USPTO Proposes Changes to Rules of Practice Implementing Patent Law Treaty | Practical Law

USPTO Proposes Changes to Rules of Practice Implementing Patent Law Treaty | Practical Law

The US Patent and Trademark Office (USPTO) has proposed changes to its rules of practice for consistency with the changes in the Patent Law Treaty and title II of the Patent Law Treaties Implementation Act of 2012.

USPTO Proposes Changes to Rules of Practice Implementing Patent Law Treaty

Practical Law Legal Update 8-525-6911 (Approx. 3 pages)

USPTO Proposes Changes to Rules of Practice Implementing Patent Law Treaty

by PLC Intellectual Property & Technology
Published on 11 Apr 2013 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has proposed changes to its rules of practice for consistency with the changes in the Patent Law Treaty and title II of the Patent Law Treaties Implementation Act of 2012.
On April 11, 2013, the USPTO issued a notice of proposed rulemaking with proposed changes to its rules of patent practice. The changes will make the rules consistent with the changes in the Patent Law Treaty (PLT) and title II of the Patent Law Treaties Implementation Act of 2012 (PLTIA), which President Obama signed into law on December 18, 2012. For more information on the PLTIA, see Legal Update, President Obama Signs Patent Law Treaties Implementation Act Into Law.
The notable changes in the PLT and PLTIA concern:
  • The filing date requirements for a patent application.
  • The restoration of patent rights through the revival of abandoned applications and acceptance of delayed maintenance fee payments. Specifically, the PLTIA eliminates the patent statute provisions relating to revival of abandoned applications or acceptance of delayed maintenance fee payments on the basis of showing unavoidable delay.
  • The restoration of the right of priority to a prior-filed foreign application and the right to benefit of a prior-filed provisional application.
For the patent application filing date requirements, the USPTO proposes the following changes:
  • A claim will not be required for a nonprovisional application (other than for a design patent) to be entitled to a filing date. Currently, a claim is not required for a provisional application to be entitled to a filing date.
  • Allowing the filing of a nonprovisional application "by reference" to a previously filed application instead of filing the specification and drawings.
The USPTO also proposes to change the rules to allow the revival of abandoned applications and acceptance of delayed maintenance fee payments solely on the basis of an unintentional delay.
For the changes regarding the priority and benefit claims, the USPTO proposes:
  • To permit a priority claim to a prior-filed foreign application, if the subsequent application is filed after the expiration of the twelve-month period, or six-month period in the case of a design application, specified in 35 U.S.C. § 119(a), but within two months from the expiration of such twelve- or six-month period.
  • That the benefit of a prior-filed provisional application may be restored upon petition and payment of an applicable fee, if the subsequent application is filed after the expiration of the twelve-month period specified in 35 U.S.C. § 119(e), but within two months from the expiration of the twelve-month period, and the delay in the filing of the subsequent application was unintentional.
With respect to the patent term adjustment rules, the USPTO proposes to allow for the reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or, in the case of an international application, the date of commencement of the national stage. This change is to prevent applicants from taking advantage of the examination process delays permitted under the PLT and PLTIA in order to obtain a patent term adjustment.
The USPTO is accepting written comments through June 10, 2013.