Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56119 

instrumentalities of the U.S. 

Government. 

(d) Assignments. Any producer 

entitled to any payment under this part 

may assign any payments in accordance 

with the provisions of 7 CFR part 1404. 

§ 1430.315 Termination of program. 

This program ends after payment has 

been made to those applicants certified 

as eligible pursuant to the application 

period established in § 1430.304. All 

eligibility determinations shall be final 

except as otherwise determined by the 

Deputy Administrator. 

Signed at Washington, DC, on September 

13, 2005. 

James R. Little, 

Executive Vice President, Commodity Credit 

Corporation. 

[FR Doc. 05–19127 Filed 9–23–05; 8:45 am] 

BILLING CODE 3410–05–P 

DEPARTMENT OF THE INTERIOR 

Minerals Management Service 

30 CFR Parts 250 and 256 

RIN 1010–AD16 

Oil, Gas, and Sulphur Operations and 

Leasing in the Outer Continental Shelf 

(OCS)—Cost Recovery 

AGENCY: Minerals Management Service 

(MMS), Interior. 

ACTION: Final rule; delay of effective 

date. 

SUMMARY: MMS is delaying until 

January 1, 2006, the effective date of a 

rule that will implement fees to offset 

MMS’s costs of providing certain 

services related to its mineral programs. 

This delay is necessary because of 

damage caused in the New Orleans area 

by Hurricane Katrina and subsequent 

flooding. The delay will provide relief 

to the government and the oil and gas 

industry as they recover from this 

disaster. 

DATES: The effective date of the rule 

amending 30 CFR Parts 250 and 256 

published at 70 FR 49871, August 25, 

2005 is delayed until January 1, 2006. 

FOR FURTHER INFORMATION CONTACT: 

Angela Mazzullo, Offshore Minerals 

Management (OMM) Budget Office at 

(703) 787–1691. 

SUPPLEMENTARY INFORMATION: The rule 

published August 25, 2005, requires 

MMS to develop additional procedures 

that MMS will provide to the oil and gas 

industry in the form of a Notice to 

Lessees. The primary office responsible 

for developing those procedures, the 

MMS Gulf of Mexico Regional Office in 

New Orleans, Louisiana, has been 

closed since Hurricane Katrina and the 

flooding that followed that disaster. 

Moreover, many of the lessees and 

operators subject to the rule are 

similarly engaged in the restoration of 

normal operations following Hurricane 

Katrina. Lessees and operators will be 

making changes in their own procedures 

to comply with the rule. Lessees and 

operators whose operations have been 

interrupted as a result of the hurricane 

may not be able to make these changes 

until normal operations resume. 

Accordingly, the Department of the 

Interior is postponing the effective date 

of the final rule until January 1, 2006. 

Dated: September 20, 2005. 

Rebecca W. Watson, 

Assistant Secretary—Land and Minerals 

Management. 

[FR Doc. 05–19223 Filed 9–23–05; 8:45 am] 

BILLING CODE 4310–MR–P 

DEPARTMENT OF COMMERCE 

Patent and Trademark Office 

37 CFR Parts 1, 2, 3, 5, and 10 

[Docket No.: 2005–P–053] 

RIN 0651–AB85 

Provisions for Claiming the Benefit of 

a Provisional Application With a NonEnglish Specification and Other 

Miscellaneous Matters 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (Office) is amending 

the rules of practice to require that: A 

copy of the English translation of a 

foreign-language provisional application 

be filed in the provisional application if 

a nonprovisional application claims the 

benefit of the provisional application; a 

copy of documentary evidence 

supporting a claim of ownership be 

recorded in the Office’s assignment 

records when an assignee takes action in 

a patent matter; and separate copies of 

a document be submitted to the Office 

for recording in the Office’s assignment 

records, each accompanied by a cover 

sheet, if the document to be recorded 

includes an interest in, or a transaction 

involving, both patents and trademarks. 

DATES: Effective November 25, 2005. 

Applicability Date: The changes apply 

to any paper, application or 

reexamination proceeding filed in the 

Office on or after November 25, 2005. 

Further, if a nonprovisional patent 

application claims the benefit of the 

filing date of a non-English provisional 

application, a translation of the 

provisional application and a statement 

that the translation was accurate 

required by 37 CFR 1.78(a)(5)(iv) will 

not be required to be filed in the 

provisional application, if the 

translation and statement were filed in 

the nonprovisional application before 

November 25, 2005. 

FOR FURTHER INFORMATION CONTACT: 

Karin Ferriter (571–272–7744), Senior 

Legal Advisor, Office of Patent Legal 

Administration, Office of the Deputy 

Commissioner for Patent Examination 

Policy, or Robert J. Spar (571–272–

7700), Director of the Office of Patent 

Legal Administration, Office of the 

Deputy Commissioner for Patent 

Examination Policy, directly by phone, 

or by facsimile to 571–273–7744, or by 

mail addressed to: Mail Stop 

Comments—Patents, Commissioner for 

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

22313–1450. 

SUPPLEMENTARY INFORMATION: This final 

rule revises the rules of practice in title 

37 of the Code of Federal Regulations 

(CFR) pertaining to records related to 

signature, availability of patent 

application files, power of attorney, 

provisional applications, and 

assignments. 

Discussion of Specific Rules 

Section 1.4: Section 1.4(d)(2) is 

amended to delete ‘‘with a signature in 

permanent dark ink or its equivalent,’’

because dark ink applies to handwritten 

signatures, not S-signatures. Section 

1.4(d)(2)(ii) is amended to move the 

word ‘‘only’’ in the second sentence 

thereof from immediately preceding the 

word ‘‘be’’ to immediately following the 

word ‘‘used’’ and to change ‘‘registered 

practitioner’’ to ‘‘patent practitioner 

(§ 1.32(a)(1)).’’ The term ‘‘patent 

practitioner’’ is defined in § 1.32(a). 

Section 1.11: Section 1.11(a) is 

amended for clarity and to reflect the 

policy regarding availability to the 

public of papers in the files of 

applications that have been published. 

For example, § 1.11(a) is amended to 

remove ‘‘abandoned’’ before ‘‘published 

application.’’ Published applications are 

not physically available to the public to 

copy and inspect if the file is 

maintained in a paper file wrapper. If a 

published application is not maintained 

in paper, but is instead maintained in 

the image file wrapper (IFW) system, the 

application is made available for public 

inspection through the Patent 

Application Information Retrieval 

(PAIR) system pursuant to 

§ 1.14(a)(1)(iii) and 1.14(b). Since most 

56120 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 

pending applications have become 

available through PAIR, the reference to 

only abandoned published applications 

in § 1.11 may have been misleading. In 

addition, § 1.11(a) is amended to 

include: ‘‘If an application was 

published in redacted form pursuant to 

§ 1.217, the complete file wrapper and 

contents of the patent application will 

not be available if: the requirements of 

paragraphs (d)(1), (d)(2), and (d)(3) of 

§ 1.217 have been met in the 

application; and the application is still 

pending.’’

Section 1.17: Section 1.17(f) is 

amended to add ‘‘§ 1.36(a)—for 

revocation of a power of attorney by 

fewer than all of the applicants.’’ See 

the discussion of the change to § 1.36(a). 

This change corrects § 1.17 by including 

§ 1.36(a) in the list of petitions for 

which a fee set forth in § 1.17 can be 

charged, and also groups the fee for a 

petition under § 1.36(a) with similar 

petitions (under § 1.182 and § 1.183). 

Section 1.25: Section 1.25(c)(4) is 

amended to change the address for 

payment to replenish a deposit account 

submitted by mail with a private 

delivery service or hand-carrying the 

payment to: Director of the U.S. Patent 

and Trademark Office, Attn: Deposit 

Accounts, 2051 Jamieson Avenue, Suite 

300, Alexandria, Virginia 22314. 

Section 1.31: Section 1.31 is amended 

to change the title to ‘‘Applicant may be 

represented by one or more patent 

practitioners or joint inventors’’ in order 

to make the title of the rule more 

descriptive of the revised rule. A 

definition for ‘‘patent practitioner’’ is 

added to § 1.32(a), as discussed below, 

and the term ‘‘patent practitioner’’ is 

used in place of ‘‘registered patent 

attorney or agent’’ in § 1.31, and in other 

rules. Further, § 1.31 is amended to 

indicate that one or more patent 

practitioners or joint inventors may be 

given a power of attorney to thereby 

recognize that there may be a single 

person appointed or an appointment of 

more than one practitioner or joint 

inventor to represent the applicant. 

Section 1.32(c)(1) permits one or more 

joint inventors to be given power of 

attorney to represent the other joint 

inventor or inventors; accordingly, the 

revision to § 1.31 is necessary for 

consistency with § 1.32(c)(1). 

Section 1.32: Section 1.32(a)(1) is 

amended to set forth the definition of 

‘‘patent practitioner’’ and to renumber 

sections (a)(1) to (a)(4) as (a)(2) through 

(a)(5), respectively. 

Revised § 1.32(a)(1) defines the term 

‘‘patent practitioner’’ as ‘‘a registered 

patent attorney or registered patent 

agent under § 11.6.’’

Section 1.32(a)(1) is renumbered as 

§ 1.32(a)(2) and further revised to 

change ‘‘registered patent attorneys or 

registered patent agents’’ to ‘‘one or 

more patent practitioners or joint 

inventors’’ to reflect that one or more 

patent practitioner(s) may be appointed 

in a power of attorney. Section 1.31 

permits a power of attorney to be given 

to one or more patent practitioners or 

joint inventors, and this change is 

consistent therewith. 

Section 1.32(a)(2) is renumbered as 

§ 1.32(a)(3) and further revised to add 

‘‘or, in a reexamination proceeding, the 

assignee of the entirety of ownership of 

a patent’’ to reflect that the assignee of 

the entire interest in a patent may 

authorize a patent practitioner to 

represent the assignee in reexamination 

proceedings, for example, in addition to 

patent applications. In addition, 

§ 1.32(a)(3) is amended to change 

‘‘registered patent attorney or registered 

patent agent’’ to ‘‘patent practitioners or 

joint inventors.’’

Any power of attorney given to a 

practitioner who has been suspended or 

disbarred by the Office is ineffective, 

and does not authorize the person to 

practice before the Office or to represent 

applicants or patentees in patent 

matters. 

Section 1.32(a)(3) is renumbered as 

§ 1.32(a)(4), and further revised to 

change ‘‘registered patent attorney or 

registered patent agent’’ to ‘‘patent 

practitioner or joint inventor.’’

Section 1.32(a)(4) is renumbered as 

§ 1.32(a)(5), and the resulting new 

paragraph § 1.32(a)(5)(i) is amended to 

change both instances of ‘‘patent 

application or patent’’ to ‘‘patent 

application, patent or other patent 

proceeding’’ and the resulting new 

paragraph § 1.32(a)(5)(iii) is amended to 

delete ‘‘registered.’’

Section 1.32(c)(3) is amended such 

that the first sentence reads: ‘‘Ten or 

fewer patent practitioners, stating the 

name and registration number of each 

patent practitioner.’’ The Office needs 

the registration number of the patent 

practitioner to make the practitioner of 

record. Because the former rules did not 

require a registration number, 

registration numbers were sometimes 

omitted, leading to delays in Office 

processing of powers of attorney. 

Accordingly, § 1.32(c)(3) is amended to 

add a requirement for the registration 

number of the patent practitioner to 

assist the Office in making the 

practitioner of record. If the name 

submitted on the power of attorney does 

not match the name associated with the 

registration number provided in the 

Office of Enrollment and Discipline 

records for patent practitioners, the 

person that the Office will recognize as 

being of record will be the person 

associated with the registration number 

provided, because the Office enters the 

registration number, not the name, 

when making the practitioner of record. 

Accordingly, if the wrong registration 

number is provided, a new power of 

attorney will be required to correct the 

error. 

Section 1.33: Section 1.33(a) is 

amended to use the generic term ‘‘patent 

practitioner’’ instead of ‘‘registered 

patent attorney or patent agent.’’

Specifically, § 1.33(a) is amended to 

change ‘‘registered patent attorney or 

patent agent’’ to ‘‘patent practitioner’’ in 

two places. In addition, § 1.33(a) is 

amended to revise the sixth sentence to 

read: ‘‘If more than one correspondence 

address is specified in a single 

document, the Office will select one of 

the specified addresses for use as the 

correspondence address and, if given, 

will select the address associated with 

a Customer Number over a typed 

correspondence address.’’ Furthermore, 

§ 1.33(a)(1) is amended to change ‘‘If the 

application was filed by a registered 

attorney or agent, any other registered 

practitioner named in the transmittal 

papers may also change the 

correspondence address’’ to ‘‘If the 

application was filed by a patent 

practitioner, any other patent 

practitioner named in the transmittal 

papers may also change the 

correspondence address.’’

Neither § 1.33 nor any other rule 

authorize a practitioner who has been 

suspended or disbarred by the Office to 

practice before the Office. 

Section 1.33(b)(1) and § 1.33(b)(2) are 

revised to change ‘‘registered patent 

attorney or patent agent’’ to ‘‘patent 

practitioner.’’

Section 1.33 is also revised to add 

new paragraph (e) to remind patent 

practitioners that the attorney roster 

must be updated separately from and in 

addition to any change of address filed 

in individual patent applications. 

Section 1.33 is amended to state: ‘‘(e) A 

change of address filed in a patent 

application or patent does not change 

the address for a patent practitioner in 

the roster of patent attorneys and agents. 

See § 11.11 of this part.’’

Section 1.34: Section 1.34 is amended 

to change ‘‘registered patent attorney or 

patent agent’’ to ‘‘patent practitioner’’ in 

two places, to change ‘‘in whose behalf’’

to ‘‘on whose behalf,’’ and to change 

‘‘must specify his or her registration 

number and name with his or her 

signature’’ to ‘‘must set forth his or her 

registration number, his or her name, 

and signature’’ in order to clarify that 

Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56121 

the name and signature are separate 

requirements. 

Section 1.36: Section 1.36(a) is 

amended to change § 1.17(h) to § 1.17(f). 

The fee for a petition to allow a split 

power of attorney should be the same 

regardless of whether the split power of 

attorney results from revocation by 

fewer than all of the inventors, as 

provided in § 1.36(a), or from a petition 

under § 1.183 to waive the provisions of 

§ 1.32(b)(4) requiring that a power of 

attorney be signed by the applicant for 

patent (§ 1.41(b)) or the assignee of the 

entire interest of the applicant. 

Furthermore, ‘‘only’’ has been moved 

from immediately preceding the word 

‘‘revoke’’ to immediately following the 

term ‘‘power of attorney’’ and 

‘‘registered patent attorney or patent 

agent’’ is changed to ‘‘patent 

practitioner.’’ Section 402.01 of the 

Manual of Patent Examining Procedure 

(MPEP) provides additional information 

on a split power of attorney. See MPEP 

§ 402.01 (8th ed. 2001) (Rev. 3, August 

2005). 

Section 1.52: Section 1.52 is amended 

by removing paragraphs (a)(5), (a)(7), 

and (b)(7), and by redesignating 

paragraph (a)(6) as paragraph (a)(5). The 

removed paragraphs explained the 

practice set forth in § 1.135(c) wherein 

the Office will give applicant a new 

period of time to file a reply, if the 

initial reply was not complete or 

compliance with a requirement was 

inadvertently omitted. The paragraphs 

have been removed as unnecessary in 

view of § 1.135(c). 

Section 1.78: Section 1.78(a)(5)(iv) is 

amended to require the English 

translation of a foreign-language 

provisional application be filed in the 

provisional application, instead of also 

permitting the translation to be filed in 

each nonprovisional application that 

claims the benefit of the filing date of 

the provisional application. Section 

1.78(a)(5)(iv) is also amended to provide 

that applicant must file, in a 

nonprovisional application, 

confirmation of the filing of the 

translation and statement, when a notice 

is mailed in the nonprovisional 

application requiring the translation and 

statement. Previously, § 1.78(a)(5)(iv) 

provided that when, pursuant to 35 

U.S.C. 119(e), benefit was being claimed 

of a provisional application which was 

filed in a language other than English, 

an English language translation of the 

provisional application, accompanied 

by a statement that the translation is 

accurate, must have been filed in either: 

(1) The provisional application; or (2) 

each nonprovisional application that 

claims the benefit of the provisional 

application. Thus, if the translation and 

statement were not filed in the 

provisional application, they could have 

been filed in each application that 

claims the benefit of the filing date of 

the provisional application (to satisfy 

the requirement of the rule). 

A provisional application is open to 

the public if the benefit of the 

provisional application is claimed in an 

application that has either been 

published or patented. Where the 

translation and statement were not filed 

in the provisional application because 

they were filed in each nonprovisional 

application(s) claiming the benefit of the 

provisional application, there was a 

burden on the public in finding the 

translation and statement, and on the 

Office in storing possibly duplicate 

copies of the documents. Further, when 

a translation of the provisional 

application was filed in the 

nonprovisional application, the Office 

sometimes confused the translation of 

the provisional with the specification 

papers to be used for the nonprovisional 

application. Because the option was 

available to file the translation and 

statement in the nonprovisional 

application, applicant’s counsel may 

have inadvertently chosen that option in 

situations where there were many 

nonprovisional applications claiming 

the benefit of a single provisional 

application, and incurred substantial 

expense for having to file a translation 

in each nonprovisional application. 

Having only one copy of the translation 

(and statement) ‘‘centrally’’ filed in the 

provisional application, regardless of 

how many nonprovisional applications 

claim benefit of that provisional 

application will be beneficial for 

applicants, the public, and the Office. 

Accordingly, § 1.78(a)(5)(iv) is amended 

to delete from the first sentence ‘‘or the 

later-filed nonprovisional application’’

to thereby eliminate the option to file 

the translation and statement in the 

nonprovisional application. 

Section 1.78(a)(5)(iv) is further 

revised to add ‘‘, in the provisional 

application,’’ after ‘‘a period of time 

within which to file’’ and the former last 

sentence of § 1.78(a)(5)(iv) is further 

revised to read: ‘‘If the notice is mailed 

in a pending nonprovisional 

application, a timely reply to such a 

notice must include the filing in the 

nonprovisional application of either a 

confirmation that the translation and 

statement were filed in the provisional 

application, or an amendment or 

Supplemental Application Data Sheet 

withdrawing the benefit claim, or the 

nonprovisional application will be 

abandoned.’’ Lastly, the following 

sentence is added to the end of the 

paragraph: ‘‘The translation and 

statement may be filed in the 

provisional application, even if the 

provisional application has become 

abandoned.’’

Section 1.133: Section 1.133(a)(2) is 

amended to permit an interview before 

first Office action in any application if 

the examiner determines that such an 

interview would advance prosecution of 

the application. The Office conducted a 

pilot program permitting an interview 

before the first Office action in 

applications that were classified in class 

705, subclasses 35 through 45, and 

assigned to Technology Center Art Units 

3624 or 3628. See Notice of Pilot 

Program to Permit Pre-First Office 

Action Interview for Applications 

Assigned to Art Units 3624 and 3628 

and Request for Comments on Pilot 

Programs, 1281 Off. Gaz. Pat. Office 148 

(Apr. 27, 2004). The Office received few 

requests for such interviews, but when 

such interviews were conducted, the 

feedback from examiners was that such 

interviews were usually beneficial and 

often assisted in focusing the issues for 

examination. Therefore, the Office sees 

no justification for maintaining the 

current prohibition in § 1.133 on 

interviews before first Office action in 

non-continuing applications. 

Nevertheless, an interview before the 

first Office action in a non-continuing 

application will not be permitted unless 

the examiner determines that such an 

interview would advance prosecution of 

the application. Thus, the examiner may 

require that an applicant requesting an 

interview before first Office action 

provide a paper that includes a general 

statement of the state of the art at the 

time of the invention, and an 

identification of no more than three (3) 

references believed to be the ‘‘closest’’

prior art and an explanation as to how 

the broadest claim distinguishes over 

such references. See Notice of Pilot 

Program to Permit Pre-First Office 

Action Interview for Applications 

Assigned to Art Units 3624 and 3628 

and Request for Comments on Pilot 

Programs, 1281 Off. Gaz. Pat. Office at 

149. 

Section 2.208: Section 2.208(c)(4) is 

amended to change the address for 

payment to replenish a deposit account 

submitted by mail with a private 

delivery service or hand-carrying the 

payment to: Director of the U.S. Patent 

and Trademark Office, Attn: Deposit 

Accounts, 2051 Jamieson Avenue, Suite 

300, Alexandria, Virginia 22314. 

Section 3.28: Section 3.28 previously 

directed that ‘‘[o]nly one set of 

documents and cover sheets to be 

recorded should be filed’’ which 

discouraged assignees from submitting 

one set of documents including a patent 

56122 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 

cover sheet and the document to be 

recorded, and another set of documents 

including a trademark cover sheet and 

another copy of the document to be 

recorded. While the Office could 

process a set of documents that includes 

a patent cover sheet, trademark cover 

sheet, and only one copy of the 

document to be recorded, submitting 

only one copy of the document could 

have led to the misconception by the 

Office that a document submitted for 

recordation has been omitted, or the 

document submitted belongs only to the 

second cover sheet, particularly when 

the documents are submitted by 

facsimile and there is a break in the 

transmission. For example, if a 

submission included: A trademark sheet 

on pages 1 and 2, a patent cover sheet 

on page 3, and a document for recording 

on pages 4–7, then, if pages 1 and 2 are 

separated from the remainder of the set 

of documents, it may not have been 

clear that the trademark cover sheet was 

missing because the patent cover sheet 

and the document to be recorded would 

have themselves made a complete set of 

documents. To reduce confusion, § 3.28 

is revised to require that a separate copy 

of the document to be recorded be 

submitted with each cover sheet. Note 

that even if the term ‘‘copy of the 

document to be recorded’’ is not used in 

this discussion, the document submitted 

for recordation must be a copy, and not 

the original document, and the term 

‘‘document to be recorded’’ has been 

used to emphasize that the document is 

to be recorded, not to suggest that an 

original may be submitted. 

Section 3.28 is amended to state that 

each document to be recorded must be 

accompanied by a single cover sheet 

(and not multiple cover sheets), to put 

parentheses around ‘‘as specified in 

§ 3.31,’’ and to delete the statement that 

at least one cover sheet must be 

included with each document submitted 

for recording. Section 3.28 is also 

revised to delete the sentence which 

states that only one set of documents 

and cover sheets to be recorded must be 

filed, and to make it clear that if an 

assignment includes interests in, or 

transactions involving, both patents and 

trademarks, then two copies of each 

document (each document with its own 

cover sheet) must be submitted. Thus, a 

patent cover sheet and a copy of the 

document, and a trademark cover sheet 

and a copy of the document, must be 

submitted. 

Section 3.31: Section 3.31(a)(7) is 

amended to delete ‘‘submission’’ before 

‘‘(e.g. /Thomas O’Malley III/)’’ to correct 

an obvious error. 

Section 3.73: Section 3.73(b)(1)(i) is 

amended to require, for patent matters, 

that the document(s) submitted to 

establish ownership under § 3.73(b) be 

recorded pursuant to § 3.11 in the 

assignment records. 

In order to take action in a patent 

application or a patent, a party must 

comply with § 3.73 to establish 

ownership of the rights to a patent 

application or a patent (i.e., a patent 

property) by submitting to the Office a 

signed statement identifying the 

assignee. In the prior version of the rule, 

the signed statement must have been 

accompanied by either: (1) Documentary 

evidence of a chain of title from the 

original owner to the assignee; or (2) a 

statement specifying where such 

documentary evidence is recorded in 

the Office’s assignment records. 

Previously, where the first option was 

chosen, there was no requirement that 

the document(s) submitted to establish 

ownership also be recorded pursuant to 

§ 3.11 in the assignment records unless 

the Office explicitly required such 

recordation on a case-by-case basis. 

Such a requirement was made only in 

the rare situation where a question arose 

as to ownership of the property. It is 

desirable, however, that the Office’s 

patent assignment records should, as a 

rule, reflect the assignment of any 

assignee seeking to take action in a 

patent application or patent. 

The previous system, which 

permitted an assignee to take action by 

submitting a copy of the assignment in 

a patent application or patent, but did 

not require the assignment to be 

recorded in the Office’s patent 

assignment records, made a search of 

the Office’s patent assignment records 

unreliable. Permitting an assignee to 

take action in an application or patent 

without also recording the assignment 

(in the Office’s assignment records) also 

encourages the late filing of assignment 

document(s) and defeats the benefits of 

timely recordation. See 35 U.S.C. 261. 

(‘‘An assignment, grant or conveyance 

shall be void as against any subsequent 

purchaser or mortgagee for a valuable 

consideration, without notice, unless it 

is recorded in the Patent and Trademark 

Office within three months from its date 

or prior to the date of such subsequent 

purchase or mortgage.’’) 

Section 3.73(b)(1)(i) is amended to 

require that, for patent matters only, the 

submission of the documentary 

evidence to establish ownership must be 

accompanied by a statement affirming 

that the documentary evidence of the 

chain of title from the original owner to 

the assignee was, or concurrently is, 

submitted for recordation pursuant to 

§ 3.11. Thus, when filing a § 3.73(b) 

statement to establish ownership, an 

applicant or patent owner must also 

submit the assignment document(s) to 

the Office for recordation, if such a 

submission has not been previously 

made. If the § 3.73(b) statement is not 

accompanied by a statement affirming 

that the documentary evidence was, or 

concurrently is, submitted for 

recordation pursuant to § 3.11, then the 

§ 3.73(b) statement will not be accepted, 

and the assignee(s) will not have 

established the right to take action in 

the patent application or the patent for 

which the § 3.73(b) statement was 

submitted. For trademark matters, there 

would continue to be no requirement 

that the submission of the documentary 

evidence be accompanied by a 

statement affirming that the 

documentary evidence was submitted 

for recordation. Rather, paragraph 

(b)(1)(i) would continue to set forth that 

the Office may require (as deemed 

appropriate in any individual case) the 

documents (submitted to establish 

ownership) to be recorded pursuant to 

§ 3.11 in the assignment records of the 

Office as a condition to permitting the 

assignee to take action in a trademark 

matter pending before the Office. 

Section 5.11: Section 5.11 is amended 

to correct cross references. Section 

5.11(b) is amended to change ‘‘15 CFR 

part 779’’ to ‘‘15 CFR part 734’’ and 

‘‘Office of Export Administration, 

International Trade Administration’’ to 

‘‘Bureau of Industry and Security.’’

Section 5.11(c) is amended to change 

‘‘data * * * is’’ to ‘‘data * * * are,’’ ‘‘15 

CFR parts 768–799’’ to ‘‘15 CFR parts 

730–774,’’ ‘‘Export Administration’’ to 

‘‘Bureau of Industry and Security,’’ and 

‘‘15 CFR part 779’’ to ‘‘15 CFR part 

734.’’

Section 5.19: Section 5.19 is amended 

to correct two cross references, and to 

update a reference to the Office. Section 

5.19(a) is amended to change ‘‘15 CFR 

770.10(j)’’ to ‘‘15 CFR 734.3(b)(1)(v)’’

and to add ‘‘U.S.’’ before ‘‘Patent.’’

Section 5.19(b) is amended to change 

‘‘15 CFR 779A.3(e)’’ to ‘‘15 CFR 

734.10(a).’’

Section 10.112: Section 10.112 is 

amended to correct the cross reference, 

changing ‘‘10.6(c)’’ to ‘‘11.6(c).’’

Response to comments: The Office 

published a notice proposing changes to 

the rules of practice to: Allow a person 

acting with limited recognition to be 

given a power of attorney and 

authorization to sign amendments and 

other patent-related correspondence; 

require a copy of the English translation 

of a foreign-language provisional 

application be filed in the provisional 

application if a nonprovisional 

application claims the benefit of the 

provisional application; and require a 

copy of documentary evidence 

Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56123 

supporting a claim of ownership be 

recorded in the Office’s assignment 

records when an assignee takes action in 

a patent matter. See Provisions for 

Persons Granted Limited Recognition To 

Prosecute Patent Applications and 

Other Miscellaneous Matters, 70 FR 

17629 (April 7, 2005), 1294 Off. Gaz. 

Pat. Office 22 (May 3, 2005) (proposed 

rule). The Office received 11 written 

comments in response to this notice. 

Comments generally in support of a 

change are not discussed. Comments 

regarding limited recognition, other 

than comment 2, are not discussed. The 

other comments and the Office’s 

responses to those comments follow: 

Comment 1: One comment addressed 

the proposed changes to § 1.11, noting 

that the change ‘‘solidified a position 

held by the Patent Office in recent years 

that the act of publication at 18 months 

constitutes an inherent power to 

inspect.’’ The comment raised a concern 

that having the inventor’s signature 

available on the internet could assist 

someone in identity theft, and also 

questioned the Office’s authority to 

make the file wrapper public. 

Response: In requiring publication of 

patent applications, Congress gave the 

Office the authority to determine how to 

publish patent applications. The Office 

has exercised this authority by 

publishing the specification, including 

the claims, in a searchable database, and 

by making the published application file 

available to the public, either on the 

internet, or through the Office of Public 

Records, or the File Information Unit, 

depending upon whether the file is 

available in image or paper form, and 

depending upon the status of the 

application (pending or abandoned). As 

to identity theft, the Office does not 

require Social Security Numbers, and 

takes steps to ensure that credit card 

information is not made part of a patent 

application file. Where an applicant 

elects to file a Petition to Make Special 

because of the age of the applicant, if 

the applicant uses a copy of his or her 

driver’s license to support the petition, 

the Office will expunge the document 

from the images available to the public, 

if a petition under § 1.59 is filed. The 

signature of the inventor on the oath or 

declaration for the patent application is 

required by 35 U.S.C. 116. The Office 

has always provided full access to the 

public to patented files so that the 

public can evaluate whether the 

statutory requirements (such as an oath 

or declaration required by 35 U.S.C. 

116) were met, and to understand the 

prosecution history. 

Comment 2: One comment asked 

whether the proposed amendments 

would make private PAIR available to 

patent practitioners with limited 

recognition, i.e., whether someone with 

a limited recognition could be 

associated with a Customer Number. 

Response: Assignment of a limited 

recognition number would permit 

someone accorded limited recognition 

to have his or her limited recognition 

number associated with a Customer 

Number, and obtain a Public Key 

Infrastructure (PKI) certificate so as to 

obtain access to private PAIR. For 

further information on private PAIR, 

contact the Electronic Business Center 

by telephone at 866–217–9197 (toll free) 

or by e-mail to EBC@uspto.gov. The 

Office has decided not to go forward 

with the proposed amendments 

regarding limited recognition at this 

time. 

Comment 3: One comment questions 

the statutory basis for the Office to 

require a translation of a foreignlanguage provisional application before 

the provisional application can be relied 

upon in a benefit claim. The comment 

suggests adding the following sentence 

to the beginning of § 1.78(a)(5)(iv): 

‘‘Benefit to a provisional application 

may not be granted in any 

nonprovisional application or any 

international application designating 

the United States of America unless the 

provisional application is in English or 

an English-language translation is 

provided with a certification of the 

accuracy of the translation.’’

Response: The Office’s authority to 

require an English translation is 

provided in 35 U.S.C. 2(b)(2)(A) (35 

U.S.C. 6(a) at the time an English 

translation of a provisional application 

was originally added to the rules of 

practice). An English translation is a 

procedural requirement. As to the 

proposed insertion, the suggestion has 

not been adopted. 

Comment 4: One comment suggested 

that there not be a requirement for an 

applicant to file a statement in each 

nonprovisional application that an 

English language translation was filed in 

the provisional application, and 

suggested that a notice be mailed in a 

nonprovisional application near 14 

months from the provisional 

application’s filing date, if the English 

translation has not been filed in the 

provisional application. 

Response: The statement is required 

to be filed only when a notice has been 

mailed in the nonprovisional 

application requiring an English 

translation of the provisional 

application so that the examiner can 

evaluate the benefit claim. If a 

provisional application is filed in a 

language other than English, and an 

English language translation is later 

filed in the provisional application at 

the same time a nonprovisional 

application is filed that claims the 

benefit of the provisional application, 

then no statement that an English 

language translation was filed will be 

necessary. At the time the examiner 

evaluates the benefit claim, the English 

language translation will be in the 

provisional application and available to 

the examiner. Furthermore, if a 

provisional application was filed in a 

language other than English, an 

applicant filing a nonprovisional 

application claiming the benefit of the 

filing date of the provisional application 

could have filed the translation of the 

provisional application in the 

nonprovisional application or the 

provisional application according to 

§ 1.78(a)(5) before the effective date of 

the revision to § 1.78(a)(5). 

If the translation was elected to be 

filed in the nonprovisional application, 

according to prior § 1.78(a)(5), a 

continuation, continuation-in-part or 

divisional application of the 

nonprovisional application would either 

need a new English translation of the 

provisional application to be filed in the 

continuation, continuation-in-part or 

divisional application, or the translation 

to be filed in the provisional 

application. As revised, the translation 

of the non-English specification must 

always be filed in the provisional 

application, and a notice will be mailed 

in the nonprovisional application only 

where the translation and the statement 

that the translation is accurate were not 

filed in the provisional application. 

As to the suggestion that the notice 

requiring the English language 

translation be mailed in the 

nonprovisional application 14 months 

after the provisional application was 

filed, the Office is seeking to continually 

improve processing of patent 

applications, and generally seeks to 

send out notices in a timely manner, 

with as many issues addressed at one 

time as possible. Applicants should be 

alert to the language of the provisional 

application and may be well advised to 

docket provisional applications in such 

a manner so that any necessary 

translation can be filed without a 

reminder from the Office. 

Comment 5: Another comment 

suggested that the need for a translation 

to be filed in a provisional application 

is an undue burden on the applicant, 

and suggested a public hearing before 

this change is made. 

Response: A translation is already 

required to be filed whenever an 

applicant claims the benefit of an 

application that was not filed in English 

and the applicant is notified of the need 

56124 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 

for the translation by the Office. The 

change made in the amendment to 

§ 1.78 merely requires that the 

translation be filed in the provisional 

application, rather than in either the 

provisional or each nonprovisional 

application claiming the benefit of the 

provisional application. The Office has 

found that the translation of the 

provisional application has been 

confused with the specification for the 

application to be examined and 

minimizing this confusion should be 

beneficial for both applicants and the 

Office. In more than one instance, the 

Office has published the translation of 

the provisional patent application 

instead of a nonprovisional application 

for patent, and has been required to 

publish a corrected patent application 

publication to correct this error. 

Accordingly, requiring the translation of 

the provisional application to be filed in 

the provisional application is not an 

undue burden. 

Comment 6: Another comment stated 

that § 1.78(a)(5)(iv) did not clearly 

confirm that the translation and 

statement could be filed in the 

provisional application both before and 

after abandonment of that application. A 

related comment argued that allowing 

papers to be filed in an abandoned 

provisional application was inconsistent 

with § 1.137(g), which provides for 

abandonment of provisional 

applications in limited situations. 

Response: The translation and 

statement can be filed in a provisional 

application after the provisional 

application becomes abandoned. 

Nothing in prior § 1.78 precluded the 

translation from being filed in an 

abandoned provisional application. 

Many papers are filed in abandoned 

applications: Changes of address, 

powers of attorney, and powers to 

inspect. A sentence has been added to 

the rule to clarify this point. In 

permitting a paper to be placed in the 

file of an abandoned application, 

nothing suggests that the application 

has been revived. As to correcting a 

defective translation in an abandoned 

application, an applicant should simply 

file the corrected translation in the 

abandoned application. 

Comment 7: One comment suggested 

that applicants be required to file a 

translation of a provisional application 

in the corresponding nonprovisional 

application after the filing date of the 

nonprovisional application to avoid 

confusing the specification to be 

examined with the translation. 

Response: The option of having the 

translation filed after the filing date of 

the nonprovisional application does not 

avoid the likelihood of the translation 

being confused with a substitute 

specification, and has not been adopted. 

Comment 8: One comment suggested 

that the notice requiring the translation 

and statement that the is accurate be 

mailed in the provisional application 

about fourteen months after the 

provisional application was filed, 

instead of being mailed in the 

nonprovisional application. 

Response: The suggestion has not 

been adopted because, if the notice were 

to be mailed in the abandoned 

provisional application, the only 

consequence of a failure to comply 

would be waiver of right to make a 

claim of the benefit of the provisional 

application. More than one application 

may claim the benefit of the provisional 

application, and a translation may have 

already been filed in some of the 

nonprovisional applications. If the 

notice is mailed when a new application 

is filed that claims the benefit of the 

provisional application, and applicant 

failed to comply, having the benefit 

claim waived only as to the new 

application would be overly 

complicated. See also the discussion of 

comment 9. 

Comment 9: Two comments suggested 

that the rule should provide that the 

benefit claim be waived if the 

translation has not been filed in 

response to a notice requiring the 

translation to be filed in the provisional 

application, and confirmation in the 

nonprovisional application. 

Alternatively, the comments suggested 

that applicant be allowed to withdraw 

the claim of the benefit of the 

provisional application. 

Response: The suggestion that the 

benefit claim be considered waived if no 

response is filed to the notice has not 

been adopted. The analogy to a priority 

or benefit claim being waived when not 

made in a timely manner is not 

persuasive because, with a late benefit 

claim, no mention is made of the earlier 

application until the right to make a 

benefit claim has been waived. With the 

failure to file a translation, the right 

exists, but would be extinguished by the 

failure to timely file the translation if 

the suggestion were to be adopted. The 

sudden extinguishing of a right to make 

a benefit claim could have an impact 

upon the prior art applied by the 

examiner, and is better addressed as 

part of the standard procedures for 

failure to comply with the requirement 

of the Office. The Office also considered 

treating the benefit claim as waived if 

the translation is not filed by the time 

of publication or patenting of the 

application, which would be more 

analogous to the late benefit claims 

treatment, but the Office generally 

prefers to warn applicants of an 

impending loss of rights when feasible. 

If applicant desires to eliminate the 

benefit claim, an amendment to the first 

sentence of the specification or a 

supplemental application data sheet to 

remove the benefit claim should be filed 

promptly in response to the notice. If 

the Office were to wait for applicant’s 

reply, the Office would be delaying 

prosecution unnecessarily, and the 

impact on patent term adjustment 

would be unclear. 

As to the suggestion that the rule 

provide for the express withdrawal of a 

benefit claim instead of filing a 

translation, this suggestion has been 

adopted by adding ‘‘or an amendment or 

Supplemental Application Data Sheet 

withdrawing the benefit claim’’ to 

§ 1.78(a)(5)(iv). 

Comment 10: One comment requested 

clarification of the result of the Office 

failing to mail a notice requiring an 

English translation of a provisional 

application, and to comment on the 

position taken in a prior rule making 

that the applicant should file an English 

translation and statement that the 

translation is accurate before an 

application claiming the benefit of the 

nonprovisional application is 

published. 

Response: The consequence of an 

applicant who has filed a provisional 

application in a language other than 

English, failed to file a translation of the 

provisional application and a statement 

that the translation is accurate, and then 

filed an application claiming the benefit 

of the provisional application is that the 

applicant has engaged in conduct that 

leads the Office to expend resources 

mailing the applicant a letter requiring 

the translation. If the examiner of a 

nonprovisional application needed the 

translation to determine whether the 

application was entitled to the benefit of 

the provisional application, then 

another consequence would be a delay 

in the prosecution of the nonprovisional 

application. Applicants are encouraged 

to file any necessary translations in a 

timely manner so as to avoid the need 

for the Office to expend resources 

reminding applicant to file papers and 

fees that were previously omitted, 

preferably before publication of the 

nonprovisional application so that the 

appropriate date under 35 U.S.C. 102(e) 

can be determined without an 

independent translation of the 

provisional application. 

Comment 11: One comment alleged 

that the text ‘‘given a period of time 

within which to file’’ was vague and 

indefinite, and requested that a fixed 

period be set in the rule. The comment 

stated that sometimes an insufficient 

Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56125 

period of time may be set for an 

applicant to obtain the translation. 

Response: The suggestion has not 

been adopted. When an applicant elects 

to claim the benefit of a non-English 

provisional application in a 

nonprovisional application (or by entry 

into the national stage), applicant 

should initiate the translation of the 

provisional application because 

§ 1.78(a)(5)(iv) requires a translation 

(and a statement that the translation is 

accurate) when the benefit claim of a 

provisional is claimed. Applicants 

should not wait until reminded by the 

Office of this requirement, and should 

obtain and file the translation without 

being required by the Office to do so. If 

the requirement is made before 

examination, a period of no less than 

thirty days will be set. If the 

requirement is made by the examiner, as 

part of an Office action, the period of 

time will be the time dictated by the 

other issues addressed in the Office 

action (i.e., an Ex parte Quayle action 

would be two months and a non-final 

Office action would be three months). 

The broad language used in the rule is 

desirable to maximize the Office’s 

flexibility in setting the period for reply. 

Comment 12: One comment requested 

that the proposed revision to § 1.78 

apply only to provisional applications 

filed on or after the effective date of the 

rule change. 

Response: Applicants have been 

required to file a translation of a nonEnglish provisional application since 

provisional applications were first 

accepted. The change in § 1.78 is merely 

to indicate the application in which a 

translation is required. When the rule 

becomes effective, if a nonprovisional 

application claims the benefit of a nonEnglish provisional and a copy of the 

translation is not already in the 

nonprovisional application or the 

provisional application, then the 

translation will be required to be filed 

in the provisional application. 

Comment 13: One comment suggested 

that the rules be amended to provide for 

paralegals to prepare and file 

Information Disclosure Statements and 

responses to Notices To File Missing 

Parts. 

Response: The rules of practice 

provide that only a patent practitioner, 

the applicant or the assignee of the 

entire interest of the applicant may sign 

correspondence in a patent application. 

Requests for corrected filing receipts, 

Information Disclosure Statements and 

responses to Notices To File Missing 

Parts are examples of correspondence 

that must comply with the signature 

rules. No change is being considered at 

this time. 

Furthermore, paralegals or other nonregistered personnel employed by the 

registered patent practitioner should not 

contact the Office to ask legal questions 

or other questions regarding the merits 

of a patent application. As paralegals 

and other personnel are not registered 

practitioners, only general information 

about Office procedures can be 

provided. Only registered practitioners 

are permitted to prosecute patent 

applications in accordance with § 11.10. 

Thus, Office personnel have been 

instructed to discuss the merits of a 

patent application with only the patent 

practitioner of record, the applicant, or 

the assignee of the entire interest of the 

applicant. See MPEP §§ 101 and 102. 

Comment 14: Another comment 

suggested that the proposed amendment 

to § 3.73(b)(1)(i) be rephrased to clearly 

provide that the documentary evidence 

of assignment may be submitted 

concurrently with, as well as prior to, 

submission of a statement under 

§ 3.73(b). 

Response: This suggestion is adopted. 

Rule Making Considerations 

Administrative Procedure Act: The 

notable changes in this final rule 

concern: (1) Providing the proper Ssignature by someone acting with 

limited recognition pursuant to § 11.9(a) 

and § 11.9(b); (2) providing that the 

petition fee for a split power of attorney 

resulting from revocation of the power 

of attorney by fewer than all of the 

applicants, or assignees of the 

applicants, be the same as the petition 

fee to waive the rules to appoint a split 

power of attorney initially; (3) requiring 

that the translation of a non-English 

language provisional application and 

statement that the translation is accurate 

be filed in a provisional application, 

rather than in either the nonprovisional 

application claiming the benefit of the 

provisional application or the 

provisional application; and (4) 

requiring that the evidentiary evidence 

of ownership be recorded under 37 CFR 

part 3 when an assignee takes action in 

a patent application. Therefore, these 

rule changes (except for the change to 

the petition fee for revocation of a 

power of attorney by fewer than all of 

the applicants) involve interpretive 

rules, or rules of agency practice and 

procedure under 5 U.S.C. 553(b)(A). See 

Bachow Commc’n 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 and 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)). 

Regulatory Flexibility Act: 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 proposed in this notice (except 

for the change to the petition fee for 

revocation of a power of attorney by 

fewer than all of the applicants), an 

initial or final regulatory flexibility 

analysis under the Regulatory 

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

not required for the changes proposed in 

this notice (with the sole exception of 

the change to the petition fee for 

revocation of a power of attorney by 

fewer than all of the applicants). See 5 

U.S.C. 603. 

With respect to the petition fee 

change, the factual basis supporting the 

certification under the Regulatory 

Flexibility Act follows: This notice 

proposes to change the petition fee 

(from the $130.00 fee specified in 

§ 1.17(h) to the $400.00 fee specified in 

§ 1.17(f)) for a split power of attorney 

resulting from revocation of the power 

of attorney by fewer than all of the 

applicants or assignees of the applicants 

to be in line with the actual cost of 

treating such petitions (in view of the 

special handling required for the split 

power of attorney resulting from 

revocation of the power of attorney). 

This petition fee is established pursuant 

to the Office’s authority under 35 U.S.C. 

41(d) to establish fees for all processing, 

services, or materials relating to patents 

not otherwise specified in 35 U.S.C. 41 

to recover the estimated average cost to 

the Office of such processing, services, 

or materials. 

The Office received over 376,000 

nonprovisional patent applications and 

over 102,000 provisional patent 

applications in fiscal year 2004. The 

Office receives fewer than five petitions 

for revocation of the power of attorney 

by fewer than all of the applicants or 

assignees of the applicants each year. 

While the Office does not track the 

entity status of such petitions, the small 

entity patent application filing rate is 

56126 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 

about 31.0%. Thus, even if all of the 

affected patents were by a small entity, 

the proposed change would impact 

relatively few patent applications 

(0.0013% of all nonprovisional patent 

applications). 

Accordingly, for the reasons set forth 

herein, the Deputy General Counsel for 

General Law of the United States Patent 

and Trademark Office has certified to 

the Chief Counsel for Advocacy of the 

Small Business Administration that 

changes proposed in this notice will not 

have a significant economic impact on 

a substantial number of small entities. 

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

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 not 

significant for purposes of Executive 

Order 12866 (Sept. 30, 1993). 

Paperwork Reduction Act: This notice 

involves information collection 

requirements which are subject to 

review by the Office of Management and 

Budget (OMB) under the Paperwork 

Reduction Act of 1995 (44 U.S.C. 3501 

et seq.). The collection of information 

involved in this notice has been 

reviewed and previously approved by 

OMB under OMB control numbers 

0651–0012, 0651–0031, 0651–0032, 

0651–0034, and 0651–0035. The United 

States Patent and Trademark Office is 

not resubmitting any information 

collection package to OMB for its review 

and approval because the changes in 

this notice do not affect the information 

collection requirements associated with 

the information collection under these 

OMB control numbers. The principal 

impacts of the changes proposed in this 

notice are: (1) Providing that the fee for 

a split power of attorney resulting from 

revocation of the power of attorney by 

fewer than all of the applicants or 

assignees of the applicants be the same 

as the fee to waive the rules to appoint 

a split power of attorney initially; (2) 

requiring that the translation of a nonEnglish language provisional 

application and statement that the 

translation is accurate be filed in a 

provisional application, rather than in 

either the nonprovisional application 

claiming the benefit of the provisional 

application or the provisional 

application; and (3) requiring that the 

evidentiary evidence of ownership be 

recorded under 37 CFR part 3 when an 

assignee takes action in a patent 

application. 

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, 

Office of Management and Budget, New 

Executive Office Building, Room 10235, 

725 17th Street, NW., Washington, DC 

20503, Attention: Desk Officer for the 

Patent and Trademark Office. 

Notwithstanding any other provision 

of law, no person is required to respond 

to nor shall a person be subject to a 

penalty for failure to comply with a 

collection of information subject to the 

requirements of the Paperwork 

Reduction Act unless that collection of 

information displays a currently valid 

OMB control number. 

List of Subjects 

37 CFR Part 1 

Administrative practice and 

procedure, Courts, Freedom of 

Information, Inventions and patents, 

Reporting and recordkeeping 

requirements, Small businesses. 

37 CFR Part 2 

Administrative practice and 

procedure, Trademarks. 

37 CFR Part 3 

Administrative practice and 

procedure, Inventions and patents, 

Reporting and recordkeeping 

requirements. 

37 CFR Part 5 

Classified information, Exports, 

Foreign relations, Inventions and 

patents. 

37 CFR Part 10 

Administrative practice and 

procedure, Inventions and patents, 

Lawyers, Reporting and recordkeeping 

requirements. 

■ For the reasons set forth in the 

preamble, 37 CFR Parts 1, 2, 3, 5, and 

10 are amended as follows: 

PART 1—RULES OF PRACTICE IN 

PATENT CASES 

■ 1. The authority citation for 37 CFR 

part 1 continues to read as follows: 

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

■ 2. Section 1.4 is amended by revising 

paragraph (d)(2) introductory text and 

paragraph (d)(2)(ii) to read as follows: 

§ 1.4 Nature of correspondence and 

signature requirements. 

* * * * * 

(d) * * * 

(2) S-signature. An S-signature is a 

signature inserted between forward 

slash marks, but not a handwritten 

signature as defined by § 1.4(d)(1). An Ssignature includes any signature made 

by electronic or mechanical means, and 

any other mode of making or applying 

a signature not covered by either a 

handwritten signature of § 1.4(d)(1) or 

an Office Electronic Filing System (EFS) 

character coded signature of § 1.4(d)(3). 

Correspondence being filed in the Office 

in paper, by facsimile transmission as 

provided in § 1.6(d), or via the Office 

Electronic Filing System as an EFS 

Tag(ged) Image File Format (TIFF) 

attachment, for a patent application, 

patent, or a reexamination proceeding 

may be S-signature signed instead of 

being personally signed (i.e., with a 

handwritten signature) as provided for 

in paragraph (d)(1) of this section. The 

requirements for an S-signature under 

this paragraph (d)(2) are as follows. 

* * * * * 

(ii) A patent practitioner (§ 1.32(a)(1)), 

signing pursuant to §§ 1.33(b)(1) or 

1.33(b)(2), must supply his/her 

registration number either as part of the 

S-signature, or immediately below or 

adjacent to the S-signature. The number 

(#) character may be used only as part 

of the S-signature when appearing 

before a practitioner’s registration 

number; otherwise the number character 

may not be used in an S-signature. 

* * * * * 

■ 3. Section 1.11 is amended by revising 

paragraph (a) to read as follows: 

§ 1.11 Files open to the public. 

(a) The specification, drawings, and 

all papers relating to the file of: A 

published application; a patent; or a 

statutory invention registration are open 

to inspection by the public, and copies 

may be obtained upon the payment of 

the fee set forth in § 1.19(b)(2). If an 

application was published in redacted 

form pursuant to § 1.217, the complete 

file wrapper and contents of the patent 

application will not be available if: The 

requirements of paragraphs (d)(1), (d)(2), 

and (d)(3) of § 1.217 have been met in 

the application; and the application is 

still pending. See § 2.27 of this title for 

trademark files. 

* * * * * 

■ 4. Section 1.17 is amended by revising 

paragraph (f) to read as follows: 

§ 1.17 Patent application and 

reexamination processing fees. 

* * * * * 

(f) For filing a petition under one of 

the following sections which refers to 

this paragraph: $400.00. 

Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56127 

§ 1.36(a)—for revocation of a power of 

attorney by fewer than all of the 

applicants. 

§ 1.53(e)—to accord a filing date. 

§ 1.57(a)—to accord a filing date. 

§ 1.182—for decision on a question 

not specifically provided for. 

§ 1.183—to suspend the rules. 

§ 1.378(e)—for reconsideration of 

decision on petition refusing to accept 

delayed payment of maintenance fee in 

an expired patent. 

§ 1.741(b)—to accord a filing date to 

an application under § 1.740 for 

extension of a patent term. 

* * * * * 

■ 5. Section 1.25 is amended by revising 

paragraph (c)(4) to read as follows: 

§ 1.25 Deposit accounts. 

* * * * * 

(c) * * * 

(4) A payment to replenish a deposit 

account may be submitted by mail with 

a private delivery service or by handcarrying the payment to: Director of the 

U.S. Patent and Trademark Office, Attn: 

Deposit Accounts, 2051 Jamieson 

Avenue, Suite 300, Alexandria, Virginia 

22314. 

* * * * * 

■ 6. Section 1.31 is revised to read as 

follows: 

§ 1.31 Applicant may be represented by 

one or more patent practitioners or joint 

inventors. 

An applicant for patent may file and 

prosecute his or her own case, or he or 

she may give a power of attorney so as 

to be represented by one or more patent 

practitioners or joint inventors. The 

United States Patent and Trademark 

Office cannot aid in the selection of a 

patent practitioner. 

■ 7. Section 1.32 is amended by revising 

paragraphs (a) and (c)(3) to read as 

follows: 

§ 1.32 Power of attorney. 

(a) Definitions. (1) Patent practitioner 

means a registered patent attorney or 

registered patent agent under § 11.6. 

(2) Power of attorney means a written 

document by which a principal 

authorizes one or more patent 

practitioners or joint inventors to act on 

his or her behalf. 

(3) Principal means either an 

applicant for patent (§ 1.41(b)) or an 

assignee of entire interest of the 

applicant for patent or in a 

reexamination proceeding, the assignee 

of the entirety of ownership of a patent. 

The principal executes a power of 

attorney designating one or more patent 

practitioners or joint inventors to act on 

his or her behalf. 

(4) Revocation means the cancellation 

by the principal of the authority 

previously given to a patent practitioner 

or joint inventor to act on his or her 

behalf. 

(5) Customer Number means a 

number that may be used to: 

(i) Designate the correspondence 

address of a patent application or patent 

such that the correspondence address 

for the patent application, patent or 

other patent proceeding would be the 

address associated with the Customer 

Number; 

(ii) Designate the fee address (§ 1.363) 

of a patent such that the fee address for 

the patent would be the address 

associated with the Customer Number; 

and 

(iii) Submit a list of patent 

practitioners such that those patent 

practitioners associated with the 

Customer Number would have power of 

attorney. 

* * * * * 

(c) * * * 

(3) Ten or fewer patent practitioners, 

stating the name and registration 

number of each patent practitioner. 

Except as provided in paragraph (c)(1) 

or (c)(2) of this section, the Office will 

not recognize more than ten patent 

practitioners as being of record in an 

application or patent. If a power of 

attorney names more than ten patent 

practitioners, such power of attorney 

must be accompanied by a separate 

paper indicating which ten patent 

practitioners named in the power of 

attorney are to be recognized by the 

Office as being of record in the 

application or patent to which the 

power of attorney is directed. 

■ 8. Section 1.33 is amended by revising 

paragraphs (a) introductory text, (a)(1), 

(b)(1) and (b)(2) and by adding 

paragraph (e) to read as follows: 

§ 1.33 Correspondence respecting patent 

applications, reexamination proceedings, 

and other proceedings. 

(a) Correspondence address and 

daytime telephone number. When filing 

an application, a correspondence 

address must be set forth in either an 

application data sheet (§ 1.76), or 

elsewhere, in a clearly identifiable 

manner, in any paper submitted with an 

application filing. If no correspondence 

address is specified, the Office may treat 

the mailing address of the first named 

inventor (if provided, see §§ 1.76(b)(1) 

and 1.63(c)(2)) as the correspondence 

address. The Office will direct all 

notices, official letters, and other 

communications relating to the 

application to the correspondence 

address. The Office will not engage in 

double correspondence with an 

applicant and a patent practitioner, or 

with more than one patent practitioner 

except as deemed necessary by the 

Director. If more than one 

correspondence address is specified in a 

single document, the Office will select 

one of the specified addresses for use as 

the correspondence address and, if 

given, will select the address associated 

with a Customer Number over a typed 

correspondence address. For the party 

to whom correspondence is to be 

addressed, a daytime telephone number 

should be supplied in a clearly 

identifiable manner and may be 

changed by any party who may change 

the correspondence address. The 

correspondence address may be 

changed as follows: 

(1) Prior to filing of § 1.63 oath or 

declaration by any of the inventors. If a 

§ 1.63 oath or declaration has not been 

filed by any of the inventors, the 

correspondence address may be 

changed by the party who filed the 

application. If the application was filed 

by a patent practitioner, any other 

patent practitioner named in the 

transmittal papers may also change the 

correspondence address. Thus, the 

inventor(s), any patent practitioner 

named in the transmittal papers 

accompanying the original application, 

or a party that will be the assignee who 

filed the application, may change the 

correspondence address in that 

application under this paragraph. 

* * * * * 

(b) * * * 

(1) A patent practitioner of record 

appointed in compliance with § 1.32(b); 

(2) A patent practitioner not of record 

who acts in a representative capacity 

under the provisions of § 1.34; 

* * * * * 

(e) A change of address filed in a 

patent application or patent does not 

change the address for a patent 

practitioner in the roster of patent 

attorneys and agents. See § 11.11 of this 

title. 

■ 9. Section 1.34 is revised to read as 

follows: 

§ 1.34 Acting in a representative capacity. 

When a patent practitioner acting in 

a representative capacity appears in 

person or signs a paper in practice 

before the United States Patent and 

Trademark Office in a patent case, his 

or her personal appearance or signature 

shall constitute a representation to the 

United States Patent and Trademark 

Office that under the provisions of this 

subchapter and the law, he or she is 

authorized to represent the particular 

party on whose behalf he or she acts. In 

filing such a paper, the patent 

56128 Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 

practitioner must set forth his or her 

registration number, his or her name 

and signature. Further proof of authority 

to act in a representative capacity may 

be required. 

■ 10. Section 1.36 is amended by 

revising paragraph (a) to read as follows: 

§ 1.36 Revocation of power of attorney; 

withdrawal of patent attorney or agent. 

(a) A power of attorney, pursuant to 

§ 1.32(b), may be revoked at any stage in 

the proceedings of a case by an 

applicant for patent (§ 1.41(b)) or an 

assignee of the entire interest of the 

applicant, or the owner of the entire 

interest of a patent. A power of attorney 

to the patent practitioners associated 

with a Customer Number will be treated 

as a request to revoke any powers of 

attorney previously given. Fewer than 

all of the applicants (or fewer than all 

of the assignees of the entire interest of 

the applicant or, in a reexamination 

proceeding, fewer than all the owners of 

the entire interest of a patent) may 

revoke the power of attorney only upon 

a showing of sufficient cause, and 

payment of the petition fee set forth in 

§ 1.17(f). A patent practitioner will be 

notified of the revocation of the power 

of attorney. Where power of attorney is 

given to the patent practitioners 

associated with a Customer Number 

(§ 1.32(c)(2)), the practitioners so 

appointed will also be notified of the 

revocation of the power of attorney 

when the power of attorney to all of the 

practitioners associated with the 

Customer Number is revoked. The 

notice of revocation will be mailed to 

the correspondence address for the 

application (§ 1.33) in effect before the 

revocation. An assignment will not of 

itself operate as a revocation of a power 

previously given, but the assignee of the 

entire interest of the applicant may 

revoke previous powers of attorney and 

give another power of attorney of the 

assignee’s own selection as provided in 

§ 1.32(b). 

* * * * * 

§ 1.52 [Amended] 

■ 11. Section 1.52 is amended by 

removing paragraphs (a)(5), (a)(7), and 

(b)(7), and by redesignating paragraph 

(a)(6) as paragraph (a)(5). 

■ 12. Section 1.78 is amended by 

revising paragraph (a)(5)(iv) to read as 

follows: 

§ 1.78 Claiming benefit of earlier filing date 

and cross-references to other applications. 

(a) * * * 

(5)(i) * * * 

(iv) If the prior-filed provisional 

application was filed in a language other 

than English and both an Englishlanguage translation of the prior-filed 

provisional application and a statement 

that the translation is accurate were not 

previously filed in the prior-filed 

provisional application, applicant will 

be notified and given a period of time 

within which to file, in the prior-filed 

provisional application, the translation 

and the statement. If the notice is 

mailed in a pending nonprovisional 

application, a timely reply to such a 

notice must include the filing in the 

nonprovisional application of either a 

confirmation that the translation and 

statement were filed in the provisional 

application, or an amendment or 

Supplemental Application Data Sheet 

withdrawing the benefit claim, or the 

nonprovisional application will be 

abandoned. The translation and 

statement may be filed in the 

provisional application, even if the 

provisional application has become 

abandoned. 

* * * * * 

■ 13. Section 1.133 is amended by 

revising paragraph (a)(2) to read as 

follows: 

§ 1.133 Interviews. 

(a)(1) * * * 

(2) An interview for the discussion of 

the patentability of a pending 

application will not occur before the 

first Office action, unless the 

application is a continuing or substitute 

application or the examiner determines 

that such an interview would advance 

prosecution of the application. 

* * * * * 

PART 2—RULES OF PRACTICE IN 

TRADEMARK CASES 

■ 14. The authority citation for 37 CFR 

part 2 continues to read as follows: 

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

2(b)(2). 

■ 15. Section 2.208 is amended by 

revising paragraph (c)(4) to read as 

follows: 

§ 2.208 Deposit accounts. 

* * * * * 

(c) * * * 

(4) A payment to replenish a deposit 

account may be submitted by mail with 

a private delivery service or handcarrying the payment to: Director of the 

U.S. Patent and Trademark Office, Attn: 

Deposit Accounts, 2051 Jamieson 

Avenue, Suite 300, Alexandria, Virginia 

22314. 

PART 3—ASSIGNMENT, RECORDING 

AND RIGHTS OF ASSIGNEE 

■ 16. 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). 

■ 17. Section 3.28 is revised to read as 

follows: 

§ 3.28 Requests for recording. 

Each document submitted to the 

Office for recording must include a 

single cover sheet (as specified in § 3.31) 

referring either to those patent 

applications and patents, or to those 

trademark applications and 

registrations, against which the 

document is to be recorded. If a 

document to be recorded includes 

interests in, or transactions involving, 

both patents and trademarks, then 

separate patent and trademark cover 

sheets, each accompanied by a copy of 

the document to be recorded, must be 

submitted. If a document to be recorded 

is not accompanied by a completed 

cover sheet, the document and the 

incomplete cover sheet will be returned 

pursuant to § 3.51 for proper 

completion, in which case the 

document and a completed cover sheet 

should be resubmitted. 

■ 18. Section 3.31 is amended by 

revising paragraph (a)(7)(i) to read as 

follows: 

§ 3.31 Cover sheet content. 

(a) * * * 

(7) * * * 

(i) Place a symbol comprised of 

letters, numbers, and/or punctuation 

marks between forward slash marks (e.g. 

/Thomas O’Malley III/) in the signature 

block on the electronic submission; or 

* * * * * 

■ 19. Section 3.73 is amended by 

revising paragraph (b)(1)(i) to read as 

follows: 

§ 3.73 Establishing right of assignee to 

take action. 

* * * * * 

(b)(1) * * * 

(i) Documentary evidence of a chain 

of title from the original owner to the 

assignee (e.g., copy of an executed 

assignment). For trademark matters 

only, the documents submitted to 

establish ownership may be required to 

be recorded pursuant to § 3.11 in the 

assignment records of the Office as a 

condition to permitting the assignee to 

take action in a matter pending before 

the Office. For patent matters only, the 

submission of the documentary 

evidence must be accompanied by a 

statement affirming that the 

documentary evidence of the chain of 

title from the original owner to the 

assignee was or concurrently is being 

submitted for recordation pursuant to 

§ 3.11; or 

* * * * * 

Federal Register / Vol. 70, No. 185 / Monday, September 26, 2005 / Rules and Regulations 56129 

PART 5—SECRECY OF CERTAIN 

INVENTIONS AND LICENSES TO 

EXPORT AND FILE APPLICATIONS IN 

FOREIGN COUNTRIES 

■ 20. The authority citation for 37 CFR 

part 5 is revised to read as follows: 

Authority: 35 U.S.C. 2(b)(2), 41, 181–188, 

as amended by the Patent Law Foreign Filing 

Amendments Act of 1988, Pub. L. 100–418, 

102 Stat. 1567; the Arms Export Control Act, 

as amended, 22 U.S.C. 2571 et seq.; the 

Atomic Energy Act of 1954, as amended, 42 

U.S.C. 2011 et seq.; the Nuclear Non 

Proliferation Act of 1978; 22 U.S.C. 3201 et 

seq.; and the delegations in the regulations 

under these Acts to the Director (15 CFR 

734.3(b)(1)(v), 22 CFR 125.04, and 10 CFR 

810.7), as well as the Export Administration 

Act of 1979, 50 U.S.C. app. 2401 et seq.; the 

International Emergency Economic Powers 

Act, 50 U.S.C. 1701 et seq.; E.O. 12938, 59 

FR 59099, 3 CFR, 1994 Comp., p. 950; E.O. 

13222, 66 FR 44025, 3 CFR, 2001 Comp., p. 

783; Notice of August 2, 2005, 70 FR 45273 

(August 5, 2005). 

■ 21. Section 5.11 is amended by 

revising paragraphs (b) and (c) to read 

as follows: 

§ 5.11 License for filing in a foreign 

country an application on an invention 

made in the United States or for 

transmitting international application. 

* * * * * 

(b) The license from the 

Commissioner for Patents referred to in 

paragraph (a) would also authorize the 

export of technical data abroad for 

purposes relating to the preparation, 

filing or possible filing and prosecution 

of a foreign patent application without 

separately complying with the 

regulations contained in 22 CFR parts 

121 through 130 (International Traffic in 

Arms Regulations of the Department of 

State), 15 CFR parts 730–774 

(Regulations of the Bureau of Industry 

and Security, Department of Commerce) 

and 10 CFR part 810 (Foreign Atomic 

Energy Programs of the Department of 

Energy). 

(c) Where technical data in the form 

of a patent application, or in any form, 

are being exported for purposes related 

to the preparation, filing or possible 

filing and prosecution of a foreign 

patent application, without the license 

from the Commissioner for Patents 

referred to in paragraphs (a) or (b) of this 

section, or on an invention not made in 

the United States, the export regulations 

contained in 22 CFR parts 120 through 

130 (International Traffic in Arms 

Regulations of the Department of State), 

15 CFR parts 730–774 (Bureau of 

Industry and Security Regulations, 

Department of Commerce) and 10 CFR 

part 810 (Assistance to Foreign Atomic 

Energy Activities Regulations of the 

Department of Energy) must be 

complied with unless a license is not 

required because a United States 

application was on file at the time of 

export for at least six months without a 

secrecy order under § 5.2 being placed 

thereon. The term ‘‘exported’’ means 

export as it is defined in 22 CFR part 

120, 15 CFR part 734 and activities 

covered by 10 CFR part 810. 

* * * * * 

■ 22. Section 5.19 is revised to read as 

follows: 

§ 5.19 Export of technical data. 

(a) Under regulations (15 CFR 

734.3(b)(1)(v)) established by the 

Department of Commerce, a license is 

not required in any case to file a patent 

application or part thereof in a foreign 

country if the foreign filing is in 

accordance with the regulations (§§ 5.11 

through 5.25) of the U.S. Patent and 

Trademark Office. 

(b) An export license is not required 

for data contained in a patent 

application prepared wholly from 

foreign-origin technical data where such 

application is being sent to the foreign 

inventor to be executed and returned to 

the United States for subsequent filing 

in the U.S. Patent and Trademark Office 

(15 CFR 734.10(a)). 

PART 10—REPRESENTATION OF 

OTHERS BEFORE THE PATENT AND 

TRADEMARK OFFICE 

■ 23. The authority citation for 37 CFR 

part 10 continues to read as follows: 

Authority: 5 U.S.C. 500; 15 U.S.C. 1123; 35 

U.S.C. 2, 6, 32, 41. 

■ 24. Section 10.112 is amended by 

revising paragraph (a) to read as follows: 

§ 10.112 Preserving identity of funds and 

property of client. 

(a) All funds of clients paid to a 

practitioner or a practitioner’s firm, 

other than advances for costs and 

expenses, shall be deposited in one or 

more identifiable bank accounts 

maintained in the United States or, in 

the case of a practitioner having an 

office in a foreign country or registered 

under § 11.6(c), in the United States or 

the foreign country. 

* * * * * 

Dated: September 19, 2005. 

Jon W. Dudas, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 05–19128 Filed 9–23–05; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Parts 52 and 81 

[R05–OAR–2005–IN–0004; FRL–7972–6] 

Approval and Promulgation of 

Implementation Plans and Designation 

of Areas for Air Quality Planning 

Purposes; Indiana; Lake County Sulfur 

Dioxide Regulations, Redesignation 

and Maintenance Plan 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Final rule. 

SUMMARY: EPA is approving a State 

Implementation Plan (SIP) revision for 

the control of sulfur dioxide (SO2) 

emissions in Lake County, Indiana. The 

SIP revision submitted by the Indiana 

Department of Environmental 

Management (IDEM) amends 326 

Indiana Administrative Code (IAC) 

Article 7. Indiana’s revised SO2 rule 

consists of changes to 326 IAC 7–4 

which sets forth facility-specific SO2

emission limitations and recordkeeping 

requirements for Lake County. The rule 

revision also reflects updates to 

company names, updates to emission 

limits currently in permits, deletion of 

facilities that are already covered by 

natural gas limits, and other corrections 

and updates. Due to changes in section 

numbers, references to citations in other 

parts of the rule have also been updated. 

EPA is also approving a request to 

redesignate the Lake County 

nonattainment area to attainment of the 

SO2 National Ambient Air Quality 

Standards (NAAQS). In conjunction 

with these actions, EPA is also 

approving the maintenance plan for the 

Lake County nonattainment area to 

ensure that attainment of the NAAQS 

will be maintained. The SIP revision, 

redesignation request and maintenance 

plan are approvable because they satisfy 

the requirements of the Clean Air Act 

(Act). 

DATES: This final rule is effective on 

October 26, 2005. 

ADDRESSES: EPA has established a 

docket for this action under Regional 

Material in EDocket (RME) Docket ID 

No. R05–OAR–2005–IN–0004. All 

documents in the docket are listed in 

the RME index at http://docket.epa.gov/ 

rmepub/, once in the system, select 

‘‘quick search,’’ then key in the 

appropriate RME Docket identification 

number. Although listed in the index, 

some information is not publicly 

available, i.e., Confidential Business 

Information (CBI) or other information 

whose disclosure is restricted by statute.