In reversing the U.S. Patent and Trademark Board of Appeals and Interferences (Board), the U.S. Court of Appeals for the Federal Circuit held that the Board properly required a verified translation of a Patent Cooperation Treaty (PCT) application to support an applicant’s claim to priority and priority cannot be based on an international application filed more than one year before the U.S. application. Stevens v. Tamai, Case No. 03-1479 (Fed. Cir. May 4, 2004) (Clevenger, J.).
In the course of an interference, both Stevens and Tamai filed motions to be accorded the benefit of priority based on their respective international applications. Stevens, relying on European applications, was granted a constructive reduction to practice date antedating Tamai’s PCT date. Tamai’s earliest U.S. application was a nationalized PCT application based on a PCT application filed in Japan, in Japanese, which in turn claimed priority to an earlier filed Japanese domestic application, filed more than one year before Tamai’s U.S. PCT (§371) application. Tamai filed a translation of the PCT application, which was accepted by the U.S. Patent and Trademark Office (USPTO) for the establishment of the §371 application. In its motion, Tamai provided an affidavit attesting that the Japanese domestic application was substantially the same as the §371 application, but Tamai did not serve a translation of the PCT application nor an affidavit verifying the accuracy of any translation of the PCT application with its motion. The Board granted Tamai the benefit of the Japanese domestic applications but denied the benefit of the PCT application because neither a translation nor a verification of any translation of the PCT application was served with the motion. Finally, a constructive reduction to practice based on the Japanese domestic application, Tamai was awarded priority of the count in the interference.
Stevens appealed, arguing to the Federal Circuit that without the benefit of the intervening PCT application, Tamai was not entitled to the benefit of the domestic Japanese application because Tamai’s U.S. PCT application was filed more than one year afterwards. The Court agreed, holding that §119 precludes relying on an international application filed more than one year before the corresponding U.S. application for priority.
Tamai argued that the Board should have granted it priority to the PCT application through the §371 U.S. application because under PCT protocols a U.S. application is to be given the benefit of a corresponding international application. The Court noted however, that §372(b)(3) also permits the USPTO to require a verification of the translation of the international application if it was not filed in English: "The Office is not required to accept an applicant’s transmittal letter requesting entry into the national stage as conclusive proof that a foreign language application contains a particular disclosure." Tamai also argued that priority to the PCT application should be granted because a translation was already in the U.S. PCT application file and the USPTO accepted the translation to establish the §371 application. The Court rejected this argument, noting that the USPTO has authority to make rules that are not inconsistent with the law, the requirement to provide a verified translation of a non-English document is a reasonable requirement not inconsistent with any law, and, thus, Tamai failure to serve a translation or verification of the translation rendered its motion to establish priority under the rules deficient. The Court explained that "compliance with filing [PCT] requirements is not sufficient to prove constructive reduction to practice in an interference proceeding."
Thus, the Court reversed the award of priority to Tamai and remanded the interference with instructions to enter judgment for Stevens.
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