DEPARTMENT OF COMMERCE

                   United States Patent and Trademark Office

                                 37 CFR Part 1

                                 RIN 0651-AB19

             Treatment of Unlocatable Application and Patent Files

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

SUMMARY: The United States Patent and Trademark Office is proposing to
amend the rules of practice to provide for the replacement of
application and patent files that cannot be located after a reasonable
search. This change is designed to expedite the process of application
and patent file reconstruction to minimize the processing or examination
delays resulting when the Office cannot locate an application or patent
file after a reasonable search.

DATES: Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before August 9, 2000. No public hearing
will be held.

ADDRESSES:  Comments   should   be   sent   by   electronic   mail
message   over   the   Internet   addressed   to:
reconstruct.comments@uspto.gov. Comments may also be submitted by mail
addressed to: Box Comments-Patents, Commissioner for Patents,
Washington, DC 20231; or by facsimile to (703) 872-9411, marked to the
attention of Robert W. Bahr. Although comments may be submitted by mail
or facsimile, the Office prefers to receive comments via the Internet.
If comments are submitted by mail, the Office would prefer that the
comments be submitted on a DOS formatted 3 1/2 inch disk accompanied by
a paper copy.
   The comments will be available for public inspection at the Office of
Patent Legal Administration in the Office of the Deputy Commissioner for
Patent Examination Policy, Room 3-C23 of Crystal Plaza 4, 2201 South
Clark Place, Arlington, Virginia, and will be available through
anonymous file transfer protocol (ftp) via the Internet (address:
http://www.uspto.gov). Since comments will be made available for public
inspection, information that is not desired to be made public, such as
an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr by telephone at (703)
308-6906, or by mail addressed to: Box Comments-Patents, Commissioner
for Patents, Washington, DC 20231, or by facsimile to (703) 872-9411,
marked to the attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: Over 330,000 patent applications (provisional
and nonprovisional) were filed in the United States Patent and Trademark
Office (Office) in fiscal year 1999. On occasion, an application or
patent file cannot be located.
   When an application or patent file cannot be located after a
reasonable search and the application or patent file is necessary to
conduct business before the Office, the Office will ``reconstruct'' the
application or patent file. This involves placing a duplicate of the
original application papers and duplicates of all of the correspondence
between the Office and applicant or patentee in a new file wrapper. The
Office currently (since the spring of 1997) uses its Patent Application
Capture and Review (PACR) system to image scan the application papers
submitted on the filing date of the application (except for any appendix
or information disclosure statement) and to create an electronic
database (PACR database) containing the Office's archival record of the
original application papers (application papers were microfilmed prior
to the spring of 1997). Thus, the Office can obtain a copy of the
original application papers from its archival PACR database (or
microfilm records). The Office, however, does not possess a duplicate
copy of subsequent correspondence from the applicant or patentee (e.g.,
applicant replies or other papers) concerning the application or patent.
While the Office may have a copy of some Office correspondence (Office
actions saved on a disc or computer hard drive), the Office often does
not possess a complete copy of the Office correspondence concerning the
application or patent (e.g., paper-based forms or notices). Thus, to
accurately reconstruct a file, the Office must request that the
applicant or patentee either provide a complete copy of his or her
record of the correspondence between the Office and the applicant or
patentee, or produce his or her record of the correspondence between the
Office and the applicant or patentee for the Office to copy.
   In a pending application, the request that applicant provide a copy
of (or produce) his or her record of the correspondence between the
Office and the applicant does not, under current practice, require a
reply within any set time period. This adds to the delay in processing
and examination resulting from the inability to locate the application.
To expedite the process of reconstructing the file of an application or
patent file, the Office is proposing to amend the rules of practice to
provide that the Office will now set a time period within which
applicant or patentee must either provide a complete copy of his or her
record of the correspondence between the Office and the applicant or
patentee, or produce his or her record of the correspondence between the
Office and the applicant or patentee for the Office to copy. Since it is
axiomatic that the Office cannot continue to examine an application that
it does not have a complete copy of, the failure to timely provide a
copy of (or produce) his or her record of the correspondence between the
Office and the applicant in a pending application will result in
abandonment of the application.
   Corresponding with an applicant or patentee in an abandoned
application or patent is often difficult because address information is
often not kept up-to-date in abandoned applications and patents. There
are many good reasons for keeping correspondence information up-to-date
in an abandoned application or patent. Some examples follow: Patent
applicants and patent owners should keep the correspondence address and
any fee address for the patent up-to-date to ensure that correspondence
is mailed to applicant's or patentee's current address. In an abandoned
application, the Office may attempt to communicate with applicant
regarding a petition for access. If the address has not been updated,
then the Office may not be able to consider applicant's views in
deciding whether to release the application to a member of the public.
The Customer Number Practice described in section 403 of the Manual of
Patent Examining Procedure (7th ed. 1998) (Rev. 1, Feb. 2000)(MPEP)
provides a procedure where a patent applicant or owner can easily change
the correspondence address for a number of patents or patent
applications. In addition, the ``Fee Address'' Indication Form (PTO/SB/
47) (reproduced at MPEP 2595) enables a patent owner to complete one
form to designate a single fee address for any number of patents or
applications in which the issue fee has been paid.
   When changing the address(es) associated with a patent, the patent
owner should bear in mind that the Office has a number of addresses
related to the patent: (1) An application correspondence address; (2)
the return address for the assignment documents; and (3) the fee address
for maintenance fee purposes. See MPEP 2540. The correspondence address
is generally the address to which the patent application prosecution was
sent and is often not up-to-date within a few years of patent issuance.
As a result, the regulations related to reexamination proceedings
require that a patent owner be served with a copy of a Reexamination
Request at the Office of Enrollment and Discipline address for the
attorney or agent of record, if there is an attorney or agent of record.
See MPEP 2220. If there is no attorney or agent of record, the copy is
required to be served upon the patent owner. See Sec. 1.33(c). In the
procedure to obtain a copy of a patent file set forth in this notice,
the request will be directed to the correspondence address.
   The Office is planning for full electronic submission of applications
and related documents by fiscal year 2003. Once the Office is able to
transition to a total Electronic File Wrapper environment, the inability
to locate a paper application file (and the consequent need for the
Office to obtain a copy of applicant's or patentee's record of the
correspondence between the Office and the applicant or patentee) should
no longer be a significant issue. However, this rule change is necessary
to provide for the replacement of unlocatable application and patent
files until the Office has completely transitioned to a total Electronic
File Wrapper environment.

Discussion of Specific Rules

   Title 37 of the Code of Federal Regulations, Part 1 is proposed to be
amended as follows:
   Section 1.251 is proposed to be added to set forth a procedure for
the reconstruction of the file of a patent application, patent, or other
patent-related proceeding that cannot be located after a reasonable
search.
   Section 1.251(a) provides that in the event the Office cannot locate
the file of an application, patent, or other patent-related proceeding
after a reasonable search, the Office will notify the applicant or
patentee and set a time period within which the applicant or patentee
must comply with Sec. 1.251(b). The phrase ``an application'' applies to
any type of application (national or international), and regardless of
the status (pending or abandoned) of the application.
   Section 1.251(b) provides that if an applicant or patentee has been
given notice under Sec. 1.251(a) that the Office cannot locate the file
of a patent, application, or other patent-related proceeding after a
reasonable search, applicant or patentee must do one of the following
within the time period set in the notice: (1) Provide a copy of his or
her record of all of the correspondence between the Office and the
applicant or patentee for such application, patent, or other proceeding,
a list of such correspondence, and a statement that the copy is a
complete and accurate copy of the correspondence between the Office and
the applicant or patentee for such application, patent, or other
proceeding; or (2) produce his or her record of all of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding for the Office to copy, and
provide a statement that the papers are a complete and accurate record
of the correspondence between the Office and the applicant or patentee
for such application, patent, or other proceeding. Any appendix or
information disclosure statement submitted with an application is not
contained in the Office's archival PACR database; therefore, the
applicant or patentee must also provide a copy of any appendix or
information disclosure statement submitted with the application.
   Section 1.251(b) also provides for the situation in which an
applicant or patentee does not possess a complete copy of the
correspondence between the Office and the applicant or patentee. In such
a situation, the applicant or patentee must provide: (1) A copy of his
or her record (if any) of the correspondence between the Office and the
applicant or patentee for such application, patent, or other proceeding;
(2) a list of such correspondence; and (3) a statement that applicant or
patentee does not possess a complete copy of the correspondence between
the Office and the applicant or patentee for such application, patent,
or other proceeding and that the copy is a complete and accurate copy of
his or her record of the correspondence between the Office and the
applicant or patentee for such application, patent, or other proceeding.
   Thus, if the applicant or patentee possesses some (but not all) of
the correspondence between the Office and the applicant or patentee for
such application, patent, or other proceeding, the applicant or patentee
is to reply by providing a copy of all the correspondence contained in
applicant's or patentee's records. If applicant or patentee does not
possess any record of the correspondence between the Office and the
applicant or patentee for such application, patent, or other proceeding,
the applicant or patentee is to reply with a statement to that effect.
   Section 1.251(c) provides that with regard to a pending application,
the failure to provide a timely reply to such a notice will result in
abandonment of the application.

Classification

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 notice does not contain policies with federalism implications
sufficient to warrant preparation of a Federalism Assessment under
Executive Order 13132 (August 4, 1999).

Executive Order 12866

   This notice has been determined to be not significant for purposes of
Executive Order 12866 (September 30, 1993).

Paperwork Reduction Act

   This notice involves 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 collection
of information involved in this notice has been submitted for approval
by OMB under control number 0651-0031. The United States Patent and
Trademark Office is resubmitting this information collection package to
OMB for its review and approval because the changes in this notice
affect the information collection requirements associated with that
information collection package.
   The title, description, and respondent description of this
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. The principal impact of the
changes in this notice is to set forth the procedures for obtaining a
copy of applicant's or patentee's record of the correspondence between
the Office and the applicant or patentee for an application, patent, or
other proceeding when necessary to reconstruct the file of such
application, patent, or other proceeding.
   OMB Number: 0651-0031.
   Title: Patent Processing (Updating).
   Form Numbers: PTO/SB/08/21-27/31/42/43/61/62/63/64/67/68/91/92/96/ 97.
   Type of Review: Approved through October of 2002.
   Affected Public: Individuals or Households, business or other for-
profit institutions, not-for-profit institutions and Federal Government.
   Estimated Number of Respondents: 2,231,365.
   Estimated Time Per Response: 0.46 hours.
   Estimated Total Annual Burden Hours: 1,018,736 hours.
   Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosure Statements; Terminal Disclaimers; Petitions to Revive;
Express Abandonments; Appeal Notices; Petitions for Access; Powers to
Inspect; Certificates of Mailing or Transmission; Statements under Sec.
3.73(b); Amendments, Petitions and their Transmittal Letters; and
Deposit Account Order Forms.
   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, OMB, 725 17th Street,
N.W., Washington, D.C. 20503 (Attn: 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 proposed to
be 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 1.251 is added immediately following Sec. 1.248 to read as
follows:

Sec. 1.251 Unlocatable file.

   (a) In the event that the Office cannot locate the file of an
application, patent, or other patent-related proceeding after a
reasonable search, the Office will notify the applicant or patentee and
set a time period within which the applicant or patentee must comply
with one of paragraphs (b)(1), (b)(2), or (b)(3) of this section.
   (b) If an applicant or patentee has been given notice under paragraph
(a) of this section that the Office cannot locate the file of a patent,
application, or other patent-related proceeding after a reasonable
search, applicant or patentee must do one of the following within the
time period set in the notice:
   (1) Provide a copy of the applicant's or patentee's record of all of
the correspondence between the Office and the applicant or patentee for
such application, patent, or other proceeding, a list of such
correspondence, and a statement that the copy is a complete and accurate
copy of the correspondence between the Office and the applicant or
patentee for such application, patent, or other proceeding;
   (2) Produce the applicant's or patentee's record of all of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding for the Office to copy, and
provide a statement that the copy is a complete and accurate copy of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding; or
   (3) If applicant or patentee does not possess a complete copy of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding, provide a copy of the
applicant's or patentee's record (if any) of the correspondence between
the Office and the applicant or patentee for such application, patent,
or other proceeding, a list of such correspondence, and a statement that
applicant or patentee does not possess a complete copy of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding and that the copy provided is a
complete and accurate copy of applicant's or patentee's record of the
correspondence between the Office and the applicant or patentee for such
application, patent, or other proceeding.
   (c) With regard to a pending application, failure to timely comply
with one of paragraphs (b)(1), (b)(2), or (b)(3) of this section will
result in abandonment of the application.

June 30, 2000                                             Q. TODD DICKINSON
                                            Under Secretary of Commerce for
                                  Intellectual Property and Director of the
                                  United States Patent and Trademark Office