United States: Significant Changes Under Patent Law Treaty Take Effect December 18, 2013

As Congress continues to propose new legislation to "improve" the Leahy-Smith America Invents Act (AIA), practitioners and stakeholders must not forget that significant law and rule changes implementing the Patent Law Treaty of 2000 (PLT) take effect December 18, 2013. The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, and the USPTO published its final rules on October 21, 2013. As I wrote previously, some of the most significant changes relax the requirements for securing an application filing date, provide for restoration of a priority claim if an application is unintentionally filed beyond the priority term, and eliminate the "unavoidable" standard for reviving abandoned applications and obtaining acceptance of delayed fee payments. The USPTO's final rules also make other changes to miscellaneous application filing and processing rules.

Relaxed Filing Date Requirements for Non-Provisional Utility Patent Applications

Utility patent applications filed on or after December 18, 2013 will be awarded a filing date regardless of whether they include any claims, under amended 35 USC § 111(a)(3) and (4):

Note that amended § 111(a)(4) no longer requires "a drawing" to secure a filing date. However, as the USPTO warns in the Federal Register Notice, 35 USC § 113 still provides that a drawing may be required "where necessary for the understanding of the subject matter sought to be patented," and that the absence of any such necessary drawing may preclude patentability.

Relaxed Filing Date Requirements for Subsequent Applications

Subsequent applications filed on or after December 18, 2013 can be filed by making reference to the prior application, without submitting a copy of the prior application at the time of filing, under new 35 USC § 111(c):

The USPTO is implementing this new option under 37 CFR § 1.57:

Sec. 1.57 Incorporation by reference.

The Federal Register Notice warns of the consequences of misidentifying the prior application:

This means that if the prior application is misidentified, the subsequent application will not be awarded a filing date until the correct specification is filed. If these procedures were pursued close to the grant or abandonment of the prior application, continuity of pendency could be lost.

When the prior application is a foreign application, new CFR § 1.57(a)(4) requires submission of a certified copy of the prior application within the later of four months from the filing date of the subsequent application or 16 months from the filing date of the prior application:

Expanded Missing Parts Practice

The USPTO is expanding Missing Parts practice to reflect the relaxed application filing date requirements. If an application is filed without claims, or if a subsequent application is filed by reference to a prior application, the applicant will be given a time period to supply the missing parts. (If the applicant did not provide a correspondence address with the initial filing, the applicant will have three months from the filing date to satisfy the requirements.)

For an application filed without claims, CFR § 1.53(f)(1) provides:

(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor's oath or declaration (Sec. Sec. 1.63, 1.64, 1.162, or 1.175), and the applicant has provided a correspondence address (Sec. 1.33(a)), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by Sec. 1.16(f), to avoid abandonment.

For a subsequent application filed by reference to a prior application, CFR § 1.57(a)(1) provides:

Note that if the prior application is a foreign priority application that is not in English, a copy, English translation and certified copy will be required.

A New Patent Term Adjustment Deduction

As set forth in the Federal Register Notice, the PLTIA provides "applicants with additional opportunities to delay the examination process (e.g., the ability to file an application without any claims and to file an application merely by reference to a prior-filed application)." The USPTO has determined that it is appropriate to require "that an application should be placed in condition for examination within eight months of its filing date (or date of commencement of national stage in an international application)" or else be subject to PTA deduction. Thus, 37 CFR § 1.704 is amended to insert new paragraph (c)(11) (and redesignate current paragraphs (c)(11) and (c)(12) as paragraphs (c)(12) and (c)(13), respectively) and add new paragraph (f) to provide for PTA deductions if an application is not complete within 8 months of its filing date.

These changes apply only to applications filed under 35 USC § 111(a) on or after December 18, 2013, or PCT applications that enter the U.S. national stage on or after December 18, 2013.

Restoration of Unintentionally Missed Priority Filing Deadline

The PLTIA amends 35 USC § 119 and § 365 to permit "restoration" of a priority claim under § 119(a) (foreign priority claim), § 119(e) (priority claim to a provisional application), or § 365(b) (priority claim fora PCT application) if the subsequent application was unintentionallyfiled after but within two months of the applicable priority period (12 months for utility patent applications, 6 months for design patent applications). The USPTO is implementing these changes in new 37 CFR § 1.55(c) (for foreign priority claims) and 37 CFR §1.78(b) (for priority claims to provisional applications), which provide for petitions for the restoration of the right of priority when a subsequent application is filed after but within 2 months of the expiration of the priority period. As set forth in the rules, such a petition must include:

1. The priority claim ... in an application data sheet ... unless previously submitted;
2. The petition fee as set forth in Sec. 1.17(m); and
3. A statement that the delay in filing the subsequent application beyond the priority period was unintentional.

The rules also provide that the "Director may require additional information where there is a question whether the delay was unintentional."

These changes take effect December 18, 2013, and apply to patent applications filed before, on, or after that date.

Revival Only Under "Unintentional" Standard

The PLTIA adds 35 USC § 27 to provide for revival based on "unintentional" delay:

The revival fees paragraph of 35 USC § 41 is amended as follows:

Conforming amendments are made to other sections of the Patent Act relating to revival or delayed acceptance of issue or maintenance fees. The USPTO is implementing these provisions by revising its rules to eliminate reference to/requirements for a showing of "unavoidable" delay, and to provide for revival solely based on a showing of unintentional delay. The $1700 fee is subject to the Small Entity 50% fee reduction, but not the Micro Entity 75% fee reduction.

These changes take effect December 18, 2013, and apply to patent applications filed, and patents granted, before, on, or after that date.

Permitted Practices, Not Best Practices

As discussed throughout the Federal Register Notice, while many of the PTLIA amendments will simplify patent application filing practice, many of the changes do not reflect "best practices," and could jeopardize patent rights. For example, if a patent application is prepared without claims and/or drawings, there may be a question whether the specification as filed adequately describes and enables the eventually claimed subject matter. Still, these changes could benefit applicants who are unable to complete these application formalities at the time of filing.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.