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