Disclaimer Practice in Patents and Patent Applications

Citation85 FR 86518
Record Number2020-27676
Published date30 December 2020
SectionProposed rules
CourtPatent And Trademark Office
86518
Federal Register / Vol. 85, No. 250 / Wednesday, December 30, 2020 / Proposed Rules
Issued on November 6, 2020.
Lance T. Gant,
Director, Compliance & Airworthiness
Division, Aircraft Certification Service.
[FR Doc. 2020–28823 Filed 12–29–20; 8:45 am]
BILLING CODE 4910–13–P
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO–P–2020–0015]
RIN 0651–AD46
Disclaimer Practice in Patents and
Patent Applications
AGENCY
: United States Patent and
Trademark Office, Department of
Commerce.
ACTION
: Notice of proposed rulemaking.
SUMMARY
: The United States Patent and
Trademark Office (USPTO) proposes to
amend the rules of practice to expand
when certain types of patent applicants
and patentees may, subject to other
conditions, obtain or enforce a second
patent for an invention that is similar
(i.e., patentably indistinct) to a first
patent. Ordinarily, in examination
before the USPTO, any application for a
second patent covering such similar
invention would be rejected. The
proposed rule change is limited to the
situation where owners of the first and
second patents or patent applications
are different but have an agreement to
conduct research together (i.e., a joint
research agreement). For this limited
situation, the proposed rule change
would increase the ability to file a
document, called a terminal disclaimer,
that ties the rights of a second patent to
the first patent. Specifically, a terminal
disclaimer causes the second patent to
limit its enforceable patent term to end
no later than the first patent’s term and
limits when the second patent can be
enforced. The proposed rule change
would expand when a terminal
disclaimer is permitted to be filed in the
joint research agreement situation by
eliminating the requirement that the
second patent or patent application be
filed later than the first patent or patent
application. The USPTO also proposes
to amend its rules of practice to
explicitly state existing practices in the
rules regarding when certain affidavits
and declarations, as well as terminal
disclaimers, may be filed.
DATES
: Comments must be received by
March 22, 2021 to ensure consideration.
ADDRESSES
: For reasons of government
efficiency, comments must be submitted
through the Federal eRulemaking Portal
at https://www.regulations.gov. To
submit comments via the portal, one
should enter docket number PTO–P–
2020–0015 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
®
portable document format or
Microsoft Word
®
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 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
:
Susy Tsang-Foster, Senior Legal
Advisor, Office of Patent Legal
Administration, Office of the Deputy
Commissioner for Patent Examination
Policy, by email at Susy.Tsang-Foster@
uspto.gov; or Robert Clarke, Editor,
Manual of Patent Examining Procedure,
Office of the Deputy Commissioner for
Patent Examination Policy, by email at
Robert.Clarke@uspto.gov.
SUPPLEMENTARY INFORMATION
: Patent
applications and patents are subject to
the doctrine of nonstatutory double
patenting to prevent both the unjust
timewise extension of the right to
exclude and multiple infringement suits
by different parties. These situations
may arise from the granting of multiple
patents with patentably indistinct
claims where the patents have a
common owner, applicant, or inventor
or where the patents are not commonly
owned but are subject to a joint research
agreement. Double patenting analysis is
not limited to situations in which the
reference patents or applications, whose
claims form the basis for the
nonstatutory double patenting rejection,
are prior art as defined in 35 U.S.C. 102.
The reference may have an effectively
filed date that is before, the same as, or
after the effective filing date of a
claimed invention in an application
under examination or patent under
reexamination (i.e., the subject patent
application or patent). Thus, the
reference need not be ‘‘prior art’’ to the
claimed invention in the subject
application or patent for its claims to be
relied upon in a nonstatutory double
patenting rejection. For more
information on the nonstatutory double
patenting doctrine, see section 804 of
the Manual of Patent Examining
Procedure (Ninth Edition, Revision
10.2019, June 2020).
I. Background: A. Joint Research
Agreements: The Cooperative Research
and Technology Enhancement Act of
2004 (CREATE Act), Public Law 108–
453, 118 Stat. 3596, was passed to
promote cooperative research between
universities, the public sector, and
private enterprises. The CREATE Act
amended 35 U.S.C. 103(c), effective on
December 10, 2004, to provide that
subject matter developed by another
person and a claimed invention shall be
treated as owned by the same person or
subject to an obligation of assignment to
the same person for purposes of
excluding prior art usable in
obviousness rejections if three
conditions are met: (1) The claimed
invention was made by or on behalf of
parties to a joint research agreement that
was in effect on or before the date the
claimed invention was made; (2) the
claimed invention was made as a result
of activities undertaken within the
scope of the joint research agreement;
and (3) the application for patent for the
claimed invention discloses or is
amended to disclose the names of the
parties to the joint research agreement.
The legislative history recognized that
the CREATE Act would result in two or
more patents being issued to patentably
indistinct inventions, and called upon
the nonstatutory double patenting
doctrine to protect the public from
multiple enforcement actions based on
patents issued due to the passage of the
CREATE Act. See H.R. Rep. No. 108–
425, at 6 (2003) (stating that a terminal
disclaimer is required ‘‘when double
patenting is determined to exist for two
or more claimed inventions’’ for any
application for which the applicant
takes advantage of the ‘‘safe harbor’’
provision in [pre-AIA] 35 U.S.C. 103(c)
as amended by the CREATE Act).
Consistent with the legislative history,
the nonstatutory double patenting
doctrine was expanded to include
rejections based on patents or patent
applications that were disqualified as
prior art under pre-AIA 35 U.S.C.
103(c).
A prior art exception, similar to the
prior art exclusion in the CREATE Act,
was enacted in 35 U.S.C. 102(b)(2)(C)
and 102(c) by the Leahy-Smith America
Invents Act, Public Law 112–29, 125
Stat. 284 (2011). Consistent with this
prior art exception, the nonstatutory
double patenting doctrine was further
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revised to include rejections based on
patents or patent applications that were
excepted as prior art under 35 U.S.C.
102(b)(2)(C) and 102(c).
B. Current Practice: A nonstatutory
double patenting rejection may be
obviated, in most circumstances, by
filing a terminal disclaimer. Under
current USPTO regulations, two types of
terminal disclaimers may be used to
obviate nonstatutory double patenting
rejections. The first type is filed
pursuant to 37 CFR 1.321(c) and must
include a provision that the subject
patent or any patent issuing from the
subject patent application shall be
enforceable only for and during the time
period that the subject patent or any
patent issuing from the subject patent
application is commonly owned with
the reference that is the basis of the
nonstatutory double patenting rejection.
The second type is filed pursuant to 37
CFR 1.321(d) and must include a
provision that the subject patent or any
patent issuing from the subject patent
application shall be enforceable only for
and during such period that the subject
patent or any patent issuing from the
subject patent application and the
reference are not separately enforced.
The second type obviates nonstatutory
double patenting based on a non-
commonly owned reference that is
disqualified or excepted as prior art as
a result of activities undertaken within
the scope of a joint research agreement.
Currently, 37 CFR 1.321(d) limits the
ability of parties to a joint research
agreement to file a terminal disclaimer
to overcome a nonstatutory double
patenting rejection to instances where
the reference application or patent had
previously been applied as prior art or
was available as prior art against the
subject application or patent and the
reference application publication or
patent had been excepted or
disqualified respectively as prior art
under 37 CFR 1.104(c)(4)(ii) or (c)(5)(ii).
See Changes To Implement the
Cooperative Research and Technology
Enhancement Act of 2004, 70 FR 54259,
54262 (Sept. 14, 2005). 37 CFR 1.321(d)
does not provide for the filing of such
a terminal disclaimer where the
reference is not prior art under 35 U.S.C.
102(a)(2) or pre-AIA 35 U.S.C. 102(e)
and therefore cannot be excepted or
disqualified as prior art as set forth in
37 CFR 1.104(c)(4)(ii) or (c)(5)(ii). For
example, a reference is not prior art
where the effective filing date of the
claimed invention in the subject
application or patent is the same as or
before the effectively filed date of the
reference. Because of this limitation, the
USPTO has granted a number of
petitions requesting a waiver of the
prior art requirement in 37 CFR
1.321(d). Another example where the
reference is not prior art under 35 U.S.C.
102(a)(2) or pre-AIA 35 U.S.C. 102(e) is
where the inventive entities are the
same for the reference and the subject
application or patent.
C. Recent Judicial Change: In 2014,
the U.S. Court of Appeals for the
Federal Circuit clarified for patents
subject to the 20-year patent term that
a first patent that expires before a
second patent to a common owner or
inventor may be used as a reference in
a nonstatutory double patenting
rejection, regardless of whether the first
patent is prior art to the second patent.
See Gilead Sciences, Inc. v. Natco
Pharma Ltd., 753 F.3d 1208 (Fed. Cir.
2014). Following Gilead, applicants that
received a nonstatutory double
patenting rejection based on an
application or a patent under a joint
research agreement that was not earlier
filed than the application under
examination have filed petitions under
37 CFR 1.183 seeking waiver of the
requirement in current 37 CFR 1.321(d)
that the reference in a terminal
disclaimer be prior art in order to file a
terminal disclaimer under 37 CFR
1.321(d). In the last two years, the
USPTO has received petitions under 37
CFR 1.183 to waive such requirement of
37 CFR 1.321(d) in 26 applications. In
22 of the 26 applications the petitions
have been granted. In four of the 26
applications, the petitions were
dismissed either because the terminal
disclaimer or the petition failed to
comply with the requirements of 37 CFR
1.321(d) or 37 CFR 1.183. Each of these
dismissals and the impact of the
proposed rule is discussed in more
detail below. The proposed rule would
not have the same impact on these four
applications because the facts for each
application are different. On the whole,
in view of the routine granting of
petitions to waive the prior art
requirement in the current regulations
over the last two years, the Office has
determined that this proposed rule
would be beneficial to avoid the
unnecessary costs and delays incurred
by users with the current petition
process.
In two applications the petitions were
dismissed because the offered terminal
disclaimers failed to comply with all of
the other requirements of 37 CFR
1.321(d). If these had been filed under
the proposed rule, there would be no
change as to the initial disapproval of
these terminal disclaimers as the other
requirements of 37 CFR 1.321(d) still
must be met. The only change in this
scenario under the proposed rules
would be that a petition would not have
been required—a proper terminal
disclaimer will be accepted without the
need for a petition. Moving forward in
these applications, a proper terminal
disclaimer would be accepted in any
renewed petition (or depending on the
timing, without a renewed petition if it
occurs under the proposed rules). In one
of the applications, for example, a
renewed petition has been filed and if
the revised terminal disclaimer is
determined to be proper, the renewed
petition will be granted. No action has
been taken in the other application to
rectify the errors in the terminal
disclaimer.
In the other two applications where
petitions were dismissed, the dismissals
were the result of petitioners’ failure to
set forth an extraordinary situation
within the meaning of 37 CFR 1.183 that
would warrant waiver of the prior art
requirement in 37 CFR 1.321(d). In both
applications, the petitions failed to state
the existence of any extraordinary
situation as required by the language of
37 CFR 1.183. Under the proposed rule,
should another applicant in a similar
situation file a terminal disclaimer that
complies with all of the requirements of
proposed 37 CFR 1.321(d), the
disclaimer would be accepted without
the need for a grantable petition under
37 CFR 1.183. Moving forward in these
applications, if a renewed petition
provides the proper showing, the
request to waive the prior art
requirement in the rule will be granted
and concurrently filed terminal
disclaimers that comply with all of the
other requirements in 37 CFR 1.321(d)
will be accepted. In one of the
applications, a renewed petition has
been filed.
II. Proposed Changes: A. Changes to
Current Practice: The USPTO proposes
to revise 37 CFR 1.321(d) to permit a
terminal disclaimer filed by a party to
a joint research agreement to obviate
nonstatutory double patenting even
where the patent application or patent
referenced in the terminal disclaimer is
not prior art under 35 U.S.C. 102 with
respect to the subject application or
patent in which the disclaimer is filed.
This change would accommodate the
two non-prior art circumstances
discussed above in which a reference
would not qualify as prior art under 35
U.S.C. 102(a)(2) or pre-AIA 35 U.S.C.
102(e). This change, permitting a party
to a joint research agreement to file a
terminal disclaimer even where the
reference is not prior art, is consistent
with the purpose of the CREATE Act as
stated in its legislative history. Note that
this change does not obviate the
requirement in pre-AIA 35 U.S.C. 103(c)
or in 35 U.S.C. 102(c) that the claimed
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invention of the application or patent in
which the terminal disclaimer is filed
was made as a result of activities
undertaken within the scope of the joint
research agreement.
The USPTO is further proposing to
revise 37 CFR 1.321 such that it will no
longer be applicable to an owner of a
sectional interest in a patent. A
sectional interest allows for the exercise
of the exclusive patent rights in a
specified part or portion of the United
States. See Potter v. Holland, 4 Blatchf.
206, 19 F. Cas.1154, 1159 (1858)
(discussing disclaimers by an owner of
a sectional interest in a patent). While
35 U.S.C. 253 permits a disclaimer by an
owner of a sectional interest, the
assignment of a sectional interest is
exceedingly rare; thus, to simplify the
rule, the USPTO is proposing that a
disclaimer by an owner of a sectional
interest not be encompassed by 37 CFR
1.321. The USPTO proposes to address
disclaimers by owners of a sectional
interest via a petition under 37 CFR
1.182. The petition must clearly explain
the extent of the disclaimant’s interest
in the patent and identify the complete
claim(s) or term of a patent being
disclaimed. This change will assist in
preventing avoidable costs and delays to
users due to the improper filing of
terminal disclaimers by a partial owner
of an application or patent as an alleged
sectional interest owner.
B. Changes Consistent with Current
Practice: (1) When a Disclaimer May Be
Filed: The USPTO proposes to revise 37
CFR 1.321 to explicitly provide that a
terminal disclaimer may be filed to
obviate a potential nonstatutory double
patenting rejection or concern. Such
disclaimer may be filed during the
pendency of the application or after
patent grant. The current practice of the
USPTO is to accept terminal disclaimers
that would overcome a potential
nonstatutory double patenting rejection.
Such preemptive terminal disclaimers
avoid delays in examination resulting
from the imposition of nonstatutory
double patenting rejections. By revising
the rule to be consistent with the
current practice of accepting terminal
disclaimers even when a nonstatutory
double patenting rejection has not been
made, the proposed change makes clear
that patent applicants may file such
disclaimers to avoid delays in
examination.
A motion authorizing filing of a
disclaimer must be granted before a
disclaimer may be filed in an
application or a patent involved in an
interference under part 41 or
administrative proceeding under part 42
before the Patent Trial and Appeal
Board (Board). Also, where a terminal
disclaimer is filed to overcome a
nonstatutory double patenting issue in a
reexamination proceeding, it should be
filed in the reexamination proceeding
and not in the patent file.
(2) Who May File a Disclaimer: Under
proposed 37 CFR 1.321, a disclaimer in
a patent may only be filed by the owner
or owner(s) of the whole interest in the
patent. Where more than one owner
exists, the disclaimer may be filed as
either a single document by all the
owners of the whole interest in the
patent or as several documents
considered together, wherein each
document sets forth the extent of
disclaimant’s ownership interest in the
patent and the total ownership interest
accounts for 100% of the ownership
interest. Similarly, where more than one
applicant exists, a disclaimer may be
filed as either a single document by all
the applicants or as several documents
considered together, wherein each
document sets forth the extent of the
disclaimant’s ownership interest in the
application and the total ownership
interest accounts for 100% of the
ownership interest. An assignee of
record of an application filed before
September 16, 2012, may execute a
terminal disclaimer. In applications
filed on or after September 16, 2012, an
assignee of record of an application that
is also the applicant of that application
may execute a terminal disclaimer. For
all applications and patents, regardless
of the filing date, a patent practitioner
of record may execute a terminal
disclaimer.
Consistent with 35 U.S.C. 253, the
USPTO proposes to refer to the party
making the disclaimer in 37 CFR 1.321
as the ‘‘disclaimant’’ rather than the
grantee, patentee, applicant, or assignee,
as currently prescribed. The use of the
common term to refer to the party
making the disclaimer avoids confusion
as to the proper party to file the paper
regardless of when the terminal
disclaimer was filed.
Consistent with the proposed change
to explicitly permit the preemptive
filing of a terminal disclaimer before a
nonstatutory double patenting rejection
is made, the USPTO is also proposing to
revise 37 CFR 1.130 in an analogous
manner. Specifically, in addition to the
current practice in which an affidavit or
declaration of attribution or prior public
disclosure under the AIA is not filed
until after rejection, the proposed
change will explicitly permit an
applicant or patent owner to file this
type of affidavit or declaration to
overcome a potential rejection of a claim
over the reference, as is the current
practice. If adopted, this proposed
change to 37 CFR 1.130 would aid in the
compact prosecution of applications
and reexamination proceedings by
encouraging applicants and patent
owners to preemptively file such an
affidavit or declaration as they may
already do under current practice.
III. Discussion of Specific Rules: The
following is a discussion of proposed
amendments to title 37 of the Code of
Federal Regulations, part 1:
The USPTO proposes to amend
§ 1.130 by deleting ‘‘When any claim of
an application or a patent under
reexamination is rejected’’ in paragraphs
(a) and (b). Paragraph (c) is proposed to
be revised to change the two instances
of ‘‘the rejection is based upon’’ to ‘‘the
disclosure sought to be disqualified.’’
The USPTO proposes to amend
§ 1.321 and to revise its title to limit its
applicability to disclaimers in a patent
or application by the owner of the
whole interest.
The USPTO proposes to amend
§ 1.321(a) by adding the heading
‘‘Disclaimer of Any Complete Claim or
Claims in a Patent’’ and moving the
provisions concerning the filing of a
terminal disclaimer in a patent to
§ 1.321(b)(1). Paragraph (a)(1) is
proposed to be revised to replace ‘‘an
attorney or agent of record’’ with ‘‘a
patent practitioner of record.’’ The
requirement that the disclaimer include
a provision that the disclaimer is
binding upon the disclaimant and its
successors and assigns has been moved
from § 1.321(a) to new proposed
§ 1.321(a)(5). The reference to a patentee
owning a sectional interest is also
proposed to be removed from paragraph
(a). Paragraph (a)(2), which currently
applies to both a disclaimer of a
complete claim or claims in a patent
and a disclaimer of a term in a patent,
is proposed to be revised to remove the
sentence ‘‘A disclaimer which is not a
disclaimer of a complete claim or
claims, or term will be refused
recordation.’’ The language ‘‘refused
recordation’’ in the current paragraph
(a)(2) will not be included in the
proposed § 1.321 because a disclaimer
may be included in the USPTO’s record
even if the regulatory requirements for
a disclaimer have not been met.
However, a disclaimer that does not
meet the regulatory requirements in
§ 1.321 is ineffective and is not recorded
as a disclaimer even if included in the
application file. Accordingly, proposed
paragraphs (a) (disclaimer of any
complete claim or claims in a patent),
(b)(1) (terminal disclaimer filed by a
patentee), (b)(2) (terminal disclaimer in
an application filed on or after
September 16, 2012), and (b)(3)
(terminal disclaimer in an application
filed before September 16, 2012) state
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that the disclaimer must meet the
requirements of proposed paragraphs
(a)(1)–(5), (b)(1)(i)–(v), (b)(2)(i)–(v), and
(b)(3)(i)–(v), respectively, to be effective.
In addition, paragraphs (a)–(d) are
proposed to be amended to state that
only compliant disclaimers are recorded
in the USPTO. Paragraph (a)(3) is
proposed to be revised to add that the
disclaimer must be made by the owner
of the whole interest in the patent and
to change ‘‘patentee’s ownership
interest’’ to ‘‘disclaimant’s ownership
interest.’’
Section 1.321(b) is proposed to be
revised to add the heading ‘‘Disclaimer
or Dedication to the Public of the Entire
Term or Any Terminal Part of the Term
of a Patent or Any Patent to Be Granted
on an Application.’’ The specific
requirements for filing a terminal
disclaimer in a patent are set forth in
proposed § 1.321(b)(1); in applications
filed on or after September 16, 2012, are
set forth in proposed § 1.321(b)(2); and
in applications filed before September
16, 2012, are set forth in proposed
§ 1.321(b)(3). This proposal eliminates
the need for the public to consult
§ 1.321(b) in effect on September 15,
2012, when filing terminal disclaimers
in an application filed before September
16, 2012.
Each proposed § 1.321(b)(1)–(3)
includes parallel requirements in
proposed subparagraphs (i)–(v) for filing
a terminal disclaimer.
Proposed § 1.321(b)(1)(i) provides that
a terminal disclaimer filed in a patent
must be signed by the patentee or a
patent practitioner of record. Similarly,
proposed § 1.321(b)(2)(i) provides that a
terminal disclaimer filed in an
application filed on or after September
16, 2012, must be signed by the
applicant or a patent practitioner of
record and further specifies that a
juristic entity who is the applicant may
sign the terminal disclaimer. Proposed
§ 1.321(b)(3)(i) provides that a terminal
disclaimer filed in an application filed
before September 16, 2012, must be
signed by the applicant where the
application has not been assigned, the
applicant and an assignee of record,
where each owns an undivided interest
in the application, the assignee of record
of the whole interest in the application,
or a patent practitioner of record.
Proposed § 1.321(b)(1)(ii) requires that
the terminal disclaimer identify the
patent and the term of the patent that is
being disclaimed and further specifies
that the terminal disclaimer must
disclaim the entire term or any terminal
part of the term of the patent. Similarly
proposed § 1.321(b)(2)(ii) and (b)(3)(ii)
require that the terminal disclaimer
identify the application and the term of
the patent to be granted that is being
disclaimed and further specify that the
terminal disclaimer must disclaim the
entire term or any terminal part of the
term of the patent to be granted.
Proposed § 1.321(b)(1)(iii) requires
that the terminal disclaimer state the
present extent of the disclaimant’s
ownership interest and that the terminal
disclaimer be made by the patentee
owning the whole interest in the patent.
Similarly, proposed § 1.321(b)(2)(iii)
and (b)(3)(iii) require that the terminal
disclaimer state the ownership interest
of the disclaimant in the application
and that the terminal disclaimer be
made by the applicant owning the
whole interest in the application.
Proposed § 1.321(b)(1)(iv), (b)(2)(iv),
and (b)(3)(iv) require that the terminal
disclaimer be accompanied by the fee
set forth in § 1.20(d).
Proposed § 1.321(b)(1)(v), (b)(2)(v),
and (b)(3)(v) require that the terminal
disclaimer include a provision that the
disclaimer is binding on the disclaimant
and its successors and assigns.
Proposed § 1.321(c) adds the heading
‘‘Terminal Disclaimer with Common
Ownership Enforcement Provision to
Obviate Nonstatutory Double Patenting’’
and generally parallels current
§ 1.321(c). Proposed §1.321(c) would
explicitly provide for filing of a terminal
disclaimer to obviate a potential
nonstatutory double patenting rejection
that has not yet been made. As is the
case today, when a terminal disclaimer
under proposed § 1.321(c) is filed to
overcome a nonstatutory double
patenting rejection in a reexamination
proceeding, it should be filed in the
reexamination proceeding and not in
the patent file.
Proposed § 1.321(c)(1) incorporates
the requirements of current § 1.321(c)(1)
and (c)(2) which set forth the formal
requirements and signature
requirements for terminal disclaimers.
Proposed § 1.321(c)(2) revises the
requirements of current § 1.321(c)(3) to
provide that a terminal disclaimer under
paragraph (c) must include a provision
that the patent or any patent granted on
the application for which the disclaimer
is filed shall be enforceable only for and
during such period that the patent or
any patent granted on the application
for which the disclaimer is filed is
commonly owned with the reference
patent or any patent granted on the
reference application whose claim(s)
formed or may form the basis for the
nonstatutory double patenting.
Proposed § 1.321(d) adds the heading
‘‘Terminal Disclaimer with a Joint
Research Agreement Enforcement
Provision to Obviate Nonstatutory
Double Patenting.’’ The CREATE Act
became effective on December 10, 2004,
and AIA 35 U.S.C. 102(c) continued the
intent of the CREATE Act. Therefore,
proposed § 1.321(d) states that a
terminal disclaimer filed under this
paragraph is only available for patents
granted on or after December 10, 2004,
for reexamination proceedings of
patents granted on or after December 10,
2004, and for applications pending on
or after December 10, 2004.
Proposed paragraph (d)(1) revises the
introductory text of § 1.321(d) to permit
the filing of a terminal disclaimer by a
party to a joint research agreement even
if the reference application or patent on
which the double patenting is based is
not prior art to the application or patent
in which the disclaimer is filed.
Proposed § 1.321(d)(1) does so by
removing the requirement that the
reference patent or application was
disqualified as prior art as set forth in
either § 1.104(c)(4)(ii) or (c)(5)(ii).
Specifically, proposed paragraph (d)(1)
states that, subject to the requirements
in proposed paragraph (d)(2), which
establishes the existence of a joint
research agreement, a terminal
disclaimer may be filed in a patent, in
a reexamination proceeding, or in a
patent application to obviate
nonstatutory double patenting or
potential nonstatutory double patenting
of a claimed invention based on a
reference patent or application where
the reference patent or application and
the claimed invention are not
commonly owned but are subject to a
joint research agreement as defined by
35 U.S.C. 102(c) in effect on March 16,
2013 or 35 U.S.C. 103(c)(2) in effect on
March 15, 2013. Proposed § 1.321(d)(1)
also explicitly provides for the filing of
a terminal disclaimer to obviate a
potential nonstatutory double patenting
rejection that has not yet been made. As
is the case today, when a terminal
disclaimer under proposed § 1.321(d)(1)
is filed to overcome a nonstatutory
double patenting rejection in a
reexamination proceeding, it should be
filed in the reexamination proceeding
and not in the patent file.
Proposed § 1.321(d)(1)(i) incorporates
the requirements of current § 1.321(d)(1)
and (d)(2) which set forth the formal
requirements and signature
requirements for terminal disclaimers.
Proposed § 1.321(d)(1)(ii) revises the
requirements of current § 1.321(d)(3) to
provide that a terminal disclaimer under
proposed paragraph (d)(1) must include
a provision waiving the right to
separately enforce the patent or any
patent granted on the application for
which the disclaimer is filed and the
reference patent or any patent granted
on the reference application whose
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claim(s) formed or may form the basis
for the nonstatutory double patenting,
and agreeing that the patent or any
patent granted on the application for
which the disclaimer is filed shall be
enforceable only for and during such
period that the patent or any patent
granted on the application for which the
disclaimer is filed and the reference
patent or any patent granted on the
reference application are not separately
enforced.
Proposed § 1.321(d)(2) sets forth the
requirements to establish the existence
of a joint research agreement in the
patent, in the reexamination proceeding,
or in the patent application, as
applicable, for which the terminal
disclaimer under proposed paragraph
(d)(1) is filed.
Proposed § 1.321(d)(2)(i) sets forth the
requirements for applications or patents
subject to 35 U.S.C. 102 in effect on
March 16, 2013, and parallels the
requirements of current § 1.104(c)(4)(ii).
Accordingly, if the requirements of
§ 1.104(c)(4)(ii) have already been met,
there is no need to take further action
to meet the requirements of proposed
§ 1.321(d)(2)(i).
Proposed § 1.321(d)(2)(ii) sets forth
the requirements for applications or
patents subject to 35 U.S.C. 102, in
effect prior to March 16, 2013, and
parallels the requirements of current
§ 1.104(c)(5)(ii). Accordingly, if the
requirements of § 1.104(c)(5)(ii) have
already been met, there is no need to
take further action to meet the
requirements of proposed
§ 1.321(d)(2)(ii).
Proposed § 1.321(e) provides that a
disclaimer may not be entered into the
official file of an application or a patent
involved in an interference under
subpart E of 37 CFR part 41 or any
proceeding under 37 CFR part 42 unless
a motion requesting to file the
disclaimer under §§ 41.121(a)(2),
41.121(a)(3), or 42.20 is granted by the
Board. If the disclaimer is inadvertently
entered without the granting of the
motion, the disclaimer will be
expunged. The requirement is
consistent with the current practice that
limits when a disclaimer may be filed in
a patent during certain proceedings
before the Board.
IV. Rulemaking Requirements A.
Administrative Procedure Act: The
changes proposed in this rulemaking
involve rules of agency procedure and
interpretation. See Perez v. Mortg.
Bankers Ass’n, 575 U.S. 92, 97 (2015)
(Interpretive rules ‘‘advise the public of
the agency’s construction of the statutes
and rules which it administers.’’
(citation and internal quotation marks
omitted)); Nat’l Org. of Veterans’
Advocates v. Sec’y of Veterans Affairs,
260 F.3d 1365, 1375 (Fed. Cir. 2001)
(Rule that clarifies interpretation of a
statute is interpretive.); Bachow
Commc’ns Inc. v. FCC, 237 F.3d 683,
690 (D.C. Cir. 2001) (Rules governing an
application process are procedural
under the Administrative Procedure
Act.); Inova Alexandria Hosp. v.
Shalala, 244 F.3d 342, 350 (4th Cir.
2001) (Rules for handling appeals were
procedural where they did not change
the substantive standard for reviewing
claims.).
Accordingly, prior notice and
opportunity for public comment for the
changes in this proposed rulemaking are
not required pursuant to 5 U.S.C. 553(b)
or (c), or any other law. See Perez, 575
U.S. at 101 (Notice-and-comment
procedures are required neither when
an agency ‘‘issue[s] an initial
interpretive rule’’ nor ‘‘when it amends
or repeals that interpretive rule.’’);
Cooper Techs. Co. v. Dudas, 536 F.3d
1330, 1336–37 (Fed. Cir. 2008) (stating
that 5 U.S.C. 553, and thus 35 U.S.C.
2(b)(2)(B), do not require notice and
comment rulemaking for ‘‘interpretative
rules, general statements of policy, or
rules of agency organization, procedure,
or practice’’ (quoting 5 U.S.C.
553(b)(A))). However, 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 (RFA) (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.
Except in the extremely rare
circumstance of the filing of a
disclaimer by a sectional interest owner,
this rulemaking does not propose to
impose any additional requirements or
fees on applicants. This rulemaking
eliminates the need for a small number
of applicants each year to file a petition
under 37 CFR 1.183 and pay an
accompanying fee by authorizing the
filing of a disclaimer by a joint
researcher even if the reference patent
or patent application is not prior art.
This rulemaking does not propose to
substantively change when an applicant
may file a submission under 37 CFR
1.130 or a disclaimer under 37 CFR
1.321, although a petition under 37 CFR
1.183 accompanying the disclaimer may
no longer be required. The changes
proposed in this rulemaking will not
have a significant economic impact on
a substantial number of small entities
because applicants continue to be
entitled to file a disclaimer under 37
CFR 1.321 or submission under 37 CFR
1.130 if such filings are appropriate
today. For the foregoing reasons, the
changes proposed in this notice 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 under Executive Order 12866
(Sept. 30, 1993).
D. Executive Order 13563 (Improving
Regulation and Regulatory Review): The
USPTO has complied with Executive
Order 13563. 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
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 13771 (Reducing
Regulation and Controlling Regulatory
Costs): This proposed rule is not
expected to be an Executive Order
13771 (Jan. 30, 2017) regulatory action
because this proposed rule is not
significant under Executive Order 12866
(Sept. 30, 1993).
F. Executive Order 13132
(Federalism): This rulemaking does not
contain policies with federalism
implications sufficient to warrant
preparation of a Federalism Assessment
under Executive Order 13132 (Aug. 4,
1999).
G. 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)
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Federal Register / Vol. 85, No. 250 / Wednesday, December 30, 2020 / Proposed Rules
preempt tribal law. Therefore, a tribal
summary impact statement is not
required under Executive Order 13175
(Nov. 6, 2000).
H. 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).
I. 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).
J. 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).
K. 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).
L. 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
proposed 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).
M. Unfunded Mandates Reform Act of
1995: The changes proposed 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.
N. 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.
O. 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.
P. Paperwork Reduction Act of 1995:
The Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.) requires that the
USPTO consider the impact of
paperwork and other information
collection burdens imposed on the
public. The rules of practice pertaining
to terminal disclaimers have been
reviewed and approved by the Office of
Management and Budget (OMB) under
the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.) under OMB
control number 0651–0031.
This rulemaking does not impose any
additional requirements (including
information collection requirements) or
fees for patent applicants or patentees.
Therefore, the USPTO is not
resubmitting an information collection
package to OMB for its review and
approval because the changes in this
rulemaking do not affect the information
collection requirements associated with
the information collections approved
under OMB control number 0651–0031
or any other information collection.
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, Biologics, Courts, Freedom
of information, Inventions and patents,
Reporting and recordkeeping
requirements, Small businesses.
For the reasons stated in the
preamble, the USPTO proposes to
amend part 1 of title 37 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), unless
otherwise noted.
2. In § 1.130, revise paragraphs (a),
introductory text of paragraph (b), and
(c) to read as follows:
§ 1.130 Affidavit or declaration of
attribution or prior public disclosure under
the Leahy-Smith America Invents Act.
(a) Affidavit or declaration of
attribution. The applicant or patent
owner may submit an appropriate
affidavit or declaration to disqualify a
disclosure as prior art by establishing
that the disclosure was made by the
inventor or a joint inventor, or the
subject matter disclosed was obtained
directly or indirectly from the inventor
or a joint inventor.
(b) Affidavit or declaration of prior
public disclosure. The applicant or
patent owner may submit an
appropriate affidavit or declaration to
disqualify a disclosure as prior art by
establishing that the subject matter
disclosed had, before such disclosure
was made or before such subject matter
was effectively filed, been publicly
disclosed by the inventor or a joint
inventor or another who obtained the
subject matter disclosed directly or
indirectly from the inventor or a joint
inventor. An affidavit or declaration
under this paragraph must identify the
subject matter publicly disclosed and
provide the date such subject matter
was publicly disclosed by the inventor
or a joint inventor or another who
obtained the subject matter disclosed
directly or indirectly from the inventor
or a joint inventor.
* * * * *
(c) When this section is not available.
The provisions of this section are not
available if the disclosure sought to be
disqualified was made more than one
year before the effective filing date of
the claimed invention. The provisions
of this section may not be available if
the disclosure sought to be disqualified
is a U.S. patent or U.S. patent
application publication of a patented or
pending application naming another
inventor, the patent or pending
application claims an invention that is
the same or substantially the same as
the applicant’s or patent owner’s
claimed invention, and the affidavit or
declaration contends that an inventor
named in the U.S. patent or U.S. patent
application publication derived the
claimed invention from the inventor or
a joint inventor named in the
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application or patent, in which case an
applicant or a patent owner may file a
petition for a derivation proceeding
pursuant to §§ 42.401 through 42.407 of
this chapter.
* * * * *
3. Revise § 1.321 to read as follows:
§ 1.321 Disclaimers in a patent or an
application by owner of the whole interest.
(a) Disclaimer of any complete claim
or claims in a patent. A patentee
owning the whole interest in a patent
may disclaim any complete claim or
claims in a patent. A notice of the
disclaimer is published in the Official
Gazette and attached to the printed
copies of the specification. To be
effective and recorded under this
paragraph, the disclaimer must:
(1) Be signed by the patentee or a
patent practitioner of record;
(2) Identify the patent and the
complete claim or claims being
disclaimed;
(3) State the present extent of the
disclaimant’s ownership interest in the
patent. The disclaimer must be made by
the owner of the whole interest in the
patent;
(4) Be accompanied by the fee set
forth in § 1.20(d); and
(5) Include a provision that the
disclaimer is binding upon the
disclaimant and its successors and
assigns.
(b) Disclaimer or dedication to the
public of the entire term or any terminal
part of the term of a patent or any
patent to be granted on an application
(1) Terminal disclaimers or dedications
filed by a patentee. A patentee owning
the whole interest in a patent may
disclaim or dedicate to the public the
entire term, or any terminal part of the
term, of the patent granted. A notice of
the disclaimer is published in the
Official Gazette and attached to the
printed copies of the specification. To
be effective and recorded under this
paragraph, the terminal disclaimer
must:
(i) Be signed by the patentee or a
patent practitioner of record;
(ii) Identify the patent and the term of
the patent that is being disclaimed. The
terminal disclaimer must disclaim the
entire term or any terminal part of the
term of the patent;
(iii) State the present extent of the
disclaimant’s ownership interest in the
patent. The terminal disclaimer must be
made by the patentee owning the whole
interest in the patent;
(iv) Be accompanied by the fee set
forth in § 1.20(d); and
(v) Include a provision that the
disclaimer is binding upon the
disclaimant and its successors and
assigns.
(2) Terminal disclaimers or
dedications in applications filed under
35 U.S.C. 111(a), 363, or 385 on or after
September 16, 2012. An applicant
owning the whole interest in an
application may disclaim or dedicate to
the public the entire term, or any
terminal part of the term, of a patent to
be granted. To be effective and recorded
under this paragraph, the terminal
disclaimer must:
(i) Be signed by the applicant or a
patent practitioner of record. A juristic
entity who is the applicant may sign the
terminal disclaimer;
(ii) Identify the application and the
term of the patent to be granted that is
being disclaimed. The terminal
disclaimer must disclaim the entire term
or any terminal part of the term of the
patent to be granted;
(iii) State the present extent of the
disclaimant’s ownership interest in the
application. The terminal disclaimer
must be made by the applicant owning
the whole interest in the application;
(iv) Be accompanied by the fee set
forth in § 1.20(d); and
(v) Include a provision that the
terminal disclaimer is binding upon the
disclaimant and its successors or
assigns.
(3) Terminal disclaimers or
dedications in applications filed under
35 U.S.C. 111(a) or 363 before
September 16, 2012. An applicant and/
or assignee of record owning the whole
interest in an application may disclaim
or dedicate to the public the entire term,
or any terminal part of the term, of a
patent to be granted. To be effective and
recorded under this paragraph, the
terminal disclaimer must:
(i) Be signed:
(A) By the applicant where the
application has not been assigned;
(B) By the applicant and an assignee
of record where each owns an
undivided part interest in the
application;
(C) By the assignee of record of the
whole interest in the application; or
(D) By a patent practitioner of record;
(ii) Identify the application and the
term of the patent to be granted that is
being disclaimed. A terminal disclaimer
must disclaim the entire term or any
terminal part of the term of the patent
to be granted;
(iii) State the present extent of
disclaimant’s ownership interest in the
application. A terminal disclaimer must
be made by the owner of the whole
interest in the application;
(iv) Be accompanied by the fee set
forth in § 1.20(d); and
(v) Include a provision that the
disclaimer is binding upon the
disclaimant and its successors and
assigns.
(c) Terminal disclaimer with common
ownership enforcement provision to
obviate nonstatutory double patenting.
Except as provided for in paragraph (d)
of this section, a terminal disclaimer
may be filed in a patent, in a
reexamination proceeding, or in a patent
application to obviate nonstatutory
double patenting or potential
nonstatutory double patenting of a
claimed invention based on a reference
patent or application. To be effective
and recorded under this paragraph, the
terminal disclaimer must:
(1) Comply with the provisions of
paragraph (b)(1), (2), or (3) of this
section as applicable; and
(2) Include a provision that the patent
or any patent granted on the application
for which the disclaimer is filed shall be
enforceable only for and during such
period that the patent or any patent to
be granted on the application for which
the disclaimer is filed is commonly
owned with the reference patent or any
patent granted on the reference
application whose claim(s) formed or
may form the basis for the nonstatutory
double patenting.
(d) Terminal disclaimer with a joint
research agreement enforcement
provision to obviate nonstatutory double
patenting. This paragraph is only
applicable for patents granted on or after
December 10, 2004, reexamination
proceedings of patents granted on or
after December 10, 2004, and for
applications pending on or after
December 10, 2004.
(1) Subject to paragraph (d)(2) of this
section, a terminal disclaimer may be
filed in a patent, in a reexamination
proceeding, or in a patent application to
obviate nonstatutory double patenting
or potential nonstatutory double
patenting of a claimed invention based
on a reference patent or application
where the reference patent or
application and the claimed invention
are not commonly owned but are subject
to a joint research agreement as defined
by 35 U.S.C. 102(c) in effect on March
16, 2013 or 35 U.S.C. 103(c)(2) in effect
on March 15, 2013. To be effective and
recorded under this paragraph, the
terminal disclaimer must:
(i) Comply with the provisions of
paragraph (b)(1), (2), or (3) of this
section as appropriate; and
(ii) Include a provision waiving the
right to separately enforce the patent or
any patent granted on the application
for which the disclaimer is filed and the
reference patent or any patent granted
on the reference application whose
claim(s) formed or may form the basis
for the nonstatutory double patenting,
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and agreeing that the patent or any
patent granted on the application for
which the disclaimer is filed shall be
enforceable only for and during such
period that the patent or any patent
granted on the application for which the
terminal disclaimer is filed and the
reference patent or any patent granted
on the reference application are not
separately enforced.
(2) A terminal disclaimer may be filed
under paragraph (d)(1) of this section if
the requirements of paragraph (d)(2)(i)
or (ii), as applicable, have been met.
(i) For applications or patents subject
to 35 U.S.C. 102 in effect on March 16,
2013.
(A) The applicant or patent owner
provides, or has provided, a statement
to the effect that the subject matter of
the reference patent or application was
developed and the claimed invention
was made by or on behalf of one or more
parties to a joint research agreement,
within the meaning of 35 U.S.C. 100(h)
and § 1.9(e), that was in effect on or
before the effective filing date of the
claimed invention, and the claimed
invention was made as a result of
activities undertaken within the scope
of the joint research agreement; and
(B) The application for patent, or the
patent, for the claimed invention
discloses or is amended to disclose the
names of the parties to the joint research
agreement in accordance with § 1.71(g).
(ii) For applications or patents subject
to 35 U.S.C. 102 in effect prior to March
16, 2013.
(A) The applicant or patent owner
provides, or has provided, a statement
to the effect that the subject matter of
the reference patent or application and
the claimed invention were made by or
on behalf of the parties to a joint
research agreement, within the meaning
of 35 U.S.C. 100(h) and § 1.9(e), that was
in effect on or before the date the
claimed invention was made, and that
the claimed invention was made as a
result of activities undertaken within
the scope of the joint research
agreement; and
(B) The application for patent, or the
patent, for the claimed invention
discloses or is amended to disclose the
names of the parties to the joint research
agreement in accordance with § 1.71(g).
(e) Submission of a disclaimer during
an interference under subpart E of part
41 or a proceeding under part 42. A
disclaimer of a complete claim or
claims, or a disclaimer of the entire term
or terminal part of the term (terminal
disclaimer) under this section, of a
patent involved in an interference under
subpart E of part 41 of this chapter or
a proceeding under part 42 of this
chapter may not be entered into the
official file or considered, or if
inadvertently entered, will be expunged
unless a motion requesting to file the
disclaimer under §§ 41.121(a)(2),
41.121(a)(3), or 42.20 of this chapter has
been granted.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2020–27676 Filed 12–29–20; 8:45 am]
BILLING CODE 3510–16–P
ENVIRONMENTAL PROTECTION
AGENCY
40 CFR Part 300
[EPA–HQ–SFUND–1989–0008; FRL–10018–
19–OLEM]
Proposed Deletion From the National
Priorities List
AGENCY
: Environmental Protection
Agency (EPA).
ACTION
: Proposed rule; notice of intent.
SUMMARY
: The Environmental Protection
Agency (EPA) is issuing a Notice of
Intent to partially delete the North
Penn—Area 6 site from the National
Priorities List (NPL) and requests public
comments on this proposed action. The
NPL, promulgated pursuant to the
Comprehensive Environmental
Response, Compensation, and Liability
Act (CERCLA) of 1980, as amended, is
an appendix of the National Oil and
Hazardous Substances Pollution
Contingency Plan (NCP). The EPA and
the Commonwealth of Pennsylvania,
through its designated state agency,
have determined that all appropriate
response actions under CERCLA, other
than operations and maintenance,
monitoring and five-year reviews, where
applicable, have been completed.
However, this proposed deletion would
not preclude future actions under
Superfund.
DATES
: Comments regarding this
proposed listing must be submitted on
or before January 29, 2021.
ADDRESSES
: EPA has established a
docket for this action under the Docket
Identification number included in Table
1 in the
SUPPLEMENTARY INFORMATION
section of this document. Submit your
comments, identified by the appropriate
Docket ID number, by one of the
following methods:
https://www.regulations.gov.
Follow on-line instructions for
submitting comments. Once submitted,
comments cannot be edited or removed
from Regulations.gov. The EPA may
publish any comment received to its
public docket. Do not submit
electronically any information you
consider to be Confidential Business
Information (CBI) or other information
whose disclosure is restricted by statute.
Multimedia submissions (audio, video,
etc.) must be accompanied by a written
comment. The written comment is
considered the official comment and
should include discussion of all points
you wish to make. The EPA will
generally not consider comments or
comment contents located outside of the
primary submission (i.e., on the web,
cloud, or other file sharing system). For
additional submission methods, the full
EPA public comment policy,
information about CBI or multimedia
submissions, and general guidance on
making effective comments, please visit
http://www2.epa.gov/dockets/
commenting-epa-dockets.
Email: Table 2 in the
SUPPLEMENTARY INFORMATION
section of
this document provides an email
address to submit public comments for
the proposed deletion action.
Instructions: Direct your comments to
the Docket Identification number
included in Table 1 in the
SUPPLEMENTARY INFORMATION
section of
this document. EPA’s policy is that all
comments received will be included in
the public docket without change and
may be made available online at https://
www.regulations.gov, including any
personal information provided, unless
the comment includes information
claimed to be Confidential Business
Information (CBI) or other information
whose disclosure is restricted by statute.
Do not submit information that you
consider to be CBI or otherwise
protected through https://
www.regulations.gov or email. The
https://www.regulations.gov website is
an ‘‘anonymous access’’ system, which
means EPA will not know your identity
or contact information unless you
provide it in the body of your comment.
If you send an email comment directly
to EPA without going through https://
www.regulations.gov, your email
address will be automatically captured
and included as part of the comment
that is placed in the public docket and
made available on the internet. If you
submit an electronic comment, EPA
recommends that you include your
name and other contact information in
the body of your comment and with any
disk or CD–ROM you submit. If EPA
cannot read your comment due to
technical difficulties and cannot contact
you for clarification, EPA may not be
able to consider your comment.
Electronic files should avoid the use of
special characters, any form of
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