April 2007 Revision of Patent Cooperation Treaty Procedures

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice of proposed rule making.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) is proposing to amend the rules of practice in title 37 of the Code of Federal Regulations (CFR) to conform them to certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT) that will take effect on April 1, 2007. These amendments will result in the addition of a mechanism to the PCT system whereby applicants may request that the right to claim priority be restored in applications that meet certain requirements. In addition, these amendments will provide a means for applicants to insert a missing portion of an international application without the loss of the international filing date. These amendments also will clarify the circumstances and procedures under which the correction of an obvious mistake may be made in an international application. Finally, the Office is proposing to revise the search fee for international applications.

Comment Deadline Date: Written comments must be received on or before March 19, 2007. No public hearing will be held.

ADDRESSES:

Comments should be sent by electronic mail message via the Internet addressed to: AC9.comments@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or by facsimile to (571) 273-0459, marked to the attention of Mr. Richard Cole. Although comments may be submitted by mail or facsimile, the Office prefers to receive comments via the Internet.

The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the Office Internet Web site (address: http://www.uspto.gov ). Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT:

Richard R. Cole, Legal Examiner, Office of PCT Legal Administration (OPCTLA) directly by telephone at (571) 272-3281, or by facsimile at (571) 273-0459.

SUPPLEMENTARY INFORMATION:

During the September-October 2005 meeting of the Governing Bodies of the World Intellectual Property Organization (WIPO), the PCT Assembly adopted various amendments to the Regulations under the PCT that enter into force on April 1, 2007. The amended PCT Regulations were published in the PCT Gazette of February 23, 2006 (08/2006), in section IV, at pages 5496-5541. The purposes of these amendments are to: (1) Bring the provisions of the PCT into closer alignment with the provisions of the Patent Law Treaty (PLT); and (2) clarify the circumstances and procedures under which the correction of an obvious mistake may be made in an international application.

Alignment with the PLT: The PLT provides for: (1) Restoration of applicant's right to claim priority under certain situations (PLT Article 13(2)); (2) insertion of a missing portion of an application without the loss of the filing date (PLT Article 5(6)); and (3) substitution of the description and drawings upon filing with a reference to a previously filed application (PLT Article 5(7)). The present amendments to the PCT Regulations will provide similar mechanisms for applicants using the PCT system.

With regard to restoration of applicant's right to claim priority under certain situations (PLT Article 13(2)), PCT Rule 26 bis has been amended to provide for the restoration of the right to claim priority in international applications which have been filed between twelve and fourteen months after the priority date and in which the delay in filing the international application was either in spite of due care or unintentional. It must be noted that PCT Rule 49 ter provides for designated Offices whose national law is incompatible with the PCT provisions concerning restoration of the right of priority to take a reservation with respect to the effects of this provision on national applications. The United States has taken this reservation pending passage of legislation that would implement the PLT in the United States. Therefore, any restoration of a right of priority by the United States Receiving Office under this section, or by any other Receiving Office under the provisions of PCT Rule 26 bis. 3, will not entitle applicants to a right of priority in any application which has entered the national stage under 35 U.S.C. 371, or in any application filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and 365(c) to an international application in which the right of priority has been restored. Whether or not applicant is entitled to the right of priority continues to be governed by whether applicant has satisfied the provisions of 35 U.S.C. 119, 120, and 365.

It must also be noted that even though restoration of such a right will not entitle applicant to the right of priority in a subsequent United States application, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495. PCT Article 2(ix), which defines “priority date” for purposes of computing time limits, contains no limitation that the priority claim be valid. Thus, for example, in an international application containing an earliest priority claim to a German application filed thirteen months prior to the filing date of the international application, the filing date of the German application will be used as the basis for computing time limits under the PCT, including the thirty-month time period set forth in 37 CFR 1.495 to submit the basic national fee (§ 1.492(a)) to avoid abandonment, even though applicant would not be entitled to priority to the German application in the United States national phase since the German application was filed more than twelve months from the international filing date. See 35 U.S.C. 119(a) and 365(b).

Concerning insertion of a missing portion of an application without the loss of the filing date (PLT Article 5(6)) and substitution of the description and drawings upon filing with a reference to a previously filed application, these provisions could not be implemented to the extent provided in the PLT absent amendment of the PCT Articles. However, similar provisions have been made in the PCT by amending PCT Rules 4 and 20 to allow for the inclusion of an incorporation by reference statement on the PCT Request form. Applicants may then rely on this statement to insert portions of the international application (including the entire description, claims, and/or drawings) which were missing upon the international filing date. 37 CFR 1.412(c)(1) already provides that the USPTO, in its capacity as a PCT Receiving Office, will accord international filing dates in accordance with PCT Rule 20. Therefore, no change to the rules of practice in title 37 CFR is necessary to implement these provisions, other than the deletion of 37 CFR 1.437(b) due to the fact that missing drawings are no longer handled in a manner different from the description and claims.

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, part 1, is proposed to be amended as follows:

Section 1.17: Section 1.17(t) is proposed to be amended to set forth the fee for requesting restoration of the right of priority.

Section 1.57: Section 1.57(a)(2) is proposed to be amended to reflect that omitted portions of international applications, which applicant desires to be effective in other designated States, must be submitted in accordance with PCT Rule 20.

Section 1.437: Section 1.437(a) is proposed to be amended for clarity and to remove inaccurate language currently present in the paragraph. Section 1.437(b) is proposed to be deleted to reflect the fact that missing drawings will no longer be treated differently from missing parts of the description or claims. Section 1.437(c) is proposed to be redesignated as § 1.437(b).

Section 1.445: Section 1.445(a) is proposed to be amended to set a search fee that more accurately reflects the cost of conducting a search and preparing a Chapter I written opinion in an international application. The Activity-Based-Cost analysis for the search and preparation of search and preparing Chapter I written opinions for international applications reveals that the average cost of this activity is over $1,800.00. Therefore, the Office is proposing to revise § 1.445(a) to provide for a search fee (and supplemental search fee) of $1,800.00. In addition, the Office is proposing to revise § 1.445(a) to provide that this $1,800.00 search fee is applicable, regardless of whether there is a corresponding prior nonprovisional application under 35 U.S.C. 111(a), a corresponding prior provisional application under 35 U.S.C. 111(b), or no corresponding prior provisional or nonprovisional application under 35 U.S.C. 111. The Office currently provides a reduced search fee if there is a corresponding prior nonprovisional application under 35 U.S.C. 111(a) and such application is adequately identified in the international application or accompanying papers at the time of filing the international application. The current backlog of applications under 35 U.S.C. 111(a) awaiting examination is such that it is no longer deemed appropriate to provide a reduced fee or other incentive for applicants to file an application under 35 U.S.C. 111(a) prior to or essentially parallel with the filing of an international application.

Section 1.452: Section 1.452 is proposed to be added to provide for restoration of the right of priority in international applications (subject to the enumerated conditions and limitations).

Section 1.452(a) provides that applicants may request restoration of the right of priority if the international application was filed within fourteen months from the priority date and the delay in filing the international application was unintentional.

Section 1.452(b) provides that any request for restoration must be filed within fourteen months from the priority date and must be accompanied by: (1) A notice adding the priority claim, if applicable; (2) the requisite fee; and (3) a statement that the entire delay was unintentional.

Section 1.452(c) provides that, in cases where applicant has requested early publication, the requirements under § 1.452(b) must be submitted prior to completion of the technical preparations for international publication.

Section 1.452(d) sets forth that restoration of a priority claim by the United States Receiving Office under this section, or by any other Receiving Office under the provisions of PCT Rule 26 bis.3, will not entitle applicants to a right of priority in any application which has entered the national stage under 35 U.S.C. 371, or in any application filed under 35 U.S.C. 111(a) which claims benefit under 35 U.S.C. 120 and 365(c) to an international application in which the right to priority has been restored.

Section 1.465: Section 1.465(b) is proposed to be amended for clarity and to remove the limitation that the priority claim must be “valid” in order to be used as the basis for computing time limits under the PCT.

Section 1.465(c) is proposed to be deleted as unnecessary, as the obligation of the United States Receiving Office to proceed under PCT Rule 26 bis.2 arises under 35 U.S.C. 361. In addition, reference to Rule 20.2(a)(i) or (iii) is no longer appropriate in view of the amendments to PCT Rule 20.

Rule Making Considerations

Regulatory Flexibility Act: For the reasons set forth herein, the Deputy General Counsel for General Law of the United States Patent and Trademark Office has certified to the Chief Counsel for Advocacy of the Small Business Administration that the changes proposed in this notice (if adopted) will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b). The significant changes proposed in this notice are: (1) Provisions for a restoration of a right of priority in certain limited situations; and (2) an adjustment of the search and supplemental search fee to more accurately reflect the cost of conducting a search and preparing a Chapter I written opinion in an international application.

The PCT enables United States applicants to file one application (an international or PCT application) in a standardized format in English in the United States Receiving Office (the United States Patent and Trademark Office) and have that application acknowledged as a regular national or regional filing in as many PCT Contracting States as the applicants desire to seek patent protection. See Manual of Patent Examining Procedure (MPEP) 1801. The primary benefit of the PCT system is the ability to delay the expense of submitting papers and fees to the PCT national offices. See MPEP 1881.

35 U.S.C. 376(b) provides that the Director shall prescribe the amount of the search fee, the supplemental search fee, and such other fees as established by the Director. Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes to adjust the search fee in § 1.445(b)(2)(iii) and the supplemental search fee in § 1.445(b)(3) from $1,000.00 to $1,800.00 (an increase of $800.00). This proposed adjustment to the search fee and supplemental search fee is to make these fees more accurately reflect the cost of conducting a search and preparing a Chapter I written opinion in an international application.

The PCT does not preclude United States applicants from filing patent applications directly in the patent offices of those countries which are Contracting States of the PCT (with or without previously having filed a regular national application under 35 U.S.C. 111(a) or 111(b) in the United States) and taking advantage of the priority rights and other advantages provided under the Paris Convention and the World Trade Organization (WTO) administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPs Agreement). See MPEP 1801. That is, the PCT is not the exclusive mechanism for seeking patent protection in foreign countries, but is instead simply an optional alternative route available to United States patent applicants for seeking patent protection in those countries that are Contracting States of the PCT. See id.

In addition, an applicant filing an international application under the PCT in the United States Receiving Office (the United States Patent and Trademark Office) is not required to use the United States Patent and Trademark Office as the International Searching Authority. The European Patent Office (except for applications containing business method claims) or the Korean Intellectual Property Office may be elected as the International Searching Authority for international applications filed in the United States Receiving Office. The applicable search fee if the European Patent Office is elected as the International Searching Authority European is $2,059.00 (set by the European Patent Office), and the applicable search fee if the Korean Intellectual Property Office is elected as the International Searching Authority is $232.00 (set by the Korean Intellectual Property Office).

In 2003, the Government Accountability Office (GAO) released a report containing the results of a survey of an expert panel of patent law attorneys concerning small businesses considering foreign patent protection with respect to the “cradle to grave” costs of foreign patent protection. See Experts” Advice for Small Businesses Seeking Foreign Patents, GAO-03-910 (2003). The GAO concluded that the cost of obtaining and maintaining foreign patents to be in the range of $160,000 to $330,000. See Id. at 41.

Therefore, the international search fee increase of $800.00 is not significant in comparison to the overall costs that a small entity must incur to obtain international patent protection. In addition, filing an international application under the PCT is an optional route for an applicant seeking foreign patent protection, and an applicant who does not choose to seek foreign patent protection by filing an international application under the PCT in the United States Receiving Office (the United States Patent and Trademark Office) is not required to use the United States Patent and Trademark Office as the International Searching Authority.

Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes to eliminate the reduced search fee in § 1.445(b)(2)(i) or (ii) when there is a corresponding prior nonprovisional application under 35 U.S.C. 111(a) and thereby adjusting the search fee in the situation in which there is a corresponding prior nonprovisional application under 35 U.S.C. 111(a) from $300.00 to $1,800.00 (an increase of $1,500.00). As discussed previously, this proposed adjustment to the search fee is to make these fees more accurately reflect the cost of conducting a search and preparing a Chapter I written opinion in an international application. An applicant has the option of filing a provisional application under 35 U.S.C. 111(b) (rather than a nonprovisional application under 35 U.S.C. 111(a)) or not filing a prior application before filing an international application. These alternatives are available at a lower overall cost in patent fees (even with the proposed adjustment in the search fee) than the cost in patent fees of filing a nonprovisional application under 35 U.S.C. 111(a) before filing an international application. This is the case even taking into account the current reduced search fee for there being a corresponding prior nonprovisional application under 35 U.S.C. 111(a).

Pursuant to the authority in 35 U.S.C. 376(b), this notice proposes to establish a fee for filing a request for the restoration of the right of priority of $1,370.00. This fee amount is identical to the fee amount for petitions to accept an unintentionally delayed claim for priority under 35 U.S.C. 119, 120, 121, or 365(a) (37 CFR 1.55 and 1.78). In addition, the Office anticipates that very few applicants will file a request for the restoration of the right of priority (about 100 each year, in comparison to the over 45,000 international applications filed in the United States Receiving Office each year).

For the reasons stated previously, the changes proposed in this notice (if adopted) will not have a significant economic impact on a substantial number of small entities.

Executive Order 13132: This rule making does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866: This rule making has been determined to be significant for purposes of Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act: This notice involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collection of information involved in this notice has been reviewed and approved by OMB under OMB control number 0651-0021. The United States Patent and Trademark Office is not resubmitting an information collection package to OMB for its review and approval because the changes in this notice do not affect the information collection requirements associated with the information collection under OMB control number 0651-0021.

Interested persons are requested to send comments regarding these information collections, including suggestions for reducing this burden, to: (1) The Office of Information and Regulatory Affairs, Office of Management and Budget, New Executive Office Building, Room 10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for the Patent and Trademark Office; and (2) Robert A. Clarke, Deputy Director, Office of Patent Legal Administration, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

• Administrative practice and procedure
• Courts
• Freedom of Information
• Inventions and patents
• Reporting and record keeping requirements
• Small businesses

For the reasons set forth in the preamble, 37 CFR Part 1 is proposed to be amended as follows:

PART 1—RULES OF PRACTICE IN PATENT CASES

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

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

2. Section 1.17 is amended by revising paragraph (t) to read as follows: