Why the Patent Law Treaty Won't Affect Your Practice

The Patent Law Treaty (PLT) will enter into force on April 28, 2005 with respect to the following ten States:

• Republic of Moldova
• Kyrgyz Republic
• Republic of Slovenia
• Slovak Republic
• Federal Republic of Nigeria
• Ukraine
• Republic of Estonia
• Kingdom of Denmark
• Republic of Croatia
• Romania

The Patent Law Treaty (PLT) aims at harmonizing national patent formalities throughout the world. Initially, a first draft Treaty contained provisions relating to substantive harmonization of patent applications and examination procedures, standards for obtaining a patent, and rights and remedies under a patent. However, during a Diplomatic Conference in 1991, divergent views on major issues became apparent, such as the issues of first-to-file and the grace period. In 1995, it was agreed that another approach for promoting harmonization, covering matters concerning the formality requirements of national and regional patent procedures, should be initiated by WIPO. Following this decision, the draft PLT has been discussed first in the Committee of Experts on the Patent Law Treaty, and, since 1998, in the Standing Committee on the Law of Patents (SCP).

In November 2000, the SCP, at its fourth session, agreed that first draft provisions for a future legal instrument should focus initially on a number of issues of direct relevance to the grant of patents, in particular, the definition of prior art, novelty, inventive step/non-obviousness, industrial applicability/utility, the drafting and interpretation of claims and the requirement of sufficient disclosure of the invention. The SCP further agreed that other issues related to substantive patent law harmonization, such as first-to-file versus first-to-invent systems, 18-month publication of applications and a post-grant opposition system, would be considered at a later stage.

In May 2001, the SCP, at its fifth session, considered a first draft of the "Substantive Patent Law Treaty" (SPLT), with Regulations and Practice Guidelines. The draft covered the six issues mentioned above, and the SCP also discussed the interface between the draft SPLT and the PLT and the PCT, and whether the scope of the draft SPLT should be limited to patentability and validity requirements, excluding issues related to the infringement of patents.

At its sixth session, in November 2001, the SCP discussed revised draft provisions and agreed on an approach to establishing a seamless interface between the SPLT, the PLT and the Patent Cooperation Treaty (PCT). It also agreed, based on a proposal by the Delegation of the United States of America, to create a Working Group on Multiple Invention Disclosures and Complex Applications. The Working Group received the mandate to address, in particular, the following issues: (1) unity of invention; (2) the linking of claims; (3) the number of claims; (4) the requirement of "clear and concise" claims and (5) special procedures to treat complex applications, such as mega-applications or large sequence listings.

While the SCP agreed in principle on a number of issues, such as the scope of the SPLT, the right to a patent, novelty, inventive step/non-obviousness or the requirement of sufficient disclosure, some provisions, such as patentable subject matter or the exceptions to patentability, "raised more fundamental issues." So don't hold your breath for patent harmonization; the work of the SPC is now in its ninth session.