[Federal Register Volume 86, Number 232 (Tuesday, December 7, 2021)]
[Proposed Rules]
[Pages 69195-69198]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-26502]
[[Page 69195]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2017-0011]
RIN 0651-AD21
Date of Receipt of Electronic Submissions of Patent
Correspondence
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The USPTO proposes to amend the patent rules of practice to
provide that the receipt date of correspondence officially submitted
electronically by way of the Office electronic filing system is the
date in the Eastern time zone of the United States (Eastern Time) when
the USPTO received the correspondence, rather than the date on which
the correspondence is received at the correspondence address in
Alexandria, Virginia. This is because the USPTO is expecting to provide
physical servers for receiving electronic submissions in locations that
are separate from the USPTO headquarters in Alexandria, Virginia. This
proposed change will ensure consistency and predictability with respect
to correspondence receipt dates as the date of receipt accorded to
correspondence submitted electronically will not depend upon the
location of USPTO servers. The USPTO is also proposing to amend the
patent rules of practice to make other clarifying changes regarding the
receipt of electronic submissions, including providing a definition for
Eastern Time. These changes will harmonize the patent rules with the
trademark rules and provide clarity regarding the date of receipt of
electronic submissions.
DATES: Comments must be received by February 7, 2022 to ensure
consideration.
ADDRESSES: For reasons of government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, one should
enter docket number PTO-P-2017-0011 on the homepage and click
``search.'' The site will provide search results listing all documents
associated with this docket. Commenters can find a reference to this
notice and click on the ``Comment Now!'' icon, complete the required
fields, and enter or attach their comments. Attachments to electronic
comments will be accepted in Adobe [supreg] portable document format or
Microsoft Word [supreg] format. Because comments will be made available
for public inspection, information that the submitter does not desire
to make public, such as an address or phone number, should not be
included in the comments.
Visit the Federal eRulemaking Portal for additional instructions on
providing comments via the portal. If electronic submission of, or
access to, comments is not feasible due to a lack of access to a
computer and/or the internet, please contact the USPTO using the
contact information below for special instructions.
FOR FURTHER INFORMATION CONTACT: For patent-related inquiries, please
contact Mark O. Polutta, Senior Legal Advisor, Office of Patent Legal
Administration, by telephone at 571-272-7709; or Kristie M. Kindred,
Legal Advisor, Office of Patent Legal Administration, by telephone at
571-272-9016; or you can send inquiries by email to
[email protected].
SUPPLEMENTARY INFORMATION: Under current 37 CFR 1.6(a)(4), the receipt
date of correspondence submitted to the USPTO by way of the Office
electronic filing system is ``the date the correspondence is received
at the correspondence address for the USPTO set forth in 37 CFR 1.1
when it was officially submitted.'' Current 37 CFR 1.1 sets forth an
Alexandria, Virginia, correspondence address for the Office. The
USPTO's physical servers that receive electronic submissions are
currently located in Alexandria, Virginia. However, in order to enhance
resiliency, the USPTO is in the process of providing servers in
Manassas, Virginia, and in the future may provide servers outside of
the Eastern time zone. Once the USPTO begins receiving electronically
submitted patent correspondence at locations other than Alexandria,
Virginia, the language in current 37 CFR 1.6(a)(4) that defines the
date the correspondence is received at Alexandria, Virginia, as the
receipt date would be inapplicable. Thus, the USPTO is proposing to
revise 37 CFR 1.6(a)(4) to specify that the receipt date of
correspondence that is officially submitted electronically by way of
the Office electronic filing system is the date in Eastern Time when
the USPTO received the correspondence, regardless of the physical
location of the USPTO server that receives the correspondence. Other
clarifying changes regarding the receipt date of electronic
submissions, including providing a definition for Eastern Time, are
also proposed.
In addition, the changes will align the patent rules with the Legal
Framework for the Patent Electronic System, available at www.uspto.gov/patents/apply/filing-online/legal-framework-efs-web and in the Manual
of Patent Examining Procedure (MPEP) section 502.05, subsection I. The
Legal Framework already indicates that the time and date of receipt of
an application filed via the Office electronic filing system is the
local time and date (Eastern Time) at the USPTO headquarters in
Alexandria, Virginia, when the USPTO received the submission. The date
of receipt is recorded after the user clicks the ``SUBMIT'' button on
the ``Confirm and Submit'' screen. This is the date shown on the
Electronic Acknowledgement Receipt. Similarly, follow-on documents
filed in a patent application after the initial filing of the
application are also accorded the date when the document is received at
the USPTO as the date of receipt under existing practice. See MPEP
section 502.05, subsection I.C.
With respect to patent correspondence, any references to the Office
electronic filing system in this Notice (including in 37 CFR part 1)
include EFS-Web and Patent Center. Patent Center is a new tool for the
electronic filing and management of patent applications. Patent Center
is currently in the Beta phase but is available for all users. Once
fully developed, Patent Center will replace EFS-Web and the Patent
Application Information Retrieval (PAIR) system. Users of Patent Center
Beta are required to abide by the Legal Framework for the Patent
Electronic System to the extent applicable and are expected to abide by
the Patent Electronic System Subscriber Agreement. See the Patent
Center Beta Release Guidelines available at www.uspto.gov/patents/apply/patent-center. In the future, as Patent Center gets closer to
full development, the Legal Framework for the Patent Electronic System
will be revised to expressly refer to and more specifically cover
electronic submissions via Patent Center.
The rules of practice in trademark cases already provide that
filing dates of electronic submissions are based on Eastern Time. See
37 CFR 2.195(a). Therefore, it is unnecessary to amend the trademark
rules of practice.
Discussion of Specific Rules
The following is a discussion of the proposed amendments to 37 CFR
part 1.
Section 1.1: Section 1.1(a) is amended to clarify the appropriate
address information for patent-related correspondence. In particular,
the clause ``[e]xcept as provided in paragraphs (a)(3)(i) and
(a)(3)(ii) of this
[[Page 69196]]
section'' is being changed to ``[e]xcept for correspondence submitted
via the Office electronic filing system in accordance with Sec.
1.6(a)(4).'' Further, the phrase ``to specific areas within the Office
as set out in paragraphs (a)(1) and (a)(3)(iii) of this section'' is
being replaced with ``to specific areas within the Office as provided
in this section.'' Since the USPTO does not strictly require the
provision of an address when patent-related correspondence is submitted
via the Office electronic filing system, it is appropriate to exclude
such correspondence from the address marking requirements of Sec.
1.1(a). Applicants may continue to provide an address on correspondence
submitted via the Office electronic filing system consistent with Sec.
1.1(a), but it is not mandatory. The removal of references to specific
sub-paragraphs (a)(3)(i) and (a)(3)(ii) from the introductory text of
paragraph (a) is a technical correction in view of the remaining
language in this section.
Section 1.6: Section 1.6(a)(4) is proposed to be amended to remove
the reference to the physical location where correspondence must be
received, and to provide that the receipt date of patent correspondence
submitted using the Office electronic filing system is the date in
Eastern Time when the correspondence is received in the USPTO.
Specifically, the USPTO proposes to change the phrase ``Correspondence
submitted to the Office by way of the Office electronic filing system
will be accorded a receipt date, which is the date the correspondence
is received at the correspondence address for the Office set forth in
Sec. 1.1 when it was officially submitted'' to ``Correspondence
officially submitted to the Office by way of the Office electronic
filing system will be accorded a receipt date, which is the date in
Eastern Time when the correspondence is received in the Office.'' In
view of the relocation of the servers, it is appropriate to eliminate
the reference to the correspondence address set forth in Sec. 1.1 in
connection with the receipt date of correspondence being filed
electronically. Correspondence submitted via the Office electronic
filing system will be accorded a receipt date based on the local time
and date at the USPTO headquarters in Alexandria, Virginia, when the
correspondence is received in the USPTO. Specifically, the Office
electronic filing system will record the receipt date in Eastern Time
after the user officially submits the correspondence by clicking the
``SUBMIT'' button on the ``Confirm and Submit'' screen and the
correspondence is successfully received in the USPTO. Furthermore, the
phrase ``regardless of whether that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia'' is being added to
provide clarity in the rule. This is not a change in practice. See MPEP
502.05, subsection I.C.
It should be noted that the Legal Framework for the Patent
Electronic System does not permit certain patent correspondence to be
officially submitted via the Office electronic filing system. See MPEP
502.05, subsection I.B.2. Such correspondence will not be accorded a
date of receipt or considered officially filed in the USPTO when
submitted via the Office electronic filing system. For example, notices
of appeal to a court, district court complaints, or other complaints or
lawsuits involving the USPTO may not be filed via the Office electronic
filing system. See MPEP 1216 for instructions on how to properly serve
and/or file documents seeking judicial review of a decision by the
Patent Trial and Appeal Board.
Section 1.9: Section 1.9 is proposed to be amended to add a new
paragraph (o) to set forth a definition for Eastern Time. In
particular, Eastern Time is defined as meaning Eastern Standard Time or
Eastern Daylight Time in the United States, as appropriate.
Rulemaking Considerations
A. Administrative Procedure Act: The changes proposed in this
rulemaking involve rules of agency practice and procedure, and/or
interpretive rules. See Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals
are procedural where they do not change the substantive standard for
reviewing claims); Nat'l Org. of Veterans' Advocates v. Sec'y of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that
clarifies interpretation of a statute is interpretive).
Accordingly, prior notice and opportunity for public comment for
the changes proposed in this rulemaking are not required pursuant to 5
U.S.C. 553(b) or (c), or any other law. See Cooper Techs. Co. v. Dudas,
536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and
thus 35 U.S.C. 2(b)(2)(B), do not require notice and comment rulemaking
for ``interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice'' (quoting 5 U.S.C.
553(b)(A))). However, the USPTO has chosen to seek public comment
before implementing the rule to benefit from the public's input.
B. Regulatory Flexibility Act: Under the Regulatory Flexibility Act
(5 U.S.C. 601 et seq.), whenever an agency is required by 5 U.S.C. 553
(or any other law) to publish a notice of proposed rulemaking, the
agency must prepare and make available for public comment an Initial
Regulatory Flexibility Analysis, unless the agency certifies under 5
U.S.C. 605(b) that the proposed rule, if implemented, will not have a
significant economic impact on a substantial number of small entities.
5 U.S.C. 603, 605. For the reasons set forth herein, the Senior Counsel
for Regulatory and Legislative Affairs, Office of General Law, of the
USPTO has certified to the Chief Counsel for Advocacy of the Small
Business Administration that the changes proposed in this rule will not
have a significant economic impact on a substantial number of small
entities (see 5 U.S.C. 605(b)).
This rulemaking amends the rules of practice to provide that the
receipt date of correspondence officially submitted electronically by
way of the Office electronic filing system is the date in Eastern Time
when the Office received the correspondence. The USPTO is also
proposing to amend the patent rules of practice to make other
clarifying changes regarding the receipt of electronic submissions.
These changes are procedural in nature and would not result in a change
in the burden imposed on any patent applicant, including a small
entity.
For the reasons described above, the proposed changes will not have
a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The USPTO has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, the USPTO has, to the extent feasible and
applicable: (1) Made a reasoned determination that the benefits justify
the costs of the rule; (2) tailored the rule to impose the least burden
on society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the
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private sector, and the public as a whole, and provided online access
to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes.
E. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant the
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
F. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
G. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
H. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
I. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
J. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
K. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO
will submit a report containing the final rule and other required
information to the United States Senate, the United States House of
Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this rulemaking are not expected
to result in an annual effect on the economy of $100 million or more; a
major increase in costs or prices; or significant adverse effects on
competition, employment, investment, productivity, innovation, or the
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this
rulemaking is not expected to result in a ``major rule'' as defined in
5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of $100 million (as adjusted) or more in any one
year, or a Federal private sector mandate that will result in the
expenditure by the private sector of $100 million (as adjusted) or more
in any one year, and will not significantly or uniquely affect small
governments. Therefore, no actions are necessary under the provisions
of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
M. National Environmental Policy Act of 1969: This rulemaking will
not have any effect on the quality of the environment and is thus
categorically excluded from review under the National Environmental
Policy Act of 1969. See 42 U.S.C. 4321 et seq.
N. National Technology Transfer and Advancement Act of 1995: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because
this rulemaking does not contain provisions that involve the use of
technical standards.
O. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of
1995 requires that the USPTO consider the impact of paperwork and other
information collection burdens imposed on the public. This rulemaking
does not involve any new 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.).
Notwithstanding any other provision of law, no person is required
to respond to, nor shall a person be subject to a penalty for failure
to comply with, a collection of information subject to the requirements
of the Paperwork Reduction Act unless that collection of information
has a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Biologics, Courts, Freedom
of information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended
as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.1 is amended by revising the paragraph (a) introductory
text to read as follows:
Sec. 1.1 Addresses for non-trademark correspondence with the United
States Patent and Trademark Office.
(a) In general. Except for correspondence submitted via the Office
electronic filing system in accordance with Sec. 1.6(a)(4), all
correspondence intended for the United States Patent and Trademark
Office must be addressed to either ``Director of the United States
Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-
1450'' or to specific areas within the Office as provided in this
section. When appropriate, correspondence should also be marked for the
attention of a particular office or individual.
* * * * *
0
3. Section 1.6 is amended by revising paragraph (a)(4) to read as
follows:
Sec. 1.6 Receipt of Correspondence.
(a) * * *
(4) Correspondence may be submitted using the Office electronic
filing system only in accordance with the Office electronic filing
system requirements. Correspondence officially submitted to the Office
by way of the Office electronic filing system will be accorded a
receipt date, which is the date in Eastern Time when the correspondence
is received in the Office, regardless of whether that date is a
Saturday, Sunday, or Federal holiday within the District of Columbia.
* * * * *
Section 1.9 is amended by adding a new paragraph (o) to read as
follows:
Sec. 1.9 Definitions.
* * * * *
(o) Eastern Time as used in this chapter means Eastern Standard
Time or
[[Page 69198]]
Eastern Daylight Time in the United States, as appropriate.
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2021-26502 Filed 12-6-21; 8:45 am]
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