USPTO Proposes Rules Changes to Implement Patent Law Treaty

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealIn 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; 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.


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.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.