Text - Treaty Document: Senate Consideration of Treaty Document 109-12All Information (Except Treaty Text)

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[Senate Treaty Document 109-12]
[From the U.S. Government Publishing Office]

109th Congress 
 2d Session                      SENATE                     Treaty Doc.







 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 
    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 
    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


    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 
          (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 
    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.


    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 


    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