A Review of the Patent Related Provisions of the TPP – Patent Revocation, Publication and Delays

This is our second post examining certain of the patent related provisions of the Trans-Pacific Partnership (TPP) from the WikiLeaks released final “agreed version of the TPP chapter on intellectual property rights.  Our first post, which examined patentable subject matter and grace periods, can be found here. In this post, we review the TPP provisions relating to patent revocation, publication of patent applications and procedures for adjusting patent term due to an unreasonable delay by a patent office.

Procedures allowing for patent revocation

Section QQ.E.3 provides that each country shall provide procedures to allow a patent to be cancelled, revoked or nullified, but only on those grounds that would have justified a refusal to grant a patent. A country may also provide that fraud, misrepresentation or inequitable conduct may provide a basis for cancelling, revoking or nullifying a patent or holding a patent unenforceable. A country may provide that a patent can be revoked in a manner consistent with Article 5A of the Paris Convention and the TRIPS Agreement.

Publication of Patent Applications

Section QQ.E.11 provides that each country shall “endeavor” to publish (unpublished) patent applications promptly after expiration of 18 months from the filing date, or, if priority is claimed, from the priority date. If an application is not published, then the application or corresponding patent must be published as soon as practicable. Moreover, each country is required to provide procedures for the early publication of an application (prior to the expiration of 18 months from the filing date or earliest claimed priority date).

Patent Office Delays

Section QQ.E.12 provides that each country shall use its “best” efforts to process patent applications in an “efficient and timely manner” and avoid “unreasonable or unnecessary delays”. Additionally, each country may provide procedures that allow an applicant to request expedited examination of a patent application. Moreover, this section provides that in the event of unreasonable delays in a country’s issuance of an applicant’s patent, mechanisms shall be provided that shall “adjust the term of the patent to compensate for such delays” upon the request of the patent owner.

An “unreasonable” delay includes at least a delay in the issuance of a patent of more than five years from the date of the filing of the application in the territory, or three years after a request for examination of the application has been made, whichever is later.

A country may exclude from the determination of such delay, periods of time that:

  1. Do not occur during the processing (meaning the initial administrative processing as well at the time of grant) of or the examination of, the patent application by the granting authority;
  2. Are not directly attributable (namely, those that are outside the direction or control of the granting authority) to the granting authority; and
  3. Are attributable to the applicant.

This post was written by Lisa Mueller.

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