October 2012 Issue

Rule Review

AIA Paves Way for Implementation of Clinton-Era Patent Treaties

On September 22, 2012, the Senate passed legislation implementing a pair of treaties first signed by Bill Clinton in the 1990s and later ratified by the Senate on December 7, 2007.  U.S. membership under the treaties was made possible, in part, by the systemic changes to the American patent law system brought about by the America Invents Act (AIA), which took steps to more closely conform U.S. patent law to international norms, most notably by eliminating the American First-to-Invent system, and accompanying changes to oath/declaration provisions.

The first treaty implemented by the legislation is the Patent Law Treaty (PLT), which first entered into force on April 28, 2005, elsewhere in the world.  The United States will become the 33rd contracting party to the PLT.  The PLT is intended to harmonize various formal requirements.  For example, minimum time limits for filing translations or other missing parts are set at two months and for claiming priority at four months.  As well, an earlier-filed application to which priority is claimed may support formal requirements for a filing date to be granted, if that earlier application is incorporated by reference.  This latter point solves the problem where filing dates were not granted by the U.S. Patent and Trademark Office (USPTO) for omission of, or submission of, defective drawings, claims, or a specification.

With respect to U.S. law, S. 3486 removes the submission of claims as a filing date requirement.  Under the new law, consistent with the PLT, the filing date of an application would be the date on which a description is received in the USPTO.  However, applicants will still have to submit filing fees, an oath, and one or more claims within a time period to be determined by the Director of the USPTO.  That notwithstanding, a reference made to an earlier-filed application will be deemed a sufficient description for the later application to be accorded a filing date, assuming a copy of the earlier application, including any drawings, is submitted within a prescribed time period.

The treaty also forbids member countries from rejecting an application or revoking or invalidating a patent for failure to comply with procedural requirements, absent a showing of fraud.  Under U.S. law, this raises interesting harmonization questions regarding the doctrine of inequitable conduct, which in its current form requires both but-for materiality and specific intent to deceive the USPTO, but not fraud.

The full text of the PLT and its regulations can be found on the WIPO website at

The second treaty implemented by the legislation is the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, which entered into force elsewhere in December 2003.  The United States will become the 61st contracting party to the Agreement.  The Hague System affords design patent applicants some of the same privileges already afforded utility patent applicants under the Patent Cooperation Treaty.  In particular, design patent applicants may pursue protection in multiple member countries by filing one English-language International Design Application in the USPTO either as an original filing, or within six months from an earlier-filed design application to which priority is claimed.  Applications filed under the Hague System abroad that designate the United States will be afforded provisional rights under U.S. law.  Additionally, the legislation extends the term for design patents from fourteen years to fifteen years from their issue date.

The full texts of the Hague Agreement and the Geneva Act can be found on the WIPO website at

Following the Senate’s passage of the bill, S. 3486 has been referred to the House Committee on the Judiciary while the House of Representatives considers sister bill H.R. 6432.  The United States will not be afforded membership under the treaties until legislation passes both houses of Congress in final form.  In any event, it is highly unlikely that the House will consider H.R. 6432 before the elections this November.  Stay tuned!