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PAPER: FLO/1.5
Summary of presentation - Bruce Murray
The Patent Law Treaty
The previous speaker has provided some details of the important provisions of the draft treaty. I would like to question their usefulness, challenge the audience to identify the beneficiaries, and provide possible answers to some of these.
- Filing date (Article 4)
Any filing which only meets the minimum requirements is arguably of little value to an applicant. If so, is there any value in these provisions. Does the applicant become the decision maker rather than the Office? Can issues of new matter be resolved simply by reference to a priority document? Is it useful to make a filing simply by reference to some document filed earlier elsewhere?
- Application (Article 5)
If form and content requirements of national offices can be avoided by filing under the PCT, why not do that? In any case electronic filing will solve all form and content requirements. Can offices exclude paper filings, and would it not be better if all offices were required to accept electronic filings? While offices cannot require evidence of any matter unless they reasonably doubt the truth of what has been stated, is that not always the case? How useful is a translation of a priority document prepared by the applicant, especially where a competitor wants to attack patentability.
- Representation/address for service (Article 7)
Can an applicant appoint a representative and if so when? What does an office do before and after that appointment? Can you identify circumstances where an office must not require a local representative and is there an advantage for the office in having one appointed? Surely it would be of advantage to the applicant? What would an office do if it received incoming mail directly from the applicant?
- Signatures (Article 8)
Why should offices be able to require notarisation or certification of a signature? Are there any circumstances where it could add value? How frequently is it required, and how easily obtained?
- Correcting mistakes (Article 12)
Mistakes can only be corrected according to national law if no national provision then no correction available. Why is there no minimum obligation required of all offices? are mistakes so infrequent that it is of no concern? If so, why bother with any provision at all?
- Extensions of time (Articles 13-15)
Why should offices be able to deny a reasonable request for extension of time? Why should you have to prove your intentions? Why not for long periods, especially if you ask for the extension before the existing time limit expires? If a competitor took advantage of the invention after it was advertised lapsed or ceased, surely they are entitled to intervening rights if it is restored? Why include provisions on intervening rights if there is no requirement to provide for them in national law.
- Priority claims (Article 16)
How much extra time should be available to claim priority or to file a subsequent application? Are these provisions different to the extension of time provisions of Articles 13-15? If that is so, why is this provision more onerous? Why not merge them for simplicity?
- Conclusions
I will conclude with some observations about whether it is only a Procedures Treaty, whether it has helped the harmonisation process, and whether offices will sign up.
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