Patent Law Treaty and Regulations Under Patent Law TreatySenate Consideration of Treaty Document 109-12
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[Senate Treaty Document 109-12] [From the U.S. Government Publishing Office] 109th Congress 2d Session SENATE Treaty Doc. 109-12 _______________________________________________________________________ PATENT LAW TREATY AND REGULATIONS UNDER PATENT LAW TREATY __________ MESSAGE from THE PRESIDENT OF THE UNITED STATES transmitting PATENT LAW TREATY AND REGULATIONS UNDER THE PATENT LAW TREATY (THE ``TREATY''), DONE AT GENEVA ON JUNE 1, 2000, BETWEEN THE GOVERNMENTS OF 53 COUNTRIES INCLUDING THE UNITED STATES OF AMERICA September 5, 2006.--Treaty was read the first time, and together with the accompanying papers, referred to the Committee on Foreign Relations and ordered to be printed for the use of the Senate LETTER OF TRANSMITTAL ---------- The White House, September 5, 2006. To the Senate of the United States: With a view to receiving the advice and consent of the Senate to ratification, subject to the reservation outlined below, I transmit herewith the Patent Law Treaty and Regulations Under the Patent Law Treaty (the ``Treaty''), done at Geneva on June 1, 2000, between the Governments of 53 countries including the United States of America. I also transmit, for the information of the Senate, the Key Provisions of the Patent Law Treaty report prepared by the Department of State. Strong intellectual property protection is a cornerstone of free trade and global market access. This Treaty promotes patent protection by codifying harmonizing, and reducing the costs of taking the steps necessary for obtaining and maintaining patents throughout the world. The provisions set forth in the Treaty will safeguard U.S. commercial interests by making it easier for U.S. patent applicants and owners to protect their intellectual property worldwide. The Treaty generally sets forth the maximum procedural requirements that can be imposed on patent applicants, and in addition, provides standardized requirements for obtaining a filing date from which no party may deviate. Additionally, the Treaty provides that applicants cannot be required to hire representation for, among other things, the purpose of filing an application and that patents may not be revoked or invalidated because of noncompliance with certain application requirements, unless the noncompliance is a result of fraud. The Treaty does not limit the United States from providing patent requirements that are more favorable to the patent applicant or patent owner than those set forth in the Treaty or from prescribing requirements that are provided for in our substantive law relating to patents. Additionally, the Treaty is not intended to limit the United States from taking actions that it deems necessary for the preservation of its essential security interests. This Treaty is in harmony with current U.S. patent laws and regulations, with minor exceptions to be addressed in proposed legislation. Because U.S. law does not require that each patent application apply to only one invention or inventive concept, and because the U.S. Patent and Trademark Office assesses that implementing a provision of the Treaty requiring ``unity of invention'' for all national applications would require a substantive and impractical change to our Patent Law, I recommend that the following reservation be included in the U.S. instrument of ratification, as allowed by the Treaty: Pursuant to Article 23, the United States declares that Article 6(1) shall not apply to any requirement relating to unity of invention applicable under the Patent Cooperation Treaty to an international application. I recommend that the Senate give early and favorable consideration to this Treaty and give its advice and consent to its ratification, subject to the reservation described above. George W. Bush. LETTER OF SUBMITTAL ---------- Department of State, Washington, DC, September 5, 2006. The President, The White House. The President: I have the honor hereby to submit to you, with a view to its transmittal to the Senate for advice and consent to ratification, the Patent Law Treaty adopted at Geneva on June 1, 2000. This Treaty was adopted under the auspices of the World Intellectual Property Organization to simplify the formal procedures and reduce associated costs for patent applicants and owners of patents seeking to obtain and preserve their rights in inventions around the world. Fifty-three countries, including the United States, plus the European Patent Office, have signed the Treaty. As of January 2006, eleven countries have taken the necessary steps to become bound parties to the Treaty, which entered into force on April 28, 2005. The Treaty complements existing U.S. international obligations and furthers our policy related to prompting strong intellectual property protection. The Treaty, which is supported by U.S. interests, will make it easier for U.S. patent applicants and patent owners to obtain and maintain patents throughout the world, as well as in the United States, by simplifying and, to a large degree, harmonizing national and regional formal requirements associated with patent applications and patents. The Department of Commerce and the Office of the United States Trade Representative join the Department of State in requesting that the Patent Law Treaty be transmitted to the Senate for its advice and consent to ratification as soon as possible, subject to the reservation described within the enclosed document. Respectfully submitted, Condoleezza Rice. Enclosure: Key Provisions of the Patent Law Treaty KEY PROVISIONS OF THE PATENT LAW TREATY The Treaty sets forth, with one exception, the maximum procedural requirements that Contracting Parties may impose on patent applicants and patentees. The one exception is Article 5, which sets forth standardized requirements for obtaining a filing date from which Contracting Parties cannot deviate. Article 2 presents two general principles: that a Contracting Party shall be free to provide requirements which, from the viewpoint of patent applicants and patent owners, are more favorable than the requirements set forth in the Treaty and the Regulations (annexed to the Treaty), and that nothing in the Treaty or its Regulations is intended to be construed as limiting the freedom of a Contracting Party to prescribe requirements provided for in its substantive law relating to patents. Article 3 describes the patent applications and patents to which the Treaty applies, which include utility patent applications that are filed with the Office of a Contracting Party (which for the United States would be the United States Patent and Trademark Office (``USPTO'')). Article 5 provides a filing date standard. It mandates that a Contracting Party must, with only minor exceptions, provide a filing date for a patent application that is the date on which its Office has received the following elements: (i) an express or implicit indication to the effect that the submitted elements are intended to be an application; (ii) indications allowing the identity of the applicant to be established or allowing the applicant to be contacted; and (iii) a description of the invention to be patented. Furthermore, Article 5 requires Contracting Parties to provide for ``reference filing'' in which a reference to a previously filed application shall, for the purposes of the filing date, constitute the description required for the subsequent application. During the negotiations of the Treaty, the United States strongly supported the adoption of this Article, with the knowledge that the requirement for the inclusion of a claim for filing date purposes pursuant to section 111(a) of title 35 of the United States Code would have to be eliminated if the United States were to become a party to the Treaty. Additionally, a new subsection will have to be added to section 111 of title 35 to implement the ``reference- filing'' provision. Article 6 mandates that, except where otherwise provided in the Treaty, no Contracting Party shall require compliance with any requirement relating to the form or contents of an application which is different from, or additional to: (1) the requirements relating to form or contents which are provided for in respect of international applications under the Patent Cooperation Treaty (``PCT''), done in 1970 and to which the United States is a Party; (2) the requirements relating to form or contents compliance with which, under the PCT, may be required by Contracting Parties once the national stage processing or examination of an international application has started; and (3) any further requirements in the Regulations. Of note, the incorporation of the ``form or contents'' requirements from the PCT into this Article mandates the application of the PCT's ``unity of invention'' requirement for all national applications. This is the requirement that an application relate to one invention only or to a group of inventions so linked as to form a single general inventive concept. United States law does not contain such a requirement. The USPTO advises that U.S. law should not be amended to include a ``unity of invention'' requirement, as this is a substantive patent law matter that would be impractical for the USPTO to implement at this time. Article 23(1) permits the United States to take a reservation on this issue; our proposed reservation is addressed below. Article 7 and Rule 7 of the Regulations address requirements regarding representation. Article 7(2) provides that Contracting Parties maynot mandate representation for the filing of an application for filing date purposes, for the mere payment of a fee, or for other specified procedures. Article 8 and Rule 8 provide the basis upon which Contracting Parties may impose requirements relating to the form and means of transmittal of communications filed with its Office relating to a patent application or to an issued patent. These provisions specify that while generally Contracting Parties may exclude the filing of communications on paper, they must, if they adopt an electronic filing system, continue to accept the filing of communications on paper for the purpose of complying with a time limit. Article 10(1) provides that once a patent has been granted, it may not be revoked or invalidated because of non-compliance with certain formal requirements referred to in Articles 6 and 8, except where the non-compliance occurred as a result of fraudulent intention. Paragraph (2) provides that a patent cannot be revoked or invalidated without giving at least one opportunity for the patent owner to make observations on the intended revocation or invalidation. Article 11 and Rule 12 require that the Offices of all Contracting Parties provide either for extensions of time limits fixed by those Offices, or for continued processing of applications or patents, when applicants or patent owners fail to comply with time limits. However, this Article and Rule do not apply to time limits that are not fixed by an Office, such as those set by domestic law, Article 12 and Rule 13 require that all Contracting Parties provide for the re-instatement of rights of an applicant or owner where such person has failed to comply with a time limit for an action before an Office and such failure has the direct consequence of causing a loss of rights with respect to an application or patent, subject to certain conditions. U.S. law already provides for revival of rights along the lines of those prescribed by this Article. The proposed implementing legislation for this Treaty includes a provision that would consolidate those existing provisions and apply a standard for relief that is consistent with current U.S. practice. Article 13(1) requires Contracting Parties to provide for the correction or addition of a priority claim to an earlier application where a subsequent application is filed within the time limits prescribed in the Regulations. Paragraph (2) requires the restoration of priority rights where a subsequent application which claims or could have claimed the priority of an earlier application is filed after the expiration of the priority period but within the time limits prescribed by the Regulations and the failure to file within the priority period occurred in spite of due care having been taken or was unintentional. Paragraph (3) requires the restoration of the right of priority where there has been a failure to file a required copy of an earlier application. U.S. law currently permits correction and addition of priority claims, and during the negotiations the United States supported the concept of restoring priority rights for unintentional late filings. The acceptance of such delayed filings would require amendments to sections 119, 102(b) and 102(d) of title 35, United States Code. Articles 15 through 27 are the Administrative and Final provisions of the Treaty. Notably, Article 15 obliges each Contracting Party to comply with the patent-related provisions of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised and amended. The United States is a Party to that Convention and is already under an obligation to comply with those provisions. Article 22 applies the Treaty (other than Articles 5 and 6(1) and (2) and subject to the exclusion of proceedings in progress) to pending applications and patents which are in force, on the date on which the Treaty binds that Contracting Party pursuant to Article 21. Article 17 of the Treaty provides the Contracting Parties shall have an Assembly. The tasks of the Assembly, set forth in Article 17(2), include: dealing with matters concerning the maintenance and development of the Treaty and its application and operation; amending the Regulations; establishing Model International Forms; and performing other functions as are appropriate under the Treaty. Article 17(3) and (4) set forth voting procedures for the Assembly. Article 17(4) provides that the Assembly shall endeavor to take its decisions by consensus. Where, however, consensus cannot be achieved, decisions shall be taken by voting, in which each Contracting Party that is a State shall have one vote. Pursuant to Article 17(4)(ii), any Contracting Party that is an intergovernmental organization may vote, in place of its members, with a number of votes equal to the number of its Member States that are party to the Treaty. However, no such integovernmenta1 organization may participate in the vote if anyone of its Member States exercises its right to vote (either as a party to the Treaty or as a member of another such intergovernmental organization), and vice versa. Article 17(5) provides that with the exception of matters covered under Articles 14(2) and (3), 16(1) and 19(3), the decisions of the Assembly shall require two-thirds of the votes cast (abstentions do not count as votes). However, as is common practice in multilateral intellectual property treaties, certain provisions of the Treaty may be amended by a super- majority vote of the Assembly, without the need for a revision conference. In this Treaty, such amendment procedures apply to amendments to Articles 17(2) and 17(6), which are procedural in nature. Article 17(2) sets forth the responsibilities of the Assembly, as discussed, and Article 17(6) provides that the Assembly shall meet in ordinary session once every two years upon convocation by the Director General. According to Article 19, adoption of amendments to Articles 17(2) and 7(6) requires a three-fourths majority vote of the Assembly. Once adopted, any amendment to these two Articles enters into force for all Contracting Parties one month after written notifications of acceptance have been received by the WIPO Director General from three-fourths of those Contracting Parties which were members of the Assembly at the time the amendment was adopted. Article 20 provides that, in addition to States, certain intergovernmental organizations that are competent to grant patents and have their own legislation binding on all their member States concerning matters covered by this Treaty may become party to the Treaty. IMPLEMENTING LEGISLATION The legislation proposed to implement the Treaty states that it will take effect on the date that is one far after the date of enactment of the legislation. The proposed legislation also provides that it will apply to all patents, whenever granted, and to all applications for patents pending on, or filed after, the date that is one year after the date of enactment of the legislation. Because the changes required for compliance with the Treaty are viewed by industry as desirable in and of themselves, the effective date of the proposed legislation is not contingent on entry into force of the Treaty. The delay of one year for the entry into effect of the legislation is necessary to provide sufficient time for the USPTO to promulgate the necessary implementing regulations. RESERVATION TO ACCOMPANY UNITED STATES RATIFICATION Article 23 of the Treaty provides that Contracting Parties may make a reservation to the effect that Article 6(1), which mandates that Contracting Parties require compliance relating to form and content of a patent application which are provided for under the PCT, shall not apply to any requirement under the PCT relating to unity of invention. As noted above, in the context of the discussion of Article 6(1), United States law does not contain such a requirement. The USPTO advises that it considers this to be a substantive patent law matter that it does not recommend changing. Accordingly, the Department of State recommends that the following reservation be included in the U.S. instrument of ratification: ``Pursuant to Article 23, the United States declares that Article 6(1) shall not apply to any requirement relating to unity of invention applicable under the Patent Cooperation Treaty to an international application.'' CONCLUSION The Treaty is of great importance to the United States. Not only will it make it easier for United States patent applicants and patent owners to obtain and maintain patents throughout the world, but it will also lay the foundation for the next step in international patent reform--the harmonization of substantive matters.