(3) Under article 64 (4) (a) the filing outside of the United States of an international application designating this country is not equated to an actual filing in the United States for prior art purposes.

Dept. of State File L/T.

Portions of art. 64 read as follows:

Article 64
Reservations

*

(1) (a) Any State may declare that it shall not be bound by the provisions of Chapter II.

(b) States making a declaration under subparagraph (a) shall not be bound by the provisions of Chapter II and the corresponding provisions of the Regulations.

(3) (a) Any State may declare that, as far as it is concerned, international publication of international applications is not required.

(b) Where, at the expiration of 18 months from the priority date, the international application contains the designation only of such States as have made declarations under subparagraph (a), the international application shall not be published by virtue of Article 21 (2).

(c) Where the provisions of subparagraph (b) apply, the international application shall nevertheless be published by the International Bureau: (i) at the request of the applicant, as provided in the Regulations, (ii) when a national application or a patent based on the international application is published by or on behalf of the national Office of any designated State having made a declaration under subparagraph (a), promptly after such publication but not before the expiration of 18 months from the priority date. (4) (a) Any State whose national law provides for prior art effect of its patents as from a date before publication, but does not equate for prior art purposes the priority date claimed under the Paris Convention for the Protection of Industrial Property to the actual filing date in that State, may declare that the filing outside that State of an international application designating that State is not equated to an actual filing in that State for prior art purposes.

(b) Any State making a declaration under subparagraph (a) shall to that extent not be bound by the provisions of Article 11(3).

(c) Any State making a declaration under subparagraph (a) shall, at the same time, state in writing the date from which, and the conditions under which, the prior art effect of any international application designating that State becomes effective in that State. This statement may be modified at any time by notification addressed to the Director General.

On Dec. 16, 1977, the U.S. Permanent Mission to the World Intellectual Property Organization (WIPO) submitted a note to the Director General of WIPO concerning the declarations to the U.S. instrument of ratification to the PCT. An excerpt from the U.S. note follows:

Pursuant to article 64 (6) (a), the United States has the honor to notify the Director General of the following:

As the National Law of the United States of America does not equate, for prior art purposes, the priority date claimed under the Paris Convention for the protection of industrial property to the actual filing date in the United States of America, this country declares under article 64 (4) (a) of the Patent Cooperation Treaty, that the filing outside of the United States of America of an international application designating the United States of America, is not equated to an actual filing in the United States of America for prior art purposes.

If an international application designating the United States of America has been internationally published under article 21 of the Patent Cooperation Treaty, the prior art effect of the international application shall attach as of that date. If such international application was not internationally published, the prior art effect shall attach to it from the date on which a copy of such international application in the English language, together with the national filing fee and an oath or declaration of the inventor, was received by the United States Patent and Trademark Office.

Dept. of State File L/T.

Micro-organisms

On April 28, 1977, the United States signed along with 12 other states the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure, with regulations, done on April 28, 1977. The U.S. position paper prepared by Harvey J. Winter, Chairman of the U.S. Delegation to the Diplomatic Conference for the Budapest Treaty, prior to the April 28, 1977, signing described the purposes of the Treaty in part as follows:

There is no treaty operating today for the deposit of microorganisms relating to patents. Microbiological inventions are of growing importance in the pharmaceutical industry (especially antibiotics), in the food industry (e.g., cheese and beer), and in the chemical industry (e.g., desulfurization of petroleum). National laws now determine whether or not a deposit must be made as a condition for receiving a patent; U.S. law requires such a deposit. When protection for an invention involving the use of a microorganism is sought in a number of countries, the complex and costly procedures of the deposit of the micro-organism might have to be repeated in each of these countries. In order to eliminate or reduce the number of deposits, the United Kingdom in 1973 proposed that the World Intellectual Property Organization (WIPO) study the possibilities of one deposit serving the purpose of multiple deposits. This proposal was adopted by the Executive Committee of the Paris Industrial Property Convention in September 1973. A Committee of Experts was convened in 1974 and concluded that the solution to the problem could be found in the conclusion of a treaty. The Committee met again in 1975 and 1976 to develop the proposed treaty. . . .

The costs of administering the Convention will be minimal or nonexistent. The few administrative procedures needed (mainly the publication of a gazette) will be covered by the existing WIPO budget and staff. The proposed treaty does not include a per se commitment of funds or services by the U.S. Government. The treaty requires the issuance of guarantees by host governments of internationally recognized depositories. Therefore, if a private U.S. depository applies for international recognition as expected, the United States would be required to issue certain guarantees regarding that depository. If the latter ever ceased to exist (this contingency is considered highly unlikely), the U.S. Government could be required to trans

fer the specimens to another institution. The cost of providing such a service should be nominal, however, and the U.S. Patent and Trademark Office has assured us that the necessary funds would be available under their annual budget authorization.

A U.S. delegation consisting of government and private sector experts has participated in each of these preparatory meetings of the Experts Committee. The Committee also included the head of one of the United States' major culture collections who participated as a member of an observer nongovernmental organization.

The draft treaty developed by the expert group has the full support of the U.S. Government. The proposed treaty will establish an international system to approve depository institutions and the deposits therein. Under such a system, a simple deposit would meet the disclosure requirements of each country (belonging to the Convention) where a patent application was filed. The treaty would ensure the maintenance of high standards by foreign depositories, and it would ensure the acceptance by the member states of deposits in internationally recognized depositories. This in turn would reduce the risk and simplify the process for obtaining patent protection for microbiological inventions in a number of countries. Since U.S. firms are very active in the field of microbiological research, the treaty would be of significant benefit to U.S. nationals.

*

Dept. of State File EB/IFD/BP. The Budapest Treaty was not submitted for advice and consent to ratification by the Senate in 1977.

The Convention revising the Convention of the Union of Paris of Mar. 20, 1883, as revised, for the protection of industrial property (TIAS 6923; 21 UST 1583; 24 UST 2140; entered into force for the United States on Sept. 5, 1970, with the exception of arts. 1 through 12 which entered into force for the United States on Aug. 25, 1973) was done at Stockholm on July 14, 1967.

Nice Agreement

Trademarks

On May 13, 1977, the United States joined 13 other states in signing the Geneva Act (1977) of the Nice Agreement, as revised, concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks done on July 14, 1967 (TIAS 7419; 23 UST 1353; entered into force for the United States on May 25, 1972). The Geneva Act makes several procedural changes in the Nice Agreement in order to provide, inter alia, for a procedure whereby amendments to the international classification of goods and services for trademark registration purposes can be made by less than a unanimous vote and to provide for an authentic text in English of such classification. The Nice Agreement originally provided only for a French text.

In a note submitted to the Secretary of State on June 27, 1977, the Director General of the World Intellectual Property Organization

(WIPO) summarized the major amendments to the Nice Agreement contained in the Geneva Act in part as follows:

[I]t should be recalled that the responsibility for making amendments to the Classification lies with the Committee of Experts set up by article 3 of the Nice Agreement. "Amendments" are taken to mean any transfer of goods or services from one class to another or the creation of any new class in the Classification. Under the texts in force of the Agreement (article 3(3)), decisions of the Committee of Experts concerning amendments require the unanimous consent of the States members of the Nice Union. The Geneva Act replaces the requirement of unanimity with a requirement of a qualified-four-fifths-majority (article 3(7) (b)). The Geneva Act further provides that the majority is determined on the basis of the countries actually present and voting when the amendment is put to a vote; abstentions are not deemed to be votes. Similarly, decisions concerning changes other than amendments (addition of goods or services, deletions, editorial changes, for example) are taken by the Committee of Experts, according to the Geneva Act (article 3 (7) (a)), by a simple majority not of the Nice Union countries, as in the texts in force (article 3(4)), but of the countries actually present and voting. In addition, article 3 (5) of the texts in force, which gives experts the right to vote by correspondence and to delegate their powers to the expert of another country, has not been retained in the Geneva Act. The new procedure means that a single country can no longer veto an amendment of the Classification desired by the great majority of the member States. On the other hand, the fact that a highly qualified majority-four-fifths-has been chosen for the adoption of the most important changes (called "amendments") to the Classification, enables countries of the Nice Union which attach special importance to the stability of the Classification effectively to limit too frequent or too extensive changes. The new procedure thus achieves a welcome balance between the various interests and creates a more favorable climate for a larger extension of the geographic scope of the Nice Union.

The second major innovation in the Geneva Act concerns the languages of the Classification. Under the texts in force (article 1(6)), the Classification is drawn up in French and official translations may be published by the International Bureau of WIPO at the request of, and in agreement with, the countries concerned. The Geneva Act, on the other hand, provides that the Classification is in English and French and that both texts are equally authentic (article 1(4)). The Director General of WIPO is to establish official texts of the Classification in Arabic, German, Italian, Portuguese, Russian and Spanish and in such other languages as the Assembly of the Nice Union may designate, provided that the establishment of those texts does not entail financial implications for the budget of the Union or that of WIPO (article 1(6)). These new provisions on the languages of the Classification could well result in more and

more countries showing an interest in the Classification, applying it and acceding to the Nice Agreement, and thus bring about the desired geographical extension of the Nice Union.

WIPO Doc. C. M 542/CLIM 314 (June 27, 1977).

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Fuels and Energy

U.S.-Canada

Bilateral Agreements

On March 30, 1977, President Carter sent to the U.S. Senate for advice and consent to ratification the Agreement between the United States and Canada Concerning Transit Pipelines signed at Washington on January 28, 1977. An excerpt from President Carter's letter of transmittal to the Senate describing the Agreement follows:

The Agreement was negotiated in response to a request made by the Congress in the Trans-Alaska Pipeline Authorization Act (Public Law 93-153) that the President determine the willingness of the Government of Canada to permit the construction of pipelines across Canada to carry oil and gas from Alaska's North Slope to markets in the lower 48 States, the terms and conditions which might apply to the operation of such pipelines and the need for intergovernmental agreements for this purpose. The Agreement negotiated in response to this request provides reciprocal protection against interruption in the flow of hydrocarbons in transit, and against discriminatory taxation. The Agreement is applicable both to existing and future pipelines transiting the United States and to future pipelines transiting Canada.

It became clear early in the negotiations that the Government of Canada was not prepared to conclude an arrangement which granted advance approval to a specific pipeline project. Consequently, the Agreement was drafted without reference to the specific proposals which have been made for the construction of pipelines to transport gas from Alaska's North Slope to the lower 48 States. Its provisions would be applicable to both existing and future transit pipelines.

The Agreement does not constitute Canadian approval of construction of a transit pipeline across its territory. Upon completion of studies currently in progress, the Government of Canada will announce whether or not it is willing to permit construction of a transit pipeline for Alaska gas.

The Transit Pipeline Agreement provides a formal basis for United States-Canadian cooperation on hydrocarbon transportation systems, should both governments decide cooperation is advantageous.

S. Ex. F, 95th Cong., 1st Sess. III.