MODULE 5: THE DIFFERENT LAYERS OF PATENT

PROTECTION (NATIONAL, REGIONAL, AND

INTERNATIONAL OPTIONS)

Study Note: This module should take approximately two hours to study.

Learning outcomes

After completing this module, you should be able to:

1. indicate the different options for obtaining patent protection;

2. describe the practical reasons for choosing to file a national, regional or international
patent application;

3. identify at least three agreements providing regional patent protection; and

4. list four international treaties administered by WIPO and their main features.

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INTRODUCTION

When seeking patent protection internationally, applicants have several options. They are
faced with complex procedures and different applicable patent laws at regional, national and
international level. Below, the alternatives for obtaining patent protection for an invention in
one or more countries will be further explored.

1. National patent laws/legislation

Patent applications are usually first filed in the home country of the applicant. There are
several reasons for this:

• The applicable national law may oblige applicants to file in their home country or to
obtain a foreign filing license 1 before filing abroad;

• Practical reasons, such as the possibility to file the application and communicate with
the office in national languages, convenience of last minute filing, and working in the
same time-zone (no time difference between the applicant and the national Office), less
time required for mail delivery, the convenience of paying in national currency, etc.;

• Under Article 4 of the Paris Convention for the Protection of Industrial Property, “any
person who has duly filed an application for a patent” in one of the member countries of
the Paris Convention enjoys a right of priority during a period of 12 months “for the
purpose of filing in the other countries”.

• The right of priority can be used both in the home country and subsequent national
applications in other member countries. It can also be claimed as a priority of any
regional or PCT application.

• Applicants from countries party to the Paris Convention or Members of the World Trade
Organization (WTO) are entitled to this right of priority. For countries not party to the
Paris Convention, some national laws provide for priority rights granted on a bilateral
basis of reciprocity. This means that, in order to enjoy the right of priority, the applicant
has a year before he/she must decide in which foreign countries/territories he wants to
proceed with his application that was filed with the patent Office of his/her proximity. In
other words, within 12 months from the filing date of the local application, the applicant
may file subsequent national applications with other patent offices, claiming priority of
the local application. If the applicant is interested in obtaining patents in a few other
countries, filing a subsequent national application in each country may be more cost
effective than using a regional filing or international filing system, as explained below.

1 An authorization to file new patent applications abroad. In the US, foreign filing licenses, as defined
in 35 U.S.C. § 184, means an authorization is needed from the Commissioner of Patents in order to
file a patent application in a foreign country before a six-month period after filing in the US. For more
information, you can consult: https://www.uspto.gov/web/offices/pac/mpep/s140.html

DL170 Essential of Patents – Module 5 page 2 / 24

 SELF-ASSESSMENT QUESTION
SAQ 1: What are the reasons for filing a national patent application?

Type your answer here:

Model Answer SAQ 1:

In some cases, patent applications are first filed in the home country of the applicant
because the national office requires it.

The several practical reasons for filing a national application in the home country first include
the convenience and speed with which the applicant or the patent agent and the Patent office
can communicate (in local language) and the payment of fee in the national currency, without
administrative procedure applied for international bank transfer.

As you can see in the diagram, an applicant from a Paris Convention country may file a
patent application nationally and follow in other Member countries (or Members of the WTO)
up to twelve months after the priority date (date of filing) of the first patent application. So,
filing a local patent application will allow the applicant up to twelve months to file the
applications on the same invention in other national offices, claiming the priority of his/her
local patent application. If the applicant is interested in obtaining patents in a few other
countries, filing a subsequent national application in each country may be more cost effective
than using a regional filing or international filing system.

2. Regional patent laws/legislation

A number of regional agreements exist concerning patents. Although they all aim at
harmonizing and simplifying procedures to the advantage of the users, some agreements
establish regional patent offices that grant regional patents, such as the African Regional
Intellectual Property Organization (ARIPO), Eurasian patent office (EAPO), European Patent
Office (EPO), Gulf Cooperation Council (GCC) patent office and African Intellectual Property
Organization (OAPI). Other agreements provide common legal requirements that should be
applied in the countries that are parties to such regional agreements. In the field of patents,
examples of such regional agreements are:

• The European Patent Convention

For the latest updates, please refer to:
http://www.wipo.int/wipolex/en/other_treaties/text.jsp?file_id=312166

• The Eurasian Patent Convention

For the latest updates, please refer to:
http://www.eapo.org/en/documents/norm/convention_txt.html
http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=21&treaty_id=228

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• The Harare Protocol (African Regional Intellectual Property Organization (ARIPO))
For the latest updates, please refer to:
https://www.aripo.org/ip-services/harare-protocol-on-patents-and-industrial-designs/
http://www.wipo.int/wipolex/en/other_treaties/details.jsp?treaty_id=204

• The Bangui Agreement (African Intellectual Property Organization (OAPI))

For the latest updates, please refer to:
http://www.wipo.int/wipolex/en/other_treaties/details.jsp?group_id=21&treaty_id=227
http://oapi.int/index.php/en/ressources/accord-de-bangui

• Decision 486, a common intellectual property regime of the Andean Community

For the latest updates, please refer to:
http://www.wipo.int/wipolex/en/details.jsp?id=9451

• The Patent Regulation of the Cooperation Council for the Arab States of the Gulf (Gulf
Cooperation Council (GCC))
For the latest updates, please refer to:
http://www.gcc-sg.org/en-us/CognitiveSources/DigitalLibrary/Pages/Details.aspx?itemid=187
http://www.wipo.int/export/sites/www/scp/en/meetings/session_14/ips/gcc_reg_2.pdf

• Legislation by the European Union

http://www.wipo.int/wipolex/en/profile.jsp?code=EU

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2.1 Features of certain regional agreements

The European and the Eurasian Patent Conventions, and the Harare Protocol allow
applicants to file a patent application for a regional patent with a regional patent Office. In
his/her application, the applicant chooses the countries in which he wants to protect his
invention among the member states of the respective regional agreement. The application is
then processed by the regional Office, which carries out a prior art search, examines the
application as to substance and decides to grant a patent or to refuse the patent application,
based on the prescribed rule of the regional office. If the regional patent application is
refused, the applicant has the possibility to convert his regional application into a national
application under certain conditions. Maintenance fees after grant are either paid to the
regional patent Office and redistributed among the designated States (Eurasian patent and
ARIPO patent) or directly paid to the national patent Offices (European patent). After the
grant of a European patent, applicants have to comply with certain national requirements,
such as submission of a translation, in order to validate the regional patent in each chosen
country. Applicants also have the possibility to file national applications with any of the
national Offices of the Member States of these regional agreements.

The Bangui Agreement provides for an OAPI patent which is valid in all OAPI member
States. The OAPI Office functions as a national Office for all its member States. Maintenance
fees are payable to the OAPI Office.

The Patent Regulation of the Cooperation Council for the Arab States of the Gulf (Gulf
Cooperation Council (GCC)) provides for a patent which is valid in all GCC member States
(Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and United Arab Emirates). The Patent Office
of the GCC operates as a regional patent Office, which collects the annual fees for patents
granted by it. Applicants also have the possibility to file national applications with any of the
national Offices.

Oftentimes, an applicant first files a local patent application in his/her home country, and then
file a subsequent regional patent application within 12 months from the filing date of the local
application, claiming priority of that local application.

Another kind of regional agreement is a common intellectual property regime, such as the
Andean Community, a sub-regional organization endowed with an international legal status,
which is made up of Bolivia, Colombia, Ecuador, and Peru. Its member States adopted,
through Decision 486, a new Common System on Intellectual Property Rights, which came
into effect on December 1, 2000. The four member States apply the same law, but patent
applications may only be filed with the respective national Offices. There is no regional
patent Office. The national databases are interconnected, and the official intellectual property
gazettes or bulletins have to be communicated to the Offices of the other member States.

The European Union has adopted a number of Directives and Regulations in different fields
of intellectual property. Member States are obliged to adopt the laws, regulations and
administrative provisions in compliance with these Regulations and Directives.

Some of these directives are:

• The Biotech Directive 98/44/EC establishes common standard within the EU Member
States regarding the patenting of biotech inventions under their national patent laws.

http://europa.eu/legislation_summaries/internal_market/single_market_for_goods/pha
rmaceutical_and_cosmetic_products/l26026_en.htm

http://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX:31998L0044

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 • The Directive 2004/48/EC on the enforcement of intellectual property rights requires
all EU countries to apply effective, dissuasive, and proportionate remedies and
penalties against those engaged in counterfeiting and piracy, and establishes a
similar set of measures available for right holders to defend their intellectual property
rights.

https://eur-lex.europa.eu/legal-
content/EN/TXT/?uri=CELEX:32004L0048R%2801%29

SELF-ASSESSMENT QUESTION
SAQ 2: What are the practical reasons for filing a patent application with a regional
office?

Type your answer here:

Model Answer SAQ 2:

As the name implies, ‘regional’ offices are set up to a large extent to facilitate patent
application procedures in the same region. Considering that patent applicants are
increasingly active outside their national boarders, regional offices make it possible to reduce
administration cost, and time. For example, most regional offices perform the substantive
examination of patent applications before granting a regional patent. By filing one single
application for the region instead of filing one application in each country, it is possible to
reduce costs.

By granting regional patents, most regional offices contribute to harmonization of not only the
procedures of patent application in their member countries but also substantive rules in the
interest of the whole region. In addition, some regional institutions adopt regional
agreements that harmonize national laws of their respective member States. For example,
the Biotech Directive 98/44/EC of the European Union establishes common standard within
the EU Member States regarding the patenting of biotech inventions under their national
patent laws.

http://europa.eu/legislation_summaries/internal_market/single_market_for_goods/pharmaceu
tical_and_cosmetic_products/l26026_en.htm

http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:1998:213:0013:0021:EN:PDF

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 SELF-ASSESSMENT QUESTION
SAQ 3: Can you identify at least three agreements providing regional patent
protection? Please access the websites that are provided to familiarize yourself with
the nature of each of the Regional Offices.

Type your answer here:

Model Answer SAQ 3:

The Bangui Agreement (African Intellectual Property Organization (OAPI))

The European Patent Convention
The Harare Protocol (African Regional Intellectual Property Organization (ARIPO))

Note: Please familiarize yourself with the nature of the regional offices and the formal and
substantive patent processing that they harmonize and the limitations as well as flexibilities
that they have.

3. International treaties on patents

3.1 Paris Convention for the Protection of Industrial Property (Paris Convention),
1883
177 contracting states. For the latest updates, please refer to:
http://www.wipo.int/treaties/en/ip/paris/

Before the existence of any international convention in the field of industrial property, it was
difficult to obtain protection for industrial property rights in the various countries of the world
because of the diversity of their laws. Moreover, patent applications had to be made roughly
at the same time in all countries in order to avoid a publication in one country destroying the
novelty of the invention in the other countries. These practical problems created a strong
desire to overcome such difficulties.

A Diplomatic Conference convened in Paris in 1883 ended with final approval and signature
of the Paris Convention for the Protection of Industrial Property. It came into effect on July 7,
1884 and has been revised from time to time after its signature in 1883. The Paris
Convention is administered by the World Intellectual Property Organization (WIPO). It
contains the basic principles of the protection of intellectual property rights, which are still
valid today and on which all subsequent international treaties are based.

The provisions of the Paris Convention may be sub-divided into four main categories:

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• a first category contains rules of substantive law which guarantee a basic right known as
the right to national treatment in each of the member countries;

• a second category of rules establishes another basic right known as the right of priority;

• a third category of rules defines a certain number of common rules in the field of
substantive law which contain either rules establishing rights and obligations of natural
persons and legal entities, or rules requiring or permitting the member countries to enact
legislation following those rules;

• a fourth category deals with the administrative framework which has been set up to
implement the Convention and includes the final clauses of the Convention.

3.2 Patent Cooperation Treaty (PCT), 1970

152 contracting states. For the latest updates, please refer to:
http://www.wipo.int/pct/en/texts/index.htm
http://www.wipo.int/pct/en/texts/articles/atoc.htm

The PCT was concluded in Washington in 1970 and entered into force in June 1978. The
Treaty establishes procedures for the processing of patent applications in order to make it
possible to seek patent protection for an invention simultaneously in many countries by filing
an “international” patent application. Instead of filing several separate national or regional
applications in each corresponding office, the treaty simplifies the patent application process
by providing the possibility to file one single application whose effects can later be extended
to in the Contracting States. It must be underlined that the granting of patents remains under
control of national or regional patent offices in what is called the “national phase”.

An application may be filed by anyone who is a national or resident of a Contracting State of

the PCT. It may generally be filed with the national patent office of the Contracting State of
which the applicant is a national or resident or has the option of filing it with the International
Bureau of WIPO in Geneva. If the applicant is a national or resident of a Contracting State
which is party to the regional offices, such as the European Patent Convention, the Harare
Protocol on Patents and Industrial Designs (Harare Protocol), the revised Bangui Agreement
Relating to the Creation of an African Intellectual Property Organization or the Eurasian
Patent Convention, the international application may also be filed with the EPO, ARIPO,
OAPI, or the EAPO, respectively.

The international application is then subjected to what is called an “international search.” This
search is carried out by one of the patent Offices appointed by the PCT Assembly as an
International Searching Authority (ISA). The search results are issued in the form of an
“international search report,” that is, a listing of the citations of published documents that
might affect the patentability of the claimed invention in the international application. At the
same time, the ISA prepares a written opinion on the question of the patentability of the
invention for which the applicant sought a patent.

The international search report and the written opinion on patentability are communicated by
the ISA to the applicant, who may decide to withdraw his application, in particular where the
said report or opinion makes the granting of patents unlikely. If the international application is
not withdrawn, it is, together with the international search report, published by the
International Bureau. The written opinion on patentability is not published.

After the publication is issued, the applicant may proceed to order or request for an
international preliminary examination of his patent application. This amounts to a second
evaluation on the patentability of the invention, taking into consideration novelty, inventive
step and industrial applicability.This provides an opportunity for the applicant to modify the

DL170 Essential of Patents – Module 5 page 8 / 24

claims of his/her invention, i.e. the legal protection sought by the applicant, in consultation
with the International Preliminary Examination Authority (IPREA). In most cases, the IPREA
is the same as the International Search Authority (ISA), and assesses further the compliance
of each one of the claims of the application with patentability requirements. This assessment,
however, is not binding, and national patent Offices are entitled to re-examine applications
before granting national patents.

Within a timeframe of 30 2 months from the priority date, (see Article 22 of the PCT
http://www.wipo.int/pct/en/texts/articles/a22.htm#_22), the applicant will have to decide the
countries where he wishes to enter the national phase. The applicant shall comply with
certain requirements to enter the national phase, for example, to pay the relevant national
fees, provide for translations whenever required and, if required by law, designate a national
patent agent to represent the applicant in the relevant countries.

At the national phase, the national or the regional patent Offices will carry out the
examination of the patent as if the application were filed nationally.

The procedure under the PCT has several advantages for the applicant, the patent Offices
and the general public. Some of the advantages are listed below:

• The applicant has up to 18 months more than would be the case in a procedure outside
the PCT, to reflect on the desirability of seeking protection in foreign countries, to
appoint local patent agents in each foreign country, to prepare the necessary
translations and to pay the national fees. He/she is assured that, if the international
application is in the form prescribed by the PCT and has met the formal requirements; it
cannot be rejected on formal grounds by any designated Office during the national
phase of the processing of the application. On the basis of the international search
report from the ISA or the written opinion, the applicant can evaluate with reasonable
probability the chances of the patentability of the invention in the regions or countries
where the patent is sought. The applicant has the possibility during the international
preliminary examination to amend the international application with a view to put it in the
order most beneficial to the applicant before processing by the designated Offices;

• The search and examination work of patent Offices can be considerably reduced thanks
to the international search report, the written opinion and, where applicable, the
international preliminary examination report that accompany the international
application; and

• Since each international application is published together with an international search

report, third parties are in a better position to formulate a well-founded opinion about the
patentability of the claimed invention.

2Although countries are free to provide longer terms. The time limits for entering National/Regional
Phase can be seen here: https://www.wipo.int/pct/en/texts/time_limits.html

DL170 Essential of Patents – Module 5 page 9 / 24

The below illustration depicts the same process focusing on the duration of each stage.

3.3 Strasbourg Agreement Concerning the International Patent Classification, 1971

62 contracting states. For the latest updates, please refer to:
http://www.wipo.int/treaties/en/classification/strasbourg/index.html

The Agreement entered into force on October 7, 1975. Its member States constitute a Special
Union which adopted a common classification for patents, utility models and similar titles of
protection, known as the “International Patent Classification” (IPC). As it was mentioned on
Module 3, it is a hierarchical system of classification method for inventions. The various areas

DL170 Essential of Patents – Module 5 page 10 / 24

of technology are divided into different sections, classes, subclasses and groups that help
group as well as identify inventions.

This classification subdivides technology into 8 sections, 22 subsections, 131 classes, 645
subclasses and over 74,000 groups (of which approximately 10% are “main groups” and the
remainder are “subgroups”) 3. Each of the sections, classes, subclasses, groups and
subgroups has a title and a symbol, and each of the subsections has a title. The symbol or
symbols of at least the subclass or subclasses to which the technical invention described in
any patent document belongs are indicated generally on the patent document by the patent
Office of the country where the application is filed. Thus, the document is retrievable
according to its subject matter, with the help of the IPC.

The Committee of Experts, taking note of the fact that the IPC is a means for obtaining an
internationally uniform classification of patent documents, has agreed that “as the primary
purpose, the IPC is to be an effective search tool for the retrieval of relevant patent documents
by industrial property Offices and other users in order to establish the novelty and evaluate the
inventive step (including the assessment of technical advance and useful results or utility) of
patent applications.” The IPC symbols are allotted by the national or regional patent Office that
publishes the patent document (patent applications and granted patents).

3Check the following link for IPC statistics:

https://www.wipo.int/classifications/ipc/en/ITsupport/Version20190101/transformations/stats.html

DL170 Essential of Patents – Module 5 page 11 / 24

DL170 Essential of Patents – Module 5 page 12 / 24
DL170 Essential of Patents – Module 5 page 13 / 24
Look at the IPC in the case of the patent document of the invention titled ‘Cat Liter Box (US
Patent Application No. 15/674,201). If you look at the priority date, it appears that the patent
was first filed in the US on August 10, 2017 which date is carried over to the PCT application
as the ‘(30) Priority Date’.

Look at (52) and (51) on the US patent document that the classification used by the US is the
CPC “A01K 1/0114 (2013.01)” and the international classification (IPC) is “A01K 1/01”
respectively. Some countries have their own classification, which is useful for the national
phase when performing prior art search by the patent examiners, in particular if the national
patent office relies heavily on the prior art search of national patent documents. In general,
international applications include the IPC along with the national classification codes, if any.

By visiting the above-suggested website on subject of classification of inventions, you will learn
that the IPC classification is in a hierarchy that leads to the specific subject matter. For
example, let us examine how the Cat Litter patent arrived at having the IPC “A01K 1/01”:

Section A: human necessities

Subsection: agriculture

Class A01: agriculture; forestry; animal husbandry; hunting; trapping; fishing

Subclass A01K: animal husbandry; care of birds, fishes, insects; fishing; rearing
or breeding animals, not otherwise provided for; new breeds of animals

Main group 1/00: housing animals; equipment therefor

Subgroup 1/01: removal of dung or urine

In order to keep it up to date with new areas of inventions, the revision of the IPC is effected
by an Intergovernmental Committee of Experts, of which all States party to the Agreement
are members. As a common classification method, the IPC is one of the most useful and
indispensable retrieval method of patent documents in determining the state of the art in a
particular area of technology as well as in establishing the novelty and evaluating the
inventive step of an invention. The IPC codes also serve as:

• an instrument for the orderly arrangement of patent documents in order to facilitate

access to the information contained therein;

• a basis for dissemination of information in the specific field of technology to all users of
patent information;

• a basis for investigating the state of the art in given fields of technology;

• a basis for the preparation of industrial property statistics which in turn permit the
assessment of technological development in various areas.

DL170 Essential of Patents – Module 5 page 14 / 24

 SELF-ASSESSMENT QUESTION
SAQ 4: What are the benefits of filing an international application?

Type your answer here:

Model Answer SAQ 4:

Some of the practical reasons for filing an international patent application is the fact that,
once the application enters the national phase (as seen in the diagram in the module), it is
unlikely that Offices reject it on formal grounds. This saves time and effort that might
otherwise need to rectify each one of the applications in different national Offices if he/she
opted for the national route.

The additional 18 months, the international search report and the international preliminary
report have an important strategic function for applicants who would need more time to
assess the countries where the patent has economic viability. The additional time allows for
search for national licensees or partners and provides some basis or reference point on
which they could plan on national patents.

From the strategic standpoint, the fact that the application is published in an international
gazette is an indication to investors, the public and competitors of the activities of the
patentee.

DL170 Essential of Patents – Module 5 page 15 / 24

 SELF-ASSESSMENT QUESTION
SAQ 5: What are the different options that exist in order to obtain patent protection
for an invention in a given country?

Type your answer here:

Model Answer SAQ 5:

In general, patent protection can be sought through the national route, the regional route or
the international route (the PCT route).

Briefly, the national route consists of filing patent applications individually at national patent
Offices, while the regional route, whenever applicable, allows applicants to apply for patent
protection in different countries through one application at the regional Office.

The international route allows applicants to apply for patent protection in up to 152 countries
with one single application. Applicants have up to 30 months (that is, 18 months more than if
they had filed their patent applications through the national or regional route) to decide in
which countries they would have interest in seeking patent protection.

DL170 Essential of Patents – Module 5 page 16 / 24

3.4 Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure, 1977
82 contracting states. For the latest updates, please refer to:
http://www.wipo.int/treaties/en/registration/budapest

The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for
the Purposes of Patent Procedure (the Budapest Treaty), which is a special agreement
under Article 19 of the Paris Convention, entered into force on August 9, 1980
(http://www.wipo.int/treaties/en/ip/paris/trtdocs_wo020.html#P361_57002).

Sample for use of the Budapest Treaty:

PATENT APPLICATION BEFORE THE AUSTRALIAN PATENT OFFICE, PUBLISHED IN

PATENTSCOPE

AU2018267591 AN HERBICIDAL COMPOSITION FOR CONTROLLING PARTHENIUM

WEED AND STRAIN THEREOF

Applicant: Laxmiharayana, Praharaju Mr

Subject matter:
The present invention relates to the development of novel mycoherbicide for controlling
Parthenium hysterophorus. The present invention also discloses fungal isolates of Altemaria
sp AGPH#04 use spores, as a cell-and spore-free filtrate, a crude filtrate, or a crude
suspension of the culture and optionally along with other additives. The fungal strain was
observed to be particularly virulent against Parthenium. The fungal strain was deposited in
NCIM as private culture collection and assigned the number NCIM 13 71. The strain was
also deposit in the patent collection of the MTCC under the terms of the Budapest Treaty and
has been assigned accession number MTCC 5973. The sequence homology and phylogenic
analysis of strain showed 98% nucleotide similarity with other similar genus isolate. The
present invention also discloses whole genome study for identification of novel probe and
primer pair sequence for use in detecting isolates that exhibit bio-control activity. The present
invention also discloses process of production and characterization of naturally occurring
host specific phytotoxic compound that is excreted by the Alternaria sp. AG-PH04.

International Depository Authority:

Microbial Type Culture Collection and Gene Bank of India (MTCC) at the Institute of
Microbial Technology (IMTECH)
Date of deposit: 11 November 2018
Accession Number: MTCC 5973

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When filing for a patent, disclosure of the invention is a generally recognized requirement for
the grant of patents. Normally, an invention is disclosed by means of a written description so
that the public could be informed. Where an invention involves a microorganism, or the use
of a microorganism, which is not available to the public, such a description is not always
sufficient for disclosure. That is why in the patent procedure of an increasing number of
countries, it is necessary not only to file a written description but also to deposit, with a
specialized institution, a sample of the microorganism. Patent Offices are not equipped to
handle microorganisms, whose preservation requires special expertise and equipment to
keep them viable, to protect them from contamination and to protect health or the
environment from contamination. Such preservation is costly. The furnishing of samples
when protection is sought in several countries for an invention involving a microorganism or
the use of a microorganism, the complex and costly procedures of the deposit of the
microorganism might have to be repeated in each of those countries. It was in order to
eliminate or reduce such multiplication, to enable one deposit to serve the purpose of all the
deposits which would otherwise be necessary, that the Treaty was concluded.

The main feature of the Treaty is that a Contracting State which allows or requires the
deposit of microorganisms for the purposes of patent procedure must recognize, for such
purposes, the deposit of a microorganism with any “international depositary authority” (Article
3(1)(a) http://www.wipo.int/treaties/en/registration/budapest/trtdocs_wo002.html#P69_4336),
irrespective of whether such authority is on or outside the territory of the said State. In other
words, one deposit, with one international depositary authority, will suffice for the purposes of
patent procedure before the national Patent Offices (called “industrial property offices” in the
Treaty) of all of the Contracting States and before any regional Patent Office (for example the
European Patent Office) which has filed a declaration of acceptance under Article 9(1)(a)
http://www.wipo.int/treaties/en/registration/budapest/trtdocs_wo002.html#P122_14524 of the
Treaty.

DL170 Essential of Patents – Module 5 page 18 / 24

3.5 Patent Law Treaty (PLT), 2000
42 contracting states. For the latest updates, please refer to:
http://www.wipo.int/treaties/en/ip/plt/index.html

The Patent Law Treaty was adopted in June 2000 and entered into force on
April 28, 2005.

The PLT is designed to streamline and harmonize formal requirements set by national or
regional Patent Offices for the filing of national or regional patent applications, the
maintenance of patents and certain additional requirements related to patents or patent
applications, as for example communications, representation or recordation of changes
concerning patents and patent applications. It provides, for example, for basic filing date
requirements, a standardized set of formal requirements, standardized forms, simplified
procedures before the Offices and avoidance of unintentional loss of rights. The PLT also
incorporates, by reference, the formal requirements of the Patent Cooperation Treaty (PCT)
and its Regulations, as much as possible. The harmonization of procedures under national
laws is expected to result in easier access to worldwide patent protection and cost reduction
for applicants in those procedures. It should also reduce the administrative costs of patent
Offices of both industrialized and developing countries, the benefit of which could be passed
on to applicants in the form of lower fees.

The Paris Convention for the Protection of Industrial Property, the Patent Cooperation
Treaty (PCT), the Strasbourg Agreement Concerning the International Patent
Classification (IPC), the Budapest Treaty on the International Recognition of the
Deposit of Microorganisms for the Purposes of Patent Procedure and the Patent Law
Treaty (PLT) are administered by the WIPO.

3.6 Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS Agreement), 1994
155 Members. For the latest updates, please refer to:
http://www.wto.org/english/docs_e/legal_e/27-trips_01_e.htm

The Uruguay Round of multilateral trade negotiations held in the framework of the General
Agreement on Tariffs and Trade (“GATT”) was concluded on December 15, 1993. The
Agreement establishing the World Trade Organization (“WTO Agreement”), was adopted on
April 15, 1994, in Marrakech. Those negotiations included, for the first time within the GATT,
discussions on aspects of intellectual property rights related to international trade. The result
of those negotiations, contained in an Annex to the WTO Agreement, was the Agreement on
Trade-Related Aspects of Intellectual Property Rights (the “TRIPS Agreement”). The WTO
Agreement, including the TRIPS Agreement (which is binding on all WTO members), entered
into force on January 1, 1995, the date on which the WTO began its work.

The TRIPS Agreement covers Copyright and related rights (i.e. the rights of performers,
producers of sound recordings and broadcasting organizations); trademarks, including
service marks; geographical indications, including appellations of origin; industrial designs;
patents; the layout-designs of integrated circuits; and undisclosed information, including
trade secrets and test data.

In respect of each of the main areas of intellectual property covered, the Agreement sets out
the minimum standards of protection to be provided by each member. Each of the main
elements of protection is defined, namely the subject-matter to be protected, the rights to be
conferred and permissible exceptions to those rights, and the minimum duration of
protection.

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Some of the further most important features of the TRIPS Agreement are:

a) the national treatment, which forbids discrimination between a member’s own

nationals and the nationals of other members;

b) the most-favored-nation treatment, which forbids discrimination between the nationals

of other members; and

c) provisions on enforcement and dispute settlement.

The TRIPS Agreement incorporates IPR rules found under different conventions as
minimum standards, such as from the Berne Convention for the Protection of Literary and
Artistic Works(1886 - http://www.wipo.int/treaties/en/ip/berne/) and the Paris Convention for
the Protection of Industrial Property (1883 - http://www.wipo.int/treaties/en/ip/paris/), the
International Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organizations (Rome Convention, of 1961 -
http://www.wipo.int/treaties/en/ip/rome/) the Washington Treaty on Intellectual Property in
Respect of Integrated Circuits (not yet in force -
http://www.wipo.int/treaties/en/ip/washington/), in addition to incorporating other norms.

As a result of the TRIPS agreement, the areas of cooperation between WIPO and WTO have
increased. An Agreement between WIPO and WTO was concluded on December 22, 1995
and came into force on January 1, 1996. It provides the legal basis for the cooperation
between WIPO and the WTO regarding the implementation of the TRIPS Agreement, such
as provision of legal-technical assistance and technical cooperation and exchange of
information between the two organizations.

In the field of patents, the TRIPS Agreement states that patent protection must be available
for eligible inventions in all fields of technology that are new, involve an inventive step (or are
non-obvious) and can be industrially applied (be useful). Eligible inventions include both
products and processes.

The TRIPS Agreement, however, does not define the term “invention”, which may be defined
by the law of each WTO Members. However, it expressly provides certain inventions that the
WTO Members may exclude from patentability in their respective law. They can refuse to
issue a patent for an invention if its commercial exploitation needs to be prohibited for
reasons of public order or morality. They can also exclude diagnostic, therapeutic and
surgical methods, plants and animals (other than micro-organisms), and biological processes
for their production (other than microbiological processes) from patent protection. Plant
varieties, however, must be protectable by patents or by a sui generis system (such as the
breeder’s rights provided in the International Convention for the Protection of New Varieties
of Plants (UPOV Convention) or by both.

WTO Members must provide patent protection for at least 20 years. The TRIPS Agreement
describes the minimum rights that a patent owner must enjoy and defines the conditions
under which exceptions to these rights are permitted. The Agreement permits governments
to issue “compulsory licenses”, which allow a competitor to produce the product or use the
process under a license without the owner's consent. But this can only be done under
specific conditions set out in the TRIPS Agreement aimed at safeguarding the legitimate
interests of the patent holder.

If a patent is issued for a process invention, the patent rights must extend to the product
directly obtained from the process. Under certain conditions, alleged infringers may be
ordered by a court to prove that they have not used the patented process.

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The adoption of the TRIPS Agreement standards resulted in creating diverse options for
WTO members to implement their TRIPS obligations, while taking into account different
considerations such as the country’s stage of development and specific national interests
(for example, public health). In particular, the WTO Doha Declaration on the TRIPS
Agreement and Public Health, agreed by WTO Members in 2001, provided a clearer context
for the use of policy options under the TRIPS Agreement, in articulating the general; role of
the TRIPS Agreement in promoting access to medicines and in clarifying specific flexibilities
to that end.

The Doha Declaration recognized that WTO Members with insufficient or no manufacturing
capacities in the pharmaceutical sector could face difficulties in making effective use of
compulsory licensing under the TRIPS Agreement. Consequently, the new Article 31bis was
included in the TRIPS Agreement in order to create a new form of compulsory license
especially tailored for the export of medicines to countries in need (special compulsory
licenses). The special compulsory license system addresses a particular scenario for access
to medicines:

- A country needs to import a medicine from a foreign supplier because it lacks sufficient
manufacturing capacity in its pharmaceutical sector.
- The medicine can be produced under a compulsory license in another country.
- Export of the non-predominant part of the production in that country does not satisfy the
needs of the importing country.
- Therefore, the importing country must use the special compulsory license system in order
to import medicines produced under a compulsory license from another country.
The new Article 31bis entered into force on January 23, 2017.

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 SELF-ASSESSMENT QUESTION
SAQ 6: Can you list four international treaties on patents administered by WIPO and
their main features?

Type your answer here:

Model Answer SAQ 6:

The Paris Convention for the Protection of Industrial Property, which establishes basic
principles for the international protection of industrial property, namely patents, utility models,
industrial designs, trademarks, service marks, trade names, indications of source or
appellations of origin, and the repression of unfair competition. It was the first international
agreement for the protection of industrial property and enabled international protection of
industrial property, based on the right of priority.

The Patent Cooperation Treaty establishes procedures for the filing and processing of
international patent applications. Although this Treaty facilitates the processing of patent
applications at the international level, it does not confer applicant a “world patent” or the right
to be granted a patent in a specific country. It is aimed at facilitating both applicants and
patent offices, where patent protection is sought in a number of countries. The ultimate
decision whether a patent should be granted, however, remains under the responsibility of
each country where patent protection is sought.

The Patent Law Treaty aims at streamlining formality requirements for national and regional
patent applications, so as to make them more user-friendly. One of the most important
features of this Treaty is the standardization of requirements applied by national legislations.
For example, for contracting parties to the PLT, a filing date of a patent application is
accorded, if it contains: an indication that the elements received by the Office are intended to
be an application for a patent for an invention; indications that would allow the Office to
identify and / or to contact the applicant; and a part which appears to be a description of the
invention.

Under the Budapest Treaty on the International Recognition of the Deposit of

Microorganisms for the Purposes of Patent Procedure, the member states agree to
recognize, for the purpose of patent procedures, the deposits of microorganisms made in any
international depositary authority. This Treaty facilitates disclosure of inventions involving
microorganisms in patent applications, where patent protection is sought in different
countries.

DL170 Essential of Patents – Module 5 page 22 / 24

 Summary of Module 3

This module has introduced the different layers of the international patent system, namely:

• National patent laws/legislation;

• Regional patent laws/legislation, and
• International treaties on patents

Some of the practical reasons for filing a national application in the home country are the
possibility to file locally. This allows for communication with the Office in the local languages,
last minute filing, no time-zone difference, possibility to obtain a first search report quickly
and making payments in national currency.

A number of regional agreements exist. The European Patent Convention, the Eurasian
Patent Convention and the Harare Protocol allow applicants to file a patent application for a
regional patent. In his application, the applicant chooses the countries in which he wants to
protect his invention. If the regional patent is refused, the applicant has the possibility to
convert his regional application into a national application under certain conditions.
Maintenance fees after grant are either paid to the regional patent Office and redistributed
among the designated States (Eurasian patent and ARIPO patent) or directly paid to the
national patent Offices (European patent).

Further regional agreements are the Bangui Agreement, the common intellectual property
regime of the Andean Community and the Patent Regulation of the Cooperation Council for
the Arab States of the Gulf (Gulf Cooperation Council).

The first broad multilateral treaty on patents concluded is the Paris Convention for the
Protection of Industrial Property (Paris Convention), which came into effect on July 7,
1884. It contains:

• rules of substantive law which guarantee a basic right known as the right to national
treatment in each of the member countries;
• another basic right known as the right of priority;
• a certain number of common rules in the field of substantive law which contain either
rules establishing rights and obligations of natural persons and legal entities, or rules
requiring or permitting the member countries to enact legislation following those rules;
• the administrative framework which has been set up to implement the Convention and
includes the final clauses of the Convention.

The Patent Cooperation Treaty (PCT) entered into force in June 1978. The Treaty makes it
possible to seek patent protection for an invention simultaneously in each of a large number
of countries by filing an “international” patent application. Such an application may be filed by
anyone who is a national or resident of a Contracting State. It may generally be filed with the
national patent Office of the Contracting State of which the applicant is a national or resident
or, at the applicant’s option and if allowed by the national legislation, with the International
Bureau of WIPO in Geneva.

The procedure under the PCT has great advantages for the applicant, the patent Offices and
the general public:

• the applicant has up to 18 months more than he has in a procedure outside the PCT to
reflect on the desirability of seeking protection in foreign countries, to appoint local patent
agents in each foreign country, to prepare the necessary translations and to pay the
national fees;

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• he is assured that, if his international application is in the form prescribed by the PCT, in
principle, it cannot be rejected on formal grounds by any designated Office during the
national phase of the processing of the application;
• on the basis of the international search report or the written opinion, he can evaluate with
reasonable probability the chances of his invention being patented;
• the applicant has the possibility during the international preliminary examination to amend
the international application to put it in order before processing by the designated Offices;
• the search and examination work of Patent Offices can be considerably reduced or
virtually eliminated thanks to the international search report, the written opinion and,
where applicable, the international preliminary examination report that accompany the
international application;
• since each international application is published together with an international search
report, third parties are in a better position to formulate a well-founded opinion about the
patentability of the claimed invention.

The Strasbourg Agreement Concerning the International Patent Classification (IPC)

entered into force on October 7, 1975. The IPC is primary a means for obtaining an
internationally uniform classification of patent documents; and an effective search tool for the
retrieval of relevant patent documents by industrial property Offices and other users in order
to establish the novelty and evaluate the inventive step of the invention.

The Budapest Treaty on the International Recognition of the Deposit of

Microorganisms for the Purposes of Patent Procedure entered into force on
August 9, 1980. The main feature of the Treaty is that one deposit of microorganisms for the
purposes of patent procedure, with one international depositary authority, will suffice for the
purposes of patent procedure before the national patent Offices of all of the Contracting
States and before any regional patent Office (for example the European Patent Office) which
has filed a declaration of acceptance under Article 9(1)(a) of the Treaty (which, are The
European Patent Office (EPO), the Eurasian Patent Organization (EAPO) and the African
Regional Intellectual Property Organization (ARIPO)).

The Patent Law Treaty (PLT) entered into force on April 28, 2005. The PLT is designed to
streamline and harmonize formal requirements set by national or regional patent Offices for
the filing of national or regional patent applications and the maintenance of patents. It
provides a standardized set of the filing date requirements, mechanisms to avoid
unintentional loss of rights and simplified formality requirements regarding communications,
representation and recording of changes concerning patents and patent applications.

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS

Agreement) entered into force on January 1, 1995, the date on which the WTO began its
work. The Agreement requires that the substantive obligations of the main conventions of the
WIPO, such as the Paris Convention for the Protection of Industrial Property (Paris
Convention) and the Berne Convention for the Protection of Literary and Artistic Works
(Berne Convention) in their most recent versions, must be complied with.

Some of other features of the TRIPS Agreement are:

• the national treatment which forbids discrimination between a member’s own nationals
and the nationals of other members;
• the most-favored-nation treatment which forbids discrimination between the nationals of
other members;
• provisions on enforcement and dispute settlement.

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