The U.S. Patent and Trademark Office has announced several patent rule changes to implement the Patent Law Treaties Implementation Act of 2012. The most significant of these changes include (1) a pared down requirement for obtaining a filing date for a U.S. non-provisional patent application, and (2) the ability to restore a claim of priority to a foreign or U.S. provisional application where the non-provisional application is filed more than 12 months after the foreign or U.S. provisional application. These new rule changes will become effective December 18, 2013, and were made to bring U.S. rules into alignment with the Hague Agreement Concerning International Registration of Industrial Design and the Patent Law Treaty.
Presently, in order to obtain a filing date, a U.S. non-provisional patent application must include a specification and at least one claim. Under the new rules, claims do not need to be submitted (other than for a design application) in order to receive a filing date. Furthermore, a non-provisional application can be filed "by reference" to an already-filed application, without a specification or drawings. However, applications that are not submitted "by reference" to a previously filed application must continue to include a specification to obtain a filing date.
The rule changes also permit the restoration of a priority claim in a U.S. application that is filed more than 12 months after the priority application (which can be a foreign or provisional application). Prior to this change, it was not possible to claim priority to foreign and provisional applications filed more than 12 months earlier. Priority can be restored in pending applications filed no more than 2 months after the 12-month statutory filing period. For design patent applications, the subsequent application must be filed no more than 2 months after the 6-month statutory filing period. In both cases, the applicant must file a petition and pay the appropriate fees to restore priority. The petition must include a statement that the delay in filing the non-provisional application within the 12-month period was unintentional. The Patent Office can require additional information where there is a question whether the delay was unintentional. This rule change also permits restoration of a priority claim to a foreign or provisional application in a PCT application designating the U.S. that is filed after the 12-month statutory filing period.
Other changes will also become effective on December 18, 2013. Unavoidable abandonment will no longer be an appropriate ground for reviving a patent application or reinstating an issued patent. Under the present rules, a patent application may be revived, and a patent may be reinstated, if the lapse was unavoidable or unintentional. The new rules continue to permit revival of an abandoned application and reinstatement of a patent if they lapsed unintentionally.
Finally, patent term adjustment will now be reduced in cases where the patent application is not ready to be examined within 8 months of its filing date or the date of commencement of the national stage of an international application.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
