Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 54259 

On May 22, 2003, the United Nations 

Security Council adopted Resolution 

1483, which substantially lifted the 

multilateral economic sanctions with 

respect to Iraq. On July 29, 2004, the 

President issued Executive Order 13350 

terminating the national emergency 

declared in Executive Order 12722 and 

revoking Executive Orders 12722 and 

12724 and all other Executive orders 

based on that national emergency. 

Notwithstanding the termination of the 

national emergency, this new Executive 

order, pursuant to the President’s 

authority under section 207 of IEEPA 

(50 U.S.C. 1706), continues prohibitions 

with regard to transactions involving 

any property blocked pursuant to 

Executive Order 12722 or Executive 

Order 12724 that remains blocked as of 

July 30, 2004. Moreover, the new 

Executive order indicates that the 

termination ‘‘shall not affect any action 

taken or proceeding pending but not 

finally concluded’’ as of July 30, 2004, 

any action or proceeding based on any 

act committed prior to such date, or 

‘‘any rights or duties that had matured 

or penalties that were incurred’’ prior to 

that date. 

Because property blocked as of the 

termination of sanctions against Iraq 

remains blocked pursuant to Executive 

Order 13350, any Iraqi debt blocked 

pursuant to those sanctions has 

remained blocked. Because of the lifting 

of multilateral and U.S. sanctions 

against Iraq, including the resolution of 

issues relating to Iraqi debt, the Office 

of Foreign Assets Control is today 

issuing a new general license 

unblocking debt in which the 

Government of Iraq has an interest, 

subject to certain conditions. 

First, notwithstanding the new 

general license, transactions that 

remained prohibited by paragraphs 

(b)(3) and (b)(5) of 31 CFR 575.533 

continue to remain prohibited. Second, 

the general license does not authorize 

the purchase, exchange or settlement of 

debt in which the Government of Iraq 

has an interest utilizing funds or other 

property that is blocked pursuant to this 

part. 

Procedural Matters 

Because the Iraqi Sanctions 

Regulations involve a foreign affairs 

function of the United States, the 

provisions in the Administrative 

Procedure Act (5 U.S.C. 553) requiring 

notice and public procedure and a 

delayed effective date are inapplicable. 

Because no notice of proposed 

rulemaking is required, the provisions 

of the Regulatory Flexibility Act (5 

U.S.C. Chapter 6) do not apply. 

Electronic and Facsimile Availability 

This file is available for download 

without charge in ASCII and Adobe 

Acrobat readable (*.PDF) formats at 

GPO Access. GPO Access supports 

HTTP, FTP, and Telnet at http:// 

fedbbs.access.gpo.gov. It may also be 

accessed by modem dialup at 202/512–

1387 followed by typing ‘‘/GO/FAC.’’

Paper copies of this document can be 

obtained by calling the Government 

Printing Office at 202/512–1530. This 

document and additional information 

concerning the programs of the Office of 

Foreign Assets Control are available for 

downloading from the Office’s Internet 

Home Page: http://www.treas.gov/ofac, 

or via FTP at ofacftp.treas.gov. 

Facsimiles of information are available 

through the Office’s 24-hour fax-ondemand service: call 202/622–0077 

using a fax machine, fax modem, or 

(within the United States) a touch-tone 

telephone. 

Paperwork Reduction Act 

The collections of information related 

to these regulations can be found in 31 

CFR part 501. Pursuant to the 

Paperwork Reduction Act of 1995 (44 

U.S.C. 3507) those collections of 

information have been previously 

approved by the Office of Management 

and Budget under control number 1505–

0164. 

List of Subjects in 31 CFR Part 575 

Administrative practice and 

procedure, Banks, banking, Blocking of 

assets, Foreign trade, Iraq, Penalties, 

Sanctions. 

■ For the reasons set forth in the 

preamble, 31 CFR chapter V is amended 

as follows: 

PART 575—IRAQI SANCTIONS 

REGULATIONS 

■ 1. The authority citation for part 575 

continues to read as follows: 

Authority: 3 U.S.C. 301; 18 U.S.C. 2332d; 

22 U.S.C. 287c; Pub. L. 101–410, 104 Stat. 

890 (28 U.S.C. 2461 note); 31 U.S.C. 321(b); 

50 U.S.C. 1601–1651, 1701–1706; Pub. L. 

101–513, 104 Stat. 2047–2055 (50 U.S.C. 

1701 note); E.O. 12722, 55 FR 31803, 3 CFR 

1990 Comp., p. 294; E.O. 12724, 55 FR 33089, 

3 CFR, 1990 Comp., p. 297; E.O. 12817, 57 

FR 48433, 3 CFR, 1992 Comp., p. 317; E.O. 

13350, 69 FR 46055, July 29, 2004. 

Subpart E—Licenses, Authorizations, 

and Statements of Licensing Policy 

■ 2. A new section 575.535 is added to 

read as follows: 

§ 575.535 Iraqi Debt Unblocked. 

(a) Except as provided in paragraph 

(b) of this section, all transactions 

otherwise prohibited by this part that 

involve debts in which the Government 

of Iraq has an interest are authorized. 

(b) For purposes of this part: 

(1) This section does not authorize 

transactions that remain prohibited 

under the terms of paragraphs (b)(3) and 

(b)(5) of § 575.533 of this part. 

(2) This section does not authorize the 

purchase, exchange or settlement of 

debt in which the Government of Iraq 

has an interest utilizing funds or other 

property that is blocked pursuant to this 

part. 

Dated: September 6, 2005. 

Robert W. Werner, 

Director, Office of Foreign Assets Control. 

Stuart A. Levey, 

Under Secretary of the Treasury, Office of 

Terrorism and Financial Intelligence, 

Department of the Treasury. 

[FR Doc. 05–18245 Filed 9–9–05; 12:57 pm] 

BILLING CODE 4810–25–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 1 and 3 

[Docket No.: 2004–P–034] 

RIN 0651–AB76 

Changes To Implement the 

Cooperative Research and Technology 

Enhancement Act of 2004 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The Cooperative Research and 

Technology Enhancement Act of 2004 

(CREATE Act) amends the patent laws 

to provide that subject matter developed 

by another person shall be treated as 

owned by the same person or subject to 

an obligation of assignment to the same 

person for purposes of determining 

obviousness if three conditions are met: 

The claimed invention was made by or 

on behalf of parties to a joint research 

agreement that was in effect on or before 

the date the claimed invention was 

made; the claimed invention was made 

as a result of activities undertaken 

within the scope of the joint research 

agreement; and the application for 

patent for the claimed invention 

discloses or is amended to disclose the 

names of the parties to the joint research 

agreement. The United States Patent and 

Trademark Office (Office) is revising the 

rules of practice in patent cases to 

implement the CREATE Act. 

DATES: Effective Date: September 14, 

2005. 

54260 Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 

Applicability Date: The changes in 

this final rule apply to any patent 

granted on or after December 10, 2004. 

FOR FURTHER INFORMATION CONTACT: 

Robert A. Clarke, or Jeanne M. Clark, 

Senior Legal Advisors, Office of Patent 

Legal Administration, Office of the 

Deputy Commissioner for Patent 

Examination Policy, by telephone at 

(571) 272–7704, by mail addressed to: 

Box Comments—Patents, Commissioner 

for Patents, P.O. Box 1450, Alexandria, 

VA 22313–1450, or by facsimile to (571) 

273–7735, marked to the attention of 

Robert A. Clarke. 

SUPPLEMENTARY INFORMATION: The 

CREATE Act amends 35 U.S.C. 103(c) to 

provide that subject matter developed 

by another person shall be treated as 

owned by the same person or subject to 

an obligation of assignment to the same 

person for purposes of determining 

obviousness if three conditions are met: 

(1) The claimed invention was made by 

or on behalf of parties to a joint research 

agreement that was in effect on or before 

the date the claimed invention was 

made; (2) the claimed invention was 

made as a result of activities undertaken 

within the scope of the joint research 

agreement; and (3) the application for 

patent for the claimed invention 

discloses or is amended to disclose the 

names of the parties to the joint research 

agreement. See Pub. L. 108–453, 118 

Stat. 3596 (2004). Section 2 of the 

CREATE Act specifically amended 35 

U.S.C. 103(c) to provide that: 

(c)(1) Subject matter developed by 

another person, which qualifies as prior 

art only under one or more of 

subsections (e), (f), and (g) of section 

102 of this title, shall not preclude 

patentability under this section where 

the subject matter and the claimed 

invention were, at the time the claimed 

invention was made, owned by the same 

person or subject to an obligation of 

assignment to the same person. 

(2) For purposes of this subsection, 

subject matter developed by another 

person and a claimed invention shall be 

deemed to have been owned by the 

same person or subject to an obligation 

of assignment to the same person if—

(A) The claimed invention was made 

by or on behalf of parties to a joint 

research agreement that was in effect on 

or before the date the claimed invention 

was made; 

(B) The claimed invention was made 

as a result of activities undertaken 

within the scope of the joint research 

agreement; and 

(C) The application for patent for the 

claimed invention discloses or is 

amended to disclose the names of the 

parties to the joint research agreement. 

(3) For purposes of paragraph (2), the 

term ‘‘joint research agreement’’ means 

a written contract, grant, or cooperative 

agreement entered into by two or more 

persons or entities for the performance 

of experimental, developmental, or 

research work in the field of the claimed 

invention. 

Section 3 of the CREATE Act provides 

that its amendments shall apply to any 

patent (including any reissue patent) 

granted on or after December 10, 2004. 

The CREATE Act provides that its 

amendments shall not affect any final 

decision of a court or the Office 

rendered before December 10, 2004, and 

shall not affect the right of any party in 

any action pending before the Office or 

a court on December 10, 2004, to have 

that party’s rights determined on the 

basis of the provisions of title 35, United 

States Code, in effect on December 9, 

2004. Since the CREATE Act also 

includes the amendment to 35 U.S.C. 

103(c) made by § 4807 of the American 

Inventors Protection Act of 1999 (see 

Pub. L. 106–113, 113 Stat. 1501, 1501A–

591 (1999)), the change of ‘‘subsection 

(f) or (g)’’ to ‘‘one or more of subsections 

(e), (f), or (g)’’ in 35 U.S.C. 103(c) is now 

also applicable to applications filed 

prior to November 29, 1999, which were 

pending on December 10, 2004. 

35 U.S.C. 103(c) as amended by the 

CREATE Act continues to apply only to 

subject matter which qualifies as prior 

art under 35 U.S.C. 102(e), (f) or (g), and 

which is being relied upon in a rejection 

under 35 U.S.C. 103. If the rejection is 

anticipation under 35 U.S.C. 102(e), (f), 

or (g), 35 U.S.C. 103(c) cannot be relied 

upon to disqualify the subject matter in 

order to overcome the anticipation 

rejection. 

Because the CREATE Act applies only 

to patents granted on or after December 

10, 2004, the recapture doctrine may 

prevent the presentation of claims in 

reissue applications that had been 

amended or cancelled (e.g., to avoid a 

rejection under 35 U.S.C. 103(a) based 

upon subject matter that may now be 

disqualified under the CREATE Act) 

during the prosecution of the 

application which resulted in the patent 

for which reissue is sought. See H.R. 

Rep. No. 108–425, at 6–7 (2003). 

The Office published an interim rule 

to revise the rules of practice in title 37 

of the Code of Federal Regulations (CFR) 

to implement the CREATE Act. See 

Changes to Implement the Cooperative 

Research and Technology Enhancement 

Act of 2004, 70 FR 1818 (Jan. 11, 2005), 

1291 Off. Gaz. Pat. Office 58 (Feb. 8, 

2005) (interim rule). This final rule 

further revises the rules of practice in 

title 37, CFR, to implement the CREATE 

Act. 

Discussion of Specific Rules 

Section 1.17: Section 1.17(i) is 

amended in this final rule to add the 

processing fee required by § 1.71(g)(2) 

(see the discussion regarding 

§ 1.71(g)(2)). 

Section 1.52: Section 1.52(e)(5) is 

amended in this final rule to change 

‘‘§ 1.77(b)(4)’’ to ‘‘§ 1.77(b)(5)’’ for 

consistency with the change to § 1.77(b). 

Section 1.71: Section 1.71 was 

amended in the interim rule to add new 

§ 1.71(g). An application must disclose 

or be amended to disclose the names of 

the parties to a joint research agreement 

to invoke the ‘‘safe harbor’’ provision of 

35 U.S.C. 103(c) as amended by the 

CREATE Act. See 35 U.S.C. 103(c)(2)(C). 

Section 1.71(g) provides for the 

situation in which an application 

discloses or is amended to disclose the 

names of the parties to a joint research 

agreement to invoke the ‘‘safe harbor’’

provision of 35 U.S.C. 103(c) as 

amended by the CREATE Act. Section 

1.71(g)(1) specifically provides that the 

specification may disclose or be 

amended to disclose the name of each 

party to the joint research agreement 

because this information is required by 

35 U.S.C. 103(c)(2)(C). This final rule 

eliminates the requirements for: (1) The 

date the joint research agreement was 

executed; and (2) a concise statement of 

the field of the claimed invention. 

Section 1.71(g)(2) provides that an 

amendment under § 1.71(g)(1) must be 

accompanied by the processing fee set 

forth in § 1.17(i) if it is not filed within 

one of the following time periods: (1) 

Within three months of the filing date 

of a national application; (2) within 

three months of the date of entry of the 

national stage as set forth in § 1.491 in 

an international application; (3) before 

the mailing of a first Office action on the 

merits; or (4) before the mailing of a first 

Office action after the filing of a request 

for continued examination under 

§ 1.114. 

Section 1.71(g)(3) provides that if an 

amendment under § 1.71(g)(1) is filed 

after the date the issue fee is paid, the 

patent as issued may not necessarily 

include the names of the parties to the 

joint research agreement. Section 

1.71(g)(3) also provides that if the patent 

as issued does not include the names of 

the parties to the joint research 

agreement, the patent must be corrected 

to include the names of the parties to 

the joint research agreement by a 

certificate of correction under 35 U.S.C. 

255 and 37 CFR 1.323 for the 

amendment to be effective. The 

requirements of § 1.71(g)(3) (correction 

of the patent by a certificate of 

correction under 35 U.S.C. 255 and 37 

Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 54261 

CFR 1.323) also apply in the situation in 

which such an amendment is not filed 

until after the date the patent was 

granted (in a patent granted on or after 

December 10, 2004). It is unnecessary to 

file a reissue application or request for 

reexamination of the patent to submit 

the amendment and other information 

necessary to take advantage of 35 U.S.C. 

103(c) as amended by the CREATE Act. 

See H.R. Rep. No. 108–425, at 9 (‘‘[t]he 

omission of the names of parties to the 

agreement is not an error that would 

justify commencement of a reissue or 

reexamination proceeding’’). 

Section 1.71(g)(3) is amended in this 

final rule to eliminate the provision that 

the processing fee under § 1.17(i) is 

required if an amendment under 

§ 1.71(g)(1) is submitted after payment 

of the issue fee. The processing fee 

under § 1.17(i) is required for an 

amendment under § 1.71(g)(1) submitted 

after the time periods set forth in 

§ 1.71(g)(2), even if the amendment 

under § 1.71(g)(1) is also submitted after 

payment of the issue fee or after a patent 

is granted. 

The submission of such an 

amendment remains subject to the rules 

of practice: e.g., §§ 1.116, 1.121, and 

1.312. For example, if an amendment 

under § 1.71(g) is submitted in an 

application under final rejection to 

overcome a rejection under 35 U.S.C. 

103(a) based upon a U.S. patent which 

qualifies as prior art only under 35 

U.S.C. 102(e), the examiner may refuse 

to enter the amendment under § 1.71(g) 

if it is not accompanied by an 

appropriate terminal disclaimer 

(§ 1.321(d)). This is because such an 

amendment may necessitate the 

reopening of prosecution (e.g., for entry 

of a double patenting rejection). 

If an amendment under § 1.71(g) is 

submitted to overcome a rejection under 

35 U.S.C. 103(a) based upon a U.S. 

patent or U.S. patent application 

publication which qualifies as prior art 

only under 35 U.S.C. 102(e), and the 

examiner withdraws the rejection under 

35 U.S.C. 103(a), the examiner may need 

to issue an Office action containing a 

new double patenting rejection based 

upon the disqualified patent or patent 

application publication. In these 

situations, such Office action can be 

made final, provided that the examiner 

introduces no other new ground of 

rejection that was not necessitated by 

either amendment or an information 

disclosure statement filed during the 

time period set forth in § 1.97(c) with 

the fee set forth in § 1.17(p). The Office 

action is properly made final because 

the new double patenting rejection was 

necessitated by amendment of the 

application by applicant. This is the 

case regardless of whether the claims 

themselves have been amended. 

Section 1.76: Section 1.76(b)(5) is 

amended in this final rule to change 

‘‘§ 1.78(a)(4)’’ to ‘‘§ 1.78(a)(5)’’ to correct 

a typographic error. 

Section 1.77: Section 1.77 was 

amended in the interim rule to provide 

for the names of the parties to a joint 

research agreement in the preferred 

arrangement of the specification. No 

further amendment to § 1.77 is made in 

this final rule. 

Section 1.96: Section 1.96(c) is 

amended in this final rule to change 

‘‘§ 1.77(b)(4)’’ to ‘‘§ 1.77(b)(5)’’ for 

consistency with the change to § 1.77(b). 

Section 1.104: Section 1.104(c)(4) is 

amended for consistency with the 

amendment to 35 U.S.C. 103(c) and to 

include the requirements for the 

statement to invoke the prior art 

disqualification under the CREATE Act. 

Section 1.104 is also amended to change 

‘‘same person or organization’’ to ‘‘same 

person’’ for consistency with 35 U.S.C. 

103(c) (no change in substance). 

Once an examiner has established a 

prima facie case of obviousness under 

35 U.S.C. 103(a), the burden is on the 

applicant to overcome the rejection by 

invoking 35 U.S.C. 103(c) as amended 

by the CREATE Act. Such a rejection 

under 35 U.S.C. 103(a) may be based 

upon subject matter (whether a patent 

document, publication, or other 

evidence) which qualifies as prior art 

under only one or more of 35 U.S.C. 

102(e), (f), or (g). To overcome such a 

rejection via the CREATE Act, the 

applicant must provide a statement in 

compliance with § 1.104(c)(4) to the 

effect that the prior art and the claimed 

invention were made by or on the behalf 

of parties to a joint research agreement, 

within the meaning of 35 U.S.C. 

103(c)(3), which was in effect on or 

before the date the claimed invention 

was made, and that the claimed 

invention was made as a result of 

activities undertaken within the scope 

of the joint research agreement. 35 

U.S.C. 103(c)(3) defines a ‘‘joint research 

agreement’’ as a written contract, grant, 

or cooperative agreement entered into 

by two or more persons or entities for 

the performance of experimental, 

developmental, or research work in the 

field of the claimed invention, that was 

in effect on or before the date the 

claimed invention (under examination 

or reexamination) was made. The 

statement should either be on or begin 

on a separate sheet and must not be 

directed to other matters (§ 1.4(c)). The 

statement must be signed in accordance 

with § 1.33(b). 

In addition to providing a statement, 

the applicant must also amend the 

specification to disclose the names of 

the parties to the joint research 

agreement in compliance with 

§ 1.71(g)(1). If the applicant disqualifies 

the subject matter relied upon by the 

examiner in accordance with the 

CREATE Act and the procedures set 

forth in this final rule, the examiner will 

treat the application under examination 

and the 35 U.S.C. 102(e), (f), or (g) prior 

art as if they are commonly owned for 

purposes of 35 U.S.C. 103. 

Section 1.109: Section 1.109 was 

added in the interim rule, but is 

removed and reserved in this final rule. 

This final rule sets forth guidelines for 

double patenting rejections based upon 

a patent or application that is not 

commonly owned but was disqualified 

under 35 U.S.C. 103(c) as resulting from 

activities undertaken within the scope 

of a joint research agreement and other 

double patenting rejections in the 

Manual of Patent Examining Procedure 

(MPEP) rather than in the rules of 

practice. MPEP 804 sets forth the 

Office’s guidelines for double patenting 

rejections. 

Congress recognized that this 

amendment to 35 U.S.C. 103(c) would 

result in situations in which there 

would be double patenting between 

applications not owned by the same 

party. See H.R. Rep. No. 108–425, at 5–

6 (2003). Therefore, the Office is 

providing the following guidelines for 

double patenting rejections based upon 

a patent or application that is not 

commonly owned but was disqualified 

under 35 U.S.C. 103(c) as resulting from 

activities undertaken within the scope 

of a joint research agreement, which 

will be incorporated into the next 

revision of the MPEP. A double 

patenting rejection will be made in an 

application or patent under 

reexamination (assuming that the 

applicant or patentee has not already 

filed the appropriate terminal 

disclaimer) if: (1) The application or 

patent under reexamination claims an 

invention that is not patentably distinct 

from an invention claimed in a noncommonly owned application or patent; 

(2) the application or patent and the 

non-commonly owned application or 

patent are by or on behalf of parties to 

a joint research agreement; and (3) a 

statement has been filed under 

§ 1.104(c)(4)(iii) to disqualify the noncommonly owned application or patent 

under 35 U.S.C. 103(c)(2). Thus, the 

application or patent and the subject 

matter disqualified under 35 U.S.C. 

103(c), as amended by the CREATE Act, 

will be treated as commonly owned for 

purposes of double patenting analysis. 

Such a double patenting rejection will 

be made regardless of whether the 

54262 Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 

application or patent and the noncommonly owned patent or application 

have the same or a different inventive 

entity. This double patenting rejection 

may be obviated by filing a terminal 

disclaimer in accordance with 

§ 1.321(d). 

Section 1.130: Section 1.130 was 

amended in the interim rule to remove 

and reserve § 1.130(b). No further 

amendment to § 1.130 is made in this 

final rule. 

Section 1.321: Section 1.321(c) is 

amended to change ‘‘judicially created 

double patenting rejection’’ to 

‘‘judicially created double patenting’’

because double patenting may exist 

regardless of whether a double patenting 

rejection has been made. 

Section 1.321(d) is added to provide 

the terminal disclaimer requirements for 

the double patenting situations which 

arise as a result of the CREATE Act. See 

H.R. Rep. No. 108–425, at 6 (the Office 

may require a terminal disclaimer when 

double patenting is determined to exist 

for two or more claimed inventions for 

any application for which the applicant 

takes advantage of the ‘‘safe harbor’’

provision in 35 U.S.C. 103(c) as 

amended by the CREATE Act). The 

legislative history of the CREATE Act 

specifically states that: 

Congress intends that parties who seek to 

benefit from this Act to waive the right to 

enforce any patent separately from any 

earlier patent that would otherwise have 

formed the basis for an obviousness-type 

double patenting rejection. Further, Congress 

intends that parties with an interest in a 

patent that is granted solely on the basis of 

the amendments made pursuant to this Act 

to waive requirements for multiple licenses. 

In other words, the requirements under 

current law for parties to terminally disclaim 

interests in patents that would otherwise be 

invalid on ‘‘obviousness-type’’ double 

patenting grounds are to apply, mutatis 

mutandis, to the patents that may be issued 

in circumstances made possible by this Act. 

See H.R. Rep. No. 108–425, at 6. 

Section 1.321(d) specifically sets forth 

the requirements for a terminal 

disclaimer that is filed in a patent 

application or in a reexamination 

proceeding to obviate a double 

patenting based upon a U.S. patent or 

application that is not commonly owned 

but was disqualified under 35 U.S.C. 

103(c). First, the terminal disclaimer 

must comply with the provisions of 

§§ 1.321(b)(2) through (b)(4). Second, 

the terminal disclaimer must be signed 

by the applicant in accordance with 

§ 1.321(b)(1) if filed in a patent 

application, or be signed by the patentee 

in accordance with § 1.321(a)(1) if filed 

in a reexamination proceeding. Third, 

the terminal disclaimer must also 

include a provision that the owner of 

the application or patent waives the 

right to separately enforce any patent 

granted on that application or any 

patent subject to the reexamination 

proceeding and the disqualified patent 

or any patent granted on the 

disqualified application, and that any 

patent granted on that application or 

any patent subject to the reexamination 

proceeding shall be enforceable only for 

and during such period that said patent 

and the disqualified patent, or any 

patent granted on the disqualified 

application are not separately enforced. 

Section 1.321(d) does not include a 

provision that the applicant or patentee 

agrees that such waiver and agreement 

shall be binding upon the owner of the 

rejected application or patent, its 

successors, or assigns because this is 

provided for in § 1.321(b). 

This final rule eliminates the 

following requirements: (1) That the 

owner of the disqualified patent or 

application must sign the terminal 

disclaimer; (2) that there be a waiver of 

the right to separately license the 

application or patent and the 

disqualified patent or application; and 

(3) that the agreement that the 

application or patent and the 

disqualified patent or application shall 

be enforceable only during the period 

that the patent or application and the 

disqualified patent or application are 

not separately licensed. 

Section 3.11: Section 3.11(c) was 

added in the interim rule to provide that 

the Office will record a joint research 

agreement or an excerpt of a joint 

research agreement as provided in 37 

CFR part 3. Section 3.11(c) as adopted 

in the interim rule provided that such 

a joint research agreement, or excerpt of 

a joint research agreement, must include 

the name of each party to the joint 

research agreement, the date the joint 

research agreement was executed, and a 

concise statement of the field of 

invention. This final rule eliminates the 

requirements that such a joint research 

agreement, or excerpt of a joint research 

agreement, include the name of each 

party to the joint research agreement, 

the date the joint research agreement 

was executed, and a concise statement 

of the field of invention (see discussion 

of the changes to § 1.71(g) in this final 

rule). Thus, § 3.11(c) as amended in this 

final rule simply provides that the 

Office will record a joint research 

agreement or an excerpt of a joint 

research agreement as provided in 37 

CFR part 3. 

Section 3.31: Section 3.31(g) was 

added in the interim rule to set forth the 

requirements for the cover sheet 

required by § 3.28 seeking to record a 

joint research agreement or an excerpt of 

a joint research agreement as provided 

by § 3.11(c). First, the cover sheet must 

identify the document as a ‘‘joint 

research agreement’’ (preferably, by 

checking the joint research agreement 

checkbox in box 3 of Office form PTO–

1595 (March 2005)). Second, the cover 

sheet must indicate the name of the 

owner of the application or patent 

(preferably, in the space provided for 

the name and address of the party 

receiving the interest in box 2 of Office 

form PTO–1595). Third, the cover sheet 

must indicate the name of every other 

party to the joint research agreement 

(preferably, in the space provided for 

the name of the party conveying the 

interest in box 1 of Office form PTO–

1595). Additional names may be 

provided on an attached sheet if 

necessary. Fourth, the cover sheet must 

indicate the date the joint research 

agreement was executed (preferably, in 

the space provided for the execution 

date in box 3 of Office form PTO–1595). 

No further amendment to § 3.31 is made 

in this final rule. 

Response to comments: The Office 

published an interim rule providing 

changes to the Office’s practice for 

implementing the CREATE Act and 

requesting public comment on these 

changes, See Changes to Implement the 

Cooperative Research and Technology 

Enhancement Act of 2004, 70 FR at 

1818, 1291 Off. Gaz. Pat. Office at 59. 

The Office received twenty-four written 

comments (from intellectual property 

organizations, patent practitioners, and 

the general public) in response to this 

interim rule. The comments and the 

Office’s responses to the comments 

follow: 

Comment 1: Several comments 

suggested that the effective date 

provisions of the CREATE Act did not 

alter the effective date of the 

amendments to 35 U.S.C. 103(c) by the 

American Inventors Protection Act of 

1999 (AIPA) (see Pub. L. 106–113, 113 

Stat. 1501, 1501A–591 (1999)). 

Accordingly, the comments argued that 

only applications filed on or after 

November 29, 1999 (the effective date of 

the AIPA amendments to 35 U.S.C. 

103(c)) can disqualify 102(e) prior art 

used in a rejection under 35 U.S.C. 

103(c) based on common ownership. 

Response: The Office’s interpretation 

is based on the plain language of the 

Act. Section 3 of the CREATE Act 

provides that ‘‘[t]he amendments made 

by this Act shall apply to any patent 

granted on or after the date of enactment 

of this Act.’’ The CREATE Act rewrote 

35 U.S.C. 103(c) in its entirety and 

included the amendment to 35 U.S.C. 

103(c) made by § 4807 of the American 

Inventors Protection Act of 1999. The 

Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 54263 

legislative history of the CREATE Act 

does not elaborate further on this issue. 

The comments do not provide any 

authority for any alternative 

interpretation. Accordingly, the 

effective date provision of the CREATE 

Act applies to 35 U.S.C. 103(c) in its 

entirety. 

In addition, the alternative 

interpretation presented by the 

comments would lead to an anomalous 

application of the prior art exclusion 

under 35 U.S.C. 103(c), in that in 

applications filed prior to November 29, 

1999, but pending on or after December 

10, 2004, prior art available under only 

35 U.S.C. 102(e) could not be excluded 

by common owners under 35 U.S.C. 

103(c), but could be excluded by parties 

to a joint research agreement under 35 

U.S.C. 103(c)(2). 

In any event, applicants currently still 

have the option of refiling any pending 

application that was filed before 

November 29, 1999, to avoid any 

possible challenge to the application of 

the AIPA amendments to 35 U.S.C. 

103(c) to their application. 

Comment 2: One comment expressed 

disagreement with the Office’s position 

that the recapture doctrine may prevent 

the presentation of claims in reissue 

applications that had been amended or 

cancelled (e.g., to avoid a rejection 

under 35 U.S.C. 103(a) based upon 

subject matter that may now be 

disqualified under the CREATE Act) 

during the prosecution of the 

application which resulted in the patent 

being reissued. 

Response: The statement concerning 

the recapture doctrine in the interim 

rule is simply a restatement of what is 

stated in the legislative history of the 

CREATE Act concerning the recapture 

doctrine. See H.R. Rep. No. 108–425, at 

6–7 (2003). 

Comment 3: Several comments 

suggested that the requirements for the 

statement to invoke the prior art 

exclusion under the CREATE Act 

should be put into a regulation. In 

addition, the comments objected to the 

requirement that the applicant or the 

assignee must sign the statement. 

Furthermore, the comments expressed 

concern over filing a statement that 

might be perceived as making an 

admission that the disqualified 

reference is ‘‘prior art.’’

Response: The requirements for the 

statement have been placed into 

§ 1.104(c)(4), and the requirement for 

signature for the statement is now the 

same as for any other correspondence as 

set forth in § 1.33(b). Therefore, a 

registered practitioner will be allowed 

to sign the statement in accordance with 

§ 1.33. 

With respect to the use of the term 

‘‘prior art’’ in the statement, it is noted 

that 35 U.S.C. 103(c)(1) uses the term 

‘‘prior art’’ in its first sentence. Thus, 

§ 1.104(c)(4) uses terminology consistent 

with 35 U.S.C. 103(c)(1). 

Comment 4: Several comments 

questioned whether an interim rule was 

necessary or justified to implement the 

CREATE Act. The comments suggested 

that the statutory language was clear 

and there was no need to implement 

regulations. 

Response: The Office believes that 

implementing regulations were 

necessary, for example, to: (1) Advise 

applicants on how to amend an 

application to name the parties to a joint 

research agreement; (2) permit a 

terminal disclaimer by a party who does 

not also own the application or patent 

forming the basis of the double 

patenting rejection; and (3) provide for 

the recordation of a joint research 

agreement in the Office’s assignment 

records. 

Comment 5: Several comments were 

critical of the requirements of 

§ 1.71(g)(1) as added in the interim rule. 

Some comments stated that the 

requirements are unnecessarily 

complicated and suggested deleting 

those not required by statute. Other 

comments requested clarification of the 

requirements or suggested alternative 

requirements. 

Response: Section 1.71(g)(1) has been 

amended to require only the names of 

the parties to the joint research 

agreement, which is required by 35 

U.S.C. 103(c)(2)(C). Comments 

pertaining to requirements not recited in 

the statute (e.g., the execution date or 

the concise statement of the claimed 

invention) are moot in view of the 

amendment to § 1.71(g)(1) in this final 

rule. 

Comment 6: Several comments 

requested the definition of terms such as 

‘‘joint research agreement,’’ ‘‘execution 

date,’’ ‘‘invention made,’’ and ‘‘not 

patently distinct.’’

Response: The term ‘‘joint research 

agreement’’ is defined in 35 U.S.C. 

103(c)(3) and is further discussed in the 

legislative history of the CREATE Act. 

The term ‘‘execution date’’ is no longer 

used in § 1.71(g)(1), and therefore, there 

is no need to define it in the rules of 

practice. The terms ‘‘invention made’’

and ‘‘not patently distinct’’ are defined 

by case law. See e.g., In re Katz., 687 

F.2d 450, 215 USPQ 14 (CCPA 1982) 

(‘‘invention made’’ ); and In re Bratt, 937 

F.2d 589, 19 USPQ2d 1289 (Fed. Cir. 

1991) (‘‘not patently distinct’’) and In re 

Longi, 759 F.2d 887, 225 USPQ 645 

(Fed. Cir. 1985) (same). Accordingly, 

there is no need to provide explicit 

definitions for these terms in this final 

rule. 

Comment 7: One comment requested 

that the Office impose a requirement 

that a party invoking the CREATE Act 

prior art exclusion must notify the other 

parties to the joint research agreement 

prior to invoking the prior art exclusion. 

In addition, the comment also requested 

a requirement that parties to a joint 

research agreement be disclosed in the 

disqualified reference. 

Response: A requirement that a party 

invoking the CREATE Act prior art 

exclusion must notify the other parties 

to the joint research agreement prior to 

invoking the prior art exclusion is a 

requirement that could be a part of the 

joint research agreement if it is desired 

by one or more parties to the joint 

research agreement. This type of 

requirement is better dealt with during 

the bargaining stage between the parties 

to the joint research agreement. In 

addition, 35 U.S.C. 103(c)(2) does not 

include such a requirement to invoke 

the prior art exclusion. Likewise, the 

requirement that the parties to the joint 

research agreement be named in the 

disqualified reference could also be set 

forth in the joint research agreement if 

desired. Furthermore, 35 U.S.C. 

103(c)(2) does not require that the 

parties to the joint research agreement 

be disclosed in the disqualified 

reference. 

Comment 8: One comment requested 

that the Office impose a requirement 

that the joint research agreement must 

be disclosed in the specification prior to 

a patent issuing to invoke the CREATE 

Act prior art exclusion. The comment 

stated such a change is necessary to 

allow a competitor to easily know 

whether the patentee can disqualify 

prior art that the competitor may use to 

support an invalidity defense. 

Response: This comment goes against 

the great weight of the comments 

submitted and is not adopted. In 

addition, 35 U.S.C. 103(c)(2) does not 

require entry into the specification prior 

to a patent issuing in order to invoke the 

prior art exclusion under the CREATE 

Act. 

Comment 9: Several comments 

suggested that the processing fee 

required by § 1.71(g)(2) is unnecessary. 

The comments requested that the fee be 

eliminated, or alternatively, that the 

time period for invoking the CREATE 

Act exclusion without a fee be extended 

until after the first time a rejection using 

prior art owned by a party to the joint 

research agreement is applied. 

Response: The processing fee required 

by § 1.71(g)(2) furthers the Office’s 

compact prosecution goals by 

encouraging applicants to disqualify 

54264 Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 

prior art under the CREATE Act before 

examination begins. The processing fee 

helps recover the cost of any additional 

work that may be required by 

applicant’s failure to notify the Office of 

prior art that could have been 

disqualified before the examination 

process has begun. 

Comment 10: Several comments 

requested that § 1.71(g)(3) be rewritten 

to be more consistent with the 

requirements of § 1.71(g)(1). 

Response: The requirements in 

§ 1.71(g)(3) are consistent with the 

requirements of § 1.71(g)(1) because of 

the amendments made to § 1.71(g)(1) in 

this final rule. 

Comment 11: Several comments 

suggested § 1.71(g)(3) should be 

rewritten to be more clear by stating this 

rule is ‘‘notwithstanding § 1.312’’ and 

by stating that a certificate of correction 

is effective upon submission as opposed 

to when it is granted. 

Response: Section 1.71(g)(3) is not in 

conflict with § 1.312. Section 1.312 does 

not allow for amendments filed after 

payment of the issue fee, and 

§ 1.71(g)(3) does not provide that an 

amendment under § 1.71(g)(1) submitted 

after payment of the issue fee will be 

entered. Rather, § 1.71(g)(3) advises 

applicants that the patent as issued may 

not necessarily include the names of the 

parties to the joint research agreement if 

an amendment under § 1.71(g)(1) is 

submitted after payment of the issue fee 

(because the rules of practice do not 

permit an amendment to an application 

after payment of the issue fee), and that 

if the patent as issued does not include 

the names of the parties to the joint 

research agreement, the patent must be 

corrected to include the names of the 

parties to the joint research agreement 

by a certificate of correction under 35 

U.S.C. 255 and § 1.323 for the 

amendment to be effective. 

The request to revise the rule to 

include the statement that the certificate 

of correction is effective upon 

submission would not be consistent 

with the case law concerning certificates 

of correction. See, e.g., Southwest 

Software, Inc. v. Harlequin Inc., 226 

F.3d 1280, 56 USPQ2d 1161 (Fed. Cir. 

2000). 

Comment 12: One comment requested 

clarification concerning when an 

examiner can make an obvious double 

patenting rejection final if there are 

common inventors or assignees. 

Response: If an amendment under 

§ 1.71(g) is submitted to overcome a 

rejection under 35 U.S.C. 103(a) based 

upon a U.S. patent or U.S. patent 

application publication which qualifies 

as prior art only under 35 U.S.C. 102(e), 

and the examiner withdraws the 

rejection under 35 U.S.C. 103(a), but 

issues an Office action containing a new 

double patenting rejection based upon 

the disqualified patent or patent 

application publication, the Office 

action can be made final regardless of 

whether there are common inventors or 

assignees (provided that the examiner 

introduces no other new ground of 

rejection that was not necessitated by 

either amendment or an information 

disclosure statement filed during the 

time period set forth in § 1.97(c) with 

the fee set forth in § 1.17(p)). 

Comment 13: Several comments 

requested that the processing fee stated 

in § 1.71(g)(2) be added to § 1.17(i). 

Response: The processing fee is added 

to § 1.17(i) in this final rule. 

Comment 14: One comment objected 

that § 1.71(g) requires more than the 

CREATE Act, and argued that the 

CREATE Act requires only the names of 

the parties to the joint research 

agreement who are the owners of an 

application or patent invoking the 

CREATE Act and the names of the 

owners of the disqualified application 

or patent. 

Response: This comment goes against 

the clear statutory requirement that the 

names of the parties to the joint research 

agreement must be disclosed in order to 

invoke the prior art exclusion under the 

CREATE Act. The statute did not limit 

the required disclosure to just the 

owners of the patent rights involved. 

Comment 15: One comment stated 

that § 1.104 uses inconsistent 

terminology. 

Response: Section 1.104 has been 

amended to include the requirements 

for the statement to invoke the CREATE 

Act prior art exclusion. In addition, 

§ 1.104 has been revised to be consistent 

with the terminology used in 35 U.S.C. 

103(c), which uses both terms ‘‘persons’’

and ‘‘parties.’’

Comment 16: Many comments 

requested clarification of § 1.109, 

including clarification of when double 

patenting under § 1.109(b) would apply. 

Response: Section 1.109 has been 

removed and this final rule includes 

guidelines concerning double patenting 

involving CREATE Act situations. The 

guidelines provided in this final rule 

were made after consideration of the 

comments submitted regarding § 1.109, 

with many of the comments being 

adopted. For example, the guidelines 

clearly set forth that double patenting 

rejections based on applications or 

patents to parties of a joint research 

agreement will only be made after the 

CREATE Act exclusion has been 

invoked. In addition, the guidelines do 

not require that the invention of the 

disqualified patent be made as a result 

of the activities within the scope of the 

joint research agreement as § 1.109(b) 

required in the interim rule. 

Comment 17: Several comments 

questioned whether the Office has the 

authority to restrict licensing practice in 

the provisions of § 1.321(d) introduced 

in the interim rule. In addition, the 

comments expressed concern that the 

provisions of § 1.321(d) went beyond 

what is required by the CREATE Act 

and its legislative history. 

Response: Section 1.321(d) has been 

amended in this final rule to remove 

several requirements set forth in the 

interim rule. First, terminal disclaimers 

no longer are required to have any 

restriction on licensing to overcome an 

obvious double patenting rejection 

based on prior art of a party to a joint 

research agreement. Second, the 

requirement that the owner of the 

disqualified application or patent sign 

the terminal disclaimer is removed. 

Therefore, the removal of these 

requirements from the provisions of 

§ 1.321(d) has simplified the process of 

filing the terminal disclaimer while still 

maintaining the goals of the CREATE 

Act and its legislative history. 

Furthermore, the removal of these 

requirements of § 1.321(d) render moot 

many of the comments pertaining to this 

section. 

Comment 18: Several Comments 

stated that the assignment rules in § 3.11 

and § 3.31 should be more consistent 

with the requirements of § 1.71(g)(1). 

Response: These comments are moot 

in view of the changes to § 1.71(g)(1) in 

this final rule. Section 1.71(g)(1) no 

longer requires the execution date and 

concise statement of the claimed 

invention and is limited to the statutory 

requirement of the names of the parties 

to the joint research agreement. 

Comment 19: One comment suggested 

that the Office should consider 

requiring recordation of a notice that a 

terminal disclaimer has been filed to 

overcome a double patenting rejection 

to assist the public in finding such a 

terminal disclaimer. 

Response: There is no need to require 

a separate recordation of a terminal 

disclaimer because any patent in which 

a terminal disclaimer has been filed has 

such a notation on the front page of the 

patent. In addition, any terminal 

disclaimer in the file of an issued patent 

can be reviewed by viewing the patent 

image file wrapper via the Patent 

Application Information Retrieval 

(PAIR) system. 

Rule Making Considerations 

Administrative Procedure Act: The 

changes in this final rule relate solely to 

the procedures to be followed in 

Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 54265 

prosecuting a patent application: i.e., 

submitting the amendment necessary to 

invoke the ‘‘safe harbor’’ provision of 35 

U.S.C. 103(c) as amended by the 

CREATE Act, filing of the type of 

terminal disclaimer necessary to 

overcome the double patenting rejection 

that may arise as a result of the CREATE 

Act, and submitting joint research 

agreements or excerpts of joint research 

agreements for recording by the Office. 

Therefore, these rule changes involve 

interpretive rules, or rules of agency 

practice and procedure under 5 U.S.C. 

553(b)(A), and prior notice and an 

opportunity for public comment were 

not required pursuant to 5 U.S.C. 

553(b)(A) (or any other law). See 

Bachow Communications Inc. v. FCC, 

237 F.3d 683, 690 (D.C. Cir. 2001) (rules 

governing an application process are 

‘‘rules of agency organization, 

procedure, or practice’’ and are exempt 

from the Administrative Procedure Act’s 

notice and comment requirement); see 

also Merck & Co., Inc. v. Kessler, 80 F.3d 

1543, 1549–50, 38 USPQ2d 1347, 1351 

(Fed. Cir. 1996) (the rules of practice 

promulgated under the authority of 

former 35 U.S.C. 6(a) (now in 35 U.S.C. 

2(b)(2)) are not substantive rules (to 

which the notice and comment 

requirements of the Administrative 

Procedure Act apply)), and Fressola v. 

Manbeck, 36 USPQ2d 1211, 1215 

(D.D.C. 1995) (‘‘it is extremely doubtful 

whether any of the rules formulated to 

govern patent or trade-mark practice are 

other than ‘interpretive rules, general 

statements of policy, * * * procedure, 

or practice.’ ’’) (quoting C.W. Ooms, The 

United States Patent Office and the 

Administrative Procedure Act, 38 

Trademark Rep. 149, 153 (1948)). 

Accordingly, prior notice and an 

opportunity for public comment were 

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 

discussed previously, the changes in 

this final rule involve rules of agency 

practice and procedure under 5 U.S.C. 

553(b)(A), and prior notice and an 

opportunity for public comment were 

not required pursuant to 5 U.S.C. 

553(b)(A) (or any other law). As prior 

notice and an opportunity for public 

comment were not required pursuant to 

5 U.S.C. 553 (or any other law) for the 

changes in this final rule, a regulatory 

flexibility analysis under the Regulatory 

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

not required for the changes in this final 

rule. See 5 U.S.C. 603. 

Executive Order 13132: This rule 

making 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 rule 

making has been determined to be 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

Paperwork Reduction Act: This rule 

making 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 collections of information 

involved in this final rule have been 

reviewed and previously approved by 

OMB under the following control 

numbers: 0651–0027, 0651–0031, 0651–

0032, and 0651–0033. The United States 

Patent and Trademark Office is not 

resubmitting the information collections 

listed above to OMB for its review and 

approval because the changes in this 

notice do not affect the information 

collection requirements associated with 

these information collections. 

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, Commissioner for 

Patents, P.O. Box 1450, Alexandria, VA 

22313–1450, or to the Office of 

Information and Regulatory Affairs, 

OMB, 725 17th Street, NW., 

Washington, DC 20503, (Attn: PTO Desk 

Officer). 

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 

37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

Information, Inventions and patents, 

Reporting and record keeping 

requirements, Small Businesses. 

37 CFR Part 3 

Administrative practice and 

procedure, Inventions and patents, 

Reporting and record keeping 

requirements. 

■ For the reasons set forth in the 

preamble, the interim rule amending 37 

CFR Parts 1 and 3 which was published 

at 70 FR 1818–1824 on January 11, 

2005, is adopted as final with the 

following changes: 

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 1.17 is amended by revising 

paragraph (i) to read as follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

* * * * * 

(i) Processing fee for taking action 

under one of the following sections 

which refers to this 

paragraph...............................$130.00. 

§ 1.28(c)(3)—for processing a nonitemized fee deficiency based on an 

error in small entity status. 

§ 1.41—for supplying the name or 

names of the inventor or inventors after 

the filing date without an oath or 

declaration as prescribed by § 1.63, 

except in provisional applications. 

§ 1.48—for correcting inventorship, 

except in provisional applications. 

§ 1.52(d)—for processing a 

nonprovisional application filed with a 

specification in a language other than 

English. 

§ 1.53(b)(3)—to convert a provisional 

application filed under § 1.53(c) into a 

nonprovisional application under 

§ 1.53(b). 

§ 1.55—for entry of late priority 

papers. 

§ 1.71(g)(2)—for processing a belated 

amendment under § 1.71(g). 

§ 1.99(e)—for processing a belated 

submission under § 1.99. 

§ 1.103(b)—for requesting limited 

suspension of action, continued 

prosecution application for a design 

patent (§ 1.53(d)). 

§ 1.103(c)—for requesting limited 

suspension of action, request for 

continued examination (§ 1.114). 

§ 1.103(d)—for requesting deferred 

examination of an application. 

§ 1.217—for processing a redacted 

copy of a paper submitted in the file of 

an application in which a redacted copy 

was submitted for the patent application 

publication. 

§ 1.221—for requesting voluntary 

publication or republication of an 

application. 

54266 Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 

§ 1.291(c)(5)—for processing a second 

or subsequent protest by the same real 

party in interest. 

§ 1.497(d)—for filing an oath or 

declaration pursuant to 35 U.S.C. 

371(c)(4) naming an inventive entity 

different from the inventive entity set 

forth in the international stage. 

§ 3.81—for a patent to issue to 

assignee, assignment submitted after 

payment of the issue fee. 

* * * * * 

■ 3. Section 1.52 is amended by revising 

paragraph (e)(5) to read as follows: 

§ 1.52 Language, paper, writing, margins, 

compact disc specifications. 

* * * * * 

(e) * * * 

(5) The specification must contain an 

incorporation-by-reference of the 

material on the compact disc in a 

separate paragraph (§ 1.77(b)(5)), 

identifying each compact disc by the 

names of the files contained on each of 

the compact discs, their date of creation 

and their sizes in bytes. The Office may 

require applicant to amend the 

specification to include in the paper 

portion any part of the specification 

previously submitted on compact disc. 

* * * * * 

■ 4. Section 1.71 is amended by revising 

paragraph (g) to read as follows: 

§ 1.71 Detailed description and 

specification of the invention. 

* * * * * 

(g)(1) The specification may disclose 

or be amended to disclose the names of 

the parties to a joint research agreement 

(35 U.S.C. 103(c)(2)(C)). 

(2) An amendment under paragraph 

(g)(1) of this section must be 

accompanied by the processing fee set 

forth in § 1.17(i) if not filed within one 

of the following time periods: 

(i) Within three months of the filing 

date of a national application; 

(ii) Within three months of the date of 

entry of the national stage as set forth in 

§ 1.491 in an international application; 

(iii) Before the mailing of a first Office 

action on the merits; or 

(iv) Before the mailing of a first Office 

action after the filing of a request for 

continued examination under § 1.114. 

(3) If an amendment under paragraph 

(g)(1) of this section is filed after the 

date the issue fee is paid, the patent as 

issued may not necessarily include the 

names of the parties to the joint research 

agreement. If the patent as issued does 

not include the names of the parties to 

the joint research agreement, the patent 

must be corrected to include the names 

of the parties to the joint research 

agreement by a certificate of correction 

under 35 U.S.C. 255 and § 1.323 for the 

amendment to be effective. 

■ 5. Section 1.76 is amended by revising 

paragraph (b)(5) to read as follows: 

§ 1.76 Application data sheet. 

* * * * * 

(b) * * * 

(5) Domestic priority information. 

This information includes the 

application number, the filing date, the 

status (including patent number if 

available), and relationship of each 

application for which a benefit is 

claimed under 35 U.S.C. 119(e), 120, 

121, or 365(c). Providing this 

information in the application data 

sheet constitutes the specific reference 

required by 35 U.S.C. 119(e) or 120, and 

§ 1.78(a)(2) or § 1.78(a)(5), and need not 

otherwise be made part of the 

specification. 

* * * * * 

■ 6. Section 1.96 is amended by revising 

the introductory text of paragraph (c) to 

read as follows: 

§ 1.96 Submission of computer program 

listings. 

* * * * * 

(c) As an appendix which will not be 

printed: Any computer program listing 

may, and any computer program listing 

having over 300 lines (up to 72 

characters per line) must, be submitted 

on a compact disc in compliance with 

§ 1.52(e). A compact disc containing 

such a computer program listing is to be 

referred to as a ‘‘computer program 

listing appendix.’’ The ‘‘computer 

program listing appendix’’ will not be 

part of the printed patent. The 

specification must include a reference to 

the ‘‘computer program listing 

appendix’’ at the location indicated in 

§ 1.77(b)(5). 

* * * * * 

■ 7. Section 1.104 is amended by 

revising paragraph (c)(4) to read as 

follows: 

§ 1.104 Nature of examination. 

* * * * * 

(c) * * * 

(4) Subject matter which is developed 

by another person which qualifies as 

prior art only under 35 U.S.C. 102(e), (f) 

or (g) may be used as prior art under 35 

U.S.C. 103 against a claimed invention 

unless the entire rights to the subject 

matter and the claimed invention were 

commonly owned by the same person or 

subject to an obligation of assignment to 

the same person at the time the claimed 

invention was made. 

(i) Subject matter developed by 

another person and a claimed invention 

shall be deemed to have been commonly 

owned by the same person, or subject to 

an obligation of assignment to the same 

person in any application and in any 

patent granted on or after December 10, 

2004, if: 

(A) The claimed invention and the 

subject matter was made by or on behalf 

of parties to a joint research agreement 

that was in effect on or before the date 

the claimed invention was made; 

(B) The claimed invention was made 

as a result of activities undertaken 

within the scope of the joint research 

agreement; and 

(C) The application for patent for the 

claimed invention discloses or is 

amended to disclose the names of the 

parties to the joint research agreement. 

(ii) For purposes of paragraph (c)(4)(i) 

of this section, the term ‘‘joint research 

agreement’’ means a written contract, 

grant, or cooperative agreement entered 

into by two or more persons or entities 

for the performance of experimental, 

developmental, or research work in the 

field of the claimed invention. 

(iii) To overcome a rejection under 35 

U.S.C. 103(a) based upon subject matter 

which qualifies as prior art under only 

one or more of 35 U.S.C. 102(e), (f) or 

(g) via 35 U.S.C. 103(c)(2), the applicant 

must provide a statement to the effect 

that the prior art and the claimed 

invention were made by or on the behalf 

of parties to a joint research agreement, 

within the meaning of 35 U.S.C. 

103(c)(3) and paragraph (c)(4)(ii) of this 

section, that was in effect on or before 

the date the claimed invention was 

made, and that the claimed invention 

was made as a result of activities 

undertaken within the scope of the joint 

research agreement. 

* * * * * 

§ 1.109 [Removed and reserved] 

■ 8. Section 1.109 is removed and 

reserved. 

■ 9. Section 1.321 is amended by 

revising paragraphs (c) and (d) to read 

as follows: 

§ 1.321 Statutory disclaimers, including 

terminal disclaimers. 

* * * * * 

(c) A terminal disclaimer, when filed 

to obviate judicially created double 

patenting in a patent application or in 

a reexamination proceeding except as 

provided for in paragraph (d) of this 

section, must: 

(1) Comply with the provisions of 

paragraphs (b)(2) through (b)(4) of this 

section; 

(2) Be signed in accordance with 

paragraph (b)(1) of this section if filed 

in a patent application or in accordance 

with paragraph (a)(1) of this section if 

filed in a reexamination proceeding; and 

Federal Register / Vol. 70, No. 177 / Wednesday, September 14, 2005 / Rules and Regulations 54267 

(3) Include a provision that any patent 

granted on that application or any 

patent subject to the reexamination 

proceeding shall be enforceable only for 

and during such period that said patent 

is commonly owned with the 

application or patent which formed the 

basis for the judicially created double 

patenting. 

(d) A terminal disclaimer, when filed 

in a patent application or in a 

reexamination proceeding to obviate 

double patenting based upon a patent or 

application that is not commonly owned 

but was disqualified under 35 U.S.C. 

103(c) as resulting from activities 

undertaken within the scope of a joint 

research agreement, must: 

(1) Comply with the provisions of 

paragraphs (b)(2) through (b)(4) of this 

section; 

(2) Be signed in accordance with 

paragraph (b)(1) of this section if filed 

in a patent application or be signed in 

accordance with paragraph (a)(1) of this 

section if filed in a reexamination 

proceeding; and 

(3) Include a provision waiving the 

right to separately enforce any patent 

granted on that application or any 

patent subject to the reexamination 

proceeding and the patent or any patent 

granted on the application which 

formed the basis for the double 

patenting, and that any patent granted 

on that application or any patent subject 

to the reexamination proceeding shall 

be enforceable only for and during such 

period that said patent and the patent, 

or any patent granted on the 

application, which formed the basis for 

the double patenting are not separately 

enforced. 

PART 3—ASSIGNMENT, RECORDING 

AND RIGHTS OF ASSIGNEE 

■ 10. The authority citation for 37 CFR 

part 3 continues to read as follows: 

Authority: 15 U.S.C. 1123; 35 U.S.C. 

2(b)(2). 

■ 11. Section 3.11 is amended by 

revising paragraph (c) to read as follows: 

§ 3.11 Documents which will be recorded. 

* * * * * 

(c) A joint research agreement or an 

excerpt of a joint research agreement 

will also be recorded as provided in this 

part. 

Dated: September 7, 2005. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 05–18217 Filed 9–13–05; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Part 52 

[R08–OAR–2005–UT–0003; FRL–7961–7] 

Approval and Promulgation of Air 

Quality Implementation Plans; State of 

Utah; Ogden City Revised Carbon 

Monoxide Maintenance Plan and 

Approval of Related Revisions 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Direct final rule. 

SUMMARY: EPA is taking direct final 

action approving State Implementation 

Plan (SIP) revisions submitted by the 

State of Utah. On November 29, 2004, 

the Governor of Utah submitted 

revisions to Utah’s Rule R307–110–12, 

‘‘Section IX, Control Measures for Area 

and Point Sources, Part C, Carbon 

Monoxide,’’ which incorporates a 

revised maintenance plan for the Ogden 

carbon monoxide (CO) maintenance 

area for the CO National Ambient Air 

Quality Standard (NAAQS). The revised 

maintenance plan contains revised 

transportation conformity budgets for 

the years 2005 and 2021. In addition, 

the Governor submitted revisions to 

Utah’s Rule R307–110–35, ‘‘Section X, 

Vehicle Inspection and Maintenance 

Program, Part E, Weber County,’’ which 

incorporates a revised vehicle 

inspection and maintenance program for 

Weber County. In this action, EPA is 

approving the Ogden City CO revised 

maintenance plan, the revised 

transportation conformity budgets, the 

revised vehicle inspection and 

maintenance program for Weber County, 

and the revisions to rules R307–110–12 

and R307–110–35. This action is being 

taken under section 110 of the Clean Air 

Act. 

DATES: This rule is effective on 

November 14, 2005 without further 

notice, unless EPA receives adverse 

comment by October 14, 2005. If 

adverse comment is received, EPA will 

publish a timely withdrawal of the 

direct final rule in the Federal Register 

informing the public that the rule will 

not take effect. 

ADDRESSES: Submit your comments, 

identified by RME Docket Number R08–

OAR–2005–UT–0003, by one of the 

following methods: 

• Federal eRulemaking Portal: http:// 

www.regulations.gov. Follow the on-line 

instructions for submitting comments. 

• Agency Web site: http:// 

docket.epa.gov/rmepub/index.jsp. 

Regional Materials in EDOCKET (RME), 

EPA’s electronic public docket and 

comment system for regional actions, is 

EPA’s preferred method for receiving 

comments. Follow the on-line 

instructions for submitting comments. 

• E-mail: long.richard@epa.gov, 

russ.tim@epa.gov, and 

mastrangelo.domenico@epa.gov. 

• Fax: (303) 312–6064 (please alert 

the individual listed in the FOR FURTHER

INFORMATION CONTACT if you are faxing 

comments). 

• Mail: Richard R. Long, Director, Air 

and Radiation Program, Environmental 

Protection Agency (EPA), Region 8, 

Mailcode 8P–AR, 999 18th Street, Suite 

300, Denver, Colorado 80202–2466. 

• Hand Delivery: Richard R. Long, 

Director, Air and Radiation Program, 

Environmental Protection Agency 

(EPA), Region 8, Mailcode 8P–AR, 999 

18th Street, Suite 300, Denver, Colorado 

80202–2466. Such deliveries are only 

accepted Monday through Friday, 8 a.m. 

to 4:55 p.m., excluding federal holidays. 

Special arrangements should be made 

for deliveries of boxed information. 

Instructions: Direct your comments to 

RME Docket Number R08–OAR–2005–

UT–0003. EPA’s policy is that all 

comments received will be included in 

the public docket without change and 

may be made available at http:// 

docket.epa.gov/rmepub/index.jsp, 

including any personal information 

provided, unless the comment includes 

information claimed to be Confidential 

Business Information (CBI) or other 

information whose disclosure is 

restricted by statute. Do not submit 

information that you consider to be CBI 

or otherwise protected through 

EDOCKET, regulations.gov, or e-mail. 

EPA’s Regional Materials in EDOCKET 

and federal regulations.gov website are 

‘‘anonymous access’’ systems, which 

means EPA will not know your identity 

or contact information unless you 

provide it in the body of your comment. 

If you send an e-mail comment directly 

to EPA, without going through 

EDOCKET or regulations.gov, your email address will be automatically 

captured and included as part of the 

comment that is placed in the public 

docket and made available on the 

Internet. If you submit an electronic 

comment, EPA recommends that you 

include your name and other contact 

information in the body of your 

comment and with any disk or CD–ROM 

you submit. If EPA cannot read your 

comment due to technical difficulties 

and cannot contact you for clarification, 

EPA may not be able to consider your 

comment. Electronic files should avoid 

the use of special characters, any form 

of encryption, and be free of any defects 

or viruses. For additional information 

about EPA’s public docket visit