DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No.: 010815207]
RIN 0651-AB41
Timing of National Stage Commencement
in the United States for
Patent Cooperation Treaty Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Temporary rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
amending the regulations to include the current statutory provisions
that define when national stage commencement occurs in an application
filed under the Patent Cooperation Treaty (PCT). The Office is making
this change due to a possible change in the patent statute to provide
that the time period for commencement of the national stage that is
currently set forth by statute will be set forth in the regulations.
DATES: Effective Date: August 30, 2001 through June 3, 2002.
Applicability Date: The change to 37 CFR 1.491 applies to
any international application pending before, on, or after August 30,
2001.
FOR FURTHER INFORMATION CONTACT: Charles A. Pearson, Director, Office of
PCT Legal Administration, by telephone at (703) 306-4145, or Boris Milef,
Legal Examiner, Office of PCT Legal Administration, by telephone at
(703) 308-3659, or by mail addressed to: Box PCT - Patents,
Commissioner for Patents, Washington, DC 20231, or by facsimile to
(703) 308-6459, marked to the attention of Boris Milef.
SUPPLEMENTARY INFORMATION: 35 U.S.C. 371(b) currently sets forth the time
period for commencement of the national stage in an application filed
under the PCT. Due to a possible statutory revision of 35 U.S.C. 371(b)
to provide that the time period for commencement of the national stage
will be set forth in the regulations, the Office is amending 37 CFR 1.491
( 1.491) such that the regulations set forth the current language of 35
U.S.C. 371(b) (as amended by Pub. L. 99-616, section 7(b), 100 Stat. 3485,
3485 (1986)) that defines when national stage commencement occurs. Certain
U.S. statutes and regulations provide for requirements that are tied to the
date of national stage "commencement" (e.g., the date of national stage
commencement is relevant to the due date for the national fee, an oath
or declaration, and any required translation of the international
application or amendments under PCT Article 19 (35 U.S.C. 371(d)), and
in determining whether patentees are entitled to a patent term
adjustment pursuant to 35 U.S.C. 154(b)(1)(B) (37 CFR 1.702(b)).
Therefore, it is important that the regulations provide for a date of
commencement of the national stage as to the United States in advance
of any statutory revision to 35 U.S.C. 371(b).
The Office will publish in the near future a notice proposing changes
to the time period for claiming the benefit of a prior-filed
application in an application filed under the PCT, and making other
technical corrections to the rules of practice related to eighteen-
month publication. The Office is also including the change to 1.491
in this temporary rule in the notice of proposed rulemaking to be
published in the near future. Comments on this change to 1.491 may
be submitted in response to that notice of proposed rulemaking, and the
Office will take such comments into consideration before publishing a
final rule resulting from the notice of proposed rulemaking.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended
as follows:
Section 1.491: Section 1.491 is amended to define both
commencement of the national stage and entry into the national stage.
Because these two events (commencement of the national stage and entry
into the national stage) may not take place at the same time, the
Office is amending 1.491 to clarify when each of these two events
takes place. Section 1.491(a) specifically indicates that, subject to
35 U.S.C. 371(f), the national stage shall commence with the expiration
of the applicable time limit under PCT Article 22(1) or (2), or under
PCT Article 39(1)(a). Thus, 1.491(a) merely incorporates the
statutory language contained in 35 U.S.C. 371(b) (as amended by Pub. L.
99-616, section 7(b), 100 Stat. 3485, 3485 (1986)). Section 1.491(b)
contains the provisions of former 1.491, and provides that an
international application enters the national stage when the applicant
has filed the documents and fees required by 35 U.S.C. 371(c) within
the period set in 1.494 or 1.495.
Classification
Administrative Procedure Act
This temporary rule simply amends 1.491 to include the
current provisions in 35 U.S.C. 371(b) that define when national stage
commencement occurs in an application filed under the PCT. This
amendment to 1.491 does not change the current time limits for
entering the national phase in the United States and does not alter any
applicant's substantive rights. In addition, this amendment to 1.491
is of an exigent nature because there is an impending change to 35
U.S.C. 371(b) that if enacted before the Office amends 1.491 would
result in a period of time during which the timing of national stage
commencement in an application filed under the PCT would be undefined.
Therefore, prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b)(A) (or any other law), and
thirty-day advance publication is not required pursuant to 5 U.S.C.
553(d) (or any other law).
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), an initial
regulatory flexibility analysis under the Regulatory Flexibility Act (5
U.S.C. 601 et seq.) is not required. See 5 U.S.C.
603.
Executive Order 13132
This rulemaking 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 rulemaking has been determined to be not significant for
purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This temporary rule involves 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.). The collection of information involved in this
temporary rule has been reviewed and previously approved by OMB under
the control number 0651-0021. The Office is not resubmitting an
information collection package to OMB for its review and approval
because the changes in this temporary rule do not affect the
information collection requirements associated with the information
collection under OMB control number 0651-0021.
The title, description and respondent description of the information
collection is shown below with an estimate of the annual reporting
burdens. Included in the estimate is the time for reviewing
instructions, gathering and maintaining the data needed, and completing
and reviewing the collection of information.
OMB Number: 0651-0021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401,
PCT/IB/328.
Type of Review: Approved through December of 2003.
Affected Public: Individuals or Households, Business or
Other For-Profit Institutions, Federal Agencies or Employees,
Not-for-Profit Institutions, Small Businesses or Organizations.
Estimated Number of Respondents: 331,288.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,083.
Needs and Uses: The information collected is required by the
Patent Cooperation Treaty (PCT). The general purpose of the PCT is to
simplify the filing of patent applications on the same invention in
different countries. It provides for a centralized filing procedure and
a standardized application format.
Comments are invited on: (1) Whether the collection of
information is necessary for proper performance of the functions of the
agency; (2) the accuracy of the agency's estimate of the burden; (3)
ways to enhance the quality, utility, and clarity of the information to
be collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Office of Patent Legal
Administration, United States Patent and Trademark Office, Washington,
D.C. 20231, or to the Office of Information and Regulatory Affairs of
OMB, New Executive Office Building, 725 17th Street, NW., Room 10235,
Washington, DC 20503, Attention: Desk Officer for the United States
Patent and Trademark Office.
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 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 1.491 is revised to read as follows:
1.491. National stage commencement and entry.
(a) Subject to 35 U.S.C. 371(f), the national stage shall
commence with the expiration of the applicable time limit under PCT
Article 22(1) or (2), or under PCT Article 39(1)(a).
(b) An international application enters the national stage when the
applicant has filed the documents and fees required by 35 U.S.C. 371(c)
within the period set in 1.494 or 1.495.
August 24, 2001 NICHOLAS P. GODICI
Acting Under Secretary of
Commerce for Intellectual Property and
Acting Director of the
United States Patent and Trademark Office