Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations 67087

1The information collection in this Issuance has

been approved by the Office of Management and

Budget (‘‘OMB’’) in accordance with the

requirements of the Paperwork Reduction Act (44

U.S.C. 3507(d)) under control number 1506–0001.

An agency may not conduct or sponsor, and person

is not required to respond to, a collection of

information unless it displays a valid control

number.

ACTION: Guidance on reporting

requirement effective date and form.

SUMMARY: This document reminds

money transmitters and money order

and traveler’s check issuers, sellers, and

redeemers of the January 1, 2002

effective date for the requirement to

report suspicious transactions. In

addition, this document explains which

form these businesses must use to report

suspicious transactions.

FOR FURTHER INFORMATION CONTACT:

Patrice Motz, Money Services Business

Program, Office of Compliance and

Regulatory Enforcement, FinCEN (800)

949–2732; Judith Starr, Chief Counsel or

Cynthia L. Clark, Deputy Chief Counsel,

FinCEN (703) 905–3590.

SUPPLEMENTARY INFORMATION:

I. Introduction

The statute generally referred to as the

‘‘Bank Secrecy Act,’’ Titles I and II of

Public Law 91–508, as amended,

codified at 12 U.S.C. 1829b, 12 U.S.C.

1951–1959, and 31 U.S.C. 5311–5331,

authorizes the Secretary of the Treasury,

inter alia, to require financial

institutions to keep records and file

reports that are determined to have a

high degree of usefulness in criminal,

tax, and regulatory matters, or in the

conduct of intelligence or counterintelligence activities, to protect against

international terrorism, and to

implement counter-money laundering

programs and compliance procedures.

Regulations implementing Title II of the

Bank Secrecy Act appear at 31 CFR part

103. The authority of the Secretary to

administer the Bank Secrecy Act has

been delegated to the Director of

FinCEN.

The Secretary of the Treasury was

granted authority in 1992, with the

enactment of 31 U.S.C. 5318(g), to

require financial institutions to report

suspicious transactions. On March 14,

2000, FinCEN issued a final rule

requiring money transmitters, and

issuers, sellers, and redeemers of money

orders and traveler’s checks, to report

suspicious transactions. (65 FR 13683).

II. FinCEN Issuance 2001–2

This document, FinCEN Issuance

2001–2, reminds money transmitters

and issuers, sellers, and redeemers of

money orders and traveler’s checks that

the requirement to report suspicious

transactions applies to transactions

occurring on or after January 1, 2002.1

A report of a suspicious transaction

must be filed no later than 30 calendar

days after the date of initial detection of

facts that may constitute a basis for

filing a report of the suspicious

transaction. See, 31 CFR 103.20(b)(3).

FinCEN is developing a form to be

used solely by money transmitters and

issuers, sellers, and redeemers of money

orders and traveler’s checks to report

suspicious transactions. That form, the

Suspicious Activity Report—MSB

(‘‘SAR–MSB’’), will be published in the

Federal Register for public comment. In

the meantime, money transmitters and

issuers, sellers, and redeemers of money

orders and traveler’s checks are to use

the existing bank suspicious activity

report, Form TD F 90–22.47, to report

suspicious activities. Money

transmitters and issuers, sellers, and

redeemers of money orders and

traveler’s checks are requested to enter

the letters ‘‘MSB’’ in block letters at the

top of the form and in the empty space

in item 5 of the TD F 90–22.47. Further

information about completing the TD F

90–22.47 is available on the general

FinCEN Web site at http://

www.treas.gov/fincen and on the site

specific to money services businesses at

http://www.msb.gov.

Money services businesses are

encouraged to continue to use the

Financial Institutions Hotline to

voluntarily report to law enforcement

suspicious transactions that may relate

to recent terrorist activity against the

United States. The Hotline was

established to facilitate the immediate

transmittal of this information to law

enforcement. The use of the Hotline is

voluntary and does not negate the

responsibility of a particular money

services business to file a TD F 90–

22.47.

Dated: December 20, 2001.

James F. Sloan,

Director, Financial Crimes Enforcement

Network.

[FR Doc. 01–31851 Filed 12–27–01; 8:45 am]

BILLING CODE 4820–03–P

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

[Docket No.: 010815207–1285–03]

RIN 0651–AB41

Requirements for Claiming the Benefit

of Prior-Filed Applications Under

Eighteen-Month Publication of Patent

Applications

AGENCY: United States Patent and

Trademark Office, Commerce.

ACTION: Final rule.

SUMMARY: In implementing the

provisions of the American Inventors

Protection Act of 1999 related to the

eighteen-month publication of patent

applications, the United States Patent

and Trademark Office (Office) revised

the rules of practice related to

requirements for claiming the benefit of

a prior-filed application. The Office is

now revising the time period for

claiming the benefit of a prior-filed

application in an application filed

under the Patent Cooperation Treaty

(PCT), revising the time period for filing

an English language translation of a

non-English language provisional

application, and making other technical

corrections to the rules of practice

related to eighteen-month publication.

EFFECTIVE DATE: December 28, 2001.

FOR FURTHER INFORMATION CONTACT:

Robert A. Clarke or Joni Y. Chang, Legal

Advisors, Office of Patent Legal

Administration, by telephone at (703)

308–6906, or by mail addressed to: Box

Comments—Patents, Commissioner for

Patents, Washington, DC 20231, or by

facsimile to (703) 872–9399, marked to

the attention of Robert A. Clarke.

SUPPLEMENTARY INFORMATION: The

American Inventors Protection Act of

1999 was enacted into law on November

29, 1999. See Pub. L. 106–113, 113 Stat.

1501, 1501A–552 through 1501A–591

(1999). The American Inventors

Protection Act of 1999 contained a

number of changes to title 35, United

States Code, including provisions for

the publication of pending applications

for patent, with certain exceptions,

promptly after the expiration of a period

of eighteen months from the earliest

filing date for which a benefit is sought

under title 35, United States Code

(‘‘eighteen-month publication’’). The

Office implemented the eighteen-month

publication provisions of the American

Inventors Protection Act of 1999 in a

final rule published in September of

2000. See Changes to Implement

Eighteen-Month Publication of Patent

67088 Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations

Applications, 65 FR 57023 (Sept. 20,

2000), 1239 Off. Gaz. Pat. Office 63 (Oct.

10, 2000) (final rule).

Section 4503(a) of the American

Inventors Protection Act of 1999

amended 35 U.S.C. 119(b) to provide

that no application for patent shall be

entitled to a right of priority under 35

U.S.C. 119(a)-(d) unless a claim

identifying the foreign application is

filed at such time during the pendency

of the application as required by the

Office. Section 4503(b) of the American

Inventors Protection Act of 1999

amended 35 U.S.C. 119(e) and 120 to

provide that no application shall be

entitled to the benefit of a prior-filed

application unless an amendment

containing the specific reference to the

prior-filed application is submitted at

such time during the pendency of the

application as required by the Office.

Section 4503 of the American Inventors

Protection Act of 1999 also amended 35

U.S.C. 119 and 120 to permit the Office

to establish procedures for accepting an

unintentionally delayed claim for the

benefit of a prior-filed application.

Section 4503 of the American Inventors

Protection Act of 1999 applies to

applications filed under 35 U.S.C. 111

on or after November 29, 2000, and to

applications entering the national stage

after compliance with 35 U.S.C. 371 that

resulted from international applications

filed on or after November 29, 2000. See

Pub. L. 106–113, § 4508, 113 Stat. at

1501A–566 through 1501A–567. This

final rule amends 37 CFR 1.55 and 1.78

to: (1) Revise the requirements for

claiming the benefit of a prior-filed

application in an application filed

under the PCT; (2) revise the time

period and requirements for filing an

English language translation of a nonEnglish language provisional

application; and (3) expressly indicate

that the time period requirements which

implement the provisions of § 4503 of

the American Inventors Protection Act

of 1999 do not apply to applications

filed before November 29, 2000.

Discussion of Specific Rules

Title 37 of the Code of Federal

Regulations, Part 1, is amended as

follows:

Section 1.14: Section 1.14(i)(2) is

amended to correct its reference to ‘‘35

U.S.C. 154(d)(4) (formerly indicated as

‘‘35 U.S.C. 154(2)(d)(4)’’).

Section 1.55: Section 1.55(a)(1)(i) is

amended such that the rules of practice

expressly indicate that the time periods

in § 1.55(a)(1)(i) do not apply in an

application under 35 U.S.C. 111(a) if the

application is: (1) an application for a

design patent; or (2) an application filed

before November 29, 2000. The Office

indicated that the changes to § 1.55 (and

§ 1.78) to implement eighteen-month

publication applied only to applications

filed on or after November 29, 2000. See

Changes to Implement Eighteen-Month

Publication of Patent Applications, 65

FR at 57024, 1239 Off. Gaz. Pat. Office

at 63. The Office, however, has received

enough inquiries about whether the

time periods set forth in § 1.55(a)(1)(i)

(and § 1.78(a)(2) and § 1.78(a)(5)) apply

to particular applications that the Office

has decided to place this information in

§ 1.55 (and § 1.78) itself.

Section 1.55(c) is amended to

expressly indicate that a petition under

§ 1.55(c) to accept the delayed claim

must also be accompanied by the claim

(i.e., the claim required by 35 U.S.C.

119(a)–(d) and § 1.55) for priority to the

prior foreign application, unless

previously submitted.

Section 1.78: Section 1.78(a)(1) is

amended to Make its provisions

applicable to international applications

designating the United States of

America. The phrase ‘‘nonprovisional

application’’ as used in the rules of

practice means either an application

filed under 35 U.S.C. 111(a) or an

international application filed under 35

U.S.C. 363 that entered the national

stage after compliance with 35 U.S.C.

371. See § 1.9(a)(3). Thus, provisions

which apply only to a nonprovisional

application (e.g., the requirement in

§ 1.78(a)(2)(iii) for a specific reference in

an application data sheet (§ 1.76) or the

specification) do not apply to any

international application that does not

enter national stage processing under 35

U.S.C. 371. The specific reference

requirements of 35 U.S.C. 119(e) and

120 are met in such an international

application by a specific reference to the

prior-filed application in the

international application papers (e.g., in

the Request (PCT Rule 4.10 and

§ 1.434(d)(2)), or a correction or addition

in accordance with PCT Rule 26bis).

Section 1.78(a)(2) is amended to place

its provisions in separate paragraphs

(a)(2)(i) through (a)(2)(iv) for clarity.

Section 1.78(a)(2) is also amended to

make its provisions applicable to

international applications designating

the United States of America, and to set

forth the time period for making a claim

(providing the specific reference

required by § 1.78(a)(2)(i)) for both an

application filed under 35 U.S.C. 111(a)

and an international application

designating the United States of

America which entered the national

stage after compliance with 35 U.S.C.

371.

Specifically, if the later-filed

application is an application filed under

35 U.S.C. 111(a), the specific reference

required by § 1.78(a)(2)(i) must be

submitted within the later of four

months from the actual filing date of the

later-filed application or sixteen months

from the filing date of the prior-filed

application. If, however, the later-filed

application is a nonprovisional

application which entered the national

stage from an international application

after compliance with 35 U.S.C. 371, the

specific reference required by

§ 1.78(a)(2)(i) must be submitted within

the later of four months from the date

on which the national stage commenced

under 35 U.S.C. 371(b) or (f) in the laterfiled international application or sixteen

months from the filing date of the priorfiled application. This reference must,

in any event, be submitted during the

pendency of the later-filed application.

The provisions relating to an

application filed under 35 U.S.C. 111(a)

do not change the time period for

submitting a specific reference in such

applications. The provisions relating to

an international application designating

the United States of America which

entered the national stage after

compliance with 35 U.S.C. 371,

however, do change the time period for

submitting a specific reference to any

prior-filed application for which a

benefit is claimed in such international

applications in that the four-month

period is measured from the date on

which the national stage commenced

under 35 U.S.C. 371(b) or (f) rather than

the actual filing date of the international

application under 35 U.S.C. 363.

Section 1.78(a)(2) is also amended to

eliminate the requirement that if the

application claims the benefit of an

international application, the first

sentence of the specification must

include an indication of whether the

international application was published

under PCT Article 21(2) in English. The

Office is eliminating this requirement

because: (1) The Office will not delay

publication of the application if this

requirement is not met; and (2) this

information can be obtained from other

sources.

Section 1.78(a)(2) is also amended

such that the rules of practice expressly

indicate that the time periods in

§ 1.78(a)(2)(ii) do not apply if the laterfiled application is: (1) An application

for a design patent; (2) an application

filed under 35 U.S.C. 111(a) before

November 29, 2000; or (3) a

nonprovisional application which

entered the national stage after

compliance with 35 U.S.C. 371 from an

international application filed under 35

U.S.C. 363 before November 29, 2000.

The Office indicated that the changes to

§ 1.78 to implement eighteen-month

publication applied only to applications

Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations 67089

filed on or after November 29, 2000. See

Changes to Implement Eighteen-Month

Publication of Patent Applications, 65

FR at 57024, 1239 Off. Gaz. Pat. Office

at 63. The Office, however, has received

enough inquiries about whether the

time periods set forth in § 1.78 apply to

particular applications that the Office

has decided to place this information in

§ 1.78 itself.

Section 1.78(a)(2) is also amended to

change the sentence ‘‘[t]he identification

of an application by application number

under this section is the specific

reference required by 35 U.S.C. 120 to

every application assigned that

application number’’ to ‘‘[t]he

identification of an application by

application number under this section is

the identification of every application

assigned that application number

necessary for a specific reference

required by 35 U.S.C. 120 to every such

application assigned that application

number.’’ That is, a continued

prosecution application under § 1.53(d)

(CPA) does not require any additional

identification of or reference to the prior

application (or any prior application

assigned the application number of such

application under § 1.53(d)) under 35

U.S.C. 120 and § 1.78(a)(2) other than

the identification of the prior

application in the request required by

§ 1.53(d) for a CPA. See Changes to

Patent Practice and Procedure, 62 FR

53131, 53144 (Oct. 10, 1997), 1203 Off.

Gaz. Pat. Office 63, 73 (Oct. 21, 1997)

(final rule). The change to this provision

clarifies that the other provisions of

§ 1.78(a)(2) (e.g., that the claim be in the

application data sheet or the first

sentence of the specification) remain

applicable when an application under

§ 1.53(b) claims the benefit under 35

U.S.C. 120 of a continued prosecution

application filed under § 1.53(d).

Section 1.78(a)(3) is amended to

expressly indicate that a petition under

§ 1.78(a)(3) to accept the delayed claim

must also be accompanied by the claim

(i.e., the reference required by 35 U.S.C.

120 and § 1.78(a)(2)) to the benefit of the

prior-filed application, unless

previously submitted. Section 1.78(a)(3)

is also amended to change ‘‘paragraph

(a)(2)’’ to paragraph ‘‘(a)(2)(ii)’’ for

consistency with the changes to

§ 1.78(a)(2).

Section 1.78(a)(3) provides that if the

reference required by 35 U.S.C. 120 and

§ 1.78(a)(2) of this section is presented

in a nonprovisional application after the

time period provided by § 1.78(a)(2)(ii),

the claim under 35 U.S.C. 120, 121, or

365(c) for the benefit of a prior-filed

copending nonprovisional application

or international application designating

the United States may be accepted if the

applicant files a petition to accept the

delayed claim that is accompanied by:

(1) the reference required by 35 U.S.C.

120 and § 1.78(a)(2) to the prior-filed

application (unless previously

submitted); (2) the surcharge set forth in

§ 1.17(t); and (3) a statement that the

entire delay between the date the claim

was due under § 1.78(a)(2)(ii) and the

date the claim was filed was

unintentional.

If an applicant includes a claim to the

benefit of a prior-filed nonprovisional

application or international application

designating the United States elsewhere

in the application but not in the manner

specified in § 1.78(a)(2)(i) and (iii) (e.g.,

if the claim is included in an

unexecuted oath or declaration or the

application transmittal letter) within the

time period set forth in § 1.78(a)(2)(ii),

the Office will not require a petition

(and the surcharge under § 1.17(t)) to

correct the claim if the information

concerning the claim contained

elsewhere in the application was

recognized by the Office as shown by its

inclusion on a filing receipt. This is

because the application will have been

scheduled for publication on the basis

of the information concerning the claim

contained elsewhere in the application

within the time period set forth in

§ 1.78(a)(2)(ii). Of course, the applicant

must still submit the claim in the

manner specified in § 1.78(a)(2)(i) and

(iii) (i.e., by an amendment in the first

sentence of the specification or in an

application data sheet) to have a proper

claim under 35 U.S.C. 120 and § 1.78 to

the benefit of a prior-filed application.

If, however, an applicant includes such

a claim elsewhere in the application and

not in the manner specified in

§ 1.78(a)(2)(i) and (iii), and the claim is

not recognized by the Office as shown

by its absence on the filing receipt (e.g.,

if the claim is in a part of the

application where priority or continuity

claims are not conventionally located,

such as the body of the specification),

the Office will require a petition (and

the surcharge under § 1.17(t)) to correct

such claim. This is because the

application will not have been

scheduled for publication on the basis

of the information concerning the claim

contained elsewhere in the application.

Section 1.78(a)(4) is amended to make

its provisions applicable to international

applications designating the United

States of America.

Section 1.78(a)(5) is amended to place

its provisions in separate paragraphs

(a)(5)(i) through (a)(5)(iv) for clarity.

Section 1.78(a)(5) is also amended to: (1)

Make its provisions applicable to

international applications designating

the United States of America; (2) set

forth the time period for making a claim

(providing the specific reference

required by § 1.78(a)(5)) for both an

application filed under 35 U.S.C. 111(a)

and an international application

designating the United States of

America which entered the national

stage after compliance with 35 U.S.C.

371; and (3) change the time period and

requirements for filing an English

language translation of a non-English

language provisional application.

Specifically, if the later-filed

application is an application filed under

35 U.S.C. 111(a), the specific reference

required by § 1.78(a)(5)(i) must be

submitted within the later of four

months from the actual filing date of the

later-filed application or sixteen months

from the filing date of the prior-filed

application. If, however, the later-filed

application is a nonprovisional

application which entered the national

stage from an international application

after compliance with 35 U.S.C. 371, the

specific reference required by

§ 1.78(a)(5)(i) must be submitted within

the later of four months from the date

on which the national stage commenced

under 35 U.S.C. 371(b) or (f) in the laterfiled international application or sixteen

months from the filing date of the priorfiled application. This reference must,

in any event, be submitted during the

pendency of the later-filed application.

The provisions relating to an

application filed under 35 U.S.C. 111(a)

do not change the time period for

submitting a specific reference in such

applications. The provisions relating to

an international application designating

the United States of America which

entered the national stage after

compliance with 35 U.S.C. 371,

however, do change the time period for

submitting a specific reference to any

prior-filed application for which a

benefit is claimed in such international

applications in that the four-month

period is measured from the date on

which the national stage commenced

under 35 U.S.C. 371(b) or (f) rather than

the actual filing date of the international

application under 35 U.S.C. 363.

Section 1.78(a)(5) is also amended

such that the rules of practice expressly

indicate that the time periods in

§ 1.78(a)(5)(ii) do not apply if the laterfiled application is: (1) an application

filed under 35 U.S.C. 111(a) before

November 29, 2000; or (2) a

nonprovisional application which

entered the national stage after

compliance with 35 U.S.C. 371 from an

international application filed under 35

U.S.C. 363 before November 29, 2000.

Section 1.78(a)(5) is also amended to

provide that if a provisional application

was filed in a language other than

67090 Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations

English and an English-language

translation of the provisional

application and a statement that the

translation is accurate were not

previously filed in the provisional

application or the nonprovisional

application, applicant will be notified

and given a period of time within which

to file an English-language translation of

the non-English-language provisional

application and a statement that the

translation is accurate. In a pending

nonprovisional application, failure to

timely reply to such a notice will result

in abandonment of the application.

Thus, § 1.78(a)(5) no longer provides

that if a provisional application was

filed in a language other than English,

a claim to the benefit of such

provisional application is waived if an

English language translation of a nonEnglish language provisional

application is not submitted within the

later of four months from the actual

filing date of the nonprovisional

application or sixteen months from the

filing date of the prior-filed provisional

application. In the event that the Office

schedules an application that claims the

benefit of a provisional application filed

in a language other than English for

publication without issuing a notice

requiring the applicant to file Englishlanguage translation of the non-Englishlanguage provisional application, the

applicant should file the Englishlanguage translation of the non-Englishlanguage provisional application and a

statement that the translation is accurate

before the scheduled publication date.

This change to § 1.78(a)(5) allows

applicant to file an English-language

translation of a non-English language

provisional application either in the

provisional application or in each

nonprovisional application that claims

the benefit of the provisional

application.

Section 1.78(a)(5) is also amended to

delete the term ‘‘copending,’’ as 35

U.S.C. 119(e) no longer requires

copendency between a nonprovisional

application and a provisional

application for the nonprovisional

application to claim the benefit of the

filing date of the provisional application

under 35 U.S.C. 119(e). 35 U.S.C.

119(e)(1) continues to require that any

nonprovisional application claiming the

benefit of a provisional application be

filed within twelve months after the

filing date of the provisional application

(or the next succeeding business day if

the date that is twelve months after the

filing date of the provisional application

falls on a Saturday, Sunday, or Federal

holiday). See Request for Continued

Examination Practice and Changes to

Provisional Application Practice, 65 FR

50092, 50098 (Aug. 16, 2000), 1238 Off.

Gaz. Pat. Office 13, 18–19 (Sept. 5,

2000) (final rule) (comment 2 and

response).

Section 1.78(a)(6) is amended to

expressly indicate that a petition under

§ 1.78(a)(6) to accept the delayed claim

must also be accompanied by the claim

(i.e., the reference required by 35 U.S.C.

119(e) and § 1.78(a)(5)) to the benefit of

the prior-filed provisional application,

unless previously submitted. Section

1.78(a)(6) is also amended to change

‘‘paragraph (a)(5)’’ to paragraph

‘‘(a)(5)(ii)’’ for consistency with the

changes to § 1.78(a)(5).

Section 1.78(a)(6) provides that if the

reference required by 35 U.S.C. 119(e)

and paragraph (a)(5) of this section is

presented in a nonprovisional

application after the time period

provided by § 1.78(a)(5)(ii), the claim

under 35 U.S.C. 119(e) for the benefit of

a prior-filed provisional application

may be accepted if the applicant files a

petition to accept the delayed claim that

is accompanied by: (1) the reference

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

§ 1.78(a)(5) to the prior-filed provisional

application (unless previously

submitted); (2) the surcharge set forth in

§ 1.17(t); and (3) a statement that the

entire delay between the date the claim

was due under § 1.78(a)(5)(ii) and the

date the claim was filed was

unintentional.

If an applicant includes a claim to the

benefit of a prior-filed provisional

application elsewhere in the application

but not in the manner specified in

§ 1.78(a)(5)(i) and (iii) (e.g., if the claim

is included in an unexecuted oath or

declaration or the application

transmittal letter) within the time period

set forth in § 1.78(a)(5)(ii), the Office

will not require a petition (and the

surcharge under § 1.17(t)) to correct the

claim if the information concerning the

claim contained elsewhere in the

application was recognized by the

Office as shown by its inclusion on a

filing receipt. This is because the

application will have been scheduled

for publication on the basis of the

information concerning the claim

contained elsewhere in the application

within the time period set forth in

§ 1.78(a)(5)(ii). Of course, the applicant

must still submit the claim in the

manner specified in § 1.78(a)(5)(i) and

(iii) (i.e., by an amendment in the first

sentence of the specification or in an

application data sheet) to have a proper

claim under 35 U.S.C. 119(e) and § 1.78

to the benefit of a prior-filed provisional

application. If, however, an applicant

includes such a claim elsewhere in the

application and not in the manner

specified in § 1.78(a)(5)(i) and (iii), and

the claim is not recognized by the Office

as shown by its absence on a filing

receipt (e.g., if the claim is in a part of

the application where priority or

continuity claims are not conventionally

located, such as the body of the

specification), the Office will require a

petition (and the surcharge under

§ 1.17(t)) to correct such claim. This is

because the application will not have

been scheduled for publication on the

basis of the information concerning the

claim contained elsewhere in the

application.

Section 1.311: Section 1.311(a) is

amended to correct the parenthetical

reference to ‘‘(§ 1.211(f))’’ to

‘‘(§ 1.211(e)).’’

Section 1.434: Section 1.434(d)(2) is

amended by deleting the term

‘‘copending,’’ as the prior national

application may be a provisional

application and 35 U.S.C. 119(e) no

longer requires copendency for a

nonprovisional application to claim the

benefit of the filing date of a provisional

application under 35 U.S.C. 119(e).

Section 1.491: The Office proposed

amending § 1.491 such that the

regulations set forth the current

language of 35 U.S.C. 371(b) that defines

when national stage commencement

occurs. The Office will adopt that

proposed change to § 1.491 in a separate

final rule that implements an

amendment to PCT Article 22.

Response to Comments

The Office published a notice

proposing the above-mentioned changes

to the rules of practice. See

Requirements for Claiming the Benefit

of Prior-Filed Applications Under

Eighteen-Month Publication of Patent

Applications, 66 FR 46409 (Sept. 5,

2001), 1251 Off. Gaz. Pat. Office 16 (Oct.

2, 2001) (notice of proposed

rulemaking). The Office received seven

written comments (from intellectual

property organizations, patent

practitioners, and the general public) in

response to the notice of proposed

rulemaking. The comments are available

for public inspection at the Office of the

Commissioner for Patents, located in

Crystal Park 2, Suite 910, 2121 Crystal

Drive, Arlington, Virginia, and are also

posted on the Office’s Internet Web site

(address: http://www.uspto.gov).

Most of the comments expressed

support for the proposed changes. None

of the comments opposed the proposed

changes, but several comments included

additional suggestions. Those comments

and the Office’s responses follow

(comments that generally support the

proposed changes are not discussed):

Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations 67091

Comment 1: Several comments

suggested that the Office make clear that

the time period requirements in

§ 1.78(a)(2)(ii) and § 1.78(a)(5)(ii) (and

resulting waiver if these time period

requirements are not met) do not apply

to applications filed before November

29, 2000. Another comment suggested

that the change to § 1.78 be made

retroactive to all applications filed on or

after November 29, 2000.

Response: Sections 1.55 and 1.78 are

now amended to expressly state that the

time period requirements of

§ 1.55(a)(1)(i), § 1.78(a)(2)(ii) and

§ 1.78(a)(5)(ii) do not apply to

applications filed before November 29,

2000. Therefore, there is no waiver of a

benefit under 35 U.S.C. 119 or 120 for

failure to comply with the time period

requirements of § 1.55(a)(1)(i),

§ 1.78(a)(2)(ii) or § 1.78(a)(5)(ii) in an

application filed before November 29,

2000.

Except where the terms of § 1.55 and

§ 1.78 indicate that a provision of § 1.55

or § 1.78 applies only to applications

filed on or after November 29, 2000 (i.e.,

§ 1.55(a)(1)(i), § 1.78(a)(2)(ii), and

§ 1.78(a)(5)(2)(ii)), the provisions of

§ 1.55 and § 1.78 as now amended are

applicable to applications filed before,

on, or after November 29, 2000. For

example, both the elimination of the

requirement that if the application

claims the benefit of an international

application, the first sentence of the

specification must include an indication

of whether the international application

was published under PCT Article 21(2)

in English (§ 1.78(a)(2)), and the more

liberal time period and provisions for

filing an English language translation of

a non-English language provisional

application (§ 1.78(a)(5)), apply to

applications filed before, on, or after

November 29, 2000. Sections 1.55 and

1.78 as now amended, however, provide

that the time period requirements of

§ 1.55(a)(1)(i), § 1.78(a)(2)(ii) and

§ 1.78(a)(5)(ii) do not apply to

applications filed before November 29,

2000.

Comment 2: Several comments

suggested that § 1.78 be amended to

state that, if an applicant includes a

claim under § 1.78 to the benefit of a

prior-filed application elsewhere in the

application, but not in the manner

specified in § 1.78(a)(2)(i) and (iii) or

§ 1.78(a)(5)(i) and (iii), within the time

period set forth in § 1.78(a)(2)(ii) or

§ 1.78(a)(5)(ii), respectively, the Office

will not require a petition (and the

surcharge under § 1.17(t)) to correct the

claim if the information concerning the

claim contained elsewhere in the

application was recognized by the

Office as shown by its inclusion on a

filing receipt or in the patent

application publication.

Response: The Office has adopted the

following practice: if an applicant

includes a claim under § 1.78 to the

benefit of a prior-filed application

elsewhere in the application, but not in

the manner specified in § 1.78(a)(2)(i)

and (iii) or § 1.78(a)(5)(i) and (iii),

within the time period set forth in

§ 1.78(a)(2)(ii) or § 1.78(a)(5)(ii),

respectively, the Office will not require

a petition (and the surcharge under

§ 1.17(t)) to correct the claim if the

information concerning the claim

contained elsewhere in the application

was recognized by the Office as shown

by its inclusion on a filing receipt (not

as shown by its inclusion in the patent

application publication). The reason for

this practice is to avoid the situation in

which an applicant is required to file a

petition (and pay the surcharge under

§ 1.17(t)) even though the application

was scheduled for publication on the

basis of the information concerning the

claim contained elsewhere in the

application, but not in the manner

specified in § 1.78(a)(2)(i) and (iii) or

§ 1.78(a)(5)(i) and (iii), within the time

period set forth in § 1.78(a)(2)(ii). That

is, whether an applicant is required to

file a petition (and pay the surcharge

under § 1.17(t)) to correct a claim that

does not comply with § 1.78(a)(2)(i) and

(iii) or § 1.78(a)(5)(i) and (iii) is based

upon the effect the informal claim has

on the scheduling of the application for

publication, and not whether the

informal claim is ultimately included in

the patent application publication.

The Office’s goal is to encourage

applicants to provide claims to the

benefit of any prior-filed application in

the manner specified in § 1.78(a)(2)(i)

and (iii) or § 1.78(a)(5)(i) and (iii) within

the time period set forth in

§ 1.78(a)(2)(ii) or § 1.78(a)(5)(ii).

Amending § 1.78 itself to expressly

include the above-stated practice would

give tacit approval to providing claim to

the benefit of a prior-filed application in

a manner that does not comply with

§ 1.78(a)(2)(i) and (iii) or § 1.78(a)(5)(i)

and (iii). The commentors’ proposed

amendment to § 1.78 would have an

effect contrary to the Office’s goal of

encouraging applicants to provide

claims to the benefit of any prior-filed

application in the manner specified in

§ 1.78(a)(2)(i) and (iii) or § 1.78(a)(5)(i)

and (iii) within the time period set forth

in § 1.78(a)(2)(ii) or § 1.78(a)(5)(ii).

Finally, if a claim under § 1.78 does

not comply with § 1.78(a)(2)(i) and (iii)

or § 1.78(a)(5)(i) and (iii) (but is stated

elsewhere in the application), such

claim must eventually be presented in

the manner specified in § 1.78(a)(2)(i)

and (iii) or § 1.78(a)(5)(i) and (iii) (i.e.,

by an amendment in the first sentence

of the specification or in an application

data sheet) to be a proper claim under

35 U.S.C. 119(e) or 120 and § 1.78 to the

benefit of a prior-filed application.

Comment 3: Several comments

suggested that the Office should make it

clear that if the requirements of

§ 1.78(a)(2)(ii) have been met, the

applicant has not waived priority or

continuity benefits even if the priority

or continuity claim is not included in

the patent application publication.

Response: If a claim under § 1.78 to

the benefit of a prior-filed application is

stated in the manner specified in

§ 1.78(a)(2)(i) and (iii) or § 1.78(a)(5)(i)

and (iii) within the time period set forth

in § 1.78(a)(2)(ii) or § 1.78(a)(5)(ii), the

applicant has not waived the claim

regardless of whether the Office

includes the claim in the patent

application publication. Nothing in

§ 1.78 suggests that the propriety of

claim under § 1.78 is dependent upon

its inclusion in the patent application

publication.

Comment 4: Several comments

suggested that the Office should provide

applicants with the greatest possible

flexibility in satisfying priority claim

requirements, and should avoid adding

technical requirements that may result

in a loss of patent rights. The comments

specifically suggested that since Office

employees are familiar with checking

the declaration for priority claims,

§ 1.78(a)(2)(iii) should be further

amended to allow the reference required

by § 1.78(a)(2)(i) to be included in the

declaration.

Response: The Office allows

applicants to provide claims under

§ 1.78 to the benefit of any prior-filed

application either in the first line of the

specification (where § 1.78 formerly

required such a claim to be) or in an

application data sheet (§ 1.76).

Providing even this level of flexibility

hinders the patent application

publication and patent printing process

when the specification and application

data sheet (§ 1.76) contain conflicting

information. Providing the oath or

declaration under § 1.63 as an

additional possible location for claims

under § 1.78 to the benefit of any priorfiled application would result in

confusion in situations in which: (1) the

applicant has submitted multiple oaths

or declarations under § 1.63; or (2)

information submitted in the oath or

declaration conflicts with information

submitted in the specification or the

application data sheet (§ 1.76).

Providing the oath or declaration under

§ 1.63 as an additional possible location

for claims to the benefit of any priorVerDate 11<MAY>2000 09:31 Dec 27, 2001 Jkt 197001 PO 00000 Frm 00023 Fmt 4700 Sfmt 4700 E:\FR\FM\28DER1.SGM pfrm01 PsN: 28DER1
67092 Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations

filed application would also cause

problems in the situation in which it is

desirable to delete a claim to the benefit

of a prior-filed application (for patent

term purposes), in that a substitute oath

or declaration not containing the claim

would be necessary to eliminate a claim

if such claim is made by a statement in

the oath or declaration (§ 1.63).

Comment 5: Several comments

suggested that the Office should take all

steps necessary to ensure that all proper

priority or benefit claims are included

in the first paragraph of the patent

application publication.

Response: The applicant and

application information (i.e., inventor

names, including order, title, priority/

benefit, assignee name) that is in the

Office’s Patent Application Locating and

Monitoring (PALM) system at the time

the application content is extracted from

the Office’s Patent Application Capture

and Review (PACR) database for

publication will be reflected on the front

page of the patent application

publication. Thus, if an application is

filed without any priority or benefit

claim, but a priority or benefit claim is

subsequently submitted before the

application content has been extracted

for publication, the priority or benefit

claim will be reflected on the front page

of the patent application publication.

The application content is currently

extracted for publication approximately

nine weeks before the projected

publication date. The time period in

§ 1.55(a)(1), § 1.78(a)(2)(ii), and

§ 1.78(a)(5)(ii) for submitting a priority

or continuity claim is four months from

the actual filing date of the application

or sixteen months from the filing date of

the prior-filed application, which does

not appear to expire until after the time

at which application content is

extracted for publication. As a practical

matter, however, this time period will

expire before the time at which

application content is extracted for

publication (and, as such, any timely

priority or continuity claim should be

entered into the Office’s PALM system

before the time at which application

content is extracted for publication)

because the failure to state a priority or

continuity claim before a publication

date is originally calculated will result

in projected publication date that is

later than the projected publication date

would have been if such priority or

continuity claim were taken into

account.

If an untimely claim under § 1.78 to

the benefit of a prior-filed application is

accepted under § 1.78(a)(3) or

§ 1.78(a)(6) after the application content

has been extracted for publication

purposes, the Office plans to correct its

electronic records relating to the patent

application publication such that the

claim under § 1.78 will be reflected on

the Office’s electronic records of the

patent application publication (the

eighteen-month publication process

does not involve the creation of paperbased records).

Finally, while priority and continuity

claims will be reflected on the front

page of the patent application

publication, continuity claims under

§ 1.78 will not additionally be stated on

the first line of the specification unless

the claim is included in the first line of

the specification as originally filed or as

filed in a copy of the application

submitted by the Office electronic filing

system under § 1.215(c). Specifically,

claims under § 1.78 will not

additionally be stated on the first line of

the specification if the claim is included

in a preliminary amendment to the

specification (see § 1.215(c) (the patent

application publication will not include

any amendments, including preliminary

amendments, unless applicant supplies

a copy of the application containing the

amendment pursuant to § 1.215(c))) or

in an application data sheet (cf. Changes

to Implement the Patent Business Goals,

65 FR 78958, 78959 (Dec. 18, 2000),

1242 Off. Gaz. Pat. Office 65 (Jan. 9,

2001) (final rule and correction) (‘‘If

continuity data is included in an

application data sheet, but not in the

first sentence of the specification, the

continuity data to be set forth in the

application data sheet will not be

printed in the first line of the

specification in the patent’’)).

Comment 6: One comment questioned

whether there is any mechanism for

correcting the absence of a priority

claim in an international application if

an applicant files the international

application designating the United

States of America, but subsequently files

a continuation application that claims

the benefit of the international

application and the international

application never enters the national

stage under 35 U.S.C. 371.

Response: The requirement that a

claim to the benefit of a prior-filed

provisional application, a prior-filed

nonprovisional application, or a priorfiled international application

designating the United States be

submitted within the later of four

months from the date on which the

national stage commenced under 35

U.S.C. 371(b) or (f) in the later-filed

international application or sixteen

months from the filing date of the priorfiled application does not apply to an

international application that never

entered the national stage under 35

U.S.C. 371. Therefore, to amend the

later-filed international application to

add a claim to the benefit of a prior-filed

provisional application, a prior-filed

nonprovisional application, or a priorfiled international application

designating the United States, the

applicant need only file a petition under

§ 1.182 to amend an abandoned

application (the later-filed international

application) with the claim to the

benefit of a prior-filed application

(regardless of whether the later-filed

international application was filed in

the United States Receiving Office).

Comment 7: Several comments

supported the proposed change by

which the Office would issue a notice

in a nonprovisional application

claiming the benefit of a non-English

language provisional application that

sets a time period within which the

English translation must be filed, but

noted that if the Office fails to issue

such a notice and the applicant does not

provide such a translation before

publication, the burden will fall on

applicants against whom the resulting

patent application publication is cited

as a reference to obtain a translation of

the provisional application.

Response: The Office plans to check

during the preexamination processing of

a nonprovisional application to

determine whether the nonprovisional

application claims the benefit of a

provisional application that was filed in

a language other than English and, if so,

whether an English-language translation

of the provisional application was filed

in the provisional application. If the

nonprovisional application claims the

benefit of a provisional application that

was filed in a language other than

English and no English-language

translation of the provisional

application was filed in the provisional

application, the Office will issue a

notice requiring the applicant to timely

file an English-language translation and

a statement that the translation is

accurate. If the Office schedules an

application that claims the benefit of a

provisional application filed in a

language other than English for

publication without issuing a notice

requiring the applicant to file an

English-language translation of the nonEnglish-language provisional

application, the applicant should file

the English-language translation of the

non-English-language provisional

application and a statement that the

translation is accurate before the

scheduled publication date.

The situation in which a patent

application publication results from a

nonprovisional application that claims

the benefit of a provisional application

that was filed in a language other than

Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations 67093

English, and no English-language

translation of the provisional

application was filed in either the

provisional application or the

nonprovisional application, will not

occur unless: (1) The Office fails to issue

a notice during the preexamination

processing of the nonprovisional

application requiring the applicant to

timely file an English-language

translation of the provisional

application; and (2) the applicant fails

to provide the English-language

translation of the non-English-language

provisional application before the

publication date of the patent

application publication. Once this

situation comes to the Office’s attention,

§ 1.78(a)(5)(iv) as now amended

provides that the Office may issue a

notice requiring the applicant (in the

nonprovisional application that resulted

in the patent application publication) to

provide an English-language translation

of the non-English-language provisional

application and a statement that the

translation is accurate (the Office may

also simply obtain its own Englishlanguage translation of the non-Englishlanguage provisional application if that

appears to be the most convenient

course of action). Failure to timely

provide an English-language translation

of the non-English-language provisional

application and a statement that the

translation is accurate in reply to such

a notice will result in abandonment in

a pending nonprovisional application,

and may jeopardize the claim to the

benefit of the provisional application in

any situation (since the requirements of

§ 1.78(a)(5) have not been complied

with).

Comment 8: One comment questioned

whether a nonprovisional application

which entered the national stage from

an international application after

compliance with 35 U.S.C. 371 must

include a reference under § 1.78 to the

underlying international application.

Response: A reference under § 1.78 to

the underlying international application

is neither necessary nor appropriate in

a nonprovisional application which

entered the national stage from an

international application after

compliance with 35 U.S.C. 371. See

Manual of Patent Examining Procedure

§ 1893.03(c) (8th ed. 2001) (a national

stage application filed under 35 U.S.C.

371 may not claim benefit of the filing

date of the international application of

which it is the national stage since its

filing date is the date of filing of that

international application).

Comment 9: One comment suggested

that the surcharge for the

unintentionally delayed submission of a

priority claim was excessive.

Response: As indicated in the final

rule to implement eighteen-month

publication, this surcharge amount must

be sufficient to provide an incentive for

applicant to exercise care to ensure that

any desired claim under 35 U.S.C. 119,

120, 121, or 365(a) or (c) is timely

presented. As such, the surcharge

amount tracks the fee amount for a

petition to revive an unintentionally

abandoned application (35 U.S.C.

41(a)(7)). See Changes to Implement

Eighteen-Month Publication of Patent

Applications, 65 FR at 57040, 1239 Off.

Gaz. Pat. Office at 77 (comment 8 and

response).

Comment 10: One comment noted

that a nonprovisional application which

entered the national stage from an

international application after

compliance with 35 U.S.C. 371 has

already been published as an

international application.

Response: As indicated in the final

rule to implement eighteen-month

publication, the International Bureau

publication of an international

application will not be included in the

Office’s patent application publication

search database. The Office must

(re)publish international applications

that entered the national stage to place

these applications into its patent

application publication search database.

The benefit gained by ensuring that

these prior art documents will be

included in the Office’s patent

application publication search database

outweighs the cost of (re)publishing

these applications. See Changes to

Implement Eighteen-Month Publication

of Patent Applications, 65 FR at 57045,

1239 Off. Gaz. Pat. Office at 82

(comment 47 and response).

Classification

Administrative Procedure Act

The changes in this final rule concern

only the procedures for filing claims for

the benefit of a prior-filed application

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

procedures for filing an English

language translation of a non-English

language provisional application, and

technical corrections to the provisions

of §§ 1.78, 1.311, and 1.434. Because all

of the changes relate to Office practices

and procedures, prior notice and an

opportunity for public comment was not

required pursuant to 5 U.S.C. 553(b)(A)

(or any other law), and thirty-day

advance publication is not required

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

law). However, because the Office

desired the benefit of public comment

on this topic, the Office voluntarily

accepted comments pursuant to a

published notice proposing the abovementioned changes.

Regulatory Flexibility Act

As prior notice and an opportunity for

public comment are not required

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

law), the analytical requirements of the

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

et seq.) are inapplicable. As such, the

regulatory flexibility analysis is not

required, and none has been provided.

See 5 U.S.C. 603.

Executive Order 13132

This rulemaking 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 rulemaking has been determined

to be not significant for purposes of

Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act

This final rule involves information

collection requirements that are subject

to review by the Office of Management

and Budget (OMB) under the Paperwork

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

et seq.). The collections of information

involved in this final rule have been

reviewed and previously approved by

OMB under the following control

numbers: 0651–0021, 0651–0031, 0651–

0032, and 0651–0033.

The title, description and respondent

description of each of the information

collections are shown below with an

estimate of each of the annual reporting

burdens. Included in each estimate is

the time for reviewing instructions,

gathering and maintaining the data

needed, and completing and reviewing

the collection of information.

OMB Number: 0651–0021.

Title: Patent Cooperation Treaty.

Form Numbers: PCT/RO/101,ANNEX/

134/144, PTO–1382, PCT/IPEA/401,

PCT/IB/328.

Type of Review: Regular submission

(approved through December of 2003).

Affected Public: Individuals or

Households, Business or Other ForProfit Institutions, Federal Agencies or

Employees, Not-for-Profit Institutions,

Small Businesses or Organizations.

Estimated Number of Respondents:

331,288.

Estimated Time Per Response:

Between 15 minutes and 4 hours.

Estimated Total Annual Burden

Hours: 401,083.

Needs and Uses: The information

collected is required by the Patent

Cooperation Treaty (PCT). The general

purpose of the PCT is to simplify the

67094 Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations

filing of patent applications on the same

invention in different countries. It

provides for a centralized filing

procedure and a standardized

application format.

OMB Number: 0651–0031.

Title: Patent Processing (Updating).

Form Numbers: PTO/SB/08/21–27/

30–32/35–37/42/43/61/62/63/64/67/68/

91/92/ 96/97/PTO–2053/PTO–2055.

Type of Review: Regular submission

(approved through October of 2002).

Affected Public: Individuals or

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

Institutions and Federal Government.

Estimated Number of Respondents:

2,247,389.

Estimated Time Per Response: 0.45

hours.

Estimated Total Annual Burden

Hours: 1,021,941 hours.

Needs and Uses: During the

processing of an application for a

patent, the applicant/agent may be

required or desire to submit additional

information to the United States Patent

and Trademark Office concerning the

examination of a specific application.

The specific information required or

which may be submitted includes:

Information Disclosure Statements;

Terminal Disclaimers; Petitions to

Revive; Express Abandonments; Appeal

Notices; Petitions for Access; Powers to

Inspect; Certificates of Mailing or

Transmission; Statements under

§ 3.73(b); Amendments; Petitions and

their Transmittal Letters; and Deposit

Account Order Forms.

OMB Number: 0651–0032.

Title: Initial Patent Application.

Form Number: PTO/SB/01–07/

13PCT/17–19/29/101–110.

Type of Review: Regular submission

(approved through October of 2002).

Affected Public: Individuals or

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

Institutions and Federal Government.

Estimated Number of Respondents:

319,350.

Estimated Time Per Response: 9.35

hours.

Estimated Total Annual Burden

Hours: 2,984,360 hours.

Needs and Uses: The purpose of this

information collection is to permit the

Office to determine whether an

application meets the criteria set forth

in the patent statute and regulations.

The standard Fee Transmittal form, New

Utility Patent Application Transmittal

form, New Design Patent Application

Transmittal form, New Plant Patent

Application Transmittal form,

Declaration, and Plant Patent

Application Declaration will assist

applicants in complying with the

requirements of the patent statute and

regulations, and will further assist the

Office in the processing and

examination of the application.

OMB Number: 0651–0033.

Title: Post Allowance and Refiling.

Form Numbers: PTO/SB/13/14/44/

50–57; PTOL–85b.

Type of Review: Regular submission

(approved through September of 2000).

Affected Public: Individuals or

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

Institutions and Federal Government.

Estimated Number of Respondents:

135,250.

Estimated Time Per Response: 0.325

hour.

Estimated Total Annual Burden

Hours: 43,893 hours.

Needs and Uses: This collection of

information is required to administer

the patent laws pursuant to title 35,

U.S.C., concerning the issuance of

patents and related actions including

correcting errors in printed patents,

refiling of patent applications,

requesting reexamination of a patent,

and requesting a reissue patent to

correct an error in a patent. The affected

public includes any individual or

institution whose application for a

patent has been allowed or who takes

action as covered by the applicable

rules. Notwithstanding any other

provision of law, no person is required

to respond to nor shall a person be

subject to a penalty for failure to comply

with a collection of information subject

to the requirements of the Paperwork

Reduction Act unless that collection of

information displays a currently valid

OMB control number.

List of Subjects in 37 CFR Part 1

Administrative practice and

procedure, Courts, Freedom of

Information, Inventions and patents,

Reporting and record keeping

requirements, Small Businesses.

For the reasons set forth in the

preamble, 37 CFR part 1 is amended as

follows:

PART 1—RULES OF PRACTICE IN

PATENT CASES

1. The authority citation for 37 CFR

Part 1 continues to read as follows:

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

2. Section 1.14 is amended by revising

paragraph (i)(2) to read as follows:

§ 1.14 Patent applications preserved in

confidence.

* * * * *

(i) * * *

(2) A copy of an English language

translation of an international

application which has been filed in the

United States Patent and Trademark

Office pursuant to 35 U.S.C. 154(d)(4)

will be furnished upon written request

including a showing that the

publication of the application in

accordance with PCT Article 21(2) has

occurred and that the U.S. was

designated, and upon payment of the

appropriate fee (§ 1.19(b)(2) or

§ 1.19(b)(3)).

* * * * *

3. Section 1.55 is amended by revising

paragraphs (a)(1)(i) and (c) to read as

follows:

§ 1.55 Claim for foreign priority.

(a) * * *

(1)(i) In an original application filed

under 35 U.S.C. 111(a), the claim for

priority must be presented during the

pendency of the application, and within

the later of four months from the actual

filing date of the application or sixteen

months from the filing date of the prior

foreign application. This time period is

not extendable. The claim must identify

the foreign application for which

priority is claimed, as well as any

foreign application for the same subject

matter and having a filing date before

that of the application for which priority

is claimed, by specifying the application

number, country (or intellectual

property authority), day, month, and

year of its filing. The time periods in

this paragraph do not apply in an

application under 35 U.S.C. 111(a) if the

application is:

(A) A design application; or

(B) An application filed before

November 29, 2000.

* * * * *

(c) Unless such claim is accepted in

accordance with the provisions of this

paragraph, any claim for priority under

35 U.S.C. 119(a)–(d) or 365(a) not

presented within the time period

provided by paragraph (a) of this section

is considered to have been waived. If a

claim for priority under 35 U.S.C.

119(a)–(d) or 365(a) is presented after

the time period provided by paragraph

(a) of this section, the claim may be

accepted if the claim identifying the

prior foreign application by specifying

its application number, country (or

intellectual property authority), and the

day, month, and year of its filing was

unintentionally delayed. A petition to

accept a delayed claim for priority

under 35 U.S.C. 119(a)–(d) or 365(a)

must be accompanied by:

(1) The claim under 35 U.S.C. 119(a)–

(d) or 365(a) and this section to the prior

Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations 67095

foreign application, unless previously

submitted;

(2) The surcharge set forth in § 1.17(t);

and

(3) A statement that the entire delay

between the date the claim was due

under paragraph (a)(1) of this section

and the date the claim was filed was

unintentional. The Commissioner may

require additional information where

there is a question whether the delay

was unintentional.

4. Section 1.78 is amended by revising

paragraph (a) to read as follows:

§ 1.78 Claiming benefit of earlier filing date

and cross references to other applications.

(a)(1) A nonprovisional application or

international application designating

the United States of America may claim

an invention disclosed in one or more

prior-filed copending nonprovisional

applications or international

applications designating the United

States of America. In order for an

application to claim the benefit of a

prior-filed copending nonprovisional

application or international application

designating the United States of

America, each prior-filed application

must name as an inventor at least one

inventor named in the later-filed

application and disclose the named

inventor’s invention claimed in at least

one claim of the later-filed application

in the manner provided by the first

paragraph of 35 U.S.C. 112. In addition,

each prior-filed application must be:

(i) An international application

entitled to a filing date in accordance

with PCT Article 11 and designating the

United States of America; or

(ii) Complete as set forth in § 1.51(b);

or

(iii) Entitled to a filing date as set

forth in § 1.53(b) or § 1.53(d) and

include the basic filing fee set forth in

§ 1.16; or

(iv) Entitled to a filing date as set forth

in § 1.53(b) and have paid therein the

processing and retention fee set forth in

§ 1.21(l) within the time period set forth

in § 1.53(f).

(2)(i) Except for a continued

prosecution application filed under

§ 1.53(d), any nonprovisional

application or international application

designating the United States of

America claiming the benefit of one or

more prior-filed copending

nonprovisional applications or

international applications designating

the United States of America must

contain or be amended to contain a

reference to each such prior-filed

application, identifying it by application

number (consisting of the series code

and serial number) or international

application number and international

filing date and indicating the

relationship of the applications. Cross

references to other related applications

may be made when appropriate (see

§ 1.14).

(ii) This reference must be submitted

during the pendency of the later-filed

application. If the later-filed application

is an application filed under 35 U.S.C.

111(a), this reference must also be

submitted within the later of four

months from the actual filing date of the

later-filed application or sixteen months

from the filing date of the prior-filed

application. If the later-filed application

is a nonprovisional application which

entered the national stage from an

international application after

compliance with 35 U.S.C. 371, this

reference must also be submitted within

the later of four months from the date

on which the national stage commenced

under 35 U.S.C. 371(b) or (f) in the laterfiled international application or sixteen

months from the filing date of the priorfiled application. These time periods are

not extendable. Except as provided in

paragraph (a)(3) of this section, the

failure to timely submit the reference

required by 35 U.S.C. 120 and paragraph

(a)(2)(i) of this section is considered a

waiver of any benefit under 35 U.S.C.

120, 121, or 365(c) to such prior-filed

application. The time periods in this

paragraph do not apply if the later-filed

application is:

(A) An application for a design patent;

(B) An application filed under 35

U.S.C. 111(a) before November 29, 2000;

or

(C) A nonprovisional application

which entered the national stage after

compliance with 35 U.S.C. 371 from an

international application filed under 35

U.S.C. 363 before November 29, 2000.

(iii) If the later-filed application is a

nonprovisional application, the

reference required by this paragraph

must be included in an application data

sheet (§ 1.76), or the specification must

contain or be amended to contain such

reference in the first sentence following

the title.

(iv) The request for a continued

prosecution application under § 1.53(d)

is the specific reference required by 35

U.S.C. 120 to the prior-filed application.

The identification of an application by

application number under this section is

the identification of every application

assigned that application number

necessary for a specific reference

required by 35 U.S.C. 120 to every such

application assigned that application

number.

(3) If the reference required by 35

U.S.C. 120 and paragraph (a)(2) of this

section is presented in a nonprovisional

application after the time period

provided by paragraph (a)(2)(ii) of this

section, the claim under 35 U.S.C. 120,

121, or 365(c) for the benefit of a priorfiled copending nonprovisional

application or international application

designating the United States of

America may be accepted if the

reference identifying the prior-filed

application by application number or

international application number and

international filing date was

unintentionally delayed. A petition to

accept an unintentionally delayed claim

under 35 U.S.C. 120, 121, or 365(c) for

the benefit of a prior-filed application

must be accompanied by:

(i) The reference required by 35 U.S.C.

120 and paragraph (a)(2) of this section

to the prior-filed application, unless

previously submitted;

(ii) The surcharge set forth in § 1.17(t);

and

(iii) A statement that the entire delay

between the date the claim was due

under paragraph (a)(2)(ii) of this section

and the date the claim was filed was

unintentional. The Commissioner may

require additional information where

there is a question whether the delay

was unintentional.

(4) A nonprovisional application,

other than for a design patent, or an

international application designating

the United States of America may claim

an invention disclosed in one or more

prior-filed provisional applications. In

order for an application to claim the

benefit of one or more prior-filed

provisional applications, each priorfiled provisional application must name

as an inventor at least one inventor

named in the later-filed application and

disclose the named inventor’s invention

claimed in at least one claim of the

later-filed application in the manner

provided by the first paragraph of 35

U.S.C. 112. In addition, each prior-filed

provisional application must be entitled

to a filing date as set forth in § 1.53(c),

and the basic filing fee set forth in

§ 1.16(k) must be paid within the time

period set forth in § 1.53(g).

(5)(i) Any nonprovisional application

or international application designating

the United States of America claiming

the benefit of one or more prior-filed

provisional applications must contain or

be amended to contain a reference to

each such prior-filed provisional

application, identifying it by the

provisional application number

(consisting of series code and serial

number).

(ii) This reference must be submitted

during the pendency of the later-filed

application. If the later-filed application

is an application filed under 35 U.S.C.

111(a), this reference must also be

submitted within the later of four

67096 Federal Register / Vol. 66, No. 249 / Friday, December 28, 2001 / Rules and Regulations

months from the actual filing date of the

later-filed application or sixteen months

from the filing date of the prior-filed

provisional application. If the later-filed

application is a nonprovisional

application which entered the national

stage from an international application

after compliance with 35 U.S.C. 371,

this reference must also be submitted

within the later of four months from the

date on which the national stage

commenced under 35 U.S.C. 371(b) or

(f) in the later-filed international

application or sixteen months from the

filing date of the prior-filed provisional

application. These time periods are not

extendable. Except as provided in

paragraph (a)(6) of this section, the

failure to timely submit the reference is

considered a waiver of any benefit

under 35 U.S.C. 119(e) to such priorfiled provisional application. The time

periods in this paragraph do not apply

if the later-filed application is:

(A) An application filed under 35

U.S.C. 111(a) before November 29, 2000;

or

(B) A nonprovisional application

which entered the national stage after

compliance with 35 U.S.C. 371 from an

international application filed under 35

U.S.C. 363 before November 29, 2000.

(iii) If the later-filed application is a

nonprovisional application, the

reference required by this paragraph

must be included in an application data

sheet (§ 1.76), or the specification must

contain or be amended to contain such

reference in the first sentence following

the title.

(iv) If the prior-filed provisional

application was filed in a language other

than English and an English-language

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 or the later-filed

nonprovisional application, applicant

will be notified and given a period of

time within which to file an Englishlanguage translation of the non-Englishlanguage prior-filed provisional

application and a statement that the

translation is accurate. In a pending

nonprovisional application, failure to

timely reply to such a notice will result

in abandonment of the application.

(6) If the reference required by 35

U.S.C. 119(e) and paragraph (a)(5) of

this section is presented in a

nonprovisional application after the

time period provided by paragraph

(a)(5)(ii) of this section, the claim under

35 U.S.C. 119(e) for the benefit of a

prior-filed provisional application may

be accepted during the pendency of the

later-filed application if the reference

identifying the prior-filed application by

provisional application number was

unintentionally delayed. A petition to

accept an unintentionally delayed claim

under 35 U.S.C. 119(e) for the benefit of

a prior-filed provisional application

must be accompanied by:

(i) The reference required by 35 U.S.C.

119(e) and paragraph (a)(5) of this

section to the prior-filed provisional

application, unless previously

submitted;

(ii) The surcharge set forth in § 1.17(t);

and

(iii) A statement that the entire delay

between the date the claim was due

under paragraph (a)(5)(ii) of this section

and the date the claim was filed was

unintentional. The Commissioner may

require additional information where

there is a question whether the delay

was unintentional.

* * * * *

5. Section 1.311 is amended by

revising paragraph (a) to read as follows:

§ 1.311 Notice of allowance.

(a) If, on examination, it appears that

the applicant is entitled to a patent

under the law, a notice of allowance

will be sent to the applicant at the

correspondence address indicated in

§ 1.33. The notice of allowance shall

specify a sum constituting the issue fee

which must be paid within three

months from the date of mailing of the

notice of allowance to avoid

abandonment of the application. The

sum specified in the notice of allowance

may also include the publication fee, in

which case the issue fee and publication

fee (§ 1.211(e)) must both be paid within

three months from the date of mailing

of the notice of allowance to avoid

abandonment of the application. This

three-month period is not extendable.

* * * * *

6. Section 1.434 is amended by

revising paragraph (d)(2) to read as

follows:

§ 1.434 The request.

* * * * *

(d) * * *

(2) A reference to any prior-filed

national application or international

application designating the United

States of America, if the benefit of the

filing date for the prior-filed application

is to be claimed.

Dated: December 19, 2001.

James. E. Rogan,

Under Secretary of Commerce for Intellectual

Property and Director of the United States

Patent and Trademark Office.

[FR Doc. 01–31872 Filed 12–27–01; 8:45 am]

BILLING CODE 3510–16–P

ENVIRONMENTAL PROTECTION

AGENCY

40 CFR Part 62

[AZ, CA, HI, NV–066–MSWa; FRL–7122–9]

Approval and Promulgation of State

Plans for Designated Facilities and

Pollutants: Negative Declarations;

Municipal Waste Combustion; Arizona;

California; Hawaii; Nevada

AGENCY: Environmental Protection

Agency (EPA).

ACTION: Direct final rule.

SUMMARY: EPA is amending certain

regulations to reflect the receipt of

negative declarations from Arizona,

California, Hawaii, and Nevada. These

negative declarations certify that there

are no small municipal waste

combustion units in these States that

would be subject to the control

requirements of the federal emission

guidelines.

DATES: This direct final rule is effective

on February 26, 2002 without further

notice, unless EPA receives relevant

adverse comments by January 28, 2002.

If EPA receives such comments, then it

will publish a timely withdrawal in the

Federal Register informing the public

that this rule will not take effect.

ADDRESSES: Comments must be

submitted to Andrew Steckel at the

Region IX office listed below. Copies of

the letters of negative declaration are

available for public inspection at EPA’s

Region IX office during normal business

hours. U.S. Environmental Protection

Agency, Region IX, Rulemaking Office

(AIR–4), Air Division, 75 Hawthorne

Street, San Francisco, CA 94105–3901.

FOR FURTHER INFORMATION CONTACT: Mae

Wang, U.S. Environmental Protection

Agency, Region IX, 75 Hawthorne Street

(AIR–4), San Francisco, CA 94105–3901,

Telephone: (415) 947–4124.

SUPPLEMENTARY INFORMATION:

I. Background

Under section 111(d) of the Clean Air

Act (CAA), EPA has established

procedures whereby States submit plans

to control certain existing sources of

‘‘designated pollutants.’’ Designated

pollutants are defined as pollutants for

which a standard of performance for

new sources applies under section 111

but which are not ‘‘criteria pollutants’’

(i.e., pollutants for which National

Ambient Air Quality Standards

(NAAQS) are set pursuant to sections

108 and 109 of the CAA) or hazardous

air pollutants (HAPs) regulated under

section 112 of the CAA. As required by

CAA section 111(d), EPA established a