Patent Law Treaty, Promises Not Delivered

3 years ago by in International IP Laws Tagged: , , , ,

On 19 December 2011, Cees Mulder will defend at Maastricht University a PhD thesis entitled: On the Alignment of the European Patent Convention and the Patent Cooperation Treaty with Requirements of the Patent Law Treaty.  The Patent Law Treaty (PLT) 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. The PLT provisions refer as much as possible to the provisions of the Patent Cooperation Treaty (PCT) and its Regulations in order to keep the PLT as simple as possible and to avoid creating different international standards regarding patent formalities with respect to national and international applications. The harmonization of procedures under national and regional patent laws was expected to result in easier access to worldwide patent protection and cost reduction for applicants in those procedures.

The Patent Law Treaty does not harmonize substantive patent law; instead, the approach is more to the administrative side of the patent process. Inventors seeking patent protection must follow certain rules which vary from country to country. The PLT aims to simplify the rules and make them the same for all Contracting Parties. As is discussed in Mulder’s thesis, the PLT did not achieve this goal.

During the last decade, requirements of the Patent Law Treaty have been implemented in, for instance, the Patent Cooperation Treaty (PCT text, April 2007) and in the European Patent Convention (“EPC 2000”; December 2007, for full text click here). When studying and comparing the outcome of the implementation, not much “harmonization and streamlining” can be detected between the PCT and the EPC. In fact, there was more coherence between the EPC and the PCT with respect to requirements for filing patent applications before both patent treaties were aligned with the PLT. This is all the more peculiar when it is taken into account that more than 50% of the patent applications received by the European Patent Office (EPO) are not European patent applications but international applications, for which the EPO in its capacity of “receiving Office” has to apply the provisions of the PCT. The PCT provisions deviate in crucial aspects from the corresponding provisions in the EPC, such that the response from the EPO is significantly different depending on the treaty under which the application was filed. This should not be the case.

By way of example, if an applicant or an inventor files a European patent application at the European Patent Office (EPO) under the provisions of the European Patent Convention (EPC) or, alternatively, files an international application at the EPO, as receiving Office under the provisions of the Patent Cooperation Treaty (PCT), the same EPO has to deal with totally different requirements with respect to:

  • The accordance of a date of filing (that is: the “providing of a date on which the patent application has been filed”)
  • Filing an application by reference to a previously filed application, or
  • Filing missing parts of the description or missing drawings.

In practice, this leads to “strange” situations, such as, e.g.:

  • Upon receiving a European patent application, the EPO will accord a date of filing if the applicant only files a description; claims are not a filing date requirement.
    However, the EPO acting as receiving Office under the PCT, will not accord an international filing date to an international application if the applicant does not file at least one claim.
  • Filing an international application by reference to a previously filed application is not possible under the PCT, whereas this is allowable under the provisions of the EPC.
  • The EPO, acting as receiving Office for an international application, allows an applicant to file (an entire set of) claims or the entire description as “missing element”, whereas this is clearly not allowable under the provisions of the EPC where only “missing parts of the description or missing drawings” can be filed.
  • If a missing element or part is to be added later on into an international application, based on an earlier priority application, such priority claim must have been made on the original filing date, i.e. the “date on which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office”.
    If an applicant requests insertion of a missing part of the description or missing drawings into an already filed European patent application, based on an earlier priority application, the priority claim in question may be added later on.

While aligning the various national patent laws and regional patent treaties with requirements of the relatively new Patent Law Treaty (PLT), each of the involved national or regional patent Offices seemingly interpreted the PLT from their own perspective without much consultation with colleague Offices.

For the purpose of the thesis, Cees Mulder selected and studied a number of subjects of the Patent Law Treaty:

1)      Requirements for the accordance of a filing date with focus on the following three issues:

  • The basic requirements for according a filing date;
  • The filing date in those cases where a missing part of the description or a missing drawing is filed;
  • The filing of an application by reference to a previously filed application.

2)      Relief in respect of time limits including continued processing and reinstatement of rights, after a finding of due care or unintentionality by the Office.

3)      Restoration of the priority right.

Conclusions

When the Patent Law Treaty was negotiated in the nineties of the previous century, the emphasis was on making the filing of a patent application as simple and user‑friendly as possible. Inventors and small business enterprises were afforded easy access to filing a patent application. The requirements for the accordance of a filing date were reduced to an absolute minimum, rendering it practically impossible to miss this date. As a consequence, procedures had to be put in place at the Offices allowing the applicant to meet additional requirements (such as furnishing a set of claims) at a later stage. All this laid a heavy administrative burden on the Offices which have to deal with such applications.

In the present time, the focus of the national Offices and intergovernmental organizations dealing with national and regional patent applications, is moving away from the needs of the applicants to issues such as how to deal with huge numbers of patent applications in a more efficient manner. Therefore, the procedural requirements of the Patent Law Treaty are regarded as counterproductive to achieving that objective. Perhaps, this is also one of the reasons why accession to the Patent Law Treaty of countries and intergovernmental organizations, such as the European Patent Organization, takes place at a slow pace.

In his thesis, Cees Mulder comes to the following conclusions:

(i)        The Patent Law Treaty did not achieve the goal of streamlining and harmonizing formal requirements set by national or regional Patent Offices for the filing of national or regional patent applications and the maintenance of patents.

(ii)        The Patent Law Treaty contains too many optional requirements which may be implemented as compulsory (“may require”) by PLT Contracting Parties allowing them too much freedom when implementing requirements of the Patent Law Treaty in their national and regional patent laws.

(iii)        The World Intellectual Property Organization could play a more active role in issuing instructions and guidelines on how to implement the Patent Law Treaty in national and regional patent laws. A preferred manner of implementing the Patent Law Treaty could be advocated.

(iv)        The alignment of the European Patent Convention with requirements of the Patent Law Treaty was done in an exemplary manner. In line with their original intention, the European Patent Organization should accede to the Patent Law Treaty.

(v)        In view of the “intimate” relationship between the Patent Law Treaty and the Patent Cooperation Treaty, the latter Treaty could and should have been better aligned with the requirements of the Patent Law Treaty. Too many crucial provisions of the Patent Law Treaty have not been adopted by the Patent Cooperation Treaty.

(vi)        The large differences in the degree of alignment of the European Patent Convention with requirements of the Patent Law Treaty as compared to the Patent Cooperation Treaty, obliges the European Patent Office to respond in a substantially different manner depending on whether an applicant files a European patent application or an international application. This counteracts the aim of streamlining the Patent Law Treaty.

(vii)        The provision in the Patent Law Treaty allowing an applicant to file a missing part of the description or a missing drawing based on content which is “completely contained” in an earlier application from which priority is claimed, while maintaining the originally accorded filing date, is a powerful tool because it permits an applicant to complete his application without losing his priority claim.

(viii)        The option of “filing an application by reference to a previously filed application” as prescribed in the Patent Law Treaty has become outdated by advances in transmission technology and should be abolished.

(ix)        The obligation of a PLT Contracting State to provide for relief in respect of time limits either by means of providing an extension of the time limit or by providing continued processing is one of the major achievements of the PLT.

(x)        The obligation of a PLT Contracting State to provide for restoration of priority rights is a powerful instrument to rectify mistakes in relation to priority claims, allowing applicants to counteract the unintentional loss of such rights.

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Click here for documentation on the EPC 2000 revision

Click here for the so called “Travaux préparatoires EPC 2000″

Click here for the PLT Contracting Parties

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