UIC Law Review Volume 26 Issue 3 Article 3 Spring 1993 An Overview of Changes to the Patent Law of the United States after the Patent Law Treaty, 26 J. Marshall L. Rev. 497 (1993) Richard C. Wilder Follow this and additional works at: https://repository.law.uic.edu/lawreview Part of the Comparative and Foreign Law Commons, Intellectual Property Law Commons, International Law Commons, International Trade Law Commons, and the Transnational Law Commons Recommended Citation Richard C. Wilder, An Overview of Changes to the Patent Law of the United States after the Patent Law Treaty, 26 J. Marshall L. Rev. 497 (1993) https://repository.law.uic.edu/lawreview/vol26/iss3/3 This Article is brought to you for free and open access by UIC Law Open Access Repository. It has been accepted for inclusion in UIC Law Review by an authorized administrator of UIC Law Open Access Repository. For more information, please contact [email protected]. AN OVERVIEW OF CHANGES TO THE PATENT LAW OF THE UNITED STATES AFTER THE PATENT LAW TREATY RICHARD C. WILDER* INTRODUCTION A. The Negotiations on the PatentLaw Treaty In 1984, negotiations began under the auspices of the World In- tellectual Property Organization ("WIPO")' to harmonize "grace period" provisions.2 These negotiations soon developed beyond their original scope and eventually led to the Diplomatic Confer- ence for the Conclusion of a Treaty Supplementing the Paris Con- vention as Far as Patents are Concerned ("Diplomatic Conference"). The first part of the Diplomatic Conference was held June 3 to 21, 1991. While a second part of the Diplomatic Con- ference was scheduled for July 12 to 30, 1993, 3 this has been post- 4 poned at the request of the United States of America. * Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C. The author was a Senior Legal Officer in the Industrial Property Division of the World Intellectual Property Organization in 1990 and 1991. Special thanks are extended to Lawrence M. Sung, Ph.D., for his invaluable assistance in the prep- aration of this Article. 1. World International Property Organization ("WIPO") is a specialized agency of the United Nations charged with the responsibility of, inter alia, "taking appropriate action in accordance with its basic instrument, treaties and agreements administered by it... for promoting creative intellectual activity ..... " Agreement Between the United Nations and the World Intellectual Prop- erty Organization,WIPO, art. 1, Pub. 111 (Dec. 17, 1974). 2. See Committee of Experts on the Grace Periodfor Public Disclosure of an Invention Before Filing an Application, WIPO, 1st Sess., Doc. GP/CE/I/2 Rev. (July 27, 1984). So-called "grace period" provisions exempt certain disclo- sures made during a specified time prior to the filing or priority date of an appli- cation, from affecting the patentability of the claimed invention. See infra notes 157-67 and accompanying text for a discussion of grace periods. 3. See Draft Report, International Union for the Protection of Industrial Property (Paris Union), WIPO, 19th Sess., 9th Extraordinary, f 5, Doc. P/A/XIX/4 Prov. (Sept. 29, 1992). 4. See Draft Report, International Union for the Protection of Industrial Property (Paris Union), WIPO, 20th Sess., 10th Extraordinary, 9 and 38, Doc. P/A/XX/1 Prov. (Apr. 5, 1993). There, the Delegation of the United States of America stated that "[a]s the Patent Law Treaty had been controversial in the United States of America, particularly with respect to the issue of first-to-file, the new Administration desired to make a thorough review of the issue in order to determine whether to proceed to a Diplomatic Conference. As of this time, the President of the United States of America had not yet named a person to The John Marshall Law Review (Vol. 26:497 At the first part of the Diplomatic Conference, the participants discussed a document known as the "Basic Proposal" for the Treaty and the Regulations.5 While the Paris Union Assembly 6 decided that no final decisions could be taken at the first part of the Diplo- matic Conference, 7 the International Bureau of WIPO recently is- sued a document which takes into consideration discussions at the first part of the Diplomatic Conference and makes "suggestions that are intended to help find solutions where agreement so far has not been reached."8 Differences between the Patent Law Treaty ("PLT") and the "observations" of the International Bureau of WIPO are discussed in this Article. This Article discusses changes9 that the United States must make to its patent law' in order to comply with its obligations under the PLT 11 if the PLT is adopted12 in its present form. Ad- serve as Commissioner of Patents and Trademarks to conduct such a review." Id.$ 10(a). 5. Draft Treaty Supplementing the ParisConvention for the Protection of Industrial Property as Far as Patents are Concerned (Patent Law Treaty), WIPO, Doc. PLT/DC/3 (Dec. 21, 1990) [hereinafter PLT], reprintedin Records of the Diplomatic Conference for the Conclusion of a Treaty Supplementing the Paris Convention as Far as Patents are Concerned, WIPO, Diplomatic Confer- ence, pt. 1, at 11-53 (1991) [hereinafter Records]. Since the PLT is reproduced as an appendix to this Symposium, all future citations will cite to the appropriate provisions in the PLT only. The PLT is a "special agreement... for the Protection of Industrial Prop- erty" under Article 19 of the Paris Convention. PLT, supra,Preamble ("[The PLT] constitutes a special agreement within the meaning of Article 19 of the Paris Convention for the Protection of Industrial Property."). 6. The Paris Union Assembly is the body that governs activities under the Paris Convention, including convening the Diplomatic Conference. See Paris Conventionfor the Protectionof Industrial Property, WIPO, art. 13(2)(a), Doc. 274(E) (1992) [hereinafter Paris Convention]. 7. See Report, WIPO, 17th Sess., 8th Extraordinary, 27, Doc. P/A/XVII/2 (Apr. 30, 1991) (stating that it "was understood that the final decisions on all articles would be made in the second part of the Diplomatic Conference"). 8. Observations of the International Bureau Following the First Part (1991) of the Diplomatic Conference, WIPO, Introduction 1, Doc. PLT/DC/69 (Jan. 29, 1993) [hereinafter Observations]. 9. Consequently, provisions in the Articles and Rules of the PLT which do not appear to require changes to United States law are not discussed, except where necessary to provide background to the provisions that are discussed. 10. For purposes of this Article, the phrase "United States law" refers col- lectively to the patent law of the United States, contained in Title 35 of United States Code ("U.S.C."), the regulations promulgated under that law and con- tained in Title 37 of the Code of Federal Regulations ("C.F.R."), and relevant case law. 11. All Articles and Rules of the PLT are directed, either expressly or im- plicitly, to the Contracting Parties, one of which may be the United States. Consequently, the PLT, by its terms, addresses itself to the political, not the judicial department, and Congress must execute the obligations under the PLT before they can become a rule for United States courts to follow. See Foster v. Neilson, 27 U.S. (2 Pet.) 253 (1829). In Foster, the court stated: Our constitution declares a treaty to be the law of the land. It is, conse- quently, to be regarded in courts of justice as equivalent to an act of the 19931 Overview of Changes to the Patent Law mittedly, it may not be possible to anticipate all the changes that will be required to United States law by adoption of the PLT.13 Such changes will be fully exposed only with an examination and testing of United States law following the adoption of the PLT. B. Articles and Rules of the PLT Discussed The PLT consists of 39 Articles and 13 Rules. A number of Articles and Rules, however, are purely administrative in nature and are not addressed further. These include the administrative paragraphs (i), (iii) to (vii), and (x) to (xiv) of Article 2, Articles 27 to 39, and Rules 11 to 13.14 Furthermore, while the Preamble and Article 1 (Establishment of a Union) may be of some interest in terms of international public law, these sections would not likely directly influence domestic legislation enacted pursuant to obliga- tions under the PLT.15 Therefore, the substance of the Preamble and Article 1 are not examined. legislature, wherever it operates of itself, without the aid of any legislative provision. But when the terms of the stipulation import a contract, when either of the parties engages to perform a particular act, the treaty ad- dresses itself to the political, not the judicial department; and the legisla- ture must execute the contract before it can become a rule for the Court. Id. at 314. In a word, then, the PLT is not a "self-executing" treaty. See Cameron Septic Tank Co. v. Knoxville, 227 U.S. 39 (1913) (holding that the Paris Conven- tion was not self-executing); Robertson v. General Elec. Co., 32 F.2d 495, 500 (4th Cir. 1929) (holding that while treaties affecting patent rights may be self executing, they are generally not so interpreted "unless their language compels a different interpretation"), cert. denied, 280 U.S. 571 (1929). 12. The term "adopted" means that the following four steps are taken: (i) the Diplomatic Conference reconvenes; (ii) the Diplomatic Conference, in its second or subsequent parts, concludes the PLT; (iii) the United States signs the PLT; and, (iv) the United States ratifies the PLT. 13. For example, a United States district court case involving an interna- tional patent application resulted in an apparently unexpected holding.