Patent and Trademark Office
                        [Docket No. 000302057-0057-01]

                   Request for Comments on Patent Law Treaty

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of request for public comments.

SUMMARY: A Diplomatic Conference for the adoption of the draft Patent
Law Treaty will be held at the World Intellectual Property Organization
in Geneva, Switzerland, from May 11 through June 2, 2000. The Patent and
Trademark Office is seeking comments to obtain views of the public on
this 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 April 21, 2000.

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 Lois E. Boland. Comments may also be submitted by facsimile
transmission to (703) 305-8885 or by electronic mail through the
Internet to 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: 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

   Since 1995, the United States has been involved in an effort, carried
out under the auspices of the World Intellectual Property Organization,
to reduce the formal requirements associated with patent applications
and patents in the different countries of the world. This effort has
involved five sessions of the Committee of Experts on the Patent Law
Treaty and three sessions of its successor, the Standing Committee on
the Law of Patents. The objective of the meetings has been to develop a
Basic Proposal, consisting of articles and regulations, which will
minimize the formal requirements associated with patent applications and
patents. Upon adoption, these articles and rules will simplify the
formal obligations and reduce associated costs for patent applicants and
owners of patents in obtaining and preserving their rights in inventions
in many countries of the world. The Diplomatic Conference to conclude
this effort will take place in Geneva, Switzerland, from May 11 through
June 2, 2000.
   The texts of the Basic Proposal, notes on the Basic Proposal and
other documents relating to the Diplomatic Conference are available via
WIPO's web site for the Standing Committee on the Law of Patents at
   The United States Patent and Trademark Office (USPTO), leading the
negotiations for the United States, is interested in assessing support
for the effort and in obtaining comprehensive comments on the
particulars of the Basic Proposal. Prior to the previous meetings of the
Standing Committee and its predecessor, the Committee of Experts, the
USPTO informally solicited and received comments on the then- current
drafts of the articles, rules and notes. Additionally, on October 22,
1997, before the fifth session of the Committee of Experts, the USPTO
formally solicited comments on the effort via a Federal Register notice.
62 FR 54836. In light of the upcoming conclusion of this effort, the
USPTO desires to ensure that the text of the Basic Proposal for the
Treaty is disseminated as widely as possible and that the opportunity to
provide comments is correspondingly comprehensive.
   Written comments may be offered on any aspect of the Basic Proposal,
notes or expected implementation in the United States or elsewhere.
Comments are also solicited on the expected benefits to patent
applicants and patentees throughout the world of the conclusion and
implementation of this Treaty. Comments are also welcome on the
following specific issues:

   The substantive and ``form or contents'' distinctions made in Articles
2 and 6, respectively, that serve to define the freedom of Contracting
Parties to impose requirements relating to patent applications and
   The filing date provision in Article 5 and the effect of the ``no
later than'' clause, included in brackets in the Basic Proposal, on the
ability of Contracting Parties to be more liberal both for basic filing
date issues in Article 5(1) and for missing part-type issues in Article
   The reference filing provision in Article 5(7);
   The evidentiary limitation imposed upon Contracting Parties in
Article 6(6);
   The exemptions from the ability of a Contracting Party to mandate
representation before the Office of that Contracting Party in Article
7(2) and Rule 7(1), with particular reference to the bracketed
   The application of Article 12 and related Regulations to pending
applications and to patents in force on the date the Treaty binds a
Contracting Party even where the failure to comply with a time limit
occurred prior to that date, as set forth in the bracketed language in
Article 21(1)(a); and
   The exceptions available to Contracting Parties for Article
11--Relief in Respect of Time Limits and Article 12--Reinstatement of
Rights found in Rule 12(5) and Rule 13(3), respectively.

2. Brief Summary of the Draft Treaty

   The Basic Proposal consists of a draft of the Patent Law Treaty
(PT/DC/3) and a draft of the Regulations under the Patent Law Treaty
(PT/DC/4). Bracketed text, other than for paragraph headings, is not
part of the Basic Proposal; it is included in the Basic Proposal for
convenience and as an indication of issues for which resolution is
expected at the Diplomatic Conference. Explanatory notes on the
provisions of the draft Treaty and Regulations are contained in document
PT/DC/5. While the notes are not part of the Basic Proposal, they will
be published by WIPO with the text of the Treaty upon adoption of the
Treaty. The text of the Basic Proposal includes 26 articles and 21
rules. A brief summary of selected articles and 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 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.
   Article 2--General Principles--Paragraphs (1) and (2) of this article
are included for the avoidance of doubt. With regard to paragraph (1),
it should be noted that the flexibility of a Contracting Party is
limited in the context of Article 5, the filing date provision.
Paragraph (2) is important to emphasize that the Treaty and regulations
cannot be construed to limit the freedom of Contracting Parties
concerning substantive law relating to patents. This latter issue also
arises in the context of Article 6 where the ``form or contents''
requirements of the Patent Cooperation Treaty are, except as otherwise
provided in the Treaty and regulations, incorporated as the maximum
formal or non-substantive, requirements to which a Contracting Party may
require compliance.
   Article 3--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 encompassed by its terms. As mentioned
above, the issue of the application of the Treaty to existing
applications and patents, covered in Article 21, should also be noted,
especially concerning the bracketed provision in Article 21(1)(b).
   Article 4--National Security--This article preserves the right of
Contracting Parties to apply measures deemed necessary for the
preservation of national security. A similar provision appears in PCT
Article 27(8).
   Article 5--Filing Date--This article is viewed by the United States
as one of the more important features of the Basic Proposal. It mandates
that a Contracting Party must provide a filing date for an application
as of the date on which its Office has received the following elements:
   (i) An indication that submitted elements are intended to be an
   (ii) Indications allowing the identity of the applicant to be
established or allowing the applicant to be contacted; and
   (iii) 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,
for filing date purposes, 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 United States has also supported the
retention of the bracketed phrase ``no later than'' throughout this
article as it will provide Offices needed flexibility on filing date and
missing part issues.
   Article 6--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) in respect of
international applications or those requirements relating to form or
contents, compliance with which may be required once national processing
has begun. In essence, this article states that, except as otherwise
provided, 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 form or contents requirements on that
national application. Of course, as Article 2(1) makes clear,
Contracting Parties would be free to impose requirements that are more
favorable, from an applicant's perspective, than this Treaty or the PCT.
Of note, 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.
Nevertheless, Article 22(1) would permit the United States to take a
reservation on this issue.
   Article 7--Representation--This article addresses requirements
regarding representation, mandatory representation and appointment of
representatives. Importantly, Article 7(2) provides that Contracting
Parties may not mandate representation for filing date purposes, for the
payment of maintenance fees or notifications relating thereto. Certain
bracketed provisions are also included that would have the effect, if
adopted, of expanding the exceptions to mandatory representation,
including: any procedure referred to in the filing date provision
(Article 5), the payment of fees, the filing of translations and any
other procedure as prescribed in the regulations. The United States has
consistently supported maximizing the exceptions in this article and
Rule 7(1).
   Article 8--Communications; Addresses--This article provides the basis
upon which Contracting Parties may impose requirements relating to the
form, format and means of filing of communications. Note that paragraph
(1)(d) mandates that Contracting Parties must, even if they eventually
and exclusively adopt electronic filing, accept the filing of
communications on paper for the purpose of complying with a time limit.
This article also addresses signature issues in paragraph (4). Note
Rules 8 through 11 for details regarding these issues.
   Article 9--Notifications--This article allocates burdens relating to
the sufficiency of notification and the provision of contact information
among Contracting Parties and prospective recipients of notifications.
   Article 10--Validity of Patent; Revocation--This article, in
paragraph (1), 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 6. In paragraph (2), the
obligation to provide at least one opportunity to make observations on
intended revocation or invalidation is mandated.
   Article 11--Relief in Respect of Time Limits--This article, with Rule
12, requires that the Offices of all Contracting Parties must provide
either extensions of time limits (similar to practices in the USPTO
under 37 CFR 1.136) or continued processing (similar to practices
provided for in the context of the European Patent Convention) for time
limits fixed by the Office. This article and the associated rule do not
necessarily apply to time limits that are not fixed by the Office, in
particular, time limits set by national law. The possible exceptions to
the requirements of this article that are set forth in Rule 12(5) should
be noted.
   Article 12--Re-instatement of Rights After a Finding of Due Care or
Unintentionality by the Office--This article, with Rule 13, requires
that all Contracting Parties must provide for the re-instatement of
rights where an applicant or owner has failed to comply with a time
limit and that failure has the direct consequence of causing a loss of
rights with respect to an application or patent. In the United States,
the practice that is embraced by this article is found in our revival
procedures under 37 CFR 1.137. The possible exceptions to the
requirements of this article that are set forth in Rule 13(3) should be
   Article 13--Correction or Addition of Priority Claim; Restoration of
Priority Right--Paragraph (1) provides for the correction or addition of
a priority claim to an earlier application where a subsequent
application is timely filed. Paragraph (2) provides for the restoration
of the priority right where a subsequent application is filed after the
expiration of the priority period. The United States currently permits
correction and late claiming of priority and supports the concept of
accepting the delayed filing of a subsequent application. The acceptance
of delayed filing of a subsequent application would require an amendment
to section 119 of title 35, United States Code.
   Article 14--Regulations--This article provides a basis for all
matters which the Treaty expressly provides as being ``prescribed in the
Regulations,'' for details useful in the implementation of the Treaty
and for administrative requirements, matters or procedures. The article
also provides a basis for the rules relating to recordation of change in
name or address, recordation of change in applicant or owner,
recordation of a licensing agreement or security interest and correction
of a mistake. There are no longer article provisions for these matters
as the level of detail contained in the former articles was considered
more appropriate for the rules. This article also provides a basis for
certain administrative matters relating to the amendment of the rules,
requirement of unanimity and resolution of conflicts between the Treaty
and the regulations.
   Articles 15 through 26, and associated Rules--These articles are
considered the Administrative and Final provisions of the Treaty and
are, for the most part, self-explanatory. Many of the provisions are
modeled after those employed in other recently adopted treaties such as
the Geneva Act of the Hague Agreement, the Trademark Law Treaty, the
WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.
Article 21 should be noted, including the bracketed provision in
paragraph (1)(b), as it relates to the application of the Treaty to
existing applications and patents. Rule 21 should be noted as it relates
to the requirement of unanimity for amending certain rules under Article

Dated: February 25, 2000.                                Q. TODD DICKINSON,
                                            Assistant Secretary of Commerce
                                                           and Commissioner
                                                 of Patents and Trademarks.