Study Note: This module should take around 3 hours to study.

MODULE 3: THE DIFFERENT LAYERS OF THE

INTERNATIONAL PATENT SYSTEM
(National, regional and international options)

Objectives

After completing the study of 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.

M3 – page 1 / 33
Version 2.0
 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

As you found out in your assignment in Module 2, 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 license1 before filing abroad;

 Practical reasons, such as the possibility to file the application and communicate
with the Office in national languages, the convenience of last minute filing, and
working in the same time-zone (no time difference between the applicant and the
national patent 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
(Paris Convention, part 3 in this module), “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
M3 – page 2 / 33
Version 2.0
M3 – page 3 / 33
Version 2.0
 Self-Assessment Question

SAQ 1: What are the reasons for filing a national patent application?

Type your answer here:

M3 – page 4 / 33
Version 2.0
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

 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

M3 – page 5 / 33
Version 2.0
2.1 Features of Certain Regional Agreements

2.1.1 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.

2.1.2 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.

2.1.3 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.

2.1.4 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.

2.1.5 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.

M3 – page 6 / 33
Version 2.0
2.1.6 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_goo
ds/pharmaceutical_and_cosmetic_products/l26026_en.htm

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

 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

2.1.5.1. Unitary Patent and Unified Patent Court

In recent years, the European Union has adopted several legal instruments relating
to the implementation of the unitary patent and the creation of a unified court to deal
with cases concerning unitary patents. The topic of unification of patent proceedings for
Europe has been on the table for many years and different degrees of progress on the
harmonization of the law have been achieved on this matter. The unitary patent project
has the objective of making it easier and more cost effective to obtain patent protection
at the same time in all European Union Member States that adopted the unitary patent
system by submitting a single request to the European Patent Office (EPO). Among the
benefits sought by the creation of the unitary patent are: to simplify the procedure for
obtaining a patent in countries of the European Union, to harmonize the interpretation
of patent law provisions through a unified patent court, to enhance the flexibility to enter
new markets, to create opportunities for licensing and cooperation, and to increase the
ability to attract investors. Two Regulations lay the ground for the creation of unitary
patent protection:

• Regulation (EU) No. 1257/2012 of the European Parliament and of the Council
of 17 December 2012. This instrument is the outcome of negotiation towards the
implementation of unitary patent protection in the European Union and, therefore,

M3 – page 7 / 33
Version 2.0
contains substantial and institutional provisions relating to the effects and proceeding of
a unitary patent.

• Regulation (EU) No. 1260/2012 of the European Parliament and of the Council
of 17 December 2012. In addition, this instrument, adopted along with the previous
regulation, relates to the translation arrangements applicable to unitary patents. In
principle, the regulation states that for a unitary patent no translation will be required,
which lowers the costs of the application. However, there are some special cases (in the
event of a dispute), as well as a transitional period in which translations to English or
another official language of the Union will be required.

Moreover, the Unified Patent Court (UPC) is an international court of EU Member

States that signed the UPC Agreement to deal with, among others, infringement and
validity cases of unitary patents and European patents. The objective is to put an end to
costly parallel litigation and enhance legal certainty by creating a court with exclusive
jurisdiction in respect of civil litigations on matters relating to those patents and other
related rights. To learn more about the UPC, you can visit its website and read the
Agreement document signed by some European Member States.

The UPC Agreement has not entered into force, and The EU Regulations
establishing the unitary patent system have not been applied, at the moment this course
is drafted.

The latest developments on these matters can be followed at the EPO website.

M3 – page 8 / 33
Version 2.0
 Self-Assessment Question

SAQ 2: What are the practical reasons for filing a patent application with a
regional Office?

Type your answer here:

M3 – page 9 / 33
Version 2.0
 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:

M3 – page 10 / 33
Version 2.0
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:

 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 (you
will learn more about this in Module 5);

 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 (you will learn more about
some of the substantive provisions in Module 5);

 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.

M3 – page 11 / 33
Version 2.0
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
each of a large number of 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 (these requirements were briefly
M3 – page 12 / 33
Version 2.0
described in Module 2 and will be covered in further detail in Module 5). This
provides an opportunity for the applicant to modify the 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 302 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

2
Although the timeframe for entering national phase is 30 months, 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

M3 – page 13 / 33
Version 2.0
 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 below illustration depicts the same process focusing on the duration of each stage.

M3 – page 14 / 33
Version 2.0
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 2, it is a hierarchical system of
classification method for inventions. The various areas 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).

3
Check the following link for IPC statistics:
https://www.wipo.int/classifications/ipc/en/ITsupport/Version20190101/transformations/stats.html

M3 – page 15 / 33
Version 2.0
M3 – page 16 / 33
Version 2.0
M3 – page 17 / 33
Version 2.0
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’ (the importance of this date will be further
discussed in Module 5).

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;

M3 – page 18 / 33
Version 2.0
 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.

M3 – page 19 / 33
Version 2.0
 Self-Assessment Question

SAQ 4: What are the benefits of filing an international application?

Type your answer here:

M3 – page 20 / 33
Version 2.0
 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:

M3 – page 21 / 33
Version 2.0
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

M3 – page 22 / 33
Version 2.0
 When filing for a patent, disclosure of the invention is a generally recognized
requirement for the grant of patents (see Module 5 on ‘Sufficiency of Disclosure).
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.

M3 – page 23 / 33
Version 2.0
 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_1452
4 of the Treaty.

M3 – page 24 / 33
Version 2.0
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.

M3 – page 25 / 33
Version 2.0
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.

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.

M3 – page 26 / 33
Version 2.0
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.

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.

M3 – page 27 / 33
Version 2.0
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.

M3 – page 28 / 33
Version 2.0
 Self-Assessment Question

SAQ 6: Can you list four international treaties on patents administered by

WIPO and their main features?

Type your answer here:

M3 – page 29 / 33
Version 2.0
 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.
M3 – page 30 / 33
Version 2.0
 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;

 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;

M3 – page 31 / 33
Version 2.0
 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 (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) 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. For example, it provides a standardized set of the filing date
requirements, mechanisms to avoid unintentional loss of rights and simplified
formality requirements with respect to, for example, 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.

The Paris Convention for the Protection of Industrial Property, the Patent
Cooperation Treaty (PCT), the Strasbourg Agreement Concerning the
M3 – page 32 / 33
Version 2.0
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.

M3 – page 33 / 33
Version 2.0