While much attention has been given to the recent, significant changes in U.S. patent law arising from the America Invents Act (“AIA”), lesser attention has been given to patent law changes brought about by further congressional action. Specifically, the Patent Law Treaties Implementation Act (“PLTIA”) enacted December 18, 2012, implements the Patent Law Treaty, which makes several subtle changes to U.S. laws applicable to utility patents.
Under the Patent Law Treaty, a filing date can be accorded with fewer requirements, revival of abandoned applications is simplified, and a grace period for claiming priority in the U.S. is provided. Proposed rules for implementing the PTLIA are currently pending and will implement further changes to U.S. patent prosecution that are of importance to patent practitioners. The changes to the U.S. patent laws (35 U.S.C.) mainly have the effect of further harmonizing U.S. law with the laws of many other countries, and the following changes are of particular interest.
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35 U.S.C. §111 is amended such that a non-provisional application will no longer be required to include claims or pay the required fees to obtain a filing date. Failure to file claims and pay the fees within a prescribed period, though, will result in abandonment of the application (although the abandoned application may be revived).
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35 U.S.C. §27 is amended to state that the Director may establish procedures for the following upon petition by the applicant or patent owner: payment of fees to revive an unintentionally abandoned patent application (which would alter current revival procedures); accept an unintentionally delayed patent issue fee payment; or accept an unintentionally delayed response in a reexamination.
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35 U.S.C. §119 is amended to extend the 12 month deadline for claiming priority to a U.S. provisional application or a foreign application. Specifically, the deadline may be extended for up to two months if the delay in filing was unintentional. Similarly, the amendments empower the Director of the USPTO to create a similar grace period under 35 U.S.C. §365(b) for priority claims to PCT applications that designate countries other than the United States.
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35 U.S.C. §261 is amended to require the USPTO to maintain a register of interests in patents and patent applications, which appears to include license agreements and security interests.
The provisions of the Patent Law Treaty will apply to all patents and patent applications regardless of filing or issue date, with two exceptions. First, the provisions relating to the accorded filing date will apply only to applications with an effective filing date after implementation of the Act. Second, a patent involved in a litigation proceeding that commenced before implementation of the Act will not be subject to these provisions.
The PLTIA requires that the amendments are effective one year after enactment of the Act – i.e., beginning December 18, 2013. The Office of PCT Legal Administration at the USPTO has recently indicated, however, that the implementation process may extend beyond this deadline for a variety of reasons, including the effects of the federal sequester.
Proposed rules for implementation were published in the Federal Register on April 11, 2013 (78 Fed. Reg. 21788) and are open for comment until June 10, 2013. It remains unclear when the final rules will be adopted or what the exact scope of the new rules will be; however, the following proposals are representative of the changes that may be implemented and are of particular note.
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Under new 35 U.S.C. §111, an applicant filing an application without claims will be notified of the deficiency and given three months to file the claims (and pay a surcharge) to avoid abandonment.
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The fee under 37 CFR §1.17(m) is changed to $1,700 ($850 small entity) for payment with an associated petition to revive an unintentionally abandoned patent application, accept an unintentionally delayed patent issue fee or maintenance fee, accept an unintentionally delayed response in a reexamination, accept a delayed submission of a priority or benefit claim, and for the extension of the 12-month period for filing a subsequent application.
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The “unavoidable delay” standard for revival of abandoned application, terminated reexamination proceeding, or lapsed patent under 37 CFR §1.137 is eliminated, and all petitions for revival must allege that the delay was “unintentional.” The section still will state that the Director may require additional information where there is a question as to whether the delay was unintentional.
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37 CFR §1.138 is amended to remove the 24 month time limit for revival for an unintentionally delayed payment of a maintenance fee.
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In particular response to the changes to 35 U.S.C. §1.111 regarding obtaining a filing date without submission of a claim, 37 CFR §1.138 is amended to reduce available patent term adjustment in cases where an application is not in condition for examination within eight months after the actual filing date. Necessary elements to be “in condition for examination” include: a specification, including at least one claim and an abstract; drawings; any required English translation; any required sequence listing; the oath or declaration or application data sheet; the basic filing fee; any required certified priority documents; and any required application size fee.
As can be seen from the foregoing, the Patent Law Treaty and the proposed rules accompanying the implementation of the PLTIA may have a significant impact on the prosecution of U.S. utility patent applications. This particularly applies to the ability to overcome errors that previously may have resulted in loss of rights. Practitioners and applicants will need to be aware of the ultimately accepted rules to ensure all available options for maintaining patent rights are pursued.
