“U.S. Patent and Trademark Office Issues Final Rules to Implement Provisions of the Patent Law Treaty that Change Aspects of U.S. Patent Laws”

October 30, 2013
Marshall Gerstein Alert

The Patent Law Treaties Implementation Act of 2012 (Act) (Public Law 112-211) was enacted on December 18, 2012, to implement provisions of the Patent Law Treaty (Treaty), which the Senate ratified in December 2007. On October 21, 2013, the U.S. Patent and Trademark Office published a Final Rule that implements important changes the Act makes to the U.S. patent laws.

(A) Non-provisional patent applications need not include any claims (or drawings) to receive a filing date. Further, a non-provisional patent application may be made "by reference" to a previously-filed application in lieu of filing the specification and drawings. In both instances, the patent applicant will be given a period of time within which to supply a claim(s) and/or any other missing information to avoid abandonment of the application. The Patent Office cautions, however, 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." For example, the provisions that permit late addition of claims do not alter the long-standing prohibition against introducing "new matter" into an application after the original filing date, or the requirements to describe and enable practice of the invention in the original filing.

(B) There is now a single standard ("unintentional delay") for (1) reviving abandoned patent applications, (2) accepting delayed issue fee and maintenance fee payments, and (3) accepting delayed patent owner responses in a reexamination proceeding. Provisions relating to revival or acceptance of delayed maintenance fee payments on the basis of a showing of "unavoidable delay" have been eliminated.

(C) Patent applicants may extend by two months the 12-month period for filing a U.S. non-provisional patent application or international (PCT) application, or the 6-month period for filing a design patent application, that claims the benefit of a foreign-filed patent application or a U.S. provisional patent application if the delay was unintentional.

The Final Rule also revises 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 the national stage in an international (PCT) application. Further, the Final Rule includes miscellaneous changes pertaining to supplemental examination proceedings, inventor’s oath/declaration, first inventor-to-file provisions of the Leahy-Smith America Invents Act (AIA), the recording of ownership rights in patents and applications, and deadlines in existing Patent Office pilot programs.

The Act and Final Rule are effective December 18, 2013.

For more information, please contact a patent attorney in the Firm’s patent prosecution group.

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