Changes to the Transitional Procedures for Limited Examination After Final Rejection in Certain Applications Filed Before June 8, 1995

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Notice.

SUMMARY:

The Uruguay Round Agreements Act (URAA) provided for a transitional procedure for the limited examination after final rejection in certain applications filed before June 8, 1995. The United States Patent and Trademark Office (Office) is changing its final action practice for the Office action immediately following a submission under the URAA transitional limited examination procedure. The Office is changing this final action practice to conform with the intent of the URAA and to facilitate the completion of prosecution of applications to which the URAA transitional limited examination procedure applies.

DATES:

Effective Date: The change in practice in this notice applies to any submission under 37 CFR 1.129(a) filed on or after June 8, 2005.

FOR FURTHER INFORMATION CONTACT:

Robert W. Bahr, Senior Patent Attorney, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, or by facsimile to (571) 273-7735, marked to the attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION:

The URAA provided (among other things) for the Office to prescribe regulations to provide further limited (re)examination after final rejection of applications that have been pending for two years or longer as of June 8, 1995, taking into account any reference made in such application to any earlier filed applications under 35 U.S.C. 120, 121, or 365(c). See Pub. L. 103-465, § 532(a)(2)(A), 108 Stat. 4809, 4985 (1994). The Statement of Administration Action that accompanied the URAA indicated that the purpose of this transitional procedure for the limited examination of certain applications filed before June 8, 1995, was to facilitate the completion of the prosecution of applications pending in the Office as of June 8, 1995. See Uruguay Round Agreements Act: Statement of Administrative Action, H.R. Doc. No. 103-316, at 1005 (1994), reprinted in 1994 U.S.C.C.A.N. 4040, 4298 (emphasis added). Section 102(d) of the URAA (19 U.S.C. 3512(d)) provides that “[t]he statement of administrative action approved by the Congress under section 101(a) shall be regarded as an authoritative expression by the United States concerning the interpretation and application of the Uruguay Round Agreements and this Act in any judicial proceeding in which a question arises concerning such interpretation or application.” See also RHP Bearings, Ltd. v. United States, 288 F.3d 1334, 1344 n.7 (Fed. Cir. 2002).

The Office implemented this provision in the URAA for the further limited examination of certain applications filed before June 8, 1995, in a then new 37 CFR 1.129(a). See Changes to Implement 20-Year Patent Term and Provisional Applications, 60 FR 20195 (Apr. 25, 1995), 1174 Off. Gaz. Pat. Office 15 (May 2, 1995) (final rule) (Twenty-Year Term Final Rule). With respect to the question of whether the Office action following a submission under 37 CFR 1.129(a) would be made final, the preamble to the Twenty-Year Term Final Rule indicated that: The next [Office] action following timely payment of the fee set forth in [37 CFR] 1.17(r) will be equivalent to a first action in a continuing application. * * * Thus, under [37 CFR] 1.129(a), if the first submission after final rejection was initially denied entry in the application because (1) new issues were raised that required further consideration and/or search, or (2) the issue of new matter was raised, then the next action in the application will not be made final. Likewise, if the second submission after final rejection was initially denied entry in the application because (1) new issues were raised that required further consideration and/or search, or (2) the issue of new matter was raised, then the next action in the application will not be made final.

See Changes to Implement 20-Year Patent Term and Provisional Applications, 60 FR at 20199, 1174 Off. Gaz. Pat. Office at 18. This statement of Office practice was subsequently incorporated into the Manual of Patent Examining Procedure (MPEP). See MPEP 706.07(g) (8th ed. 2001) (Rev. 2, May 2004).

It has now been a decade since the change to twenty-year patent term in the URAA. Nevertheless, there are still applications filed before June 8, 1995, pending before the Office in which a second (or both first and second) submission under 37 CFR 1.129(a) may be filed, though the Office now receives fewer than 100 submissions under 37 CFR 1.129(a) each year. This final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) is having a greater than anticipated (in 1995) effect in working against the completion of prosecution of applications filed before June 8, 1995. In addition, a review of the Statement of Administration Action reveals that the final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) (treating such Office action as the equivalent to a first action in a continuing application) was not the contemplated implementation of the transitional procedure provided for in § 532(a)(2)(A) of the URAA. See Uruguay Round Agreements Act: Statement of Administrative Action, H.R. Doc. No. 103-316, at 1006, reprinted in 1994 U.S.C.C.A.N. at 4298 (“[t]he [Office] will consider the merits of the first and second such submission, to the extent that such submissions would have been entitled to consideration if made prior to final rejection. The [Office] will modify such final rejection or allow such application, as appropriate, based upon consideration of such submissions”). Therefore, the Office is changing its final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) to bring about the completion of prosecution of applications to which the transitional procedure set forth in 37 CFR 1.129(a) applies.

Under the final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) now being adopted by the Office: The next Office action following timely filing of a submission under 37 CFR 1.129(a) (and payment of the fee set forth in 37 CFR 1.17(r)) will be equivalent to the next Office action following a reply to a non-final Office action. Under existing second Office action final practice, such an Office action on the merits shall be made final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a). Any information disclosure statement submitted under 37 CFR 1.129(a) without the statement specified in 37 CFR 1.97(e) will be treated as though it had been filed within the time period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) (in view of applicant's payment of the fee set forth in 37 CFR 1.17(r)).

Under § 532(a)(2)(A) of the URAA (and the Statement of Administration Action), an applicant whose application is eligible for the transitional further limited examination procedure set forth in 37 CFR 1.129(a) is entitled to consideration of two after final submissions. Thus, if such an applicant has filed one submission under 37 CFR 1.129(a) and the application is again under a final rejection, the applicant is entitled to only one additional submission under 37 CFR 1.129(a). If such an applicant has filed two submissions under 37 CFR 1.129(a) and the application is again under a final rejection, § 532(a)(2)(A) of the URAA (and the Statement of Administration Action) and 37 CFR 1.129(a) do not entitle the applicant to consideration of any additional submissions under 37 CFR 1.129(a). The applicant is, of course, entitled to consideration of an additional submission if the submission meets the conditions set forth in 37 CFR 1.116.

The Office recognizes that its former final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) resulted in some applicants effectively receiving consideration of more than two submissions under 37 CFR 1.129(a). Section 532(a)(2)(A) of the URAA and the Statement of Administration Action, however, provide only for consideration of a first and second submission under 37 CFR 1.129(a), and do not contemplate each such submission being treated as the equivalent of a continuing application. That the Office's former final action practice for the Office action immediately following a submission under 37 CFR 1.129(a) resulted in some applicants effectively receiving consideration of more than two submissions under 37 CFR 1.129(a) does not require the Office to continue to follow an after final practice having a result not contemplated by § 532(a)(2)(A) of the URAA and the Statement of Administration Action. See In re The Boulevard Entertainment, Inc., 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (that the Office has followed an improper practice in certain applications does not require the Office to follow that improper practice in all applications).

Finally, the Twenty-Year Term Final Rule also indicated that the Office action following timely payment of the fee set forth in 37 CFR 1.17(r) will be equivalent to a first action in a continuing application due to the amount of the fee specified in 37 CFR 1.17(r). See Changes to Implement 20-Year Patent Term and Provisional Applications, 60 FR at 20199, 1174 Off. Gaz. Pat. Office at 18. The fee amount specified in 37 CFR 1.17(r) does not justify a continuation of the final action practice set forth in the Twenty-Year Term Final Rule because: (1) The fee amount at 37 CFR 1.17(r) is no longer equivalent to the fee required for filing an application (the filing, search, and examination fee); and (2) the applications still eligible for submissions under 37 CFR 1.129(a) tend to be more burdensome than the “usual” continuing application (e.g., these applications tend to have more claims, have more continuity information, and have more related copending applications). Therefore, the fee amount specified in 37 CFR 1.17(r) is no longer a sufficient justification for treating the Office action following a submission under 37 CFR 1.129(a) as the equivalent to a first action in a continuing application.

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 previously approved by OMB under OMB control number 0651-0031. The Office is not resubmitting any 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 0651-0031.

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.

Section 706.07(g) of the Manual of Patent Examining Procedure will be revised in due course to reflect this change in practice.