Patent Law Treaty: Promises Not Delivered‐How the Negotiations Resulted in Ambiguities in the Treaty

• Published date: 01 November 2014
• DOI: http://doi.org/10.1002/jwip.12028
• Date: 01 November 2014

Patent Law Treaty: Promises Not Delivered-How the

Negotiations Resulted in Ambiguities in the Treaty

Cees Mulder

Maastricht University, The Netherlands

The Patent Law Treaty was drafted with the aim to “streamline and harmonize” formal requirements set by national or

regional Patent Offices for the filing of national or regional patent applications and the maintenance of patents. In this

Article, a number of core issues of the Patent Law Treaty has been selected: requirements for the accordance of a filing

date, relief in respect of time limits and restoration of priority. A conclusion of this Article is that thegoals of the Patent

Law Treaty were not achieved by the Treaty as concluded. One of the reasons is that the Treaty contains too many

optional requirements (“may require”), which may be implemented as compulsory by the Contracting Parties,

allowing them too much freedom when implementing requirements of the Treaty into their national and regional

patent laws. This defies the aim of harmonization and streamlining of the Patent Law Treaty. The negotiation history is

described and discussed with emphasis on what went wrong during the negotiations. Reasons for the failure of the

Patent Law Treaty are discussed and recommendations for repair are given.

Keywords patent law treaty; negotiations; effect of PLT; filing date requirements; relief in respect of time limits;

continued processing; reinstatement of rights; restoration of priority right

Introduction to Patent Law Treaty

The Patent Law Treaty (PLT) was concluded during a Diplomatic Conference held at the World

Intellectual Property Organization (WIPO) in Geneva (Switzerland) from May 11 to June 2, 2000.

1

The

PLT is open to States member of WIPO and/or States party to the Paris Convention for the Protection of

Industrial Property;

2

it is also open to certain intergovernmental organizations, such as the European

Patent Organization.

3

Instruments of ratification or accession must be deposited with the Director General

of WIPO. The PLT entered into force on April 28, 2005.

The PLT emanated from discussions on the reform of substantive patent law that began in 1984.

Those discussions continued until June 1991, during which a first part of a Diplomatic Conference to

conclude a “Treaty Supplementing the Paris Convention as far as Patents are Concerned.”

4

The second

part of the Diplomatic Conference was scheduled for July 1993, but did never take place. In January 1994,

the United States discontinued substantive patent law harmonization discussions due to a lack of domestic

support for the effort.

5

The international community was disappointed by the ensuing “loss of momentum”

on the subject of substantive patent law harmonization as a result of the position of the United States.

In 1995, it was agreed that another approach for promoting harmonization, covering matters

concerning the formality requirements of national and regional patent procedures, would be initiated by

WIPO.

6

Five sessions of the Committee of Experts on the Patent Law Treaty,

7

and three sessions of its

successor, the Standing Committee on the Law of Patents (SCP),

8

were held to develop the “Basic

Proposal” to be presented to the Diplomatic Conference for the Adoption of the Patent Law Treaty, which

was held from May 11 to June 2, 2000.

9,10

The Final Act of the PLT witnessing the Diplomatic Conference and its outcome, was signed by 104

countries and 3 Intergovernmental Organizations. At present 66 countries signed the PLT. In 2005 the

PLT was in force in 11 countries; currently (October 2014) there are 36 Contracting Parties.

11

The PLT includes 27 articles and 21 rules. In addition, six “Agreed Statements” were adopted at the

end of the Conference.

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160 ©2014 John Wiley & Sons Ltd

The Journal of World Intellectual Property (2014) Vol. 17, no. 5–6, pp. 160–190

doi: 10.1002/jwip.12028

Aim and Purpose of the PLT

Since the adoption of the PLT, the involvement of the WIPO has diminished as there are no centralized

functions. The International Bureau of WIPO merely acts as a depository of the PLT and is not in a

position to give an official interpretation of the Treaty; such interpretation being in the exclusive

competence of the PLT Contracting Parties.

The PLT aims at harmonizing and streamlining formal procedures relating to national and regional

patent applications and maintenance of patents. In spite of the goal of harmonization, the PLT does not

establish a uniform procedure for all PLT Contracting Parties by leaving many requirements optional,

thereby allowing divergence in implementation between PLT Contracting Parties.

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The PLT sets forth, with one exception, maximum formal/procedural requirements that Contracting

Parties may impose on patent applicants and patentees. Otherwise, PLT Contracting Parties are free to

provide requirements that, from the viewpoint of applicants and owners, are more favorable than PLT

requirements.

14

The one exception to this freedom are the filing date requirements, which are both a

maximum and a minimum, i.e., a so-called “filing-date standard.”

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The aim of the PLT is to simplify the formal obligations and to reduce the associated costs for patent

applicants and owners of patents in obtaining and preserving their rights in inventions in many countries of

the world. The PLT complements the existing international obligations and fosters the policy of strong

intellectual property protection. The PLT simplifies the filing of an application and obtaining and

maintaining of patents throughout the world and, to a large extent, promotes the merging of national and

international formal requirements associated with patent applications and patents.

In a birds’ eye view, the principle features of the PLT offer the following advantages:

The PLT simplifies and minimizes application requirements for obtaining a filing date;

The PLT imposes a maximum on the formal requirements that a PLT Contracting Party may impose;

The PLT eases representation requirements for formal matters;

The PLT provides a basis for means of communications, including the electronic filing of applications;

The PLT provides relief in respect of time limits that may be imposed by the Office of a PLT

Contracting Party and re-instatement of rights where an applicant or owner has unintentionally failed to

comply with a time limit and that failure has the direct consequence of causing a loss of rights; and

The PLT provides for correction or addition of priority claims and restoration of priority rights.

A main feature of the PLT is that it prov ides standardized formalit y requirements for patent

applications, which are file d with a national or regional pat ent Office. Instead of defining th ese

requirements again or differen tly in the PLT, it was decided to inco rporate by reference the provisi ons

of the PCT and its Regulations , wherever appropriate, into the PLT (see Mu lder (2011a) for a discussion

of the issue of “Incorporation by refer ence of PCT provisions into the PLT”). Th e main reason for

this is that the PCT already regu lates in detail the formality r equirements with respect to pa tent

applications.

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From the viewpoint of inventors, applicants and patent attorneys, standardization and simplification

of the formality requirements lead to a reduced risk of formality errors resulting in a less frequent loss of

rights. On the other hand, Offices may operate more efficiently because of the simplification of procedures

and the streamlining of the process. Eventually, this will result in cost reductions on both sides.

After the failure in 1994 of the earlier “Treaty Supplementing the Paris Convention as far as Patents

are Concerned,” there was an eagerness to conclude a new Treaty which was limited to cover matters

concerning the formality requirements of national and regional patent procedures. This pushing ahead has

resulted in the introduction of weaknesses into the PLT. In particular, the achievement of the goal of the

Patent Law Treaty Cees Mulder

©2014 John Wiley & Sons Ltd

The Journal of World Intellectual Property (2014) Vol. 17, no. 5–6 161