[Federal Register Volume 65, Number 47 (Thursday, March 9, 2000)]
[Notices]
[Pages 12515-12517]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-5767]


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DEPARTMENT OF COMMERCE

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.

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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 [email protected]. 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.

SUPPLEMENTARY INFORMATION:

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

[[Page 12516]]

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 
http://www.wipo.int/scp.
    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 patents;
--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 
5(6);
--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 
provisions;
--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 
application;
    (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

[[Page 12517]]

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 
noted.
    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 14(3).

    Dated: February 25, 2000.
Q. Todd Dickinson,
Assistant Secretary of Commerce and Commissioner of Patents and 
Trademarks.
[FR Doc. 00-5767 Filed 3-8-00; 8:45 am]
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