[Federal Register: October 22, 1997 (Volume 62, Number 204)]
[Page 54836-54838]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]



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 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.

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.


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 
    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 
    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 
    (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 
    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 
    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 
[FR Doc. 97-27973 Filed 10-21-97; 8:45 am]