By Donald Zuhn --
In April, the U.S. Patent and Trademark Office published a notice in the Federal Register (78 Fed. Reg. 21788) proposing changes to the rules of practice for consistency with the Patent Law Treaty (PLT) and title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which amends the Title 35 to implement the provisions of the PLT. The PLT, which harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications, only applies to applications that can be filed as international applications under the Patent Cooperation Treaty (PCT), and therefore, does not apply to design, plant, provisional, or reissue applications.
Although the PLT entered into force on April 28, 2005, and was ratified by the Senate on December 7, 2007, because the PLT is not a self-executing treaty it did not enter into force in the U.S. until the PLTIA was enacted on December 18, 2012 -- the PLTIA, however, does not take effect until December 18, 2013, or one year after the date of enactment. The PLTIA will apply to any patent issued before, on, or after December 18, 2013, and to any application pending on or filed after December 18, 2013. The PLTIA, however, will have no effect with respect to any patent that is the subject of litigation in an action commenced before December 18, 2013.
According to the notice, there are three notable changes resulting from the PLT and PLTIA, which involve:
(1) The filing date requirements for a patent application; (2) the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and (3) the restoration of the right of priority to a foreign application or the benefit of a provisional application via the permitting of a claim to priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period . . . for filing such a subsequent application.
With respect to the filing date requirements, the Office is proposing changes to the rules to provide (a) that a claim is not required for a nonprovisional application to be entitled to a filing date, and (b) to allow for the filing of a nonprovisional application "by reference" to a previously filed application in lieu of filing the specification and drawings. Under the revised rules, when a nonprovisional application is filed without at least one claim or without referencing a previously filed application in lieu of submitting the specification and drawings, the applicant will be given a period of time to provide one or more claims or a copy of the specification and drawings of a previously filed application.
To prevent an applicant from taking advantage of the opportunities to delay the examination process provided by the PLT and PLTIA (i.e., by filing an application without at least one claim or without referencing a previously filed application), the Office is also proposing changes to the rules to provide for a reduction of patent term adjustment (PTA) 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).
With respect to the first change resulting from the PLT and PLTIA, the notice indicates that:
An application whose disclosure satisfies only the requirements of 35 U.S.C. 111(a) to be entitled to a filing date may nonetheless not meet the requirements of 35 U.S.C. 112 and 113 necessary for the applicant to be entitled to a patent for any claimed invention presented in the application, or even for the application to effectively serve as a priority or benefit application for an application subsequently filed in the United States or abroad. Therefore, the ability to file an application without a claim or drawing should be viewed as a safeguard against the loss of a filing date due to a technicality and not as a best practice.
With regard to the second change resulting from the PLT and PLTIA, the Office is proposing changes to the rules to provide for the revival of abandoned applications and acceptance of delayed maintenance fee payments solely on the basis of "unintentional" delay. The notice indicates that the PLTIA eliminates patent law provisions relating to the revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of a showing of "unavoidable" delay. In particular, the PLTIA amends 35 U.S.C. §§ 122(b)(2)(B)(iii), 133, 151, 364(b), and 371(d) to delete the reference to an unavoidable standard.
As for the third notable change, the Office is proposing changes to the rules to allow an applicant to restore the right to priority to a prior-filed foreign application or a provisional application if a subsequent application (nonprovisional or international application) is filed after the expiration of the twelve-month period set forth in 35 U.S.C. § 119(a) or (e), but within two months from the expiration of the twelve-month period, provided that the delay in filing the subsequent application was unintentional.
The Office's notice provides a detailed discussion of the specific rules changes at pages 21792-800, and a listing of the revised rules at pages 21803-09. For additional information regarding the proposed rules changes, readers are encouraged to consult the 22-page Federal Register notice.
Written comments regarding the proposed rules changes can be submitted until June 10, 2013 by e-mail to [email protected]; by regular 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; or via the Federal eRulemaking Portal.