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Comments - Wegner

From: Wegner, Harold C. [hwegner@foleylaw.com]
Sent: Monday, April 03, 2000 5:00 PM
To: RCE
Subject: Testimony Pursuan to 65 Fed. Reg. 14864 (provisional
applications)

 
F O L E Y   &  L A R D N E R
    A  T  T  O  R  N  E  Y  S    A T    L  A  W
    WASHINGTON HARBOUR
    SUITE 500
    3000 K STREET N.W.
    WASHINGTON, D.C. 20007-5109
    TELEPHONE (202) 672-5300
    TELEX 904136    Harold C. Wegner   
    FOLEY LARD WASH direct dial(202) 672-5571
    fax (202) 945-6173
 
E-mail:  hwegner@foleylaw.com
    April 3, 2000

Hon. Q. Todd Dickinson
Under Secretary of Commerce for Intellectual Property 
and Director,United States Patent and Trademark Office 

via Internet to rce.comments@uspto.gov

Dear Under Secretary Dickinson:

    This letter is responsive to Changes to Application Examination and
Provisional Application Practice, 65 Federal Register 14864 (March 20,
2000), hereinafter described as the Interim Rules said to implement the
American Inventors Protection Act of 1999 [Title IV of the "Intellectual
Property and Communications Omnibus Reform Act of 1999", § 1000(a)(9),
Division B, of Public Law 106-113, 113 Stat. 1501 (1999)].  

    Before they would become effective on May 29, 2000, the Interim
Rules should be revised to (I) provide a default automatic abandonment of
provisional applications upon filing; and (II) eliminate any translation
requirement for a non-English provisional application where it is
concurrently abandoned and it is certified that the invention was made in a
foreign country.

    There is no public policy reason to support the mandatory
translation of provisional applications which is to discriminate against
foreign applicants who choose to use the U.S. system for a first filing
(where, under the Interim Rules, a translation is mandatory) instead of
their home country (where a later English translation is required in
America, only as necessary, and in any event in a small minority of cases.  

    The instant paper is submitted on the writer's own behalf; the
writer is a partner with the national law firm, Foley & Lardner, and is
Distinguished Scholar in Residence of the George Washington University Law
School.  However, he presents these comments on his own behalf; they do not
necessarily represent the views of any colleagues or clients, past, present
or future.

I.  DEFAULT ABANDONMENT OF PROVISIONAL APPLICATIONS

    There is no longer any need for maintaining the pendency of a
provisional application.  As you state in the Interim Rules, "Section
4801(c) of the 'American Inventors Protection Act of 1999' also amends 35
U.S.C. 119(e) to eliminate the requirement that a provisional application be
pending on the filing date of the nonprovisional application for the
nonprovisional application to claim the benefit of the provisional
application."

    The regulations should be amended to provide that unless there is a
specific request to the contrary, a provisional application shall be deemed
abandoned as of its filing date.  In the case of an invention that will be
filed abroad where Paris Convention priority is desired based upon the
provisional application there is only a detriment to having the provisional
remain pending, with no benefit.  Thus, Paris Convention priority is
established based upon a "regular national filing" that is defined under
Art. 4A.(3) as "any filing that is adequate to establish the date on which
the application was filed in the country concerned, whatever may be the
subsequent fate of the application."

    But, there is a detriment to having the provisional application
remain pending.  Consider the following situation:

        The applicant on January 15, 1999, files a patent
application as a U.S. "provisional".  The applicant is not ready to pay the
huge foreign filing costs that will come up, and on August 1, 1999, files an
identical application.  He then abandons the first provisional.  On August
1, 2000, he expects to file based upon the second application of August 1,
1999.

    From the standpoint of the Paris Convention, the pendency of the
first application beyond the filing date of the second provisional is fatal
to any priority right on August 1, 2000. Thus, Article 4.C(4) says that "[a]
subsequent application concerning the same subject as a previous first
application * * *, filed in the same country of the Union, shall be
considered as the first application, of which the filing date shall be the
starting point of the period of priority, if, at the time of filing the
subsequent application, the said previous application has been withdrawn,
abandoned, or refused * * *."

II.  TRANSLATIONS OF FOREIGN LANGUAGE-FILED PROVISIONALS

    A.  The Law and Existing Regulations

        1. Statutory Requirements for a Filing Date

    Under 37 CFR § 1.111(b)(4) unequivocally states that "[t]he filing
date of a provisional application shall be the date on which the
specification and any required drawing are received in the Patent and
Trademark Office." [emphasis added].  There is no discretion given to the
Commissioner/Director to withhold a filing date for the want of a
translation.

        2. Regulations Dictate A Priority Date for Any Language

    The regulations in existence today are consistent with the statute:
Nothing in 37 CFR § 1.78 in any way suggests that a translation of the
priority provisional application has any relevance to whether one may
establish a right of priority based upon the provisional application.

    Thus, there is nothing in the current regulations that deny a serial
number and filing date to a patent application of the "provisional" variety
merely because it is filed in a foreign language.  It is important for
Americans who wish to file abroad and rely on a provisional for their Paris
Convention rights that it be made clear that the filing date is always
granted when the rules - that say nothing about language - are made.  If the
deposit of an application is not automatically established, then how are the
priority rights to be established in foreign countries for Americans who
rely upon provisional applications?  Thus, under Paris Convention Art.
4A.(2), a provisional application is basis for priority if it is within the
scope of the definition of "[a]ny filing that is equivalent to a regular
national filing under the domestic legislation of any country of the Union *
* * shall be recognized as giving rise to the right of priority."  [emphasis
added].  In immediately following Art. 4A.(3), a definition of "regular
national filing" is provided for purposes of the Paris Convention:

        By a regular national filing is meant any filing that is
adequate to establish the date on which the application was filed in the
country concerned, whatever may be the subsequent fate of the application.

Thus, for purposes of priority in a foreign country, it is irrelevant for a
first U.S. (or other treaty) filing whether the provisional (or other
priority application) is pending or even immediately abandoned or withdrawn.


    The requirements to claim priority tied to a provisional application
are spelled out in 37 CFR § 1.78(a)(3):

        A nonprovisional application * * * may claim an invention
disclosed in one or more prior filed copending provisional applications. * *
* In order for a nonprovisional application to claim the benefit of one or
more prior filed copending provisional applications, each prior provisional
application must name as an inventor at least one inventor named in the
later filed nonprovisional application and disclose the named inventor's
invention claimed in at least one claim of the later filed nonprovisional
application in the manner provided by the first paragraph of 35 U.S.C. 112.
In addition, each prior provisional application must be: 

            (i) Complete as set forth in §1.51(c); or 
            (ii) Entitled to a filing date [under] § 1.53(c) and
include the basic filing fee set forth in § 1.16(k).  

    There is not one word in the regulations about a translation
anywhere in this cited regulation.  An application is "[c]omplete" if it
meets the definition of 37 CFR § 1.51(c) for a complete application.  There
is not one word about language in Rule 51(c), which instead merely states:

            A complete provisional application filed under § 1.53(c)
comprises: 
        (1) A cover sheet identifying: 
            (i) The application as a provisional application, 
            (ii) The name[(s)] of the inventor[(s)] * * *; 
            (iii) The residence of each named inventor, 
            (iv) The title of the invention, 
            (v) The name * * * of the attorney * * *,
            (vi) The docket number * * *,
            (vii) The correspondence address, and 
            (viii) The name of [any sponsoring] U.S. Government
agency * * *; 
        (2) A specification as prescribed by the first 
            paragraph of 35 U.S.C. 112, see §1.71; 
        (3) Drawings, when necessary, see § §1.81 to 1.85; and 
        (4) The prescribed filing fee, see §1.16.

The requirements under 37 CFR § 1.78(a)(3)(i), incorporating 37 CFR §
1.51(c), have nothing to do with any language issue.  Rule 53(c) says that:

        A complete provisional application filed under §1.53(c) comprises:

    (1) A cover sheet identifying: 
        (i) The application as a provisional application, 
        (ii) The name or names of the inventor or inventors * * *,
(iii) The residence of each named inventor, 
        (iv) The title of the invention, 
        (v) The name * * * of the attorney * * * (if applicable), 
        (vi) The docket number * * *, 
        (vii) The correspondence address, and 
        (viii) The name of [any sponsoring] U.S. 
            Government agency * * *; 
    (2) A specification * * *;
    (3) Drawings, when necessary, see §§ 1.81 to 1.85; and 
    (4) The prescribed filing fee, see § 1.16.

    Entitlement to a filing date is governed without respect to language
of the application; as pointed out in 37 CFR § 1.53(c):

        The filing date of a provisional application is the date on
which a specification as prescribed by the first paragraph of 35 U.S.C. 112,
and any drawing required by §1.81(a) are filed in the Patent and Trademark
Office. * * *
        (1) A provisional application must also include the cover sheet
* * *.
         * * * 
        (3) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an
earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any
other application. * * * 

    B.  Limitations on the Director's Rulemaking Authority

    It is well established that it is up to Congress to set public
policy and to define the rights and obligations of patent applicants.  It is
unconstitutional to simply delegate to the Commissioner the imposition of
arbitrary regulations.  For example, at one time many years ago, even though
the statute did not require working examples for chemical cases, 35 USC §
112, ¶ 1, the PTO regulations went beyond the statute to make such a
requirement.  Such an extra-statutory requirement was struck down as
unconstitutional in In re Gay, 309 F.2d 769, 135 USPQ 311 (CCPA 1962),
followed in In re Stephens, 529 F.2d 1343, 1345, 188 U.S.P.Q. 659 (CCPA
1976).

    C.  Public Policy Considerations
    
        1.  One Positive: Making the Text Available to the Public

    There is only one public policy factor that can be imagined that
favors the mandatory filing of a translation in a provisional application
file.  This would be to make the text of the application more user-friendly
for a monolingual American audience.  Yet, the provisional application is
never examined (unless it is later converted to a regular application).  The
only contact one has as a member of the public with a provisional
application is to see the original application which serves as the later
priority document.  Are file wrappers of the provisional to be studied?
Must one determine whether there was a requirement for a translation and a
timely submission?  Will such file histories be open to ready inspection?
Since the provisional application is only relevant as a priority document,
its translation has no relevance to the establishment of the date.

    The idea of foreign language priority documents, however, did not
start with the provisional application system that came into being only
within the past ten years.  For nearly 100 years the Paris Convention has
been the fundamental basis by which foreign nationals generally filing in
their native (and generally non-English) tongue have sought priority in this
country.
    
    If it was so important to have an English translation of a Paris
Convention priority document, then why over the many years has the U.S.
government refrained from ever requiring a translation, absent the special
circumstances of an intervening prior art reference or an interference?

        2.  Policy Against Translations

            a.  Avoiding Unnecessary PTO Paper Handling

    Filing thick English translations of priority documents will
proliferate unnecessary and unwanted paperwork.  Every filing in a foreign
language would get a formalities Office Action.  Within a stated period, a
Response would be filed, consisting essentially of the English translation
of the priority document.  Files would have to be maintained so that Office
Actions and Responses could be entered.  For what public policy purpose?
Rather, it would be far better to simply warehouse the provisional
applications.

            b.  Setting an Anti-Foreigner Example

    It has been heard within interested circles that, who cares?  Only
the foreigners are impacted!  They have to translate into our language!  

    This is a very short-sighted view, one that is bound to have very
bad reactions that in the end will be very anti-American.  True, the foreign
user of the provisional system will need to pay for an English translation.
Yet, it is likely that at some time there will in any event need to be an
English translation such as when a nonprovisional is filed.  And,
translations into English are standard, i.e., English is the international
language for most business transactions.  English is the best understood
second language in the world.

    So, what's so bad about a little discrimination against foreign
applicants?  Clearly, what's good for the goose is good for the gander.
Whereas we should be encouraging simplification, any anti-foreigner bias can
only serve to chill cooperation.  Imagine, for example, if every country of
the world requires, say, a translation of any argument made by a U.S.
company in any country of the world into each of a variety of local
languages.  If one accepts the premise that the American industries are the
major user of the patent laws of the world, any game of xenophobia hits
American innovation hardest of all.

            c.  Discouraging Use of the U.S. System

    The national offices in the United States and Japan and the regional
office in Munich are in a less than totally friendly competition to be "the"
patent granting authority, if not of the whole world, at least their region.
Europe has ambitiously moved to Japan's backdoor, Thailand, seeking to have
that country essentially adopt the European system and to rely upon the
European examination.  Europe has knocked on the patent office door in
Mexico City.

    What, then, is the United States doing to counter this push from
Munich?  We should be as user friendly and non-discriminatory as possible!  

    One of the great things about the provisional system without a
translation is that it is a relatively easy thing for any person in any
country to use our system.  Getting inventors to use the American system for
their first filing is to get the American foot in the door for the global
patent competition.  To discourage foreign usage of the American system is
tantamount to an admission that the United States has abdicated any
pretension of leadership in the patent world.

            d.  The Security Strawman

    A translation is required under the current system to maintain the
pendency of the provisional application.  Despite bar criticism, the rule
was implemented under the guise of national security:

        Provisional applications may be filed in a language other
than English as set forth in existing §1.52(d). However, an English
language translation is necessary for security screening purposes.
Therefore, the PTO will require the English language translation and payment
of the fee required in §1.52(d) in the provisional application. Failure to
timely submit the translation in response to a PTO requirement will result
in the abandonment of the provisional application. * * *

Changes To Implement 20-Year Patent Term and Provisional Applications,
Response to Comment 43, 60 Federal Register 20195, 20209 (1995) (emphasis
added).  

    Particularly if the applicant for a provisional application is
willing to accept the limitation that no foreign filing license will be
granted without a translation into English, then there is no need for a
security clearance.  (Virtually every non-English language provisional will
be filed based upon a foreign-made invention which is therefore not subject
to security clearance as a condition for foreign filing.)

     * * * 

    It is respectfully requested that the Director revise the Interim
Rules to reflect the changes in this paper.

                        Respectfully submitted



                        Harold C. Wegner    




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