—By Kirsten S. Johnson and Les I. Bookoff, Bookoff McAndrews PLLC

Law360, New York (November 15, 2013, 12:33 PM ET) — On Dec. 18, 2013, new U.S. patent laws and rules go into effect to implement the Patent Law Treaty, which the U.S. ratified in 2007. The PLT seeks to harmonize and streamline requirements associated with filing and processing patent applications in patent offices of its contracting parties. The changes in U.S. law to implement the PLT are detailed in a final rule issued by the U.S. Patent and Trademark Office on Oct. 21, 2013.[1]

While the PLT applies only to applications permitted for filing as an international PCT application (i.e., nonprovisional applications, including procedures for reexamination and supplemental examination), the new rules also will affect some provisional, reissue, plant and design application procedures.[2]

The new rules are generally more lenient on application filing requirements, deadlines and other procedures. Some of the more significant revisions include: (1) more permissive requirements for receiving a filing date; (2) acceptance of late claims for benefit of priority; and (3) late issue fee and maintenance fee payments, and revival of abandoned applications. Patent practitioners should familiarize themselves with these changes and advise their clients accordingly.

Nonprovisional Application Filing Date Requirements and Filing “By Reference”

Nonprovisional applications (including the national phase entry of a PCT application) filed on or after Dec. 18, 2013, need not have claims to receive a filing date under 35 U.S.C. § 111(a).[3] For applications filed without claims, applicants will be required to submit claims (and pay any excess claims fees) in a manner like current procedures for late payment of filing, search and examination fees. The application’s entitlement to a filing date despite the late filing of the claims, however, does not mean that the application meets the requirements of Section 112 for those late-filed claims.

The specification still must comply with the written description and enablement requirements of that section for the claimed invention. Because claims that are originally filed with an application may themselves provide sufficient written description support, applicants would be wise to continue including claims with the initial filing. Otherwise, they risk filing an application that fatally lacks support for the invention they intend to claim.

Under new Section 111(c), patent applicants will have the option of filing an application by reference to a previously-filed application, including a foreign application, by identifying the prior application in an application data sheet (ADS).[4] The specification and drawings of that prior application then constitute the new application and must be filed within the prescribed time period (e.g., in reply to a USPTO notice).

Naturally, typos or other mistakes in identifying the prior application could wreak havoc, although such errors may be corrected by filing a petition under 37 C.F.R. § 1.53. Applicants should recognize that filing “by reference” may not guarantee a timely or proper priority claim, and that additional requirements such as providing a certified copy of a priority foreign application may apply. But this mechanism may be useful when a priority deadline is fast-approaching and a copy of the priority application is not immediately available.

Delayed Priority Claim

Applicants also will be able to file an application and claim priority to an earlier-filed provisional or foreign application up to two months after the priority deadline (i.e., up to 14 months from the filing date of a utility application, eight months for a design application) if the delay in claiming priority was unintentional.[5] The priority claim must be filed within four months of the application’s filing date or within 16 months of the priority application’s filing date, whichever is later, along with payment of a $1,700 petition fee ($850 for small and micro entities) and a statement that the delay was unintentional.[6]

The USPTO considers that “[a] delay resulting from a deliberately chosen course of action on the part of the applicant is not an ‘unintentional’ delay.”[7] The USPTO may require additional information if there is any question on whether the “unintentional” standard is met.[8] The USPTO final rule states that the two-month timeframe is not an extension of time, and the delay must be unintentional.[9] Notably, there is no equivalent two-month window of time with respect to the copendency requirement for claiming priority to a nonprovisional or PCT application.[10]

Late Issue Fee and Maintenance Fee Payments and Revival of Abandoned Applications

New Section 27[11] will allow the USPTO to accept late payment of issue and/or publication fees, likely easing the anxiety of many in inadvertently missing an issue fee deadline. As with a late priority claim, an applicant must show that the delay in payment was unintentional and pay a $1,700 petition fee, in addition to the balance due for issuance.[12]

Section 27 also will allow the USPTO to accept late maintenance fee payments at any time, revive abandoned applications, and accept late responses by a patent owner in a re-examination proceeding under the same “unintentional” standard.[13] The new rules thus eliminate the “unavoidable” standard currently applicable to missed maintenance fee payments, giving patentees wider leeway to reinstate expired patents. These provisions apply to any application filed before, on, or after Dec. 18, 2013, and any patent issuing from such an application.

Other Miscellaneous Rulemaking and Unaffected Procedures

While these are some of the more important revisions going into effect, the rules also reconcile existing USPTO procedures and provide applicants and patent owners with additional options. For example, the USPTO will update provisions on patent term adjustment such that an applicant cannot accumulate PTA by slowing prosecution through late submission of claims or delaying filing a copy of the prior application when filing by reference.

Applicants and assignees will be able to sign certain USPTO filings of a procedural nature, including fee transmittal letters, requests for corrected filing receipts, and submission of a copy of an earlier-filed application under the new filing by reference provision.[14] Applicants also will be allowed to use various standardized PLT Model International Forms, e.g., to claim priority to an earlier-filed application in lieu of using an ADS. In case of any conflict between information provided in a Model International Form and an ADS, however, the ADS will govern.

The USPTO final rule explains that some programs and procedures will remain unaffected by the new rules. In particular, examiners will continue to apply the “independent and distinct” restriction standard under 35 U.S.C. § 121 rather than the international “unity of invention” standard under the PCT. [15] The final rule indicates, however, that the possibility of eventually adopting the PCT standard has not been ruled out and remains under investigation. The pre-appeal brief conference program and pre-first office action on the merits interview program will also continue to operate under their current timelines, notwithstanding PLT provisions on extensions of time. New programs not encompassed by the PLT also may be developed.

The New Rules Put Into Perspective

Because the PLT provides the maximum requirements on form and content that a contracting party can impose, U.S. applicants and patentees should not fear more complicated procedures or stringent demands. Implementation of the PLT introduces safeguards against irrevocable loss of patent rights, and provides greater flexibility in filing requirements and patent procedures. These safeguards should be considered exceptional rather than routine. Indeed, the USPTO warns that the protracted timeframes and filing options should not be considered to prescribe “best practices,” but protection against loss in rights due to a technicality.[16]

While the new rules are more permissive from an applicant’s or patent owner’s perspective, they also create more caveats for third parties to keep in mind when assessing patent portfolios. Parties interested in acquiring the patent rights of another can identify opportunities to increase the portfolio’s worth beyond face value, e.g., by filing missed priority claims, reviving abandoned applications, and reinstating expired patents. The potential buyer should take care, however, to learn the circumstances of any missed deadlines to be assured that the “unintentional delay” standard is applicable and can be met.

Freedom-to-operate and due diligence investigations also should note the possibility for pending applications to gain an earlier priority date and/or expired patents to be reinstated. An initial analysis may require regular updates and/or periodic monitoring of cases flagged as being of particular interest. So, while patent practitioners (and their professional liability insurance providers) can look forward to the leniency in filing requirements and missed deadlines, parties looking to clear a product may not welcome the additional measure of uncertainty afforded by the new rules.

The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] Changes to Implement the Patent Law Treaty, 78 Fed. Reg. 62368 (Oct. 21, 2013).

[2] Rules relating to U.S. design patents and patent applications will be revised in a separate rulemaking to implement the Hague Agreement, a companion treaty to the PLT.

[3] See Patent Law Treaties Implementation Act of 2012, § 201, 112th Cong. (2nd Sess. 2012) (amending 35 U.S.C. § 111(a)). Design patents will still require a claim and drawings for a filing date. See id. § 202 (amending 35 U.S.C. § 171(c)).

[4] See Patent Law Treaties Implementation Act of 2012, § 201 (adding 35 U.S.C. § 111(c)). The ADS must identify the prior application by application number, filing date, and country or intellectual property authority in which the prior application was filed. 78 Fed. Reg. at 62400 (as-amended text of 37 C.F.R. § 1.57(a)).

[5] Patent Law Treaties Implementation Act of 2012, § 201 (amending 35 U.S.C. §§ 119, 365).

[6] 78 Fed. Reg. at 62399, 62403 (as-amended text of 37 C.F.R. § 1.55(c) and § 1.78(b)).

[7] M.P.E.P. § 711.03(c) (discussing “unintentional delay” with respect to reviving abandoned applications).

[8] 78 Fed. Reg. at 62399 (as-amended text of 37 C.F.R. § 1.55(c)(3) and § 1.78(b)(1)(iii)).

[9] Id. at 62377.

[10] See, e.g., id. at 62380-81 (discussing amendments to 37 C.F.R. § 1.78).

[11] See Patent Law Treaties Implementation Act of 2012, § 201 (adding 35 U.S.C. § 27).

[12] 78 Fed. Reg. at 62405-06 (as-amended text of 37 C.F.R. § 1.137).

[13] See 78 Fed. Reg. at 62371.

[14] Id. at 62395, 62399, 62401 (as-amended text of 37 C.F.R. §§ 1.23(c), § 1.54(b), 1.57(i)).

[15] 78 Fed. Reg. at 62370.

[16] See id. at 62369.