Department of Commerce Patent and Trademark Office 37 CFR Parts 1 and 10 [Docket No. 950403086-5086-01] RIN 0651-AA72 Revisions of Patent Cooperation Treaty Provisions Agency: Patent and Trademark Office, Commerce Action: Final Rule Summary: The Patent and Trademark Office (Office) is amending the rules of practice relating to applications filed under the Patent Cooperation Treaty (PCT) in accordance with revised regulations under the PCT. The changes will result in a procedure whereby international applications improperly filed with the United States Receiving Office (RO/US) will, for a fee, be forwarded for processing to the International Bureau as Receiving Office. Effective Date: June 1, 1995 For Further Information Contact: Charles Pearson at (703) 308-6515. Supplementary Information: In a Notice of Proposed Rule-making published in the Federal Register at 59 FR 33707 (June 30, 1994) and in the Patent and Trademark Office Official Gazette at 1164 Off. Gaz. Pat. Office 77 (July 26, 1994), the Office proposed to amend several rules of practice in patent cases. Recent changes to the PCT Regulations include the addition of a new section (PCT Rule 19.4) which provides for transmittal of an international application to the International Bureau, acting in its capacity as Receiving Office, in certain instances. Under the regulations currently in effect, at least one applicant is required, on filing the international application in the United States, to be a resident or national of the United States. The practice under the revised PCT Regulations permits an international application filed with the United States Receiving Office to be forwarded to the International Bureau for processing in its capacity as a Receiving Office if the international application does not name an applicant who is indicated as being a U.S. resident or national, but names an applicant who is indicated as a resident or national of another PCT Contracting State or if the indication of residence or nationality of the applicant is missing. The Receiving Office of the International Bureau will consider the international application to be received as of the date accorded by the United States Receiving Office. This practice will avoid the loss of a filing date in those instances where the United States Receiving Office is not competent to act, but where the international application is filed by an applicant who is a national or resident of a PCT Contracting State. Where questions arise regarding residence and nationality, e.g., where residence and nationality are not clearly set forth, the application will be forwarded to the International Bureau as Receiving Office. If all applicants are indicated to be residents and nationals of non-PCT Contracting States, PCT Rule 19.4 does not apply and the application is denied an international filing date. Discussion of Specific Rules Section 1.412(c)(6) is added to reflect that the United States Receiving Office, where it is not a competent Receiving Office under PCT Rule 19.1 or 19.2, could transmit the international application to the International Bureau for processing in its capacity as a Receiving Office. Section 1.421(a) is amended to clarify that applications filed by applicants who are not residents or nationals of the United States, but who are residents or nationals of a PCT Contracting State or who indicate no residence or nationality, will, upon timely payment of the proper fee, be forwarded to the International Bureau for processing in its capacity as a Receiving Office. Section 1.445(a)(5) is added to establish a fee equivalent to the transmittal fee in paragraph (a)(1) of this section for transmittal of an international application to the International Bureau for processing in its capacity as a Receiving Office. Section 10.9 is amended to add a new provision consistent with PCT Rule 90.1, clarifying that an attorney or agent having the right to practice before the International Bureau when acting as Receiving Office may represent the applicant before the U.S. International Searching Authority or the U.S. International Preliminary Examining Authority. An individual who has the right to practice before the International Bureau when acting as Receiving Office, and who is not registered under 10.6, may not prosecute patent applications in the national stage in the Office. Response to Comments on The Rules The comments received in response to the notice of proposed rulemaking have been given careful consideration. The comments and responses are discussed below. Comment: One comment was received which approved of the proposed rule changes but noted other aspects of the U.S. National Phase filing procedures that could be changed to make the PCT more user-friendly. Response: The Office is interested in making the PCT more user-friendly. Amendments to 1.494 and 1.495, which were effective on May 1, 1993, removed many of the differences in practice involving the filing of a regular U.S. application under 35 U.S.C. 111 and the entry of the national stage under 35 U.S.C. 371. These regulations now provide for a notice of missing requirements, similar to a notice under 1.53(d), where a defective oath or declaration or a defective translation is filed. Comment: Regarding 1.412(c), one comment suggested that the proposed rule should be made consistent with PCT Rule 19.4(b) which provides for the transmittal of international applications to the International Bureau as Receiving Office "unless prescriptions concerning national security prevent the international application from being so transmitted" by incorporating such language into the proposed rule. Response: The Office has adopted the suggestion and modified the rule by incorporating the suggested language from PCT Rule 19.4(b) in the regulation. Comment: One comment regarding 1.445(a)(5) mentioned that the word "competent" should be deleted because it is not "necessary and may be inaccurate" when no applicant in an international application is a "resident or national of a PCT Contracting State." Response: The Office has adopted the suggestion and modified the rule by deleting "competent" from 1.445(a)(5). The second occurrence of the word "competent" has also been deleted from 37 CFR 1.412(c)(6), for the same reasons. Comment: Regarding 10.9(c), there were a few comments which focus on the wording. Specifically, one comment noted that the word "appointed" is confusing because it is not clear if it includes "an officer or employee of a legal-entity patent applicant" in cases where the United States of America is not designated. An example was provided which noted "if the only applicant was XYZ Company, would the president of the Company be authorized to prosecute the application before the USPTO as an International Searching and Preliminary Examining Authority? In countries permitting assignee filing it is normal for any authorized officer or employee of the company to be able to represent the company without regard as to whether he is authorized to practice as an agent or attorney before the patent office." Response: The proposed regulation is sufficiently clear on this point. If a person has the authority to represent an applicant, either a legal entity applicant or a real person, before the International Bureau as Receiving Office, then that person has the right to represent that applicant before the United States International Searching Authority and the United States International Preliminary Examining Authority. Comment: Another comment about Rule 10.9(c) is that the word "only" is overlimiting and should be deleted from the Rule because it excludes Article 19 amendments filed before the International Bureau. It was suggested that the Rule be changed as follows: --. . . prosecute an International Application before the United States Patent and Trademark Office acting as an International Searching or Preliminary examining Authority, . . .--. Response: The Office will not adopt the suggestion. The word "only" in the Rule signifies that such persons may not prosecute an international application in the national stage before the USPTO. The rule is not meant to control who may practice before the International Bureau. Such a person would clearly be allowed to file Article 19 amendments with the International Bureau by virtue of PCT Rule 90.1(a) Comment: A final comment made about Rule 10.9(c) is that the last phrase added is "too broad" because it does not recite who is entitled to act before the International Bureau. It was suggested that the rule should be changed to include the phrase --. . . for a national Office of a Contracting State of which an applicant is a resident or national-- at the end of the rule. Response: The Office has adopted the suggestion to the extent that an explicit reference to PCT Rule 83.1bis has been inserted in the regulation. Since PCT Rule 83.1bis clearly sets forth who may practice before the International Bureau, it is not necessary to repeat that information here. Thus, the regulation clearly sets forth who may practice before the United States International Searching and Preliminary Examining Authorities. Other Considerations: The rule changes are in conformity with the requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., Executive Order 12612, and the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. These rule changes have been determined to be not significant for the purposes of Executive Order 12866. The Assistant General Counsel for Legislation and Regulation of the Department of Commerce has certified to the Chief Counsel for Advocacy, Small Business Administration, that the rule changes will not have a significant economic impact on a substantial number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)) , because the rules would affect only a small number of international applications and would provide more streamlined and simplified procedures for filing and prosecuting international applications under the PCT. The Office has also determined that these rule changes have no federalism implications affecting the relationship between the National government and the States as outlined in Executive Order 12612. These rule changes will not impose any additional burden under the Paperwork Reduction Act of 1980, 44 U.S.C. 3501 et seq. The paperwork burden imposed by adherence to the PCT is currently approved by the Office of Management and Budget under control number 0651-0021. List of Subjects 37 CFR Part 1 Administrative practice and procedure, Courts, Freedom of information, Inventions and patents, Reporting and record keeping requirements, Small businesses. 37 CFR Part 10 Administrative practice and procedure, Inventions and patents, Lawyers, Reporting and record keeping requirements, Trademarks. For the reasons set forth in the preamble, 37 CFR Parts 1 and 10 are amended to read as follows: Part 1 - Rules of Practice in Patent Cases 1. The authority citation for 37 CFR Part 1 would continue to read as follows: Authority: 35 U.S.C. 6 unless otherwise noted. 2. Section 1.412 is amended by adding new paragraph (c)(6) to read as follows: 1.412 The United States Receiving Office. * * * * * (c) * * * (6) Reviewing and, where the United States Receiving Office is not the competent Receiving Office under 1.421(a) and PCT Rule 19.1 or 19.2, transmitting the international application to the International Bureau for processing in its capacity as a Receiving Office unless prescriptions concerning national security prevent the application from being so transmitted (PCT Rule 19.4). 3. Section 1.421 is amended by revising paragraph (a) to read as follows: 1.421 Applicant for International Application. (a) Only residents or nationals of the United States of America may file international applications in the United States Receiving Office. If an international application does not include an applicant who is indicated as being a resident or national of the United States of America, and at least one applicant: (1) has indicated a residence or nationality in a PCT Contracting State, or (2) has no residence or nationality indicated; applicant will be so notified and, if the international application includes a fee amount equivalent to that required by 1.445(a)(5), the international application will be forwarded for processing to the International Bureau acting as a Receiving Office. (See also 1.412(c)(6)). 4. Section 1.445 is amended by adding new paragraph (a)(5) to read as follows: 1.445 International application filing, processing and search fees. (a) * * * (5) A fee equivalent to the transmittal fee in paragraph (a)(1) of this section for transmittal of an international application to the International Bureau for processing in its capacity as a Receiving Office (PCT Rule 19.4). * * * * * 5. The authority citation for 37 CFR Part 10 would continue to read as follows: Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 6, 31, 32, 41. 6. Section 10.9 is amended by revising paragraph (c) to read as follows: 10.9 Limited recognition in patent cases. * * * * * (c) An individual not registered under 10.6 may, if appointed by applicant to do so, prosecute an international application only before the U.S. International Searching Authority and the U.S. International Preliminary Examining Authority, provided: the individual has the right to practice before the national office with which the international application is filed (PCT Art. 49, Rule 90 and 1.455) or before the International Bureau when acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1. April 25, 1995 LAWRENCE J. GOFFNEY, JR. Acting Assistant Secretary of Commerce and Acting Commissioner of Patents and Trademarks