Electronic Submission of Notices of Appeal to the United States Court of Appeals for the Federal Circuit, Notices of Election, and Requests for Extension of Time for Seeking Judicial Review, 22084-22086 [2024-06659]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 89, Number 62 (Friday, March 29, 2024)]
[Rules and Regulations]
[Pages 22084-22086]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-06659]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 90

[Docket No. PTO-C-2024-0011]
RIN 0651-AD78


Electronic Submission of Notices of Appeal to the United States 
Court of Appeals for the Federal Circuit, Notices of Election, and 
Requests for Extension of Time for Seeking Judicial Review

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

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO) issues 
this final rule to incorporate changes to the patent and trademark 
rules regarding judicial review of agency decisions, in particular how 
a notice of appeal to the United States Court of Appeals for the 
Federal Circuit, a notice of election to proceed by civil action in 
district court, and a request for extension of time for filing a notice 
of appeal or commencing a civil action must be filed. This final rule 
states that a notice of appeal, notice of election, and a request for 
extension of time for filing a notice of appeal or commencing a civil 
action must be filed with the Director of the USPTO by email, and in 
the event a request cannot be filed by email, it may be filed by 
Priority Mail Express[supreg].

DATES: This rule is effective on March 29, 2024.

FOR FURTHER INFORMATION CONTACT: Mai-Trang Dang or Monica Lateef, 
Office of the Solicitor, at 571-272-9035, or at [email protected] or [email protected].

SUPPLEMENTARY INFORMATION: The USPTO is revising 37 CFR 90.2, 90.3 and 
2.145 to incorporate changes as to how a notice of appeal, a notice of 
election to proceed by civil action in district court, and a request 
for extension of time to file a notice of appeal or commence a civil 
action are to be filed with the Director of the USPTO. Prior to this 
final rule, appellants were required to file by mail or by delivery by 
hand to the address provided at 37 CFR 104.2. Under this final rule, 
the USPTO revises the regulations to allow for filings by email and by 
priority mail delivery to a new address. Specifically, this rule states 
that notices of appeal, notices of election, and requests for extension 
of time to file a notice of appeal or commence a civil action must be 
filed by email at the email address indicated on the USPTO's web page 
for the Office of the General Counsel for filing such notices and 
requests. If there is some circumstance in which email cannot be used, 
the rule provides that said notices and requests may be sent by 
Priority Mail Express[supreg]. This change will ensure that the USPTO 
receives said notices and requests reliably and promptly. The USPTO is 
also making a technical amendment to Sec.  90.3(c)(1) to remove the 
pronoun ``his'' in reference to the Director and replace it with ``the 
Director.''

Discussion of Regulatory Changes

    The USPTO is revising Sec. Sec.  2.145(a)(2)(i), (b)(2)(i) and 
(e)(2), 90.2(a)(1) and (b)(1), and 90.3(c)(2) to require notices of 
appeal, notices of election, and requests for extension of time to file 
a notice of appeal or commence a civil action, under those provisions, 
to be filed by email, or by Priority Mail Express[supreg]. The USPTO is 
revising Sec.  90.3(c)(1) to incorporate a technical amendment.

Rulemaking Requirements

    A. Administrative Procedure Act: The changes proposed by this 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules, and do not require notice-and-comment rulemaking. 
See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) 
(explaining that interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers'' and do 
not require notice and comment when issued or amended); 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''); and 
JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) 
(explaining that rules are not legislative because they do not 
``foreclose effective opportunity to make one's case on the merits'').
    In addition, the Office finds good cause pursuant to the authority 
at 5 U.S.C. 553(b)(B) and (d)(3) to dispense with prior notice and 
opportunity for public comment and a 30-day delay in effectiveness 
because such procedures are unnecessary in this instance. The changes 
in this rulemaking merely revise the regulations to provide expanded 
methods for submitting a notice of appeal, a notice of election, and a 
request for extension of time to file a notice of appeal to the 
Director of the USPTO. These changes ensure that the USPTO receives 
said notices and requests reliably and promptly. These revisions are 
largely procedural in nature and do not impose any additional 
requirements or fees on applicants. Thus, the USPTO implements this 
final rule without prior notice and opportunity for comment, or a 30-
day delay in effectiveness.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a Regulatory Flexibility Act analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (September 30, 1993), as

[[Page 22085]]

amended by Executive Order 14094 (April 6, 2023).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The USPTO has complied with Executive Order 13563 (January 18, 
2011). Specifically, and as discussed above, 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 13132 (Federalism): This rulemaking pertains 
strictly to federal agency procedures and does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (August 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) have substantial direct effects on one or more Indian 
tribes, (2) impose substantial direct compliance costs on Indian tribal 
governments, or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (November 
6, 2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (February 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (April 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (March 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), 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 
rulemaking 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 rulemaking is not expected to result in 
a ``major rule'' as defined in 5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this rulemaking 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.
    M. 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.
    N. 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.
    O. Paperwork Reduction Act of 1995: This final rule does not 
involve information collection requirements that are subject to review 
by the Office of Management and Budget (OMB) under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501 et seq.).
    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 
has a currently valid OMB control number.
    P. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.

37 CFR Part 90

    Administrative practice and procedure, Inventions and patents, 
Lawyers.

    For the reasons stated in the preamble, the USPTO amends 37 CFR 
parts 2 and 90 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for part 2 continues to read as follows:

    Authority:  15 U.S.C. 1113, 1123; 35 U.S.C. 2; sec. 10, Pub. L. 
112-29, 125 Stat. 284; Pub. L. 116-260, 134 Stat. 1182, unless 
otherwise noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 
434; 15 U.S.C. 1066, 1067.


0
2. Section 2.145 is amended by revising paragraphs (a)(2)(i), (b)(2)(i) 
and (e)(2) to read as follows:


Sec.  2.145  Appeal to court and civil action.

    (a) * * *
    (2) * * *
    (i) File the notice of appeal with the Director by electronic mail 
sent to the email address indicated on the United States Patent and 
Trademark Office's web page for the Office of the General Counsel. This 
electronically submitted notice will be accorded a receipt date, which 
is the date in Eastern Time when the correspondence is received in the 
Office, regardless of whether that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia. If there

[[Page 22086]]

is some circumstance in which electronic mail cannot be used, 
submission may be by Priority Mail Express[supreg] or by means at least 
as fast and reliable as Priority Mail Express[supreg] to the Office of 
the Solicitor, United States Patent and Trademark Office, Mail Stop 8, 
P.O. Box 1450, Alexandria, Virginia 22313-1450;
* * * * *
    (b) * * *
    (2) * * *
    (i) File a notice of election with the Director by electronic mail 
sent to the email address indicated on the United States Patent and 
Trademark Office's web page for the Office of the General Counsel. This 
electronically submitted notice will be accorded a receipt date, which 
is the date in Eastern Time when the correspondence is received in the 
Office, regardless of whether that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia. If there is some 
circumstance in which electronic mail cannot be used, submission may be 
by Priority Mail Express[supreg] or by means at least as fast and 
reliable as Priority Mail Express[supreg] to the Office of the 
Solicitor, United States Patent and Trademark Office, Mail Stop 8, P.O. 
Box 1450, Alexandria, Virginia 22313-1450;
* * * * *
    (e) * * *
    (2)(i) The request must be filed with the Director by electronic 
mail sent to the email address indicated on the United States Patent 
and Trademark Office's web page for the Office of the General Counsel. 
This electronically submitted notice will be accorded a receipt date, 
which is the date in Eastern Time when the correspondence is received 
in the Office, regardless of whether that date is a Saturday, Sunday, 
or Federal holiday within the District of Columbia. If there is some 
circumstance in which electronic mail cannot be used, submission may be 
by Priority Mail Express[supreg] or by means at least as fast and 
reliable as Priority Mail Express[supreg] to the Office of the 
Solicitor, United States Patent and Trademark Office, Mail Stop 8, P.O. 
Box 1450, Alexandria, Virginia 22313-1450.
    (ii) A copy of the request should also be filed with the Trademark 
Trial and Appeal Board via ESTTA.

PART 90--JUDICIAL REVIEW OF PATENT TRIAL AND APPEAL BOARD DECISIONS

0
3. The authority citation for part 90 continues to read as follows:

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


0
4. Section 90.2 is amended by revising paragraphs (a)(1) and (b)(1) to 
read as follows:


Sec.  90.2  Notice; service.

    (a) * * *
    (1)(i) In all appeals, the notice of appeal required by 35 U.S.C. 
142 must be filed with the Director by electronic mail to the email 
address indicated on the United States Patent and Trademark Office's 
web page for the Office of the General Counsel. This electronically 
submitted notice will be accorded a receipt date, which is the date in 
Eastern Time when the correspondence is received in the Office, 
regardless of whether that date is a Saturday, Sunday, or Federal 
holiday within the District of Columbia. If there is some circumstance 
in which electronic mail cannot be used, submission may be by Priority 
Mail Express[supreg] to the Office of the Solicitor, United States 
Patent and Trademark Office, Mail Stop 8, P.O. Box 1450, Alexandria, 
Virginia 22313-1450.
    (ii) A copy of the notice of appeal must also be filed with the 
Patent Trial and Appeal Board in the appropriate manner provided in 
Sec. Sec.  41.10(a), 41.10(b), or 42.6(b) of this chapter.
* * * * *
    (b) * * *
    (1) Pursuant to 35 U.S.C. 141(d), if an adverse party elects to 
have all further review proceedings conducted under 35 U.S.C. 146 
instead of under 35 U.S.C. 141, that party must file a notice of 
election with the Director by electronic mail to the email address 
indicated on the United States Patent and Trademark Office's web page 
for the Office of the General Counsel. This electronically submitted 
notice will be accorded a receipt date, which is the date in Eastern 
Time when the correspondence is received in the Office, regardless of 
whether that date is a Saturday, Sunday, or Federal holiday within the 
District of Columbia. If there is some circumstance in which electronic 
mail cannot be used, submission may be by Priority Mail Express[supreg] 
to the Office of the Solicitor, United States Patent and Trademark 
Office, Mail Stop 8, P.O. Box 1450, Alexandria, Virginia 22313-1450.
* * * * *

0
5. Section 90.3 is amended by revising the paragraphs (c)(1) 
introductory text and (c)(2) to read as follows:


Sec.  90.3  Time for appeal or civil action.

* * * * *
    (c) * * *
    (1) The Director, or the Director's designee, may extend the time 
for filing an appeal, or commencing a civil action, upon written 
request if:
* * * * *
    (2) The request must be filed with the Director by electronic mail 
to the email address indicated on the United States Patent and 
Trademark Office's web page for the Office of the General Counsel. This 
electronically submitted request will be accorded a receipt date, which 
is the date in Eastern Time when the correspondence is received in the 
Office, regardless of whether that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia. If there is some 
circumstance in which electronic mail cannot be used, submission may be 
by Priority Mail Express[supreg] to the Office of the Solicitor, United 
States Patent and Trademark Office, Mail Stop 8, P.O. Box 1450, 
Alexandria, Virginia 22313-1450.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-06659 Filed 3-28-24; 8:45 am]
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