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As global patent protection becomes more desirable and more expensive, a new treaty promises to make the process less painful. The final round of negotiations in the World Intellectual Property Organization Patent Law Treaty draws to a close on June 2 in Geneva, and Washington, D.C. attendees from the U.S. Patent and Trademark Office and Washington’s intellectual property bar are enthusiastic about the resulting accord. “What it does is simplify the procedural requirements for obtaining a patent and harmonizes them,” says Robert Stoll, deputy head of the PTO’s delegation to Switzerland. “This is the treaty that covers matters of form. A substantive one is likely to follow, but this was easier [to negotiate] and it’s got immediate benefits.” Twelve years in the making, the treaty will apply to the 75 or so participating WIPO member states. One overriding goal of the participants is to reduce the cost of securing patents in multiple countries. Right now, says Michael Kirk, executive director of the Arlington, Va.-based American Intellectual Property Law Association, an inventor can expect to pay a minimum of $100,000 per patent to obtain solid global coverage. “If you’re a large company with lots of inventions and filings, that number gets very large, very quickly,” he says. “It’s a constant struggle, as you get more and more countries entering the patent game and achieving a market size that makes patenting worthwhile.” Kirk points to Brazil, Argentina, South Korea, and Taiwan as countries where inventors increasingly feel they need protection. The treaty will not dramatically reduce costs, but it will ease the burden in small but crucial ways. For example, the treaty makes it easier for inventors to obtain filing dates, even if the main part of the application is initially submitted in a foreign language. With the exception of the United States, most countries award patent rights to whoever is first to file for protection. The treaty will also allow an inventor to take an application filed with one patent office and submit it to other member states without having to reformat the document. The inventor then has two months to provide a translated version — a welcome improvement over the current system, lawyers say, in which there is an almost inevitable last-minute rush to translate applications before they can be filed. The treaty ensures that the basic information inventors must provide in the first stage of filing is the same worldwide, preventing countries from adding their own obscure requirements. It will also compel the Japanese patent office, for one, to relax a few particularly restrictive policies, says Jeff Kushan, a patent attorney at the D.C. office of Atlanta’s Powell Goldstein Frazer & Murphy, who returned from the conference last week. “The Japanese tend to be really strict on maintenance fees,” he says, referring to the periodic payments required to keep a patent valid over its lifespan. The treaty will require patent offices in certain circumstances to give relief and reinstatement of rights even when patent-holders miss some deadlines. NEED FOR AGENTS Overall, maintenance fees proved to be a controversial issue at the conference. Many countries will not let inventors simply mail a check when the fees are due. Instead, they require the inventor to hire a local agent to pay the fee. To groups like the American Intellectual Property Law Association, paying someone to pay a fee seems like a waste of money, but flat-out eliminating the arrangement proved elusive. “It was very controversial with some smaller countries, where agents largely live off doing these administrative things,” says Kirk. Kirk reports there were “some engaging and delightful debates” between groups concerned with lowering costs for applicants and those more focused on protecting local attorneys and agents. A compromise solution was still being hammered out at press time, but it seemed likely that the role of the agents would be scaled back. Another controversy concerned the attempt by several Latin American countries to insert provisions dealing with bio-prospecting into the treaty. Colombia and Uruguay suggested that inventors who use biological materials in an invention be required to notify the country of origin of the plant at the time of filing. But the suggestion died on the vine. As Powell Goldstein’s Kushan notes, “They picked the wrong party to crash. This is just a boring administrative treaty.” The PTO’s Stoll says that meatier — and more contentious — talks are likely to follow. “Upon successful conclusion of this treaty, the USA is likely to seek international discussion on substantive matters,” he says. The hope, he adds, is that by first harmonizing matters of form, the treaty will help “grease the skids” to harmonize matters of substance. In the meantime, the treaty will require congressional legislation for implementation, plus a ratification vote by the Senate. “We don’t think it will be controversial,” Stoll says. “But with patents these days, you never know.”

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