Patent Law Treaty (PLT)

PLT/A/11/1

page 4

Patent Law Treaty (PLT)

Assembly

Eleventh (5th Ordinary) Session

Geneva, September 23 to October 2, 2013

APPLICABILITY OF CERTAIN AMENDMENTS AND MODIFICATIONS OF THE PATENT COOPERATION TREATY (PCT) TO THE PATENT LAW TREATY (PLT)

Document prepared by the Secretariat

INTRODUCTION

A number of provisions under the Patent Law Treaty (PLT) and the Regulations under the PLT incorporate by reference certain requirements provided for under the Patent Cooperation Treaty (PCT). Those PLT provisions are as follows:

(i) Article 3(1)(a)(i) [Applications];

(ii) Article 6(1) [Form or Contents of Application];

(iii) Article 6(2) [Request Form] and Rule 3(2) [Request Form Under Article 6(2)(b)];

(iv) Article 6(4) [Fees] and Rule 6(3) [Time Limits Under Article 6(7) and (8) Relating to Payment of Application Fee in Accordance with the Patent Cooperation Treaty];

(v) Rule 8(1)(c) [Communications Filed on Paper];

(vi) Rule 8(2)(a) [Communications Filed in Electronic Form or by Electronic Means of Transmittal];

(vii) Rule 8(3)(a) [Copies, Filed in Electronic Form or by Electronic Means of Transmittal, of Communications Filed on Paper];

(viii) Rule 9(5)(b) [Signature of Communications Filed in Electronic Form Not Resulting in Graphic Representation of Signature];

(ix) Rule 14(3) [Time Limit Under Article 13(1)(ii)].

Pursuant to PLT Article 16 and the PLT Agreed Statements, the PLT Assembly has to decide whether amendments and modifications to the PCT, the Regulations under the PCT and the Administrative Instructions under the PCT (hereinafter referred to as “the Administrative Instructions”) shall apply for the purposes of the PLT and provide any transitional provisions, if necessary.

The present document provides information regarding the amendments and modifications made under the PCT between June 15, 2010 and January 31, 2013, which, in view of the International Bureau, relate to the above PLT provisions. In addition, the document contains modifications, proposed by the International Bureau, to be made to the PLT Model International Request Form with a view to align it with the PCT request Form. The consequences of those PCT modifications and amendments for the PLT are explained, where appropriate. The proposed modifications to the Model International Request Form as well as to its Notes are contained in the Annex.

AMENDMENTS AND MODIFICATIONS TO THE PCT AND THEIR APPLICATION TO THEPLT

Among the amendments and modifications made in the Regulations under the PCT and the Administrative Instructions between June 15, 2010 and January 31, 2013,[1] the following changes are relevant to the PLT provisions referring to certain PCT requirements:

-  modifications to the PCT request Form (PCT/RO/101) regarding the retrieval of a priority document from a digital library;

-  modifications of the Administrative Instructions and the PCT request Form regarding the declaration of inventorship; and

-  modifications to Annex F of the Administrative Instructions regarding the standard for the electronic filing and processing of international applications.

MODIFICATIONS TO THE PCT REQUEST FORM (PCT/RO/101) REGARDING THE RETRIEVAL OF A PRIORITY DOCUMENT FROM A DIGITAL LIBRARY

In order to reflect the recommendations made by the Working Group on the Digital Access Service for Priority Documents (DAS)[2], held from July 12 to 14, 2011, in Geneva, BoxNo. VI of the PCT request Form was modified.[3] In particular, among other changes,[4] a space of up to ten digits for indicating the access code was inserted in that box. Consequently, instead of using the “Access Control List” in the DAS applicant portal to ensure that the International Bureau or other relevant Office(s)[5] are able to obtain the priority documents through the DAS, an applicant can record, in Box No. VI, the access code provided to him/her by the Office where the earlier application was filed.

In order to reduce the burden of applicants to provide copies of earlier applications and previously filed applications and certifications of filing dates, PLTRule4(3) provides that no Contracting Party shall require the filing of a copy or a certified copy of the earlier application or a certification of the filing date, or a copy or certified copy of the previously filed application, where the earlier application or the previously filed application was filed with its Office, or is available to that Office from a digital library which is accepted by the Office for that purpose. To that end, Box No.VIII and the Continuation of Box No. VIII of the PLT Model International Request Form contain two check-boxes allowing the applicant to indicate that the earlier application(s) is(are) attached to the Model International Request Form , or is(are) available to it from a specified digital library.

According to PLT Article 6(1), no Contracting Party shall require compliance with any requirement relating to the form or contents of an application different from or additional to the requirements relating to the form or contents which are provided for in respect of an international application under the PCT. Further, in accordance with PLT Article 6(2)(a), a PLT Contracting Party may require that the contents of an application which correspond to the contents of the request of an international application under the PCT be presented on a request Form prescribed by that Contracting Party. However, in accordance with PLT Article 6(2)(b) and Rule 3(2)(i), a PLT Contracting Party shall accept the presentation of the contents on the Model International Request Form provided for in the Regulations which shall correspond to the PCT request Form. Consequently, in order to align the Model International Request Form with the PCT request Form, it is suggested to modify the Model International Request Form to include, in Box No.VIII and in the Continuation of Box No. VIII, a space for indicating the access code as provided in the PCT request Form. This would facilitate, for the Offices of the PLT Contracting Parties participating in the DAS, to exchange priority documents through that service. The corresponding explanation is proposed to be added to the Notes to Box No. VIII of the Model International Request Form (see pages 17 and 18 of the Annex to this document).

MODIFICATIONS OF THE ADMINISTRATIVE INSTRUCTIONS AND THE PCT REQUEST FORM REGARDING THE DECLARATION OF INVENTORSHIP

Following the entry into force on September 16, 2012, of certain changes to the patent law of the United States of America under the Leahy-Smith America Invents Act, the Regulations under the PCT, the Administrative Instructions and certain PCT forms were modified in 2012. Those modifications include changes to the wording of a declaration of inventorship made for the purposes of the designation of the United States of America under Section 214 of the Administrative Instructions and in Box No. VIII(iv) of the PCT request Form.

Box No. X(iv) of the PLT Model International Request Form concerns the declaration of inventorship. The Notes to BoxNo.X(iv) contain a similar text in respect of the declaration as BoxNo.VIII(iv) of the PCT request Form. Consequently, pursuant to PLT Article 6(1) and (2) and Rule 3(2)(i), as explained above, it is suggested that the text in the Notes to Box No. X(iv) be modified to reflect the changes to the PCT request Form as proposed in pages 19 and 20 of the Annex to this document.

MODIFICATIONS TO ANNEX F OF THE ADMINISTRATIVE INSTRUCTIONS REGARDING THE STANDARD FOR THE ELECTRONIC FILING AND PROCESSING OF INTERNATIONAL APPLICATIONS

With respect to the standard for the electronic filing and processing of international applications, the following modification to Section 3.6 of Appendix I of Annex F of the Administrative Instructions was promulgated with effect from July 1, 2012: modification of the request Document Type Definition (DTD) with the addition of the optional specification of a DAS document access code.[6] This change was made following the insertion of additional fields in Box No. VI of the PCT request Form allowing the indication of the DAS access code (seeparagraph5 above).

In accordance with PLT Rule 8(2)(a), where a Contracting Party permits the filing of communications in electronic form or by electronic means of transmittal with its Office in a particular language, and there are requirements applicable to that Contracting Party under the PCT in relation to such communications in that language, that Office shall permit the filing of such communications under the applicable law, in the said language in accordance with those PCT requirements. Therefore, the consequence of the above modification to Annex F, Appendix I of the Administrative Instructions is that, where such a modified format is applicable to a PLT Contracting Party in the PCT framework, it shall accept the electronic filing of communications in respect of national/regional applications in accordance with that format, provided that the other requirements under the applicable law are also met.

APPLICABLE DATE OF THE MODIFICATIONS OF THE PCT TO THE PLT

Since the above modifications of the Administrative Instructions and the PCT request Form (PCT/RO/101) entered into force on September 16, 2012, and the modifications to Sections 3.6 of Appendix I of Annex F of the Administrative Instructions entered into force on July 1, 2012, it is suggested that those modifications apply to the PLT with immediate effect and that the modified Model International Request Form take effect immediately as well.

The Assembly of the PLT is invited:

(i) to adopt the modified Model International Request Form as set out in the Annex, and to decide that it shall enter into force with immediate effect; and

(ii) to decide that the modifications of the Administrative Instructions Under the PCT indicated in the present document as applicable, apply for the purposes of the PLT and its Regulations, with immediate effect.

[Annex follows]

PLT/A/11/1

Annex, page 15

Model International Form

Under the Patent Law Treaty (PLT)

REQUEST FOR THE GRANT OF A PATENT

Box No. I TITLE OF INVENTION

Box No. II APPLICANT(S)

Box No. III INVENTOR(S)

Form PLT/request (first sheet) (29/09/20130) See Notes to the request form

Sheet No. ……….

Form PLT/request (continuation sheet: applicant) (29/09/20130) See Notes to the request form

Sheet No. ……….

Form PLT/request (continuation sheet: inventor) (29/09/20130) See Notes to the request form