You are on page 1of 11

Federal Register / Vol. 70, No.

185 / Monday, September 26, 2005 / Rules and Regulations 56119

instrumentalities of the U.S. New Orleans, Louisiana, has been application claims the benefit of the
Government. closed since Hurricane Katrina and the filing date of a non-English provisional
(d) Assignments. Any producer flooding that followed that disaster. application, a translation of the
entitled to any payment under this part Moreover, many of the lessees and provisional application and a statement
may assign any payments in accordance operators subject to the rule are that the translation was accurate
with the provisions of 7 CFR part 1404. similarly engaged in the restoration of required by 37 CFR 1.78(a)(5)(iv) will
normal operations following Hurricane not be required to be filed in the
§ 1430.315 Termination of program.
Katrina. Lessees and operators will be provisional application, if the
This program ends after payment has making changes in their own procedures translation and statement were filed in
been made to those applicants certified to comply with the rule. Lessees and the nonprovisional application before
as eligible pursuant to the application operators whose operations have been November 25, 2005.
period established in § 1430.304. All interrupted as a result of the hurricane FOR FURTHER INFORMATION CONTACT:
eligibility determinations shall be final may not be able to make these changes Karin Ferriter (571–272–7744), Senior
except as otherwise determined by the until normal operations resume. Legal Advisor, Office of Patent Legal
Deputy Administrator. Accordingly, the Department of the Administration, Office of the Deputy
Signed at Washington, DC, on September Interior is postponing the effective date Commissioner for Patent Examination
13, 2005. of the final rule until January 1, 2006. Policy, or Robert J. Spar (571–272–
James R. Little, Dated: September 20, 2005. 7700), Director of the Office of Patent
Executive Vice President, Commodity Credit Rebecca W. Watson, Legal Administration, Office of the
Corporation. Deputy Commissioner for Patent
Assistant Secretary—Land and Minerals
[FR Doc. 05–19127 Filed 9–23–05; 8:45 am] Management. Examination Policy, directly by phone,
BILLING CODE 3410–05–P
[FR Doc. 05–19223 Filed 9–23–05; 8:45 am] or by facsimile to 571–273–7744, or by
BILLING CODE 4310–MR–P
mail addressed to: Mail Stop
Comments—Patents, Commissioner for
DEPARTMENT OF THE INTERIOR Patents, P.O. Box 1450, Alexandria, VA
22313–1450.
Minerals Management Service DEPARTMENT OF COMMERCE
SUPPLEMENTARY INFORMATION: This final
Patent and Trademark Office rule revises the rules of practice in title
30 CFR Parts 250 and 256 37 of the Code of Federal Regulations
RIN 1010–AD16 37 CFR Parts 1, 2, 3, 5, and 10 (CFR) pertaining to records related to
signature, availability of patent
Oil, Gas, and Sulphur Operations and [Docket No.: 2005–P–053] application files, power of attorney,
Leasing in the Outer Continental Shelf RIN 0651–AB85 provisional applications, and
(OCS)—Cost Recovery assignments.
AGENCY: Minerals Management Service Provisions for Claiming the Benefit of Discussion of Specific Rules
(MMS), Interior. a Provisional Application With a Non-
English Specification and Other Section 1.4: Section 1.4(d)(2) is
ACTION: Final rule; delay of effective amended to delete ‘‘with a signature in
Miscellaneous Matters
date. permanent dark ink or its equivalent,’’
AGENCY: United States Patent and because dark ink applies to handwritten
SUMMARY: MMS is delaying until
Trademark Office, Commerce. signatures, not S-signatures. Section
January 1, 2006, the effective date of a
rule that will implement fees to offset ACTION: Final rule. 1.4(d)(2)(ii) is amended to move the
MMS’s costs of providing certain word ‘‘only’’ in the second sentence
SUMMARY: The United States Patent and thereof from immediately preceding the
services related to its mineral programs. Trademark Office (Office) is amending
This delay is necessary because of word ‘‘be’’ to immediately following the
the rules of practice to require that: A word ‘‘used’’ and to change ‘‘registered
damage caused in the New Orleans area copy of the English translation of a
by Hurricane Katrina and subsequent practitioner’’ to ‘‘patent practitioner
foreign-language provisional application (§ 1.32(a)(1)).’’ The term ‘‘patent
flooding. The delay will provide relief be filed in the provisional application if
to the government and the oil and gas practitioner’’ is defined in § 1.32(a).
a nonprovisional application claims the Section 1.11: Section 1.11(a) is
industry as they recover from this benefit of the provisional application; a
disaster. amended for clarity and to reflect the
copy of documentary evidence policy regarding availability to the
DATES: The effective date of the rule supporting a claim of ownership be public of papers in the files of
amending 30 CFR Parts 250 and 256 recorded in the Office’s assignment applications that have been published.
published at 70 FR 49871, August 25, records when an assignee takes action in For example, § 1.11(a) is amended to
2005 is delayed until January 1, 2006. a patent matter; and separate copies of remove ‘‘abandoned’’ before ‘‘published
FOR FURTHER INFORMATION CONTACT: a document be submitted to the Office application.’’ Published applications are
Angela Mazzullo, Offshore Minerals for recording in the Office’s assignment not physically available to the public to
Management (OMM) Budget Office at records, each accompanied by a cover copy and inspect if the file is
(703) 787–1691. sheet, if the document to be recorded maintained in a paper file wrapper. If a
SUPPLEMENTARY INFORMATION: The rule includes an interest in, or a transaction published application is not maintained
published August 25, 2005, requires involving, both patents and trademarks. in paper, but is instead maintained in
MMS to develop additional procedures DATES: Effective November 25, 2005. the image file wrapper (IFW) system, the
that MMS will provide to the oil and gas Applicability Date: The changes apply application is made available for public
industry in the form of a Notice to to any paper, application or inspection through the Patent
Lessees. The primary office responsible reexamination proceeding filed in the Application Information Retrieval
for developing those procedures, the Office on or after November 25, 2005. (PAIR) system pursuant to
MMS Gulf of Mexico Regional Office in Further, if a nonprovisional patent § 1.14(a)(1)(iii) and 1.14(b). Since most

VerDate Aug<31>2005 14:11 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00015 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
56120 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations

pending applications have become Section 1.32(a)(1) is renumbered as person that the Office will recognize as
available through PAIR, the reference to § 1.32(a)(2) and further revised to being of record will be the person
only abandoned published applications change ‘‘registered patent attorneys or associated with the registration number
in § 1.11 may have been misleading. In registered patent agents’’ to ‘‘one or provided, because the Office enters the
addition, § 1.11(a) is amended to more patent practitioners or joint registration number, not the name,
include: ‘‘If an application was inventors’’ to reflect that one or more when making the practitioner of record.
published in redacted form pursuant to patent practitioner(s) may be appointed Accordingly, if the wrong registration
§ 1.217, the complete file wrapper and in a power of attorney. Section 1.31 number is provided, a new power of
contents of the patent application will permits a power of attorney to be given attorney will be required to correct the
not be available if: the requirements of to one or more patent practitioners or error.
paragraphs (d)(1), (d)(2), and (d)(3) of joint inventors, and this change is Section 1.33: Section 1.33(a) is
§ 1.217 have been met in the consistent therewith. amended to use the generic term ‘‘patent
application; and the application is still Section 1.32(a)(2) is renumbered as practitioner’’ instead of ‘‘registered
pending.’’ § 1.32(a)(3) and further revised to add patent attorney or patent agent.’’
Section 1.17: Section 1.17(f) is ‘‘or, in a reexamination proceeding, the Specifically, § 1.33(a) is amended to
amended to add ‘‘§ 1.36(a)—for assignee of the entirety of ownership of change ‘‘registered patent attorney or
revocation of a power of attorney by a patent’’ to reflect that the assignee of patent agent’’ to ‘‘patent practitioner’’ in
fewer than all of the applicants.’’ See the entire interest in a patent may two places. In addition, § 1.33(a) is
the discussion of the change to § 1.36(a). authorize a patent practitioner to amended to revise the sixth sentence to
This change corrects § 1.17 by including represent the assignee in reexamination read: ‘‘If more than one correspondence
§ 1.36(a) in the list of petitions for proceedings, for example, in addition to address is specified in a single
which a fee set forth in § 1.17 can be patent applications. In addition, document, the Office will select one of
charged, and also groups the fee for a § 1.32(a)(3) is amended to change the specified addresses for use as the
petition under § 1.36(a) with similar ‘‘registered patent attorney or registered correspondence address and, if given,
petitions (under § 1.182 and § 1.183). patent agent’’ to ‘‘patent practitioners or will select the address associated with
Section 1.25: Section 1.25(c)(4) is joint inventors.’’ a Customer Number over a typed
Any power of attorney given to a correspondence address.’’ Furthermore,
amended to change the address for
practitioner who has been suspended or § 1.33(a)(1) is amended to change ‘‘If the
payment to replenish a deposit account
disbarred by the Office is ineffective,
submitted by mail with a private application was filed by a registered
and does not authorize the person to
delivery service or hand-carrying the attorney or agent, any other registered
practice before the Office or to represent
payment to: Director of the U.S. Patent practitioner named in the transmittal
applicants or patentees in patent
and Trademark Office, Attn: Deposit papers may also change the
matters.
Accounts, 2051 Jamieson Avenue, Suite Section 1.32(a)(3) is renumbered as correspondence address’’ to ‘‘If the
300, Alexandria, Virginia 22314. § 1.32(a)(4), and further revised to application was filed by a patent
Section 1.31: Section 1.31 is amended change ‘‘registered patent attorney or practitioner, any other patent
to change the title to ‘‘Applicant may be registered patent agent’’ to ‘‘patent practitioner named in the transmittal
represented by one or more patent practitioner or joint inventor.’’ papers may also change the
practitioners or joint inventors’’ in order Section 1.32(a)(4) is renumbered as correspondence address.’’
to make the title of the rule more § 1.32(a)(5), and the resulting new Neither § 1.33 nor any other rule
descriptive of the revised rule. A paragraph § 1.32(a)(5)(i) is amended to authorize a practitioner who has been
definition for ‘‘patent practitioner’’ is change both instances of ‘‘patent suspended or disbarred by the Office to
added to § 1.32(a), as discussed below, application or patent’’ to ‘‘patent practice before the Office.
and the term ‘‘patent practitioner’’ is application, patent or other patent Section 1.33(b)(1) and § 1.33(b)(2) are
used in place of ‘‘registered patent proceeding’’ and the resulting new revised to change ‘‘registered patent
attorney or agent’’ in § 1.31, and in other paragraph § 1.32(a)(5)(iii) is amended to attorney or patent agent’’ to ‘‘patent
rules. Further, § 1.31 is amended to delete ‘‘registered.’’ practitioner.’’
indicate that one or more patent Section 1.32(c)(3) is amended such Section 1.33 is also revised to add
practitioners or joint inventors may be that the first sentence reads: ‘‘Ten or new paragraph (e) to remind patent
given a power of attorney to thereby fewer patent practitioners, stating the practitioners that the attorney roster
recognize that there may be a single name and registration number of each must be updated separately from and in
person appointed or an appointment of patent practitioner.’’ The Office needs addition to any change of address filed
more than one practitioner or joint the registration number of the patent in individual patent applications.
inventor to represent the applicant. practitioner to make the practitioner of Section 1.33 is amended to state: ‘‘(e) A
Section 1.32(c)(1) permits one or more record. Because the former rules did not change of address filed in a patent
joint inventors to be given power of require a registration number, application or patent does not change
attorney to represent the other joint registration numbers were sometimes the address for a patent practitioner in
inventor or inventors; accordingly, the omitted, leading to delays in Office the roster of patent attorneys and agents.
revision to § 1.31 is necessary for processing of powers of attorney. See § 11.11 of this part.’’
consistency with § 1.32(c)(1). Accordingly, § 1.32(c)(3) is amended to Section 1.34: Section 1.34 is amended
Section 1.32: Section 1.32(a)(1) is add a requirement for the registration to change ‘‘registered patent attorney or
amended to set forth the definition of number of the patent practitioner to patent agent’’ to ‘‘patent practitioner’’ in
‘‘patent practitioner’’ and to renumber assist the Office in making the two places, to change ‘‘in whose behalf’’
sections (a)(1) to (a)(4) as (a)(2) through practitioner of record. If the name to ‘‘on whose behalf,’’ and to change
(a)(5), respectively. submitted on the power of attorney does ‘‘must specify his or her registration
Revised § 1.32(a)(1) defines the term not match the name associated with the number and name with his or her
‘‘patent practitioner’’ as ‘‘a registered registration number provided in the signature’’ to ‘‘must set forth his or her
patent attorney or registered patent Office of Enrollment and Discipline registration number, his or her name,
agent under § 11.6.’’ records for patent practitioners, the and signature’’ in order to clarify that

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00016 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56121

the name and signature are separate statement were not filed in the statement may be filed in the
requirements. provisional application, they could have provisional application, even if the
Section 1.36: Section 1.36(a) is been filed in each application that provisional application has become
amended to change § 1.17(h) to § 1.17(f). claims the benefit of the filing date of abandoned.’’
The fee for a petition to allow a split the provisional application (to satisfy Section 1.133: Section 1.133(a)(2) is
power of attorney should be the same the requirement of the rule). amended to permit an interview before
regardless of whether the split power of A provisional application is open to first Office action in any application if
attorney results from revocation by the public if the benefit of the the examiner determines that such an
fewer than all of the inventors, as provisional application is claimed in an interview would advance prosecution of
provided in § 1.36(a), or from a petition application that has either been the application. The Office conducted a
under § 1.183 to waive the provisions of published or patented. Where the pilot program permitting an interview
§ 1.32(b)(4) requiring that a power of translation and statement were not filed before the first Office action in
attorney be signed by the applicant for in the provisional application because applications that were classified in class
patent (§ 1.41(b)) or the assignee of the they were filed in each nonprovisional 705, subclasses 35 through 45, and
entire interest of the applicant. application(s) claiming the benefit of the assigned to Technology Center Art Units
Furthermore, ‘‘only’’ has been moved provisional application, there was a 3624 or 3628. See Notice of Pilot
from immediately preceding the word burden on the public in finding the Program to Permit Pre-First Office
‘‘revoke’’ to immediately following the translation and statement, and on the Action Interview for Applications
term ‘‘power of attorney’’ and Office in storing possibly duplicate Assigned to Art Units 3624 and 3628
‘‘registered patent attorney or patent copies of the documents. Further, when and Request for Comments on Pilot
agent’’ is changed to ‘‘patent a translation of the provisional Programs, 1281 Off. Gaz. Pat. Office 148
practitioner.’’ Section 402.01 of the application was filed in the (Apr. 27, 2004). The Office received few
Manual of Patent Examining Procedure nonprovisional application, the Office requests for such interviews, but when
(MPEP) provides additional information sometimes confused the translation of such interviews were conducted, the
on a split power of attorney. See MPEP the provisional with the specification feedback from examiners was that such
§ 402.01 (8th ed. 2001) (Rev. 3, August papers to be used for the nonprovisional interviews were usually beneficial and
2005). application. Because the option was often assisted in focusing the issues for
Section 1.52: Section 1.52 is amended available to file the translation and examination. Therefore, the Office sees
by removing paragraphs (a)(5), (a)(7), statement in the nonprovisional no justification for maintaining the
and (b)(7), and by redesignating application, applicant’s counsel may current prohibition in § 1.133 on
paragraph (a)(6) as paragraph (a)(5). The have inadvertently chosen that option in interviews before first Office action in
removed paragraphs explained the situations where there were many non-continuing applications.
practice set forth in § 1.135(c) wherein nonprovisional applications claiming Nevertheless, an interview before the
the Office will give applicant a new the benefit of a single provisional first Office action in a non-continuing
period of time to file a reply, if the application, and incurred substantial application will not be permitted unless
initial reply was not complete or expense for having to file a translation the examiner determines that such an
compliance with a requirement was in each nonprovisional application. interview would advance prosecution of
inadvertently omitted. The paragraphs Having only one copy of the translation the application. Thus, the examiner may
have been removed as unnecessary in (and statement) ‘‘centrally’’ filed in the require that an applicant requesting an
view of § 1.135(c). provisional application, regardless of interview before first Office action
Section 1.78: Section 1.78(a)(5)(iv) is how many nonprovisional applications provide a paper that includes a general
amended to require the English claim benefit of that provisional statement of the state of the art at the
translation of a foreign-language application will be beneficial for time of the invention, and an
provisional application be filed in the applicants, the public, and the Office. identification of no more than three (3)
provisional application, instead of also Accordingly, § 1.78(a)(5)(iv) is amended references believed to be the ‘‘closest’’
permitting the translation to be filed in to delete from the first sentence ‘‘or the prior art and an explanation as to how
each nonprovisional application that later-filed nonprovisional application’’ the broadest claim distinguishes over
claims the benefit of the filing date of to thereby eliminate the option to file such references. See Notice of Pilot
the provisional application. Section the translation and statement in the Program to Permit Pre-First Office
1.78(a)(5)(iv) is also amended to provide nonprovisional application. Action Interview for Applications
that applicant must file, in a Section 1.78(a)(5)(iv) is further Assigned to Art Units 3624 and 3628
nonprovisional application, revised to add ‘‘, in the provisional and Request for Comments on Pilot
confirmation of the filing of the application,’’ after ‘‘a period of time Programs, 1281 Off. Gaz. Pat. Office at
translation and statement, when a notice within which to file’’ and the former last 149.
is mailed in the nonprovisional sentence of § 1.78(a)(5)(iv) is further Section 2.208: Section 2.208(c)(4) is
application requiring the translation and revised to read: ‘‘If the notice is mailed amended to change the address for
statement. Previously, § 1.78(a)(5)(iv) in a pending nonprovisional payment to replenish a deposit account
provided that when, pursuant to 35 application, a timely reply to such a submitted by mail with a private
U.S.C. 119(e), benefit was being claimed notice must include the filing in the delivery service or hand-carrying the
of a provisional application which was nonprovisional application of either a payment to: Director of the U.S. Patent
filed in a language other than English, confirmation that the translation and and Trademark Office, Attn: Deposit
an English language translation of the statement were filed in the provisional Accounts, 2051 Jamieson Avenue, Suite
provisional application, accompanied application, or an amendment or 300, Alexandria, Virginia 22314.
by a statement that the translation is Supplemental Application Data Sheet Section 3.28: Section 3.28 previously
accurate, must have been filed in either: withdrawing the benefit claim, or the directed that ‘‘[o]nly one set of
(1) The provisional application; or (2) nonprovisional application will be documents and cover sheets to be
each nonprovisional application that abandoned.’’ Lastly, the following recorded should be filed’’ which
claims the benefit of the provisional sentence is added to the end of the discouraged assignees from submitting
application. Thus, if the translation and paragraph: ‘‘The translation and one set of documents including a patent

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00017 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
56122 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations

cover sheet and the document to be that the document(s) submitted to submit the assignment document(s) to
recorded, and another set of documents establish ownership under § 3.73(b) be the Office for recordation, if such a
including a trademark cover sheet and recorded pursuant to § 3.11 in the submission has not been previously
another copy of the document to be assignment records. made. If the § 3.73(b) statement is not
recorded. While the Office could In order to take action in a patent accompanied by a statement affirming
process a set of documents that includes application or a patent, a party must that the documentary evidence was, or
a patent cover sheet, trademark cover comply with § 3.73 to establish concurrently is, submitted for
sheet, and only one copy of the ownership of the rights to a patent recordation pursuant to § 3.11, then the
document to be recorded, submitting application or a patent (i.e., a patent § 3.73(b) statement will not be accepted,
only one copy of the document could property) by submitting to the Office a and the assignee(s) will not have
have led to the misconception by the signed statement identifying the established the right to take action in
Office that a document submitted for assignee. In the prior version of the rule, the patent application or the patent for
recordation has been omitted, or the the signed statement must have been which the § 3.73(b) statement was
document submitted belongs only to the accompanied by either: (1) Documentary submitted. For trademark matters, there
second cover sheet, particularly when evidence of a chain of title from the would continue to be no requirement
the documents are submitted by original owner to the assignee; or (2) a that the submission of the documentary
facsimile and there is a break in the statement specifying where such evidence be accompanied by a
transmission. For example, if a documentary evidence is recorded in statement affirming that the
submission included: A trademark sheet the Office’s assignment records. documentary evidence was submitted
on pages 1 and 2, a patent cover sheet Previously, where the first option was for recordation. Rather, paragraph
on page 3, and a document for recording chosen, there was no requirement that (b)(1)(i) would continue to set forth that
on pages 4–7, then, if pages 1 and 2 are the document(s) submitted to establish the Office may require (as deemed
separated from the remainder of the set ownership also be recorded pursuant to appropriate in any individual case) the
of documents, it may not have been § 3.11 in the assignment records unless documents (submitted to establish
clear that the trademark cover sheet was the Office explicitly required such ownership) to be recorded pursuant to
missing because the patent cover sheet recordation on a case-by-case basis. § 3.11 in the assignment records of the
and the document to be recorded would Such a requirement was made only in Office as a condition to permitting the
have themselves made a complete set of the rare situation where a question arose assignee to take action in a trademark
documents. To reduce confusion, § 3.28 as to ownership of the property. It is matter pending before the Office.
is revised to require that a separate copy desirable, however, that the Office’s Section 5.11: Section 5.11 is amended
of the document to be recorded be patent assignment records should, as a to correct cross references. Section
submitted with each cover sheet. Note rule, reflect the assignment of any 5.11(b) is amended to change ‘‘15 CFR
that even if the term ‘‘copy of the assignee seeking to take action in a part 779’’ to ‘‘15 CFR part 734’’ and
document to be recorded’’ is not used in patent application or patent. ‘‘Office of Export Administration,
this discussion, the document submitted The previous system, which International Trade Administration’’ to
for recordation must be a copy, and not permitted an assignee to take action by ‘‘Bureau of Industry and Security.’’
the original document, and the term submitting a copy of the assignment in Section 5.11(c) is amended to change
‘‘document to be recorded’’ has been a patent application or patent, but did ‘‘data * * * is’’ to ‘‘data * * * are,’’ ‘‘15
used to emphasize that the document is not require the assignment to be CFR parts 768–799’’ to ‘‘15 CFR parts
to be recorded, not to suggest that an recorded in the Office’s patent 730–774,’’ ‘‘Export Administration’’ to
original may be submitted. assignment records, made a search of ‘‘Bureau of Industry and Security,’’ and
Section 3.28 is amended to state that the Office’s patent assignment records ‘‘15 CFR part 779’’ to ‘‘15 CFR part
each document to be recorded must be unreliable. Permitting an assignee to 734.’’
accompanied by a single cover sheet take action in an application or patent Section 5.19: Section 5.19 is amended
(and not multiple cover sheets), to put without also recording the assignment to correct two cross references, and to
parentheses around ‘‘as specified in (in the Office’s assignment records) also update a reference to the Office. Section
§ 3.31,’’ and to delete the statement that encourages the late filing of assignment 5.19(a) is amended to change ‘‘15 CFR
at least one cover sheet must be document(s) and defeats the benefits of 770.10(j)’’ to ‘‘15 CFR 734.3(b)(1)(v)’’
included with each document submitted timely recordation. See 35 U.S.C. 261. and to add ‘‘U.S.’’ before ‘‘Patent.’’
for recording. Section 3.28 is also (‘‘An assignment, grant or conveyance Section 5.19(b) is amended to change
revised to delete the sentence which shall be void as against any subsequent ‘‘15 CFR 779A.3(e)’’ to ‘‘15 CFR
states that only one set of documents purchaser or mortgagee for a valuable 734.10(a).’’
and cover sheets to be recorded must be consideration, without notice, unless it Section 10.112: Section 10.112 is
filed, and to make it clear that if an is recorded in the Patent and Trademark amended to correct the cross reference,
assignment includes interests in, or Office within three months from its date changing ‘‘10.6(c)’’ to ‘‘11.6(c).’’
transactions involving, both patents and or prior to the date of such subsequent Response to comments: The Office
trademarks, then two copies of each purchase or mortgage.’’) published a notice proposing changes to
document (each document with its own Section 3.73(b)(1)(i) is amended to the rules of practice to: Allow a person
cover sheet) must be submitted. Thus, a require that, for patent matters only, the acting with limited recognition to be
patent cover sheet and a copy of the submission of the documentary given a power of attorney and
document, and a trademark cover sheet evidence to establish ownership must be authorization to sign amendments and
and a copy of the document, must be accompanied by a statement affirming other patent-related correspondence;
submitted. that the documentary evidence of the require a copy of the English translation
Section 3.31: Section 3.31(a)(7) is chain of title from the original owner to of a foreign-language provisional
amended to delete ‘‘submission’’ before the assignee was, or concurrently is, application be filed in the provisional
‘‘(e.g. /Thomas O’Malley III/)’’ to correct submitted for recordation pursuant to application if a nonprovisional
an obvious error. § 3.11. Thus, when filing a § 3.73(b) application claims the benefit of the
Section 3.73: Section 3.73(b)(1)(i) is statement to establish ownership, an provisional application; and require a
amended to require, for patent matters, applicant or patent owner must also copy of documentary evidence

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00018 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56123

supporting a claim of ownership be patent practitioners with limited filed in the provisional application at
recorded in the Office’s assignment recognition, i.e., whether someone with the same time a nonprovisional
records when an assignee takes action in a limited recognition could be application is filed that claims the
a patent matter. See Provisions for associated with a Customer Number. benefit of the provisional application,
Persons Granted Limited Recognition To Response: Assignment of a limited then no statement that an English
Prosecute Patent Applications and recognition number would permit language translation was filed will be
Other Miscellaneous Matters, 70 FR someone accorded limited recognition necessary. At the time the examiner
17629 (April 7, 2005), 1294 Off. Gaz. to have his or her limited recognition evaluates the benefit claim, the English
Pat. Office 22 (May 3, 2005) (proposed number associated with a Customer language translation will be in the
rule). The Office received 11 written Number, and obtain a Public Key provisional application and available to
comments in response to this notice. Infrastructure (PKI) certificate so as to the examiner. Furthermore, if a
Comments generally in support of a obtain access to private PAIR. For provisional application was filed in a
change are not discussed. Comments further information on private PAIR, language other than English, an
regarding limited recognition, other contact the Electronic Business Center applicant filing a nonprovisional
than comment 2, are not discussed. The by telephone at 866–217–9197 (toll free) application claiming the benefit of the
other comments and the Office’s or by e-mail to EBC@uspto.gov. The filing date of the provisional application
responses to those comments follow: Office has decided not to go forward could have filed the translation of the
Comment 1: One comment addressed with the proposed amendments provisional application in the
the proposed changes to § 1.11, noting regarding limited recognition at this nonprovisional application or the
that the change ‘‘solidified a position time. provisional application according to
held by the Patent Office in recent years Comment 3: One comment questions § 1.78(a)(5) before the effective date of
that the act of publication at 18 months the statutory basis for the Office to the revision to § 1.78(a)(5).
constitutes an inherent power to require a translation of a foreign- If the translation was elected to be
inspect.’’ The comment raised a concern language provisional application before filed in the nonprovisional application,
that having the inventor’s signature the provisional application can be relied according to prior § 1.78(a)(5), a
available on the internet could assist upon in a benefit claim. The comment continuation, continuation-in-part or
someone in identity theft, and also suggests adding the following sentence divisional application of the
questioned the Office’s authority to to the beginning of § 1.78(a)(5)(iv): nonprovisional application would either
make the file wrapper public. ‘‘Benefit to a provisional application need a new English translation of the
Response: In requiring publication of may not be granted in any provisional application to be filed in the
patent applications, Congress gave the nonprovisional application or any continuation, continuation-in-part or
Office the authority to determine how to international application designating divisional application, or the translation
publish patent applications. The Office the United States of America unless the to be filed in the provisional
has exercised this authority by provisional application is in English or application. As revised, the translation
publishing the specification, including an English-language translation is of the non-English specification must
the claims, in a searchable database, and provided with a certification of the always be filed in the provisional
by making the published application file accuracy of the translation.’’ application, and a notice will be mailed
available to the public, either on the Response: The Office’s authority to in the nonprovisional application only
internet, or through the Office of Public require an English translation is where the translation and the statement
Records, or the File Information Unit, provided in 35 U.S.C. 2(b)(2)(A) (35 that the translation is accurate were not
depending upon whether the file is U.S.C. 6(a) at the time an English filed in the provisional application.
available in image or paper form, and translation of a provisional application As to the suggestion that the notice
depending upon the status of the was originally added to the rules of requiring the English language
application (pending or abandoned). As practice). An English translation is a translation be mailed in the
to identity theft, the Office does not procedural requirement. As to the nonprovisional application 14 months
require Social Security Numbers, and proposed insertion, the suggestion has after the provisional application was
takes steps to ensure that credit card not been adopted. filed, the Office is seeking to continually
information is not made part of a patent Comment 4: One comment suggested improve processing of patent
application file. Where an applicant that there not be a requirement for an applications, and generally seeks to
elects to file a Petition to Make Special applicant to file a statement in each send out notices in a timely manner,
because of the age of the applicant, if nonprovisional application that an with as many issues addressed at one
the applicant uses a copy of his or her English language translation was filed in time as possible. Applicants should be
driver’s license to support the petition, the provisional application, and alert to the language of the provisional
the Office will expunge the document suggested that a notice be mailed in a application and may be well advised to
from the images available to the public, nonprovisional application near 14 docket provisional applications in such
if a petition under § 1.59 is filed. The months from the provisional a manner so that any necessary
signature of the inventor on the oath or application’s filing date, if the English translation can be filed without a
declaration for the patent application is translation has not been filed in the reminder from the Office.
required by 35 U.S.C. 116. The Office provisional application. Comment 5: Another comment
has always provided full access to the Response: The statement is required suggested that the need for a translation
public to patented files so that the to be filed only when a notice has been to be filed in a provisional application
public can evaluate whether the mailed in the nonprovisional is an undue burden on the applicant,
statutory requirements (such as an oath application requiring an English and suggested a public hearing before
or declaration required by 35 U.S.C. translation of the provisional this change is made.
116) were met, and to understand the application so that the examiner can Response: A translation is already
prosecution history. evaluate the benefit claim. If a required to be filed whenever an
Comment 2: One comment asked provisional application is filed in a applicant claims the benefit of an
whether the proposed amendments language other than English, and an application that was not filed in English
would make private PAIR available to English language translation is later and the applicant is notified of the need

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00019 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
56124 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations

for the translation by the Office. The being confused with a substitute prefers to warn applicants of an
change made in the amendment to specification, and has not been adopted. impending loss of rights when feasible.
§ 1.78 merely requires that the Comment 8: One comment suggested If applicant desires to eliminate the
translation be filed in the provisional that the notice requiring the translation benefit claim, an amendment to the first
application, rather than in either the and statement that the is accurate be sentence of the specification or a
provisional or each nonprovisional mailed in the provisional application supplemental application data sheet to
application claiming the benefit of the about fourteen months after the remove the benefit claim should be filed
provisional application. The Office has provisional application was filed, promptly in response to the notice. If
found that the translation of the instead of being mailed in the the Office were to wait for applicant’s
provisional application has been nonprovisional application. reply, the Office would be delaying
confused with the specification for the Response: The suggestion has not prosecution unnecessarily, and the
application to be examined and been adopted because, if the notice were impact on patent term adjustment
minimizing this confusion should be to be mailed in the abandoned would be unclear.
beneficial for both applicants and the provisional application, the only As to the suggestion that the rule
Office. In more than one instance, the consequence of a failure to comply provide for the express withdrawal of a
Office has published the translation of would be waiver of right to make a benefit claim instead of filing a
the provisional patent application claim of the benefit of the provisional translation, this suggestion has been
instead of a nonprovisional application application. More than one application adopted by adding ‘‘or an amendment or
for patent, and has been required to may claim the benefit of the provisional Supplemental Application Data Sheet
publish a corrected patent application application, and a translation may have withdrawing the benefit claim’’ to
publication to correct this error. already been filed in some of the § 1.78(a)(5)(iv).
Accordingly, requiring the translation of nonprovisional applications. If the Comment 10: One comment requested
the provisional application to be filed in notice is mailed when a new application clarification of the result of the Office
the provisional application is not an is filed that claims the benefit of the failing to mail a notice requiring an
undue burden. provisional application, and applicant English translation of a provisional
Comment 6: Another comment stated failed to comply, having the benefit application, and to comment on the
that § 1.78(a)(5)(iv) did not clearly claim waived only as to the new position taken in a prior rule making
confirm that the translation and application would be overly that the applicant should file an English
statement could be filed in the complicated. See also the discussion of translation and statement that the
provisional application both before and comment 9. translation is accurate before an
after abandonment of that application. A Comment 9: Two comments suggested application claiming the benefit of the
related comment argued that allowing that the rule should provide that the nonprovisional application is
papers to be filed in an abandoned benefit claim be waived if the published.
provisional application was inconsistent translation has not been filed in Response: The consequence of an
with § 1.137(g), which provides for response to a notice requiring the applicant who has filed a provisional
abandonment of provisional translation to be filed in the provisional application in a language other than
applications in limited situations. application, and confirmation in the English, failed to file a translation of the
Response: The translation and nonprovisional application. provisional application and a statement
statement can be filed in a provisional Alternatively, the comments suggested that the translation is accurate, and then
application after the provisional that applicant be allowed to withdraw filed an application claiming the benefit
application becomes abandoned. the claim of the benefit of the of the provisional application is that the
Nothing in prior § 1.78 precluded the provisional application. applicant has engaged in conduct that
translation from being filed in an Response: The suggestion that the leads the Office to expend resources
abandoned provisional application. benefit claim be considered waived if no mailing the applicant a letter requiring
Many papers are filed in abandoned response is filed to the notice has not the translation. If the examiner of a
applications: Changes of address, been adopted. The analogy to a priority nonprovisional application needed the
powers of attorney, and powers to or benefit claim being waived when not translation to determine whether the
inspect. A sentence has been added to made in a timely manner is not application was entitled to the benefit of
the rule to clarify this point. In persuasive because, with a late benefit the provisional application, then
permitting a paper to be placed in the claim, no mention is made of the earlier another consequence would be a delay
file of an abandoned application, application until the right to make a in the prosecution of the nonprovisional
nothing suggests that the application benefit claim has been waived. With the application. Applicants are encouraged
has been revived. As to correcting a failure to file a translation, the right to file any necessary translations in a
defective translation in an abandoned exists, but would be extinguished by the timely manner so as to avoid the need
application, an applicant should simply failure to timely file the translation if for the Office to expend resources
file the corrected translation in the the suggestion were to be adopted. The reminding applicant to file papers and
abandoned application. sudden extinguishing of a right to make fees that were previously omitted,
Comment 7: One comment suggested a benefit claim could have an impact preferably before publication of the
that applicants be required to file a upon the prior art applied by the nonprovisional application so that the
translation of a provisional application examiner, and is better addressed as appropriate date under 35 U.S.C. 102(e)
in the corresponding nonprovisional part of the standard procedures for can be determined without an
application after the filing date of the failure to comply with the requirement independent translation of the
nonprovisional application to avoid of the Office. The Office also considered provisional application.
confusing the specification to be treating the benefit claim as waived if Comment 11: One comment alleged
examined with the translation. the translation is not filed by the time that the text ‘‘given a period of time
Response: The option of having the of publication or patenting of the within which to file’’ was vague and
translation filed after the filing date of application, which would be more indefinite, and requested that a fixed
the nonprovisional application does not analogous to the late benefit claims period be set in the rule. The comment
avoid the likelihood of the translation treatment, but the Office generally stated that sometimes an insufficient

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00020 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56125

period of time may be set for an Furthermore, paralegals or other non- (Fed. Cir. 1996) (the rules of practice
applicant to obtain the translation. registered personnel employed by the promulgated under the authority of
Response: The suggestion has not registered patent practitioner should not former 35 U.S.C. 6(a) (now in 35 U.S.C.
been adopted. When an applicant elects contact the Office to ask legal questions 2(b)(2)) are not substantive rules to
to claim the benefit of a non-English or other questions regarding the merits which the notice and comment
provisional application in a of a patent application. As paralegals requirements of the Administrative
nonprovisional application (or by entry and other personnel are not registered Procedure Act apply), and Fressola v.
into the national stage), applicant practitioners, only general information Manbeck, 36 USPQ2d 1211, 1215
should initiate the translation of the about Office procedures can be (D.D.C. 1995) (‘‘it is extremely doubtful
provisional application because provided. Only registered practitioners whether any of the rules formulated to
§ 1.78(a)(5)(iv) requires a translation are permitted to prosecute patent govern patent and trade-mark practice
(and a statement that the translation is applications in accordance with § 11.10. are other than ‘interpretive rules,
accurate) when the benefit claim of a Thus, Office personnel have been general statements of policy, * * *
provisional is claimed. Applicants instructed to discuss the merits of a procedure, or practice.’ ’’) (quoting C.W.
should not wait until reminded by the patent application with only the patent Ooms, The United States Patent Office
Office of this requirement, and should practitioner of record, the applicant, or and the Administrative Procedure Act,
obtain and file the translation without the assignee of the entire interest of the 38 Trademark Rep. 149, 153 (1948)).
being required by the Office to do so. If applicant. See MPEP §§ 101 and 102. Regulatory Flexibility Act: As prior
the requirement is made before Comment 14: Another comment notice and an opportunity for public
examination, a period of no less than suggested that the proposed amendment comment were not required pursuant to
thirty days will be set. If the to § 3.73(b)(1)(i) be rephrased to clearly 5 U.S.C. 553 (or any other law) for the
requirement is made by the examiner, as provide that the documentary evidence changes proposed in this notice (except
part of an Office action, the period of of assignment may be submitted for the change to the petition fee for
time will be the time dictated by the concurrently with, as well as prior to, revocation of a power of attorney by
other issues addressed in the Office submission of a statement under fewer than all of the applicants), an
action (i.e., an Ex parte Quayle action § 3.73(b). initial or final regulatory flexibility
would be two months and a non-final Response: This suggestion is adopted. analysis under the Regulatory
Office action would be three months). Rule Making Considerations Flexibility Act (5 U.S.C. 601 et seq.) is
The broad language used in the rule is not required for the changes proposed in
desirable to maximize the Office’s Administrative Procedure Act: The this notice (with the sole exception of
flexibility in setting the period for reply. notable changes in this final rule the change to the petition fee for
Comment 12: One comment requested concern: (1) Providing the proper S- revocation of a power of attorney by
that the proposed revision to § 1.78 signature by someone acting with fewer than all of the applicants). See 5
apply only to provisional applications limited recognition pursuant to § 11.9(a) U.S.C. 603.
filed on or after the effective date of the and § 11.9(b); (2) providing that the With respect to the petition fee
rule change. petition fee for a split power of attorney change, the factual basis supporting the
Response: Applicants have been resulting from revocation of the power certification under the Regulatory
required to file a translation of a non- of attorney by fewer than all of the Flexibility Act follows: This notice
English provisional application since applicants, or assignees of the proposes to change the petition fee
provisional applications were first applicants, be the same as the petition (from the $130.00 fee specified in
accepted. The change in § 1.78 is merely fee to waive the rules to appoint a split § 1.17(h) to the $400.00 fee specified in
to indicate the application in which a power of attorney initially; (3) requiring § 1.17(f)) for a split power of attorney
translation is required. When the rule that the translation of a non-English resulting from revocation of the power
becomes effective, if a nonprovisional language provisional application and of attorney by fewer than all of the
application claims the benefit of a non- statement that the translation is accurate applicants or assignees of the applicants
English provisional and a copy of the be filed in a provisional application, to be in line with the actual cost of
translation is not already in the rather than in either the nonprovisional treating such petitions (in view of the
nonprovisional application or the application claiming the benefit of the special handling required for the split
provisional application, then the provisional application or the power of attorney resulting from
translation will be required to be filed provisional application; and (4) revocation of the power of attorney).
in the provisional application. requiring that the evidentiary evidence This petition fee is established pursuant
Comment 13: One comment suggested of ownership be recorded under 37 CFR to the Office’s authority under 35 U.S.C.
that the rules be amended to provide for part 3 when an assignee takes action in 41(d) to establish fees for all processing,
paralegals to prepare and file a patent application. Therefore, these services, or materials relating to patents
Information Disclosure Statements and rule changes (except for the change to not otherwise specified in 35 U.S.C. 41
responses to Notices To File Missing the petition fee for revocation of a to recover the estimated average cost to
Parts. power of attorney by fewer than all of the Office of such processing, services,
Response: The rules of practice the applicants) involve interpretive or materials.
provide that only a patent practitioner, rules, or rules of agency practice and The Office received over 376,000
the applicant or the assignee of the procedure under 5 U.S.C. 553(b)(A). See nonprovisional patent applications and
entire interest of the applicant may sign Bachow Commc’n Inc. v. FCC, 237 F.3d over 102,000 provisional patent
correspondence in a patent application. 683, 690 (D.C. Cir. 2001) (rules applications in fiscal year 2004. The
Requests for corrected filing receipts, governing an application process are Office receives fewer than five petitions
Information Disclosure Statements and ‘‘rules of agency organization, for revocation of the power of attorney
responses to Notices To File Missing procedure, or practice’’ and are exempt by fewer than all of the applicants or
Parts are examples of correspondence from the Administrative Procedure Act’s assignees of the applicants each year.
that must comply with the signature notice and comment requirement); see While the Office does not track the
rules. No change is being considered at also Merck & Co., Inc. v. Kessler, 80 F.3d entity status of such petitions, the small
this time. 1543, 1549–50, 38 USPQ2d 1347, 1351 entity patent application filing rate is

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00021 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
56126 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations

about 31.0%. Thus, even if all of the information collections, including (2) S-signature. An S-signature is a
affected patents were by a small entity, suggestions for reducing this burden, to signature inserted between forward
the proposed change would impact Robert J. Spar, Director, Office of Patent slash marks, but not a handwritten
relatively few patent applications Legal Administration, Commissioner for signature as defined by § 1.4(d)(1). An S-
(0.0013% of all nonprovisional patent Patents, P.O. Box 1450, Alexandria, VA signature includes any signature made
applications). 22313–1450, or to the Office of by electronic or mechanical means, and
Accordingly, for the reasons set forth Information and Regulatory Affairs, any other mode of making or applying
herein, the Deputy General Counsel for Office of Management and Budget, New a signature not covered by either a
General Law of the United States Patent Executive Office Building, Room 10235, handwritten signature of § 1.4(d)(1) or
and Trademark Office has certified to 725 17th Street, NW., Washington, DC an Office Electronic Filing System (EFS)
the Chief Counsel for Advocacy of the 20503, Attention: Desk Officer for the character coded signature of § 1.4(d)(3).
Small Business Administration that Patent and Trademark Office. Correspondence being filed in the Office
changes proposed in this notice will not Notwithstanding any other provision in paper, by facsimile transmission as
have a significant economic impact on of law, no person is required to respond provided in § 1.6(d), or via the Office
a substantial number of small entities. to nor shall a person be subject to a Electronic Filing System as an EFS
See 5 U.S.C. 605(b). penalty for failure to comply with a Tag(ged) Image File Format (TIFF)
Executive Order 13132: This rule collection of information subject to the attachment, for a patent application,
making does not contain policies with requirements of the Paperwork patent, or a reexamination proceeding
federalism implications sufficient to Reduction Act unless that collection of may be S-signature signed instead of
warrant preparation of a Federalism information displays a currently valid being personally signed (i.e., with a
Assessment under Executive Order OMB control number. handwritten signature) as provided for
13132 (Aug. 4, 1999). in paragraph (d)(1) of this section. The
Executive Order 12866: This rule List of Subjects
requirements for an S-signature under
making has been determined to be not 37 CFR Part 1 this paragraph (d)(2) are as follows.
significant for purposes of Executive
Order 12866 (Sept. 30, 1993). Administrative practice and * * * * *
Paperwork Reduction Act: This notice procedure, Courts, Freedom of (ii) A patent practitioner (§ 1.32(a)(1)),
involves information collection Information, Inventions and patents, signing pursuant to §§ 1.33(b)(1) or
requirements which are subject to Reporting and recordkeeping 1.33(b)(2), must supply his/her
review by the Office of Management and requirements, Small businesses. registration number either as part of the
Budget (OMB) under the Paperwork S-signature, or immediately below or
37 CFR Part 2 adjacent to the S-signature. The number
Reduction Act of 1995 (44 U.S.C. 3501
et seq.). The collection of information Administrative practice and (#) character may be used only as part
involved in this notice has been procedure, Trademarks. of the S-signature when appearing
reviewed and previously approved by before a practitioner’s registration
37 CFR Part 3
OMB under OMB control numbers number; otherwise the number character
0651–0012, 0651–0031, 0651–0032, Administrative practice and may not be used in an S-signature.
0651–0034, and 0651–0035. The United procedure, Inventions and patents, * * * * *
States Patent and Trademark Office is Reporting and recordkeeping
requirements. ■ 3. Section 1.11 is amended by revising
not resubmitting any information
collection package to OMB for its review paragraph (a) to read as follows:
37 CFR Part 5
and approval because the changes in § 1.11 Files open to the public.
this notice do not affect the information Classified information, Exports,
Foreign relations, Inventions and (a) The specification, drawings, and
collection requirements associated with
patents. all papers relating to the file of: A
the information collection under these
published application; a patent; or a
OMB control numbers. The principal 37 CFR Part 10 statutory invention registration are open
impacts of the changes proposed in this
Administrative practice and to inspection by the public, and copies
notice are: (1) Providing that the fee for
procedure, Inventions and patents, may be obtained upon the payment of
a split power of attorney resulting from
Lawyers, Reporting and recordkeeping the fee set forth in § 1.19(b)(2). If an
revocation of the power of attorney by
requirements. application was published in redacted
fewer than all of the applicants or
■ For the reasons set forth in the
form pursuant to § 1.217, the complete
assignees of the applicants be the same
preamble, 37 CFR Parts 1, 2, 3, 5, and file wrapper and contents of the patent
as the fee to waive the rules to appoint
10 are amended as follows: application will not be available if: The
a split power of attorney initially; (2)
requirements of paragraphs (d)(1), (d)(2),
requiring that the translation of a non-
PART 1—RULES OF PRACTICE IN and (d)(3) of § 1.217 have been met in
English language provisional
PATENT CASES the application; and the application is
application and statement that the
still pending. See § 2.27 of this title for
translation is accurate be filed in a ■ 1. The authority citation for 37 CFR trademark files.
provisional application, rather than in part 1 continues to read as follows:
either the nonprovisional application * * * * *
claiming the benefit of the provisional Authority: 35 U.S.C. 2(b)(2).
■ 4. Section 1.17 is amended by revising
application or the provisional ■ 2. Section 1.4 is amended by revising paragraph (f) to read as follows:
application; and (3) requiring that the paragraph (d)(2) introductory text and
evidentiary evidence of ownership be § 1.17 Patent application and
paragraph (d)(2)(ii) to read as follows: reexamination processing fees.
recorded under 37 CFR part 3 when an
assignee takes action in a patent § 1.4 Nature of correspondence and * * * * *
application. signature requirements. (f) For filing a petition under one of
Interested persons are requested to * * * * * the following sections which refers to
send comments regarding these (d) * * * this paragraph: $400.00.

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00022 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56127

§ 1.36(a)—for revocation of a power of (4) Revocation means the cancellation applicant and a patent practitioner, or
attorney by fewer than all of the by the principal of the authority with more than one patent practitioner
applicants. previously given to a patent practitioner except as deemed necessary by the
§ 1.53(e)—to accord a filing date. or joint inventor to act on his or her Director. If more than one
§ 1.57(a)—to accord a filing date. behalf. correspondence address is specified in a
§ 1.182—for decision on a question (5) Customer Number means a single document, the Office will select
not specifically provided for. number that may be used to: one of the specified addresses for use as
§ 1.183—to suspend the rules. (i) Designate the correspondence the correspondence address and, if
§ 1.378(e)—for reconsideration of address of a patent application or patent given, will select the address associated
decision on petition refusing to accept such that the correspondence address with a Customer Number over a typed
delayed payment of maintenance fee in for the patent application, patent or correspondence address. For the party
an expired patent. other patent proceeding would be the to whom correspondence is to be
§ 1.741(b)—to accord a filing date to address associated with the Customer addressed, a daytime telephone number
an application under § 1.740 for Number; should be supplied in a clearly
extension of a patent term. (ii) Designate the fee address (§ 1.363) identifiable manner and may be
of a patent such that the fee address for changed by any party who may change
* * * * * the patent would be the address
■ 5. Section 1.25 is amended by revising
the correspondence address. The
associated with the Customer Number; correspondence address may be
paragraph (c)(4) to read as follows: and changed as follows:
§ 1.25 Deposit accounts.
(iii) Submit a list of patent (1) Prior to filing of § 1.63 oath or
practitioners such that those patent declaration by any of the inventors. If a
* * * * * practitioners associated with the
(c) * * * § 1.63 oath or declaration has not been
Customer Number would have power of filed by any of the inventors, the
(4) A payment to replenish a deposit attorney.
account may be submitted by mail with correspondence address may be
* * * * * changed by the party who filed the
a private delivery service or by hand-
(c) * * * application. If the application was filed
carrying the payment to: Director of the (3) Ten or fewer patent practitioners,
U.S. Patent and Trademark Office, Attn: by a patent practitioner, any other
stating the name and registration patent practitioner named in the
Deposit Accounts, 2051 Jamieson number of each patent practitioner.
Avenue, Suite 300, Alexandria, Virginia transmittal papers may also change the
Except as provided in paragraph (c)(1) correspondence address. Thus, the
22314. or (c)(2) of this section, the Office will
* * * * * inventor(s), any patent practitioner
not recognize more than ten patent named in the transmittal papers
■ 6. Section 1.31 is revised to read as practitioners as being of record in an accompanying the original application,
follows: application or patent. If a power of or a party that will be the assignee who
attorney names more than ten patent filed the application, may change the
§ 1.31 Applicant may be represented by practitioners, such power of attorney
one or more patent practitioners or joint correspondence address in that
inventors.
must be accompanied by a separate application under this paragraph.
paper indicating which ten patent
An applicant for patent may file and practitioners named in the power of * * * * *
prosecute his or her own case, or he or attorney are to be recognized by the (b) * * *
she may give a power of attorney so as (1) A patent practitioner of record
Office as being of record in the
to be represented by one or more patent appointed in compliance with § 1.32(b);
application or patent to which the
practitioners or joint inventors. The (2) A patent practitioner not of record
power of attorney is directed.
United States Patent and Trademark who acts in a representative capacity
■ 8. Section 1.33 is amended by revising
Office cannot aid in the selection of a under the provisions of § 1.34;
paragraphs (a) introductory text, (a)(1),
patent practitioner. * * * * *
(b)(1) and (b)(2) and by adding
■ 7. Section 1.32 is amended by revising (e) A change of address filed in a
paragraph (e) to read as follows:
paragraphs (a) and (c)(3) to read as patent application or patent does not
follows: § 1.33 Correspondence respecting patent change the address for a patent
applications, reexamination proceedings, practitioner in the roster of patent
§ 1.32 Power of attorney. and other proceedings. attorneys and agents. See § 11.11 of this
(a) Definitions. (1) Patent practitioner (a) Correspondence address and title.
means a registered patent attorney or daytime telephone number. When filing ■ 9. Section 1.34 is revised to read as
registered patent agent under § 11.6. an application, a correspondence follows:
(2) Power of attorney means a written address must be set forth in either an
document by which a principal application data sheet (§ 1.76), or § 1.34 Acting in a representative capacity.
authorizes one or more patent elsewhere, in a clearly identifiable When a patent practitioner acting in
practitioners or joint inventors to act on manner, in any paper submitted with an a representative capacity appears in
his or her behalf. application filing. If no correspondence person or signs a paper in practice
(3) Principal means either an address is specified, the Office may treat before the United States Patent and
applicant for patent (§ 1.41(b)) or an the mailing address of the first named Trademark Office in a patent case, his
assignee of entire interest of the inventor (if provided, see §§ 1.76(b)(1) or her personal appearance or signature
applicant for patent or in a and 1.63(c)(2)) as the correspondence shall constitute a representation to the
reexamination proceeding, the assignee address. The Office will direct all United States Patent and Trademark
of the entirety of ownership of a patent. notices, official letters, and other Office that under the provisions of this
The principal executes a power of communications relating to the subchapter and the law, he or she is
attorney designating one or more patent application to the correspondence authorized to represent the particular
practitioners or joint inventors to act on address. The Office will not engage in party on whose behalf he or she acts. In
his or her behalf. double correspondence with an filing such a paper, the patent

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00023 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
56128 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations

practitioner must set forth his or her language translation of the prior-filed Authority: 15 U.S.C. 1123; 35 U.S.C.
registration number, his or her name provisional application and a statement 2(b)(2).
and signature. Further proof of authority that the translation is accurate were not ■ 17. Section 3.28 is revised to read as
to act in a representative capacity may previously filed in the prior-filed follows:
be required. provisional application, applicant will
■ 10. Section 1.36 is amended by be notified and given a period of time § 3.28 Requests for recording.
revising paragraph (a) to read as follows: within which to file, in the prior-filed Each document submitted to the
provisional application, the translation Office for recording must include a
§ 1.36 Revocation of power of attorney; and the statement. If the notice is single cover sheet (as specified in § 3.31)
withdrawal of patent attorney or agent. mailed in a pending nonprovisional referring either to those patent
(a) A power of attorney, pursuant to application, a timely reply to such a applications and patents, or to those
§ 1.32(b), may be revoked at any stage in notice must include the filing in the trademark applications and
the proceedings of a case by an nonprovisional application of either a registrations, against which the
applicant for patent (§ 1.41(b)) or an confirmation that the translation and document is to be recorded. If a
assignee of the entire interest of the statement were filed in the provisional document to be recorded includes
applicant, or the owner of the entire application, or an amendment or interests in, or transactions involving,
interest of a patent. A power of attorney Supplemental Application Data Sheet both patents and trademarks, then
to the patent practitioners associated withdrawing the benefit claim, or the separate patent and trademark cover
with a Customer Number will be treated nonprovisional application will be sheets, each accompanied by a copy of
as a request to revoke any powers of abandoned. The translation and the document to be recorded, must be
attorney previously given. Fewer than statement may be filed in the submitted. If a document to be recorded
all of the applicants (or fewer than all provisional application, even if the is not accompanied by a completed
of the assignees of the entire interest of provisional application has become cover sheet, the document and the
the applicant or, in a reexamination abandoned. incomplete cover sheet will be returned
proceeding, fewer than all the owners of * * * * * pursuant to § 3.51 for proper
the entire interest of a patent) may completion, in which case the
■ 13. Section 1.133 is amended by
revoke the power of attorney only upon document and a completed cover sheet
a showing of sufficient cause, and revising paragraph (a)(2) to read as
follows: should be resubmitted.
payment of the petition fee set forth in ■ 18. Section 3.31 is amended by
§ 1.17(f). A patent practitioner will be § 1.133 Interviews. revising paragraph (a)(7)(i) to read as
notified of the revocation of the power (a)(1) * * * follows:
of attorney. Where power of attorney is (2) An interview for the discussion of
given to the patent practitioners the patentability of a pending § 3.31 Cover sheet content.
associated with a Customer Number application will not occur before the (a) * * *
(§ 1.32(c)(2)), the practitioners so first Office action, unless the (7) * * *
appointed will also be notified of the application is a continuing or substitute (i) Place a symbol comprised of
revocation of the power of attorney application or the examiner determines letters, numbers, and/or punctuation
when the power of attorney to all of the that such an interview would advance marks between forward slash marks (e.g.
practitioners associated with the prosecution of the application. /Thomas O’Malley III/) in the signature
Customer Number is revoked. The block on the electronic submission; or
* * * * *
notice of revocation will be mailed to * * * * *
the correspondence address for the PART 2—RULES OF PRACTICE IN ■ 19. Section 3.73 is amended by
application (§ 1.33) in effect before the TRADEMARK CASES revising paragraph (b)(1)(i) to read as
revocation. An assignment will not of follows:
itself operate as a revocation of a power ■ 14. The authority citation for 37 CFR
previously given, but the assignee of the part 2 continues to read as follows: § 3.73 Establishing right of assignee to
take action.
entire interest of the applicant may Authority: 15 U.S.C. 1123; 35 U.S.C.
revoke previous powers of attorney and 2(b)(2). * * * * *
give another power of attorney of the (b)(1) * * *
■ 15. Section 2.208 is amended by (i) Documentary evidence of a chain
assignee’s own selection as provided in
revising paragraph (c)(4) to read as of title from the original owner to the
§ 1.32(b).
follows: assignee (e.g., copy of an executed
* * * * * assignment). For trademark matters
§ 2.208 Deposit accounts.
§ 1.52 [Amended] only, the documents submitted to
* * * * * establish ownership may be required to
■ 11. Section 1.52 is amended by (c) * * * be recorded pursuant to § 3.11 in the
removing paragraphs (a)(5), (a)(7), and (4) A payment to replenish a deposit assignment records of the Office as a
(b)(7), and by redesignating paragraph account may be submitted by mail with condition to permitting the assignee to
(a)(6) as paragraph (a)(5). a private delivery service or hand- take action in a matter pending before
■ 12. Section 1.78 is amended by carrying the payment to: Director of the the Office. For patent matters only, the
revising paragraph (a)(5)(iv) to read as U.S. Patent and Trademark Office, Attn: submission of the documentary
follows: Deposit Accounts, 2051 Jamieson evidence must be accompanied by a
Avenue, Suite 300, Alexandria, Virginia statement affirming that the
§ 1.78 Claiming benefit of earlier filing date 22314.
and cross-references to other applications. documentary evidence of the chain of
(a) * * * title from the original owner to the
PART 3—ASSIGNMENT, RECORDING
(5)(i) * * * assignee was or concurrently is being
AND RIGHTS OF ASSIGNEE
(iv) If the prior-filed provisional submitted for recordation pursuant to
application was filed in a language other ■ 16. The authority citation for 37 CFR § 3.11; or
than English and both an English- part 3 continues to read as follows: * * * * *

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00024 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1
Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56129

PART 5—SECRECY OF CERTAIN Department of Energy) must be ENVIRONMENTAL PROTECTION


INVENTIONS AND LICENSES TO complied with unless a license is not AGENCY
EXPORT AND FILE APPLICATIONS IN required because a United States
FOREIGN COUNTRIES application was on file at the time of 40 CFR Parts 52 and 81
export for at least six months without a [R05–OAR–2005–IN–0004; FRL–7972–6]
■ 20. The authority citation for 37 CFR secrecy order under § 5.2 being placed
part 5 is revised to read as follows: thereon. The term ‘‘exported’’ means Approval and Promulgation of
Authority: 35 U.S.C. 2(b)(2), 41, 181–188, export as it is defined in 22 CFR part Implementation Plans and Designation
as amended by the Patent Law Foreign Filing 120, 15 CFR part 734 and activities of Areas for Air Quality Planning
Amendments Act of 1988, Pub. L. 100–418, covered by 10 CFR part 810. Purposes; Indiana; Lake County Sulfur
102 Stat. 1567; the Arms Export Control Act, Dioxide Regulations, Redesignation
* * * * *
as amended, 22 U.S.C. 2571 et seq.; the
and Maintenance Plan
Atomic Energy Act of 1954, as amended, 42 ■ 22. Section 5.19 is revised to read as
U.S.C. 2011 et seq.; the Nuclear Non follows: AGENCY: Environmental Protection
Proliferation Act of 1978; 22 U.S.C. 3201 et Agency (EPA).
seq.; and the delegations in the regulations § 5.19 Export of technical data.
under these Acts to the Director (15 CFR ACTION: Final rule.
734.3(b)(1)(v), 22 CFR 125.04, and 10 CFR (a) Under regulations (15 CFR
734.3(b)(1)(v)) established by the SUMMARY: EPA is approving a State
810.7), as well as the Export Administration
Act of 1979, 50 U.S.C. app. 2401 et seq.; the Department of Commerce, a license is Implementation Plan (SIP) revision for
International Emergency Economic Powers not required in any case to file a patent the control of sulfur dioxide (SO2)
Act, 50 U.S.C. 1701 et seq.; E.O. 12938, 59 application or part thereof in a foreign emissions in Lake County, Indiana. The
FR 59099, 3 CFR, 1994 Comp., p. 950; E.O. country if the foreign filing is in SIP revision submitted by the Indiana
13222, 66 FR 44025, 3 CFR, 2001 Comp., p. accordance with the regulations (§§ 5.11 Department of Environmental
783; Notice of August 2, 2005, 70 FR 45273 Management (IDEM) amends 326
(August 5, 2005).
through 5.25) of the U.S. Patent and
Trademark Office. Indiana Administrative Code (IAC)
■ 21. Section 5.11 is amended by Article 7. Indiana’s revised SO2 rule
(b) An export license is not required consists of changes to 326 IAC 7–4
revising paragraphs (b) and (c) to read for data contained in a patent
as follows: which sets forth facility-specific SO2
application prepared wholly from emission limitations and recordkeeping
§ 5.11 License for filing in a foreign foreign-origin technical data where such requirements for Lake County. The rule
country an application on an invention application is being sent to the foreign revision also reflects updates to
made in the United States or for inventor to be executed and returned to company names, updates to emission
transmitting international application. the United States for subsequent filing limits currently in permits, deletion of
* * * * * in the U.S. Patent and Trademark Office facilities that are already covered by
(b) The license from the (15 CFR 734.10(a)). natural gas limits, and other corrections
Commissioner for Patents referred to in and updates. Due to changes in section
paragraph (a) would also authorize the PART 10—REPRESENTATION OF
OTHERS BEFORE THE PATENT AND numbers, references to citations in other
export of technical data abroad for parts of the rule have also been updated.
purposes relating to the preparation, TRADEMARK OFFICE
EPA is also approving a request to
filing or possible filing and prosecution redesignate the Lake County
of a foreign patent application without ■ 23. The authority citation for 37 CFR nonattainment area to attainment of the
separately complying with the part 10 continues to read as follows: SO2 National Ambient Air Quality
regulations contained in 22 CFR parts Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 Standards (NAAQS). In conjunction
121 through 130 (International Traffic in U.S.C. 2, 6, 32, 41. with these actions, EPA is also
Arms Regulations of the Department of approving the maintenance plan for the
State), 15 CFR parts 730–774 ■ 24. Section 10.112 is amended by Lake County nonattainment area to
(Regulations of the Bureau of Industry revising paragraph (a) to read as follows: ensure that attainment of the NAAQS
and Security, Department of Commerce) will be maintained. The SIP revision,
and 10 CFR part 810 (Foreign Atomic § 10.112 Preserving identity of funds and
property of client. redesignation request and maintenance
Energy Programs of the Department of plan are approvable because they satisfy
Energy). (a) All funds of clients paid to a the requirements of the Clean Air Act
(c) Where technical data in the form practitioner or a practitioner’s firm, (Act).
of a patent application, or in any form, other than advances for costs and
are being exported for purposes related expenses, shall be deposited in one or DATES: This final rule is effective on
to the preparation, filing or possible more identifiable bank accounts October 26, 2005.
filing and prosecution of a foreign maintained in the United States or, in ADDRESSES: EPA has established a
patent application, without the license the case of a practitioner having an docket for this action under Regional
from the Commissioner for Patents office in a foreign country or registered Material in EDocket (RME) Docket ID
referred to in paragraphs (a) or (b) of this under § 11.6(c), in the United States or No. R05–OAR–2005–IN–0004. All
section, or on an invention not made in the foreign country. documents in the docket are listed in
the United States, the export regulations * * * * * the RME index at http://docket.epa.gov/
contained in 22 CFR parts 120 through rmepub/, once in the system, select
130 (International Traffic in Arms Dated: September 19, 2005. ‘‘quick search,’’ then key in the
Regulations of the Department of State), Jon W. Dudas, appropriate RME Docket identification
15 CFR parts 730–774 (Bureau of Under Secretary of Commerce for Intellectual number. Although listed in the index,
Industry and Security Regulations, Property and Director of the United States some information is not publicly
Department of Commerce) and 10 CFR Patent and Trademark Office. available, i.e., Confidential Business
part 810 (Assistance to Foreign Atomic [FR Doc. 05–19128 Filed 9–23–05; 8:45 am] Information (CBI) or other information
Energy Activities Regulations of the BILLING CODE 3510–16–P whose disclosure is restricted by statute.

VerDate Aug<31>2005 12:27 Sep 23, 2005 Jkt 205001 PO 00000 Frm 00025 Fmt 4700 Sfmt 4700 E:\FR\FM\26SER1.SGM 26SER1