[Federal Register: October 22, 1997 (Volume 62, Number 204)]
[Notices]
[Page 54836-54838]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr22oc97-40]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
Request for Comments on Patent Formalities Treaty
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of request for public comments.
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SUMMARY: The Patent and Trademark Office is seeking comments to obtain
views of the public on the international effort to simplify the formal
requirements associated with patent applications and patents and the
consequent changes to United States law and practice. Comments may be
offered on any aspect of this effort.
DATES: All comments are due by December 1, 1997.
ADDRESSES: Persons wishing to offer written comments should address
those comments to the Commissioner of Patents and Trademarks, Box 4,
Patent and Trademark Office, Washington, DC 20231, marked to the
attention of Mrs. Lois E. Boland.
Comments may also be submitted by facsimile transmission to (703)
305-8885 or by electronic mail through the Internet to
plt.comments@uspto.gov. All comments will be maintained for public
inspection in Room 902 of Crystal Park II, at 2121 Crystal Drive,
Arlington, Virginia.
FOR FURTHER INFORMATION CONTACT:
Mrs. Lois E. Boland by telephone at (703) 305-9300, by fax at (703)
305-8885 or by mail marked to her attention and addressed to
Commissioner of Patents and Trademarks, Box 4, Washington, DC 20231.
SUPPLEMENTARY INFORMATION:
1. Background
The United States has been involved in an effort to reduce the
formal requirements associated with patent applications and patents in
the different countries of the world. A committee of experts, meeting
under the auspices of the World Intellectual Property Organization
(WIPO), continues to develop treaty articles and rules which attempt to
minimize the formal requirements associated with patent applications
and patents. Upon conclusion, these treaty articles and rules will
simplify the formal obligations and reduce the associated costs for
patent applicants and owners of patents in obtaining and preserving
their rights for inventions in many countries of the world. The next
(5th) committee of experts meeting will take place at WIPO in December
of 1997. It is likely that two additional such meetings will take place
in 1998. The issue of when a Diplomatic Conference will be convened to
conclude these negotiations will be discussed in a March 1998 meeting
at WIPO. WIPO has suggested that a 1999 Diplomatic Conference may be
possible.
The United States Patent and Trademark Office (USPTO), leading the
negotiations for the United States, is interested in obtaining
comprehensive comments to assess continued support for the effort.
Prior to each of the previous meetings of the committee of experts, the
USPTO informally solicited and received comments on the then-current
drafts of the treaty articles, rules and notes. In light of the
impending conclusion of this effort, the USPTO desires to ensure that
the text of the treaty is disseminated as widely as possible and the
opportunity to provide comments is correspondingly comprehensive.
Written comments may be offered on any aspect of the draft treaty
articles, rules or notes or expected implementation in the United
States. Comments are also welcome on the following issues:
--The formalities/substantive distinction, discussed, specifically,
with respect to Article 5, below;
--The subject matter appropriate for treaty articles versus that which
should be relegated to rules; and
--Whether this effort should be concluded by a separate treaty or as
[[Page 54837]]
a protocol to the Patent Cooperation Treaty.
2. Brief Summary of the Draft Treaty
The current text of the draft treaty includes 16 articles, 17 rules
and associated notes. A brief summary of selected articles and, where
significant, associated rules follows. To the extent that a given
article is not summarized, it is considered to be self-explanatory.
Insofar as this effort is focused upon and limited to formal matters
associated with patent applications and patents, the USPTO expects
that, upon implementation, changes to our patent law would be minimal.
However, to the extent the need for any such change has been identified
for a given draft article or rule, it is noted below. This discussion
is intended, only, to highlight various articles and rules; it is not
intended as a comprehensive treatment of the draft texts. The draft
texts, identified in Part 3, below, should be consulted for a complete
understanding of the effort that is under way.
Article 1--Abbreviated Expressions--This article provides
definitions for terms used throughout the text of the draft articles
and rules. For the most part, this article is self-explanatory. The
USPTO has supported a broadening of the definition for the term
``owner'' to include owners of both applications and patents.
Article 2--Applications and Patents to Which the Treaty Applies--
This article defines the scope of the treaty by virtue of the types of
applications and patents that are intended to be encompassed by its
terms.
Article 3--National Security--This article preserves the right of
Contracting Parties to apply measures deemed necessary for the
preservation of national security.
Article 4--Filing Date--This article is viewed by the USPTO as one
of the more important features of this effort. It mandates that a
Contracting Party must provide a filing date for an application as the
date that the following elements are filed with its Office:
(i) An indication that submitted elements are intended to be an
application;
(ii) Indications allowing the identity of the applicant or person
submitting the application to be established or contacted;
(iii) A description; and
(iv) If the description is not in an accepted language, an
indication that the application contains a description.
This filing date requirement is fairly minimal and would greatly
simplify the conditions imposed upon the grant of dates to patent
applications throughout the world. Note that this article would mandate
the acceptance, for filing date purposes, of patent applications in any
language, subject to the furnishing of later translations. The USPTO
has supported this article, with the knowledge that our claim
requirement in section 111(a) of title 35, United States Code, would
have to be deleted. Note that such a requirement is not included for
provisional applications filed under section 111(b) of title 35, United
States Code. The remainder of the article and Rule 2 provide additional
details concerning the grant of filing dates.
Article 5--Application--This article is another of the more
important features of this effort. It mandates that no Contracting
Party may impose any requirement relating to the form or contents of an
application which is different from or additional to any requirement
applicable under the Patent Cooperation Treaty (PCT) to an
international application. In essence, this article states that if an
applicant submits an application to a national office that complies
with the requirements of the PCT, that national office can impose no
different or additional requirements on that national application. Of
course, Contracting Parties would be free to impose requirements that
are more liberal, from an applicant's perspective, than the PCT. Of
note, the International Bureau of WIPO has expressed the view that the
incorporation of the ``form or contents'' requirements from the PCT
into this article would mandate the application of the PCT unity of
invention standard for all national applications. The USPTO has taken
exception to this view insofar as unity of invention is considered to
be a substantive matter that is outside the scope of this effort. This
article also provides that the Regulations shall include requirements
regarding the filing of applications in paper and electronic form.
Article 6--Validity of Patent; Revocation--This article mandates
that once a patent has been granted, it may be revoked or invalidated
on the ground of non-compliance with certain formal requirements
enunciated in Article 5.
Article 7--Representation; Address for Service--This article
addresses requirements regarding representation, address for service
and powers of attorney. Importantly, the article provides that
Contracting Parties may not mandate representation for, among other
things, the filing of a translation, the furnishing of drawings or the
payment of any fee.
Article 8--Signature; Article 9--Request for Recordal of Change in
Name and Address; Article 10--Request for Recordal of Change in
Ownership; Article 11--Request for Recordal of Licensing Agreement or
Security Interest; and Article 12--Request for Correction of a Mistake.
These provisions, and associated rules, are considered to be self-
explanatory. It has been the position of the USPTO that much of the
detail in these articles would be more appropriate for a rule insofar
as including such a level of detail in treaty articles may render the
result unnecessarily inflexible. (While this issue is highlighted here
with respect to these enumerated articles, it may apply to the level of
detail associated with other articles.)
Article 13--Extension of a Time Limit Fixed by the Office--This
article, with Rule 14, mandates that the Offices of all Contracting
Parties must provide for, at the least, a first extension for any time
limit set by the Office.
Article 14--Further Processing; Restoration of Rights--This article
mandates that all Contracting Parties must provide for the further
processing of applications and the restoration of rights related to
applications/patents where compliance with a requirement takes place
outside of a time limit originally established by an Office. The
article also provides for intervening rights under certain
circumstances.
Article 15--Addition and Restoration of Priority Claim--This
article provides for the late claiming of priority of an earlier
application where a subsequent application is timely filed and for the
delayed filing of the subsequent application. The United States
currently permits late claiming of priority and supports the concept of
accepting the delayed filing of the subsequent application. With regard
to accepting the delayed filing of a subsequent application, an
amendment to section 119 of title 35, United States Code, would be
warranted.
Article 16--Regulations--This provision provides the basis for the
draft rules that follow. As noted above, there are, currently, 17 draft
rules that accompany the text of the treaty.
3. Text of the Draft Treaty, Rules and Notes
The text of the current draft of the patent law treaty, with
associated rules and notes, is available via the USPTO's World Wide Web
site at http://www.uspto.gov via a link to WIPO's World Wide Web site.
The documents are PLT/CE/V/2 and PLT/CE/V/3.
Requests for paper copies of the text may be made in writing to
Mrs. Lois E.
[[Page 54838]]
Boland at the above address or by telephone at (703) 305-9300.
Dated: October 15, 1997.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 97-27973 Filed 10-21-97; 8:45 am]
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