DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 4
Docket No 000105007-0007-01
RIN 0651-AB12
Complaints Regarding Invention Promoters
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Interim Final Rule; Request for Comments.
SUMMARY: The Patent and Trademark Office (Office) has added rules of
practice to implement the Office's procedures for acceptance of
complaints under the Inventors' Rights Act of 1999, Pub. L. No. 106-113,
section 4001 (to be codified at 35 U.S.C. 297). The Act requires the
Office to provide a forum for the publication of complaints concerning
invention promoters.
The Office is providing the public with an opportunity to comment on the
new rules which have been adopted.
DATES: The interim final rules are effective January 28, 2000; written
comments must be submitted on or before February 22, 2000.
ADDRESSES: Address written comments to the attention of Kevin Baer,
Attorney Advisor, Commissioner of Patents and Trademarks, Box 4,
Washington, D.C. 20231. In addition, written comments may be sent by
facsimile transmission to (703) 305-8885 or by electronic mail messages
over the Internet to kevin.baer@uspto.gov. The written comments will be
available in the Patent and Trademark Office, Public Search Room, room
1A03, Crystal Plaza 3, Arlington, Virginia 20231, on or about February
22, 2000.
FOR FURTHER INFORMATION CONTACT: Kevin Baer, by telephone at (703)
305-9300, by facsimile at (703) 305-8885, by electronic mail at
kevin.baer@uspto.gov, or by mail marked to the attention of Kevin Baer,
Attorney Advisor, addressed to the Commissioner of Patents and
Trademarks, Box 4, Washington, D.C. 20231.
SUPPLEMENTARY INFORMATION:
These interim rules implement the Office's procedures for handling
complaints and replies filed under the Inventors' Rights Act of 1999,
Pub. L. No. 106-113, section 4001 (to be codified at 35 U.S.C. 297). The
Act requires the Office to provide a forum for the publication of
complaints concerning invention promoters and replies from the invention
promoters. The Office requests comments from any interested members of
the public on the following interim rules.
Background
Congress passed the Inventors' Rights Act of 1999 (Act) to protect the
independent inventor from unscrupulous invention promoters who prey on
independent inventors. Legitimate invention promoters assist novice
inventors by providing information on how to develop, finance,
manufacture, and market their inventions. Congress recognized that
invention promotion services are valuable to independent inventors but
also understood that some invention promoters were asking for large sums
of money up-front without providing any real services. 145 Cong. Rec.
S14708, S14716 (daily ed. Nov. 17, 1999) (Statement of Senator Lott
introducing section-by-section analysis). Included within the Act is a
requirement that the Office provide a forum for publishing complaints
about invention promoters and replies from the invention promoters.
Under the Act the Office has no role in enforcing the Act against
invention promoters or investigating invention promoters. The Act
provides customers of invention promoters with certain civil remedies,
but neither the Office nor the interim rules govern the private legal
rights of the invention promoter customers.
The interim final rules explain how the Office will handle complaints
and replies to the complaints by the invention promoters.
Discussion of Specific Rules: The rules for implementing this Act will
be found in new Part 4, of Title 37, Code of Federal Regulations (37 CFR
Part 4).
Section 4.1: Section 4.1 is being added to explain that: (i) these rules
govern the Office's responsibility under the Inventors' Rights Act of
1999; (ii) the Office will not undertake any investigation of the
invention promoter; and (iii) any civil remedies must be pursued by the
injured party.
Section 4.2: Section 4.2 is being added to include the definitions set
out in the Act.
Section 4.3: Section 4.3 is being added to explain that the Office will
accept complaints about invention promoters. Anyone submitting a
complaint should understand that the complaint may be forwarded to the
invention promoter about which the complaint is made and that the
complaint will likely be publicly available. The Act requires the Office
to forward copies of the complaint to the invention promoter so that the
invention promoter may respond. The Office will not accept any
complaints under this system that request that the complaint be kept
confidential. The Act requires the Office to make complaints publicly
available. Likewise, any reply from the invention promoter will be made
publicly available.
In order for the Office to identify a submission as a complaint under
this Act, the complaint must be clearly marked or otherwise indicate
that it is a complaint filed under these rules or under the Act. General
letters of complaint sent to the Office will not be treated under this
complaint publication program.
The complaint should fairly and impartially summarize the complaint. The
purpose of the Act is to provide complainants with a forum for publicly
making a complaint against an invention promoter. As with all
submissions to the Office, persons should conduct themselves with
decorum and courtesy. See 37 CFR 1.3. Submissions that do not provide
the requested information will be returned. If a complainant's address
is not provided, the submission will be destroyed. A complaint can be
withdrawn by the complainant or named customer at any time prior to its
publication.
The Office is developing a form for the convenience of persons wishing
to make a complaint. At a minimum, a complaint under these rules must
provide: (1) the identity of the person making the complaint; (2) an
address of the person complaining; (3) the name and address of the
invention promoter; (4) the name of the customer of the invention
promoter; (5) an explanation of the invention promotion services offered
or performed; (6) the name of the mass media used to advertise the
invention promoter's services; (7) an explanation of the relationship
between the customer and the invention promotion services; and (8) a
signature of the complainant.
Complaints should be submitted to the Office of Independent Inventor
Programs, U.S. Patent and Trademark Office, Washington, D.C. 20231. No
originals of documents should be included with the complaint.
Section 4.4(a): Section 4.4(a) is being added to explain that the Office
will forward complaints to the invention promoter named in the
complaint. The invention promoter will be given 30 days to respond to
the complaint. The complaint and the invention promoter's reply, if any,
will be made publicly available. The Office may return the complainant's
submission for clarification if the Office is unable to determine
whether a submission is intended to be a complaint under these rules.
The Office may also return the submission if it fails to include any
necessary information. Similarly, the Office may return multiple
submissions concerning the same subject matter.
Section 4.4(b): Section 4.4(b) is being added to explain that the Office
will accept responses from invention promoters. The party responding
must identify the submission as a response to a particular complaint,
identify the individual signing the response, and provide that
individual's title or authority for signing the response.
The Office intends to forward copies of the complaints to the invention
promoter using regular first class U.S. mail. In the event the mailing
is returned, section 4.5 will apply. In the absence of mail being
returned undeliverable, the Office will presume that the invention
promoter received the mailing. In the unlikely event the invention
promoter does not receive the mailing and the mailing is not returned as
undeliverable, then publication of the complaint provides the invention
promoter with adequate notice that a complaint has been filed. A reply
that is submitted after the complaint is made public will also be made
available to the public.
Section 4.5: Section 4.5 is being added to explain how the Office will
handle situations where the copy of the complaint that is mailed to the
invention promoter is returned undelivered. If this occurs, the Office
will publish a notice alerting the invention promoter that a complaint
has been filed. The notice will be published in the Official Gazette, in
the Federal Register, or on the Office's INTERNET home page at
www.uspto.gov. The invention promoter will have 30 days after
publication of the notice to submit a response to the complaint. If the
invention promoter does not submit a response to the complaint within 30
days, then the complaint will be made public.
Section 4.6: Section 4.6 is being added to clarify that routine
complaints about registered attorneys or agents will not be treated
under these rules. The Office may return a submission involving a
registered attorney or agent to seek clarification as to whether or not
the attorney or agent was involved with the invention promotion
services. The Office does not plan on publishing complaints against
registered attorneys or agents unless the complainant can fairly
demonstrate that the attorney or agent is involved with invention
promotion services. However, attorneys or agents who work with invention
promoters should realize that such work may cause their name or
affiliation to be publicly disclosed in a complaint. In addition, the
Office may forward any submission concerning a registered attorney or
agent to the Office of Enrollment and Discipline.
All submissions to the Office under this Part are subject to the
criminal penalties under 18 U.S.C. 1001 for false statements.
Classification
Administrative Procedure Act:
This interim final rule sets forth the Office procedures to make
complaints involving invention promoters publicly available, together
with any response of the invention promoters as required by the
Inventors' Rights Act of 1999, Pub. L. No. 106-113, section 4001.
Therefore, prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b)(3)(A), 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(b)(3)(A), or any other law, the analytical
requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq.,
are inapplicable.
Executive Order 13132:
This interim final rule does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132.
Executive Order 12866:
This interim final rule has been determined to be not significant for
purposes of Executive Order 12866.
Paperwork Reduction Act:
This interim final rule contains a collection of information requirement
that is subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et
seq.). This rule provides procedures for persons desiring to voluntarily
submit complaints to the Office concerning invention promoters so that
the Office is able to: (1) forward the complaint to the invention
promoter for a response; and (2) publish the complaint. An information
collection package supporting this new rule will be submitted to OMB for
review and approval. The public reporting burden for this collection of
information is estimated to average 15 minutes per response, including
the time for reviewing instructions, searching existing data sources,
gathering and maintaining the data needed, and completing and reviewing
the collection of information.
Comments are invited on: (a) whether the collection of information is
necessary for proper performance of the functions of the agency; (b) the
accuracy of the agency's estimate of the burden; (c) ways to enhance the
quality, utility, and clarity of the information to be collected; and
(d) ways to minimize the burden of the collection of information to
respondents.
Interested persons are requested to send comments regarding the burden
estimate or any other aspects of the information requirements, including
suggestions for reducing the burden, to Kevin Baer, Attorney Advisor,
Box 4, Patent and Trademark Office, Washington, D.C. 20231, or 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 PRA, unless that collection of information displays a currently
valid OMB control number.
List of subjects
37 CFR Part 4
Administrative practice and procedure, inventions and patents.
For the reasons set forth in the preamble and pursuant to the authority
contained in 35 U.S.C. 6 and 297, title 37 of the Code of Federal
Regulations is amended by adding part 4 to read as follows.
1. Part 4 is added to read as follows:
Part 4--Complaints Regarding Invention Promoters
Sec.
4.1 Complaints regarding Invention Promoters
4.2 Definitions
4.3 Submitting Complaints
4.4 Invention Promoter Reply
4.5 Notice by Publication
4.6 Attorneys and Agents
Authority: 35 U.S.C. 6 and 297.
4.1 Complaints regarding Invention Promoters
These regulations govern the Patent and Trademark Office's (Office)
responsibilities under the Inventors' Rights Act of 1999, which can be
found in the U.S. Code at 35 U.S.C. 297. The Act requires the Office to
provide a forum for the publication of complaints concerning invention
promoters. The Office will not conduct any independent investigation of
the invention promoter. Although the Act provides additional civil
remedies for persons injured by invention promoters, those remedies must
be pursued by the injured party without the involvement of the Office.
4.2 Definitions
(a) Invention Promoter means any person, firm, partnership, corporation,
or other entity who offers to perform or performs invention promotion
services for, or on behalf of, a customer, and who holds itself out
through advertising in any mass media as providing such services, but
does not include-
(1) any department or agency of the Federal Government or of a State or
local government;
(2) any nonprofit, charitable, scientific, or educational organization
qualified under applicable State law or described under section
170(b)(1)(A) of the Internal Revenue Code of 1986;
(3) any person or entity involved in the evaluation to determine
commercial potential of, or offering to license or sell, a utility
patent or a previously filed nonprovisional utility patent application;
(4) any party participating in a transaction involving the sale of the
stock or assets of a business; or
(5) any party who directly engages in the business of retail sales of
products or the distribution of products.
(b) Customer means any individual who enters into a contract with an
invention promoter for invention promotion services.
(c) Contract for Invention Promotion Services means a contract by which
an invention promoter undertakes invention promotion services for a
customer.
(d) Invention Promotion Services means the procurement or attempted
procurement for a customer of a firm, corporation, or other entity to
develop and market products or services that include the invention of
the customer.
4.3 Submitting Complaints
(a) A person may submit a complaint concerning an invention promoter
with the Office. A person submitting a complaint should understand that
the complaint may be forwarded to the invention promoter and may become
publicly available. The Office will not accept any complaint that
requests that it be kept confidential.
(b) A complaint must be clearly marked, or otherwise identified, as a
complaint under these rules. The complaint must include:
(1) The name and address of the complainant;
(2) The name and address of the invention promoter;
(3) The name of the customer;
(4) The invention promotion services offered or performed by the
invention promoter;
(5) The name of the mass media in which the invention promoter
advertised providing such services;
(6) An explanation of the relationship between the customer and the
invention promoter; and
(7) A signature of the complainant.
(c) The complaint should fairly summarize the action of the invention
promoter about which the person complains. Additionally, the complaint
should include names and addresses of persons believed to be associated
with the invention promoter. Complaints, and any replies, must be
addressed to Office of Independent Inventor Programs, U.S. Patent and
Trademark Office, Washington, D.C. 20231.
(d) Complaints that do not provide the information requested in
paragraphs (b) and (c) of this section will be returned. If
complainant's address is not provided, the complaint will be destroyed.
(e) No originals of documents should be included with the complaint.
(f) A complaint can be withdrawn by the complainant or the named
customer at any time prior to its publication.
4.4 Invention Promoter Reply
(a) If a submission appears to meet the requirements of a complaint, the
invention promoter named in the complaint will be notified of the
complaint and given 30 days to respond.The invention promoter's response
will be made available to the public along with the complaint. If the
invention promoter fails to reply within the 30-day time period set by
the Office, the complaint will be made available to the public. Replies
sent after the complaint is made available to the public will also be
published.
(b) A response must be clearly marked, or otherwise identified, as a
response by an invention promoter. The response must contain:
(1) The name and address of the invention promoter;
(2) A reference to a complaint forwarded to the invention promoter or a
complaint previously published;
(3) The name of the individual signing the response; and
(4) The title or authority of the individual signing the response.
4.5 Notice by Publication
the copy of the complaint that is mailed to the invention promoter is
returned undelivered, then the Office will publish a Notice of Complaint
Received in the Official Gazette, the Federal Register, or on the
Office's INTERNET home page. The invention promoter will be given 30
days from such notice to submit a reply to the complaint. If the Office
does not receive a reply from the invention promoter within 30 days, the
complaint alone will become publicly available.
4.6 Attorneys and Agents
Complaints against registered patent attorneys and agents will not be
treated under this section, unless a complaint fairly demonstrates that
invention promotion services are involved. Persons having complaints
about registered patent attorneys or agents should contact the Office of
Enrollment and Discipline at the U.S. Patent and Trademark Office, Box
OED, Washington, D.C. 20231, and the attorney discipline section of the
attorney's state licensing bar if an attorney is involved.
January 13, 2000 Q. TODD DICKINSON
Assistant Secretary of Commerce
and Commissioner of Patents and Trademarks