82 FR 24249 - July 2017 Revision of Patent Cooperation Treaty Procedures

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 82, Issue 101 (May 26, 2017)

The United States Patent and Trademark Office (USPTO or Office) is amending the rules of practice to implement certain amendments made to the Regulations under the Patent Cooperation Treaty (PCT) that will take effect on July 1, 2017, concerning the transmittal by a Receiving Office to an International Searching Authority of documents relating to an earlier search or classification.

[Federal Register Volume 82, Number 101 (Friday, May 26, 2017)]
[Rules and Regulations]
[Pages 24249-24253]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2017-10870]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-P-2017-0002]
RIN 0651-AD14


July 2017 Revision of Patent Cooperation Treaty Procedures

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) is amending the rules of practice to implement certain 
amendments made to the Regulations under the Patent

[[Page 24250]]

Cooperation Treaty (PCT) that will take effect on July 1, 2017, 
concerning the transmittal by a Receiving Office to an International 
Searching Authority of documents relating to an earlier search or 
classification.

DATES: 
    Effective date: This rule is effective July 1, 2017.
    Applicability date: The changes in this final rule apply to 
international applications having an international filing date on or 
after July 1, 2017.

FOR FURTHER INFORMATION CONTACT: Boris Milef, Senior Legal Examiner, 
International Patent Legal Administration, at (571) 272-3288.

SUPPLEMENTARY INFORMATION: During the October 5 to 14, 2015, meeting of 
the Governing Bodies of the World Intellectual Property Organization 
(WIPO), the PCT Assembly adopted a number of amendments to the PCT 
Regulations having various dates of entry into force. See report 
adopted by the 47th Assembly of the PCT Union, available at http://www.wipo.int/edocs/mdocs/govbody/en/pct_a_47/pct_a_47_9.pdf. This final 
rule implements the changes to PCT Rules 12bis, 23bis, and 41, 
concerning the transmittal by the Receiving Office (RO) to the 
International Searching Authority (ISA) of documents relating to an 
earlier search or classification. Pursuant to 35 U.S.C. 361, the USPTO 
is required to perform all acts connected with the discharge of duties 
required of an RO. Accordingly, the USPTO is amending the rules of 
practice to implement these adopted PCT rules. These adopted rules were 
published in the May 12, 2016, issue of the PCT Gazette at pages 95-99, 
available on WIPO's Web site at http://www.wipo.int/pct/en/official_notices, and will apply to international applications having 
an international filing date on or after July 1, 2017.
    Under the current PCT rules, applicants can request the ISA to take 
into account the results of an earlier search carried out by the same 
or another ISA or by a national office. See PCT Rule 4.12. Applicants 
making such a request must submit to the RO a copy of the results of 
the earlier search, subject to certain exceptions. One exception is 
where the office acting as the RO has performed the earlier search, the 
applicant may request the RO to transmit a copy of the results of the 
earlier search to the ISA rather than submit a copy of the results to 
the RO. See current PCT Rule 12bis.1(c). Submission of a copy of the 
results of the earlier search to the RO is also not required where the 
earlier search was carried out by the same ISA or by the same office as 
that which is acting as the ISA. See current PCT Rule 12bis.1(d). Nor 
is the submission of a copy of the results of the earlier search to the 
RO required where a copy of the search results is available to the ISA 
in a form and manner acceptable to it, for example, from a digital 
library. See current PCT Rule 12bis.1(f). The USPTO, in its capacity as 
an ISA, currently does not obtain a copy of the results of an earlier 
search pursuant to Rule 12bis.1(f).
    As explained above, the mechanism under the current PCT rules for 
providing an ISA with a copy of the results of an earlier search is 
applicant driven. In addition, the current PCT rules do not 
specifically provide for the transmittal by the RO to the ISA of a copy 
of the results of any earlier classification available to the RO. To 
help reduce the workload of ISAs and improve the quality of 
international search reports, the PCT Regulations were amended to 
increase the availability of the results of an earlier search or 
earlier classification to ISAs by providing an Office driven mechanism 
for furnishing such information to ISAs. A summary of the new PCT 
Regulations are provided as follows.
    New PCT Rule 23bis.1 concerns the transmittal of documents relating 
to an earlier search where the applicant has made a request under PCT 
Rule 4.12 that the ISA take into account the results of an earlier 
search. Rule 23bis.1(a) provides that the RO shall transmit to the ISA, 
together with the search copy (see PCT Article 12(1); PCT Rule 23), any 
copy referred to in Rule 12bis.1(a) related to an earlier search in 
respect of which the applicant has made a request under Rule 4.12, 
provided that any such copy: (i) Has been submitted by the applicant to 
the RO together with the international application; (ii) has been 
requested by the applicant to be prepared and transmitted by the RO to 
the ISA; or (iii) is available to the RO in a form and manner 
acceptable to it, for example, from a digital library, in accordance 
with Rule 12bis.1(d). Rule 23bis.1(b) further provides that, if the 
results of any earlier classification are not included in the copy of 
the results of the earlier search referred to in Rule 12bis.1(a), the 
RO shall also transmit to the ISA, together with the search copy, a 
copy of the results of any earlier classification effected by that 
office, if available.
    New PCT Rule 23bis.2 provides for the transmittal by the RO to the 
ISA of the copy of the results of an earlier search or earlier 
classification in respect of an earlier application for which priority 
is claimed in the international application, where the earlier 
application is filed with the same office that is acting as the RO and 
that office has carried out an earlier search in respect of the earlier 
application or has classified the earlier application. Under this 
provision, transmittal of a copy of the results of an earlier search or 
earlier classification by the RO to the ISA will not be required in the 
following circumstances: (1) Where an RO has notified the International 
Bureau by April 14, 2016, that it may, on the request of the applicant 
submitted together with the international application, decide not to 
transmit the results of an earlier search (Rule 23bis.2(b)); (2) where 
the earlier search was carried out by the ISA or where the RO is aware 
that the results are available to the ISA (Rule 23bis.2(d)); and (3) 
where, to the extent that on October 14, 2015, the transmission of the 
copies referred to Rule 23bis.2(a) without the authorization by the 
applicant is not compatible with the national law applied by the RO, 
the provisions of PCT Rule 23bis.2(a) will not apply with respect to 
any international application filed with that RO for as long as such 
transmission without the authorization by the applicant continues not 
to be compatible with that law, provided that the RO informed the 
International Bureau accordingly by April 14, 2016 (PCT Rule 
23bis.2(e)).
    Under the national law of the United States, unpublished 
applications for patents are generally required to be kept in 
confidence by the USPTO and no information concerning the same given 
without authority of the applicant or owner. See 35 U.S.C. 122; 37 CFR 
1.14. Accordingly, the USPTO has notified the International Bureau 
pursuant to PCT Rule 23bis.2(e) that it will not transmit the copies 
referred to in Rule 23bis.2 to the extent that the national law of the 
United States requires that patent applications that have not been 
published must be kept in confidence unless specifically authorized by 
the applicant. See the October 20, 2016, issue of the PCT Gazette at 
pages 210-13, available at http://www.wipo.int/export/sites/www/pct/en/official_notices/officialnotices16.pdf.

Discussion of Specific Rules

    The following is a discussion of the amendments to 37 CFR part 1, 
made pursuant to the amendments to the PCT Regulations.
    37 CFR 1.453: In general, Sec.  1.453 is added to provide the 
procedures for the transmittal by the USPTO in its capacity as an RO of 
documents relating to an earlier search or earlier classification in

[[Page 24251]]

accordance with amendments made to the PCT Regulations that will take 
effect on July 1, 2017.
    Section 1.453(a) implements the provisions of new PCT Rule 23bis.1 
by providing that, where an applicant has requested in an international 
application filed with the United States Receiving Office (RO/US) 
pursuant to PCT Rule 4.12 that an ISA take into account the results of 
an earlier search, the RO/US shall prepare and transmit to the ISA, as 
applicable, a copy of the results of the earlier search and any earlier 
classification as provided under PCT Rule 23bis.1. As discussed above, 
the applicant driven mechanism of PCT Rule 23bis.1 differs from the 
current applicant driven PCT mechanism by further providing for the 
automatic transmittal by the RO to the ISA of a copy of the results of 
any earlier classification effected by the RO. Also, consistent with 
the USPTO's current practice as an ISA, the USPTO, in its capacity as 
an RO, does not at the present time contemplate obtaining a copy of the 
results of an earlier search pursuant to PCT Rule 23bis.1(a)(iii), for 
example, from a digital library.
    Section 1.453(b) implements the provisions of PCT Rule 23bis.2 by 
providing that, where an international application filed with the RO/US 
claims the priority of an earlier application filed with the USPTO in 
which the USPTO has carried out an earlier search or has classified 
such earlier application, the RO/US shall prepare and transmit to the 
ISA a copy of the results of any such earlier search and earlier 
classification as provided under PCT Rule 23bis.2. This automatic 
process is triggered based on the presence of a priority claim in the 
PCT application to an application in which the USPTO carried out an 
earlier search or has classified the earlier application.
    The RO/US will not retrieve the results of an earlier search or 
earlier classification conducted by an office other than the USPTO. 
Section 1.453(c), therefore, is limited to applications held in 
confidence by the USPTO and is not directed to applications held in 
confidence by offices other than the USPTO. In accordance with the 
requirements of 35 U.S.C. 122 and the aforementioned notification under 
PCT Rule 23bis.2(e) by the USPTO, Sec.  1.453(a) and (b) are subject to 
the provisions of Sec.  1.453(c), which provides that the RO/US will 
not prepare a copy of the results of the earlier search or earlier 
classification referred to in Sec.  1.453(a) or (b) for transmittal to 
an ISA from an application preserved in confidence by the USPTO under 
Sec.  1.14 unless the international application contains written 
authority granting the ISA access to such results. Section 1.453(c) 
further provides that such written authority must be signed by an 
applicant in the international application who is also an applicant in 
the application preserved in confidence or by a person set forth in 
Sec.  1.14(c) permitted to grant access to the application preserved in 
confidence. The Office anticipates that the PCT Request form (PCT/RO/
101) will be revised to provide the option to include written authority 
therein. The provisions of Sec.  1.453(c) will permit, inter alia, an 
applicant in the international application to sign the written 
authority (either directly or through applicant's representative (Sec.  
1.455)), provided that applicant is also an applicant in the 
application that is preserved in confidence.

Rulemaking Considerations

    A. Administrative Procedure Act: This final rule implements changes 
made to the Regulations under the PCT and involves changes to the rules 
of agency practice and procedure and/or interpretive rules. See Perez 
v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015) (Interpretive 
rules ``advise the public of the agency's construction of the statutes 
and rules which it administers.'' (citation and internal quotation 
marks omitted)); Nat'l Org. of Veterans' Advocates v. Sec'y of Veterans 
Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that clarifies 
interpretation of a statute is interpretive.); Bachow Commc'ns Inc. v. 
FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules governing an application 
process are procedural under the Administrative Procedure Act.); Inova 
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (Rules 
for handling appeals were procedural where they did not change the 
substantive standard for reviewing claims.).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this rulemaking are not required pursuant to 5 U.S.C. 
553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (Notice-
and-comment procedures are required neither when an agency ``issue[s] 
an initial interpretive rule'' nor ``when it amends or repeals that 
interpretive rule.''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A))).
    Alternatively, the provisions of the Administrative Procedure Act 
requiring prior notice and opportunity for public comment are 
inapplicable because this rulemaking involves a military or foreign 
affairs function of the United States. See 5 U.S.C. 553(a)(1). The 
USPTO, in its capacity as an RO, is required to perform all acts 
connected with the discharge of duties required of an RO. See 35 U.S.C. 
361. This final rule adopts changes required to conform the rules of 
practice for international applications to the amendments to the PCT 
Regulations, which will become effective on July 1, 2017. Thus, this 
final rule is covered by the foreign affairs function exception of 5 
U.S.C. 553(a)(1) and may be adopted without prior notice and 
opportunity for public comment. See Int'l Brotherhood of Teamsters v. 
Pena, 17 F.3d 1478, 1486 (D.C. Cir. 1994).
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a Regulatory Flexibility Act analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 603.
    C. Executive Orders 12866 (Regulatory Planning and Review), 13563 
(Improving Regulation and Regulatory Review), and 13771 (Reducing 
Regulation and Controlling Regulatory Costs): This rulemaking has been 
determined to be not significant for purposes of Executive Order 12866 
(Sept. 30, 1993).
    The Office has complied with Executive Order 13563. Specifically, 
the Office has, to the extent feasible and applicable: (1) Made a 
reasoned determination that the benefits justify the costs of the rule; 
(2) tailored the rule to impose the least burden on society consistent 
with obtaining the regulatory objectives; (3) selected a regulatory 
approach that maximizes net benefits; (4) specified performance 
objectives; (5) identified and assessed available alternatives; (6) 
involved the public in an open exchange of information and perspectives 
among experts in relevant disciplines, affected stakeholders in the 
private sector and the public as a whole, and provided on-line access 
to the rulemaking docket; (7) attempted to promote coordination, 
simplification, and harmonization across government agencies and 
identified goals designed to promote innovation; (8) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (9) ensured the objectivity of scientific 
and technological information and processes.

[[Page 24252]]

    Because this rulemaking has been determined to be not significant 
for purposes of Executive Order 12866, the requirements of Executive 
Order 13771 (Jan. 30, 2017) do not apply. See Guidance Implementing 
Executive Order 13771, Titled ``Reducing Regulation and Controlling 
Regulatory Costs,'' at page 3 (OMB mem.) (April 5, 2017). 
Alternatively, this final rule is not subject to Executive Order 13771 
as it does not meet the definition of ``regulation'' or ``rule'' under 
Section 4 of Executive Order 13771, which excludes regulations issued 
with respect to a military, national security, or foreign affairs 
function of the United States.
    D. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    E. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    F. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    G. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    H. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    I. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    J. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    K. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this notice do not involve a federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    L. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    M. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    N. Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rulemaking involves information collection requirements 
which are subject to review by the Office of Management and Budget 
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). 
The collection of information involved in this rule has been reviewed 
and previously approved by OMB under control number 0651-0021.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Biologics, Courts, Freedom 
of information Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.

    For the reasons set forth in the preamble, 37 CFR part 1 is amended 
as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for 37 CFR part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.


0
2. Section 1.453 is added under the center heading ``Priority'' to read 
as follows:


Sec.  1.453  Transmittal of documents relating to earlier search or 
classification.

    (a) Subject to paragraph (c) of this section, where an applicant 
has requested in an international application filed with the United 
States Receiving Office pursuant to PCT Rule 4.12 that an International 
Searching Authority take into account the results of an earlier search, 
the United States Receiving Office shall prepare and transmit to the 
International Searching Authority, as applicable, a copy of the results 
of the earlier search and any earlier classification as provided under 
PCT Rule 23bis.1.
    (b) Subject to paragraph (c) of this section, where an 
international application filed with the United States Receiving Office 
claims the priority of an earlier application filed with the USPTO in 
which the USPTO has carried out an earlier search or has classified 
such earlier application, the United States Receiving Office shall 
prepare and transmit to the International Searching Authority a copy of 
the results of any such earlier search and earlier classification as 
provided under PCT Rule 23bis.2.
    (c) The United States Receiving Office will not prepare a copy of 
the results of an earlier search or earlier classification referred to 
in paragraphs (a) and (b) of this section for transmittal to an 
International Searching Authority from an application preserved in 
confidence (Sec.  1.14) unless the international application contains 
written authority granting the International Searching

[[Page 24253]]

Authority access to such results. Written authority provided under this 
paragraph must be signed by:
    (1) An applicant in the international application who is also an 
applicant in the application preserved in confidence; or
    (2) A person set forth in Sec.  1.14(c) permitted to grant access 
to the application preserved in confidence.

    Dated: May 22, 2017.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2017-10870 Filed 5-25-17; 8:45 am]
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