29614 Federal Register / Vol. 63, No. 104 / Monday, June 1, 1998 /Rules and Regulations

implementation of the rule will have no

adverse effect on competition,

employment, investment, productivity,

innovation, or on the ability of United

States-based enterprises to compete

with foreign-based enterprises in

domestic or export markets.

Finally, the Secretary of the Panama

Canal Commission certifies these

changes meet the applicable standards

set out in sections 2(a) and 2(b)(2) of

Executive Order 12778.

List of Subjects in 35 CFR Part 133

Navigation, Panama Canal, Vessels.

For the reasons stated in the

preamble, the Panama Canal

Commission is amending 35 CFR part

133 as follows:

PART 133—TOLLS FOR USE OF

CANAL

1. The authority citation for part 133

continues to read as follows:

Authority: 22 U.S.C. 3791–3792, 3794.

2. Revise the heading of § 133.74 and

add paragraph (c) to read as follows:

§ 133.74 Same; exception; payment

secured by deposit of cash or bonds; credit

cards.

* * * * *

(c) Vessels assessed a toll of not more

than $1,500 under § 133.1(d) may pay

the respective toll and any charges for

ancillary services by credit card, under

such conditions as are established by

the Commission.

Dated: May 22, 1998.

John A. Mills,

Secretary.

[FR Doc. 98–14181 Filed 5–29–98; 8:45 am]

BILLING CODE 3640–04–P

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket #: 980511124–8124–01]

Revision of Patent Cooperation Treaty

Application Procedure

AGENCY: Patent and Trademark Office,

Commerce.

ACTION: Interim rule with request for

public comments.

SUMMARY: The Patent and Trademark

Office (Office or USPTO) is amending

its rules of practice relating to

applications filed under the Patent

Cooperation Treaty (PCT) to conform

the United States rules of practice with

the corresponding changes to the

Regulations under the PCT which

become effective July 1, 1998. The result

will be more streamlined procedures for

filing and prosecuting international

applications under the PCT.

DATES: Effective date: July 1, 1998.

Comment deadline date: To be

ensured of consideration, written

comments must be received on or before

July 31, 1998. No public hearing will be

held.

ADDRESSES: Address written comments

to: Box Comments—Patents, Assistant

Commissioner for Patents, Washington,

D.C. 20231, or by facsimile to (703) 308–

6459, marked to the attention of Richard

Lazarus. Comments submitted by

facsimile should be followed by a copy

of the comments submitted by mail. The

Office would also prefer that comments

submitted by mail be accompanied by a

copy of the comments in a standard

word processing format on a 3 1⁄4 inch

disk.

The comments will be available for

public inspection in Crystal Plaza Two,

room 7A04, 2011 South Clark Place,

Arlington, Virginia, and will be

available through anonymous file

transfer protocol (ftp) via the Internet

(address: ftp.uspto.gov). Since

comments will be made available for

public inspection, information that is

not desired to be made public, such as

an address or phone number, should not

be included in the comments.

FOR FURTHER INFORMATION CONTACT:

Richard Lazarus, PCT Legal Office

Supervisor, by telephone at (703) 308–

6451; or by mail addressed to: Box PCT,

Assistant Commissioner for Patents,

Washington, DC 20231; or by facsimile

to (703) 308–6459, marked to the

attention of Richard Lazarus.

SUPPLEMENTARY INFORMATION: During a

September-October 1997 meeting of the

Governing Bodies of the World

Intellectual Property Organization

(WIPO), the PCT Assembly adopted

amendments to the PCT Regulations,

which will take effect on July 1, 1998.

The amended PCT Regulations were

published in the Official Gazette at 1210

Off. Gaz. Pat. Office 29 (May 12, 1998).

The resulting changes to PCT practice

will improve filing and processing

procedures for applicants filing

international applications.

This interim rule amends the United

States rules of practice to conform them

to corresponding changes made to the

PCT Regulations that will take effect on

July 1, 1998. The interim rules will also

be effective on July 1, 1998. The Office

will publish a final rule either

confirming the adoption of these interim

rules as final rules or adopting final

rules which reflect changes made based

upon the public comments received in

response to this interim rule.

Applicants are hereby notified that

PCT Rules 20.4(c) and 26.3ter(a) and (c)

as amended are not compatible with the

national law of the United States, and

thus the USPTO has taken a reservation

on adherence to these Rules through its

notification to the Director General of

WIPO to such effect. See PCT Rules

20.4(d) and 26.3ter(b) and (d).

Applicants of international applications

in the United States need to be aware of

these differences to avoid the

consequences of failing to comply with

the requirements of United States law.

For example, PCT Rules 20.4(c) and

26.3ter(a) and (c) permit an

international filing date to be accorded

notwithstanding that portions of the

international application are in a

language not acceptable to the Receiving

Office. 35 U.S.C. 361 does not permit

this practice and a filing date will not

be accorded by the USPTO under these

provisions or circumstances. However,

if any portion of the international

application is not in English, but is in

a language of filing accepted by the

International Bureau, it will be

forwarded to the International Bureau

pursuant to the provisions of PCT Rule

19.4. The International Bureau will act

as a Receiving Office and accord a

receipt date as of the receipt date in the

USPTO.

Similarly, the USPTO continues not

to adhere to the unchanged provisions

of PCT Rule 49.5(cbis) and (k) with

respect to the translation requirements

for United States national stage

applications (35 U.S.C. 371(c)(2)). See

PCT Rule 49.5(l).

The above noted changes to the PCT

Regulations include the addition of new

PCT Rules 89bis and 89ter (directed to

electronic filing and processing of

international applications) which will

enter into force at the same time as the

modifications to the Administrative

Instructions implementing those PCT

Rules. Implementation of PCT Rules

89bis and 89ter is optional with each

national office. In the event that the

USPTO decides to implement PCT

Rules 89bis and 89ter, the USPTO will

provide notice to that effect in the

Federal Register and Official Gazette.

Discussion of Specific Rules

Title 37 of the Code of Federal

Regulations, Part 1, is amended as

follows:

Section 1.14(g) is added to comply

with the amendments to PCT Rule 94.

After international publication and

establishment of the international

preliminary examination report, third

parties are permitted access to
Federal Register / Vol. 63, No. 104 / Monday, June 1, 1998 /Rules and Regulations 29615

documents from the file of the

International Preliminary Examining

Authority in the USPTO’s elected office

file (not the international preliminary

examination file) to the same extent as

access to United States national

applications.

Section 1.412(c)(6) is amended to

conform to the changes to PCT Rule

19.4(a). The change relates to the

procedures for the filing of international

applications and their processing by the

Receiving Office. The change broadens

the circumstances in which an

international application may be

transmitted to the International Bureau

as the Receiving Office and adds more

flexibility for applicants and the United

States Receiving Office in determining

whether to forward the international

application to the International Bureau

as the Receiving Office. When the

international application is filed with

the USPTO and the language in which

the application is filed is not accepted

by the USPTO, or if the applicant does

not have the requisite residence or

nationality, the application may be

forwarded to the International Bureau

for receiving Office processing.

Section 1.416(c) is amended to reflect

the addition of new PCT Rule 59.3. The

change provides a safeguard in the case

of a Demand filed with the USPTO

which is not competent as the

International Preliminary Examining

Authority. The Office forwards the

Demand and the competent

International Preliminary Examining

Authority processes the Demand based

on the date of receipt in the USPTO.

This section is rewritten to: (1)

redesignate current paragraphs (c)(2)

through (c)(6) as paragraphs (c)(3)

through (c)(7), respectively; and (2) add

‘‘[f]orwarding Demands in accordance

with PCT Rule 59.3’’ as a new paragraph

(c)(2).

Section 1.419 is added pursuant to 44

U.S.C. 3512(a) and 5 CFR 1320.5(b). As

the Office cannot add the information

specified in 5 CFR 1320.5(b) to the

forms prescribed by the International

Bureau, the Office is adopting § 1.419 to

provide the information display

required by 5 CFR 1320.5(b)(2)(i). See 5

CFR 1320.5(b)(2)(ii)(D). Section 1.419

specifically provides: (1) that the

collection of information in 37 CFR Part

1, Subpart C, has been reviewed and

approved by the Office of Management

and Budget under control number 0651–

0021; (2) that § 1.419 constitutes the

display required by 44 U.S.C. 3512(a)

and 5 CFR 1320.5(b)(2)(i) for the

collection of information under Office of

Management and Budget control

number 0651–0021; and (3) a notice

under 5 CFR 1320.5(b)(2)(i) that:

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 Office of Management and Budget

control number.

Section 1.431 is amended to reflect

corresponding changes to PCT Rules 14,

15, 16 and 16bis. This section is

amended to: (1) Provide in paragraph (c)

that the basic, transmittal, and search

fee payable is the basic, transmittal, and

search fee in effect on the filing date of

the international application (see PCT

Rule 14.1(c), 15.4(a), and 16.1(f)); (2)

eliminate the unassociated text

following former paragraph (c)(2); (3)

add ‘‘prior to the sending of a notice of

deficiency’’; and (4) add a reference to

PCT Rule 16bis.1(e) in paragraph (d).

These changes will reduce mistakes in

paying fees where different fees have

different times for payment. The change

simplifies the fees due to be the fee

amounts (basic, transmittal and search)

in effect on the date of receipt of the

international application. Additionally,

the change provides the additional

benefit of delaying the effect of the

sanction until the sending of the notice

of such sanction.

Section 1.432 is amended to reflect

corresponding changes to PCT Rules 15

and 16bis. The changes relate to the

time periods and amounts due for the

payment of designation and

confirmation fees. Paragraph (b) has

been rewritten, for the purposes of

clarity, as paragraphs (b)(1) and (b)(2),

with paragraph (b)(2) comprising the

unassociated text following former

paragraph (b)(3). Additionally, former

paragraph (b)(3), now paragraph

(b)(1)(iii), has been amended to include

the timeliness provision of new PCT

Rule 16bis.1(e).

Section 1.432 is further amended to

designate paragraph (c) as paragraphs

(d), (d)(1) and (d)(2) for better clarity.

Section 1.432 is further amended to

add a new paragraph (c) providing the

amount payable for the designation fee

set forth in § 1.432(b). Section

1.432(c)(1) provides that if the

designation fee is paid in full within

one month from the date of receipt of

the international application, the

amount payable for the designation fee

is the designation fee in effect on the

filing date of the international

application. Section 1.432(c)(2) provides

that if the designation fee is paid in full

later than one month from the date of

receipt of the international application,

but within one year from the priority

date, the amount payable for the

designation fee is the designation fee in

effect on the date such fee is paid in full.

Section 1.432(c)(3) provides that if the

designation fee was due one year from

the priority date, and such fee is paid in

full later than one month from the date

of receipt of the international

application and later than one year from

the priority date, the amount payable for

the designation fee is the designation fee

in effect on the date one year from the

priority date. Section 1.432(c)(4)

provides that if the designation fee was

due one month from the international

filing date and after one year from the

priority date, and such fee is paid in full

later than one month from the date of

receipt of the international application

and later than one year from the priority

date, the amount payable for the

designation fee is the designation fee in

effect on the international filing date.

The addition of new paragraph (c)

reflects the corresponding changes to

PCT Rules 15.4(b), 15.4(c) and 16bis.1.

Section 1.435 is amended to conform

to the change to PCT Rule 13ter

incorporating the common computer

readable form standard prescribed by

the Administrative Instructions. The

amendments to Section 1.435 change

‘‘Administrative Instruction 204’’ to

‘‘sections 204 and 208 of the

Administrative Instructions.’’

Section 1.445 is amended to re-insert

paragraphs (a)(4) and (a)(5) that were

inadvertently deleted. Section

1.445(a)(4) was inadvertently omitted in

Revision of Patent Fees; Final Rule

Notice, 59 FR 43736 (August 25, 1994),

1165 Off. Gaz. Pat. Office 132 (August

30, 1994), and § 1.445(a)(5) was

inadvertently omitted in Revision of

Patent and Trademark Fees; Final Rule

Notice, 60 FR 41018 (August 11, 1995),

1177 Off. Gaz. Pat. Office 171 (August

29, 1995).

Section 1.451 is amended to conform

to the changes made to PCT Rule 4.10

and the addition of new PCT Rule 26bis.

The changes reflect the ability of

applicants to now add or correct priority

claims after the filing of the

international application. This section is

amended to: (1) add a new paragraph (d)

which provides that the applicant may

correct or add a priority claim in

accordance with PCT Rule 26bis.1; and

(2) add the phrase ‘‘subject to paragraph

(d)’’ to paragraph (a).

Section 1.461 is amended to reflect

the corresponding change to PCT Rule

19.4 wherein an international

application filed in error with the

USPTO may be forwarded to the

International Bureau for processing as

Receiving Office. The new provisions

expand the flexibility for forwarding an
29616 Federal Register / Vol. 63, No. 104 / Monday, June 1, 1998 /Rules and Regulations

international application which is filed

with, but not accepted by, the USPTO.

Section 1.465 is amended to conform

to the changes made to PCT Rule 4.10

and the addition of new PCT Rule 26bis

concerning the time period in which

applicant may add or correct a priority

claim. Under the new provisions, an

applicant may add or correct a priority

claim until sixteen months from the

priority date, or where the priority date

is changed, sixteen months from the

priority date as so changed, whichever

period expires first. All priority claim

additions or changes must, however, be

submitted no later than four months

from the international filing date.

Section 1.465(b) is amended to change

the phrase ‘‘cancelled under PCT Rule

4.10(d), or considered not to have been

made under PCT Rule 4.10(b)’’ to

‘‘corrected or added under PCT Rule

26bis.1(a), or withdrawn under PCT

Rule 90bis.3, or considered not to have

been made under PCT Rule 26bis.2.’’

Section 1.465(b) is further amended to

change the phrase ‘‘computing time

limits’’ to ‘‘computing any non-expired

time limits’’ to be in accord with the

provision of new PCT Rules 26bis.1(c).

As suggested by the latter amendment to

Section 1.465(b), time limits which have

already expired at the time of the

addition, correction, or withdrawal of a

priority claim are not subject to

recomputation. Section 1.465(c) is

amended to change the reference to PCT

‘‘Rule 4.10(d)’’ to ‘‘PCT Rule 26bis.2(b).’’

Section 1.471 is amended to clarify

the rule to conform it to amended PCT

Rule 12. Section 1.471 is amended to:

(1) Indicate that it also applies to

corrections submitted to the United

States International Searching

Authority; (2) explicitly require that

corrections be in English and in

compliance with PCT Rules 10 and 11;

(3) provide that one ‘‘appropriate’’

addition or change of not more than five

words per sheet may be stated in a

letter; and (4) provide that amendments

that do not comply with PCT Rules 10

and 11 may not be entered. PCT Rule 12

was amended to allow the Receiving

Office to accept an international

application in any language. In these

instances, a translation may be required

for the International Searching

Authority, and any corrections are

required to be submitted in both the

language of the application and the

language of the translation. 35 U.S.C.

361(c) reflects that the United States

Receiving Office only accepts

international applications in English

and, in accordance with the agreement

between the United States and the

International Bureau, the United States

International Searching and Examining

Authorities will only process

international applications in English.

Thus, any changes under § 1.471 must

be in English. Section 1.471 is also

clarified to reflect that PCT Rules 10 and

11 apply to any later submitted

documents.

Section 1.480 is amended to clarify

the rule to conform it to amended PCT

Rule 59.3. Section 1.480 is amended to

change ‘‘Demand and payment of the

fees for international preliminary

examination (§ 1.482)’’ to ‘‘proper

Demand in an application for which the

United States International Preliminary

Examining Authority is competent and

for which the fees for international

preliminary examination (§ 1.482) have

been paid.’’ PCT Rule 59.3 was

amended to allow a non-competent

authority to forward a Demand either to

the International Bureau or the

competent international preliminary

examining authority.

Section 1.480 is changed to clarify

that the United States International

Preliminary Examining Authority only

conducts international preliminary

examinations in international

applications where the United States is

the competent International Preliminary

Examining Authority.

Section 1.481(a) is added to reflect the

corresponding changes to PCT Rules 57

and 58, as well as the addition of PCT

Rule 58bis. PCT Rule 57.3 sets the time

limit for paying and the amount of the

handling fee, and PCT Rule 58.1(b)

provides that the provisions of PCT Rule

57.3 apply to the time limit for paying

and the amount of the preliminary

examination fee. Section 1.481(a)

provides that the handling and

preliminary examination fees shall be

paid within the time period set in PCT

Rule 57.3, and that the handling fee or

preliminary examination fee payable is

the handling fee or preliminary

examination fee in effect on the date of

receipt of the Demand in the United

States International Preliminary

Examining Authority. PCT Rule

58bis.1(c) was added to consider the

handling fee and examination fee to

have been received before the expiration

of the time period set in PCT Rule 57.3

if the fees were submitted prior to the

sending of an invitation to pay the fees.

PCT Rule 58bis.1(a) was added to now

allow the International Preliminary

Examining Authority to collect a late

payment fee, if the fees for preliminary

examination are not paid prior to the

sending of the invitation. PCT Rule

58bis.2 sets the amount of the late

payment fee. Section 1.481(a) reflects

changes to PCT Rule 58bis by providing

that if the handling and preliminary fees

are not paid within the time period set

in PCT Rule 57.3, applicants will be

notified and given one month within

which to pay the deficient fees plus a

late payment fee equal to the greater of:

(1) fifty percent of the amount of the

deficient fees, but not exceeding an

amount equal to double the handling

fee, or (2) an amount equal to the

handling fee (PCT Rule 58bis.2). Section

1.481 also provides that the one-month

time limit set in § 1.481(a) to pay

deficient fees may not be extended.

Section 1.481(b) is added to reflect the

addition of PCT Rule 58bis.1(d). Section

1.481(b) provides that if the payment

needed to cover the handling and

preliminary examination fees, pursuant

to § 1.481(a), is not timely made in

accordance with added PCT Rule

58bis.1(d), the United States

International Preliminary Examination

Authority will declare the Demand to be

considered as if it had not been

submitted. In this regard, where the

Authority sends a notification that the

Demand is considered not to have been

made and applicant’s payment is

received, both on that same date, the fee

is considered to be late and the

notification remains effective. The fee

must antedate the notice in order for the

notice not to be effective.

Section 1.484(b) is amended to clarify

the rule in conformance with amended

PCT Rule 59.3. Section 1.484(b) is

amended to: (1) Change ‘‘Demand’’ to

‘‘proper Demand in an application for

which the United States International

Preliminary Examining Authority is

competent and for which the fees for

international preliminary examination

(§ 1.482) have been paid and’’; and (2)

eliminate the unassociated text

following former paragraph (b)(3). PCT

Rule 59.3 was amended to allow a noncompetent receiving Office or

international authority to forward a

Demand either to the International

Bureau or the competent International

Preliminary Examining Authority. This

change has the consequence of

providing a safeguard for applicants

who are filing a Demand at the end of

nineteen months from the priority date

and through error deposit the Demand

with a receiving Office or an

international authority that is not

competent. Section 1.484(b) is changed

to reflect that the United States

International Preliminary Examining

Authority only conducts international

preliminary examination where the

United States is the competent

International Preliminary Examining

Authority.

Section 1.485(a) is amended by

adding that the replacement sheets must

be ‘‘in compliance with PCT Rules 10

and 11.’’ The amendment incorporates
Federal Register / Vol. 63, No. 104 / Monday, June 1, 1998 /Rules and Regulations 29617

the change to PCT Rule 11.14 which

makes the formal requirements of PCT

Rules 10 and 11 applicable to

amendments during the international

preliminary examination phase.

Sections 1.494(c) and 1.495(c) are

amended to provide that a ‘‘Sequence

Listing’’ need not be translated if the

‘‘Sequence Listing’’ complies with PCT

Rule 12.1 and the description complies

with PCT Rule 5.2(b).

Review Under the Paperwork

Reduction Act of 1995

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 (PRA) unless that

collection of information displays a

currently valid OMB control number.

This rule contains collections of

information requirements subject to the

PRA. The principal impact of this

interim rule is to conform the United

States rules of practice relating to

applications filed under the PCT to the

corresponding amendments made to the

Regulations under the PCT.

The public reporting burden for these

collections of information have been

approved by the Office of Management

and Budget (OMB) under OMB control

number 0651–0021. The public

reporting burden for this collection of

information is estimated to average .954

hours per response, including the time

for reviewing instructions, searching

existing data sources, gathering and

maintaining the information. Send

comments regarding this burden

estimate or any other aspect of the data

requirements, including suggestions for

reducing this burden, to Richard

Lazarus at the address specified above

or to the Office of Information and

Regulatory Affairs of OMB, New

Executive Office Bldg., 725 17th St. NW,

rm. 10235, Washington, DC 20230, Attn:

Desk Officer for the Patent and

Trademark Office.

Other Considerations

The United States rules of practice

contained in title 37, CFR, must

conform to the PCT Articles and the

Regulations annexed to the PCT. See

PCT Article 27(1). This interim rule

implements corresponding changes

required to conform United States rules

for international applications to the

amendments to the PCT Regulations

which become effective on July 1, 1998.

Thus, this interim rule is covered by the

foreign affairs function exception of 5

U.S.C. 553(a)(1), and may be adopted

without prior notice and opportunity for

public comment. See International

Brotherhood of Teamsters v. Pena, 17

F.3d 1478, 1486 (D.C. Cir. 1994).

In addition, the Commissioner of

Patents and Trademarks, pursuant to

authority at 5 U.S.C. 553(b)(B), finds

good cause to adopt the changes made

in this interim rule without prior notice

and an opportunity for public comment,

as such procedures are timing-wise

infeasible. The PCT Regulations take

effect on July 1, 1998. Delay in the

promulgation of these interim rules to

provide notice and public comment

procedures would effectively preclude

the required adoption in the United

States of the PCT Regulations by their

effective date of July 1, 1998. See Petry

v. Block, 737 F.2d 1193, 1200–02 (D.C.

Cir. 1984).

As prior notice and an opportunity for

public comment are not required

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

law, the analytical requirements of the

Regulatory Flexibility Act, 5 U.S.C. 601

et seq., are inapplicable.

This interim rule does not contain

policies with federalism implications

sufficient to warrant preparation of a

Federalism Assessment under Executive

Order 12612 (October 26, 1987).

This interim rule has been determined

not to be significant for purposes of

Executive Order 12866 (September 30,

1993).

List of Subjects in 37 CFR Part 1

Administrative practice and

procedure, Courts, Freedom of

information, Inventions and patents,

Reporting and recordkeeping

requirements, Small businesses.

For the reasons 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. 6, unless otherwise

noted.

2. Section 1.14 is amended by adding

paragraph (g) to read as follows:

§ 1.14 Patent applications preserved in

confidence.

* * * * *

(g) Copies of an application file for

which the United States acted as the

International Preliminary Examining

Authority, or copies of a document in

such an application file, will be

furnished in accordance with Patent

Cooperation Treaty (PCT) Rule 94.2 or

94.3, upon payment of the appropriate

fee (§ 1.19(b)(2) or § 1.19(b)(3)).

3. Section 1.412 is amending by

revised paragraph (c)(6) to read as

follows:

§ 1.412 The United States Receiving

Office.

* * * * *

(c) * * *

(6) Reviewing and, unless

prescriptions concerning national

security prevent the application from

being so transmitted (PCT Rule 19.4),

transmitting the international

application to the International Bureau

for processing in its capacity as a

Receiving Office:

(i) Where the United States Receiving

Office is not the competent Receiving

Office under PCT Rule 19.1 or 19.2 and

§ 1.421(a); or

(ii) Where the international

application is not in English but is in a

language accepted under PCT Rule

12.1(a) by the International Bureau as a

Receiving Office; or

(iii) Where there is agreement and

authorization in accordance with PCT

Rule 19.4(a)(iii).

4. Section 1.416 is amended by

revising paragraph (c) to read as follows:

§ 1.416 The United States International

Preliminary Examining Authority.

* * * * *

(c) The major functions of the

International Preliminary Examining

Authority include:

(1) Receiving and checking for defects

in the Demand;

(2) Forwarding Demands in

accordance with PCT Rule 59.3;

(3) Collecting the handling fee for the

International Bureau and the

preliminary examination fee for the

United States International Preliminary

Examining Authority;

(4) Informing applicant of receipt of

the Demand;

(5) Considering the matter of unity of

invention;

(6) Providing an international

preliminary examination report which

is a non-binding opinion on the

questions of whether the claimed

invention appears: to be novel, to

involve an inventive step (to be

nonobvious), and to be industrially

applicable; and

(7) Transmitting the international

preliminary examination report to

applicant and the International Bureau.

5. A new § 1.419 is added before the

undesignated center heading ‘‘Who May

File an International Application’’ to

read as follows:

§ 1.419 Display of currently valid control

number under the Paperwork Reduction

Act.

(a) Pursuant to the Paperwork

Reduction Act of 1995 (44 U.S.C. 3501
29618 Federal Register / Vol. 63, No. 104 / Monday, June 1, 1998 /Rules and Regulations

et seq.), the collection of information in

this subpart has been reviewed and

approved by the Office of Management

and Budget under control number 0651–

0021.

(b) 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

Office of Management and Budget

control number. This section constitutes

the display required by 44 U.S.C.

3512(a) and 5 CFR 1320.5(b)(2)(i) for the

collection of information under Office of

Management and Budget control

number 0651–0021 (see 5 CFR

1320.5(b)(2)(ii)(D)).

6. Section 1.431 is amended by

revising paragraphs (c) and (d) to read

as follows:

§ 1.431 International application

requirements.

* * * * *

(c) Payment of the basic portion of the

international fee (PCT Rule 15.2) and

the transmittal and search fees (§ 1.445)

may be made in full at the time the

international application papers

required by paragraph (b) of this section

are deposited or within one month

thereafter. The basic, transmittal, and

search fee payable is the basic,

transmittal, and search fee in effect on

the receipt date of the international

application.

(1) If the basic, transmittal and search

fees are not paid within one month from

the date of receipt of the international

application and prior to the sending of

a notice of deficiency, applicant will be

notified and given one month within

which to pay the deficient fees plus a

late payment fee equal to the greater of:

(i) Fifty percent of the amount of the

deficient fees up to a maximum amount

equal to the basic fee; or

(ii) An amount equal to the

transmittal fee (PCT Rule 16bis).

(2) The one-month time limit set

pursuant to this paragraph to pay

deficient fees may not be extended.

(d) If the payment needed to cover the

transmittal fee, the basic fee, the search

fee, one designation fee and the late

payment fee pursuant to paragraph (c) of

this section is not timely made in

accordance with PCT Rule 16bis.1(e),

the Receiving Office will declare the

international application withdrawn

under PCT Article 14(3)(a).

7. Section 1.432 is amended by

revising its heading, paragraphs (b) and

(c) and adding paragraph (d) to read as

follows:

§ 1.432 Designation of States and payment

of designation and confirmation fees.

* * * * *

(b) If the fees necessary to cover all

the national and regional designations

specified in the Request are not paid by

the applicant within one year from the

priority date or within one month from

the date of receipt of the international

application if that month expires after

the expiration of one year from the

priority date, applicant will be notified

and given one month within which to

pay the deficient designation fees plus

a late payment fee. The late payment fee

shall be equal to the greater of fifty

percent of the amount of the deficient

fees up to a maximum amount equal to

the basic fee, or an amount equal to the

transmittal fee (PCT Rule 16bis). The

one-month time limit set in the

notification of deficient designation fees

may not be extended. Failure to timely

pay at least one designation fee will

result in the withdrawal of the

international application.

(1) The one designation fee must be

paid:

(i) Within one year from the priority

date;

(ii) Within one month from the date

of receipt of the international

application if that month expires after

the expiration of one year from the

priority date; or

(iii) With the late payment fee defined

in this paragraph within the time set in

the notification of the deficient

designation fees or in accordance with

PCT Rule 16bis.1(e).

(2) If after a notification of deficient

designation fees the applicant makes

timely payment, but the amount paid is

not sufficient to cover the late payment

fee and all designation fees, the

Receiving Office will, after allocating

payment for the basic, search,

transmittal and late payment fees,

allocate the amount paid in accordance

with PCT Rule 16bis.1(c) and withdraw

the unpaid designations. The

notification of deficient designation fees

pursuant to this paragraph may be made

simultaneously with any notification

pursuant to § 1.431(c).

(c) The amount payable for the

designation fee set forth in paragraph (b)

is:

(1) The designation fee in effect on the

filing date of the international

application, if such fee is paid in full

within one month from the date of

receipt of the international application;

(2) The designation fee in effect on the

date such fee is paid in full, if such fee

is paid in full later than one month from

the date of receipt of the international

application but within one year from the

priority date;

(3) The designation fee in effect on the

date one year from the priority date, if

the fee was due one year from the

priority date, and such fee is paid in full

later than one month from the date of

receipt of the international application

and later than one year from the priority

date; or

(4) The designation fee in effect on the

international filing date, if the fee was

due one month from the international

filing date and after one year from the

priority date, and such fee is paid in full

later than one month from the date of

receipt of the international application

and later than one year from the priority

date.

(d) On filing the international

application, in addition to specifying at

least one national or regional

designation under PCT Rule 4.9(a),

applicant may also indicate under PCT

Rule 4.9(b) that all other designations

permitted under the Treaty are made.

(1) Indication of other designations

permitted by the Treaty under PCT Rule

4.9(b) must be made in a statement on

the Request that any designation made

under this paragraph is subject to

confirmation (PCT Rule 4.9(c)) not later

than the expiration of 15 months from

the priority date by:

(i) Filing a written notice with the

United States Receiving Office

specifying the national and/or regional

designations being confirmed;

(ii) Paying the designation fee for each

designation being confirmed; and

(iii) Paying the confirmation fee

specified in § 1.445(a)(4).

(2) Unconfirmed designations will be

considered withdrawn. If the amount

submitted is not sufficient to cover the

designation fee and the confirmation fee

for each designation being confirmed,

the Receiving Office will allocate the

amount paid in accordance with any

priority of designations specified by

applicant. If applicant does not specify

any priority of designations, the

allocation of the amount paid will be

made in accordance with PCT Rule

16bis.1(c).

8. Section 1.435 is amended by

revising paragraph (a) to read as follows:

§ 1.435 The description.

(a) The application must meet the

requirements as to the content and form

of the description set forth in PCT Rules

5, 9, 10, and 11 and sections 204 and

208 of the Administrative Instructions.

* * * * *

9. Section 1.445 is amended by

revising paragraph (a) to read as follows:
Federal Register / Vol. 63, No. 104 / Monday, June 1, 1998 /Rules and Regulations 29619

§ 1.445 International application filing,

processing and search fees.

(a) The following fees and charges for

international applications are

established by the Commissioner under

the authority of 35 U.S.C. 376:

(1) A transmittal fee (see 35 U.S.C.

361(d) and PCT Rule 14)—$240.00

(2) A search fee (see 35 U.S.C. 361(d)

and PCT Rule 16):

(i) Where a corresponding prior

United States National application filed

under 35 U.S.C. 111(a) with the filing

fee under § 1.16(a) has been filed—

450.00

(ii) For all situations not provided for

in paragraph (a)(2)(i) of this section—

700.00

(3) A supplemental search fee when

required, per additional invention—

210.00

(4) A confirmation fee (PCT Rule 96)

equal to fifty percent of the sum of

designation fees for the national and

regional designations being confirmed

(§ 1.432(d)).

(5) A fee equivalent to the transmittal

fee in paragraph (a)(1) of this section for

transmittal of an international

application to the International Bureau

for processing in its capacity as a

Receiving Office (PCT Rule 19.4).

* * * * *

10. Section 1.451 is amended by

revising paragraph (a) and adding a

paragraph (d) to read as follows:

§ 1.451 The priority claim and priority

document in an international application.

(a) The claim for priority must,

subject to paragraph (d) of this section,

be made on the Request (PCT Rule 4.10)

in a manner complying with sections

110 and 115 of the Administrative

Instructions.

* * * * *

(d) The applicant may correct or add

a priority claim in accordance with PCT

Rule 26bis.1.

11. Section 1.461 is amended by

revising paragraph (a) to read as follows:

§ 1.461 Procedures for transmittal of

record copy to the International Bureau.

(a) Transmittal of the record copy of

the international application to the

International Bureau shall be made by

the United States Receiving Office or as

provided by PCT Rule 19.4.

* * * * *

12. Section 1.465 is amended by

revising paragraphs (b) and (c) to read

as follows:

§ 1.465 Timing of application processing

based on the priority date.

* * * * *

(b) When a claimed priority date is

corrected or added under PCT Rule

26bis.1(a), or withdrawn under PCT

Rule 90bis.3, or considered not to have

been made under PCT Rule 26bis.2, the

priority date for the purposes of

computing any non-expired time limits

will be the date of the earliest valid

remaining priority claim of the

international application, or if none, the

international filing date.

(c) When corrections under PCT Art.

11(2), Art. 14(2) or PCT Rule 20.2(a) (i)

or (iii) are timely submitted, and the

date of receipt of such corrections falls

later than one year from the claimed

priority date or dates, the Receiving

Office shall proceed under PCT Rule

26bis.2.

13. Section 1.471 is amended by

revising paragraph (a) to read as follows:

§ 1.471 Corrections and amendments

during international processing.

(a) Except as otherwise provided in

this paragraph, all corrections submitted

to the United States Receiving Office or

United States International Searching

Authority must be in English, in the

form of replacement sheets in

compliance with PCT Rules 10 and 11,

and accompanied by a letter that draws

attention to the differences between the

replaced sheets and the replacement

sheets. Replacement sheets are not

required for the deletion of lines of text,

the correction of simple typographical

errors, and one addition or change of

not more than five words per sheet.

These changes may be stated in a letter

and, if appropriate, the United States

Receiving Office will make the deletion

or transfer the correction to the

international application, provided that

such corrections do not adversely affect

the clarity and direct reproducibility of

the application (PCT Rule 26.4).

Amendments that do not comply with

PCT Rules 10 and 11.1 to 11.13 may not

be entered.

* * * * *

14. Section 1.480 is amended by

revising paragraph (a) to read as follows:

§ 1.480 Demand for international

preliminary examination.

(a) On the filing of a proper Demand

in an application for which the United

States International Preliminary

Examining Authority is competent and

for which the fees have been paid, the

international application shall be the

subject of an international preliminary

examination. The preliminary

examination fee (§ 1.482(a)(1)) and the

handling fee (§ 1.482(b)) shall be due at

the time of filing the Demand.

* * * * *

15. Section 1.481 is added to read as

follows:

§ 1.481 Payment of international

preliminary examination fees.

(a) The handling and preliminary

examination fees shall be paid within

the time period set in PCT Rule 57.3.

The handling fee or preliminary

examination fee payable is the handling

fee or preliminary examination fee in

effect on the date of receipt of the

Demand except under PCT Rule 59.3(a)

where the fee payable is the fee in effect

on the date of arrival of the Demand at

the United States International

Preliminary Examining Authority.

(1) If the handling and preliminary

fees are not paid within the time period

set in PCT Rule 57.3, applicant will be

notified and given one month within

which to pay the deficient fees plus a

late payment fee equal to the greater of:

(i) Fifty percent of the amount of the

deficient fees, but not exceeding an

amount equal to double the handling

fee; or

(ii) An amount equal to the handling

fee (PCT Rule 58bis.2).

(2) The one-month time limit set in

this paragraph to pay deficient fees may

not be extended.

(b) If the payment needed to cover the

handling and preliminary examination

fees, pursuant to paragraph (a) of this

section, is not timely made in

accordance with PCT Rule 58bis.1(d),

the United States International

Preliminary Examination Authority will

declare the Demand to be considered as

if it had not been submitted.

16. Section 1.484 is amended by

revising paragraph (b) to read as follows:

§ 1.484 Conduct of international

preliminary examination.

* * * * *

(b) International preliminary

examination will begin promptly upon

receipt of a proper Demand in an

application for which the United States

International Preliminary Examining

Authority is competent, for which the

fees for international preliminary

examination (§ 1.482) have been paid,

and which requests examination based

on the application as filed or as

amended by an amendment which has

been received by the United States

International Preliminary Examining

Authority. Where a Demand requests

examination based on a PCT Article 19

amendment which has not been

received, examination may begin at 20

months without receipt of the PCT

Article 19 amendment. Where a

Demand requests examination based on

a PCT Article 34 amendment which has

not been received, applicant will be

notified and given a time period within

which to submit the amendment.
29620 Federal Register / Vol. 63, No. 104 / Monday, June 1, 1998 /Rules and Regulations

(1) Examination will begin after the

earliest of:

(i) Receipt of the amendment;

(ii) Receipt of applicant’s statement

that no amendment will be made; or

(iii) Expiration of the time period set

in the notification.

(2) No international preliminary

examination report will be established

prior to issuance of an international

search report.

* * * * *

17. Section 1.485 is amended by

revising paragraph (a) to read as follows:

§ 1.485 Amendment by applicant during

international preliminary examination.

(a) The applicant may make

amendments at the time of filing the

Demand. The applicant may also make

amendments within the time limit set

by the International Preliminary

Examining Authority for reply to any

notification under § 1.484(b) or to any

written opinion. Any such amendments

must:

(1) Be made by submitting a

replacement sheet in compliance with

PCT Rules 10 and 11.1 to 11.13 for every

sheet of the application which differs

from the sheet it replaces unless an

entire sheet is cancelled; and

(2) Include a description of how the

replacement sheet differs from the

replaced sheet. Amendments that do not

comply with PCT Rules 10 and 11.1 to

11.13 may not be entered.

* * * * *

18. Section 1.494 is amended by

revising paragraph (c) to read as follows:

§ 1.494 Entering the national stage in the

United States of America as a Designated

Office.

* * * * *

(c) If applicant complies with

paragraph (b) of this section before

expiration of 20 months from the

priority date but omits:

(1) A translation of the international

application, as filed, into the English

language, if it was originally filed in

another language (35 U.S.C. 371(c)(2))

and/or

(2) The oath or declaration of the

inventor (35 U.S.C. 371(c)(4); see

§ 1.497), applicant will be so notified

and given a period of time within which

to file the translation and/or oath or

declaration in order to prevent

abandonment of the application. The

payment of the processing fee set forth

in § 1.492(f) is required for acceptance

of an English translation later than the

expiration of 20 months after the

priority date. The payment of the

surcharge set forth in § 1.492(e) is

required for acceptance of the oath or

declaration of the inventor later than the

expiration of 20 months after the

priority date. A ‘‘Sequence Listing’’

need not be translated if the ‘‘Sequence

Listing’’ complies with PCT Rule 12.1(d)

and the description complies with PCT

Rule 5.2(b).

* * * * *

19. Section 1.495 is amended by

revising paragraph (c) to read as follows:

§ 1.495 Entering the national stage in the

United States of America as an Elected

Office.

* * * * *

(c) If applicant complies with

paragraph (b) of this section before

expiration of 30 months from the

priority date but omits:

(1) A translation of the international

application, as filed, into the English

language, if it was originally filed in

another language (35 U.S.C. 371(c)(2))

and/or

(2) The oath or declaration of the

inventor (35 U.S.C. 371(c)(4); see

§ 1.497), applicant will be so notified

and given a period of time within which

to file the translation and/or oath or

declaration in order to prevent

abandonment of the application. The

payment of the processing fee set forth

in § 1.492(f) is required for acceptance

of an English translation later than the

expiration of 30 months after the

priority date. The payment of the

surcharge set forth in § 1.492(e) is

required for acceptance of the oath or

declaration of the inventor later than the

expiration of 30 months after the

priority date.

A ‘‘Sequence Listing’’ need not be

translated if the ‘‘Sequence Listing’’

complies with PCT Rule 12.1(d) and the

description complies with PCT Rule

5.2(b).

* * * * *

Dated: May 22, 1998.

Bruce A. Lehman,

Assistant Secretary of Commerce and

Commissioner of Patents and Trademarks.

[FR Doc. 98–14195 Filed 5–29–98; 8:45 am]

BILLING CODE 3510–16–P

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No: 960828235–8109–02]

RIN: 0651–AA88

Requirements for Patent Applications

Containing Nucleotide Sequence and/

or Amino Acid Disclosures

AGENCY: Patent and Trademark Office,

Commerce.

ACTION: Final rule.

SUMMARY: The Patent and Trademark

Office (PTO) is amending the rules for

submitting nucleotide or amino acid

sequences in computer readable form

(CRF) for patent applications. These

amendments simplify the requirements

of the rules, rearrange portions of the

rules for better understanding and

establish consistent rules to permit a

single internationally acceptable

computer readable form. Sequence

Listings will be presented in an

international, language neutral format

using numeric identifiers rather than the

current subject headings. The Paper

Sequence Listing will preferably be a

separately numbered section of the

patent application. Sequences which

contain fewer than four specifically

identified nucleotides or amino acids

will no longer be required to be

submitted in computer readable form.

DATES: Effective date: July 1, 1998. The

incorporation by reference of certain

publications listed in the regulations is

approved by the Director of the Federal

Register as of July 1, 1998.

Applicability date: Sections 1.821

through 1.825 as amended apply to

applications filed on or after July 1,

1998, except for: (1) applications that

claim the benefit of a prior application

under 35 U.S.C. 120 filed before July 1,

1998, and which do not add subject

matter involving a sequence listing

subject to §§ 1.821 through 1.825; and

(2) reissue applications in which the

application for the patent sought to be

reissued was filed before July 1, 1998.

Sections 1.821 through 1.825 apply

during a reexamination proceeding if

the application for the patent sought to

be reexamined was filed on or after July

1, 1998.

FOR FURTHER INFORMATION CONTACT:

Esther M. Kepplinger, by telephone at

(703) 308–1495; by mail addressed to:

Box Comments—Patents, Assistant

Commissioner for Patents, Washington,

DC 20231 marked to her attention; by

facsimile to (703) 305–3935; or by

electronic mail at

esther.kepplinger@uspto.gov.

SUPPLEMENTARY INFORMATION: Sections

1.821 through 1.825 of title 37 provide

a standardized format for the

description of nucleotide and amino

acid sequence data in patent

applications and require the submission

of such sequences in computer readable

form (CRF). Sections 1.821 through

1.825 provide the following benefits to

the PTO: (1) Improved search

capabilities; (2) improved interference

detection; (3) more efficient

examination; (4) cost savings for the

input of the sequence data; (5) more