[Federal Register Volume 60, Number 179 (Friday, September 15, 1995)]
[Notices]
[Pages 47933-47934]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-22858]



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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. 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.

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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 November 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 [email protected].

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 

[[Page 47934]]
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?

    Dated: September 8, 1995.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 95-22858 Filed 9-14-95; 8:45 am]
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