Patent Law Treaty Implemented in the U.S.

December 23, 2013

USPTO News

On December 18, 2013, the Patent Law Treaty (PLT) provisions (Title II) of the Patent Law Treaties Implementation Act of 2012 (PLTIA) became effective.

Major changes to the U.S. patent laws resulting from the PLT and the PLTIA include:

  • application filing date and reference filing provisions
  • restoration of the right of priority to a foreign application and domestic benefit of provisional applications
  • restoration of patent rights by revival of abandoned applications and acceptance of delayed maintenance fee payments
  • time periods for action by applicants

Of particular notice are the changes to 37 C.F.R. 1.55(c) (ability to claim foreign and provisional priority benefits after 12 months, but before 14 months if accompanied by a petition) and 37 C.F.R. 1.378 (removing the 2-year deadline for reinstating an expired patent under the unintentional provisions). A brief description of those provisions follows.

Changes to 37 C.F.R. 1.55(c) – Restoration of Priority Rights

Applications filed after expiration of the 12 month period (6 months for designs) for filing an application claiming benefit of a prior foreign application or applications filed after expiration of the 12 month period for filing an application claiming benefit of a prior provisional application, can have the right of priority restored if the delay in filing the subsequent application was unintentional.

The subsequent application must be filed within 2 months of the expiration of the 12 month period (6 months for designs). In addition, a petition to restore the right of priority or benefit must be filed which includes (1) the priority claim or specific reference to the provisional application, (2) the government petition fee ($1,700 for large entity, $850 for small entity), and a statement that the delay was unintentional.

Changes to 37 CFR 1.378 – Restoration of Patent Rights

The “unavoidable” delay standard has been eliminated for restoring patent rights. Now there is only a single standard of unintentional delay along with a required petition fee for (1) reviving an abandoned application, (2) accepting a delayed patent owner response in reexamination, or (3) accepting an unintentionally delayed maintenance fee payment.

The 24 month time period requirement for a petition to accept an unintentionally delayed maintenance fee payment was eliminated.

For detailed information on these and other changes resulting from the PLT and PLTIA, please visit the links to the USPTO website in the reference section below.

References:

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

PLT Final Rule (Federal Register):  http://www.uspto.gov/patents/init_events/PLT_Final_Rule_October_2013.pdf

USPTO PLT Brochure, October 2013:  http://www.uspto.gov/patents/init_events/plt_brochure_october2013.pdf

USPTO PLT PowerPoint Slides:  http://www.uspto.gov/patents/init_events/PLT_Bahr_11-19-2013.pptx

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