Department of Commerce
                          Patent and Trademark Office
                         [Docket #: 950829221-5221-01]
                                 RIN 0651-XX03

             Request for Comments Concerning the Right of Priority
                  (35 U.S.C. 119) and Electronic Exchange of
                              Priority Documents

Agency: Patent and Trademark Office, Commerce.
Action: Notice; Request for Comments.
Summary: The Patent and Trademark Office (PTO) requests written public
comment on various aspects of existing statutory and regulatory
requirements for obtaining the right of priority of an earlier filed
foreign application. The PTO also requests written public comment on
issues associated with the electronic exchange of priority documents
between the PTO, the European Patent Office (EPO), and the Japanese
Patent Office (JPO).
Dates: Written comments on the topics presented in the supplementary
section of this notice, or any related topics, will be accepted by the
PTO until October 13, 1995.
Addresses: Those interested in presenting written comments on the topics
presented in the supplementary information, or any related topics, may
mail their comments to the Assistant Commissioner for Patents,
Washington, D.C. 20231, marked to the attention of Box DAC. In addition,
comments may also be sent by facsimile transmission to (703) 308-6916,
with a confirmation copy mailed to the above address, or by electronic
mail messages over the Internet to priority@uspto.gov.
For Further Information Contact: Jeffrey V. Nase by telephone at (703)
305-9285, or by mail marked to the attention of Box DAC, addressed to
the Assistant Commissioner for Patents, Washington, D.C. 20231.

Supplementary Information

I. Issues for Public Comment

   The PTO is inviting written public comments on the administration and
relevance of the existing statutory and regulatory requirements for
obtaining the right of priority of an earlier filed foreign application
and/or issues associated with the electronic exchange of priority
documents between the Trilateral Offices (PTO, EPO, and JPO). Questions
included at the end of this section are intended to illustrate the types
of issues upon which the PTO is particularly interested in obtaining
public comment. This notice has been determined to be not significant
for the purposes of Executive Order 12866.

A. The Requirement for a Certified Copy of the Foreign Application
Unless Deemed Necessary.

   Currently, the Trilateral Offices are reconsidering the need that a
certified copy of the foreign application be submitted in all cases. 35
U.S.C. 119 requires that a certified copy of a foreign application be
submitted in all cases in order to obtain the right of priority.
Specifically, 35 U.S.C. 119(b) requires that the applicant file a claim
for the right of priority and a certified copy of the original foreign
application before the grant of the patent, or at any time during the
pendency of the application as required by the Commissioner, but not
earlier than six months after the filing of the application in this
country. The Commissioner may currently require a translation of the
papers filed if not in the English language.
   37 CFR 1.55, which implements 35 U.S.C. 119(b), requires that the
claim for priority and the certified copy of the foreign application
must be filed in all cases before the grant of the patent in order to be
entitled to the right of priority, and requires a claim for priority or
certified copy of the foreign application filed after payment of the
issue fee to be accompanied by a petition (and fee under 37 CFR 1.17(i))
requesting entry. However, the certified copy of the foreign application
may be required earlier during the pendency of the application in the
case of an interference, when necessary to overcome the date of a
reference relied upon by the examiner, or when specifically required by
the examiner. If the certified copy of the foreign application is not in
the English language, a translation will not be required except in the
case of an interference, when necessary to overcome the date of a
reference relied upon by the examiner, or when specifically required by
the examiner.
   Consequently, by statute and regulation, the certified copy of the
foreign application must be filed in all cases during the pendency of
the application even though it may be unnecessary to the examination of
the application. Unless a substantive review of the certified copy of
the foreign application, or a translation of such, is necessary to the
examination of the application, e.g., during an interference or when
necessary to overcome an intervening reference, the claim to priority
and the certified copy of the foreign application are merely reviewed to
determine whether the certified copy of the foreign application
corresponds in number, date, and country to the application identified
in the oath or declaration and that there are no obvious formal defects.
There is generally no examination of the certified copy of the foreign
application to determine whether the applicant is entitled to the
benefit of the foreign filing date on the basis of the disclosure of the
document. Thus, an unnecessary burden is placed upon applicants to
obtain certified copies of the priority documents from the appropriate
office and then submit them to the PTO in instances in which the PTO
does not substantively examine such documents, especially in view of the
fact that such documents do not qualify as prior art in the United
States. Further, an unnecessary burden is placed upon the PTO in the
processing of such documents.
   This right of priority originated in a multilateral treaty of 1883,
i.e., the Paris Convention for the Protection of Industrial Property
(Paris Convention), to which the United States adhered in 1887. The
Paris Convention, however, merely requires that a person who wishes to
take advantage of a previous filing make a declaration indicating the
date of such filing and the country in which it was filed. The Paris
Convention permits, but does not require, the countries of the Union to
require a certified copy of the foreign application of the application
as previously filed. Under the Paris Convention, the countries may also
require that a translation accompany the certified copy of the foreign
application. See Questions # 1, 2, and 3.

B. Electronic Exchange of Priority Documents.

   The PTO also requests written public comment on issues associated
with the electronic exchange of priority documents between the PTO, EPO,
and JPO. Currently, the Trilateral Offices are considering the
implementation of procedures that would allow for the direct exchange of
priority documents in electronic form between the office of first filing
and the offices of subsequent filings. See Question # 4. The PTO is
interested in how the public views such electronic exchanges of priority
documents, including the evidentiary effect of an electronic document
constituting the official PTO record of the priority document. See
Questions # 5 and 6.
   It is anticipated that it will be some time before the PTO will have
an electronic data base containing the content of applications-as-filed
in a word-recognizable format, e.g., applications captured by optical
character recognition (OCR). As such, any electronic exchange, at least
initially, would be in the form of digital images of the
applications-as-filed.
   It is contemplated that under a system authorizing the exchange of
priority documents, an applicant would have to request that an office
forward the priority document directly to another office in electronic
form, rather than having the certified copy go to the applicant, who in
turn would forward it to the other office. The PTO is also considering
providing a return receipt to indicate to the applicant that the request
to forward the priority document was received by the PTO and that the
PTO has forwarded the priority document to the office(s) designated by
the applicant.
   The cost to the PTO of processing requests and forwarding priority
documents to the designated office(s), and of generating and mailing
return receipts, would be recovered through service fees. See Questions
# 7 and 8.
   Nevertheless, such a direct exchange of priority documents for a
service fee should result in an overall reduction in costs and
administrative work for applicants, as well as cost reductions in the
conversion from paper to electronic form.

II. Questions

1. (a) Does the requirement that a certified copy of the foreign
application be submitted in all cases before the grant of a patent in
order to be entitled to the right of priority serve any useful purpose?
If yes, please provide those useful purposes.
   (b) Is your answer affected by the fact that such documents may
qualify as novelty defeating prior art in other countries?

2. (a) Notwithstanding the existing requirements, when should an
applicant be required to submit a certified copy of the foreign
application?
   (b) Would you continue to submit a certified copy of the foreign
application even if not specifically required?
   (c) Should any action taken by the U.S. Government be contingent on
action in the other Trilateral countries?

3. When the foreign application is not in the English language and an
English translation is deemed necessary, should both a certified copy of
the foreign application and an English language translation accompanied
by a verified statement that the translation is an accurate translation
of the certified copy of the foreign application be required, or should
only an English language translation of the foreign application
accompanied by a verified statement that the translation is accurate be
required?

4. What significant problems, either legal or technical, would need to
be solved to permit the offices of subsequent filing to receive the
priority documents directly from the office of first filing rather than
from the applicant?

5. Should the PTO, EPO, and JPO electronically exchange priority
documents at the request of applicant? Would most applicants take
advantage of this service? What disadvantages, if any, are there in the
electronic transmission of priority documents among the PTO, EPO, and
JPO?

6. Will the filing of a priority document in electronic form by the
office of first filing, rather than in paper form by the applicant,
affect the legal admissibility of the priority document?

7. If there was a service fee for the direct exchange of priority
documents among the PTO, EPO, and JPO, which was higher than the current
fee charged for a certified copy of the application, would most
applicants still take advantage of this service? At what fee amount
would most applicants choose to request the direct exchange of priority
documents?

8. If providing a return receipt resulted in an increase in the service
fee for the direct exchange of priority documents among the PTO, EPO,
and JPO, would a return receipt be desirable? Against the background
that increasing the information provided on such a return receipt would
increase the cost of generating such return receipt, and thus increase
the service fee, what information should be included on the return
receipt?

September 8, 1995                                        BRUCE A. LEHMAN
                                     Assistant Secretary of Commerce and
                                  Commissioner of Patents and Trademarks