U.S. and USPTO Move to Implement the Patent Law Treaty of 2000

While U.S. patent practitioners have been focusing on the changes to U.S. patent law embodied in the Leahy-Smith America Invents Act (AIA), Congress has taken additional steps to harmonize and streamline patent application procedures in accordance with an international treaty, the Patent Law Treaty of 2000 (PLT). The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, with a one-year effective date of December 18, 2013. The USPTO has published proposed rules to implement the PLT provisions, and will consider written comments received by June 10, 2013. Stakeholders will be interested to see the changes that relax the requirements for securing an application filing date, provide some flexibility in making a priority claim after the priority term has expires, and eliminate the “unavoidable” standard for reviving abandoned applications and obtaining acceptance of delayed fee payments.

The Patent Law Treaty 

According to the USPTO’s Federal Register Notice, the PLT was “concluded on June 1, 2000, and entered into force on April 28, 2005.” In general, the PLT sets maximum form and content requirements for non-provisional utility patent applications. (The PLT does not apply to design, plant, provisional or reissue patent applications.) Although the U.S. ratified the PLT on December 7, 2007, implementing legislation was not enacted until December 18, 2012, and the changes do not take effect until December 18, 2013.

The USPTO divides the PLT provisions into three categories:

1.  Provisions relating to the filing date requirements for non-provisional applications.
   ~ non-provisional applications no longer need claims to secure a filing date
   ~ continuing applications can be filed without a copy of the parent application
2. Provisions relating to reviving abandoned applications and obtaining acceptance of delayed maintenance fee payments.
   ~ revival based on the “unavoidable” standard is eliminated
3. Provisions relating to priority claims to an earlier-filed application.
   ~ applications filed within two months after expiration of the priority period can obtain the benefit of the priority application.

The USPTO’s proposed rules implement these changes, and also revise the Patent Term Adjustment (PTA) rules to provide for a reduction in PTA if an application is not in condition for examination within 8 months of its filing date. The proposed rules also make other largely procedural changes to various patent application filing and processing rules.

Non-Provisional Filing Date Requirements

The PLTIA amends 35 USC § 111(a)(3) and (4) as follows, to provide that non-provisional applications no longer need a claim to secure a filing date:

(3) Fee, oath or declaration, and claims.–The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) Filing date.–The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.

Note that these amendments to 35 USC § 111(a)(4) no longer require “a drawing” to secure a filing date. However, as the USPTO warns in the Federal Register Notice, 35 USC § 113 still provides that a drawing may be required ”where necessary for the understanding of the subject matter sought to be patented,” and that the absence of any such necessary drawing may preclude patentability.

The USPTO proposes to implement these changes to 35 USC § 111(a) by expanding Missing Parts practice to encompass situations where a non-provisional application is filed without a claim. Under the proposed rules, the applicant would be given the usual Missing Parts period to file a claim, or, if the applicant did not provide a correspondence address, the applicant will have three months from the filing date to file a claim.

The PLTIA also provides for the filing of a continuing application without a copy of the parent application, by adding new paragraph (c) to 35 USC § 111:

(c) Prior Filed Application.–Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless [the application is revived].

 The USPTO proposes to implement these provisions by revising 37 CFR § 1.57 to read as follows:

Sec. 1.57 Incorporation by reference.
(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with Sec. 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date under Sec. 1.53(b).

Applications filed without a copy of the parent specification will be treated under Missing Parts practice, or, if the applicant did not provide a correspondence address, the applicant will have three months from the filing date to satisfy the requirements and:

file a copy of the specification and drawings from the previously filed application, an English language translation of the previously filed application and the fee required by Sec. 1.17(i) if it is in a language other than English, and pay the surcharge required by Sec. 1.16(f) to avoid abandonment.

The USPTO also proposes to revise 37 CFR § 1.53(f) to conform to the changes to 35 USC § 115 embodied in the AIA Technical Corrections Act, which provide that the inventor oath/declaration requirement must be satisfied by the time the Issue Fee is paid.

Revival Requirements

The PLTIA adds 35 USC § 27 to provide for revival based on “unintentional” delay:

Sec. 27. Revival of applications; reinstatement of reexamination proceedings
The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing each patent, or accept an unintentionally delayed response by the patent owner in a reexamination proceeding, upon petition by the applicant for patent or patent owner.

The revival fees paragraph of 35 USC § 41 is amended as follows:

(7) Revival fees.–On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700.00. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director.

Conforming amendments are made to other sections of the Patent Act relating to revival or delayed acceptance of issue or maintenance fees.

The USPTO proposes to implement these provisions by revising its rules to eliminate reference to/requirements for a showing of “unavoidable” delay, and to provide for revival solely based on a showing of unintentional delay. The $1700 fee is subject to the Small Entity 50% fee reduction, but not the Micro Entity 75% fee reduction.

Priority Claim Requirements

The PLTIA amends 35 USC § 119 to provide what amounts to a two-month grace period for filing an application with a priority claim to an earlier filed application. Provisions along the following lines are added to § 119(a), and § 119(e)(1), and parallel provisions are added to § 365(b):

The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.

The USPTO proposes to implement these provisions in new 37 CFR § 1.55(b)(2) (for foreign priority claims) and 37 CFR §1.78(a)(1)(ii) (for U.S. priority claims), which provide for petitions for the restoration of the right of priority when a subsequent application is filed after but within 2 months of the expiration of the priority period. As set forth in the proposed rules, such a petition must include:

1. The priority claim …  in an application data sheet … unless previously submitted;
2. The petition fee as set forth in Sec. 1.17(m); and
3. A statement that the delay in filing the subsequent application within the twelve-month period (six-month period in the case of a design application) as set forth in paragraph (b)(1) of this section was unintentional.

The rules also provide that the “Director may require additional information where there is a question whether the delay was unintentional.”

Effective Date Of the PLTIA

The default effective date of the PLT provisions of the PLTIA is one year from the date of enactment, e.g., December 18, 2013, with applicability to patents granted before, on, or after that date and patent applications pending on or filed after that date. However, the changes relating to filing dates and priority claims apply only to applications filed on or after that date, and none of the changes shall apply “with respect to any patent that is the subject of litigation in an action commenced before the effective date.”

A New Patent Term Adjustment Deduction

As set forth in the Federal Register Notice, the PLTIA provides “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 prior-filed application).” Thus, the USPTO has determined that it is appropriate to require “that an application should be placed in condition for examination within eight months of its filing date (or date of commencement of national stage in an international application)” or else be subject to PTA deduction.

In particular, 37 CFR § 1.704 is proposed to be amended to insert new paragraph (c)(11) (and redesignate current paragraphs (c)(11) and (c)(12) as paragraphs (c)(12) and (c)(13), respectively) and add new paragraph (f):

(c)(11) Failure to provide an application in condition for examination as defined in paragraph (f) of this section within eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application, in which case the period of adjustment set forth in Sec. 1.703 shall be reduced by the number of days, if any, beginning on the day after the date that is eight months from either the date on which the application was filed under 35 U.S.C. 111(a) or the date of commencement of the national stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date the application is in condition for examination as defined in paragraph (f) of this section.
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(f) 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 (Sec. 1.72(b)), and has papers in compliance with Sec. 1.52, drawings (if any) in compliance with Sec. 1.84, any English translation required by Sec. 1.52(d) or Sec. 1.57(a), a sequence listing in compliance with Sec. 1.821 through Sec. 1.825 (if applicable), the inventor’s oath or declaration or application data sheet containing the information specified in Sec. 1.63(b), the basic filing fee (Sec. 1.16(a) or Sec. 1.16(c)), any certified copy of the previously filed application required by Sec. 1.57(a), and any application size fee required by the Office under Sec. 1.16(s). An international application is in condition for examination when the application has entered the national stage as defined in Sec. 1.491(b), and includes a specification, including at least one claim and an abstract (Sec. 1.72(b)), and has papers in compliance with Sec. 1.52, drawings (if any) in compliance with Sec. 1.84, a sequence listing in compliance with Sec. 1.821 through Sec. 1.825 (if applicable), the inventor’s oath or declaration or application data sheet containing the information specified in Sec. 1.63(b), and any application size fee required by the Office under Sec. 1.492(j).

Public Comments on the Proposed Rules

The USPTO’s proposed rules appear to be true to the PLTIA amendments to the Patent Act, but also include other changes, including some that I have not discussed here. Interested practitioners should review the proposed rules and provide their written comments to the USPTO by June 10, 2013.

Comments can be sent

• by electronic mail to: [email protected]
• by postal mail to: Mail Stop Comments–Patents, Attention: Robert W. Bahr, Senior Patent Counsel, Office of Patent Examination Policy.
• via the Federal eRulemaking Portal (see the Federal eRulemaking Portal Web site (http://www.regulations.gov)