Priority in Patent and Design Applications


Noteworthy Changes for Patent Applicants related to the Patent Law Treaties Implementation Act (PLTIA) effective December 18, 2013.

Although the Leahy-Smith America Invents Act (AIA) gets most of the attention, the Federal rules revised for consistency with the PLTIA include some noteworthy changes related to, among others, the restoration of the right to priority and revival of abandoned applications.

Under the revised rules, applicants have two additional months to restore a right to priority to a previously filed foreign, provisional or design application as long as the delay in filing the priority claim was unintentional. The applicant must file two petitions: 1) a petition to restore the right to priority; and 2) a petition to claim priority.  The petition to restore the right to priority must include the priority claim in an application data sheet, the petition fee and a statement that the delay was unintentional.  The petition must be filed within 14 months of the filing of the priority foreign or provisional application or within 8 months of the filing of the priority design application.  The petition to claim priority must include an application data sheet identifying the priority application, a certified copy of the priority application if required under the Rule 37 CFR §1.55(f) unless previously submitted, the petition fee, and again a statement that the delay was unintentional.  The Director may require additional information where there is a question regarding whether the delay was unintentional.  Each petition requires a hefty $1700 petition fee for applicants other than small entities for a total of $3400.

Applicant may also file a petition to revive an abandoned application as long as the abandonment was unintentional.  Thus, the revived rules eliminate the “unavoidable” delay standard for application revival. The petition must include the reply required to any outstanding office action or notice unless previously filed, the petition fee, any required terminal disclaimer, and a statement that the delay was unintentional.  The petition fee is yet another hefty $1700 for a non-small entity applicant.

At the end of the day, the good news is that applicants now have an extra 2 months to restore a right to priority as long as the delay was unintentional.  Of course, for practitioners and clients alike, the moral is to follow best practices: consider claims to priority at the time of filing and not after the fact, and avoid unintentional abandonment. For those interested, the details of the new rules are spelled out in 37 CFR §§ 1.55, 1.78 and 1.137 in the Federal Register dated October 21, 2013.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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