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[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.

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