CASRIP Newsletter - Spring 1996, Volume 3, Issue 1
Report on the First Session of the Committee of Experts on the Patent Law Treaty in Geneva, December 11 to 15, 1995
by Maria Trinidad Arriola
From December 11 to 15, 1995, the Committee of Experts on the Patent Law Treaty (hereinafter referred to as "the Committee of Experts") met in Geneva to discuss the harmonization of patent laws with respect to matters concerning the formalities of national and regional patent applications and the use of model international forms. This diplomatic conference was the result of decisions made by the General Assembly of WIPO and the Assembly of the Paris Union during their meetings in September and October 1995. Delegates from 67 member States of WIPO and the Paris Union, representatives of the European Communities, the European Patent Office, and the Organization of African Unity, as well as representatives from 24 non-governmental organizations, which took part in the session in an observer capacity, were present at the meeting.
The discussions focused on documents prepared by the International Bureau of WIPO which included a draft of the provisions of the Patent Law Treaty (the Draft Treaty) and draft Regulations (the Draft Regulations) pertaining to the formalities of national and regional patent applications. The session also addressed a draft of model international forms.
After unanimous election as Chairman for the session, Mr. Shozo Uemura of Japan opened with a speech emphasizing the importance and significance of the harmonization of patent laws for patent protection and stressing that the success of such harmonization should be in the interest of users of the system. Mr. Uemura also noted that the ability to harmonize such formalities could have a significant impact on the harmoniization of the substantive laws.
During the Opening Statements which followed Mr. Uemura's welcome, the majority of delegates from both State members of WIPO and/or the Paris Union, as well as from non-governmental organizations, expressed their support for the Draft Treaty on formalities and procedures in the interest of users and national offices for the purpose of reducing costs, facilitating
certainty, and saving time and expense. At the same time, many delegates expressed their regret over not being able to continue negotiations on substantive patent law harmonization and hoped that agreement on the harmonization of formalities would eventually facilitate substantive harmonization.
Although the US delegation reiterated that it was still unable to continue negotiations regarding the substantive provisions of patent laws, it stated that it did not object to the undertaking of discussions regarding possible harmonization of patent formalities. The representative of the AIPLA, whose organization supports substantive harmonization, expressed disappointment with the inability to continue discussions on substantive harmonization but understood the position of the US delegation in view of the difference of opinion within the US regarding harmonization.
During the rest of the week, the Committee of Experts discussed each provision of the Draft Treaty and of the Draft Regulations. The following report summarizes the major points of discussion without reflecting all observations made.
Draft Article 1: Abbreviated Expressions. Draft Article 1 focused primarily on definitions. During discussion on this Article, the International Bureau explained that the Draft Treaty was formulated to take into account different systems such as electronic or "paperless" filing. Article 1 did not pose much controversy.
Draft Article 2: Application. Draft Article 2 concerned the contents of a patent application as well as formalities regarding the request, the language, and evidence in support of declarations contained in the application. At the outset, the International Bureau stressed that Contracting Parties were not compelled to require all of the provisions under this article, but that the elements listed therein represented a maximum of what could be required by a Contracting Party. Although some delegates felt that certain elements listed in Article 2 ventured somewhat into substantive requirements, many delegations approved of the article as proposed.
A common concern was whether some of the elements listed were purely formal requirements, or whether they ventured somewhat into substantive requirements. For example, with respect to the requirement of "a description disclosing the invention," the discussion focused on whether this item encompassed certain requirements such as genetic sequence listings, references to deposits of microorganisms and computer program listings, or whether it was necessary to list such items separately. It was pointed out that such requirements could fall within the substantive definition of description.
Another point of discussion was the scope of Article 2. Several delegates questioned whether this article precluded requirements of paper size, document quality, line spacing and fitness for reproduction. The interest in this issue rested on the fact that such features were important in converting a document to electronic form. Thus, two alternatives were suggested: 1) clarifying that such document quality requirements were not prohibited; or 2) harmonizing such requirements. Regardless of which alternative prevailed, several delegations underlined that any such requirement should be consistent with those of the PCT.
The issue with respect to electronic filing was also important due to the fact that Japan has already implemented a system of electronic filing, and other offices, such as the EPO, were planning on introducing a system of electronic filing. Although some delegates thought it was still premature to discuss the harmonization of electronic filing, several representatives of non-governmental organizations agreed that it was important to achieve harmonization with regard to the standards applicable for electronic filings to the effect that attorneys around the world could file electronic applications without going through a local attorney. In conclusion, it was decided that the question of electronic filing would be addressed in the next draft of the treaty.
Another important topic of debate was the issue of languages. It was generally recognized that the requirement of translations significantly added to the cost of obtaining worldwide patent protection and presented a particular burden to applicants. However, several delegates drew attention to specific political and cultural aspects of the language question and to the legal consequences of the granting of a patent which implied that the content of the patent should be available in the national language. The problem was compounded by the fact that some offices are prohibited by national law to accept documents in foreign languages.
Thus, to reduce costs with respect to translations, several suggestions were made. Several delegates suggested that the filing of an application be permitted in any language, or alternatively in only one of the WIPO languages, provided that a translation was submitted within a reasonable time period. Many national offices already admit such a practice. Another proposal suggested that in light of the fact that English was becoming an international language, the treaty should have one international language, English, which would be accepted by every office. This suggestion incited criticism from several European delegations. It was finally agreed that the question of languages would be dealt with in the next session of the Committee of Experts.
Draft Article 3: Representation; Address for Service. Draft Article 3 focused on the use of an appropriate representative for the purpose of any procedure before a patent office. Several delegates suggested that this Article should prohibit Contracting Parties from requiring local representation for filing an application or paying maintenance fees. After debates as to when a representative was necessary, it was agreed that the next draft would clarify that the Draft Treaty did not regulate what a Contracting Party may require of its own nationals or domicilaries. The International Bureau also agreed to study the question of including a provision in the Draft Treaty stating that a representative was not required for the filing of an application.
Article 3, which also deals with powers of attorney, obliges offices of Contracting Parties to accept powers of attorney which relate to more than one application and/or patent as well as general powers of attorney. The International Bureau explained that under this provision, offices of Contracting Parties were precluded from prohibiting the limitation of powers of attorney to certain acts. Some delegations were concerned with the administrative difficulties associated with such a provision.
Draft Article 4: Signature. Draft Article 4 focused on the acceptable forms of a required signature. For paper communications, acceptable signatures included a handwritten signature or other forms such as a printed or stamped signature or the use of a seal. Communications by electronic means are considered signed if the transmittal identifies the sender of the communication. The provisions of Article 4 were generally approved as proposed.
Draft Article 5: Request for Recording of Change in Name or Address. Draft Article 5 related to procedures regarding the change in name or address of the applicant or owner. The provisions of Article 5 were generally approved as proposed.
Draft Article 6: Request for Recording of Change in Ownership. Draft Article 6 pertained to requests for recording a change in the applicant or owner. Several delegations agreed that either this article or a separate article should cover the request for the recording of a licensing agreement.
Much of the discussion regarding the request for a recording of a change in ownership centered on who was required to sign the request. While some delegations suggested having both the applicant and the new applicant, or the owner and the new owner, sign the request to prevent fraud, other delegations rejected this suggestion reasoning that it was often impossible to obtain a signature from the applicant or owner. The International Bureau agreed to further study the possibility of including a clause requiring a Contracting Party to notify both former and new owners of a change in ownership.
Draft Article 7: Request for Correction of a Mistake. Draft Article 7 concerned the request to correct a mistake related to an application or patent. The goal of this provision was to provide a simple mechanism for an applicant to correct a mistake found in several applications by filing a single request. The International Bureau indicated that because it would hardly be feasible to agree on a definition of a "mistake" at the international level, the provisions of this article made it clear that the definition of the term would be the prerogative of national legislation.
The debate on Article 7 concerned the submission of replacement pages for the correction of any mistake. Although the International Bureau commented that the Article in its present version does not allow a requirement for replacement pages, it agreed to further study approaches for accomodating such a requirement in the next draft.
Draft Article 8: Opportunity to Make Observations, Amendments and Corrections in Case of Refusal. The provisions of this Article were intended to protect users from loss of rights due to mistakes of the office. Many delegations expressed full support for the philosophy behind this Article, but were concerned about the scope of its provisions. In particular, concerns were raised regarding whether an opportunity would have to be given in the case where an application was deemed to be withdrawn because of the lapse of a time period, such as non payment of maintenance fees. Many felt that it was not necessary to allow an opportunity to make observations in such cases and that the added cost of notifying patent owners of such time limits would be an unnecessary burden on patent offices.
The International Bureau explained that this provision was intended to cover all communications requiring a signature, and to apply to refusals based on substantive as well as formal grounds.
The International Bureau agreed to examine Articles 41 and 62 of the TRIPS Agreement, regarding the acquisition and maintenance of intellectual property rights, to ensure compatibility with those provisions and to consider including a provision requiring judicial review in order to avoid arbitrary or capricious decisions of a national office.
Draft Article 9: Regulations: The provisions of Article 9 related to the significance of the Regulations annexed to the Treaty. The Article was approved as proposed.
In addition to the evaluation of the 9 Articles of the Draft Treaty, the Committee of Experts also discussed the corresponding Regulations as well as the Model International Forms. The Regulations were generally approved as proposed. The Model International Forms, which covered the Application for the Grant of a Patent, Power of Attorney, Request for Recording of Change in Name(s) or Address(es), Request for Recording of a Change in Ownership, Certificate of Transfer, and the Request for Correction of Mistake(s), also did not raise any particular comments other than the possibility of combining forms for simplicity.
In concluding the session, the question was submittedwhether additional topics should be included in the Draft Treaty at the next meeting. Several delegations in their opening statements had already suggested that several topics such as unity of invention, identification of inventor, belated claiming of priority and filing date requirements should be included in this treaty. It was commonly recognized that in order to be attractive to users as well as Contracting Parties, the Draft Treaty should have the broadest possible content. However, other delegations were opposed to broadening the scope of the treaty at this stage and preferred only to deal with harmonizing procedural aspects.
The Director General of WIPO indicated that two more sessions of the Committee of Experts would be held in 1996. The next session would be from June 17 to 21, before the meetings of the WIPO Governing Bodies, and the other from November 18 to 22. He suggested that the next draft should include provisions relating to the filing date of an application and unity of invention. In June, the Committee of Experts would have an opportunity to discuss which additional topics, if any, should also be included in the documents for the November session.