[Federal Register Volume 79, Number 133 (Friday, July 11, 2014)]
[Proposed Rules]
[Pages 40035-40040]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-16062]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2014-0012]
RIN 0651-AC95
Changes To Facilitate Applicant's Authorization of Access to
Unpublished U.S. Patent Applications by Foreign Intellectual Property
Offices
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The electronic sharing of information and documents between
intellectual property (IP) offices is critical for increasing the
efficiency and quality of patent examination worldwide. Current
examples of this sharing include the priority document exchange (PDX)
program and the program by which U.S. search results are delivered to
the European Patent Office (EPO). In support of electronic file
sharing, the United States Patent and Trademark Office (Office) is
proposing to amend its rules of practice to include a specific
provision by which an applicant can authorize the Office to give a
foreign IP office access to all or part of the file contents of an
unpublished U.S. patent application in order to satisfy a requirement
for information imposed on a counterpart application filed with the
foreign intellectual property office. Currently, for unpublished U.S.
patent applications, applicants follow one regulatory provision to
provide the Office with authorization for a foreign IP office to access
an application-as-filed via a PDX program and follow another
[[Page 40036]]
regulatory provision to provide the Office with authorization to share
the file contents with a foreign IP office. The proposed changes to the
rules will consolidate the specific provisions of the regulations by
which applicants give the Office authority to provide a foreign IP
office with access to an application in order to satisfy a requirement
for information of the foreign IP office. Additionally, along with
changes to the application data sheet (ADS) form, the proposed rule
changes will simplify the process for how applicants provide the Office
with the required authorization, thereby reducing the resources
applicants must expend to comply with these foreign IP office
requirements, and enhance the quality of patent examination.
DATES: Written comments must be received on or before September 9,
2014.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: AC95.comments@uspto.gov. Comments also may be
submitted by postal mail addressed to: Mail Stop Comments--Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450,
marked to the attention of either Susy Tsang-Foster, Senior Legal
Advisor, or Joseph F. Weiss, Jr., Senior Legal Advisor, Office of
Patent Legal Administration, Office of the Deputy Commissioner for
Patent Examination Policy.
Comments further may be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site (http://www.regulations.gov) for additional
instructions on providing comments via the Federal eRulemaking Portal.
Although comments may be submitted by postal mail, the Office
prefers to receive comments by electronic mail message over the
Internet because sharing comments with the public is more easily
accomplished. Electronic comments are preferred to be submitted in
plain text, but also may be submitted in ADOBE[supreg] portable
document format or MICROSOFT WORD[supreg] format. Comments not
submitted electronically should be submitted on paper in a format that
facilitates convenient digital scanning into ADOBE[supreg] portable
document format.
The comments will be available for public inspection at the Office
of the Commissioner for Patents, currently located in Madison East,
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also
will be available for viewing via the Office's Internet Web site
(http://www.uspto.gov). Because comments will be made available for
public inspection, information that the submitter does not desire to
make public, such as an address or phone number, should not be included
in the comments.
FOR FURTHER INFORMATION CONTACT: Susy Tsang-Foster, Senior Legal
Advisor ((571) 272-7711), or Joseph F. Weiss, Jr., Senior Legal Advisor
((571) 272-2259), Office of Patent Legal Administration, Office of the
Deputy Commissioner for Patent Examination Policy.
SUPPLEMENTARY INFORMATION: The electronic sharing of information and
documents between IP offices is critical for increasing the efficiency
and quality of patent examination worldwide. The electronic sharing of
documents between IP offices also benefits applicants by reducing the
cost of ordering documents from one IP office and then filing them in
another IP office where a counterpart application has been filed.
Due to the confidential nature of unpublished U.S. patent
applications, set forth in 35 U.S.C. 122, an applicant must provide the
Office with written authority in accordance with 37 CFR 1.14 to grant a
foreign IP office access to an unpublished U.S. patent application.
With this grant of authority, the Office may electronically provide the
U.S. patent application-as-filed or the requested file contents, such
as information and documents, from the U.S. patent application to the
foreign IP office on behalf of the applicant.
Currently, applicants comply with 37 CFR 1.14(h) when authorizing
the Office to give a foreign IP office participating in a bilateral or
multilateral priority document exchange agreement access to an
unpublished U.S. priority application-as-filed. 37 CFR 1.14(h),
however, does not provide a specific provision by which an applicant
can authorize the Office to provide a foreign IP office access to an
unpublished U.S. patent application's file contents including documents
and other information in order to satisfy a requirement for information
imposed on a counterpart application from a U.S. applicant by the
foreign IP office. As a result, U.S. applicants, unprompted by the
rules, must provide written authority for access by a foreign IP office
to an unpublished application's contents in accordance with 37 CFR
1.14(c).
The Office is proposing to amend 37 CFR 1.14(h) to include a
specific provision by which an applicant can authorize the Office to
give a foreign IP office access to all or part of the file contents (as
opposed to a copy of the application-as-filed) of an unpublished patent
application, including search results, to satisfy a foreign IP office
requirement for information on a counterpart application filed by an
U.S. applicant. The proposed changes to 37 CFR 1.14(h) would
consolidate the provisions by which applicants authorize the Office to
give access to an unpublished application-as-filed or its file contents
to a foreign IP office, while also clarifying for applicants the
provision of 37 CFR 1.14 under which such access authorization can be
provided. The proposed rule change will further serve as a reminder of
the opportunity for applicants to grant the Office with the authority
to provide a foreign IP office with access to file contents of an
unpublished U.S. patent application.
Any information concerning an unpublished application or documents
from an unpublished application will only be shared in accordance with
the authority provided by applicant and in accordance with the terms of
any agreement between the Office and respective foreign IP offices. The
Office is not proposing any fee for this service. In addition, sharing
of information and documents would be limited to those foreign IP
offices where applicant has filed a counterpart application and
provided written authority to give a foreign IP office access to all or
part of the file contents of an unpublished U.S. application.
The proposed changes to 37 CFR 1.14(h) emphasize the Office's
continued support of work sharing efforts between IP offices to
increase the quality of issued patents, as well as its commitment to
assist in reducing the expenditure of resources of its applicants when
complying with the requirements of a foreign IP office for a
counterpart application.
Revision to Application Data Sheet Form: In addition to the
proposed rule changes, the Office is planning to revise the application
data sheet (ADS) form, PTO/AIA/14 (ADS form). The revised ADS form
would include separate access authorizations for the PDX program and
certain work sharing initiatives for which the Office has an agreement
with one or more foreign IP offices.
The submission of a properly signed revised ADS form with the
appropriate authorization language would be a specific act authorizing
access. After a revised ADS form including the authorization language
for access by foreign IP office(s) and signed in accordance with 37 CFR
1.14(c) and
[[Page 40037]]
1.33(b) has been submitted and placed in the application file, the
Office would give the foreign IP office(s) access to the contents in
accordance with the specific authorization language upon request of the
foreign IP office.
In contrast to the current ADS form, the revised ADS form would
include an ``opt-out'' check box for each access authorization and not
an ``opt-in'' check box. Therefore, when an ``opt-out'' check box for a
specific authorization to access is selected, the Office would not
provide access to the contents of the application associated with that
check box. The revised ADS form will make it easier for applicants to
give the statutorily required authorization for access to specific file
contents, as well as afford an applicant the opportunity to inform the
Office that the required authority to allow a foreign IP office
specific access to an application has not been given. Appropriate
authorization language for access in any ADS generated by applicant
must mirror the authorization language provided in the Office's revised
ADS form. Where an applicant-generated ADS does not include the
required authorization language for access by a foreign IP office, the
ADS will be interpreted as not providing the authorization necessary to
give a foreign IP office access.
The changes to the Office's ADS form should reduce those instances
where an applicant inadvertently fails to provide authorization
necessary to participate in PDX (by not selecting the opt-in check box
for priority document exchange authorization on the current ADS form)
and, as a result, must expend resources to obtain and file a copy of a
U.S. priority document with a foreign IP office. Similarly, this
approach will help eliminate those instances where an applicant
inadvertently fails to give the Office authority (by filing form PTO/
SB/69) to provide the EPO with the search results from an unpublished
U.S. priority application and, as a consequence, must expend resources
to file the results with the EPO.
The Office will not deliver an unpublished priority document, file
contents of an unpublished application, including information about an
unpublished application, to a foreign IP office, even where a
counterpart application has been filed, if applicant does not provide
proper written authority for access. As discussed above, the revised
ADS form would need to be executed in accordance with 37 CFR 1.33(b),
and if there is written authority for any access by a foreign IP
office, the revised ADS form also must be executed in accordance with
37 CFR 1.14(c). Applicants should be aware of the differences in
signature requirements under 37 CFR 1.33(b) and under 37 CFR 1.14(c).
For example, under 37 CFR 1.33(b) in applications filed on or after
September 16, 2012, the following individuals can sign:
A patent practitioner of record;
A patent practitioner not of record who acts in a
representative capacity under the provisions of 37 CFR 1.34; or
The applicant under 37 CFR 1.42. Unless otherwise
specified, all papers submitted on behalf of a juristic entity must be
signed by a patent practitioner.
By contrast, under 37 CFR 1.14(c) in applications filed on or after
September 16, 2012, the following individuals can sign:
The applicant;
A patent practitioner of record;
The assignee or an assignee of an undivided part interest;
The inventor or a joint inventor; or
A registered attorney or agent named in the papers
accompanying the application papers filed under 37 CFR 1.53 or the
national stage under 37 CFR 1.495, if a power of attorney has not been
appointed under 37 CFR 1.32.
Where forms PTO/SB/39 for PDX authorization and PTO/SB/69 for
search results authorization are used instead of the revised ADS form,
these forms must still be executed in accordance with 37 CFR 1.14(c)
even though written authority is provided for under proposed 37 CFR
1.14(h). If the revised ADS form is not signed in accordance with the
relevant rules, then applicant has not provided written authority for
access by a foreign IP office to an application.
The transaction of sharing documents and information from a U.S.
application with a foreign IP office has several built in safeguards to
ensure that only authorized sharing occurs. For example, in order for a
foreign IP office to receive information about a U.S. application, the
Office requires that the foreign IP office expressly identify the U.S.
application serial number, along with other elements of bibliographic
data for each U.S. application in its request, to ensure that only the
correct U.S. application's information will be given to the foreign IP
office. Once the application is properly identified, the Office will
then determine whether the requisite authorization for access exists in
the U.S. application. The Office will only share information or other
file content from a U.S. application with a foreign IP office when both
the correct application is identified and the existence of proper
authorization is confirmed. If an unpublished application, which has
not been foreign filed, includes an unintended access authorization
pursuant to proposed 37 CFR 1.14(h), a foreign IP office would not
obtain access because it would not have the information necessary to
request access to that specific U.S. application. Further, the U.S.
application's filing receipt will indicate whether applicant has
provided written authority for access pursuant to proposed 37 CFR
1.14(h). Applicants should inspect the application filing receipt and
request a corrected filing receipt if authorization for access under
proposed 37 CFR 1.14(h) was incorrectly captured from the revised ADS
form or applicant-generated ADS. If authorization for access was
inadvertently given, a request for rescission of the authorization can
be made, and the Office should be informed of such rescission as early
as possible so the Office has time to recognize the request for
rescission and act upon it.
To avoid inconsistent means of authorization for access and to
avoid duplicative processing, the Office also is considering removal of
the opt-in check box and associated authorization language for the PDX
program from the inventor's oath or declaration form (PTO/SB/01 for
applications filed before September 16, 2012 and PTO/AIA/08 for
applications filed on or after September 16, 2012). Form PTO/SB/39 for
the priority document exchange authorization and Form PTO/SB/69 for the
search results authorization will remain available for applicants that
do not use an ADS form or have selected the check boxes for opting out
of specific authorizations for access by a foreign IP office on the
revised ADS form, but later decide to give a foreign IP office access
to the application.
Discussion of Specific Rules: The following is a discussion of the
amendments to title 37 of the Code of Federal Regulations, part 1,
which are being proposed in this document.
Section 1.14: Section 1.14(h)(1) is proposed to retain the first
sentence of current Sec. 1.14(h)(1) and include the provisions from
current Sec. 1.14(h)(3). Proposed Sec. 1.14(h)(1) also would be
amended to include that the date of filing of the written authority for
priority document exchange may be provided to the respective
participating foreign IP office, which codifies the practice set forth
in the Official Gazette of the United States Patent and Trademark
Office (1328 OG 90 (March 11, 2008)). In proposed Sec. 1.14(h)(1), the
text added from current Sec. 1.14(h)(3) has been amended to delete the
language ``indicated in the written authority.'' This deleted language
is not necessary
[[Page 40038]]
as written authority for access under current Sec. 1.14(h) and
proposed Sec. 1.14(h) will result in access being granted to all PDX
and WIPO Digital Access Service (DAS) participating foreign IP offices
in which a subsequently filed application claims benefit of the earlier
filed U.S. application. Within the WIPO DAS system, however, there is
an option where an applicant may decide which WIPO DAS foreign IP
office(s) are granted or not granted access.
Proposed Sec. 1.14(h)(1)(i) and (ii) also are amended to include
the term ``bibliographic data'' to reflect that ``bibliographic data''
is used to ensure the correct application-as-filed is being provided to
the participating foreign IP office requesting access in any access to
the application-as-filed transaction. The term bibliographic data as
used in proposed Sec. 1.14(h)(1) covers certain bibliographic data set
forth in WIPO standard ST.9 for bibliographic data. The bibliographic
data used to confirm that the correct application-as-filed is being
provided may include the patent document identification, filing data,
priority data, publication data, data concerning technical information
such as patent classification (international or domestic), and title of
the invention.
Proposed Sec. 1.14(h)(2) would permit an applicant to authorize
the Office to grant a foreign IP office access to the file contents of
an application where a counterpart application has been filed with a
foreign IP office and the counterpart application is subject to a
requirement for information from the application filed with the Office.
The Office would only provide access to the relevant portion or
portions of an unpublished U.S. application's file contents necessary
to satisfy any requirement for information by the foreign IP office,
triggered by the U.S. applicant filing a counterpart application with
the foreign IP office. The Office and the foreign IP office would need
to have a bilateral or multilateral agreement that provides for the
secure transmission and receipt of any shared information. Proposed
Sec. 1.14(h)(2)(i) includes the term ``bibliographic data'' to reflect
that ``bibliographic data'' is used to ensure the information is from
the correct application for which access has been requested by the
foreign IP office in any access to the application. The term
bibliographic data as used in Sec. 1.14(h)(2) includes the same types
of bibliographic data set discussed above with respect to Sec.
1.14(h)(1).
Current Sec. 1.14(h)(2) has been moved to proposed Sec.
1.14(h)(3).
Section 1.14(h)(3) as proposed indicates that written authority
provided under proposed Sec. Sec. 1.14(h)(1) and (h)(2) should be
submitted before the filing of any subsequent foreign application in
which priority is claimed to the application. Section 1.14(h)(3) as
proposed also indicates that the written authority under Sec. Sec.
1.14(h)(1) and (2) must include the title of the invention (Sec.
1.72(a)), comply with the requirements of Sec. 1.14(c), and must be
submitted on an application data sheet (Sec. 1.76) or on a separate
document (Sec. 1.4(c)).
Section 1.19: Section 1.19(b)(1)(iv) is proposed to be amended to
indicate there is no fee for providing a foreign IP office with a copy
of either an application-as-filed or patent related file wrapper and
contents pursuant to a bilateral or multilateral agreement (see Sec.
1.14(h)).
Rulemaking Considerations
A. Administrative Procedure Act: This rulemaking amends the rules
of practice to include a specific provision by which an applicant can
authorize the Office to give a foreign IP office access to all or part
of the file contents of an application, and thus pertains solely to the
process for an applicant to provide a limited waiver of confidentiality
under 35 U.S.C. 122(a) to allow a counterpart IP office access to all
or part of the file contents of an application. Therefore, the changes
proposed in this rulemaking involve rules of agency practice and
procedure and/or interpretive rules. See Bachow Commc'ns Inc. v.
F.C.C., 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 are
not required pursuant to 5 U.S.C. 553(b) or (c) (or any other law). See
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)). The Office,
however, is publishing these proposed changes for comment as it seeks
the benefit of the public's views on the Office's proposed changes to
provide the Office with authority to give a foreign IP office access to
all or part of the file contents of an application.
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Deputy General Counsel for General Law of the United States Patent
and Trademark Office has certified to the Chief Counsel for Advocacy of
the Small Business Administration that changes proposed in this
document will not have a significant economic impact on a substantial
number of small entities. See 5 U.S.C. 605(b).
This rulemaking amends the rules of practice to include a specific
provision by which an applicant can authorize the Office to give a
foreign IP office access to all or part of the file contents of an
application. This rulemaking consolidates and clarifies in one place--
37 CFR 1.14(h)--existing procedures in both 37 CFR 1.14(c) and (h)
relevant to authorizing the Office to provide a foreign IP office
access to all or part of the file contents of an application or to an
application-as-filed. The changes in this rulemaking do not require any
applicant to provide the Office with this authority. There is no fee
for this service. Therefore, the changes proposed in this document 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.
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 13132 (Federalism): This rulemaking does not
[[Page 40039]]
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. 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).
G. 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).
H. 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).
I. 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).
J. 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).
K. 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
United States Patent and Trademark Office 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 proposed rule 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 proposed
rule is not expected to result in a ``major rule'' as defined in 5
U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this proposed rule 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.
M. 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.
N. 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 which involve the use of
technical standards.
O. 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 rulemaking has been
reviewed and previously approved by OMB under OMB Control Numbers 0651-
0031 and 0651-0032. The Office is not resubmitting an information
collection package to OMB for its review and approval because the
changes in this rulemaking do not change patent fees or change the
information collection requirements (the estimated number of
respondents, time per response, total annual respondent burden hours,
or total annual respondent cost burden) associated with the information
collections approved under OMB Control Numbers 0651-0031 and 0651-0032.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act, unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons stated in the preamble, 37 CFR part 1 is proposed
to be 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).
0
2. Section 1.14 is amended by revising paragraph (h) to read as
follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(h) Access by a Foreign Intellectual Property Office. (1) Access to
an application-as-filed may be provided to any foreign intellectual
property office participating with the Office in a bilateral or
multilateral priority document exchange agreement (participating
foreign intellectual property office), if the application contains
written authority granting such access. Written authority provided
under this paragraph (h)(1) will be treated as authorizing the Office
to provide to all participating foreign intellectual property offices
in accordance with their respective agreements with the Office:
(i) A copy of the application-as-filed and its related
bibliographic data;
(ii) A copy of the application-as-filed of any application the
filing date of which is claimed by the application in which written
authority under this paragraph (h)(1) is filed and its related
bibliographic data; and
(iii) The date of filing of the written authorization under this
paragraph (h)(1).
(2) Access to the file contents of an application may be provided
to a foreign intellectual property office if a counterpart application
filed with the foreign intellectual property office is subject to a
requirement for information from the application filed with the Office,
the application contains written authority granting the foreign
intellectual property office access to the required information, and
the Office and the foreign intellectual property office have a
bilateral or multilateral agreement to provide the required
information. Written authority provided
[[Page 40040]]
under this paragraph (h)(2) will be treated as authorizing the Office
to provide to all foreign intellectual property offices indicated in
the written authority in accordance with their respective agreements
with the Office:
(i) Bibliographic data regarding the application; and
(ii) Any content of the application file necessary to satisfy the
foreign intellectual property office requirement for information
indicated in the respective agreement.
(3) Written authority provided under paragraphs (h)(1) and (h)(2)
of this section must include the title of the invention (Sec.
1.72(a)), comply with the requirements of paragraph (c) of this
section, and be submitted on an application data sheet (Sec. 1.76) or
on a separate document (Sec. 1.4(c)). The written authority provided
under these paragraphs should be submitted before filing any subsequent
foreign application in which priority is claimed to the application.
0
3. Section 1.19 is amended by revising paragraph (b)(1)(iv) to read as
follows:
Sec. 1.19 Document supply fees.
* * * * *
(b) * * *
(1) * * *
(iv) If provided to a foreign intellectual property office pursuant
to a bilateral or multilateral agreement (see Sec. 1.14(h)): $0.00.
* * * * *
Dated: July 2, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-16062 Filed 7-10-14; 8:45 am]
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