Patent Law Changes – Claims Unnecessary to Obtain a Filing Date

On Wednesday, December 5, 2012, the House of Representatives passed two bills that are now await President Obama’s signature.  The bill — S. 3486— implements both the Patent Law Treaty (PLT) and the Hague Agreement Concerning the International Registration of Industrial Designs.  The U.S. Senate previously passed the same bill in the same form on September 22, 2012. Thus, the remaking of U.S. patent law and patent practice continues, and we will see more rulemaking coming from the United States Patent and Trademark Office.

S.3486 is the implementing legislation that modifies U.S. consistent with treaty obligations. The Senate ratified both the PLT and Hague Agreement in 2007.

With respect to the Hague Agreement,  it will now be possible to file a single application in English at the USPTO and have that application be the basis for design protection in each country that has similarly adopted the treaty.

The PLT seems to have broader impact than the Hague Agreement for the typical patent practitioner because it changes the requirement of what must be present at the time of filing a non-provisional patent application in order to obtain a filing date. Similarly, the PLT also makes it quite a bit easier to file a subsequent patent application that claims the benefit of a previously filed application.

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Presently, and for the next few days until President Obama signs S.3486, 35 U.S.C. 111(a) says the following regarding what needs to be present at the time of filing a non-provisional patent application:

(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.

(2) CONTENTS.—Such application shall include—

(A) a specification as prescribed by section 112 of this title;

(B) a drawing as prescribed by section 113 of this title; and

(C) an oath by the applicant as prescribed by section 115 of this title.

(3) FEE AND OATH.— The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

(4) FAILURE TO SUBMIT.— Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

Notice that presently under § 111(a) a non-provisional application must include patent claims.

Once President Obama signs S.3486 into law patent claims will not be required in order to obtain a filing date for a non-provisional patent application. This is accomplished by replacing § 111(a)(3) and § 111(a)(4) with the following text:

(3) FEE, OATH OR DECLARATION, AND CLAIMS.— The  application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted  after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.

(4) FILING DATE.— The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.

(emphasis added). This will require the Patent Office to create Rules to implement § 111(a)(3) and (4), so be on the lookout for yet more Patent Office rulemaking.

35 U.S.C. 111(b) is also modified by S.3486 to replace § 111(b)(3) and § 111(b)(4) with the following:

(3) FEE.— The application shall be accompanied by the fee  required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.

(4) FILING DATE.— The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.

§ 111(b), which relates to provisional patent applications, is not a substantive law change. The change to § 111(a) does substantively change the law, the change to § 111(b) merely codifies what is already the case. As has been true with non-provisional patent applications, the fee may also come late in the case of filing a provisional patent application in response to a Notice of Missing Parts. Thus, the Patent Office shouldn’t need to create implementing rules relative to the amendment to § 111(b).

The last change, aside from conforming amendments, is the addition of a new subsection (c) to § 111.  35 U.S.C. § 111(c) will say:

(c) Prior Filed Application.— Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed
application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—

(1) the application is revived under section 27; and

(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.

This new subsection (c) will make it easier to file a U.S. application that claims priority to a previously filed application and allow for the specification and drawings in the previously filed application to make up the specification and drawings in the new U.S. application. The Patent Office will need to create Rules to deal with this. It seems this will make last minute U.S. filing much more feasible, although there will still need to be suitable copies of the specification and drawings ultimately filed in the U.S. in response to either a Notice of Missing Parts or Notice of Omitted Items.