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 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 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, D.C. 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, D.C. 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 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 of 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 filing 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 not 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 fights 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. Boland at the above address or by telephone at (703) 305-9300. October 15, 1997 BRUCE A. LEHMAN Assistant Secretary of Commerce and Commissioner of Patents and Trademarks