PLT and SPLT treaty

Historical Overview of International Patent

Developments
• Paris Convention
• Patent Cooperation Treaty
• Patent Law Treaty
• Agreement on the Trade Related Aspects of Intellectual
Property Rights (TRIPs)
• Patent Cooperation Treaty Reform
• Draft Substantive Patent Law Treaty
• Review and Amendment of TRIPs and Doha Declaration
• European Patent Convention
 Historical Overview of International Patent
Developments
• Paris Convention, 1883
• Patent Cooperation Treaty(PCT)
• Patent Law Treaty
• Agreement on the Trade Related Aspects of Intellectual
Property Rights (TRIPs)
• Patent Cooperation Treaty Reform
• Draft Substantive Patent Law Treaty
• Review and Amendment of TRIPs and Doha Declaration
• European Patent Convention
Patent Law
Treaty
• The main achievement of the SCP in the recent past was the negotiation of the
Patent Law Treaty (PLT) and its Regulations on patent formalities and
procedures.

• The patent law treaty was adopted by a Diplomatic Conference on June 1, 2000.

• Patent Law Treaty (PLT) harmonizes and streamlines formal procedures in

respect of national and regional patent applications and patents. It makes the
formal procedures more user-friendly.

• “With the significant exception of the filing date requirements, the PLT provides
maximum sets of requirements, which the Office of a Contracting Party may
apply. This means that a Contracting Party is free to provide for requirements
that are more generous from the viewpoint of applicants and owners, but are
mandatory as to the maximum that an Office can require from applicants or
owners.”
• The Treaty contains, in particular, provisions on the following issues:
1. Requirements for obtaining a filing date-
Three absolute requirements were standardized for the applicant to obtain the
filing date,
I. an indication that it is an application for a patent for an invention
II. identification that would allow the office to identify or to contact the applicant.;
however, a Contracting Party is allowed to require indications on both.
III. A part which appears to be a description,
2. A standardized set of formal requirements including the requirements
relating to form or contents of international applications under the PCT,
including the contents of the PCT request Form and the use of that
request Form accompanied by an indication that the application is to be
treated as national application. This will eliminate or reduce procedural
gaps between
national, regional and international patent systems;
3. The establishment of standardized Model International Forms
was agreed upon, which will have to be accepted by the Offices
of all Contracting Parties;
4. Simplified procedures before the patent Offices, which will
contribute to a reduction of costs for applicants as well as for
the Offices.
5. The PLT provides procedures for the avoidance of unintentional
loss of substantive rights as a result of the failure to comply
with formality requirements or time limits. These include the
obligation of Offices to notify the applicant or other concerned
person, extension of time limits, continued processing,
reinstatement of rights and restrictions on revocation /
invalidation of a patent for formal defects, where they were not
noticed by the Office during the application stage;
4) The implementation of electronic filing is facilitated, while ensuring the
coexistence of both paper and electronic communications. The PLT provides that
Contracting Parties are allowed to exclude paper communications and to fully
switch to electronic communications after June 2, 2005. However, even after that
date, they will have to accept paper communications for the purpose of obtaining a
filing date and for meeting a time limit. In this connection, the Agreed Statement
stipulates that industrialized countries will continue to furnish support to
developing countries and countries in transition for the introduction of electronic
filing.
• The PLT was concluded on June 1, 2000, and is open to States members of WIPO
and/or States parties to the Paris Convention for the Protection of Industrial
Property. It is also open to certain intergovernmental organizations. Instruments of
ratification or accession must be deposited with the Director General of WIPO.
• The PLT entered into force on April 28, 2005.It has come into force in 17
contracting states including UK (as on 4thmarch2008). Patent law treaty explicitly
excludes the substantive provisions. The patent application has to be prosecuted in
contracting states according to their substantive requirements for patent.
• In September-October 2007, PLT assembly adopted
Model International Forms:
– Request for Recordation of Change in Applicant or Owner –
– Certificate of Transfer
– Request for Recordation of a License/Cancellation of the
Recordation of a License
– Request for Recordation of a Security Interest/Cancellation
of the Recordation of a Security Interest
(For all these forms entry into force is on April 1, 2008)
 Country based implementations of PLT

• In December 2012, the US Congress passed

the Patent Law Treaties Implementation Act of
2012 to implement the provisions of the
Patent Law Treaty
 Historical Overview of International Patent
Developments
• Paris Convention
• Patent Cooperation Treaty
• Patent Law Treaty
• Agreement on the Trade Related Aspects of Intellectual
Property Rights (TRIPs)
• Patent Cooperation Treaty Reform
• Draft Substantive Patent Law Treaty
• Review and Amendment of TRIPs and Doha Declaration
• European Patent Convention
 Draft
Substantive Patent Law
Treaty
• Nov. 2000 – WIPO’s Standing Committee on the Law
of Patents(SCP) at its fourth session initiate work on
harmonisation of SPL with a view to conclude SPLT
• SCP agreed to focus initially a no. of issues of direct
relevance to grant of patents, definition of Prior Art,
Novelty, Inventive Step/non-obviousness, Industrial
Applicability, Utility, drafting and interpretation of
claims and requirement of sufficient disclosure of the
invention
• May 2001 – SCP at its Fifth Session considered a first
draft of the SPLT including draft ‘Regulations and
Practice Guidelines’
• Nov 2001 – SCP revised draft provisions, agreed
to an approach to establish a seamless interface
between SPLT, PLT and PCT
• It agreed to create a ‘Working Group on Multiple
Invention Disclosures and Complex Applications’
to work on issues such as unity of invention,
linking of claims, number of claims, requirement
of ‘clear and concise’ claims, special procedures to
treat complex applications
• In Subsequent meetings of SCP, the contents of
Draft SPLT broadened.
• 2004- 10th Session of SCP – US, Japan and EPO submitted a
Joint Proposal to focus on a initial package of priority items
including definition of ‘prior art, grace period, novelty and
inventive step’ as a proposal to General Assemblies.
• 2005 - But no consensus was reached, the Director General
submitted recommendations to SCP. Delegations recognised
the importance of work of SCP and emphasized that the
work on Patent Law harmonisation should progress taken
into account the interest of all parties, they did not reach
agreement as to the modalities and scope of the future work
of committee
• As a result, SPLT negotiations were put on hold in 2006
 Objectives of SPLT
• Represents an attempt “to pursue a ‘deep
harmonization’ of both the law and practice”
concerning not just the drafting, filing, and
examination of patent applications, but also the
cornerstone requirements of patentability.
• SPLT negotiations cover three separate legal
documents:
– the draft Treaty (i.e. the SPLT),
– the draft Regulations under the SPLT and
– the draft Practical Guidelines
 Obj. 1 - Harmonisation Process
• 1.To establish a uniform set of substantive
standards
• 2. Applicability both to national and regional
laws & practice, and to the international
framework under the PCT
• REASON: Dividing Line b/w formality
requirement & substantive requirement is not
clear which give rise to thriving counterfeit&
piracy trade
 Obj 2 - Unification of Patent Law
• 1. Simplify and streamline procedures
• 2. Reduce costs for applicants
• 3. Enable Offices and Authorities to meet workload
and maintain quality
• 4. Avoid duplication of work among Offices
• 5. Meet needs of large, medium and small Offices
• 6. Balance applicant and third party interests
• 7. Assist developing countries, especially with IT
• 8. Interface b/w PCT & PLT
 Important Provisions in SPLT
• 1. Prior Art [A.8(1)]
• 2. Novelty [A.12(2)]
• 3. Grace Period [A.9(1)]
• 4. Inventive Steps [A.12(3)]
• 5. Sufficient disclosures [A.10]
• 6. First to file, early publication
• 7. Interface b/w PCT & PLT
• 8. Invalidation of claim or patent (A.14)
SPLT does not cover post grant phase left to national laws
 Reference Material
PLT:
• http://www.wipo.int/treaties/en/ip/plt/ and
http://www.wipo.int/treaties/en/ip/plt/summa
ry_plt.html
• SPLT:
• http://www.wipo.int/patent-law/en/draft_splt
.htm