AGENCY:

United States Patent and Trademark Office, Department of Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) hereby amends the Rules of Practice in Patent Cases and Trial Practice Before the Patent Trial and Appeal Board (PTAB) by removing provisions in the Code of Federal Regulations that are no longer necessary. This final rule removes the rules governing reservation clauses, petitions from the refusal of a primary examiner to admit an amendment, the publication of amendments to the regulations, and limits that the Director can impose on the number of inter partes reviews and post-grant reviews heard by the PTAB. USPTO has evaluated existing regulations to identify those that should be repealed, replaced, or modified because they are outdated, unnecessary, ineffective, costly, or unduly burdensome to both government and private-sector operations. USPTO carried out this work, in part, through its participation in the Regulatory Reform Task Force (Task Force), which the Department of Commerce (Department or Commerce) established in accordance with Executive Order 13777, “Enforcing the Regulatory Reform Agenda.” Removal of the regulations identified in this final rule achieves the objective of making USPTO regulations more effective and more streamlined, while enabling the USPTO to fulfill its mission goals.

DATES:

This rule is effective on October 31, 2019.

FOR FURTHER INFORMATION CONTACT:

Raul Tamayo, Senior Legal Advisor, Office of Patent Legal Administration, by email at raul.tamayo@uspto.gov, or by telephone at (571) 272-7728, for questions regarding the changes to 37 CFR 1.79 and/or 1.127; Scott C. Weidenfeller, Vice Chief Administrative Patent Judge, Patent Trial and Appeal Board, by email at scott.weidenfeller@uspto.gov, or by telephone at (571) 272-8723, for questions regarding the changes to 37 CFR part 42; and Nicolas Oettinger, Senior Counsel for Regulatory and Legislative Affairs, Office of the General Counsel, by email at nicolas.oettinger@uspto.gov, or by telephone at (571) 272-7832, for questions regarding the change to 37 CFR 1.351 and general questions regarding regulatory reform.

SUPPLEMENTARY INFORMATION:

I. Background

To support its regulatory reform efforts as a participant in the Task Force, the USPTO assembled a Working Group on Regulatory Reform (Working Group), consisting of subject-matter experts from each of the business units that implement the USPTO's regulations, to consider, review, and recommend ways that the regulations could be improved, revised, and streamlined. In considering the revisions, the USPTO, through its Working Group, incorporated into its analyses all presidential directives relating to regulatory reform. The Working Group reviewed existing regulations, both discretionary rules and those required by statute or judicial order. The USPTO also solicited comments from stakeholders through a web page established to provide information on the USPTO's regulatory reform efforts and through the Department's Federal Register Notice titled “Impact of Federal Regulations on Domestic Manufacturing” (82 FR 12786, Mar. 7, 2017), which addressed the impact of regulatory burdens on domestic manufacturing. These efforts led to the development of candidate regulations for removal, based on the USPTO's assessment that these regulations were not needed and/or that elimination could improve the USPTO's body of regulations. This rule removes certain patent- and PTAB-related regulations in 37 CFR part 1 and part 42. As described below, USPTO also considered comments received on the proposed rule, which was published on January 19, 2018 (83 FR 2159). This final rule makes no changes to the repeals included in the proposed rule. Other rules removing regulations on other subject areas have been published separately.

II. Regulations Being Removed

This rule removes the regulations concerning reservation clauses, petitions from the refusal of a primary examiner to admit an amendment, and publication of amendments to the regulations in 37 CFR part 1. The rule also removes the regulations concerning limits that the Director can impose on the number of inter partes reviews and post-grant reviews in 37 CFR part 42.

In particular, this rule removes 37 CFR 1.79. Section 1.79 prohibits reservation clauses, i.e., it prohibits a pending patent application from containing a reservation for a future patent application of subject matter disclosed but not claimed in the pending application. An applicant's ability to claim benefit of a prior application is affirmatively provided elsewhere in statute and regulation, and the explicit prohibition of § 1.79 on reservation clauses (which do not confer this benefit) dates from a time when the mechanism for properly claiming benefit of a prior application was less clear and less fully developed in USPTO's regulations and guidance. The removal of § 1.79 is not an endorsement of reservation clauses nor an invitation for applicants to include reservation clauses in applications. The Office does not expect the use of reservation clauses to significantly increase, because such reservation clauses provide no legal benefit, regardless of § 1.79. For example, the inclusion of a reservation clause in a pending application would not change any of the requirements for a future application to benefit from the earlier filing date of the pending application. The authority for the future application to benefit from the earlier filing date of the pending application would stem, as it does now, from the fulfillment of requirements set forth in statutory and regulatory provisions in which a reservation clause plays no role, e.g., 35 U.S.C. 120 and 37 CFR 1.78. Nor would the inclusion of a reservation clause protect against rejections for statutory or nonstatutory double patenting. In view of the fact that the inclusion of a reservation clause provides no legal benefit, and given that the affirmative ability to claim benefit of a prior application is more fully and completely described elsewhere in USPTO's regulations and guidance (unlike when § 1.79 was first adopted), the prohibition of reservation clauses in § 1.79 is unnecessary.

Section 1.79 also permits a patent application disclosing unclaimed subject matter to contain a reference to a later-filed application of the same applicant or owned by a common assignee disclosing and claiming that subject matter. This provision of § 1.79 is duplicative and therefore unnecessary. Section 1.78 provides for cross-references to other applications, including cross-references to applications for which a benefit is not claimed, which encompasses the later-filed applications identified in § 1.79. Thus, applicants will continue to be able to include in a pending application a reference to a later-filed application as currently provided for in § 1.79.

This rule removes § 1.127, which also is duplicative. Section 1.127 indicates that a petition to the Director under 37 CFR 1.181 may be filed upon a refusal by a primary examiner to admit an amendment, in whole or in part. Section 1.127 is unnecessary. The language of § 1.181(a)(1) makes clear that any action or requirement of any examiner in the ex parte prosecution of an application, or in ex parte or inter partes prosecution of a reexamination proceeding, which is not subject to appeal to the PTAB or to a court, is petitionable to the Director. A refusal by a primary examiner to admit an amendment constitutes an action or requirement of an examiner and is not subject to appeal to the PTAB or to a court. Thus, applicants will continue to be able to petition to the Director under § 1.181 the refusal by a primary examiner to admit an amendment, in whole or in part.

This rule additionally removes 37 CFR 1.351. Section 1.351 states that all amendments to the regulations in 37 CFR part 1 will be published in the Official Gazette and in the Federal Register. Section 1.351 is unnecessary. In accordance with the requirements of the Administrative Procedure Act (APA) and guidance from the Office of Management and Budget (OMB), the Office publishes any amendments to 37 CFR part 1 in the Federal Register. The APA generally requires the Office to give public notice of any regulatory change, and OMB's guidance with respect to rulemaking makes clear that publication in the Federal Register is the required means for giving public notice. Given that publication in the Official Gazette is entirely duplicative of publication in the Federal Register, the Office no longer intends to make these duplicate publications of amendments to regulations in the Official Gazette.

Finally, this rule removes 37 CFR 42.102(b) and 42.202(b), both of which are now out of date. Section 42.102(b) provides that the Director may impose a limit on the number of inter partes reviews that may be instituted during each of the first four one-year periods that the Leahy-Smith America Invents Act (AIA) is in effect. Section 42.202(b) has a similar provision for post-grant reviews. Neither rule remains necessary because the fourth anniversary of the effective date of the AIA has passed.

Removal of the regulations identified in this rule achieves the objective of making the USPTO regulations more effective and more streamlined, while enabling the USPTO to fulfill its mission goals. The USPTO's economic analysis shows that while the removal of these regulations is not expected to substantially reduce the burden on the impacted community, the regulations are nonetheless being eliminated because they are “outdated, unnecessary, or ineffective” regulations encompassed by the directives in Executive Order 13777.

III. Proposed Rule: Comments and Responses

The USPTO published a proposed rule on January 19, 2018, at 83 FR 2759, soliciting comments on the proposed amendments. In response, the USPTO received eight comments relevant to the proposed rule from five commenters. None of the comments expresses disapproval for the proposed amendments. Four of the comments propose additional rules for revision or removal. The comments are addressed below.

Two comments propose revising or removing 37 CFR 1.83(a). According to these comments, § 1.83(a), which states that “[t]he drawing in a nonprovisional application must show every feature of the invention specified in the claims,” is inconsistent with 35 U.S.C. 113, which states that “[t]he applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented.” The Office has considered the comments concerning § 1.83(a) but is not revising or removing the regulation. Consistent with 35 U.S.C. 113, Office regulations already limit the requirement to furnish a drawing to cases where the drawing is necessary for the understanding of the subject matter sought to be patented. See 37 CFR 1.81(a). Section 1.83(a) merely adds that when a drawing is required in accordance with 35 U.S.C. 113 and § 1.81(a), the drawing must show every feature of the invention specified in the claims. Moreover, § 1.83(a) permits conventional features, a detailed illustration of which is not essential for a proper understanding of the invention, to be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). Thus, § 1.83(a) strikes a balance between maintaining a high level of quality for prior art (drawings in accordance with § 1.83 improve the understanding of the claimed subject matter in pre-grant publications and issued patents) and mitigating the drawing burden on applicants.

Two comments propose revising or removing the requirement for a certified copy of the foreign application to be filed when making a claim for foreign priority under 37 CFR 1.55. One of the two comments proposes removing each instance of “certified” from § 1.55, such that § 1.55 instead would require only a copy of the foreign application. The other comment proposes allowing applicants to submit certified copies of foreign applications electronically through the Office's Electronic Filing System (EFS-Web), or in the alternative, eliminating the requirement for a certified copy.

The Office has considered the comments concerning § 1.55 but is not revising or removing the requirement for a certified copy of the foreign application to be filed when making a claim for foreign priority. A critical reason for the requirement under § 1.55 to provide a certified copy of a foreign patent application is that the foreign priority date could be a prior art date under 35 U.S.C. 102(a)(2). Without the requirement, the examiner and any member of the public interested in evaluating a 35 U.S.C. 102(a)(2) prior art date would be burdened with obtaining an actual certified copy of the priority document to do a complete analysis. This burden would be particularly acute for an examiner or member of the public seeking a certified copy from a jurisdiction with poor record-keeping practices.

Furthermore, the Office continues to make progress on alleviating applicants' burden of providing a certified copy under § 1.55 through its electronic priority document exchange (PDX) program. The PDX program facilitates compliance with the certified copy requirement under § 1.55 through two modes of exchange with participating foreign offices: Direct bilateral exchange and exchange via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS) for Priority Documents. As of December 1, 2018, the Office electronically retrieves certified copies of foreign applications filed with 18 WIPO DAS depositing offices. For more information on the PDX program, visit https://www.uspto.gov/​patents-getting-started/​international-protection/​electronic-priority-document-exchange-pdx. For instances in which the certified copy required by § 1.55 must be obtained from a jurisdiction not currently participating in the PDX program, the burden of providing the certified copy is mitigated by 37 CFR 1.55(j). Section 1.55(j) provides for an “interim copy” procedure that gives an applicant more time to obtain and file the actual certified copy.

One comment proposes revising the requirement for an assignee to establish its right to take action under 37 CFR 3.73(c) so that it no longer applies “to the original applicants named in patent applications subject to the AIA.” The Office has considered the comment concerning § 3.73(c) but is not revising the regulation. The language of § 3.73(c)(1) already excludes an assignee who is the original applicant from the purview of § 3.73(c) (“In order to request or take action in a patent matter, an assignee who is not the original applicant must establish its ownership of the patent property of paragraph (a) of this section to the satisfaction of the Director.”). As stated in § 3.73(a), “[t]he original applicant is presumed to be the owner of an application for an original patent, and any patent that may issue therefrom.”

One comment identifies a number of initiatives undertaken by the Office, including the Collaborative Search Pilot Program, the Cooperative Patent Classification system, Global Dossier, and the Patent Prosecution Highway. The comment states that as a result of the initiatives, the requirement under 37 CFR 1.98(a)(2) for an applicant to provide the Office copies of foreign patent documents is unnecessarily burdensome where the documents have been cited in the prosecution of another application, including an international application, for which the applicant has notified the Office. The comment proposes either removing § 1.98(a)(2) or revising § 1.98(d) so that it would not be necessary to provide a copy of any patent, publication, pending U.S. application or other information, if the patent, publication, pending U.S. application or other information was previously submitted to, or cited by, the Office in another application, including later-filed or co-filed U.S. or international applications and applications not relied on for an earlier effective filing date under 35 U.S.C. 120, and the other application has been properly identified in an information disclosure statement (IDS).

The Office has considered the comment concerning § 1.98(a)(2) and (d) but is not removing § 1.98(a)(2) or revising § 1.98(d). The relevant initiatives that the Office currently is undertaking, including relevant initiatives identified by the comment, are not sufficient to permit removing § 1.98(a)(2) or revising § 1.98(d) in the proposed manner. The Office, however, continues to make progress on reducing applicants' burden in connection with the duty of disclosure. As of November 1, 2018, the Office has implemented the first phase of the Access to Relevant Prior Art Initiative (RPA Initiative). See Access to Relevant Prior Art Initiative, 83 FR 53853 (Oct. 25, 2018). The RPA Initiative leverages electronic resources to improve examiners' access to relevant information from applicants' other related applications. In the first phase, the Office is importing the citations listed on forms PTO/SB/08 (or equivalents) and PTO-892 in the immediate parent application into the continuing application. The first phase consists of a targeted release of a newly developed interface to a subgroup of examiners from a limited number of selected art units. In subsequent phases of the RPA Initiative, the Office will consider providing examiners access to citation information from other sources such as other related U.S. applications, international applications under the PCT, and counterpart foreign applications of the same applicant. The selection of these sources and the timetable for expansion will be dictated, at least in part, by evaluating the first phase, including feedback on the RPA Initiative from the public and examiners. In addition, the USPTO plans to include more examiners in subsequent phases when the RPA Initiative proves scalable.

One comment notes that 37 CFR 1.53(f)(3)(ii) requires applicants to file an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement in compliance with 37 CFR 1.64, no later than the date on which the issue fee for the patent is paid. The comment proposes revising § 1.53(f)(3)(ii) to provide a time period to correct a defective oath, declaration, or substitute statement submitted no later than the date on which the issue fee for the patent is paid, but found defective after the date at which the issue fee is paid. The Office has considered the comment concerning § 1.53(f)(3)(ii) but is not revising the regulation. The requested revision is precluded by statute. Specifically, 35 U.S.C. 115(f) states that “[t]he applicant for patent shall provide each required oath or declaration under subsection (a), substitute statement under subsection (d), or recorded assignment meeting the requirements of subsection (e) no later than the date on which the issue fee for the patent is paid.”

One comment generally supports the proposed amendments as meeting the stated objectives. The USPTO appreciates this input.

All of the comments are posted on the USPTO's website at https://www.uspto.gov/​patent/​laws-and-regulations/​comments-public/​comments-changes-eliminate-unnecessary-regulations.

IV. Discussion of Rules Changes

Part 1

Section 1.79: Section 1.79 is removed and reserved.

Section 1.127: Section 1.127 is removed and reserved.

Section 1.351: Section 1.351 is removed and reserved.

Part 42

Section 42.102(b): Section 42.102(b) is removed and reserved.

Section 42.202(b): Section 42.202(b) is removed and reserved.

Rulemaking Considerations

A. Administrative Procedure Act: The changes in this rulemaking involve 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 (DC 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))). However, the Office chose to seek public comment before implementing the rule to benefit from the public's input.

B. Regulatory Flexibility Act: For the reasons set forth herein, the Senior Counsel for Regulatory and Legislative Affairs, Office of General Law, of the USPTO has certified to the Chief Counsel for Advocacy of the Small Business Administration that this rule will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b).

This rule removes the provisions at 37 CFR 1.79, concerning the prohibition of reservation clauses, § 1.127, concerning petitions from refusal to admit amendment, and § 1.351, concerning the publication of amendments to rules. These regulations are removed because they are not necessary. This rule also removes 37 CFR 42.102(b) and 42.202(b), which provide that the Director may impose a limit on the number of inter partes reviews and post-grant reviews that may be instituted during each of the first four one-year periods that the AIA is in effect. These regulations are no longer necessary because the fourth anniversary of the effective date of the AIA has passed.

Removing these regulations achieves the objective of making the USPTO regulations more effective and more streamlined, while enabling the USPTO to fulfill its mission goals. The removal of these regulations is not expected to substantively impact parties. Parties either will continue to be able to take the same action under a different regulatory provision, or the rights or obligations of the parties will not change in any way. For these reasons, this rulemaking will not have a significant economic impact on a substantial number of small entities.

C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review): The Office has complied with Executive Order 13563 (Jan. 18, 2011). 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.

E. Executive Order 13771 (Reducing Regulation and Controlling Regulatory Costs): This rule is a deregulatory action under Executive Order 13771 (Jan. 30, 2017).

F. 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).

G. 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).

H. 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).

I. 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).

J. 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).

K. 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).

L. 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).

M. 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.

N. 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.

O. 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.

P. 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 does not involve an information collection that is subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549).

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

37 CFR Part 1

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

37 CFR Part 42

• Administrative practice and procedure
• Inventions and patents
• Lawyers

For the reasons stated in the preamble, the Office amends parts 1 and 42 of title 37 as follows:

PART 1—RULES OF PRACTICE IN PATENT CASES

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

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

2. Section 1.79 is removed and reserved.

3. Section 1.127 is removed and reserved.

4. Section 1.351 is removed and reserved and the undesignated center heading above it, “Amendment of Rules,” is removed.

PART 42—TRIAL PRACTICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

5. The authority citation for part 42 continues to read as follows:

Authority: 35 U.S.C. 2(b)(2), 6, 21, 23, 41, 135, 311, 312, 316, 321-326; Pub. L. 112-29, 125 Stat. 284; and Pub. L. 112-274, 126 Stat. 2456.

6. Amend section 42.102 by removing and reserving paragraph (b).

7. Section 42.202 is amended by removing and reserving paragraph (b).