69446 Federal Register / Vol. 65, No. 223 / Friday, November 17, 2000 / Rules and Regulations

DEPARTMENT OF COMMERCE

United States Patent and Trademark

Office

37 CFR Part 1

RIN 0651–AB19

Treatment of Unlocatable Patent

Application and Patent Files

AGENCY: United States Patent and

Trademark Office, Commerce.

ACTION: Final rule.

SUMMARY: The United States Patent and

Trademark Office is amending the rules

of practice to provide for the

replacement of patent application and

patent files that cannot be located after

a reasonable search. This change is

designed to expedite the process of

application and patent file

reconstruction to minimize the

processing or examination delays

resulting when the Office cannot locate

an application or patent file after a

reasonable search.

EFFECTIVE DATE: November 17, 2000.

FOR FURTHER INFORMATION CONTACT:

Robert W. Bahr by telephone at (703)

308–6906, or by mail addressed to: Box

Comments—Patents, Commissioner for

Patents, Washington, DC 20231, or by

facsimile to (703) 872–9411, marked to

the attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: Over

330,000 patent applications (provisional

and nonprovisional) were filed in the

United States Patent and Trademark

Office (Office) in fiscal year 1999. On

occasion, an application or patent file

cannot be located.

When a patent application or patent

file cannot be located after a reasonable

search and the application or patent file

is necessary to conduct business before

the Office, the Office will ‘‘reconstruct’’

the application or patent file. This

involves placing a duplicate copy of the

original application papers and all of

the correspondence between the Office

and applicant or patentee in a new file

wrapper. The Office currently (since the

spring of 1997) uses its Patent

Application Capture and Review

(PACR) system to image scan the

application papers submitted on the

filing date of the application (except for

any appendix or information disclosure

statement) and to create an electronic

database (PACR database) containing a

duplicate record of the original

application papers (application papers

were microfilmed prior to the spring of

1997). Thus, the Office can obtain a

copy of the original application papers

from its PACR database (or microfilm

records).

The Office, however, does not possess

a duplicate copy of subsequent

correspondence from the applicant or

patentee (e.g., applicant replies or other

papers) concerning the application or

patent. While the Office may have a

copy of some Office correspondence

(Office actions saved on a disc or

computer hard drive), the Office often

does not possess a complete copy of the

Office correspondence concerning the

application or patent (e.g., paper-based

forms or notices). Thus, to reconstruct a

file accurately, the Office must request

that the applicant or patentee either

provide a complete copy of his or her

record of the correspondence between

the Office and the applicant or patentee,

or produce his or her record of the

correspondence between the Office and

the applicant or patentee for the Office

to copy.

Formerly, the request that applicant

provide a copy of (or produce) his or her

record of the correspondence between

the Office and the applicant did not

require a reply within any set time

period. In a pending application, this

added to the delay in processing and

examination resulting from the inability

to locate the application file. To

expedite the process of reconstructing

the file of an application or patent file,

the Office is amending the rules of

practice to provide that the Office will

now set a time period within which

applicant or patentee must either

provide a complete copy of his or her

record of the correspondence between

the Office and the applicant or patentee,

or produce his or her record of the

correspondence between the Office and

the applicant or patentee for the Office

to copy. Since the Office cannot

continue to examine an application for

which it does not have a complete copy,

the failure to provide a copy of (or

produce) his or her record of the

correspondence between the Office and

the applicant in a pending application

within this time period will result in

abandonment of the application. See 35

U.S.C. 133 (failure to prosecute an

application in a timely manner ‘‘after

any action therein’’ shall be regarded as

abandonment of the application).

Corresponding with an applicant or

patentee when an application is

abandoned or patented is often difficult

because address information is often not

current. There are many good reasons

for keeping correspondence information

current in an abandoned application or

patent. Patent applicants and patent

owners should keep the correspondence

address and any fee address current for

the patent to ensure that

correspondence is mailed to applicant’s

or patentee’s current address. In an

abandoned application, the Office may

attempt to communicate with applicant

regarding a petition for access. If the

address has not been updated, then the

Office may not be able to consider

applicant’s views in deciding whether

to release the application to a member

of the public. The Customer Number

Practice described in section 403 of the

Manual of Patent Examining Procedure

(MPEP) (7th ed. 1998) (Rev. 1, Feb.

2000) provides a procedure where a

patent applicant or owner can easily

change the correspondence address for

a number of patents or patent

applications. In addition, the ‘‘Fee

Address’’ Indication Form (PTO/SB/47)

(reproduced at MPEP 2595) enables a

patent owner to complete one form to

designate a single fee address for any

number of patents or applications in

which the issue fee has been paid.

When changing the address(es)

associated with a patent, the patent

owner should bear in mind that the

Office has a number of addresses related

to the patent: (1) An application

correspondence address; (2) the return

address for the assignment documents;

and (3) the fee address for maintenance

fee purposes. See MPEP 2540. The

correspondence address is the address

to which Office actions and notices are

mailed during the patent application

process and is often not current within

a few years of patent issuance. As a

result, the regulations related to

reexamination proceedings require that

a patent owner be served with a copy of

a Reexamination Request at the Office of

Enrollment and Discipline address for

the attorney or agent of record, if there

is an attorney or agent of record. See

MPEP 2220. If there is no attorney or

agent of record, the copy is required to

be served upon the patent owner. See 37

CFR 1.33(c). In the procedure to obtain

a copy of a patent file set forth in this

notice, the request will be directed to

the correspondence address.

The Office is planning for full

electronic submission of applications

and related documents by fiscal year

2003. Once the Office transitions to a

total Electronic File Wrapper

environment, the inability to locate a

paper application file should no longer

be a significant issue. However, this rule

change is necessary to provide for the

replacement of unlocatable application

and patent files until the Office has

completely transitioned to a total

Electronic File Wrapper environment.

Discussion of Specific Rules

Title 37 of the Code of Federal

Regulations, Part 1, is amended as

follows:

Federal Register / Vol. 65, No. 223 / Friday, November 17, 2000 / Rules and Regulations 69447

Section 1.251 is added to set forth a

procedure for the reconstruction of the

file of a patent application, patent, or

any other patent-related proceeding that

cannot be located after a reasonable

search. The phrase ‘‘an application’’

applies to any type of application

(national or international), and

regardless of the status (pending or

abandoned) of the application.

Section 1.251(a) provides that in the

event the Office cannot locate the file of

an application, patent, or any other

patent-related proceeding after a

reasonable search, the Office will notify

the applicant or patentee and set a time

period within which the applicant or

patentee must comply with the notice.

The applicant or patentee may comply

with a notice under § 1.251 by

providing: (1) A copy of his or her

record (if any) of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding

(except for U.S. patent documents); (2)

a list of such correspondence; and (3) a

statement that the copy is a complete

and accurate copy of the applicant’s or

patentee’s record of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding

(except for U.S. patent documents), and

whether applicant or patentee is aware

of any correspondence between the

Office and the applicant or patentee for

such application, patent, or other

proceeding that is not among applicant’s

or patentee’s records (§ 1.251(a)(1)). The

applicant or patentee may also comply

with a notice under § 1.251 by: (1)

Producing his or her record (if any) of

all of the correspondence between the

Office and the applicant or patentee for

such application, patent, or other

proceeding for the Office to copy

(except for U.S. patent documents); and

(2) providing a statement that the papers

produced by applicant or patentee are

applicant’s or patentee’s complete

record of all of the correspondence

between the Office and the applicant or

patentee for such application, patent, or

other proceeding (except for U.S. patent

documents), and whether applicant or

patentee is aware of any correspondence

between the Office and the applicant or

patentee for such application, patent, or

other proceeding that is not among

applicant’s or patentee’s records

(§ 1.251(a)(2)). If applicant or patentee

does not possess any record of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding,

the applicant or patentee must comply

with a notice under § 1.251 by providing

a statement that applicant or patentee

does not possess any record of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding

(§ 1.251(a)(3)).

According to § 1.251(a), if the

applicant or patentee possesses all or

just some of the correspondence

between the Office and the applicant or

patentee for such application, patent, or

other proceeding, the applicant or

patentee is to reply by providing a copy

of (or producing) his or her record of all

of the correspondence between the

Office and the applicant or patentee for

such application, patent, or other

proceeding (§§ 1.251(a)(1) or (a)(2)). If

applicant or patentee does not possess

any record of the correspondence

between the Office and the applicant or

patentee for such application, patent, or

other proceeding, the applicant or

patentee is to reply with a statement to

that effect (§ 1.251(a)(3)).

Any appendix or information

disclosure statement submitted with an

application is not contained in the

Office’s PACR database. Therefore, the

applicant or patentee must also provide

a copy of any appendix or information

disclosure statement (except in the

limited circumstance discussed below)

submitted with the application. Since

the Office can obtain copies of U.S.

patent documents (U.S. patent

application publications and patents)

from its internal databases, the Office is

not requiring applicants or patentees to

provide copies of U.S. patent

application publications and patents

that are among the applicant’s or

patentee’s record of the correspondence

between the Office and the applicant or

patentee for the application, patent, or

other proceeding.

Section 1.251(b) provides that with

regard to a pending application, the

failure to provide a reply to such a

notice within the time period set in the

notice will result in abandonment of the

application.

Response to Comments

The Office published a notice

proposing changes to the rules of

practice to provide for the replacement

of application and patent files that

cannot be located after a reasonable

search. See Treatment of Unlocatable

Application and Patent Files, Notice of

Proposed Rulemaking, 65 FR 42309

(July 10, 2000), 1237 Off. Gaz. Pat.

Office 28 (Aug. 1, 2000) (notice of

proposed rulemaking). The Office

received eleven written comments (from

intellectual property organizations,

patent practitioners, and the general

public) in response to the notice of

proposed rulemaking. Comments

generally in support of the change are

not discussed. The comments and the

Office’s responses to the remaining

comments follow:

Comment 1: Several comments

inquired as to how long an applicant or

patentee will be given to provide a copy

of the file in reply to a notice under

§ 1.251. The comments suggested that:

(1) Applicants be given a minimum

period of three months to reply to a

notice under § 1.251; (2) this period for

reply be set forth in § 1.251 (rather than

merely set forth in the MPEP or left

completely up to the discretion of Office

officials); and (3) this period for reply be

extendable under § 1.136(a). One

comment also suggested that patentees

be given at least five months to reply to

a notice under § 1.251.

Response: The Office will set a time

period of three months for reply in a

notice under § 1.251 in an application.

The time period will be extendable

under § 1.136(a) (unless the notice

indicates otherwise) by three months up

to a maximum period for reply of six

months in an application. See 35 U.S.C.

133.

The Office will set a time period of six

months for reply in a notice under

§ 1.251 in a patent. The time period will

not be extendable under § 1.136(a) in a

patent because 35 U.S.C. 41(a)(8) only

authorizes the Office to charge fees for

extensions of time in proceedings

involving an application. See MPEP

2265.

Section 1.251 will not include these

time periods. These time periods,

however, will be included in the MPEP

and not left to the complete discretion

of various Office officials.

Comment 2: One comment suggested

that there should be no reduction in

patent term adjustment for the entire

delay for the initial search and for

compliance with a notice under § 1.251.

Another comment suggested that for

purposes of patent term adjustment, all

of the time taken to reconstruct the file

‘‘should be charged against the Office.’’

Response: Patent term and patent

term adjustment are provided for by

statute. See 35 U.S.C. 154(a)(2) and (b)

and 173. The inability to locate an

application file in and of itself does not

give rise to patent term adjustment

under 35 U.S.C. 154(b). Rather, patent

term adjustment is an issue only if the

inability to locate the application file

causes the Office to miss one of the time

frames specified in 35 U.S.C.

154(b)(1)(A) or (B), or prolongs the

duration of one of the proceedings

specified in 35 U.S.C. 154(b)(1)(C). In

addition, if an applicant fails to reply to

a notice under § 1.251 within three

69448 Federal Register / Vol. 65, No. 223 / Friday, November 17, 2000 / Rules and Regulations

months of its mailing date, any patent

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

will be reduced by a period equal to the

number of days (if any) beginning on the

day after the date that is three months

after the mailing date of the notice

under § 1.251 and ending on the date

the reply to the notice under § 1.251 was

filed. See 35 U.S.C. 154(b)(2)(C)(ii) and

§ 1.704(b).

Comment 3: Several comments

inquired as to what steps are taken to

search for a file before it is determined

to be unlocatable (i.e., inquired as to

what is a reasonable search). One

comment expressed concern that the

procedure in § 1.251 not be used as a

substitute for a reasonable search for

such a file. Another comment suggested

that a reasonable time limit (e.g., three

months) be established for such a search

so that reconstruction of the file (if

necessary) can begin promptly.

Response: When an application file is

determined to be unlocatable, the

Official Search Unit or a Technology

Center designee conducts a search for

the application file in every location

where the application file might

reasonably be located: e.g., its location

as indicated in the Office automated

application tracking system (the Patent

Application Locating and Monitoring or

PALM system), the examiner’s office,

and the Technology Center’s central

files, technical support, and receptionist

areas. If the application file still cannot

be located, the application is flagged as

‘‘lost’’ in the PALM system. The flagging

of an application in the PALM system

as ‘‘lost’’ causes the PALM system to

signal any person who then attempts a

PALM transaction for the application

(for which the application file is

required) that the application file was

previously unlocatable and should be

taken to the person who was conducting

a search for the application file. If no

PALM transaction for the application

occurs within thirty days, the Office

then begins the file reconstruction

process.

Comment 4: One comment opposed

the proposed change on the basis that it

did not address the problem (i.e., the

Office’s inability to locate certain files).

The comment indicated that the Office

should better train its staff to track

application and patent files, and to

conduct a more diligent search for an

application or patent files.

Response: The Office is addressing

this issue by: (1) Revising procedures for

searches for applications; and (2)

moving towards a total Electronic File

Wrapper environment. Nevertheless, the

majority of comments recognize that

establishing procedures for the prompt

reconstruction of unlocatable files is

important not only to the conduct of

business before the Office, but is also

important to the public (third parties)

which relies upon the information in a

patent file when conducting an

infringement or validity analysis.

Comment 5: One comment suggested

that the Office provide a printout of the

contents entries from the Office’s PALM

system with any notice under § 1.251 to

assist the applicant or patentee.

Response: The suggestion is adopted.

Comment 6: One comment inquired

as to how long it takes the Office to

realize it has lost a file.

Response: The Office usually realizes

that it cannot locate a patent file when

a member of the public requests a copy

of the file. The Office usually realizes

that it cannot locate an application file

when its PALM system indicates that

the application is due for some action.

Comment 7: One comment inquired

as to how long it will take for the Office

to act on an application once the file has

been reconstructed.

Response: Once an application file

has been reconstructed, it is docketed

for action based upon its stage in the

application examination process. In

most situations, the application will be

acted upon immediately.

Comment 8: Several comments

suggested that the Office should take

special steps with files that have been

reconstructed to ensure that the

applicant or patentee is not again

required to provide a copy of the file.

Response: The Office takes the steps

that can reasonably be taken to avoid

misplacing any application or patent

file. Thus, there are no further ‘‘special’’

steps that could reasonably be taken to

avoid misplacing reconstructed

application or patent files.

Comment 9: One comment suggested

that the Office should first attempt to

reconstruct the file based upon the

material it has (i.e., copies of Office

actions, and sequence listings), and then

require the applicant or patentee to

supply the specific materials that the

Office does not have. Another comment

suggested that the applicant or patentee

should not be required to produce

copies of documents available to the

Office from other sources (e.g., U.S. or

foreign patents or patent publications).

Response: The Office has considered

attempting to reconstruct portions of the

application or patent file based upon

material contained in other Office

databases. These databases, however, do

not always contain accurate or complete

copies of the papers actually in the

application or patent file (e.g., Office

actions may be draft or incomplete and

may not include the pre-printed forms

sent with Office actions). The best way

to reconstruct an application or patent

file quickly, completely, and accurately

is to obtain a copy of the applicant or

patentee’s records of correspondence

between the Office and applicant or

patentee for the application or patent.

The Office can obtain copies of U.S.

patent application publications and

patents from its databases. Therefore,

the Office is not requiring applicants or

patentees to provide copies of U.S.

patent application publications and

patents that are among the applicant’s or

patentee’s record of the correspondence

between the Office and the applicant or

patentee for the application, patent, or

other proceeding. The Office, however,

may not be able to obtain copies of

foreign patent documents or nonpatent

literature from its databases. Therefore,

the Office is requiring applicants or

patentees to provide copies of foreign

patent documents and nonpatent

literature that are among the applicant’s

or patentee’s record of the

correspondence between the Office and

the applicant or patentee for the

application, patent, or other proceeding.

Comment 10: One comment suggested

that the applicant or patentee be

required to provide a copy of only the

papers formally of record in the

application or patent file (i.e., not

proposed amendments submitted to an

examiner for consideration on an

informal basis).

Response: The applicant or patentee

is required to provide a copy of

applicant’s or patentee’s record of all of

the correspondence between the Office

and the applicant or patentee for such

application, patent, or other proceeding.

While an ‘‘informal’’ (or ‘‘proposed’’)

amendment submitted to an examiner

for consideration is not entered into the

specification or drawings of the

application, Office practice is to make

such an informal or proposed

amendment of record in the application

file (usually by attachment to an

interview summary record). Thus,

‘‘informal’’ amendments submitted to

examiners for consideration are part of

the correspondence between the Office

and the applicant (or patentee) that

must be submitted (if contained in

applicant’s or patentee’s records of the

application or patent).

Comment 11: One comment

questioned whether § 1.251 applies

when the file is otherwise available, but

is missing specific documents.

Response: Section 1.251 generally

applies only to situations in which the

file of an application or patent (not just

certain documents) is unlocatable.

When a document is missing from an

application, Office practice is to call the

applicant’s representative and request

Federal Register / Vol. 65, No. 223 / Friday, November 17, 2000 / Rules and Regulations 69449

submission (generally by facsimile) of a

copy of the missing document. While

the Office intends to continue to treat

missing documents in this relatively

informal manner (rather than issuing a

notice under § 1.251), the Office may

issue a notice under § 1.251 to obtain a

copy of a missing document if the

Office’s informal attempts to obtain a

copy of the document are unsuccessful.

Comment 12: One comment

questioned what the Office does with

the original file if it is discovered after

the file has been reconstructed.

Response: The Office will combine

the papers into a single file wrapper and

then destroy the other file wrapper (as

well as any duplicate papers).

Comment 13: One comment argued

that the provisions of § 1.251 are not

effective as to a patentee since there is

no threat (e.g., threat of abandonment) if

a patentee does not comply with a

notice requiring a copy of the patent

file. Another comment suggested that

the Office expressly indicate that there

is no consequence if a patentee fails to

comply with a notice under § 1.251

because a statutory change would be

required for the Office to be able to

impose a consequence such as lapse of

the patent on a patentee.

Response: If a patentee does not

timely reply to a notice under § 1.251,

the patent will not ‘‘lapse’’ or expire.

Nevertheless, it is incorrect to say that

there is no consequence to a patentee

who fails to comply with a notice under

§ 1.251. If a patentee fails to timely

comply with a notice under § 1.251, the

only certified copy of the patent file that

the Office will be able to produce will

be a copy of the patent and a copy of

the application-as-filed (which may

have an adverse impact during attempts

to enforce the patent). In addition, if the

patent is involved in a proceeding

before the Office, the Office may take

action under § 1.616 or § 10.18. Thus,

the provisions of § 1.251 will be

effective as to a patentee even in the

absence of a statutory change to impose

some other consequence (e.g., lapse of

the patent).

Comment 14: Several comments

argued that the threat of holding an

application abandoned when the file

was lost by the Office was patently

unfair. One comment suggested that the

sanction for noncooperation with a

requirement for a copy of the

application file for applications subject

to the twenty-year patent term

provisions of 35 U.S.C. 154(a)(2) be a

reduction of any patent term adjustment

under 35 U.S.C. 154(b), and that the

sanction for noncooperation with a

requirement for a copy of the

application file for applications not

subject to the twenty-year patent term

provisions of 35 U.S.C. 154(a)(2) be a

requirement for a terminal disclaimer.

Response: As discussed above, the

Office cannot process or examine an

application if its file is unlocatable.

Treating noncooperation with a

requirement for a copy of the

application file for applications solely

by a reduction of any patent term

adjustment or requirement for a

terminal disclaimer would give rise to

an open-ended suspension of action for

any application in which the applicant

chooses not to timely reply to a notice

under § 1.251.

It is well established that keeping an

application pending before the Office

for an indeterminate period of time with

no prospect of action being taken by

either the Office or the applicant is not

consistent with the spirit of the patent

application examination process. See

Planning-Machine Co. v. Keith, 101 U.S.

(11 Otto) 479, 485 (1879) (applicant

cannot without cause hold an

application pending during a long

period without prosecuting the

application). If an applicant fails to

cooperate with the Office’s attempt to

reconstruct the file of an unlocatable

application, there is no prospect of

action being taken by either the Office

or the applicant until the applicant

replies to the notice under § 1.251.

Therefore, if the file of an application is

unlocatable and the applicant fails to

cooperate with the Office’s attempt to

reconstruct the file, it is appropriate to

terminate proceedings in that

application and treat the application as

abandoned.

Comment 15: One comment suggested

that if an application becomes

abandoned for failure to reply to a

notice under § 1.251, the applicant

should be able to revive the application.

Another comment suggested that the

Office should permit the applicant to

revive the application for unintentional

abandonment at no cost to the applicant

(the cost being absorbed by the Office).

Response: An application abandoned

for failure to timely reply to a notice

under § 1.251 may be revived pursuant

to § 1.137, provided that the conditions

specified in § 1.137 can be met (i.e., the

delay in reply to the notice under

§ 1.215 was unavoidable or

unintentional). 35 U.S.C. 41(a)(7)

requires the Office to charge a fee for

filing a petition to revive an abandoned

application, regardless of whether the

delay was unintentional or unavoidable.

In any event, an application abandoned

for failure to timely reply to a notice

under § 1.251 is not abandoned because

the Office cannot locate the application,

but because the applicant failed to

timely reply to the notice under § 1.251.

Comment 16: Several comments

argued that applicants and patentees are

unable to state with absolute confidence

that their records are a complete and

accurate copy of the correspondence

between the Office and the applicant or

patentee for the application, patent, or

other proceeding (since correspondence

from the Office may have been lost in

the mail). Some comments suggested

that an applicant or patentee be required

to state only that the copy is a complete

and accurate copy of the applicant or

patentee’s record of the correspondence

between the Office and the applicant or

patentee for the application, patent, or

other proceeding. Another comment

suggested that an applicant or patentee

be required to state only that the copy

is complete and accurate to the best of

the individual’s knowledge and belief,

upon reasonable investigation.

Response: Sections 1.251(b)(1) and

(b)(2) as proposed provided for the

situation in which the applicant or

patentee possessed a complete and

accurate copy of the applicant’s or

patentee’s record of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding,

and § 1.251(b)(3) as proposed provided

for the situation in which an applicant

or patentee did not possess a complete

and accurate copy of the applicant’s or

patentee’s record of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding.

Since applicants and patentees cannot

be certain of whether their records are

a complete and accurate copy of all of

the correspondence between the Office

and the applicant or patentee for such

application, patent, or other proceeding,

§§ 1.251(a)(1) and (a)(2) as adopted

provide for the situation in which the

applicant or patentee possesses some

record (whether complete or

incomplete) of the correspondence

between the Office and the applicant or

patentee, and § 1.251(a)(3) provides for

the rare situation in which an applicant

or patentee does not possess any record

of the correspondence between the

Office and the applicant or patentee.

Sections 1.251(a)(1) and (a)(2) will

require a statement that the copy

produced by applicant or patentee is a

complete and accurate copy of the

applicant’s or patentee’s record of all of

the correspondence between the Office

and the applicant or patentee for such

application, patent, or other proceeding

(except for U.S. patent documents), and

whether applicant or patentee is aware

of any correspondence between the

69450 Federal Register / Vol. 65, No. 223 / Friday, November 17, 2000 / Rules and Regulations

Office and the applicant or patentee for

such application, patent, or other

proceeding that is not among applicant’s

or patentee’s records. An applicant or

patentee should be able to state with

confidence that the copy provided to or

produced for the Office is a complete

and accurate copy of the applicant’s or

patentee’s record (if any) of all of the

correspondence between the Office and

the applicant or patentee, and whether

applicant or patentee is aware of any

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding

that is not among applicant’s or patent’s

records.

Comment 17: One comment suggested

that § 1.251 was unclear as to whether

the applicant or patentee was being

required to state that the copy being

produced by the applicant or patentee

for copying by the Office, or the copy

produced by the Office, was a complete

and accurate copy of the

correspondence between the Office and

the applicant or patentee for the

application, patent, or other proceeding.

Response: Section 1.251(a)(2) requires

a statement that the copy produced by

applicant or patentee (not the copy

produced by the Office) is a complete

and accurate copy of applicant’s or

patentee’s record of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding.

Comment 18: One comment required

that the Office indicate where or to

whom the applicant or patentee is to

produce the applicant’s or patentee’s

record of the correspondence between

the Office and the applicant or patentee

for the application, patent, or other

proceeding for copying by the Office.

Response: If an applicant or patentee

decides to produce his or her record of

the correspondence between the Office

and the applicant or patentee for the

application, patent, or other proceeding

for copying by the Office under

§ 1.251(a)(2) (rather than provide a copy

under § 1.251(a)(1)), the record should

be brought to the Customer Service

Center in the Office of Initial Patent

Examination (Crystal Plaza 2, 2011

South Clark Place, Arlington, VA

22202).

Comment 19: One comment noted

that § 1.251 provides the option of

producing the applicant’s or patentee’s

record of all of the correspondence

between the Office and the applicant or

patentee for such application, patent, or

other proceeding for the Office to copy

when the applicant or patentee

possesses a complete copy of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding.

The comment suggests that the Office

should also provide the option of

producing the applicant’s or patentee’s

record of all of the correspondence

between the Office and the applicant or

patentee for such application, patent, or

other proceeding for the Office to copy

when the applicant or patentee does not

possess a complete copy of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding.

Response: Section 1.251(a)(2)

provides the option of producing the

applicant’s or patentee’s record of all of

the correspondence between the Office

and the applicant or patentee for such

application, patent, or other proceeding

for the Office to copy even when the

applicant or patentee does not possess

a complete copy of the correspondence

between the Office and the applicant or

patentee for such application, patent, or

other proceeding.

Comment 20: Several comments

suggested that the Office should

reimburse applicants or patentees for

the costs of copying the application or

patent file and delivering the copy to

the Office.

Response: The Office does not

currently reimburse applicants or

patentees for the costs of copying the

application or patent file and delivering

the copy to the Office. The changes in

this final rule will not affect the costs of

copying the application or patent file

and delivering the copy to the Office as

compared to current practice. The Office

will study the reimbursement question

to consider the costs and operational

considerations associated with such a

proposal.

Classification

Administrative Procedure Act

The changes in this final rule concern

only the procedures for obtaining a copy

of applicant’s or patentee’s record of the

correspondence between the Office and

the applicant or patentee for an

application, patent, or other proceeding

when necessary to reconstruct the file of

such application, patent, or other

proceeding. Therefore, prior notice and

an opportunity for public comment are

not required pursuant to 5 U.S.C.

553(b)(A) (or any other law), and thirtyday advance publication is not required

pursuant to 5 U.S.C. 553(d) (or any other

law).

Regulatory Flexibility Act

As prior notice and an opportunity for

public comment are not required

pursuant to 5 U.S.C. 553 (or any other

law), an initial regulatory flexibility

analysis under the Regulatory

Flexibility Act (5 U.S.C. 601 et seq.) is

not required. See 5 U.S.C. 603.

Executive Order 13132

This document does not contain

policies with federalism implications

sufficient to warrant preparation of a

Federalism Assessment under Executive

Order 13132 (Aug. 4, 1999).

Executive Order 12866

This document has been determined

to be not significant for purposes of

Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act

This document 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 et seq.). The collection

of information involved in this

document was submitted for approval

by OMB under control number 0651–

0031. The United States Patent and

Trademark Office submitted this

information collection package to OMB

for its review and approval because the

changes in this notice affect the

information collection requirements

associated with that information

collection package.

The title, description, and respondent

description of this information

collection is shown below with an

estimate of the annual reporting

burdens. Included in the estimate is the

time for reviewing instructions,

gathering and maintaining the data

needed, and completing and reviewing

the collection of information. The

principal impact of the changes in this

notice is to set forth the procedures for

obtaining a copy of applicant’s or

patentee’s record of the correspondence

between the Office and the applicant or

patentee for an application, patent, or

other proceeding when necessary to

reconstruct the file of such application,

patent, or other proceeding.

OMB Number: 0651–0031.

Title: Patent Processing (Updating).

Form Numbers: PTO/SB/08/21–27/

31/42/43/61/62/63/64/67/68/91/92/96/

97.

Type of Review: Approved through

October of 2002.

Affected Public: Individuals or

Households, Business or Other ForProfit Institutions, Not-for-Profit

Institutions and Federal Government.

Estimated Number of Respondents:

2,231,365.

Estimated Time Per Response: 0.46

hours.

Estimated Total Annual Burden

Hours: 1,018,736 hours.

Federal Register / Vol. 65, No. 223 / Friday, November 17, 2000 / Rules and Regulations 69451

Needs and Uses: During the

processing of an application for a

patent, the applicant/agent may be

required or desire to submit additional

information to the United States Patent

and Trademark Office concerning the

examination of a specific application.

The specific information required or

which may be submitted includes:

Information Disclosure Statements;

Terminal Disclaimers; Petitions to

Revive; Express Abandonments; Appeal

Notices; Petitions for Access; Powers to

Inspect; Certificates of Mailing or

Transmission; Statements under

§ 3.73(b); Amendments, Petitions and

their Transmittal Letters; and Deposit

Account Order Forms.

Comments are invited on: (1) Whether

the collection of information is

necessary for proper performance of the

functions of the agency; (2) the accuracy

of the agency’s estimate of the burden;

(3) ways to enhance the quality, utility,

and clarity of the information to be

collected; and (4) ways to minimize the

burden of the collection of information

to respondents.

Interested persons are requested to

send comments regarding these

information collections, including

suggestions for reducing this burden, to

Robert J. Spar, Director, Office of Patent

Legal Administration, United States

Patent and Trademark Office,

Washington, DC 20231, or to the Office

of Information and Regulatory Affairs,

OMB, 725 17th Street, NW.,

Washington, DC 20503 (Attn: Desk

Officer for the United States Patent and

Trademark Office).

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 record keeping

requirements, Small Businesses.

For the reasons set forth in the

preamble, 37 CFR Part 1 is amended as

follows:

PART 1—RULES OF PRACTICE IN

PATENT CASES

1. The authority citation for 37 CFR

Part 1 continues to read as follows:

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

2. Section 1.251 is added immediately

following § 1.248 to read as follows:

§ 1.251 Unlocatable file.

(a) In the event that the Office cannot

locate the file of an application, patent,

or other patent-related proceeding after

a reasonable search, the Office will

notify the applicant or patentee and set

a time period within which the

applicant or patentee must comply with

the notice in accordance with one of

paragraphs (a)(1), (a)(2), or (a)(3) of this

section.

(1) Applicant or patentee may comply

with a notice under this section by

providing:

(i) A copy of the applicant’s or

patentee’s record (if any) of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding

(except for U.S. patent documents);

(ii) A list of such correspondence; and

(iii) A statement that the copy is a

complete and accurate copy of the

applicant’s or patentee’s record of all of

the correspondence between the Office

and the applicant or patentee for such

application, patent, or other proceeding

(except for U.S. patent documents), and

whether applicant or patentee is aware

of any correspondence between the

Office and the applicant or patentee for

such application, patent, or other

proceeding that is not among applicant’s

or patentee’s records.

(2) Applicant or patentee may comply

with a notice under this section by:

(i) Producing the applicant’s or

patentee’s record (if any) of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding

for the Office to copy (except for U.S.

patent documents); and

(ii) Providing a statement that the

papers produced by applicant or

patentee are applicant’s or patentee’s

complete record of all of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding

(except for U.S. patent documents), and

whether applicant or patentee is aware

of any correspondence between the

Office and the applicant or patentee for

such application, patent, or other

proceeding that is not among applicant’s

or patentee’s records.

(3) If applicant or patentee does not

possess any record of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding,

applicant or patentee must comply with

a notice under this section by providing

a statement that applicant or patentee

does not possess any record of the

correspondence between the Office and

the applicant or patentee for such

application, patent, or other proceeding.

(b) With regard to a pending

application, failure to comply with one

of paragraphs (a)(1), (a)(2), or (a)(3) of

this section within the time period set

in the notice will result in abandonment

of the application.

Dated: October 31, 2000.

Q. Todd Dickinson,

Under Secretary of Commerce for Intellectual

Property and Director of the United States

Patent and Trademark Office.

[FR Doc. 00–29411 Filed 11–16–00; 8:45 am]

BILLING CODE 3510–16–P

FEDERAL COMMUNICATIONS

COMMISSION

47 CFR Parts 2 and 90

[ET Docket No. 98–237; FCC 00–363]

3650–3700 MHz Government Transfer

AGENCY: Federal Communications

Commission.

ACTION: Final rule.

SUMMARY: This document allocates 50

megahertz of spectrum in the 3650–3700

MHz band to the fixed and mobile (base

stations) terrestrial services on a

primary basis. We are ‘‘grandfathering’’

existing fixed satellite service (‘‘FSS’’)

earth station sites in this band and, for

a limited time, will accept new

applications for FSS earth stations in

the vicinity (i.e., within 10 miles) of

these grandfathered sites to operate on

a co-primary basis in the band. We will

also permit additional FSS earth station

operations on a secondary basis. This

will ensure the continuity of FSS

operations and permit new FSS

operations to help alleviate congestion

in the adjacent 3700–4200 MHz FSS

band. Finally, to provide for

compatibility with both terrestrial fixed

service and FSS operations in the band,

we are limiting the terrestrial mobile

service use of the band to base station

operations.

DATES: Effective February 15, 2001.

FOR FURTHER INFORMATION CONTACT:

Rodney Conway, Office of Engineering

and Technology, (202) 418–2904.

SUPPLEMENTARY INFORMATION: This is a

summary of the Commission’s First

Report and Order, ET Docket No. 98–

237, FCC 00–363 adopted October 12,

2000, and released October 23, 2000.

The full text of this Commission

decision is available for inspection and

copying during normal business hours

in the FCC Reference Information

Center, Room CY–A257, 445 12th Street,

SW., Washington, DC, and also may be

purchased from the Commission’s

duplication contractor, International