August 19, 2010
Mr. David Kappos
Director of United States Patent and Trademark Office
3trackscomments@uspto.gov
Japan Machinery Center for Trade and Investment
Special Committee for Issues on Intellectual Property Rights
Hideaki Togawa, Chair of the Committee

Comments on the Concept of Three Tracks for the Timing of Patent Examinations inthe United States Patent and Trademark Office

Japan Machinery Center for Trade and Investment (the Center) is a non-profit
organization established in 1952 for sound development of machinery trades andinvestments. The members are about 270 companies, large and medium sized, making
exports and direct investments overseas, including the United States, of a broad range ofmachinery products, in the areas of manufacturing, trading and engineering of electronic orelectric equipments, office machineries and industrial machineries.
A total of 82,396 patent applications were filed from Japan in the United States
Patents and Trademark Office (USPTO) in 2008, which accounted for about 18% of thetotal of 456,321 patent applications to the USPTO filed in the same year.1 Most of the82,396 patent applications were from the 270 members of the Center.
Since the number of patent filings to the USPTO from the constituents of the Centerhas been very large, we, the special committee of the Center for the issues on intellectual
property rights are strongly interested in and have been studying the legal systems related tothe intellectual property in your nation. We would like to submit our comments below on
the three track concept on the timing of patent examinations in the USPTO, for which you
have solicited public comments.

NUMBER OF UTILITY PATENT APPLICATIONS FILED IN THE UNITED STATES, BY
COUNTRY OF ORIGIN CALENDAR YEAR 1965 TO PRESENT, June 2009, U.S. PATENT1

AND TRADEMARK OFFICE, Electronic Information Products Division – PTMT1I.

The USPTO has proposed in the Federal Register the operation of a system inwhich following Tracks I, II and III can be chosen for patent applications first filed
in the USPTO.2
Track I: prioritized examination
Track II: traditional examination under the current procedures

Track III: for non-continuing applications first filed in the USPTO, an applicant-controlled
delay for up to 30 months prior to docketing for examination.

The proposed three track system is interpreted as follows: they are applied only toapplications which are first filed in the USPTO; however for the applications first filed inforeign countries and then filed in the USPTO, choosing one of the three tracks is not anoption---the examinations will not start until either (i) the USPTO receives copies of asearch report, the first office action by the foreign patent office, and a reply to it, or (ii) theapplicant abandoned the foreign application(s).
Therefore, the application of the three track system apparently discriminates against
foreign applicants based on nationality; treats differently the US applicants who first file tothe US and foreign applicants who do not first file in the US. We understand this is anapparent violation against Article 2 of Paris Convention for the Protection of Industrial
Property3 and Article 3 of Agreement on Trade-Related Aspects of Intellectual Property

2 Federal Register Vol. 75, No. 107, June 4, 2010
3 Paris Convention for the Protection of Industrial Property, Article 2: National Treatment for
Nationals of Countries of the Union(1) Nationals of any country of the Union shall, as regards the protection of industrial property,
enjoy in all the other countries of the Union the advantages that their respective laws now
grant, or may hereafter grant, to nationals; all without prejudice to the rights speciallyprovided for by this Convention. Consequently, they shall have the same protection as thelatter, and the same legal remedy against any infringement of their rights, provided that theconditions and formalities imposed upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where protection isclaimed may be imposed upon nationals of countries of the Union for the enjoyment of any
industrial property rights.
(3) The provisions of the laws of each of the countries of the Union relating to judicial andadministrative procedure and to jurisdiction, and to the designation of an address for service or
the appointment of an agent, which may be required by the laws on industrial property areexpressly reserved.

2Rights (TRIPS)4, which stipulate equal treatment of intellectual property rights between
domestic nationals and foreign nationals.
II.

The foreign applicants who do not first file to the USPTO

The disadvantages for foreign applicants who do not first file in the US are notlimited to the above exclusion from the selection of three tracks. The Federal Rule 37
C.F.R.§1.102 prescribes that any applicant may request the accelerated examination
depending on the circumstances of the applicant (age or health) or the nature of theinvention involved (green technology etc.). However, if operation of the three track system
is put into force, the applications which have not been first filed to the US are excluded also
from the benefit of this stipulation.
This is also an apparent violation of Article 2 of Paris Convention and Article 3 ofTRIPS agreement.

III.
When a patent office of any nation of member countries of the Paris Convention
may set up a special examination system, the system must treat both domestic and foreign
nationals equally, according with the stipulation of Article 2 of Paris Convention andArticle 3 of TRIPS agreement.

4 AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS,Article 3: National Treatment 1. Each Member shall accord to the nationals of other Members
treatment no less favorable than that it accords to its own nationals with regard to theprotection (*) of intellectual property, subject to the exceptions already provided in, respectively,
the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty
on Intellectual Property in Respect of Integrated Circuits. In respect of performers, producersof phonograms and broadcasting organizations, this obligation only applies in respect of therights provided under this Agreement. Any Member availing itself of the possibilities provided
in Article 6 of the Berne Convention (1971) or paragraph 1(b) of Article 16 of the Rome
Convention shall make a notification as foreseen in those provisions to the Council for TRIPS.
*“protection” shall include matters affecting the availability, acquisition, scope, maintenanceand enforcement of intellectual property rights as well as those matters affecting the use of
intellectual property rights specifically addressed in this Agreement.
2. Members may avail themselves of the exceptions permitted under paragraph 1 in relation to
judicial and administrative procedures, including the designation of an address for service or
the appointment of an agent within the jurisdiction of a Member, only where such exceptions
are necessary to secure compliance with laws and regulations which are not inconsistent withthe provisions of this Agreement and where such practices are not applied in a manner which
would constitute a disguised restriction on trade.

3This is an important principle commonly recognized in the patent systems of theworld and it should particularly be so for the US and the USPTO who have been
advocating the equal treatment of the applications to the foreign patent offices.
Here, we would not object to setting up the three track system itself, so long as theequal treatment of both domestic and foreign nationals stipulated in the Article 2 of Paris
Convention and the Article 3 of TRIPS agreement is secured. This is true because theneeds of applicants for examination by the USPTO may well vary depending on special
circumstances of the applicants and technologies involved.
However, the proposed operation of the three track system apparently violates theArticle 2 of Paris Convention and Article 3 of TRIPS agreement. We object to such aspects.

IV.
We are also concerned that once the USPTO, if by remote chance, would implement
the three track system, nations other than the US would follow and adopt similar systems.
If such a situation occurred, the examination of applications from foreign nations would
largely get delayed in patent offices all over the world, for which the USPTO must carrygreat responsibility.
In view of the above, we, the Center, would not object to the three track system by
the USPTO, so long as the examinations would be speedy and smooth depending on theneeds of applicants, and so long as treatment would be equal for both domestic and foreign
nationals. However, we strongly object the proposed operation of the three track systemwhich discriminates against foreign applicants.

Very truly yours,

Ken Hattori
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
on behalf of
the Japan Machinery Center for Trade and Investment

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