[Senate Executive Report 110-6]
[From the U.S. Government Publishing Office]
110th Congress Exec. Rept.
SENATE
1st Session 110-6
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PATENT LAW TREATY AND REGULATIONS UNDER PATENT LAW TREATY
_______
November 27, 2007.--Ordered to be printed
Filed under authority of the order of the Senate of November 16, 2007
_______
Mr. Biden, from the Committee on Foreign Relations,
submitted the following
REPORT
[To accompany Treaty Doc. 109-12]
The Committee on Foreign Relations, to which was referred
the Patent Law Treaty and Regulations under the Patent Law
Treaty, done at Geneva on June 1, 2000 (the ``Patent Law
Treaty'' or ``Treaty'') (Treaty Doc. 109-12), having considered
the same, reports favorably thereon with a reservation as
indicated in the resolution of advice and consent, and
recommends that the Senate give its advice and consent to
ratification thereof, as set forth in this report and the
accompanying resolution of advice and consent.
CONTENTS
Page
I. Purpose..........................................................1
II. Background.......................................................2
III. Major Provisions.................................................2
IV. Entry Into Force.................................................3
V. Implementing Legislation.........................................3
VI. Committee Action.................................................4
VII. Committee Recommendation and Comments............................4
VIII.Resolution of Advice and Consent to Ratification.................6
I. Purpose
The Patent Law Treaty promotes the harmonization and
simplification of formal procedures for national and regional
patent applications and thereby works to reduce associated
costs for patent applicants and owners of patents seeking to
obtain and preserve their rights in inventions on a worldwide
basis.
II. Background
The Patent Law Treaty was negotiated under the auspices of
the World Intellectual Property Organization (WIPO), which was
established by the WIPO Convention in 1967 and is composed of
184 Member States, including the United States. Negotiations
were concluded and the text of the Patent Law Treaty was
adopted by a diplomatic conference on June 2, 2000.
The Patent Law Treaty builds on and complements the 1970
Patent Cooperation Treaty (the ``PCT''), which makes it
possible to seek patent protection for an invention
simultaneously in each of the countries that are a party to the
PCT by filing an ``international'' patent application (the
United States has been a party to the PCT since 1975). The
filing of an ``international'' patent application under the PCT
is followed by a national or regional phase during which the
relevant national or regional patent offices conduct
substantive patent examinations in order to decide if a patent
should be granted within their jurisdiction. The PCT does not
establish standards for national and regional applications and
procedures, which continue to vary while existing in parallel
to the PCT international application process. The Patent Law
Treaty helps to address this gap by focusing on the
harmonization of national and regional procedures, consequently
allowing patent applicants to pursue patent protection globally
at a reduced cost and with greater confidence. Where possible
and appropriate, the Patent Law Treaty has drawn from the
procedural requirements for international applications under
the PCT in order to streamline the overall application process.
III. Major Provisions
A detailed analysis of the Treaty may be found in the
Letter of Submittal from the Secretary of State to the
President, which is reprinted in full in Treaty Document 109-
12. A summary of the key provisions of the Treaty is set forth
below.
1. Standardized Filing Date
The PLT standardizes what patent applicants need to submit
to national or regional patent offices in order to obtain a
filing date, which is crucial for establishing priority in
obtaining a patent for an invention. Specifically, Article 5
requires that the Office of any Contracting Party must accord a
filing date to an application in compliance with three simple
formal requirements: (1) an express or implicit indication that
the information submitted is intended to be an application; (2)
information allowing the identity of the applicant to be
established or allowing the applicant to be contacted; and (3)
a description of the invention to be patented.
2. Maximum Procedural Requirements
The PLT harmonizes and simplifies the filing of patent
applications by establishing a maximum list of formal
requirements that any Contracting Party can require of a patent
applicant. Specifically, Article 6 establishes maximum
requirements for the form of an application, providing in
general that a Contracting Party cannot impose requirements
that are different from, or additional to, any requirement
applicable to international applications under the PCT, unless
those requirements are more favorable to the applicant.
3. Reduced Representational Requirements
Certain countries require that patent owners and applicants
appoint a representative when dealing with their Patent Office.
Article 7(2) provides that a Contracting Party may not mandate
representation for the filing of an application for filing date
purposes, for the payment of a fee, or for procedures specified
in the related Rules. This should reduce the cost of the
process for an applicant.
4. Electronic Processing
The PLT permits patent offices to rely more heavily on
electronic processing, rather than paper processing, but
mandates that offices accept paper communications from
applicants for the purpose of obtaining a filing date and for
meeting a time limit. Specifically, Article 8 and Rule 8
provide the basis upon which a Contracting Party may impose
requirements relating to the form and means of transmittal of
communications filed with its Patent Office relating to an
application or an issued patent. These provisions specify that
while generally a Contracting Party may exclude the filing of
communications on paper, it must, if it adopts an electronic
filing system, continue to accept the filing of communications
on paper for the purpose of obtaining a filing date or
complying with a time limit.
5. Restoration of Priority Rights
The PLT provides procedures for the restoration of priority
rights for inadvertently late filings. Specifically, Article 12
and related Rules provide that when a failure to comply with a
time limit directly results in a loss of rights with respect to
an application or patent, a Contracting Party must, upon
request by the applicant or owner, provide for the
reinstatement of rights if the patent office finds that the
failure occurred despite due care to comply, or, at the option
of the Contracting Party, if the failure to comply was
unintentional. A request for reinstatement may not be refused
without the opportunity for the requesting party to provide
observations. A fee and evidence may be required for a
reinstatement request.
IV. Entry Into Force
In accordance with Article 21, the Treaty will enter into
force for the United States three months after the date on
which the United States deposits its instrument of ratification
with the Director General of WIPO or on a later date indicated
in the U.S. instrument, but no later than six months after the
date the instrument is deposited.
V. Implementing Legislation
Implementing legislation is required for this Treaty. It is
expected, therefore, that the United States will not deposit
its instrument of ratification until this legislative process
is complete, so as to ensure that the United States is capable
of complying with its obligations under the Treaty.
Specifically, Title 35 of the United States Code must be
amended in order to comply with the Patent Law Treaty.
Implementing legislation will focus mainly on amendments
relating to the patent application filing date; relief in
respect of time limits and reinstatement of rights due to an
unintentional abandonment or delay; and restoration of priority
rights due to an unintentionally delayed filing of a subsequent
application. The Department of Commerce has submitted a draft
bill to Congress entitled the ``Patent Law Treaty
Implementation Act'' and it is currently under consideration by
the Committees on the Judiciary of the House and Senate.
VI. Committee Action
The committee held a public hearing on the Treaty on July
17, 2007 (a hearing print of this session will be forthcoming).
Testimony was received by Ms. Lois E. Boland, Director of the
Office of International Relations, U.S. Patent and Trademark
Office. On September 11, 2007, the committee considered the
Treaty, and ordered it favorably reported by voice vote, with a
quorum present and without objection.
VII. Committee Recommendation and Comments
The Committee on Foreign Relations believes that the Treaty
is an important tool to further promote and protect the
contributions of U.S. intellectual property owners on a
worldwide basis. The committee therefore urges the Senate to
act promptly to give advice and consent to ratification of the
Patent Law Treaty, as set forth in this report and the
accompanying resolution of advice and consent.
A. RESERVATION REGARDING THE UNITY OF INVENTION STANDARD
The executive branch has recommended, and the committee has
included in the resolution of advice and consent, a reservation
to ratification that would preserve the discretion currently
held by the U.S. Patent and Trademark Office (USPTO) to require
the division of national patent applications that cover two or
more distinct and independent inventions, which would otherwise
be indivisible under the Unity of Invention standard. The
reservation is permitted by Article 23(1) of the Patent Law
Treaty. Without the reservation, the Treaty would require the
USPTO to implement the Unity of Invention standard for all
national applications.
The need for a reservation on this matter was carefully
considered during the course of the committee's review of the
Treaty. Given that the Unity of Invention standard is accepted
in many foreign countries' patent laws and the USPTO currently
examines international patent applications and PCT national
stage applications using this standard, the question was raised
as to whether the United States should be moving to accept a
Unity of Invention standard with respect to all national
applications. Some interested groups representing patent owners
argue that full acceptance of the Unity of Invention standard
would be an improvement, as it would lead to reduced costs on
patent applicants and greater harmonization of national patent
application standards.
The USPTO has explained, however, that if the United States
were to adopt a Unity of Invention standard with respect to all
national patent applications, the rule change would necessitate
an increase in patent application fees in order to cover the
heightened workload and would lead to a higher number of
pending patent applications. Moreover, the USPTO is currently
examining the question of whether it would ultimately be
desirable to adopt the Unity of Invention standard for all
national applications. By including the reservation, the United
States is able to maintain needed flexibility while the USPTO
completes its review of this question.
B. TACIT AMENDMENTS
As in the case of other multilateral intellectual property
treaties, such as the Protocol to the Madrid Agreement
Concerning the International Registration of Marks, amendments
to certain provisions of the Patent Law Treaty may be adopted
by a super-majority vote of the Assembly and such amendments
will take effect for all once accepted by three-fourths of the
Contracting Parties, even absent the explicit consent of all
the Parties.
This tacit amendment procedure applies only with respect to
amendments to Articles 17(2) and 17(6), which are largely
procedural in nature. Article 17(2) sets forth the
responsibilities of the Assembly and Article 17(6) provides
that the Assembly shall meet in ordinary session once every two
years upon convocation by the Director General. In accordance
with Article 19(3), any proposals to amend these two provisions
shall be communicated by the Director General to the Parties at
least six months in advance of their consideration by the
Assembly. The committee expects the executive branch to inform
it of any proposed amendments subject to this tacit-amendment
procedure upon receipt of a proposed amendment from the
Director General and to consult with the committee in a timely
manner in order to determine whether Senate advice and consent
is necessary.
In addition to the tacit amendment process described above,
the Assembly established in the Patent Law Treaty may, under
Article 17(2), amend the Regulations under the Patent Law
Treaty to which the Senate has also been asked to give its
advice and consent. In accordance with Article 17(4), the
Assembly endeavors to take decisions by consensus; however, if
a decision cannot be arrived at by consensus, the matter may be
decided by a vote and consequently, unless the Regulations
specifically require unanimity for the amendment at issue, the
Regulations can be amended by a three-fourths vote of the
Assembly pursuant to Article 14(2).
The committee recognizes that a tacit amendment procedure
for amending regulations annexed to a treaty is fairly common
in multilateral intellectual property treaties negotiated under
the auspices of WIPO, many of which have been ratified by the
United States. Allowing the Assembly to amend the Regulations
in this manner makes it possible for the technical
implementation of the treaty to evolve without going through
the more formalized and standard amendment process, which
involves a revision conference and frequently takes years to
effect. Amendments effected through this mechanism may not, as
a matter of law, rise to the level of those that require the
advice and consent of the Senate. The executive branch has
assured the committee that there is an inherent limitation on
any implementing regulations the Assembly can consider, because
the Regulations cannot exceed and can only implement the Patent
Law Treaty's provisions. An amendment to the Regulations so
limited should not, in the normal course, require advice and
consent. If there is any question, however, as to whether an
amendment to the Regulations goes beyond the implementation of
specific provisions in the Patent Law Treaty, the committee
expects the executive branch to consult with the committee in a
timely manner in order to determine whether Senate advice and
consent is necessary.
VIII. Resolution of Advice and Consent to Ratification
Resolved (two-thirds of the Senators present concurring
therein),
SECTION 1. SENATE ADVICE AND CONSENT SUBJECT TO RESERVATION
The Senate advises and consents to the ratification of the
Patent Law Treaty and Regulations under the Patent Law Treaty,
done at Geneva on June 1, 2000 (Treaty Doc. 109-12), subject to
the reservation of section 2.
SECTION 2. RESERVATION
The advice and consent of the Senate under section 1 is
subject to the following reservation, which shall be included
in the United States instrument of ratification:
Pursuant to Article 23, the United States of America
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.