Patent & Trademark Office Seeks Comments on Changes to Facilitate Applicant's Authorization Access to Unpublished U.S. Patent Applications
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WASHINGTON, July 11 -- The U.S. Patent & Trademark Office published the following proposed rule in the Federal Register:
Changes To Facilitate Applicant's Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices
A Proposed Rule by the Patent and Trademark Office on 07/11/2014
Publication Date: Friday, July 11, 2014
Agencies: Department of Commerce
Patent and Trademark Office
Dates: Written comments must be received on or before September 9, 2014.
Comments Close: 09/09/2014
Entry Type: Proposed Rule
Action: Notice of proposed rulemaking.
Document Citation: 79 FR 40035
Page: 40035 -40040 (6 pages)
CFR: 37 CFR 1
Agency/Docket Number: Docket No.: PTO-P-2014-0012
Document Number: 2014-16062
Shorter URL: https://federalregister.gov/a/2014-16062
Notice Of Proposed Rulemaking.
The electronic sharing of information and documents between intellectual property (IP) offices is critical for increasing the efficiency and quality of patent examination worldwide. Current examples of this sharing include the priority document exchange (PDX) program and the program by which U.S. search results are delivered to the European Patent Office (EPO). In support of electronic file sharing, the United States Patent and Trademark Office (Office) is proposing to amend its rules of practice to include a specific provision by which an applicant can authorize the Office to give a foreign IP office access to all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign intellectual property office. Currently, for unpublished U.S. patent applications, applicants follow one regulatory provision to provide the Office with authorization for a foreign IP office to access an application-as-filed via a PDX program and follow another regulatory provision to provide the Office with authorization to share the file contents with a foreign IP office. The proposed changes to the rules will consolidate the specific provisions of the regulations by which applicants give the Office authority to provide a foreign IP office with access to an application in order to satisfy a requirement for information of the foreign IP office. Additionally, along with changes to the application data sheet (ADS) form, the proposed rule changes will simplify the process for how applicants provide the Office with the required authorization, thereby reducing the resources applicants must expend to comply with these foreign IP office requirements, and enhance the quality of patent examination.
Written comments must be received on or before September 9, 2014.
Comments should be sent by electronic mail message over the Internet addressed to: AC95.email@example.com. Comments also may be submitted by postal mail addressed to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of either Susy Tsang-Foster, Senior Legal Advisor, or Joseph F. Weiss, Jr., Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.
Comments further may be sent by electronic mail message over the Internet via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site (http://www.regulations.gov) for additional instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office prefers to receive comments by electronic mail message over the Internet because sharing comments with the public is more easily accomplished. Electronic comments are preferred to be submitted in plain text, but also may be submitted in ADOBE(TM) portable document format or MICROSOFT WORD(TM) format. Comments not submitted electronically should be submitted on paper in a format that facilitates convenient digital scanning into ADOBE(TM) portable document format.
The comments will be available for public inspection at the Office of the Commissioner for Patents, currently located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also will be available for viewing via the Office's Internet Web site (http://www.uspto.gov). Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.
FOR FURTHER INFORMATION CONTACT:
Susy Tsang-Foster, Senior Legal Advisor ((571) 272-7711), or Joseph F. Weiss, Jr., Senior Legal Advisor ((571) 272-2259), Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.
The electronic sharing of information and documents between IP offices is critical for increasing the efficiency and quality of patent examination worldwide. The electronic sharing of documents between IP offices also benefits applicants by reducing the cost of ordering documents from one IP office and then filing them in another IP office where a counterpart application has been filed.
Due to the confidential nature of unpublished U.S. patent applications, set forth in 35 U.S.C. 122, an applicant must provide the Office with written authority in accordance with 37 CFR 1.14 to grant a foreign IP office access to an unpublished U.S. patent application. With this grant of authority, the Office may electronically provide the U.S. patent application-as-filed or the requested file contents, such as information and documents, from the U.S. patent application to the foreign IP office on behalf of the applicant.
Currently, applicants comply with 37 CFR 1.14(h) when authorizing the Office to give a foreign IP office participating in a bilateral or multilateral priority document exchange agreement access to an unpublished U.S. priority application-as-filed. 37 CFR 1.14(h), however, does not provide a specific provision by which an applicant can authorize the Office to provide a foreign IP office access to an unpublished U.S. patent application's file contents including documents and other information in order to satisfy a requirement for information imposed on a counterpart application from a U.S. applicant by the foreign IP office. As a result, U.S. applicants, unprompted by the rules, must provide written authority for access by a foreign IP office to an unpublished application's contents in accordance with 37 CFR 1.14(c).
The Office is proposing to amend 37 CFR 1.14(h) to include a specific provision by which an applicant can authorize the Office to give a foreign IP office access to all or part of the file contents (as opposed to a copy of the application-as-filed) of an unpublished patent application, including search results, to satisfy a foreign IP office requirement for information on a counterpart application filed by an U.S. applicant. The proposed changes to 37 CFR 1.14(h) would consolidate the provisions by which applicants authorize the Office to give access to an unpublished application-as-filed or its file contents to a foreign IP office, while also clarifying for applicants the provision of 37 CFR 1.14 under which such access authorization can be provided. The proposed rule change will further serve as a reminder of the opportunity for applicants to grant the Office with the authority to provide a foreign IP office with access to file contents of an unpublished U.S. patent application.
Any information concerning an unpublished application or documents from an unpublished application will only be shared in accordance with the authority provided by applicant and in accordance with the terms of any agreement between the Office and respective foreign IP offices. The Office is not proposing any fee for this service. In addition, sharing of information and documents would be limited to those foreign IP offices where applicant has filed a counterpart application and provided written authority to give a foreign IP office access to all or part of the file contents of an unpublished U.S. application.
The proposed changes to 37 CFR 1.14(h) emphasize the Office's continued support of work sharing efforts between IP offices to increase the quality of issued patents, as well as its commitment to assist in reducing the expenditure of resources of its applicants when complying with the requirements of a foreign IP office for a counterpart application.
Revision to Application Data Sheet Form: In addition to the proposed rule changes, the Office is planning to revise the application data sheet (ADS) form, PTO/AIA/14 (ADS form). The revised ADS form would include separate access authorizations for the PDX program and certain work sharing initiatives for which the Office has an agreement with one or more foreign IP offices.
The submission of a properly signed revised ADS form with the appropriate authorization language would be a specific act authorizing access. After a revised ADS form including the authorization language for access by foreign IP office(s) and signed in accordance with 37 CFR 1.14(c) and 1.33(b) has been submitted and placed in the application file, the Office would give the foreign IP office(s) access to the contents in accordance with the specific authorization language upon request of the foreign IP office.
In contrast to the current ADS form, the revised ADS form would include an "opt-out" check box for each access authorization and not an "opt-in" check box. Therefore, when an "opt-out" check box for a specific authorization to access is selected, the Office would not provide access to the contents of the application associated with that check box. The revised ADS form will make it easier for applicants to give the statutorily required authorization for access to specific file contents, as well as afford an applicant the opportunity to inform the Office that the required authority to allow a foreign IP office specific access to an application has not been given. Appropriate authorization language for access in any ADS generated by applicant must mirror the authorization language provided in the Office's revised ADS form. Where an applicant-generated ADS does not include the required authorization language for access by a foreign IP office, the ADS will be interpreted as not providing the authorization necessary to give a foreign IP office access.
The changes to the Office's ADS form should reduce those instances where an applicant inadvertently fails to provide authorization necessary to participate in PDX (by not selecting the opt-in check box for priority document exchange authorization on the current ADS form) and, as a result, must expend resources to obtain and file a copy of a U.S. priority document with a foreign IP office. Similarly, this approach will help eliminate those instances where an applicant inadvertently fails to give the Office authority (by filing form PTO/SB/69) to provide the EPO with the search results from an unpublished U.S. priority application and, as a consequence, must expend resources to file the results with the EPO.
The Office will not deliver an unpublished priority document, file contents of an unpublished application, including information about an unpublished application, to a foreign IP office, even where a counterpart application has been filed, if applicant does not provide proper written authority for access. As discussed above, the revised ADS form would need to be executed in accordance with 37 CFR 1.33(b), and if there is written authority for any access by a foreign IP office, the revised ADS form also must be executed in accordance with 37 CFR 1.14(c). Applicants should be aware of the differences in signature requirements under 37 CFR 1.33(b) and under 37 CFR 1.14(c). For example, under 37 CFR 1.33(b) in applications filed on or after September 16, 2012, the following individuals can sign:
A patent practitioner of record;
A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or
The applicant under 37 CFR 1.42. Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
By contrast, under 37 CFR 1.14(c) in applications filed on or after September 16, 2012, the following individuals can sign:
A patent practitioner of record;
The assignee or an assignee of an undivided part interest;
The inventor or a joint inventor; or
A registered attorney or agent named in the papers accompanying the application papers filed under 37 CFR 1.53 or the national stage under 37 CFR 1.495, if a power of attorney has not been appointed under 37 CFR 1.32.
Where forms PTO/SB/39 for PDX authorization and PTO/SB/69 for search results authorization are used instead of the revised ADS form, these forms must still be executed in accordance with 37 CFR 1.14(c) even though written authority is provided for under proposed 37 CFR 1.14(h). If the revised ADS form is not signed in accordance with the relevant rules, then applicant has not provided written authority for access by a foreign IP office to an application.
The transaction of sharing documents and information from a U.S. application with a foreign IP office has several built in safeguards to ensure that only authorized sharing occurs. For example, in order for a foreign IP office to receive information about a U.S. application, the Office requires that the foreign IP office expressly identify the U.S. application serial number, along with other elements of bibliographic data for each U.S. application in its request, to ensure that only the correct U.S. application's information will be given to the foreign IP office. Once the application is properly identified, the Office will then determine whether the requisite authorization for access exists in the U.S. application. The Office will only share information or other file content from a U.S. application with a foreign IP office when both the correct application is identified and the existence of proper authorization is confirmed. If an unpublished application, which has not been foreign filed, includes an unintended access authorization pursuant to proposed 37 CFR 1.14(h), a foreign IP office would not obtain access because it would not have the information necessary to request access to that specific U.S. application. Further, the U.S. application's filing receipt will indicate whether applicant has provided written authority for access pursuant to proposed 37 CFR 1.14(h). Applicants should inspect the application filing receipt and request a corrected filing receipt if authorization for access under proposed 37 CFR 1.14(h) was incorrectly captured from the revised ADS form or applicant-generated ADS. If authorization for access was inadvertently given, a request for rescission of the authorization can be made, and the Office should be informed of such rescission as early as possible so the Office has time to recognize the request for rescission and act upon it.
To avoid inconsistent means of authorization for access and to avoid duplicative processing, the Office also is considering removal of the opt-in check box and associated authorization language for the PDX program from the inventor's oath or declaration form (PTO/SB/01 for applications filed before September 16, 2012 and PTO/AIA/08 for applications filed on or after September 16, 2012). Form PTO/SB/39 for the priority document exchange authorization and Form PTO/SB/69 for the search results authorization will remain available for applicants that do not use an ADS form or have selected the check boxes for opting out of specific authorizations for access by a foreign IP office on the revised ADS form, but later decide to give a foreign IP office access to the application.
Discussion of Specific Rules: The following is a discussion of the amendments to title 37 of the Code of Federal Regulations, part 1, which are being proposed in this document.
Section 1.14: Section 1.14(h)(1) is proposed to retain the first sentence of current section 1.14(h)(1) and include the provisions from current section 1.14(h)(3). Proposed section 1.14(h)(1) also would be amended to include that the date of filing of the written authority for priority document exchange may be provided to the respective participating foreign IP office, which codifies the practice set forth in the Official Gazette of the United States Patent and Trademark Office (1328 OG 90 (March 11, 2008)). In proposed section 1.14(h)(1), the text added from current section 1.14(h)(3) has been amended to delete the language "indicated in the written authority." This deleted language is not necessary as written authority for access under current section 1.14(h) and proposed section 1.14(h) will result in access being granted to all PDX and WIPO Digital Access Service (DAS) participating foreign IP offices in which a subsequently filed application claims benefit of the earlier filed U.S. application. Within the WIPO DAS system, however, there is an option where an applicant may decide which WIPO DAS foreign IP office(s) are granted or not granted access.
Proposed section 1.14(h)(1)(i) and (ii) also are amended to include the term "bibliographic data" to reflect that "bibliographic data" is used to ensure the correct application-as-filed is being provided to the participating foreign IP office requesting access in any access to the application-as-filed transaction. The term bibliographic data as used in proposed section 1.14(h)(1) covers certain bibliographic data set forth in WIPO standard ST.9 for bibliographic data. The bibliographic data used to confirm that the correct application-as-filed is being provided may include the patent document identification, filing data, priority data, publication data, data concerning technical information such as patent classification (international or domestic), and title of the invention.
Proposed section 1.14(h)(2) would permit an applicant to authorize the Office to grant a foreign IP office access to the file contents of an application where a counterpart application has been filed with a foreign IP office and the counterpart application is subject to a requirement for information from the application filed with the Office. The Office would only provide access to the relevant portion or portions of an unpublished U.S. application's file contents necessary to satisfy any requirement for information by the foreign IP office, triggered by the U.S. applicant filing a counterpart application with the foreign IP office. The Office and the foreign IP office would need to have a bilateral or multilateral agreement that provides for the secure transmission and receipt of any shared information. Proposed section 1.14(h)(2)(i) includes the term "bibliographic data" to reflect that "bibliographic data" is used to ensure the information is from the correct application for which access has been requested by the foreign IP office in any access to the application. The term bibliographic data as used in section 1.14(h)(2) includes the same types of bibliographic data set discussed above with respect to section 1.14(h)(1).
Current section 1.14(h)(2) has been moved to proposed section 1.14(h)(3).
Section 1.14(h)(3) as proposed indicates that written authority provided under proposed sections 1.14(h)(1) and (h)(2) should be submitted before the filing of any subsequent foreign application in which priority is claimed to the application. Section 1.14(h)(3) as proposed also indicates that the written authority under sections 1.14(h)(1) and (2) must include the title of the invention (section 1.72(a)), comply with the requirements of section 1.14(c), and must be submitted on an application data sheet (section 1.76) or on a separate document (section 1.4(c)).
Section 1.19: Section 1.19(b)(1)(iv) is proposed to be amended to indicate there is no fee for providing a foreign IP office with a copy of either an application-as-filed or patent related file wrapper and contents pursuant to a bilateral or multilateral agreement (see section 1.14(h)).
[*Federal RegisterVJ 2014-07-11]
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