[Federal Register: December 1, 1998 (Volume 63, Number 230)] [Rules and Regulations] [Page 66040-66041] From the Federal Register Online via GPO Access [wais.access.gpo.gov] [DOCID:fr01de98-11] ======================================================================= ----------------------------------------------------------------------- DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Part 1 [Docket No.: 980511124-8284-02] Revision of Patent Cooperation Treaty Application Procedure AGENCY: Patent and Trademark Office, Commerce. ACTION: Final rule. ----------------------------------------------------------------------- SUMMARY: The Patent and Trademark Office (Office or USPTO) is confirming the amendment of its rules of practice relating to applications filed under the Patent Cooperation Treaty (PCT). This amendment of the rules of practice conformed the United States rules of practice with the corresponding changes to the Regulations under the PCT which became effective July 1, 1998. DATES: This final rule is effective on December 1, 1998. The interim rule, published at 63 FR 29614 (June 1, 1998), was effective on July 1, 1998. FOR FURTHER INFORMATION CONTACT: Richard Lazarus, PCT Legal Office Supervisor, by telephone at (703) 308-6451; or by mail addressed to: Box PCT, Assistant Commissioner for Patents, Washington, DC 20231; or by facsimile to (703) 308-6459, marked to the attention of Richard Lazarus. SUPPLEMENTARY INFORMATION: During a September-October 1997 meeting of the Governing Bodies of the World Intellectual Property Organization (WIPO), the PCT Assembly adopted amendments to the PCT Regulations. These amendments to the PCT Regulations took effect on July 1, 1998, and the amended PCT Regulations were published in the Official Gazette at 1210 Off. Gaz. Pat. Office 29 (May 12, 1998). An interim rule conforming the United States rules of practice to the corresponding changes in the PCT Regulations was published in the Federal Register at 63 FR 29614 (June 1, 1998), and in the Official Gazette at 1211 Off. Gaz. Pat. Office 76 (June 23, 1998). The Office has received no comments on the changes to 37 CFR contained in the interim rule. Accordingly, the changes to 37 CFR contained in the [[Page 66041]] above-mentioned interim rule are adopted as final in this final rule. Applicants are again notified that PCT Rules 20.4(c) and 26.3ter (a) and (c) as amended are not compatible with the national law of the United States, and thus the USPTO has taken a reservation on adherence to these Rules through its notification to the Director General of WIPO to such effect. See PCT Rules 20.4(d) and 26.3ter (b) and (d). Similarly, the USPTO continues not to adhere to the unchanged provisions of PCT Rule 49.5(cbis) and (k) with respect to the translation requirements for United States national stage applications (35 U.S.C. 371(c)(2)). See PCT Rule 49.5(l). The above-noted changes to the PCT Regulations include the addition of new PCT Rules 89bis and 89ter (directed to electronic filing and processing of international applications) which will enter into force at the same time as the modifications to the Administrative Instructions implementing those PCT Rules. Implementation of PCT Rules 89bis and 89ter is optional with each national office. In the event that the USPTO decides to implement PCT Rules 89bis and 89ter, the USPTO will provide notice to that effect in the Federal Register and Official Gazette. Discussion of Specific Rules A section-by-section discussion of the changes to title 37 of the Code of Federal Regulations adopted as final in this final rule is set forth in the above-mentioned interim rule at 63 FR 29614-17, and 1211 Off. Gaz. Pat. Office 77-78. Other Considerations The United States rules of practice contained in title 37, CFR, must conform to the PCT Articles and the Regulations annexed to the PCT. See PCT Article 27(1). This final rule adopts as final changes required to conform the United States rules of practice for international applications to the amendments to the PCT Regulations which became effective on July 1, 1998. Thus, this final rule is covered by the foreign affairs function exception of 5 U.S.C. 553(a)(1), and may be adopted without prior notice and opportunity for public comment. See International Brotherhood of Teamsters v. Pena, 17 F.3d 1478, 1486 (D.C. Cir. 1994). As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553, or any other law, the analytical requirements of the Regulatory Flexibility Act, 5 U.S.C. 601 et seq., are inapplicable. This final rule does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 12612 (October 26, 1987). This final rule has been determined not to be significant for purposes of Executive Order 12866 (September 30, 1993). This final rule contains 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 principal impact of this final rule is to adopt as final changes that conform the United States rules of practice relating to applications filed under the PCT to the corresponding amendments made to the Regulations under the PCT. The general purpose of the PCT is to provide a single set of standards and procedures for the filing of patent applications on the same invention in any of the over ninety PCT member countries. The PCT provides a common filing procedure and a standardized application format for international applications. The collection of information in this final rule has been reviewed and approved by OMB under control number 0651-0021. The public reporting burden for this collection of information is estimated to average 0.95 hours per response, including the time for reviewing instructions, searching existing data sources, gathering and maintaining the information. Send comments regarding this burden estimate or any other aspect of the data requirement, including suggestions for reducing the burden to Richard Lazarus at the address specified above and 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 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 recordkeeping requirements, Small businesses. For the reasons set forth in the preamble, the interim rule amending 37 CFR Part 1 which was published at 63 FR 29614-29620 on June 1, 1998, is adopted as a final rule without change. Dated: November 23, 1998. Q. Todd Dickinson, Deputy Assistant Secretary of Commerce and Deputy Commissioner of Patents and Trademarks. [FR Doc. 98-31952 Filed 11-30-98; 8:45 am] BILLING CODE 3510-16-P