---------------------------------------- FROM RESPONDENT 021: NAME: William T. Fry , III Professor COMPANY: University of Baltimore School of Law ADDR-1: 1420 North Charles Street CITY, STATE ZIP: Baltimore, Md. 21201 TELEPHONE: (410) 837-4553 FAX: (410) 837-4560 REPRESENT: self ---------------------------------------- QUESTION 01: Should the PTO require that all Official application related materials be delivered to a central location? Specifically, what problems would a requirement that all official application-related materials be delivered to a central location cause? ---------------------------------------- COMMENT ON QUESTION 01: No comments supplied ---------------------------------------- QUESTION 02: Should the PTO adopt a standard application format? If so, what portions of the application papers should the PTO require be submitted in a standard size and/or format, and what sanction (e.g., surcharge) should be established for the failure to comply with these requirements? ---------------------------------------- COMMENT ON QUESTION 02: No comments supplied ---------------------------------------- QUESTION 03: If the entire application is not published, what information concerning the application should be published in the Gazette of Patent Application Notices? ---------------------------------------- COMMENT ON QUESTION 03: No comments supplied ---------------------------------------- QUESTION 04: Should the patent applicant receive a copy of the published application -- either published notice and/or application content at time of publication? ---------------------------------------- COMMENT ON QUESTION 04: No comments supplied ---------------------------------------- QUESTION 05: Should the PTO permit an accelerated examination? If so, under what conditions? ---------------------------------------- COMMENT ON QUESTION 05: No comments supplied ---------------------------------------- QUESTION 06: Since the cost for publishing applications must be recovered from fees, how should the cost of publication be allocated among the various fees, including the possibility of charging a separate publication fee? ---------------------------------------- COMMENT ON QUESTION 06: No comments supplied ---------------------------------------- QUESTION 07: Should the PTO require an affirmative communication from a patent applicant indicating that the applicant does not wish the application to be published, or should failure to timely submit a publication fee be taken as instruction not to publish the application? That is, should an application be published unless the applicant affirmatively indicates that the application is not to be published, regardless of whether a publication fee has been submitted? What latitude should the PTO permit for late submission of a publication fee? ---------------------------------------- COMMENT ON QUESTION 07: No comments supplied ---------------------------------------- QUESTION 08: The delayed filing of either a claim for priority under 35 U.S.C. 119 or 120 may result in the delayed publication of the application. Should priority or benefit be lost if not made within a reasonable time after filing? What latitude should the PTO permit for later claiming of priority or benefit? ---------------------------------------- COMMENT ON QUESTION 08: No comments supplied ---------------------------------------- QUESTION 09: Once the patent has issued, should the paper document containing information similar to that published in the Gazette of Patent Application Notice, i.e., the Patent Application Notice, be removed from the search files, and should publication information be included on the issued patent? ---------------------------------------- COMMENT ON QUESTION 09: No comments supplied ---------------------------------------- QUESTION 10: After publication, should access to the content of the application file be limited to the originally filed application papers? If not, what degree of access should be permilted? Should access be limited to the content before publication, or should it extend to materials added after publication? ---------------------------------------- COMMENT ON QUESTION 10: No comments supplied ---------------------------------------- QUESTION 11: 11. After publication, should assignment records of a published application also be made accessible to the public? ---------------------------------------- COMMENT ON QUESTION 11: No comments supplied ---------------------------------------- QUESTION 12: After publication, should access include the deposit of biological materials as set forth in 37 CFR 1.802 et seq.? ---------------------------------------- COMMENT ON QUESTION 12: No comments supplied ---------------------------------------- QUESTION 13: What types of problems will be encountered if all amendments must be made by (a) substitute paragraphs and claims, (b) substitute pages, or (c) replacement of the entire application? ---------------------------------------- COMMENT ON QUESTION 13: No comments supplied ---------------------------------------- QUESTION 14: Should protest procedures be modified to permit the third party submission of prior art only prior to a specific period after publication of the application? What action should be taken with respect to untimely submissions by a third party? ---------------------------------------- COMMENT ON QUESTION 14: No comments supplied ---------------------------------------- GENERAL COMMENT: RECOMMENDATIONS 1. The Patent and Trademark Office (PTO) should not publish design patent applications as a part of the proposed 18 month publication Plan. 2. A decision to publish design patent applications should be made after conclusion of the Hague Agreement revision and U.S. consideration of adherence to the revised treaty. BACKGROUND The discussions over the last several years concerning patent law harmonization have been primarily directed to technology inventions. For example, the WIPO Diplomatic Conference proposal2 that has generated many of the proposed national patent law changes only applied to patents for technology inventions. Consequently, there has been no significant international or national discussion or general agreement to alter national design patent laws. The type of discussion needed concerning design patent law changes is now taking place at WIPO on the Hague Agreement revision. The U.S. is participating actively in that process, along with several U.S. non-governmental organizations. This treaty deals primarily with procedures for registering designs as wells a design patents. A series of articles by this author have described the progress made at these meetings. 3 One topic at these meetings has been the secrecy of design 2, "The term 'patent' is used in the Treaty to refer only to patents for inventions and to exclude other titles of industrial property that are sometimes referred to in national laws as 'patents,' such as patents for designs, patents for utility models, petty patents and plant patents, Notes on the Basic Proposal for the Treaty and Regulations, Diplomatic Conference for the Conclusion of a Treaty Supplementing the Paris Convention as Far as Patents are Concerned, The Hague, June 3 to 28, 1991, WIPO Doc. PLT/DC/4 (Dec. 21, 1990), sec. 2.05. 3. Fryer, W., Report on Hague Agreement (Industrial Designs) Second Meeting of Experts, WIPO, April 27 - 30, 1992~ 74 Journal of the Patent and Trademark Office Society (JPTOS) 923 - 937 (No. 12, Dec. 1992); Fryer, W., More Bang for Your Design Protection Money: A Report on the Hague Agreement Third Meeting, 76 JPTOS 91-115 (No. 2, Feb. 1994); and Fryer, W., 2 U. Balt. Int. Prop. L. J. _ (Issue 1) [available on request]. applications.4 There has been considerable concern expressed by some governments and non-governmental organizations, especially the textile and fashion industries in Europe, that there should be some period of secrecy after registration, or at least a reasonable period of pendency where secrecy occurs, so that the design registration office is not a convenient source for copiers. The Hague Agreement system has an international registration publication schedule. Figure 1 shows the time features of the Draft Act reviewed at the 4th meeting of experts held in 19945. International registrations will be published usually within three months from receipt by WIPO. If the U.S. adheres to the revised Hague Agreement, it will force a reevaluation of design patent application publication. My prediction is that the U.S. may go to a very short publication time, perhaps six months for design patent applications. One of the continuing problems in understanding the debates and positions of organizations and governments is in what context the term "patent" is used. U.S. patent law, 35 U.S.C. secs. 1 - 376, applies to both utility patent, plant patents and design patents, unless otherwise indicated. 6 Any legislation amending U.S. patent law that fails to give an exception for design patents will apply to design patents. Use of the term "patent" is generic to design patent, and it will result in the legal conclusion that the legislative change applies to designs patents, unless there is an appropriate exception for design patents. This overlap has made it difficult to interpret whether organizations and the PTO are proposing, or in support of, 18 months Publication for design patents Another fact is that U.S. design patent application pendency is a major concern now for intellectual property professionals, business and the PTO. Major efforts to reduce design patent application pendency are underway, and there have made significant accomplishments. The goals set are far below 18 months from the U.S. filing date of a design applications. 4. Fryer, W., 76 JPTOS at 106. 5. 2 U. Balt. Int. Prop. J. (Issue 1 ). _6. 35 U.S.C. sec. 171, "The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided." Sections 171-173 are the special design patent provisions. TIME FEATURES OF DRAFT ACT 4th MEETING OF EXPERTS ON HAGUE AGREEMENT REVISION (Industrial Design) FIGURE 1: DIREct PARIS CONVENTION 6 months from first national application filing WIPO 3 months for WIPO to receive it, usually IDR FILING IN NATIONAL OFFICE O Copyright W.T. Fryer III 1994 REFUSED 30 montlhs to refuse effect LEGEND: IDR - International Design Registration WIPO - World Intellectual Property Organization Generally 3 months FORMALITY REVIEW NATIONAL OFFICE EXAMINES FOR NOVELTY ACCEPTED IDR FOR NATIONAL EFFECT IDR terrn is same as National Protection term, measured from refusa lwithdrawal in most cases. Time to acceptance depends on review duration DEFERRED PUBLICATION OF DESIGN IDR Up to member -- max. 30 months (None likely in U.S). Usually no more than one year NATIONAL OFFICE PROCESSES WITHOUT NOVELTY EXAM IDR NATIONAL EFFECT IDR temm from effective filing date is 15 year minimum Special Note: Changes agreed to at the 4th meeting are included in this diaqram. REASON FOR RECOMMENDATIONS The U.S. should defer any changes in its design patent law concerning publication of design patent applications until the Hague Agreement revision is completed. The development of an improved U.S. design patent system has to include factors that are being discussed at the meeting of experts. The next meeting is scheduled for June 12-16, 1995. The above background information indicates that secrecy and publication timing are topics being discussed at the Hague Agreement revision meetings. It would be premature for the U.S. to revise the design patent law until these discussions are completed and the structure of the revised Hague Agreement system is known. The development of patent law harmonization revisions, starting with the aforementioned work at WIPO, and with the Japanese Government, has not included design patent law changes. These discussions have centered on technology inventions. I am not aware of any country that is proposing to change its design application publication timing to 18 months as a result of the patent (technology invention) law harmonization review. Any decision by the U.S. to change design patent application pendency should be part of an overall plan with corresponding benefits from similar changes in other countries. The best approach for the U.S. is to work within the Hague Agreement revision project to develop system standards that can receive a wide acceptance. It is critical to have any U.S. legislation on 18 months publication clearly state which patents are effected. Consequently the proposed legislation for patent 18 month publication should specifically exclude its application to design patents.
Last Modified: March 1995