[Federal Register: December 1, 1998 (Volume 63, Number 230)]
[Rules and Regulations]
[Page 66040-66041]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]



Patent and Trademark Office

37 CFR Part 1

[Docket No.: 980511124-8284-02]

Revision of Patent Cooperation Treaty Application Procedure

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.


SUMMARY: The Patent and Trademark Office (Office or USPTO) is
confirming the amendment of its rules of practice relating to
applications filed under the Patent Cooperation Treaty (PCT). This
amendment of the rules of practice conformed the United States rules of
practice with the corresponding changes to the Regulations under the
PCT which became effective July 1, 1998.

DATES: This final rule is effective on December 1, 1998. The interim
rule, published at 63 FR 29614 (June 1, 1998), was effective on July 1,

Supervisor, by telephone at (703) 308-6451; or by mail addressed to:
Box PCT, Assistant Commissioner for Patents, Washington, DC 20231; or
by facsimile to (703) 308-6459, marked to the attention of Richard

SUPPLEMENTARY INFORMATION: During a September-October 1997 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted amendments to the PCT Regulations.
These amendments to the PCT Regulations took effect on July 1, 1998,
and the amended PCT Regulations were published in the Official Gazette
at 1210 Off. Gaz. Pat. Office 29 (May 12, 1998). An interim rule
conforming the United States rules of practice to the corresponding
changes in the PCT Regulations was published in the Federal Register at
63 FR 29614 (June 1, 1998), and in the Official Gazette at 1211 Off.
Gaz. Pat. Office 76 (June 23, 1998).
    The Office has received no comments on the changes to 37 CFR
contained in the interim rule. Accordingly, the changes to 37 CFR
contained in the

[[Page 66041]]

above-mentioned interim rule are adopted as final in this final rule.
    Applicants are again notified that PCT Rules 20.4(c) and 26.3ter
(a) and (c) as amended are not compatible with the national law of the
United States, and thus the USPTO has taken a reservation on adherence
to these Rules through its notification to the Director General of WIPO
to such effect. See PCT Rules 20.4(d) and 26.3ter (b) and (d).
Similarly, the USPTO continues not to adhere to the unchanged
provisions of PCT Rule 49.5(cbis) and (k) with respect to the
translation requirements for United States national stage applications
(35 U.S.C. 371(c)(2)). See PCT Rule 49.5(l).
    The above-noted changes to the PCT Regulations include the addition
of new PCT Rules 89bis and 89ter (directed to electronic filing and
processing of international applications) which will enter into force
at the same time as the modifications to the Administrative
Instructions implementing those PCT Rules. Implementation of PCT Rules
89bis and 89ter is optional with each national office. In the event
that the USPTO decides to implement PCT Rules 89bis and 89ter, the
USPTO will provide notice to that effect in the Federal Register and
Official Gazette.

Discussion of Specific Rules

    A section-by-section discussion of the changes to title 37 of the
Code of Federal Regulations adopted as final in this final rule is set
forth in the above-mentioned interim rule at 63 FR 29614-17, and 1211
Off. Gaz. Pat. Office 77-78.

Other Considerations

    The United States rules of practice contained in title 37, CFR,
must conform to the PCT Articles and the Regulations annexed to the
PCT. See PCT Article 27(1). This final rule adopts as final changes
required to conform the United States rules of practice for
international applications to the amendments to the PCT Regulations
which became effective on July 1, 1998. Thus, this final rule is
covered by the foreign affairs function exception of 5 U.S.C.
553(a)(1), and may be adopted without prior notice and opportunity for
public comment. See International Brotherhood of Teamsters v. Pena, 17
F.3d 1478, 1486 (D.C. Cir. 1994).
    As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553, or any other law, the analytical
requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq.,
are inapplicable. This final rule does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 12612 (October 26, 1987).
This final rule has been determined not to be significant for purposes
of Executive Order 12866 (September 30, 1993).
    This final rule contains 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
principal impact of this final rule is to adopt as final changes that
conform the United States rules of practice relating to applications
filed under the PCT to the corresponding amendments made to the
Regulations under the PCT.
    The general purpose of the PCT is to provide a single set of
standards and procedures for the filing of patent applications on the
same invention in any of the over ninety PCT member countries. The PCT
provides a common filing procedure and a standardized application
format for international applications.
    The collection of information in this final rule has been reviewed
and approved by OMB under control number 0651-0021. The public
reporting burden for this collection of information is estimated to
average 0.95 hours per response, including the time for reviewing
instructions, searching existing data sources, gathering and
maintaining the information. Send comments regarding this burden
estimate or any other aspect of the data requirement, including
suggestions for reducing the burden to Richard Lazarus at the address
specified above and to the Office of Information and Regulatory
Affairs, OMB, 725 17th Street, N.W., Washington, D.C., 20503 (Attn: PTO
Desk Officer).
    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 recordkeeping
requirements, Small businesses.
    For the reasons set forth in the preamble, the interim rule
amending 37 CFR Part 1 which was published at 63 FR 29614-29620 on June
1, 1998, is adopted as a final rule without change.

    Dated: November 23, 1998.
Q. Todd Dickinson,
Deputy Assistant Secretary of Commerce and Deputy Commissioner of
Patents and Trademarks.
[FR Doc. 98-31952 Filed 11-30-98; 8:45 am]