Request for Comments on Patent Formality Treaty

(84)                        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

                                 (1204 OG 64)