[Federal Register Volume 86, Number 125 (Friday, July 2, 2021)]
[Rules and Regulations]
[Pages 35226-35229]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-14036]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: PTO-C-2017-0033]
RIN 0651-AD24


Removal of Certain Rules of Patent Practice

AGENCY: United States Patent and Trademark Office, Department of 
Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) revises the rules of practice in patent cases to eliminate the 
requirement for original handwritten signatures on certain 
correspondence with the Office of Enrollment and Discipline (OED) and 
certain payments made to the USPTO by credit card.

DATES: This rule is effective July 2, 2021.

FOR FURTHER INFORMATION CONTACT: For questions on this rule, please 
contact

[[Page 35227]]

Howie Reitz, Staff Attorney, Office of Enrollment and Discipline, 
USPTO, at 571-272-4097.

SUPPLEMENTARY INFORMATION:

I. Background

    To support regulatory reform efforts, the USPTO assembled a Working 
Group on Regulatory Reform (Working Group)--consisting of subject-
matter experts from each of the business units that implement the 
USPTO's regulations--to consider, review, and recommend ways that the 
regulations could be improved, revised, and streamlined. The Working 
Group reviewed existing regulations, both discretionary and required by 
statute or judicial order. The USPTO also solicited comments from 
stakeholders through a web page established to provide information on 
the USPTO's regulatory reform efforts, and through the Department of 
Commerce's Federal Register Notice titled ``Impact of Federal 
Regulations on Domestic Manufacturing'' (82 FR 12786, Mar. 7, 2017), 
which addressed the impact of regulatory burdens on domestic 
manufacturing. These efforts led to the selection of certain 
regulations related to the requirement for an original handwritten 
signature for certain correspondence with the Office of Enrollment and 
Discipline (OED) for removal based on the USPTO's assessment that they 
were not needed and/or that elimination could improve the USPTO's body 
of regulations.
    In addition, as part of the USPTO's COVID-19 relief efforts, the 
USPTO waived the requirement for an original handwritten signature for 
certain correspondence with OED and certain payments by credit card in 
an announcement made on March 19, 2020, and in a notice published in 
the Federal Register on March 30, 2020 (85 FR 17502). In that 
announcement, the USPTO determined that the effects of COVID-19 were an 
``extraordinary situation'' within the meaning of 37 CFR 1.183 and 
2.146(a)(5) for affected persons doing business before the Office that 
warranted a waiver of the original handwritten signature requirements 
of Sec.  1.4(e).

II. Regulations for Removal

    In this final rule, the USPTO finalizes those provisions in its 
proposed rule published on November 25, 2019 (84 FR 64800) related to 
the removal of the requirement for original handwritten signatures in 
dark ink on correspondence relating to registration to practice before 
the Office and other matters within the purview of the OED, which 
achieves the objective of making the USPTO's regulations more 
effective, while enabling the USPTO to fulfill its mission-related 
goals.
    Although the Office proposed to remove only the original 
handwritten signature requirement found in 37 CFR 1.4(e)(1), relating 
to correspondence with the OED, in this final rule, the Office also 
eliminates the original handwritten signature requirement found in 
Sec.  1.4(e)(2), related to payments by credit card when the payment is 
not being made via the Office's electronic filing systems. The removal 
of Sec.  1.4(e)(2) makes permanent the USPTO's waiver of the original 
handwritten signature requirement in payments by credit card announced 
on March 19, 2020, and published in the Federal Register on March 30, 
2020 (85 FR 17502). Elimination of the entirety of Sec.  1.4(e) allows, 
for example, the use of facsimile transmissions and S-signatures in 
enrollment and disciplinary matters before the OED, in addition to the 
use of facsimile transmissions and S-signatures in payments by credit 
card. Elimination of this section also facilitates the implementation 
of an electronic filing system within the OED. As a conforming change, 
this final rule also removes Sec.  1.6(d)(1) to eliminate an obsolete 
cross reference to Sec.  1.4(e).
    The USPTO intends to address its proposed revisions to its 
regulations governing requests for Presidential Proclamations under the 
Semiconductor Chip Protection Act (SCPA), as published in its proposed 
rule on November 25, 2019 (84 FR 64800), in a separate notice.

III. Proposed Rule: Comments and Responses

    The USPTO published a proposed rule on November 25, 2019 (84 FR 
64800), soliciting comments on the proposed amendments. The USPTO 
received no comments in response to the proposed rule.

IV. Discussion of Rule Changes

    This final rule removes and reserves 37 CFR 1.4(e), which sets 
forth certain correspondence and signature requirements. As a 
corresponding change, this final rule removes and reserves Sec.  
1.6(d)(1) to eliminate an obsolete cross reference to Sec.  1.4(e).
    Rulemaking Considerations:
    A. Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure, and/or interpretive 
rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015) 
(Interpretive rules ``advise the public of the agency's construction of 
the statutes and rules which it administers.'' (citation and internal 
quotation marks omitted)); Nat'l Org. of Veterans' Advocates v. Sec'y 
of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that 
clarifies that the interpretation of a statute is interpretive); Bachow 
Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules 
governing an application process are procedural under the 
Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 244 
F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims.).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this rulemaking were not required pursuant to 5 U.S.C. 
553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (Notice-
and-comment procedures are required neither when an agency ``issue[s] 
an initial interpretive rule'' nor ``when it amends or repeals that 
interpretive rule.''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), do not require notice-and-comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A))). However, to benefit from the public's input, the Office 
chose to seek public comment on the removal of its regulations 
governing requests for Presidential Proclamations under the SCPA and on 
the elimination of the requirement for original handwritten signatures 
on certain correspondence with the OED before implementing the rule.
    In addition, the Office, pursuant to the authority at 5 U.S.C. 
553(b)(B), finds good cause to remove regulations requiring that 
certain payments be made to the USPTO by credit card, found in 37 CFR 
1.4(e)(2) and Sec.  1.6(d)(1), without prior notice and an opportunity 
for public comment, as such procedures would be contrary to the public 
interest. The public does not require additional time to conform its 
conduct, as the changes in this final rule do not add any new 
requirements, and the elimination of the provisions in this final rule 
provides a modest benefit to impacted parties by making permanent the 
use of alternative signature methods in certain payments by credit 
card.
    Furthermore, the Office finds good cause to waive the 30-day 
delayed effectiveness period for this final rule, as provided by 5 
U.S.C. 553(d)(3), because such delay would be contrary to the public 
interest, as this final rule provides a modest benefit to impacted 
parties by making permanent the use of

[[Page 35228]]

alternative signature methods in certain payments by credit card.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, of the USPTO has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that changes in this 
final rule will not have a significant economic impact on a substantial 
number of small entities. See 5 U.S.C. 605(b).
    This final rule removes 37 CFR 1.4(e), which required original 
handwritten signatures in dark ink on correspondence relating to 
registration to practice before the Office and other matters in the 
purview of the OED, and in payments by credit card where the payment is 
not being made via the Office's electronic filing systems. Elimination 
of this section allows for the use of facsimile transmissions and S-
signatures in enrollment and disciplinary matters before the OED and in 
the payment of fees by credit card, thereby providing a modest benefit 
to impacted parties. As a conforming change, this final rule also 
removes Sec.  1.6(d)(1) to eliminate an obsolete cross reference to 
Sec.  1.4(e). For these reasons, this rulemaking will not have a 
significant economic impact on a substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866.
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule; (2) tailored the rule to impose the least burden on 
society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector, and the public as a whole, 
and provided online access to the rulemaking docket; (7) attempted to 
promote coordination, simplification, and harmonization across 
government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes.
    E. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    F. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes, (2) impose substantial direct compliance costs on Indian tribal 
governments, or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    H. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden, as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    I. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    J. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not effect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    K. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this rulemaking are not expected 
to result in an annual effect on the economy of $100 million or more; a 
major increase in costs or prices; or significant adverse effects on 
competition, employment, investment, productivity, innovation, or the 
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this 
rulemaking is not expected to result in a ``major rule,'' as defined in 
5 U.S.C. 804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this rulemaking do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of $100 million (as adjusted) or more in any one 
year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of $100 million (as adjusted) or more 
in any one year, and will not significantly or uniquely affect small 
governments. Therefore, no actions are necessary under the provisions 
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    M. National Environmental Policy Act of 1969: This rulemaking will 
not have any effect on the quality of the environment and is thus 
categorically excluded from review under the National Environmental 
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
    N. National Technology Transfer and Advancement Act of 1995: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 
1995 (44 U.S.C. 3501 et seq.) requires that the Office consider the 
impact of paperwork and other information collection burdens imposed on 
the public. This rulemaking involves information collections that are 
subject to review by the Office of Management and Budget (OMB) under 
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). Removal of 
the requirement for original handwritten signatures in dark ink does 
not impact the current OMB approval of OMB control numbers 0651-0012, 
0651-0017, and 0651-0043.
    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 
has a currently valid OMB control number.
    P. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies, to provide increased opportunities 
for citizen

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access to Government information and services, and for other purposes.

List of Subjects in 37 CFR Part 1

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

    For the reasons stated in the preamble, the USPTO amends chapter 1 
of title 37 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

0
1. The authority citation for part 1 continues to read as follows:

    Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.


Sec.  1.4   [Amended]

0
2. Section 1.4 is amended by removing and reserving paragraph (e).


Sec.  1.6   [Amended]

0
3. Section 1.6 is amended by removing and reserving paragraph (d)(1).

Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2021-14036 Filed 7-1-21; 8:45 am]
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