[Federal Register Volume 66, Number 53 (Monday, March 19, 2001)]
[Notices]
[Pages 15409-15411]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-6641]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. 010307056-1056-01]
RIN 0651-AB36


Request for Comments on the International Effort to Harmonize the 
Substantive Requirements of Patent Laws

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of request for public comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
seeking comments to obtain the views of the public on the international 
effort to harmonize substantive requirements of patent laws, and the 
subsequent changes to United States law and practice. Comments may be 
offered on any aspect of this effort.

DATES: Comments will be accepted on a continuous basis until April 30, 
2001. See discussion of ``Text'' in the Supplementary Information 
below.

ADDRESSES: Persons wishing to offer written comments should address 
those comments to the Director of the United States Patent and 
Trademark Office, Box 4, United States Patent and Trademark Office, 
Washington, DC 20231, marked to the attention of Mr. Jon P. Santamauro.
    Comments may also be submitted to Mr. Santamauro by facsimile 
transmission to (703) 305-8885 or by electronic mail through the 
internet at [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: Mr. Jon P. Santamauro by telephone at 
(703) 305-9300, by fax at (703) 305-8885 or by mail marked to his 
attention and addressed to Director of the United States Patent and 
Trademark Office, Box 4, Washington, DC 20231.

SUPPLEMENTARY INFORMATION:

1. Background

    The United States has been involved in an effort to harmonize the 
substantive patent laws in the different countries of the world. The 
Standing Committee on the Law of Patents (SCP), meeting under the 
auspices of the World Intellectual Property Organization (WIPO), is 
developing treaty articles, rules and practice guidelines that attempt 
to harmonize the different substantive requirements associated with 
obtaining patent protection throughout the world.

[[Page 15410]]

    Upon conclusion, these treaty articles, rules and practice 
guidelines will provide a truly harmonized system governing not only 
the substantive law of patents, but also the practice to implement that 
law. This will allow for uniform treatment of patent applications and 
patent grants and will reduce costs for patent owners in obtaining and 
preserving their rights for inventions in many countries of the world.
    The next SCP meeting will take place at WIPO in May 2001. It is 
likely that an additional meeting will be held in November 2001 and 
regular meetings will continue thereafter.
    The United States Patent and Trademark Office, leading the 
negotiations for the United States, is interested in obtaining 
comprehensive comments to assess support for the effort.

2. Issues for Public Comment

    Written comments may be offered on any aspect of the draft treaty 
articles, rules or practice guidelines or expected implementation in 
the United States. The purpose of this notice is to identify and 
briefly outline important issues that have arisen and are likely to 
arise during the meetings of the SCP. A brief summary of some of these 
issues is provided below. Any comments provided with regard to the 
particular items identified below should be numbered in correspondence 
with the numbering of these items as shown. Comments offered on other 
aspects should be provided under the heading ``Other Comments.''
    (1) As to priority of invention, the United States currently 
adheres to a first-to-invent system. The remainder of the world uses a 
first-to-file rule in determining the right to a patent. Please comment 
as to which standard is the ``best practice'' for a harmonized, global 
patent system. It is noted that while the current draft of the treaty 
does not address this issue explicitly, it is likely that it will be 
raised in future meetings.
    (2) As to what inventions may be considered patentable subject 
matter, the United States currently provides a test of whether the 
invention is within one of the statutory categories of 35 U.S.C. 101 
and within the ``useful arts'' as expressed in the United States 
Constitution. The ``useful arts'' test requires that the claimed 
invention have a practical application providing a ``useful, concrete 
and tangible result,'' see State Street Bank & Trust Co. v. Signature 
Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). In contrast, the 
patent laws of some countries require that the invention provide a 
``technical contribution'' in order to be eligible to be patented. The 
``technical contribution'' requirement is generally considered to be 
more restrictive in determining what inventions may be patented.
    (3) United States law currently provides for an enablement 
requirement, a written description requirement and a best mode 
requirement for patent disclosures. As to enablement, the standard of 
``undue experimentation'' is applied. Regarding written description, 
United States law requires that the description convey to one of 
ordinary skill in the art that the applicant had possession of the 
invention as of the filing date of the application. The best mode 
requirement under United States law contains both subjective and 
objective components, with a subjective inquiry related to concealment 
on the part of the applicant. Standards vary among different patent 
systems as to disclosure requirements. For example, most other 
developed countries do not include a best mode requirement, yet many 
developing countries include or support a best mode requirement that is 
portrayed by some as a mechanism to compel technology and know-how 
transfer. The standard for evaluating compliance with such a 
requirement is an objective one; but, it is objective from the 
perspective of the examining authority.
    (4) As to the contents of claims, some patent systems require the 
identification of ``technical fields'' to which the claimed invention 
relates. This apparently limits, to some degree, the categories of 
invention to which claims may be directed. There is no such requirement 
under current United States law.
    (5) With regard to the issue of multiple inventions contained in a 
single patent application, most of the world uses a ``unity of 
invention'' standard, which is also contained in the Patent Cooperation 
Treaty (PCT). For national applications, the United States currently 
uses a restriction practice based on independence and patentable 
distinctness between claimed inventions.
    (6) United States law currently provides a utility requirement for 
patentability in 35 U.S.C. 101. Utility of an invention must be 
specific, substantial and credible. Most other patent systems have a 
requirement for industrial applicability. Industrial applicability is 
generally considered to be a narrower standard than utility, as it 
requires that the invention be usable in any type of industry.
    (7) Current discussions in the SCP have indicated a willingness to 
implement a global priority date as to the prior art effective date of 
patent applications that are published or granted as patents. United 
States law now limits the prior art effective date of United States 
patents and United States patent applications to their effective filing 
date in the United States. See In re Hilmer, 359 F.2d 859 (CCPA 1966) 
and 35 U.S.C. 102(e). Further, United States law currently limits the 
prior art date as to foreign patent publications to their publication 
date, although international application publications are available as 
of their filing date, if published in English. See 35 U.S.C. 102(e).
    (8) United States practice allows patent applications to be 
considered prior art as to situations of both novelty and obviousness, 
provided the application is earlier filed and is published or granted 
as required by 35 U.S.C. 102(e). Some other patent systems apply this 
type of prior art only with respect to novelty, due to concerns of the 
effect of what may be considered ``secret'' prior art. Such a novelty-
only system, however, may also allow for the granting of multiple 
patents directed to obvious variations of inventions.
    (9) United States patent law provides a ``grace period''. 
Disclosures by the inventor during the ``grace period'' do not have a 
patent defeating effect. Some other systems have an ``absolute 
novelty'' requirement such that any disclosures, including those by an 
inventor himself, made prior to the date the application is filed, are 
considered prior art.
    (10) Recent discussions at the SCP have indicated a willingness on 
the part of many member states to eliminate any geographical 
restrictions that limit the definition of prior art. Currently, United 
States prior art requirements limit certain types of disclosures to 
acts within particular geographical limitations, such as the territory 
of the United States.
    (11) United States law provides for loss of right provisions, as 
contained in 35 U.S.C. 102(c) and 102(d), that discourage delays in 
filing in the United States. Further, 35 U.S.C. 102(b) bars the grant 
of a patent when the invention was ``in public use or on sale'' more 
than one year prior to filing in the United States. Secret commercial 
use by the inventor is covered by the bar in order to prevent the 
preservation of patent rights when there has been successful commercial 
exploitation of an invention by its inventor beyond one year before 
filing. Most other patent systems do not have such provisions.
    (12) Current United States novelty practice allows, in limited

[[Page 15411]]

circumstances, the use of multiple references for the anticipation of a 
claim under 35 U.S.C. 102. These circumstances include incorporation by 
reference, the explanation of the meaning of a term used in the primary 
reference or a showing that a characteristic not disclosed in the 
primary reference is inherent. Some other systems have stricter 
requirements for the use of additional references as to the 
determination of novelty.
    (13) United States practice in determining obviousness under 35 
U.S.C. 103 follows the practice set forth in Graham v. John Deere, 383 
US 1 (1966), and its progeny. Obviousness determinations vary 
throughout different patent systems. For example, some provide for a 
problem-solution approach, requiring the identification of a technical 
problem to be solved by the invention. There is no such requirement 
under United States law.
    (14) Current United States practice limits the filing of multiple 
dependent claims in 37 CFR 1.75(c) such that these claims must refer to 
the claims from which they depend only in the alternative. Further, a 
multiple dependent claim cannot depend from another multiple dependent 
claim. Some other patent offices allow for multiple dependent claims 
without these restrictions.
    (15) There has also been discussion within the SCP regarding the 
manner in which claims should be interpreted as to validity. It is not 
clear at this time whether both pre-grant and post-grant interpretation 
issues will be addressed. However, we are interested in comments with 
regard to any claim interpretation issues at this time as these issues 
may appear in future SCP meetings. For example, the United States 
generally subscribes to a peripheral claiming approach to 
interpretation in which the language of the claims dominates, although 
United States law provides that when an element in a claim is expressed 
as a means or step for performing a function, the claim will be 
construed to cover the corresponding structure, material or acts 
described in the specification and equivalents thereof, see 35 U.S.C. 
112, paragraph 6. Other systems take a different, centrally focused 
view of the claimed invention that allows, in certain circumstances, 
for broader interpretation of the scope of the claimed invention.
    (16) With further regard to claim interpretation, the United States 
currently applies the ``doctrine of equivalents'' when appropriate in 
interpreting claims in post-grant infringement cases. The ``doctrine of 
equivalents'' has continued to evolve in the United States, especially 
in view of the recently decided case of Festo Corp. v. Shoketsu Kinzoku 
Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000). Furthermore, the 
European Patent Convention (EPC) was recently amended to provide a more 
explicit basis for ``doctrine of equivalents'' determinations in the 
text of newly added Article 2 of the Protocol on the Interpretation of 
Article 69 EPC. This doctrine has also been recognized in litigation in 
Japan. However, some systems do not provide for such equivalents.
    (17) United States practice now requires that a patent be applied 
for in the name or names of the inventor or inventors. However, some 
systems allow for direct filing by assignees. Although the draft treaty 
text is currently silent on this issue, it may be raised at future 
meetings.

3. Text of the Draft Treaty, Rules and Practice Guidelines

    There are preliminary drafts of both the treaty articles and 
regulations posted at the WIPO web site for the Standing Committee on 
the Law of Patents at http://scp.wipo.int. The proposed treaty articles 
currently contain two ``styles'' for the text of each article, provided 
as Alternatives A and B. Alternative A represents the ``old style'' 
type of language used by the International Bureau at WIPO for many 
years in previous discussions on the topic of harmonization. 
Alternative B is a ``new style'' that represents a departure from the 
``old style''. The ``new style'' is simpler and appears to present the 
issues regarding patent applications and examination in a more logical, 
internally consistent approach. Comments on the style of text, as well 
as the content, are solicited.
    WIPO has expressed an intent to publish multiple drafts of these 
documents prior to the May 2001 meeting. The USPTO plans to comment on 
each draft as it is made available, taking into account the expressed 
views of the public. To that end, the USPTO encourages the submission 
of comments from the public on each draft as soon as possible after it 
is posted on the SCP web site mentioned above. To facilitate final 
preparations for the May 2001 meeting, the USPTO requests that all 
comments be submitted no later than April 30, 2001.
    Requests for paper copies of the above texts may be made in writing 
to Mr. Jon P. Santamauro at the above address or by telephone at (703) 
305-9300.

    Dated: March 12, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 01-6641 Filed 3-16-01; 8:45 am]
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