USPTO Issues Memo On Changes Pertaining To Patent Law Treaty

USPTO SealLast week, we reported on changes to the rules of practice made pursuant to title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which was enacted on December 18, 2012, and which amended U.S. Patent Law to implement the provisions of the Patent Law Treaty (PLT), which the Senate ratified on December 7, 2007.  The changes, which took effect on December 18, 2013 (one year after the PLTIA was enacted), were outlined in a final rule issued by the U.S. Patent and Trademark Office on October 21 (78 Fed. Reg. 62368).

In a memorandum distributed to all patent employees on December 13, 2013, the Deputy Commissioner for Patent Operations, Andrew Faile; Deputy Commissioner for Patent Examination Policy, Andrew Hirshfeld; and Deputy Commissioner for Patent Administration, Bruce Kisliuk, discussed notable changes to the U.S. patent laws and practice resulting from the PLT and pertaining to the examination of patent applications.  The memo divides the changes into three categories:

1.  Procedures for filing patent applications,

2.  Restoration of the right of priority to a foreign application or a provisional application, and

3.  Time for reply to Office actions and other notices.

With respect to the first category of changes, the memo notes that under the PLT and PLTIA, a nonprovisional application may be filed without claims and/or drawings or may be filed by reference to a previously filed application.  The changes to the procedures for filing patent applications only apply to applications filed under 35 U.S.C. § 111 on or after December 18, 2013 (and therefore, do not apply to design patent applications).  As a result of the changes, the filing date of a provisional or nonprovisional application will be the date on which the USPTO receives a specification, with or without claims.  For nonprovisional applications filed without any claims, the Office of Patent Application Processing (OPAP) will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment.  The memo also notes that "[a]n application will not be placed on an examiner's docket unless and until the application includes at least one claim."

With respect to the omission of drawings, the memo notes that "[i]f the subject matter of the application admits of illustration by a drawing to facilitate understanding of the invention, including where a drawing is necessary for the understanding of the invention, the USPTO will continue the practice of requiring a drawing."  However, the memo also notes that the practice of requiring a drawing prior to examination "should continue to be extremely rare and limited to the situation in which no examination can be performed due to the lack of an illustration of the invention."  In addition, the memo reminds USPTO employees that the above changes have not impacted the prohibition on submitting claims or drawings after the filing date that contain new matter.

The memo points out that applicants may also file a new application by reference to a previously filed foreign, international, provisional, or nonprovisional application, with such reference being made in the application data sheet (ADS) or PLT Model International Request Form.  For applications filed by reference, the memo notes that the OPAP will issue a notice giving applicants a time period within which to submit an English language copy of the specification and drawings from the previously filed application in order to avoid abandonment.

With respect to the second category of changes to patent practice, the memo notes that under the PLT and PLTIA, an application may claim priority to a foreign or provisional application filed up to fourteen months earlier if the application includes a petition to restore the right of priority that has been granted by the Office of Petitions.  The memo points out that pursuant to the PLT, the delay in filing the application between twelve and fourteen months after the earlier application was filed must have been unintentional (for design patent applications, the restoration of priority rights only applies to the period within six to eight months after an earlier application is filed).

With respect to the final category of changes to patent practice, the memo notes that under the PLT and PLTIA, most (but not all) Office actions and other Office notices must set a time period for reply of at least two months.  The memo indicates that this final change primarily impacts Office actions containing only a requirement for restriction or an election of species, Office notices treating a reply by the applicant as non-responsive or noncompliant, and Office notices requiring compliance with the sequence regulations.  The memo also indicates that these changes only impact actions and notices mailed on or after December 18, 2013, and that reply time periods in the pre-appeal brief conference program and pre-first Office action on the merits interview program will not be impacted.  A table included in the memo outlines the impact of the PLT on actions that had one-month response times prior to December 18, 2013 (click on table to enlarge).

PLT Impact on One Month Response Times

As part of the Office's implementation of the PLT, the Office also informed applicants and their representatives last week via a Patents Alert e-mail that updated versions of several forms have been posted on the USPTO forms webpage.  In particular, the Office noted that revised versions of the following forms were now available:  Application Data Sheet (PTO/AIA/14), Petition for Revival of an Application for Patent Abandoned Unintentionally under 37 CFR 1.137(a) (PTO/SB/64), Petition for Revival of an Application for Patent Abandoned for Failure to Notify the Office of a Foreign or International Filing (37 CFR 1.137(f)) (PTO/SB/64a), and Petition to Accept Unintentionally Delayed Payment of Maintenance Fee in an Expired Patent (37 CFR 1.378(b)) (both PTO/SB/66 and SB/66-EFS-Web).