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24566 Federal Register / Vol. 72, No.

85 / Thursday, May 3, 2007 / Notices

Number of Respondents: 1,669 DEPARTMENT OF COMMERCE process by limiting the number of topics
responses per year. for consideration in this exercise with
Avg. Hours per Response: It is Patent and Trademark Office the aim of achieving a meaningful near-
estimated to take between 30 minutes [Docket No. PTO–C–2007–0018] term agreement. These efforts were
(0.5 hours) and 4.0 hours for the public initiated in proposals before the
to gather, prepare and submit the Request for Comments on Standing Committee on the Law of
various petitions in this collection. International Efforts To Harmonize Patents (SCP), meeting under the
Needs and Uses: In the interest of Substantive Requirements of Patent auspices of the World Intellectual
national security, patent laws and rules Laws Property Organization (WIPO), but more
place certain limitations on the recently consensus has not been reached
AGENCY: United States Patent and on a particular work plan in that body.
disclosure of information contained in Trademark Office, Department of
patents and patent applications and on Since early 2005, a group of countries,
Commerce. sometimes referred to as the
the filing of applications for patents in
foreign countries. When an invention is ACTION: Notice of request for public ‘‘Alexandria Process’’ or the ‘‘Group
determined to be detrimental to national comments. B+,’’ has been meeting informally to
security, the Director of the USPTO advance discussions on patent law
SUMMARY: The United States Patent and harmonization in WIPO in the
must issue a secrecy order and withhold Trademark Office (USPTO) is seeking
the grant of a patent for such period as categories of: (1) Definition of prior art,
comments to obtain the views of the (2) grace period, (3) novelty, and (4)
the national interest requires. The public on international efforts to inventive step or non-obviousness. Each
USPTO collects information to harmonize substantive requirements of of these items relates to applicability of
determine whether the patent laws and patent laws, and any potential ‘‘prior art.’’ These four categories are
rules have been complied with, and to subsequent changes to United States law commonly referred to as the ‘‘limited
grant or revoke licenses to file abroad and practice. Comments may be offered package.’’ These are core elements in
when appropriate. This collection is on any aspect of these efforts. patent examination in countries around
required by 35 U.S.C. 181–188 and
DATES: Comments will be accepted on a the world. The ‘‘B+’’ countries include
administered through 37 CFR 5.1–5.33.
continuous basis until June 22, 2007. the United States, Canada, Japan,
There are no forms associated with this
See discussion of ‘‘Text’’ in the Australia, New Zealand, Norway, the
collection of information. Members of the European Union and the
Affected Public: Individuals or Members of the European Patent
ADDRESSES: Persons wishing to offer
households; business or other for-profit; Convention. It has been recognized that
and not-for-profit institutions. written comments by mail should
address those comments to the United the items under discussion provide the
Frequency: On occasion. States Patent and Trademark Office, best chance for achieving a meaningful
Respondent’s Obligation: Required to Office of International Relations, near-term agreement on patent law
obtain or retain benefits. Madison West Building, Tenth Floor, harmonization.
OMB Desk Officer: David Rostker, 600 Dulany Street, Alexandria, VA Upon conclusion, an agreement on
(202) 395–3897. 22313, marked to the attention of Mr. these elements would provide a
Copies of the above information Jon P. Santamauro. Comments may also harmonized system on global
collection proposal can be obtained by be submitted to Mr. Santamauro by applicability of these prior art-related
any of the following: facsimile transmission to (571) 273– principles. This would allow for more
uniform treatment of patent applications
• E-mail: 0085 or by electronic mail through the
and patent grants, improve patent
Include ‘‘0651–0034 copy request’’ in Internet at
The comments will be available for quality and reduce costs for patent
the subject line of the message. owners in obtaining and preserving
• Fax: 571–273–0112, marked to the public inspection via the USPTO’s
their rights for inventions in many
attention of Susan K. Fawcett. Internet Web site (address: http://
countries of the world. Meetings of
• Mail: Susan K. Fawcett, Records Because comments will
‘‘Group B+’’ and consultations relating
Officer, Office of the Chief Information be made available for public inspection,
to the WIPO SCP are expected to be
Officer, Customer Information Services information that is not desired to be
convened in 2007. The USPTO is
Group, Public Information Services made public, such as an address or
interested in obtaining comprehensive
Division, U.S. Patent and Trademark phone number, should not be included
comments regarding these efforts.
Office, P.O. Box 1450, Alexandria, VA in the comments.
FOR FURTHER INFORMATION CONTACT: Mr. 2. Issues for Public Comment
Written comments and Jon P. Santamauro by telephone at (571) The purpose of this notice is to
recommendations for the proposed 272–9300, by fax at (571) 273–0085 or identify and briefly outline important
information collection should be sent on by mail marked to his attention and issues that have arisen and are likely to
or before June 4, 2007 to David Rostker, addressed to United States Patent and arise during meetings of the ‘‘Group B+’’
OMB Desk Officer, Room 10202, New Trademark Office, Office of and WIPO SCP on patent law
Executive Office Building, Washington, International Relations, 600 Dulany harmonization. A brief summary of
DC 20503. Street, Madison West Building, Tenth some of these issues is provided below.
Floor, Alexandria, VA 22313. Any comments provided with regard to
Dated: April 26, 2007. the particular items identified below
Susan K. Fawcett, should be numbered in correspondence
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Records Officer, USPTO, Office of the Chief 1. Background with the numbering of these items as
Information Officer, Customer Information The United States has been involved shown. Comments on any aspects of
Services Group, Public Information Services in efforts to harmonize the substantive these topics are welcome. This would
patent laws in the different countries of include comments relating to what
[FR Doc. E7–8456 Filed 5–2–07; 8:45 am] the world for many years. Recent efforts practices described may constitute ‘‘best
BILLING CODE 3510–16–P have been made to streamline this practices’’ in an internationally

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Federal Register / Vol. 72, No. 85 / Thursday, May 3, 2007 / Notices 24567

harmonized system, as well as any other from the date of filing in the United applicants that either have strong
matter relating to the topics identified. States. See In re Hilmer, 359 F.2d 859 incentives to publish early in their
The listing of topics is not meant to be (CCPA 1966) and 35 U.S.C. 102(e). In fields or, as in the case of independent
exhaustive. Comments offered on other other patent systems in the world, inventors or small entities, those
topics relating to efforts on patent law applicants (including U.S. origin applicants that are not well versed in
harmonization or to the four ‘‘limited- applicants) obtain prior art effect from the patent system and may
package’’ categories of defining prior art, the date of their first filing under the inadvertently extinguish their rights
grace period, novelty or inventive step, Paris Convention, usually 12 months through publication. Some other
that have not been specifically recited prior to the filing in the country where systems, including that in the European
below should be provided under the protection is sought. However, current Patent Convention (EPC), have an
heading ’’Other Comments.’’ United States patent law does provide ‘‘absolute novelty’’ requirement such
(1) Priority of Invention. The United that international application that any disclosures, including those by
States currently adheres to what is publications under the Patent an inventor himself, made prior to the
usually called the ‘‘first-to-invent Cooperation Treaty are available as prior date a patent application is filed, are
system’’ with respect to priority contests art as of their international filing date, considered prior art. Proponents of the
between independent inventors who are if the international application was filed ‘‘absolute novelty’’ standard generally
claiming rights to the same invention. In on or after November 29, 2000, view this standard as providing
the context of current U.S. patent law, designated the United States, and increased legal certainty in that any
this entails the establishment of (1) published in English under the rules of publication will constitute prior art
conception of the invention and (2) that Treaty. See 35 U.S.C. 102(e). against a later filed patent application,
reduction to practice of the invention by (3) Scope of Prior Art Effect of regardless of the author.
a particular date. Under certain Published Patent Applications. As noted An issue raised in this context is the
circumstances, the U.S. system permits above, United States patent law appropriate length of the ‘‘grace period’’
the party that has reduced the invention provides that published patent if introduced globally. Consistent with
to practice later than another to prove applications and grants are considered existing practice, the United States has
that it was the first-to-invent, and prior art for the purposes of both argued for a twelve-month grace period
thereby entitled to the patent, by novelty and non-obviousness provided to ensure optimal utility for applicants,
establishing a prior date of conception the application is earlier filed and is and that the grace period should arise
of the invention. The remainder of the published or granted as required by 35 solely by operation of law. Some
world uses what is referred to as a ‘‘first- U.S.C. 102(e). Hazeltine Research v. countries have raised the issue of
inventor-to-file’’ (or more widely Brenner, 382 U.S. 252, 147 USPQ 429 providing for procedural mechanisms,
referred to as ‘‘first-to-file’’) rule in (1965). This practice helps to prevent such as a requirement for the patent
determining the right to a patent. grant of overlapping patent rights and to applicant to make a declaration of intent
Generally speaking, this practice prevent third parties from being to invoke the ‘‘grace period,’’ that would
determines contests between two parties threatened by multiple patent require a patent applicant to list any
that have independently invented the infringement lawsuits for substantially disclosure that the applicant has made
same invention, and awards the patent the same acts. Other patent systems in the past twelve months in order to be
to the inventor that files his or her apply this type of prior art only with considered to fall within the grace
application first in time with the patent respect to novelty, due to concerns of period. However, others have argued
authorities in the relevant national or the effect of what may be considered that such a procedural mechanism,
regional patent system. While this topic ‘‘secret’’ prior art against a second-in- which currently does not exist in United
itself is not one of the four categories of time inventor who was not aware that States practice, would vitiate the
the limited package noted above, this any prior art was in existence when its benefits of such a grace period and harm
issue would need to be resolved to second-in-time patent application was those parties most likely to benefit from
achieve an agreement on those issues, filed. This prior art is considered such a grace period, e.g., small entities
and has been raised in that context. ‘‘secret’’ in these jurisdictions because or other applicants less familiar with the
(2) Prior Art Effective Date of this type of prior art has a patent- patent system.
Published U.S. Patent Applications. defeating effect as of its filing date There are discussions ongoing as well
United States patent law provides that which is prior to its publication. Such as to the scope of any such grace period.
published patent applications and a novelty-only system, however, may Some have advocated for a broader
grants are considered prior art with allow for the granting of multiple grace period that would include any
respect to a second patent application patents directed to obvious variations of information disclosed by or on behalf of
provided the application is earlier filed the same invention. an inventor. Others have advocated the
in the United States and is published or (4) Grace Period. Through operation view that published patent applications
granted as required by 35 U.S.C. 102(e). of the prior art definitions of 35 U.S.C. should be excluded from the grace
In other words, the prior art effective 102, United States patent law provides period on the grounds that applying a
date of a published application or a ‘‘grace period’’ of one year prior to the grace period to patent applications
granted patent is its date of filing in the date of application in the United States. published at eighteen months would
United States. The Paris Convention Disclosures by the inventor during the unduly extend, by an additional twelve
provides that applicants may file first in ‘‘grace period’’ do not have a patent- months, the amount of time for
their country of origin and then have a defeating effect. During this period, only applicants to file multiple patent
twelve-month period in which to file in disclosures ‘‘by another’’ have patent applications on the same invention.
foreign markets without harming their defeating effect. See 35 U.S.C. 102. The Further, it is argued that the equities are
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ability to obtain protection in those ‘‘grace period’’ is considered by many to not the same in this situation as the
foreign markets. According to U.S. be necessary to allow inventors to application has already knowingly
patent law, applications from foreign disclose their invention without the applied for patent protection on the
applicants who rely on the Paris penalty of extinguishing any patent same or related subject matter.
Convention priority date obtain a rights for that invention. This is (5) Geographical Limitations in the
patent-defeating prior art effect only generally raised in the context of those Definition of Prior Art. Recent

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24568 Federal Register / Vol. 72, No. 85 / Thursday, May 3, 2007 / Notices

discussions at the international level 1028 (Fed. Cir. 1992) (quoting Pennwalt However, some systems allow for direct
have indicated a willingness on the part Corp. v. Akzona Inc., 740 F.2d 1573, filing of patent applications by
of states to eliminate any geographical 1581, 222 USPQ 833, 838 (Fed. Cir. assignees. These systems generally
restrictions that limit the definition of 1984)). Contrary to the grace period, this require that the inventor be named in
prior art. Currently, United States prior exemption from the prior art is not time the application and the entitlement to
art requirements limit certain types of limited but is considered on a case-by- the patent must derive from the inventor
non-written disclosures to acts within case basis. Most other systems do not or his successor in title, such as an
the United States, see 35 U.S.C. 102(a) contain such a limitation on prior art. If assignee.
and 102(b). Some have argued that these prior public uses are made, these items (10) Eighteen-Month Publication of
restrictions discriminate against constitute prior art, subject to a time- Patent Applications. Most countries
countries, in particular certain limited grace period in some publish all patent applications at
developing countries where there are jurisdictions, regardless of whether the eighteen months after the application’s
traditions of non-written disclosures uses are experimental in nature, unless filing date (or priority date) and prior to
that should be patent defeating if the use is not sufficiently informing to grant of the patent. This is sometimes
adequately established. It has also been the public. referred to as ‘‘pre-grant publication.’’
argued that concerns about the (8) Prior User Rights. While the issue This publication requirement is
reliability of oral or other non-written is also not one of those expressly considered by many to be an important
disclosures can be more adequately included in the four limited-package transparency mechanism for the patent
addressed through evidentiary categories, this matter has been raised system and to prevent the occurrence of
provisions rather than through the by numerous delegations in the context so-called ‘‘submarine’’ patents that may
substantive patent law. of patent law harmonization be pending in the patent office for an
(6) ‘‘Loss of Right’’ Provisions. Current discussions. The United States currently extended period of time and then are
U.S. patent law, 35 U.S.C. 102(b), bars has a defense to infringement with granted, potentially affecting good faith
the grant of a patent when the invention respect to a person, acting in good faith, actors in the relevant field. It should be
was ‘‘in public use or on sale’’ more who had actually reduced the subject noted that if the patent application is
than one year prior to filing in the matter of an invention to practice at withdrawn or abandoned by an
United States. The ‘‘on sale’’ provision least one year before the effective filing applicant prior to the eighteen-month
may bar patenting in this instance, even date of a patent application for that date in these jurisdictions, the
where the invention has not been invention by another. See 35 U.S.C. 273. application is not published. The
disclosed to the public, if it remains ‘‘on This defense is limited in many United States currently provides
sale.’’ Secret commercial use by the respects, most notably that it can only eighteen-month publication for the large
inventor is also covered by the bar in be asserted if the invention for which majority of patent applications filed in
order to prevent the preservation of the defense is asserted is a method, the United States. However, U.S. patent
patent rights when, although an defined as a method of doing or applications may not be published if an
invention has remained secret, there has conducting business, and further that it applicant requests at the time of filing
been successful commercial exploitation may not be asserted if the subject matter of an application that the application
of the invention by its inventor beyond on which the defense is asserted is not be published and the request
one year before filing. See, e.g., derived from the patentee or persons in certifies that the invention disclosed in
Metallizing Engineering Co. v. Kenyon privity with the patentee. These types of the application has not and will not be
Bearing & Auto Parts, 153 F.2d 516 infringement defenses are generally the subject of a patent application in
(CCPA 1946). These provisions are referred to as ‘‘prior user rights.’’ Other another country or under a multilateral
generally considered to promote early countries have varying practices, but international agreement that requires
disclosure of inventions through patents more generally apply such defense to eighteen-month publication. See 35
and to prevent unjustified extensions of both products and processes and to U.S.C. 122(b)(2)(B). Most other systems
the term of exclusive protection by persons that, in good faith, either use do not have this type of ‘‘opt-out’’
requiring early filing of patent the invention or make effective and option. Advocates of eliminating this
applications in these circumstances. serious preparations for such use prior type of ‘‘opt-out’’ procedure generally
Most other patent systems do not have to the effective filing date for the patent consider this type of provision to
such provisions. Advocates of application. Further, there is a split undermine the transparency and legal
eliminating such requirements argue between jurisdictions that provide prior certainty provided by publication.
that such requirements are not objective user rights. Some apply these rights
3. Further Reference
in nature and therefore add uncertainty more broadly to those parties that have
and complexity to the patent system. derived their use from information from Comments on any issues regarding the
(7) ‘‘Experimental Use’’ Exception to the patentee, including publications by topics listed above, other matters
Prior Art. United States patent law the patentee or inventor prior to the relating to the four ‘‘limited-package’’
provides that a public use or sale by the filing date of the later application. Other categories of (1) definition or prior art,
inventor may be exempt from the prior jurisdictions take a narrower approach (2) grace period, (3) novelty, and (4)
art if that use or sale was experimental. that limits prior user rights to those non-obviousness, or any other aspects
The courts have considered a use or sale persons who, in good faith, relating to substantive patent law
to be experimental if ‘‘it represents a independently developed the later harmonization are welcome. To
bona fide effort to perfect the invention patented product or process. Comments facilitate final preparations for the
or to ascertain whether it will answer its on any aspects of prior user rights, future meetings, comments will be
intended purpose. * * * If any accepted until June 22, 2007. Interested
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including whether this element should

commercial exploitation does occur, it be included with the current talks on members of the public are also
must be merely incidental to the prior-art related matters, are welcome. reminded that USPTO previously
primary purpose of the experimentation (9) Assignee Filing. United States requested public comments on a wider
to perfect the invention.’’ LaBounty Mfg. patent law now requires that a patent range of issues relating to patent law
v. United States Int’l Trade Comm’n, application be made, or authorized to be harmonization in March 2001. The
958 F.2d 1066, 1071, 22 USPQ2d 1025, made, by the inventor or inventors. responses to that request for comments

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Federal Register / Vol. 72, No. 85 / Thursday, May 3, 2007 / Notices 24569

are available on the Internet Web site of personal identifiers or contact DEPARTMENT OF DEFENSE
the USPTO at information.
web/offices/dcom/olia/harmonization/. Office of the Secretary
Dated: April 26, 2007. [No. DoD–2007–HA–0023]
request more information on this
Jon W. Dudas,
proposed information collection or to Proposed Collection, Comment
Under Secretary of Commerce for Intellectual obtain a copy of the proposal and
Property and Director of the United States Request
Patent and Trademark Office. associated collection instrument, please
write to the Defense Finance and AGENCY: Office of the Assistant
[FR Doc. E7–8416 Filed 5–2–07; 8:45 am] Secretary of Defense for Health Affairs,
Accounting Service—Denver, DFAS–
JES/DE, ATTN: Sue Debevec, 6760 East DoD.
Irvington Place, Denver, CO 80279– ACTION: Notice.
3000, or call Sue Debevec at 303–676–
DEPARTMENT OF DEFENSE In accordance with Section 3506(c) of
5050. the Paperwork Reduction Act of 1995,
Office of the Secretary Title, Associated Form, and OMB the Office of the Assistant Secretary of
[No. DOD–2007–OS–0037] Number: Request for Information Defense for Health Affairs announces
Regarding Deceased Debtor; DD Form the proposed extension of a public
Proposed Collection; Comment 2840; OMB Number 0730–0015. information collection and seeks public
Request Needs and Uses: This form is used to comment on the provisions thereof.
obtain information on deceased debtors Comments are invited on: (a) Whether
AGENCY: Defense Finance and the proposed extension of collection of
Accounting Service, DoD. from probate courts. Probate courts
information is necessary for the proper
ACTION: Notice. review their records to see if an estate
performance of the functions of the
was established. They provide the name
SUMMARY: In compliance with Section
agency, including whether the
and address of the executor or lawyer
3506(c)(2)(A) of the Paperwork information shall have practical utility;
handling the estate. From the (b) the accuracy of the agency’s estimate
Reduction Act of 1995, the Defense information obtained, DFAS submits a
Finance and Accounting Service (DFAS) of the burden of the information
claim against the estate for the amount collection; (c) ways to enhance the
announces the proposed extension of a due the United States.
public information collection and seeks quality, utility, and clarity of the
public comments on the provisions Affected Public: Clerks of Probate information to be collected; and (d)
thereof. Comments are invited on: (a) Courts. ways to minimize the burden of the
Whether the proposed collection of Annual Burden Hours: 167 hours. information collection on respondents,
information is necessary for the proper including through the use of automated
Number of Respondents: 2,000. collection techniques or other forms of
performance of the functions of the
agency, including whether the Responses per Respondent: 1. information technology.
information shall have practical utility; Average Burden Per Response: 5 DATES: Considerations will be given to
(b) the accuracy of the agency’s estimate minutes. all comments received on or before July
of the burden of the proposed 2, 2007.
Frequency: On Occasion.
information collection; (c) ways to ADDRESSES: You may submit comments,
enhance the quality, utility and clarity SUPPLEMENTARY INFORMATION: identified by docket number and title,
of the information to be collected; and by any of the following methods:
Summary of Information Collection
(d) ways to minimize the burden of the • Federal eRulemaking Portal: http://
information collection on respondents, DFAS maintains updated debt www/ Follow the
including through the use of automated accounts and initiates debt collection instructions for submitting comments.
collection techniques or other forms of action for separated military members, • Mail: Federal Docket Management
information technology. out-of-service civilian employees, and System Office, 1160 Defense Pentagon,
DATES: Consideration will be given to all other individuals not on an active Washington, DC 20301–1160.
comments received by July 2, 2007. Instructions: All submissions received
federal government payroll system.
must include the agency name, docket
ADDRESSES: You may submit comments, When notice is received that an
number and title for this Federal
identified by docket number and title, individual is deceased, an effort is made Register document. The general policy
by any of the following methods: to ascertain whether the decedent left an for comments and other submissions
• Federal eRulemaking Portal: http:// estate by contacting clerks of probate from members of the public is to make Follow the courts. If it’s determined that an estate these submissions available for public
instructions for submitting comments. was established, attempts are made to
• Mail: Federal Docket Management viewing on the Internet at http://
collect the debt from the estate. If no as they are
System Office, 1160 Defense Pentagon, estate appears to have been established,
Washington, DC 20301–1160. received, without change, including any
the debt is written off as uncollectible. personal identifiers or contact
Instructions: All submissions received
must include the agency name, docket Dated: April 23, 2007. information.
number and title for this Federal Patricia L. Toppings, FOR FURTHER INFORMATION CONTACT: To
Register document. The general policy request more information on this
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Alternate OSD Federal Register Liaison

for comments and other submissions Officer, Department of Defense. proposed information collection, please
from members of the public is to make [FR Doc. 07–2141 Filed 5–2–07; 8:45 am] write to the TRICARE Management
these submissions available for public BILLING CODE 5001–06–M
Activity—Aurora, Appeals, Hearings
viewing on the Internet at http:// and Claims Collection Division, 16401 as they are E. Centretech Pkwy, Attn: Donald F.
received without change, including any Wagner, Aurora, CO 80011–9066, or

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