Patent Law Treaty Changes To U.S. Patent Application Procedures

January 13, 2014

USPTO NewsTitle II of the Patent Law Treaties Implementation Act of 2012 (PLTIA) became effective on December 18, 2013.  The PLTIA implements the provisions of the international Patent Law Treaty (PLT) in the U.S.

The PLT was designed to “harmonize and streamline” the patent prosecution procedures of the signatory countries. As a result, notable changes to U.S. patent law have been made to application filing procedures for non-design patents, claims for restoration of priority rights, and the time applicants are given for replying to most Office Actions and notices. Below is an overview of the changes.

Changes in Patent Application Filing Procedures

Changes to Filing Date Requirements:  As the result of implementation of the PLT, U.S. patent applications for non-designs under 35 U.S.C. 111 can now be filed without any claims and/or drawings and can be filed by reference to a previously-filed application. The filing date of a provisional or nonprovisional application, other than an application for a design patent, is the date on which the USPTO receives a specification, with or without claims.

  • No Claim:  An application for a non-design patent is no longer required to include a claim to be entitled to a filing date. However, an application will not be placed on an examiner’s docket unless and until the application includes a specification including at least one claim. If an application is filed without any claims, the Office of Patent Application Processing (OPAP) will issue a notice giving the applicant a time period within which to submit at least one claim in order to avoid abandonment.
  • No Drawings:  An application for a non-design patent is no longer required to include any drawings to be entitled to a filing date. However, if a drawing is deemed necessary for the understanding of the invention, the USPTO will require it.
  • Filing by Reference:  A nonprovisional application may be filed by reference to a previously filed application (foreign, international, provisional, or non-provisional) in the application data sheet (ADS) or PLT Model International Request Form indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application.

Changes in the Restoration of Priority Rights

Applications filed after expiration of the 12-month period in 35 U.S.C. 119 can now claim restoration of the right of priority to a foreign application or the right to claim benefit of a provisional application through a petition filed within 2 months of the expiration date, provided the delay in filing was unintentional.

For additional information about restoration of priority rights resulting from the PLT, please see our article at http://www.hershkovitz.net/patent-law-treaty-implemented-in-us/.

Changes in the Time to Reply to Office Notices Concerning Noncompliance

The PLT provides for a time period of at least two months for replies to most Office Actions and other notices instead of one month. This change primarily impacts Office Actions containing restriction/election requirements and certain Informality Notices.

Extensions of time under 37 CFR 1.136(a) will be permitted. However, filing a petition for extension of time will result in the application being taken out of the Accelerated Examination program.

References:

USPTO Patent Law Treaty webpage:  http://www.uspto.gov/patents/init_events/patent_law_treaty.jsp

PLT Guidance to Examiners (December 13, 2013):  http://www.uspto.gov/patents/init_events/PLT_Memo_to_Examiners_12-13-2013.pdf

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