18990 Federal Register / Vol. 76, No. 66 / Wednesday, April 6, 2011 / Proposed Rules 

association determines is appropriate, 

taking into consideration the size of an 

issuer and any other relevant factors. 

(2) Authority to engage compensation 

consultants, independent legal counsel 

and other compensation advisers. The 

compensation committee of a listed 

issuer, in its capacity as a committee of 

the board of directors, may, in its sole 

discretion, retain or obtain the advice of 

a compensation consultant, 

independent legal counsel or other 

adviser. The compensation committee 

shall be directly responsible for the 

appointment, compensation and 

oversight of the work of any 

compensation consultant, independent 

legal counsel and other adviser to the 

compensation committee. Nothing in 

this paragraph (b) shall be construed: 

(i) To require the compensation 

committee to implement or act 

consistently with the advice or 

recommendations of the compensation 

consultant, independent legal counsel 

or other adviser to the compensation 

committee; or 

(ii) To affect the ability or obligation 

of a compensation committee to exercise 

its own judgment in fulfillment of the 

duties of the compensation committee. 

(3) Funding. Each listed issuer must 

provide for appropriate funding, as 

determined by the compensation 

committee, in its capacity as a 

committee of the board of directors, for 

payment of reasonable compensation to 

a compensation consultant, 

independent legal counsel or any other 

adviser to the compensation committee. 

(4) Independence of compensation 

consultants and other advisers. The 

compensation committee of a listed 

issuer may select a compensation 

consultant, legal counsel, or other 

adviser to the compensation committee 

only after taking into consideration the 

following factors, as well as any other 

factors identified by the relevant 

national securities exchange or national 

securities association in its listing 

standards: 

(i) The provision of other services to 

the issuer by the person that employs 

the compensation consultant, legal 

counsel or other adviser; 

(ii) The amount of fees received from 

the issuer by the person that employs 

the compensation consultant, legal 

counsel or other adviser, as a percentage 

of the total revenue of the person that 

employs the compensation consultant, 

legal counsel, or other adviser; 

(iii) The policies and procedures of 

the person that employs the 

compensation consultant, legal counsel 

or other adviser that are designed to 

prevent conflicts of interest; 

(iv) Any business or personal 

relationship of the compensation 

consultant, legal counsel, or other 

adviser with a member of the 

compensation committee; and 

(v) Any stock of the issuer owned by 

the compensation consultant, legal 

counsel or other adviser. 

(5) General exemptions. (i) The 

national securities exchanges and 

national securities associations, 

pursuant to section 19(b) of the Act (15 

U.S.C. 78s(b)) and the rules thereunder, 

may exempt from the requirements of 

this section certain categories of issuers, 

as the national securities exchange or 

national securities association 

determines is appropriate, taking into 

consideration the potential impact of 

such requirements on smaller reporting 

issuers. 

(ii) The requirements of this section 

shall not apply to any controlled 

company. 

(iii) The listing of a security futures 

product cleared by a clearing agency 

that is registered pursuant to section 

17A of the Act (15 U.S.C. 78q–1) or that 

is exempt from the registration 

requirements of section 17A(b)(7)(A) (15 

U.S.C. 78q–1(b)(7)(A)) is not subject to 

the requirements of this section. 

(iv) The listing of a standardized 

option, as defined in § 240.9b–1(a)(4), 

issued by a clearing agency that is 

registered pursuant to section 17A of the 

Act (15 U.S.C. 78q–1) is not subject to 

the requirements of this section. 

(c) Definitions. Unless the context 

otherwise requires, all terms used in 

this section have the same meaning as 

in the Act. In addition, unless the 

context otherwise requires, the 

following definitions apply for purposes 

of this section: 

(1) In the case of foreign private 

issuers with a two-tier board system, the 

term board of directors means the 

supervisory or non-management board. 

(2) The term controlled company 

means an issuer: 

(i) That is listed on a national 

securities exchange or by a national 

securities association; and 

(ii) That holds an election for the 

board of directors of the issuer in which 

more than 50 percent of the voting 

power is held by an individual, a group 

or another issuer. 

(3) The terms listed and listing refer 

to equity securities listed on a national 

securities exchange or listed in an 

automated inter-dealer quotation system 

of a national securities association or to 

issuers of such securities. 

(4) The term open-end management 

investment company means an openend company, as defined by Section 

5(a)(1) of the Investment Company Act 

of 1940 (15 U.S.C. 80a–5(a)(1)), that is 

registered under that Act. 

Dated: March 30, 2011. 

Elizabeth M. Murphy, 

Secretary. 

[FR Doc. 2011–7948 Filed 4–5–11; 8:45 am] 

BILLING CODE 8011–01–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Part 1 

[Docket No.: PTO–P–2011–0014] 

RIN 0651–AC56 

Revision of Patent Term Extension and 

Adjustment Provisions Relating to 

Appellate Review and Information 

Disclosure Statements 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Notice of proposed rulemaking. 

SUMMARY: The United States Patent and 

Trademark Office (Office) is proposing 

to revise the patent term adjustment and 

extension provisions of the rules of 

practice in patent cases. The patent term 

adjustment provisions of the American 

Inventors Protection Act of 1999 (AIPA) 

and the patent term extension 

provisions of the Uruguay Round 

Agreements Act (URAA) each provide 

for patent term extension or adjustment 

if the issuance of the patent was delayed 

due to appellate review by the Board of 

Patent Appeals and Interferences (BPAI) 

or by a Federal court and the patent was 

issued pursuant to or under a decision 

in the review reversing an adverse 

determination of patentability. The 

Office is proposing to change the rules 

of practice to indicate that in most 

circumstances an examiner reopening 

prosecution of the application after a 

notice of appeal has been filed will be 

considered a decision in the review 

reversing an adverse determination of 

patentability for purposes of patent term 

adjustment or extension purposes. 

Therefore, in such situations, patentees 

would be entitled to patent term 

extension or adjustment. In addition, 

the AIPA provides for a reduction of any 

patent term adjustment if the applicant 

failed to engage in reasonable efforts to 

conclude prosecution of the application. 

The Office is also proposing to change 

the rules of practice pertaining to the 

reduction of patent term adjustment for 

applicant delays to exclude information 

disclosure statements resulting from the 

citation of information by a foreign 

patent office in a counterpart 


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application that are promptly filed with 

the Office. For example, under the 

proposed rule, there would not be a 

reduction of patent term adjustment in 

the following situations: When 

applicant promptly submits a reference 

in an information disclosure statement 

after the mailing of a notice of 

allowance if the reference was cited by 

the Office in another application, or 

when applicant promptly submits a 

copy of an Office communication (e.g., 

an Office action) in an information 

disclosure statement after the mailing of 

a notice of allowance if the Office 

communication was issued by the Office 

in another application or by a foreign 

patent office in a counterpart foreign 

application. 

DATES: Written comments must be 

received on or before May 6, 2011. No 

public hearing will be held. 

ADDRESSES: Comments concerning this 

proposed rule should be sent by 

electronic mail message over the 

Internet addressed to 

AC56.comments@uspto.gov. Comments 

may also be submitted by mail 

addressed to: Mail Stop Comments— 

Patents, Commissioner for Patents, P.O. 

Box 1450, Alexandria, VA 22313–1450, 

marked to the attention of Kery A. Fries, 

Senior Legal Advisor, Office of Patent 

Legal Administration, Office of the 

Associate Commissioner for Patent 

Examination Policy. Although 

comments may be submitted by mail, 

the Office prefers to receive comments 

via the Internet. 

Comments may also 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. 

The comments will be available for 

public inspection at the Office of the 

Commissioner for Patents, located in 

Madison East, Tenth Floor, 600 Dulany 

Street, Alexandria, Virginia, and will be 

available via the Internet (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: Kery 

A. Fries, Senior Legal Advisor, Office of 

Patent Legal Administration, by 

telephone at 571–272–7757, by mail 

addressed to: Box Comments—Patents, 

Commissioner for Patents, P.O. Box 

1450, Alexandria, VA 22313–1450, 

marked to the attention of Kery A. Fries. 

SUPPLEMENTARY INFORMATION: Section 

532(a) of the URAA (Pub. L. 103–465, 

108 Stat. 4809 (1994)) amended 35 

U.S.C. 154 to provide that the term of 

a patent ends on the date that is twenty 

years from the filing date of the 

application, or the earliest filing date for 

which a benefit is claimed under 35 

U.S.C. 120, 121, or 365(c). The URAA 

also contained provisions, codified at 35 

U.S.C. 154(b), for patent term extension 

due to certain examination delays. 

Under the patent term extension 

provisions of 35 U.S.C. 154(b) as 

amended by the URAA, an applicant is 

entitled to patent term extension for 

delays due to interference, secrecy 

order, or successful appellate review. 

See 35 U.S.C. 154(b) (1995). The Office 

implemented the patent term extension 

provisions of the URAA in a final rule 

published in April of 1995. See Changes 

to Implement 20-Year Patent Term and 

Provisional Applications, 60 FR 20195 

(Apr. 25, 1995) (twenty-year patent term 

final rule). 

The AIPA (Pub. L. 106–113, 113 Stat. 

1501, 1501A–552 through 1501A–591 

(1999)) further amended 35 U.S.C. 

154(b) to include additional bases for 

patent term extension (characterized as 

‘‘patent term adjustment’’ in the AIPA). 

Original utility and plant patents 

issuing from applications filed on or 

after May 29, 2000, may be eligible for 

patent term adjustment if issuance of 

the patent is delayed due to one or more 

of the enumerated administrative delays 

listed in 35 U.S.C. 154(b)(1). 

Specifically, under the patent term 

adjustment provisions of 35 U.S.C. 

154(b) as amended by the AIPA, an 

applicant is entitled to patent term 

adjustment for the following reasons: (1) 

If the Office fails to take certain actions 

during the examination and issue 

process within specified time frames (35 

U.S.C. 154(b)(1)(A)); (2) if the Office 

fails to issue a patent within three years 

of the actual filing date of the 

application (35 U.S.C. 154(b)(1)(B)); and 

(3) for delays due to interference, 

secrecy order, or successful appellate 

review (35 U.S.C. 154(b)(1)(C)). See 35 

U.S.C. 154(b)(1). The AIPA, however, 

sets forth a number of conditions and 

limitations on any patent term 

adjustment accrued under 35 U.S.C. 

154(b)(1). Specifically, 35 U.S.C. 

154(b)(2)(C) provides, in part, that ‘‘[t]he 

period of adjustment of the term of a 

patent under [35 U.S.C. 154(b)(1)] shall 

be reduced by a period equal to the 

period of time during which the 

applicant failed to engage in reasonable 

efforts to conclude prosecution of the 

application’’ and that ‘‘[t]he Director 

shall prescribe regulations establishing 

the circumstances that constitute a 

failure of an applicant to engage in 

reasonable efforts to conclude 

processing or examination of an 

application.’’ 35 U.S.C. 154(b)(2)(C)(i) 

and (iii). The Office implemented the 

patent term adjustment provisions of 35 

U.S.C. 154(b) as amended by the AIPA, 

including setting forth the 

circumstances that constitute a failure of 

an applicant to engage in reasonable 

efforts to conclude processing or 

examination of an application, in a final 

rule published in September of 2000. 

See Changes to Implement Patent Term 

Adjustment Under Twenty-Year Patent 

Term, 65 FR 56365 (Sept. 18, 2000) 

(patent term adjustment final rule). 

The patent term adjustment 

provisions of the AIPA apply to original 

(i.e., non-reissue) utility and plant 

applications filed on or after May 29, 

2000. See Changes to Implement Patent 

Term Adjustment Under Twenty-Year 

Patent Term, 65 FR at 56367. The patent 

term extension provisions of the URAA 

(for delays due to secrecy order, 

interference or successful appellate 

review) continue to apply to original 

utility and plant applications filed on or 

after June 8, 1995, and before May 29, 

2000. See id. 

Revision of Patent Term Extension 

and Patent Term Adjustment Provisions 

Relating to Decisions During Appellate 

Review: Under the patent term 

adjustment final rule published in 2000, 

the Office initially stated that for a 

decision by the BPAI to be ‘‘a decision 

in the review reversing an adverse 

determination of patentability’’ within 

the meaning of 35 U.S.C 

154(b)(1)(C)(iii), the decision must 

sustain or reverse the rejection(s) of 

claims(s) on appeal. See Changes to 

Implement Patent Term Adjustment 

Under Twenty-Year Patent Term, 65 FR 

at 56368. The Office further stated that 

a remand or other administrative order 

by the BPAI even if by a merits panel 

would not be considered ‘‘a decision in 

the review reversing an adverse 

determination of patentability’’ in the 35 

U.S.C. 154(b)(1)(C)(iii). See id. at 56369. 

The Office subsequently determined 

that there were a number of BPAI panel 

remands that conveyed the weakness in 

the examiner’s adverse patentability 

determination in a manner tantamount 

to a decision reversing the adverse 

patentability determination. See 

Revision of Patent Term Adjustment 

and Extensions, 69 FR 21704 (April 22, 

2004) (2004 patent term adjustment/ 

extension final rule). Generally, the 

remands resulted in the examiner 

allowing the application (either with or 

without further action by applicant) 

without returning the application to the 


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BPAI for a decision on the appeal. The 

2004 patent term adjustment/extension 

final rule addressed the situation in 

which an examiner responds to a 

remand by a BPAI panel by allowing the 

application (either with or without 

further action by applicant), rather than 

returning the application to the BPAI for 

a decision on the appeal. See id. at 

21705. In that situation, the BPAI panel 

remand was considered ‘‘a decision in 

the review reversing an adverse 

determination of patentability’’ for 

patent term extension and patent term 

adjustment purposes. See id.; see also 

37 CFR 1.701(a)(3) and 1.702(e). This 

change in the 2004 patent term 

adjustment/extension final rule, 

however, did not apply if, after the BPAI 

panel remand, appellant filed a request 

for continued examination under 35 

U.S.C. 132(b) (37 CFR 1.114) that was 

not first preceded by the mailing, after 

such remand, of an action under 35 

U.S.C. 132 or a notice of allowance 

under 35 U.S.C. 151. See id.; see also 37 

CFR 1.701(a)(3) and 1.702(e). 

In 2005, the Office instituted a pilot 

program to provide an appellant the 

opportunity to request that a panel of 

examiners formally review the legal and 

factual bases of the rejections in his or 

her application prior to the filing of an 

appeal brief. See New Pre-Appeal Brief 

Conference Pilot Program, 1260 Off. 

Gaz. Pat. Office 67 (July 12, 2005). In the 

pilot program, the Office indicated that 

a decision by a pre-appeal brief 

conference panel to withdraw any or all 

of the claims on appeal is not a decision 

by the panel of the BPAI, and as such, 

would not result in any patent term 

adjustment or extension under 35 U.S.C. 

154(b). See id. 

This pilot program has resulted in a 

number of situations in which 

prosecution is reopened. The Office has 

now concluded that it may and, in most 

situations, should treat a decision in a 

pre-appeal brief review reopening 

prosecution and issuing an Office action 

or notice of allowance as a ‘‘decision in 

the review reversing an adverse 

determination of patentability’’ under 35 

U.S.C. 154(b)(1)(C)(iii). Prior to 2005, 

the vast majority of applications in 

which a notice of appeal and appeal 

brief were filed were forwarded to the 

BPAI for a decision on the appeal. That 

is, prior to 2005, the only notable 

‘‘decision in the review’’ of an 

application on appeal was a decision by 

the BPAI. Under current Office practice, 

however, the application in which a 

notice of appeal has been filed may be 

subject to a pre-appeal brief review and 

will be subject to a post-appeal brief 

review before the application will be 

forwarded to the BPAI for a decision by 

the BPAI. Thus, under current Office 

practice, the process for seeking 

appellate review by the BPAI involves at 

least one decision in the review before 

the application is forwarded to the 

BPAI, and a decision in these pre-BPAI 

reviews may result in the reopening of 

prosecution and issuance of an Office 

action or notice of allowance. Since in 

many such situations the reopening of 

the application after notice of appeal 

has been filed is the result of a decision 

in the pre-BPAI review that there is 

some weakness in the adverse 

patentability determination from which 

the appeal was taken, the Office now 

considers it appropriate to treat such 

situations as a ‘‘decision in the review 

reversing an adverse determination of 

patentability’’ under 35 U.S.C. 

154(b)(1)(C)(iii). Consequently, the 

Office has determined that it is prudent 

as a matter of policy to allow for a 

correspondent positive patent term 

adjustment when an examiner reverses 

his or her prior rejection under these 

circumstances. 

Accordingly, the Office is proposing 

to revise the patent term adjustment and 

extension provisions to provide, with 

certain exceptions, that an examiner 

reopening prosecution will be 

considered a ‘‘decision in the review 

reversing an adverse determination of 

patentability,’’ and therefore result in 

the possibility of patent term adjustment 

under 35 U.S.C. 154(b). The Office notes 

that not all reopening of prosecution 

after the filing of a notice of appeal will 

be considered a ‘‘decision in the review 

reversing an adverse determination of 

patentability.’’ For example, the 

reopening of prosecution after a notice 

of appeal resulting from an applicant 

filing a request for continued 

examination (RCE) (proper or improper) 

will not be considered a ‘‘decision in the 

review reversing an adverse 

determination of patentability’’ and will 

not result in patent term adjustment 

under 35 U.S.C. 154(b). Furthermore, 

any reopening of prosecution or 

issuance of a notice of allowance under 

35 U.S.C. 151 resulting from an 

applicant filing an amendment pursuant 

to 37 CFR 41.33 canceling all claims on 

appeal will not be considered a 

‘‘decision in the review reversing an 

adverse determination of patentability’’ 

and will not result in patent term 

adjustment under 35 U.S.C. 154(b). 

Moreover, any reopening of prosecution 

or issuance of a notice of allowance 

under 35 U.S.C. 151 resulting from the 

applicant filing a request to dismiss or 

withdraw the appeal will not be 

considered a ‘‘decision in the review 

reversing an adverse determination of 

patentability’’ and will not result in 

patent term adjustment under 35 U.S.C. 

154(b). 

If the patent issues after an examiner 

reopens prosecution after the filing of a 

notice of appeal, and the reopening of 

prosecution is considered ‘‘a decision in 

the review reversing an adverse 

determination of patentability,’’ then the 

reopening of prosecution is deemed by 

the Office to be the ‘‘final decision in 

favor of the applicant’’ for purposes of 

a patent term extension or adjustment 

calculation under 37 CFR 1.701(c)(3) or 

1.703(e) (as applicable). The period of 

extension or adjustment calculated 

under 37 CFR 1.701(c)(3) or 1.703(e) (as 

applicable) would equal the number of 

days in the period beginning on the date 

on which a notice of appeal to the BPAI 

was filed under 35 U.S.C. 134 and 37 

CFR 41.31 and ending on the date of 

mailing of the Office action under 35 

U.S.C.132 or a notice of allowance 

under 35 U.S.C. 151. 

Revisions of Patent Term Extension 

and Patent Term Adjustment Provisions 

Relating to Information Disclosure 

Statements: Section 1.704(c) provides 

that the submission of an information 

disclosure statement either that is after 

a notice of allowance or that requires a 

supplemental Office action results in a 

reduction of any patent term adjustment 

under 37 CFR 1.703. See 37 CFR 

1.704(c)(6), 1.704(c)(8), 1.704(c)(9), and 

(c)(10). Section 1.704(d) provides that 

an information disclosure statement will 

not result in a patent term adjustment 

reduction under 37 CFR 1.704(c)(6), 

1.704(c)(8), 1.704(c)(9), or (c)(10) if it is 

accompanied by a certification 

(statement) that each item of 

information contained in the 

information disclosure statement was 

first cited in a communication from a 

foreign patent office in a counterpart 

application and that this 

communication was not received by any 

individual designated in 37 CFR 1.56(c) 

more than thirty days prior to the filing 

of the information disclosure statement. 

37 CFR 1.704(d) permits applicants to 

submit information first cited in a 

communication from a foreign patent 

office in a counterpart application to the 

Office without a reduction in patent 

term adjustment if an information 

disclosure statement is promptly 

(within thirty days of receipt of the 

communication) submitted to the Office. 

Recent decisions by the U.S. Court of 

Appeals for the Federal Circuit (Federal 

Circuit) underscore the importance of 

making information cited and Office 

actions issued in related copending 

foreign and domestic applications of 

record. See Dayco Products, Inc. v. Total 

Containment, Inc., 329 F.3d 1358 (Fed. 


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Cir. 2003) and McKesson Info. Solutions, 

Inc. v. Bridge Medical, Inc., 487 F.3d 

897 (Fed. Cir. 2007); see also Larson 

Mfg. Co. v. Aluminart Products Ltd., 559 

F.3d 1317 (Fed. Cir. 2009) (relating to 

disclosure in a U.S. reexamination 

proceeding of U.S. Office actions that 

were issued in a continuation 

application of the patent under 

reexamination). The Office is proposing 

to revise 37 CFR 1.704(d) to also 

embrace information first cited in a 

communication from the Office, as well 

as the communication (e.g., Office 

action) in a counterpart foreign or 

international application or from the 

Office itself. 

Obviously, meeting the conditions set 

forth in 37 CFR 1.704(d) does not 

substitute for compliance with any 

relevant requirement of 37 CFR 1.97 or 

1.98. 

Discussion of Specific Rules 

Title 37 of the Code of Federal 

Regulations, Part 1, is proposed to be 

amended as follows: 

Section 1.701: Section 1.701(a)(3) is 

proposed to be amended to take into 

account the situation in which the 

Office reopens prosecution after a 

timely notice of appeal has been filed 

but before any decision by the BPAI and 

issues an Office action under 35 U.S.C. 

132 (i.e., a new non-final or final Office 

action) or notice of allowance under 35 

U.S.C. 151. The reopening of 

prosecution in this situation will in 

most circumstances also be considered 

a decision in the review reversing an 

adverse determination of patentability 

as that phrase is used in 35 U.S.C. 

154(b)(2) as amended by the URAA, and 

a final decision in favor of the applicant 

under § 1.701(c)(3). An examiner’s 

answer containing a new ground of 

rejection is not an Office action under 

35 U.S.C. 132, and is not the Office 

reopening prosecution. Section 

1.701(a)(3) is also proposed to be 

amended by adding a sentence to 

provide that a reopening of prosecution 

after a notice of appeal has been filed 

will not be considered a decision in the 

review reversing an adverse 

determination of patentability as 

provided in § 1.701(a)(3) if appellant 

files a request to withdraw the appeal, 

an amendment pursuant to § 41.33 

canceling all of the claims on appeal, or 

a request for continued examination 

under 35 U.S.C. 132(b). 

Section 1.702: Section 1.702(e) is 

proposed to be amended to take into 

account the situation in which the 

Office reopens prosecution after a 

timely notice of appeal has been filed 

but before any decision by the BPAI and 

issues an Office action under 35 U.S.C. 

132 (i.e., a new non-final or final Office 

action) or notice of allowance under 35 

U.S.C. 151. The reopening of 

prosecution in this situation will in 

most circumstances also be considered 

a decision by the BPAI as that phrase is 

used in 35 U.S.C. 154(b)(1)(A)(iii), a 

decision in the review reversing an 

adverse determination of patentability 

as that phrase is used in 35 U.S.C. 

154(b)(1)(C)(iii), and a final decision in 

favor of the applicant under § 1.703(e). 

An examiner’s answer containing a new 

ground of rejection is not an Office 

action under 35 U.S.C. 132, and is not 

the Office reopening prosecution. 

Section 1.702(e) is further amended by 

adding a sentence to provide that a 

reopening of prosecution after a notice 

of appeal has been filed will not be 

considered a decision in the review 

reversing an adverse determination of 

patentability as provided in § 1.702(e) if 

appellant files a request to withdraw the 

appeal, an amendment pursuant to 

§ 41.33 canceling all of the claims on 

appeal, or a request for continued 

examination under 35 U.S.C. 132(b). 

Section 1.704: Section 1.704(d) is 

amended to change ‘‘any 

communication from a foreign patent 

office in a counterpart application’’ to 

‘‘any communication from a patent 

office in a counterpart foreign or 

international application or from the 

Office’’ and add ‘‘ or is a communication 

that was issued by a patent office in a 

counterpart foreign or international 

application or by the Office.’’ This 

change revises § 1.704(d) to also 

embrace information first cited in a 

communication from the Office, as well 

as the communication (e.g., Office 

action) in a counterpart foreign or 

international application or from the 

Office itself. For example, under the 

proposed rule, there would not be a 

reduction of patent term adjustment in 

the following situations: (1) When 

applicant promptly submits a reference 

in an information disclosure statement 

after the mailing of a notice of 

allowance if the reference was cited by 

the Office in another application, or (2) 

when applicant promptly submits a 

copy of an Office communication (e.g., 

an Office action) in an information 

disclosure statement after the mailing of 

a notice of allowance if the Office 

communication was issued by the Office 

in another application or by a foreign 

patent office in a counterpart foreign 

application. 

Rulemaking Considerations 

A. 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 proposed rule will not have a 

significant economic impact on a 

substantial number of small entities. See 

5 U.S.C. 605(b). 

This rule making involves: (1) 

Indicating that in most circumstances an 

examiner reopening prosecution of the 

application after a notice of appeal has 

been filed will be considered a ‘‘decision 

in the review reversing an adverse 

determination of patentability’’ for 

patent term adjustment or extension 

purposes; and (2) indicating that the 

exception to the patent term adjustment 

reduction for filing an information 

disclosure statement after a notice of 

allowance or that requires a 

supplemental Office action for 

information disclosure statements for 

information cited by a foreign patent 

office in a counterpart application that 

are promptly filed with the Office is 

expanded to also embrace information 

first cited by the Office in another 

application. This proposed rule does not 

propose to add any additional 

requirements (including information 

collection requirements) or fees for 

patent applicants or patentees. 

Therefore, the changes proposed in this 

proposed rule will not have a significant 

economic impact on a substantial 

number of small entities. 

B. Executive Order 12866 (Regulatory 

Planning and Review): This rule making 

has been determined to be not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

C. Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563. Specifically, the Office 

has: (1) Used the best available 

techniques to quantify costs and 

benefits, and has considered values 

such as equity, fairness and distributive 

impacts; (2) provided the public with a 

meaningful opportunity to participate in 

the regulatory process, including 

soliciting the views of those likely 

affected prior to issuing a notice of 

proposed rule making, and provided online access to the rule making docket; 

(3) attempted to promote coordination, 

simplification and harmonization across 

government agencies and identified 

goals designed to promote innovation; 

(4) considered approaches that reduce 

burdens and maintain flexibility and 

freedom of choice for the public; and (5) 

ensured the objectivity of scientific and 

technological information and 

processes, to the extent applicable. 

D. Executive Order 13132 

(Federalism): This rule making does not 

contain policies with federalism 


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18994 Federal Register / Vol. 76, No. 66 / Wednesday, April 6, 2011 / Proposed Rules 

implications sufficient to warrant 

preparation of a Federalism Assessment 

under Executive Order 13132 (Aug. 4, 

1999). 

E. Executive Order 13175 (Tribal 

Consultation): This rule making 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 rule making is not a 

significant energy action under 

Executive Order 13211 because this rule 

making 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 effect 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 United States 

Patent and Trademark Office will 

submit a report containing the final rule 

and other required information to the 

U.S. Senate, the U.S. 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). 

K. Unfunded Mandates Reform Act of 

1995: The changes proposed 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. 

L. National Environmental Policy Act: 

This rulemaking will not have any effect 

on the quality of 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 which involve 

the use of technical standards. 

N. Paperwork Reduction Act: The 

rules of practice pertaining to patent 

term adjustment and extension have 

been reviewed and approved by the 

Office of Management and Budget 

(OMB) under the Paperwork Reduction 

Act of 1995 (44 U.S.C. 3501 et seq.) 

under OMB control number 0651–0020. 

As discussed previously, this 

rulemaking involves: (1) Indicating that 

in most circumstances an examiner 

reopening prosecution of the 

application after a notice of appeal has 

been filed will be considered a ‘‘decision 

in the review reversing an adverse 

determination of patentability’’ for 

patent term adjustment or extension 

purposes; and (2) indicating that the 

exception to the patent term adjustment 

reduction for filing an information 

disclosure statement after a notice of 

allowance or that requires a 

supplemental Office action for 

information disclosure statements for 

information cited by a foreign patent 

office in a counterpart application that 

are promptly filed with the Office is 

expanded to also embrace information 

first cited by the Office in another 

application. This proposed rule does not 

propose to add any additional 

requirements (including information 

collection requirements) or fees for 

patent applicants or patentees. 

Therefore, the Office is not resubmitting 

information collection packages to OMB 

for its review and approval because the 

changes proposed in this proposed rule 

do not affect the information collection 

requirements associated with the 

information collections under OMB 

control number 0651–0020. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall any 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 record keeping 

requirements, Small Businesses. 

For the reasons set forth in the 

preamble, 37 CFR part 1 is proposed to 

be amended as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

1. The authority citation for 37 CFR 

part 1 continues to read as follows: 

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

2. Section 1.701 is amended by 

revising paragraph (a)(3) to read as 

follows: 

§ 1.701 Extension of patent term due to 

examination delay under the Uruguay 

Round Agreements Act (original 

applications, other than designs, filed on or 

after June 8, 1995, and before May 29, 

2000). 

(a) * * * 

(3) Appellate review by the Board of 

Patent Appeals and Interferences or by 

a Federal court under 35 U.S.C. 141 or 

145, if the patent was issued pursuant 

to a decision in the review reversing an 

adverse determination of patentability 

and if the patent is not subject to a 

terminal disclaimer due to the issuance 

of another patent claiming subject 

matter that is not patentably distinct 

from that under appellate review. If an 

application is remanded by a panel of 

the Board of Patent Appeals and 

Interferences and the remand is the last 

action by a panel of the Board of Patent 

Appeals and Interferences prior to the 

mailing of a notice of allowance under 

35 U.S.C. 151 in the application or if the 

Office reopens prosecution after a notice 

of appeal has been filed but before any 

decision by the Board of Patent Appeals 

and Interferences and issues an Office 

action under 35 U.S.C. 132 or notice of 

allowance under 35 U.S.C. 151, the 

remand or issuance of an Office action 

under 35 U.S.C. 132 or notice of 

allowance under 35 U.S.C. 151 shall be 


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Federal Register / Vol. 76, No. 66 / Wednesday, April 6, 2011 / Proposed Rules 18995 

considered a decision in the review 

reversing an adverse determination of 

patentability as that phrase is used in 35 

U.S.C. 154(b)(2) as amended by section 

532(a) of the Uruguay Round 

Agreements Act, Public Law 103–465, 

108 Stat. 4809, 4983–85 (1994), and a 

final decision in favor of the applicant 

under paragraph (c)(3) of this section. A 

remand by a panel of the Board of 

Patent Appeals and Interferences shall 

not be considered a decision in the 

review reversing an adverse 

determination of patentability as 

provided in this paragraph if there is 

filed a request for continued 

examination under 35 U.S.C. 132(b) that 

was not first preceded by the mailing, 

after such remand, of at least one of an 

action under 35 U.S.C. 132 or a notice 

of allowance under 35 U.S.C. 151. A 

reopening of prosecution after a notice 

of appeal has been filed shall not be 

considered a decision in the review 

reversing an adverse determination as 

provided in this paragraph if appellant 

files a request to withdraw the appeal, 

an amendment pursuant to § 41.33 of 

this chapter canceling all of the claims 

on appeal, or a request for continued 

examination under 35 U.S.C. 132(b). 

* * * * * 

3. Section 1.702 is proposed to be 

amended by revising paragraph (e) to 

read as follows: 

§ 1.702 Grounds for adjustment of patent 

term due to examination delay under the 

Patent Term Guarantee Act of 1999 (original 

applications, other than designs, filed on or 

after May 29, 2000). 

* * * * * 

(e) Delays caused by successful 

appellate review. Subject to the 

provisions of 35 U.S.C. 154(b) and this 

subpart, the term of an original patent 

shall be adjusted if the issuance of the 

patent was delayed due to review by the 

Board of Patent Appeals and 

Interferences under 35 U.S.C. 134 or by 

a Federal court under 35 U.S.C. 141 or 

145, if the patent was issued under a 

decision in the review reversing an 

adverse determination of patentability. 

If an application is remanded by a panel 

of the Board of Patent Appeals and 

Interferences and the remand is the last 

action by a panel of the Board of Patent 

Appeals and Interferences prior to the 

mailing of a notice of allowance under 

35 U.S.C. 151 in the application or if the 

Office reopens prosecution after a notice 

of appeal has been filed but before any 

decision by the Board of Patent Appeals 

and Interferences and issues an Office 

action under 35 U.S.C. 132 or notice of 

allowance under 35 U.S.C. 151, the 

remand or issuance of an Office action 

under 35 U.S.C. 132 or notice of 

allowance under 35 U.S.C. 151 shall be 

considered a decision in the review 

reversing an adverse determination of 

patentability as that phrase is used in 35 

U.S.C. 154(b)(1)(C)(iii), and a final 

decision in favor of the applicant under 

§ 1.703(e). A remand by a panel of the 

Board of Patent Appeals and 

Interferences shall not be considered a 

decision in the review reversing an 

adverse determination of patentability 

as provided in this paragraph if there is 

filed a request for continued 

examination under 35 U.S.C. 132(b) that 

was not first preceded by the mailing, 

after such remand, of at least one of an 

action under 35 U.S.C. 132 or a notice 

of allowance under 35 U.S.C. 151. A 

reopening of prosecution after a notice 

of appeal has been filed shall not be 

considered a decision in the review 

reversing an adverse determination as 

provided in this paragraph if appellant 

files a request to withdraw the appeal, 

an amendment pursuant to § 41.33 of 

this title canceling all of the claims on 

appeal, or a request for continued 

examination under 35 U.S.C. 132(b). 

* * * * * 

4. Section 1.704 is amended by 

revising paragraph (d) to read as 

follows: 

§ 1.704 Reduction of period of adjustment 

of patent term. 

* * * * * 

(d)(1) A paper containing only an 

information disclosure statement in 

compliance with §§ 1.97 and 1.98 will 

not be considered a failure to engage in 

reasonable efforts to conclude 

prosecution (processing or examination) 

of the application under paragraphs 

(c)(6), (c)(8), (c)(9), or (c)(10) of this 

section if it is accompanied by a 

statement that each item of information 

contained in the information disclosure 

statement: 

(i) Was first cited in any 

communication from a patent office in 

a counterpart foreign or international 

application or from the Office and this 

communication was not received by any 

individual designated in § 1.56(c) more 

than thirty days prior to the filing of the 

information disclosure statement; or 

(ii) Is a communication that was 

issued by a patent office in a 

counterpart foreign or international 

application or by the Office and this 

communication was not received by any 

individual designated in § 1.56(c) more 

than thirty days prior to the filing of the 

information disclosure statement. 

(2) The thirty-day period set forth in 

paragraph (d)(1) of this section is not 

extendable. 

* * * * * 

Teresa Stanek Rea, 

Deputy Under Secretary of Commerce for 

Intellectual Property and Deputy Director of 

the United States Patent and Trademark 

Office. 

[FR Doc. 2011–8275 Filed 4–5–11; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Part 168 

[EPA–HQ–OPP–2009–0607; FRL–8862–2] 

RIN 2070–AJ53 

Pesticides; Regulation to Clarify 

Labeling of Pesticides for Export 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Proposed rule. 

SUMMARY: EPA is proposing to revise the 

regulations on labeling of pesticides and 

devices intended for export. Internal 

review of the regulations revealed that 

the current regulations needed 

clarification and restructuring to 

increase understandability and ease of 

use. 

DATES: Comments must be received on 

or before June 6, 2011. 

ADDRESSES: Submit your comments, 

identified by docket identification (ID) 

number EPA–HQ—OPP–2009–0607, by 

one of the following methods: 

• Federal eRulemaking Portal: http:// 

www.regulations.gov. Follow the on-line 

instructions for submitting comments. 

• Mail: Office of Pesticide Programs 

(OPP) Regulatory Public Docket (7502P), 

Environmental Protection Agency, 1200 

Pennsylvania Ave., NW., Washington, 

DC 20460–0001. 

• Delivery: OPP Regulatory Public 

Docket (7502P), Environmental 

Protection Agency, Rm. S–4400, One 

Potomac Yard (South Bldg.), 2777 S. 

Crystal Dr., Arlington, VA. Deliveries 

are only accepted during the Docket 

Facility’s normal hours of operation 

(8:30 a.m. to 4 p.m., Monday through 

Friday, excluding legal holidays). 

Special arrangements should be made 

for deliveries of boxed information, The 

Docket Facility telephone number is 

(703) 305–5805. 

Instructions: Direct your comments to 

docket ID number EPA–HQ–OPP–2009– 

0607. EPA’s policy is that all comments 

received will be included in the docket 

without change and may be made 


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