Significant Changes Under Patent Law Treaty Take Effect December 18, 2013

As Congress continues to propose new legislation to “improve” the Leahy-Smith America Invents Act (AIA), practitioners and stakeholders must not forget that significant law and rule changes implementing the Patent Law Treaty of 2000 (PLT) take effect December 18, 2013. The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, and the USPTO published its final rules on October 21, 2013. As I wrote previously, some of the most significant changes relax the requirements for securing an application filing date, provide for restoration of a priority claim if an application is unintentionally filed beyond the priority term, and eliminate the “unavoidable” standard for reviving abandoned applications and obtaining acceptance of delayed fee payments. The USPTO’s final rules also make other changes to miscellaneous application filing and processing rules.

Relaxed Filing Date Requirements for Non-Provisional Utility Patent Applications 

Utility patent applications filed on or after December 18, 2013 will be awarded a filing date regardless of whether they include any claims, under amended 35 USC § 111(a)(3) and (4):

(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.

The USPTO is making conforming changes to 37 CFR § 1.53.

Note that amended  § 111(a)(4) no longer requires “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.

Relaxed Filing Date Requirements for Subsequent Applications 

Subsequent applications filed on or after December 18, 2013 can be filed by making reference to the prior application, without submitting a copy of the prior application at the time of filing, under new 35 USC § 111(c):

(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 is implementing this new option under 37 CFR § 1.57:

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).

The Federal Register Notice warns of the consequences of misidentifying the prior application:

[T]he applicant can file a petition under Sec. 1.53 to have the application accorded a filing date as of the date the specification and drawings of the intended previously filed application are filed in the Office using that specification and drawings (rather than the specification and drawings of the application specified on the application data sheet).

This means that if the prior application is misidentified, the subsequent application will not be awarded a filing date until the correct specification is filed. If these procedures were pursued close to the grant or abandonment of the prior application, continuity of pendency could be lost.

When the prior application is a foreign application, new CFR § 1.57(a)(4) requires submission of a certified copy of the prior application within the later of four months from the filing date of the subsequent application or 16 months from the filing date of the prior application:

(4) A certified copy of the previously filed application must be filed in the Office, unless the previously filed application is an application filed under 35 U.S.C. 111 or 363, or the previously filed application is a foreign priority application and the conditions set forth in Sec. 1.55(h) are satisfied with respect to such foreign priority application. The certified copy of the previously filed application, if required by this paragraph, must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application, or be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in Sec. 1.17(g).

Expanded Missing Parts Practice 

The USPTO is expanding Missing Parts practice to reflect the relaxed application filing date requirements. If an application is filed without claims, or if a subsequent application is filed by reference to a prior application, the applicant will be given a time period to supply the missing parts.  (If the applicant did not provide a correspondence address with the initial filing, the applicant will have three months from the filing date to satisfy the requirements.)

For an application filed without claims, CFR § 1.53(f)(1) provides:

(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, search fee, or examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include at least one claim or the inventor’s oath or declaration (Sec. Sec.  1.63, 1.64, 1.162, or 1.175), and the applicant has provided a correspondence address (Sec.  1.33(a)), the applicant will be notified and given a period of time within which to file a claim or claims, pay the basic filing fee, search fee, and examination fee, and pay the surcharge if required by Sec. 1.16(f), to avoid abandonment.

For a subsequent application filed by reference to a prior application, CFR § 1.57(a)(1) provides:

(1) If the applicant has provided a correspondence address (Sec. 1.33(a)), the applicant will be notified and given a period of time within which to 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. Such a notice may be combined with a notice under Sec. 1.53(f).

Note that if the prior application is a foreign priority application that is not in English, a copy, English translation and certified copy will be required.

Restoration of Unintentionally Missed Priority Filing Deadline 

The PLTIA amends 35 USC § 119 and § 365 to permit “restoration” of a priority claim under § 119(a) (foreign priority claim), § 119(e) (priority claim to a provisional application), or § 365(b) (priority claim fora PCT application) if the subsequent application was unintentionally filed after but within two months of the applicable priority period (12 months for utility patent applications, 6 months for design patent applications). The USPTO is implementing these changes in new 37 CFR § 1.55(c) (for foreign priority claims) and 37 CFR §1.78(b) (for priority claims to provisional applications), 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 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 beyond the priority period was unintentional.

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

These changes take effect December 18, 2013, and apply to patent applications filed before, on, or after that date.

Revival Only Under “Unintentional” Standard 

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 is implementing 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.

These changes take effect December 18, 2013, and apply to patent applications filed, and patents granted, before, on, or after that date.

Permitted Practices, Not Best Practices

As discussed throughout the Federal Register Notice, while many of the PTLIA amendments will simplify patent application filing practice, many of the changes do not reflect “best practices,” and could jeopardize patent rights. For example, if a patent application is prepared without claims and/or drawings, there may be a question whether the specification as filed adequately describes and enables the eventually claimed subject matter. Still, these changes could benefit applicants who are unable to complete these application formalities at the time of filing.