USPTO Issues Final Rule to Implement Patent Law Treaty -- Changes Take Effect December 18

by McDonnell Boehnen Hulbert & Berghoff LLP
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FedReg CoverOn October 21, the U.S. Patent and Trademark Office issued a final rule (78 Fed. Reg. 62368) revising the rules of practice pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which amends U.S. Patent Law to implement the provisions of the Patent Law Treaty (PLT).  The final rule takes effect on Wednesday, December 18.  With the exception to the changes to 37 C.F.R. §§ 1.16, 1.53(b) and (c), 1.57(a), 1.76(b)(3), and 1.81, which apply to patent applications filed under 35 U.S.C. § 111 on or after December 18, 2013; the changes to 37 C.F.R. §§ 1.53(f) and 1.495, which apply to patent applications filed under 35 U.S.C. §§ 111(a) or 363 on or after September 16, 2012; and the changes to 37 C.F.R. §§ 1.55(f) and 37 CFR 1.704, which apply to patent applications filed under 35 U.S.C. § 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. § 371 on or after December 18, 2013, all other changes apply to any patent application filed before, on, or after December 18, 2013, to any patent resulting from an application filed before, on, or after December 18, 2013, and to any reexamination proceeding and any request for supplemental examination filed before, on, or after December 18, 2013.  However, the notice indicates that "the changes to Office practices do not affect the requirements for replies to Office notices and actions issued prior to December 18, 2013."  The specific changes to the rules can be found on pages 62393-62409 of the 42-page Federal Register notice containing the final rule.

While the PLT was concluded on June 1, 2000, and entered into force (outside the U.S.) on April 28, 2005, the United States Senate did not ratify the PLT until December 7, 2007.  Because the PLT is not a self-executing treaty, the PLT did not enter into force in the United States until legislation implementing the PLT (title II of the PLTIA), and amending the provisions of Title 35, was enacted on December 18, 2012 (with the amendments made by the PLTIA taking effect one year after enactment).

As a result of U.S. ratification of the PLT and enactment of the PLTIA, the rules of practice are being revised to:

• Change the filing date requirements for a patent application,

• Allow for the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments, and

• Permit the restoration of the right of 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 the subsequent application.

In response to the changes resulting from the PLT and PLTIA, the Office is also revising the patent term adjustment provisions 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.

USPTO SealWith respect to the filing date requirements, the final rule notes that a claim will no longer be required for a nonprovisional application (other than for a design patent) to be entitled to a filing date.  Applicants will also be allowed to file a nonprovisional application "by reference" to a previously filed application in lieu of filing the specification and drawings.  Applicants who file a nonprovisional application without a claim or by reference to a previously filed application will receive a notice of the missing application components and be given a period of time within which to supply at least one claim or a copy of the specification and drawings of the previously filed application.  The Office notes that "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."  Applicants should also note that PLT does not apply to design applications, so a design application must contain a claim and any required drawings to be entitled to a filing date.  Nevertheless, the notice states that "[t]he changes in the PLTIA and this final rule to implement the PLT . . . are applicable to design, plant, provisional, and reissue applications, except that PLTIA 35 U.S.C. 171 and 37 CFR 1.53(b) as adopted in this final rule require that a design application contain a claim and any required drawings to be entitled to a filing date."

In the final rule, the Office also indicates that PLT Article 6 standardizes application format requirements by prohibiting PLT signatories from imposing form or content requirements that are different from or in addition to the form and content requirements provided for in the PCT, or permitted by the PCT for international applications during national processing or examination, or as prescribed in the PLT Regulations.  The Office points out that the U.S. has taken a reservation with respect to any requirement relating to the unity of invention standard, and notes that the Office is in the process of studying the changes to the patent statute, regulations, examination practices, and filing fees that would be necessary to move from the "independent and distinct" restriction standard of 35 U.S.C. § 121 to the "unity of invention" standard of PCT Rule 13.

With respect to the revival of abandoned applications and acceptance of delayed maintenance fee payments, the final rule indicates that the PLTIA eliminates the provisions of U.S. Patent Law for revival or acceptance on the basis of "unavoidable" delay, retaining only the basis of "unintentional" delay.  The twenty-four month time limit for making an unintentionally delayed maintenance fee payment has also been deleted by the PLTIA.

With respect to the restoration of the right of priority, the final rule notes that if a subsequent 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, 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-month period was unintentional.

Finally, the final rule indicates that the patent term adjustment provisions are being revised 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.  The notice explains that:

The PLT and PLTIA provide 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 previously filed application).  This change to the patent term adjustment rules is to avoid the situation in which an applicant obtains patent term adjustment because the applicant takes advantage of the additional opportunities to delay the examination process provided by the PLT and PLTIA.

As for the meaning of phrase "condition for examination," the notice states that:

Section 1.704(f) as adopted in this final rule provides that an 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)), the search fee (§ 1.16(k) or § 1.16(m)), the examination fee (§ 1.16(o) or § 1.16(q)), 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 adopted in this final rule 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), the search fee (§ 1.492(b)), the examination fee (§ 1.492(c)), and any application size fee required by the Office under § 1.492(j).

Among the miscellaneous changes to the rules of practice resulting from the final rule are:

• A person may give a power of attorney that is not specific to an application or patent, similar to the General Power of Attorney used in PCT practice (general power of attorney), and a practitioner having authority from such person may submit a copy of the general power of attorney in any application or patent of that person.

• The PLT provides that extensions of time must not be for less than two months from the date of the expiration of the unextended time period.  The notice indicates that shorter one-month periods will still be used in the pre-appeal brief conference program and the pre-first Office action on the merits interview program, but that Office is revising the Accelerated Examination program to provide that Office actions (other than a notice of allowance) will set a reply of at least two months.

• The charge for filing a petition for the revival of an abandoned application for a patent, delayed payment of the fee for issuing each patent, delayed response by the patent owner in any reexamination proceeding, delayed payment of the fee for maintaining a patent in force, delayed submission of a priority or benefit claim, or extension of the twelve-month period for filing a subsequent application will be $1,700.

• The Director may refund any part of the above fee in exceptional circumstances as determined by the Director (e.g., widespread disaster, such as a hurricane, earthquake, or flood).

• Because the PLTIA changes 35 U.S.C. § 151 such that the Office will proceed to issue a patent when the applicant pays the issue and publication fees specified in the notice of allowance, regardless of the issue fee and/or publication fee in effect on the date the sum specified in the notice of allowance is paid, the final rule notes that for notices of allowance mailed between October 1, 2013, and December 31, 2013, applicants may pay the lower of: (1) the issue fee plus publication fee in effect on the date the notice of allowance is mailed; or (2) the issue and publication fee in effect on the date the issue and publication fee is paid in order to take advantage of the reduced issue and publication fee that goes into effect on January 1, 2014.

In response to the Office's notice of proposed rulemaking published in April (see "USPTO Proposes Rules Changes to Implement Patent Law Treaty"), the Office received nine written submissions containing comments on the proposal.  The comments and the Office's responses to those comments can be found on pages 62386-62391 of the notice.  In its responses, the Office clarified the meaning of § 1.704(f) by noting that:

Section 1.704(f) as adopted in this final rule provides that an application shall be considered as having papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, and a sequence listing in compliance with § 1.821 through § 1.825 (if applicable) for purposes of § 1.704(f) on the filing date of the latest reply (if any) correcting the papers, drawings, or sequence listing that is prior to the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151, whichever occurs first. Thus, the patent term adjustment reduction provision of § 1.704(c)(12) would not apply to a correction of the application papers, drawings, or sequence listing that is required by an examiner (i.e., would not apply to corrections that take place after the date of mailing of either an action under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151).

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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