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Despite some turbulent moments, last month’s global patent law treaty conference proved to be smooth sailing for the U.S. Patent and Trademark Office. Negotiations at the World Intellectual Property Organization’s diplomatic conference for the adoption of the treaty were “long and painful,” said Lois Boland, an attorney in the PTO’s Office of Legislative and International Affairs, but in the end, “with a few minor exceptions, we got everything we were looking for.” The PTO scored big in several areas, Boland said June 16. One of the more controversial issues delegates tackled was whether a patent application should be considered “filed” on the date a country’s patent office receives all required application elements or before. The United States pushed for the earlier date, saying it would give applicants added flexibility. But some developing countries, as well as some not yet signed on to the 1978 Patent Cooperation Treaty, opposed the U.S position, Boland said, because their patent offices have stricter requirements and they are unaccustomed to a “more minimalist approach.” In the end, however, the group approved a filing date article (Article 5) that is less burdensome even than PCT provisions, Boland said. Another hotly debated issue was that of mandatory representation — that is, requiring patent applicants to hire, and pay, agents to handle various application procedures. The PTO stoutly opposed any sort of legislated representation because it runs counter to the point of the PLT — which is to make the patent application process more user-friendly worldwide — and pressed for as many exceptions to the proposal as possible. While the United States was not able to derail mandatory representation altogether, Boland said, it did get “more than expected” in the way of exceptions to the rule (Article 7). Patent seekers will not have to use outside representatives to file applications for the purpose of obtaining a filing date, to pay any application or maintenance fee, or to deal with notifications from a country’s patent office about the first two actions, she said. However, in some places, applicants will have to pay lawyers, rather than professional translators, to translate their patent documents, a requirement Boland called “blatantly parochial.” In some smaller countries, she said, patent attorneys have little or no work because U.S. or Japanese lawyers handle most of it. So local attorneys take translation jobs instead, and applicants are forced to go through their official representatives to hire attorney-translators, which ratchets up the cost and erects “another barrier to the simplification of the patent process.” Debate on a third issue — electronic filings — bogged down in a “North-South” wrangle over whether developing countries would be forced to scrap paper files and adopt online processes, Boland said. However, the United States was “totally successful” in persuading delegates to approve a provision (Article 8) that permits the exclusion of paper filings beginning in 2005, and that allows Internet-savvy patent offices to immediately start accepting gene sequence listings and other “jumbo” applications. In what the PTO called a “really big win for patent applicants throughout the world,” the U.S. model for reviving applications and patents won approval from delegates. Many countries consider U.S. revival rules too administratively difficult to implement and too lenient, Boland said. The new provisions tracking the U.S. system means that those nations will now have to “adopt more pro-applicant features,” she added. Another heated topic — a Colombian delegation proposal to condition the grant of patents on biological or genetic resources on whether an inventor has lawfully acquired the resources and has the documentation to prove it — prompted so much squabbling that it delayed the conference’s opening ceremonies. But the recommendation failed after fierce criticism from the PTO and U.S. biotech companies. With the conference behind them, many PLT delegate countries — including the United States — will now have to rework their patent laws and regulations, Boland said. For the PTO, that means making two simple changes: (1) amending the filing date provision for claims for non-provisional applications to allow the issuance of a filing date without claims; and (2) revising its “right of priority” rules to extend the current 12-month period for filing the same application in different countries to 14 months in some situations, she said. The PTO plans to forward PLT ratification and implementation legislation to Congress before the end of this session, Boland said. Strong backing from key IP players in both the House and Senate makes treaty approval likely, she added. An American Intellectual Property Law Association official said June 19 the group was mostly pleased with the final treaty. However, said the source, AIPLA remains opposed to mandatory representation, and while some accommodations were made, there were “not as many as we’d like.”

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