1. SM © 2012 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.comwww.ptslaw.com DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter. Treaty Obligations Pertaining to Patentable Utility Jay A. Erstling Comparative Intellectual Property Law Symposium April 4, 2012 TM

2. Overview Harmonization in a global economy Treaties & international agreements Paris Convention PCT PLT TRIPS NAFTA What does it all mean? April 4, 2012 2

3. Harmonization in a Global Economy Pursuing patent protection in multiple jurisdictions is increasingly common Upward trend in total patent families since 1994 Number of foreign-origin patent families more than doubled from 1985 to 2008 Filings by residents: US (49.4%), EPO (49.3%) and Canada (12.8%) Approximately 164,300 PCT applications were filed in 2010 1978-2004 to reach one million PCT applications in total 2004-2011 to reach two million “Harmonization” sometimes a dirty word but increasingly desired by many patent stakeholders to increase efficiency and quality while reducing costs and delay April 4, 2012 3

4. Paris Convention 1883 Administered by WIPO 174 contracting parties, including US, the countries of Europe and Canada Creates priority right Focus on national treatment Requires that each contracting state grant the same protections to nationals of other contracting states as it grants to its own nationals Does not specifically address “utility” April 4, 2012 4

5. Patent Cooperation Treaty 1978 Administered by WIPO 144 contracting parties (i.e., member countries) Created to provide applicants with a user-friendly, cost-effective and efficient system for filing international patent application Addresses “industrial applicability” Considered to be synonymous with “utility” Specific, substantial and credible utility April 4, 2012 5

6. Patent Cooperation Treaty Sets forth harmonizing requirements for international applications International application has the same legal effect as a national application in each member country International application then subject to same national law and requirements as a national application filed in that country Article 27(1) prohibits member countries from imposing form and contents requirements different from or in addition to those of the PCT on the international application; form and contents mean: Physical requirements and identification data Form and manner of describing and claiming April 4, 2012 6

7. Patent Cooperation Treaty Utility Rule 5.1 of the Regulations: Indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry and the way in which it can be made and used, or, if it can only be used, the way in which it can be used Sole exception: sequence listing required for nucleotide and/or amino acid sequence disclosures (Rule 5.2) If a member country requires evidence of utility in a particular form, it may only oblige the applicant to furnish that evidence during prosecution in the national phase Contracting states can prescribe substantive conditions on patentability, but cannot do so in a way that constitutes requirements as to application form and contents 7 April 4, 2012

8. Patent Law Treaty 2000 Administered by WIPO US and Canada have signed but not ratified; many EPO countries are member states (32 contracting parties in all) Extends PCT form and contents requirements to all patent applications, not just international applications Prohibits member countries from demanding compliance with any form and content requirement other than those of the PCT Limits member country patent office authority to require applicants to file evidence only where that office may reasonably doubt the veracity of that matter April 4, 2012 8

9. Agreement on Trade-Related Aspects of Intellectual Property Rights – TRIPS 1994 US, Europe and Canada are obligated (153 WTO members in total) Non-discrimination is a core goal Technological field of an invention Place of creation Locally produced or imported Provides flexibilities Compulsory licensing of pharmaceuticals But does not permit differential treatment in treatment of patent applications April 4, 2012 9

10. TRIPS Doha Declaration 2001 (and Decision of the General Council of 2003) Developing countries concerned about overly narrow reading of TRIPS by developed countries Reaffirmed flexibility of member states with respect to patent rights in order to provide better access to essential medicines Decisions of the WTO dispute resolution bodies have held members to high standards of compliance Recent efforts by WTO, WIPO and WHO to balance interests of developing and industrialized countries April 4, 2012 10

11. NAFTA 1992 US, Canada and Mexico Very similar to TRIPS with respect to patents and intellectual property April 4, 2012 11

12. What does it all mean? Form and contents requirements are distinct from substantive requirements PCT member countries cannot impose additional form and contents requirements Also cannot impose substantive requirements that, in effect, impose additional form and contents requirements Substantive requirements that relate to content of foreign-origin priority document can have the effect of discriminating against foreign-origin patent applications Patent systems should not be manipulated to implement policy Policy issues should be addressed transparently April 4, 2012 12

13. Questions? Jay A. Erstling April 4, 2012 13 Patterson Thuente IP 612.349.5740 erstling@ptslaw.com William Mitchell College of Law 651.290.7533 jay.erstling@wmitchell.edu