[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 priority@uspto.gov.
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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