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Rule

Timing of National Stage Commencement in the United States for Patent Cooperation Treaty Applications

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Information about this document as published in the Federal Register.

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AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Temporary rule.

SUMMARY:

The United States Patent and Trademark Office (Office) is amending the regulations to include the current statutory provisions that define when national stage commencement occurs in an application filed under the Patent Cooperation Treaty (PCT). The Office is making this change due to a possible change in the patent statute to provide that the time period for commencement of the national stage that is currently set forth by statute will be set forth in the regulations.

DATES:

Effective Date: August 30, 2001 through June 3, 2002.

Applicability Date: The change to 37 CFR 1.491 applies to any international application pending before, on, or after August 30, 2001.

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FOR FURTHER INFORMATION CONTACT:

Charles A. Pearson, Director, Office of PCT Legal Administration, by telephone at (703) 306-4145, or Boris Milef, Legal Examiner, Office of PCT Legal Administration, by telephone at (703) 308-3659, or by mail addressed to: Box PCT—Patents, Commissioner for Patents, Washington, DC 20231, or by facsimile to (703) 308-6459, marked to the attention of Boris Milef.

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SUPPLEMENTARY INFORMATION:

35 U.S.C. 371(b) currently sets forth the time period for commencement of the national stage in an application filed under the PCT. Due to a possible statutory revision of 35 U.S.C. 371(b) to provide that the time period for commencement of the national stage will be set forth in the regulations, the Office is amending 37 CFR 1.491 (§ 1.491) such that the regulations set forth the current language of 35 U.S.C. 371(b) (as amended by Pub. L. 99-616, section 7(b), 100 Stat. 3485, 3485 (1986)) that defines when national stage commencement occurs. Certain U.S. statutes and regulations provide for requirements that are tied to the date of national stage “commencement” (e.g., the date of national stage Start Printed Page 45776commencement is relevant to the due date for the national fee, an oath or declaration, and any required translation of the international application or amendments under PCT Article 19 (35 U.S.C. 371(d)), and in determining whether patentees are entitled to a patent term adjustment pursuant to 35 U.S.C. 154(b)(1)(B) (37 CFR 1.702(b)). Therefore, it is important that the regulations provide for a date of commencement of the national stage as to the United States in advance of any statutory revision to 35 U.S.C. 371(b).

The Office will publish in the near future a notice proposing changes to the time period for claiming the benefit of a prior-filed application in an application filed under the PCT, and making other technical corrections to the rules of practice related to eighteen-month publication. The Office is also including the change to § 1.491 in this temporary rule in the notice of proposed rulemaking to be published in the near future. Comments on this change to § 1.491 may be submitted in response to that notice of proposed rulemaking, and the Office will take such comments into consideration before publishing a final rule resulting from the notice of proposed rulemaking.

Discussion of Specific Rules

Title 37 of the Code of Federal Regulations, Part 1, is amended as follows:

Section 1.491: Section 1.491 is amended to define both commencement of the national stage and entry into the national stage. Because these two events (commencement of the national stage and entry into the national stage) may not take place at the same time, the Office is amending § 1.491 to clarify when each of these two events takes place. Section 1.491(a) specifically indicates that, subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a). Thus, § 1.491(a) merely incorporates the statutory language contained in 35 U.S.C. 371(b) (as amended by Pub. L. 99-616, section 7(b), 100 Stat. 3485, 3485 (1986)). Section 1.491(b) contains the provisions of former § 1.491, and provides that an international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the period set in § 1.494 or § 1.495.

Classification

Administrative Procedure Act

This temporary rule simply amends § 1.491 to include the current provisions in 35 U.S.C. 371(b) that define when national stage commencement occurs in an application filed under the PCT. This amendment to § 1.491 does not change the current time limits for entering the national phase in the United States and does not alter any applicant's substantive rights. In addition, this amendment to § 1.491 is of an exigent nature because there is an impending change to 35 U.S.C. 371(b) that if enacted before the Office amends § 1.491 would result in a period of time during which the timing of national stage commencement in an application filed under the PCT would be undefined. Therefore, prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553(b)(A) (or any other law), and thirty-day advance publication is not required pursuant to 5 U.S.C. 553(d) (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 (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 rulemaking does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

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

Paperwork Reduction Act

This temporary rule involves information collection requirements that 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 temporary rule has been reviewed and previously approved by OMB under the control number 0651-0021. The Office is not resubmitting an information collection package to OMB for its review and approval because the changes in this temporary rule do not affect the information collection requirements associated with the information collection under OMB control number 0651-0021.

The title, description and respondent description of the 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.

OMB Number: 0651-0021.

Title: Patent Cooperation Treaty.

Form Numbers: PCT/RO/101, ANNEX/134/144, PTO-1382, PCT/IPEA/401, PCT/IB/328.

Type of Review: Approved through December of 2003.

Affected Public: Individuals or Households, Business or Other For-Profit Institutions, Federal Agencies or Employees, Not-for-Profit Institutions, Small Businesses or Organizations.

Estimated Number of Respondents: 331,288.

Estimated Time Per Response: Between 15 minutes and 4 hours.

Estimated Total Annual Burden Hours: 401,083.

Needs and Uses: The information collected is required by the Patent Cooperation Treaty (PCT). The general purpose of the PCT is to simplify the filing of patent applications on the same invention in different countries. It provides for a centralized filing procedure and a standardized application format.

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 of OMB, New Executive Office Building, 725 17th Street, NW., Room 10235, Washington, DC 20503, Attention: 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.

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List of Subjects in 37 CFR Part 1

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For the reasons set forth in the preamble,

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PART 1—RULES OF PRACTICE IN PATENT CASES

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1. The authority citation for

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Authority: 35 U.S.C. 2(b)(2).

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2. Section 1.491 is revised to read as follows:

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National stage commencement and entry.

(a) Subject to 35 U.S.C. 371(f), the national stage shall commence with the expiration of the applicable time limit under PCT Article 22(1) or (2), or under PCT Article 39(1)(a).

(b) An international application enters the national stage when the applicant has filed the documents and fees required by 35 U.S.C. 371(c) within the period set in § 1.494 or § 1.495.

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Dated: August 24, 2001.

Nicholas P. Godici,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.

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[FR Doc. 01-21879 Filed 8-29-01; 8:45 am]

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