerce), and 10 CFR part 810
(Assistance to Foreign Atomic Energy Activities Regulations of the
Department of Energy). Id. The provisions of former 37 CFR 5.11(b),
however, did not authorize the export of technical data to such servers
for the purpose of preparing international applications for filing with
the RO/US.
The provisions of former 37 CFR 5.11(b) were last revised prior to
the date the RO/US began accepting international applications prepared
using ePCT and thus did not address whether applicants having a foreign
filing license from the USPTO could use ePCT to prepare an
international application for filing with the RO/US. Therefore, the
USPTO updates the regulations in this final rule to permit applicants
having a foreign filing license from the USPTO to use ePCT to prepare
an international application for filing with the RO/US without having
to
[[Page 61605]]
separately comply with the regulations set forth in 37 CFR 5.11(b).
Discussion of Specific Rules
The following is a discussion of the amendments to 37 CFR part 5.
Section 5.1: Section 5.1(b)(2) is amended to change the text
``foreign patent office, foreign patent agency, or international
agency'' to ``foreign or international intellectual property
authority,'' for consistency, as the term ``intellectual property
authority'' is generally used in the patent statutes and other patent
rules. See, e.g., 35 U.S.C. 111(c) and 119(b)(1) and (b)(3), and 37 CFR
1.55, 1.57(a), and 1.76(b)(6).
Section 5.11: Section 5.11(a) is amended to change the text
``foreign patent office, foreign patent agency, or any international
agency'' to ``foreign or international intellectual property
authority,'' consistent with the change to Sec. 5.1(b)(2).
Section 5.11(b) is amended to provide that a license from the
Commissioner for Patents under 35 U.S.C. 184 referred to in Sec.
5.11(a) (``foreign filing license'') would additionally authorize the
export of technical data abroad for purposes related to the use of a
WIPO online service for preparing an international application for
filing with the RO/US under the PCT.
The amendment would authorize applicants having a foreign filing
license from the USPTO to use ePCT to prepare an international
application for filing with the RO/US without having to separately
comply with the regulations identified in Sec. 5.11(b), i.e., the
regulations contained in 22 CFR parts 120 through 130 (International
Traffic in Arms Regulations of the Department of State), 15 CFR parts
730 through 774 (Export Administration Regulations of the Bureau of
Industry and Security, Department of Commerce), and 10 CFR part 810
(Assistance to Foreign Atomic Energy Activities Regulations of the
Department of Energy).
Section 5.11(e)(3) is amended to change ``foreign patent
application'' to ``foreign application'' for consistency with the
definition of foreign application in Sec. 5.1(b)(2).
Section 5.12: Section 5.12(a) is amended to clarify that for an
application on an invention made in the United States to be considered
to include a petition for license under 35 U.S.C. 184, the application
must be filed in the USPTO. An application that is filed abroad on an
invention made in the United States but that comes to the United States
for examination, for example, in the case of an international design
application designating the United States that is filed abroad, would
not be considered to include a petition for a foreign filing license.
Where an application was filed abroad through error without the
required license under Sec. 5.11 first having been obtained,
applicants should consider filing a petition for retroactive license
under Sec. 5.25.
Section 5.15: Section 5.15(a) is amended for clarity to include a
reference to Sec. 5.11(b) concerning the export of technical data. In
addition, ``foreign patent agency or international patent agency'' is
changed to ``foreign or international intellectual property
authority.'' See discussion of Sec. 5.1(b)(2), supra. Section 5.15(a)
is also amended to clarify that the grant of the license also covers
material submitted under Sec. 5.13, where there is no corresponding
U.S. application.
Paragraphs (b) and (e) of Sec. 5.15 are amended consistent with
the amendments to Sec. 5.15(a).
Comments and Responses to Comments: The USPTO published a notice of
proposed rulemaking on January 30, 2020, proposing to change the rules
of practice to facilitate the use of WIPO's ePCT system for U.S.
applicants. See Facilitating the Use of WIPO's ePCT System To Prepare
International Applications for Filing With the United States Receiving
Office, 85 FR 5362 (Jan. 30, 2020). The USPTO received three comments
from five submitters--more particularly, from a law firm, individual
patent practitioners, and the general public--in response to the notice
of proposed rulemaking. The summarized comments and the USPTO's
responses to those comments follow:
Comment 1: While all the written submissions received supported the
proposed rule changes, several submitters also requested that the USPTO
expressly state, in this final rule, that the warnings set forth in the
notice titled Use of WIPO's ePCT System for Preparing the PCT Request
for Filing as Part of an International Application with the USPTO as
Receiving Office, 81 FR 27417 (May 6, 2016) (hereafter ``2016 notice'')
no longer apply. Those comments explained that such a statement would
help in training and outreach efforts to encourage the use of ePCT,
which, in turn, would benefit applicants, patent practitioners, and
offices.
Response: The USPTO agrees that as a result of this rulemaking, the
warning in the 2016 notice regarding exporting subject matter, pursuant
to a foreign filing license from the USPTO, into ePCT for preparing an
international application for filing with the RO/US no longer applies.
However, applicants are cautioned that the warnings in the 2016 notice
are still applicable in the limited situations where the applicant
either does not have a foreign filing license or would be exporting
additional subject matter not included within the scope of the foreign
filing license from the USPTO.
Comment 2: Several submitters requested the USPTO develop a
mechanism to facilitate updating bibliographic data in PCT
applications, similar to the mechanism available through ePCT.
Response: The USPTO notes the request to develop a mechanism to
facilitate updating of bibliographic data in PCT applications. While
such a mechanism would provide some benefits to PCT users, the process
for evaluating and prioritizing information technology projects within
the USPTO is beyond the scope of this final rule. The USPTO intends to
consider the request raised in the comment through the appropriate
internal process.
Comment 3: One submitter, while supporting the proposed rule
changes stated that the changes would make it easier for foreign filers
to file their PCT applications in the United States, and said that this
was necessary because U.S. inventors already have this benefit when
filing a PCT application in the other member states.
Response: The commenter appears to have misunderstood the purpose
of this rule. The revised rules change neither who may file a PCT
application with the RO/US, nor who may represent such applicants
before the RO/US. See 35 U.S.C. 361 and Sec. 1.421 regarding who may
file a PCT application with the RO/US, and Sec. 1.455 regarding who
may represent a PCT applicant before the USPTO.
Rulemaking Considerations
A. Administrative Procedure Act: This document makes changes to the
rules of practice to facilitate the use of WIPO's ePCT system to
prepare international applications for filing with the RO/US. The
changes being made in this document do not change the substantive
criteria of patentability. These changes 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 are procedural where they do not
change the substantive standard for reviewing claims); Nat'l Org. of
Veterans' Advocates v. Sec'y of Veterans Affairs,
[[Page 61606]]
260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that clarifies
interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment for
these changes 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), do 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 USPTO, however, published the proposed changes for
comment because it sought the benefit of the public's views on the
USPTO's implementation of the proposed rule changes.
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Senior Counsel for Regulatory and Legislative Affairs in the Office
of General Law of the USPTO has certified to the Chief Counsel for
Advocacy of the Small Business Administration that changes in this
document will not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b).
The changes made in this document will facilitate the use of WIPO's
ePCT system to prepare international applications for filing with the
RO/US and will apply to any entity, including a small or micro entity,
that uses ePCT to prepare an international patent application under the
PCT for filing with the RO/US. The changes made in this document will
not result in a change in the burden imposed on any patent applicant,
including a small entity.
For the foregoing reasons, the changes made in this document will
not have a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The USPTO has complied with Executive Order 13563.
Specifically, the USPTO 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 final rule is not expected to be an Executive
Order 13771 regulatory action because the final rule would not be
significant under Executive Order 12866.
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 document are not expected to
result in an annual effect on the economy of $100 million 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
document 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 document 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 (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 (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 of 1969: 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 of 1995: 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 of 1995: The Paperwork Reduction Act of
1995 (44 U.S.C. 3501 et seq.) requires that the USPTO consider the
impact of paperwork and other information collection burdens imposed on
the public. This rulemaking involves information collection
requirements that are subject to review by Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995
[[Page 61607]]
(44 U.S.C. 3501-3549). The collection of information involved in this
rulemaking has been reviewed and previously approved by OMB under
control number 0651-0021. This rulemaking does not impose any
additional collection requirements under the Paperwork Reduction Act
that are subject to further review by OMB. The collections of
information already approved under control number 0651-0021 support the
actions proposed in this rulemaking. Therefore, no changes are required
in the collection.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any person be subject to a penalty for failure
to comply with a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 5
Classified information, Exports, Foreign relations, Inventions and
patents.
For the reasons set forth in the preamble, 37 CFR part 5 is amended
as follows:
PART 5--SECRECY OF CERTAIN INVENTIONS AND LICENSES TO EXPORT AND
FILE APPLICATIONS IN FOREIGN COUNTRIES
0
1. The authority citation for 37 CFR part 5 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), 41, 181-188; 22 U.S.C. 2751 et
seq.; 42 U.S.C. 2011 et seq.; 22 U.S.C. 3201 et seq.; and the
delegations to the Director in 15 CFR 370.10(j), 22 CFR 125.04, and
10 CFR 810.7.
0
2. Section 5.1 is amended by revising paragraph (b)(2) to read as
follows:
Sec. 5.1 Applications and correspondence involving national security.
* * * * *
(b) * * *
(2) Foreign application as used in this part includes, for filing
in a foreign country or in a foreign or international intellectual
property authority (other than the United States Patent and Trademark
Office acting as a Receiving Office for international applications (35
U.S.C. 361, 37 CFR 1.412) or as an office of indirect filing for
international design applications (35 U.S.C. 382, 37 CFR 1.1002)) any
of the following: An application for patent; international application;
international design application; or application for the registration
of a utility model, industrial design, or model.
* * * * *
0
3. Section 5.11 is amended by revising paragraphs (a), (b), and (e)(3)
introductory text to read as follows:
Sec. 5.11 License for filing in, or exporting to, a foreign country
an application on an invention made in the United States or technical
data relating thereto.
(a) A license from the Commissioner for Patents under 35 U.S.C. 184
is required before filing any application for patent, including any
modifications, amendments, or supplements thereto or divisions thereof,
or for the registration of a utility model, industrial design, or
model, in a foreign country or in a foreign or international
intellectual property authority (other than the United States Patent
and Trademark Office acting as a Receiving Office for international
applications (35 U.S.C. 361, 37 CFR 1.412) or as an office of indirect
filing for international design applications (35 U.S.C. 382, 37 CFR
1.1002)), if the invention was made in the United States, and:
(1) An application on the invention has been filed in the United
States less than six months prior to the date on which the application
is to be filed; or
(2) No application on the invention has been filed in the United
States.
(b) The license from the Commissioner for Patents referred to in
paragraph (a) of this section would also authorize the export of
technical data abroad for purposes related to:
(1) The preparation, filing or possible filing, and prosecution of
a foreign application; and
(2) The use of a World Intellectual Property Organization online
service for preparing an international application for filing with the
United States Patent and Trademark Office acting as a Receiving Office
(35 U.S.C. 361, 37 CFR 1.412) without separately complying with the
regulations contained in 22 CFR parts 120 through 130 (International
Traffic in Arms Regulations of the Department of State), 15 CFR parts
730 through 774 (Export Administration Regulations of the Bureau of
Industry and Security, Department of Commerce), and 10 CFR part 810
(Assistance to Foreign Atomic Energy Activities Regulations of the
Department of Energy).
* * * * *
(e) * * *
(3) For subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
application if:
* * * * *
0
4. Section 5.12 is amended by revising paragraph (a) and removing the
parenthetical authority at the end of the section to read as follows:
Sec. 5.12 Petition for license.
(a) Filing of an application in the United States Patent and
Trademark Office on an invention made in the United States will be
considered to include a petition for license under 35 U.S.C. 184 for
the subject matter of the application. The filing receipt or other
official notice will indicate if a license is granted. If the initial
automatic petition is not granted, a subsequent petition may be filed
under paragraph (b) of this section.
* * * * *
0
5. Section 5.15 is amended by revising paragraphs (a) introductory
text, (a)(1), (b), and (e) to read as follows:
Sec. 5.15 Scope of license.
(a) Applications or other materials reviewed pursuant to Sec. Sec.
5.12 through 5.14, which were not required to be made available for
inspection by defense agencies under 35 U.S.C. 181, will be eligible
for a license of the scope provided in this paragraph (a). This license
permits subsequent modifications, amendments, and supplements
containing additional subject matter to, or divisions of, a foreign
application, if such changes to the application do not alter the
general nature of the invention in a manner that would require the
United States application to have been made available for inspection
under 35 U.S.C. 181. Grant of this license authorizes the export of
technical data pursuant to Sec. 5.11(b) and the filing of an
application in a foreign country or with any foreign or international
intellectual property authority when the technical data and the subject
matter of the foreign application correspond to that of the application
or other materials reviewed pursuant to Sec. Sec. 5.12 through 5.14,
upon which the license was granted. This license includes the
authority:
(1) To export and file all duplicate and formal application papers
in foreign countries or with foreign or international intellectual
property authorities;
* * * * *
(b) Applications or other materials that were required to be made
available for inspection under 35 U.S.C. 181 will be eligible for a
license of the scope provided in this paragraph (b). Grant of this
license authorizes the export of technical data pursuant to Sec.
5.11(b) and the filing of an application in a foreign country or with
any foreign or international intellectual property authority. Further,
this license includes the authority to export and file all duplicate
and formal papers in foreign countries or with foreign or
[[Page 61608]]
international intellectual property authorities and to make amendments,
modifications, and supplements to; file divisions of; and take any
action in the prosecution of the foreign application, provided subject
matter additional to that covered by the license is not involved.
* * * * *
(e) Any paper filed abroad or transmitted to a foreign or
international intellectual property authority following the filing of a
foreign application that changes the general nature of the subject
matter disclosed at the time of filing in a manner that would require
such application to have been made available for inspection under 35
U.S.C. 181 or that involves the disclosure of subject matter listed in
paragraph (a)(3)(i) or (ii) of this section must be separately licensed
in the same manner as a foreign application. Further, if no license has
been granted under Sec. 5.12(a) after filing the corresponding United
States application, any paper filed abroad or with a foreign or
international intellectual property authority that involves the
disclosure of additional subject matter must be licensed in the same
manner as a foreign application.
* * * * *
Dated: August 19, 2020.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2020-18743 Filed 9-29-20; 8:45 am]
BILLING CODE 3510-16-P
