Patent Law Treaty: An outline

The Patent Law Treaty is an international multilateral agreement that was concluded and brought into existence through a diplomatic conference that was held at the World Intellectual Property Organization in Geneva, Switzerland. The diplomatic conference comprised 53 states as well as the European Patent Organization and was held from May 11 to June 2, 2000. The primary aim of the Patent Law Treaty is to streamline the formal procedures pertaining to national and regional patent applications. Moreover, the Treaty was also devised to make such procedures user-friendly in nature. As of 2021, over 59 states and the European Patent Organization are signatories to the treaty. The Patent Law Treaty is open to WIPO State members and States that are party to the Paris Convention for the Protection of Industrial Property. As per the Treaty, accession or instruments of ratification must be deposited to the Director-General of WIPO.

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Origination of the Patent Law Treaty

The origins of the Patent Law Treaty can be traced back to discussions on the ‘reform of substantive patent law’ which was initiated in 1984. The discussions surrounding the reform of patent law continued until 1991. This led to the genesis of the first diplomatic conference which aimed to conclude a “Treaty Supplementing the Paris Convention as far as patents are concerned”. The July 1993 diplomatic conference (which was the second part of the diplomatic conference) was never conducted. Subsequently, due to lack of domestic support, the United States had discontinued its discussions pertaining to patent law harmonization. Over the years, the discussions surrounding patent law harmonization were tapered down, thus leading to a “loss of momentum” on the subject on a global level. However, in 1995, the WIPO initiated sessions and discussions on patent law harmonization as well as matters pertaining to the formality requirements of patent procedures on national as well as regional levels. Consequently, five sessions of the ‘committee of experts on the patent law treaty' followed by three sessions of the ‘standing committee on the law of patents (SCP)’ were conducted in order to create a framework of the proposal which was to be presented to the ‘diplomatic conference for the adoption of Patent Law Treaty’. Finally, the diplomatic conference for the adoption of the Patent Law Treaty was held from May 11, 2002, wherein the Patent Law Treaty was concluded.

Purpose of Patent Law Treaty

Essentially, the Patent Law Treaty was drafted with the objective to harmonize formal procedures pertaining to patent applications that are propounded and set by regional as well as national patent offices. The adoption of the Patent Law Treaty has significantly reduced the involvement of the WIPO in terms of regulating patent applications. This is primarily because there are no centralized functions that need to be carried out by the WIPO. Instead, as per the treaty, the WIPO acts as a depository of the Patent Law Treaty. The Patent Law Treaty aims to simplify existing formal obligations related to patent filing and to significantly reduce the costs for patent applications. In order to simplify patent application filings, the Patent Law Treaty proposes the merging of national as well as international formal requirements in order to expedite patent applications.

Important changes that emanate from the Patent Law Treaty

• Requirements for filing dates

Firstly, as per the provisions of the Patent Law Treaty, the requirements for filing dates are standardized to a great extent. This is done in order to minimize the loss of the filing date which is imperative in the patent filing procedure. The Patent Law Treaty ensures that a filing date is provided to the application of an applicant if three pre-requisite conditions are met. Firstly, the papers that are submitted must include an express or implied indication that the documents being filed are intended to be a patent application. Secondly, it is mandatory to have information allowing the identity of the applicant to be established or allowing the applicant to be contacted. Lastly, it must consist of text which prima facie, appears to be a description of the invention. Once the aforementioned conditions are fulfilled by the applicant, as per the Patent Law Treaty, a filing date is to be granted to the applicant.

• Electronic filing and the functionalities of patent offices

Secondly, the Patent Law Treaty facilitates the implementation of electronic filing means. Thus, contracting parties are free to choose how they may receive communications (through electronic or paper correspondence). The Patent Law Treaty has greatly impacted the functionalities of patent offices as well. For instance, as per the Treaty, patent offices are restricted from regularly requiring evidence of matters that are described in the patent application unless there is a solid reason to doubt the veracity of the claims asserted in the patent application or if matters may have been described inaccurately due to translation errors. Additionally, it is mandatory for a patent office to notify an applicant when an application does not comply with the requirements. A patent office is also entitled to provide an opportunity to the applicant to rectify the errors as well.

• Provisions pertaining to maintenance fees

As far as fee payments related to patent applications are concerned, any person is entitled to pay maintenance fees. Patent offices are not required to appoint a legal representative for procedures including payment of fees and filing of applications solely for obtaining filing dates. The Patent Law Treaty has also brought changes with respect to the revival of abandoned applications as well as the manner in which late maintenance fees is paid. As per the Treaty, the reasons for the payment of the late maintenance fee have been changed from proving unavoidable delay to proving unintentional delay. Essentially, an applicant can file a petition which states that the late maintenance fee was due to unintentional reasons and hence, the application must be reexamined.

In sum, the Patent Law Treaty can prove to be an extremely beneficial provision for inventors. The changes that have been implemented through the Treaty ensure that the patent application process is significantly easier. Moreover, the Treaty enables an inventor to apply for patents in multiple nations through a single application.

Author: Sanjana, a BBA LLB student of  Symbiosis Law School (Hyderabad),  in case of any queries please contact/write back GLOBAL PATENT FILING at support@globalpatentfiling.com.