Just when you thought that the United States Patent and Trademark Office might be done with rulemaking for at least a bit, taking a collective sigh of relief after the final implementation of first-to-file rules on March 16, 2013, and new fees on March 19, 2013, the USPTO is back at it again. This time the USPTO is proposing rules necessary to implement he Patent Law Treaties Implementation Act of 2012 (PLTIA). See Changes to Implement Patent Law Treaty – Proposed Rules.
First, what is the Patent Law Treaty? The official party line is that the PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications. Still, I am just worn out from all the changes!
Historically the PLT was concluded on June 1, 2000, and entered into force on April 28, 2005. The United States Senate ratified the PLT on December 7, 2007, but it did not become effective in the United States upon ratification in 2007 because it is not a self-executing treaty. Legislation (i.e., title II of the PLTIA) to amend the provisions of title 35 to become compliant with our new treaty obligations was enacted on December 18, 2012.
The PLTIA amended U.S. patent laws to implement the provisions of the Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) in title I, and the Patent Law Treaty (PLT) in title II. However, we have to look forward to additional proposed rules because the USPTO is implementing the Hague Agreement and title I of the PLTIA in a separate rulemaking. This proposed rules package pertains only to the changes required to implement the PLT.
The notable changes in the PLTIA to implement the PLT can be generally broken down into four major categories, although there are all kinds of nuance as you probably could have guessed. Nevertheless, the categories are: (1) Changes pertaining to a patent application filing date; (2) changes pertaining to the revival of abandoned applications and acceptance of delayed maintenance fee payments; (3) changes pertaining to the restoration of the right of priority application to a foreign application or the benefit of a provisional application; and (4) changes to require that an application be in condition for examination within eight months of filing or lose patent term adjustment.
Whether you agree or disagree with these proposed rules, written comments must be received on or before June 10, 2013. Comments should preferably be sent via e-mail to: AC85.firstname.lastname@example.org. Comments may also be submitted by postal mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Robert W. Bahr, Senior Patent Counsel, Office of Patent Examination Policy. It is probably best to keep in mind that Congress enacted the PLTIA so the hands of the Patent Office are largely going to be tied. Litigating (or re-litigating) whether this endeavor was a good idea is not going to get you anywhere.
What is Required for a Filing Date?
In this rules package the USPTO is specifically proposing to revise the rules of practice pertaining to the filing date requirements for a patent application to provide that a claim is not required for a nonprovisional application (other than for a design patent) to be entitled to a filing date. As is currently the case, claims would also still not be required for a provisional patent application. Thus, amended to Rule 1.53(b) is proposed so as to provide that the filing date of an application for patent filed under § 1.53, except for an application for a design patent or a provisional application under § 1.53(c), is the date on which a specification, with or without claims is received in the Office.
The purpose of this change contained within the PLT and PLTIA is to minimize the formal requirements necessary for an application to be entitled to a filing date to safeguard against the loss of a filing date due to a technicality.
Filing a Nonprovisional “By Reference”
The Office is also proposing that the filing of a nonprovisional application could be accomplished ‘‘by reference’’ to a previously filed application in lieu of filing the specification and drawings. Accordingly, Rule 1.57(a) through (g) are proposed to be redesignated as Rule 1.57(b) through (h), respectively. This then opens up Rule 1.57(a), which is proposed to be added to implement the reference filing provisions. Why they couldn’t have kept Rule 1.57(a) through (g) and then added the reference filing provisions in (h) isn’t answered. Seems like unnecessary shuffling to me, but I suppose that is the least of our worries, isn’t it?
In any event, thanks to newly amended patent laws, 35 U.S.C. 111(c) provides that a reference made upon the filing of an application to a previously filed application shall, as prescribed by the Office, constitute the specification and any drawings of the subsequent application for purposes of a filing date.
For an application filed by reference to a previously filed application under proposed Rule 1.57(a), the specification and any drawings of the previously filed application will constitute the specification and any drawings of the application filed by reference under proposed § 1.57(a). Thus, the specification and any drawings of the previously filed application will be considered in determining whether an application filed by reference under proposed Rule 1.57(a) is entitled to a filing date under § 1.53(b).
Of course, eventually a patent application is going to need to be filed so that it can be examined. Thus, proposed Rule 1.57(a) provides that: (1) The applicant will be notified and given a period of time within which to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the required frees; and (2) the applicant has three months from the filing date of the application to file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the required fees. Proposed Rule 1.57(a)(1) also provides that such a notice may be combined with a notice under § 1.53(f) (e.g., a notice requiring that the applicant provide at least one claim and pay the filing fees).
Say Goodbye to Unavoidable Revival
The USPTO is also proposing to revise the rules of practice pertaining to the revival of abandoned applications (37 CFR 1.137) and acceptance of delayed maintenance fee payments (37 CFR 1.378) to provide for the revival of abandoned applications and acceptance of delayed maintenance fee payments solely on the basis of ‘‘unintentional’’ delay. This is necessitated because the PLTIA eliminates the provisions of the patent statutes relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of ‘‘unavoidable’’ delay.
Thus, Rule 1.137(a) is proposed to be amended to provide that if the delay in reply by applicant or patent owner was unintentional, a petition may be filed pursuant to § 1.137 to revive an abandoned application or a reexamination prosecution terminated under § 1.550(d) or § 1.957(b) or limited under § 1.957(c).
Restoration of the Right of Priority
Section 201(c) of the PLTIA amends 35 U.S.C. 365(b) by adding that the Director may establish procedures, including the requirement for payment of the fee specified in 35 U.S.C. 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim that pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional two-month period specified under 35 U.S.C. 119(a) or the PCT or PCT Regulations.
Thus, the USPTO is proposing to amend Rule 1.452. The USPTO is proposing to revise the rules of practice pertaining to priority and benefit claims to provide for the restoration of the right of priority to a prior-filed foreign application and restoration of the right to benefit of a prior-filed provisional application. The Office is providing with respect to the right of priority to a prior-filed foreign application that if the subsequent application is filed after the expiration of the twelve-month period (six-month period in the case of a design application) set forth in 35 U.S.C. 119(a), but within two months from the expiration of the twelve-month period (six-month period in the case of a design application), the right of priority in the subsequent application may be restored upon petition and payment of the applicable fee if the delay in filing the subsequent application within the twelve- or six-month period was unintentional.
Reducing Patent Term Adjustment
The Office is also proposing to revise the patent term adjustment rules to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date (or date of commencement of national stage in an international application). This proposed change to the patent term adjustment rules is to avoid the situation in which an applicant obtains patent term adjustment as a consequence of the applicant’s taking advantage of the additional opportunities to delay the examination process provided by the PLT and PLTIA.
Thus, Rule 1.704(c) is proposed to be amended to provide that in such a case the period of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination.
It now becomes necessary to define when an application is deemed ‘in condition for examination.’’ The USPTO proposes its definition in Rule 1.704(c), which provides that a U.S. patent application filed under 35 U.S.C. 111(a) is in condition for examination when the application includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings in compliance with § 1.84, any English translation required by § 1.52(d) or § 1.57(a), a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), the inventor’s oath or declaration or application data sheet containing the information specified in § 1.63(b), the basic filing fee (§ 1.16(a) or § 1.16(c)), any certified copy of the previously filed application required by § 1.57(a), and any application size fee required by the Office under § 1.16(s).
Section 1.704(f) as proposed provides that an international application is in condition for examination when the application has entered the national stage as defined in § 1.491(b), and includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings in compliance with § 1.84, a sequence listing in compliance with §§ 1.821 through 1.825 (if applicable), the inventor’s oath or declaration or application data sheet containing the information specified in § 1.63(b), and any application size fee required by the Office under § 1.492(j).
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.