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By Tony Dutra
Oct. 21 --The Patent and Trademark Office published its final rule Oct. 21 on changes to the agency's rules of patent practice consistent with implementation of the Patent Law Treaty. 78 Fed. Reg. 62,368.
The notable changes are in lessening the requirements for a patent application on the filing date; elimination of “unavoidable” delay reasons when trying to revive abandoned applications and make late maintenance fee payments; and a limited allowance for two-months delay in the time to file an application seeking priority of an earlier one.
The changes take effect Dec. 18, but most of the changes--filing requirements excluded--will apply to applications already on file as of that date.
The Patent Law Treaties Implementation Act of 2012, enacted in December , amended the Patent Act to implement the Geneva Act of 1999 of the Hague Agreement Concerning the International Registration of Industrial Designs (in Title I) and the Patent Law Treaty of 2000 (in Title II). The Senate had ratified both treaties in 2007.
The Patent Law Treaty limits and synchronizes patent application filing formalities among signatory countries. The Geneva Act allows U.S. applicants to apply for design patent protection in all member countries by filing a single application at the PTO.
The agency has not yet made a proposal related to Geneva Act changes. The PTO requested comments on April 11 (78 Fed. Reg. 21,788, , addressing only Title II, the implementation of the Patent Law Treaty.
The office received comments from nine stakeholders, and the Federal Register notice provided responses to 21 separate comments.
“The PLT harmonizes and streamlines formal procedures pertaining to the filing and processing of patent applications,” according to the notice. It does not apply to design, plant, provisional or reissue patents. The PLT's major changes are:
• Revision of the PTO's rules of practice affecting filing date requirements under 37 C.F.R. §1.53. The revised rule allows an applicant to submit a nonprovisional application without a claim and still be entitled to that filing date. Additionally, nonprovisional applications can now be filed “by reference” to prior applications without separate specifications and drawings, as implemented in Rule 1.57.
If the applicant supplied a correspondence address, “the applicant will be given a period of time within which to supply a claim and/or claims or a copy of the specification and drawings of the previously filed application,” or the period will be three months for those not supplying an address.
In any case, though, applicants should be aware that the PTO also chose to limit patent term adjustment “if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application.” Under 35 U.S.C. §154(b)(1)(A)(i), PTA accrues if the PTO does not provide a first office action within 14 months, but accrual will stop after a failure to meet the eight-month completion date, which includes claims, the specification and drawings as well as other elements listed in 37 C.F.R. §704(f).
To further make the point, the agency said in particular that “the use of the reference filing provisions of 35 U.S.C. 111(c) and §1.57(a) should be relatively rare.”
• Limiting explanations for revival of abandoned applications, under 37 C.F.R. §1.137, and acceptance of delayed maintenance fee payments, 37 C.F.R. §1.378, only to “unintentional” delay.
The PLTIA eliminated these provisions to the extent that the tardy applicant's explanation was on the basis of a showing of “unavoidable'' delay. However, the impact is unclear, as in answering one of the comments, the PTO claimed, “the Office considers [the unavoidable delay standard] to be a subset of 'unintentional' delay.”
The “unintentional” standard was recently at issue in a case before the U.S. Court of Appeals for the Federal Circuit. Network Signatures, Inc. v. State Farm Mut. Auto. Ins. Co., No. 2012-1492 (Fed. Cir. Sept. 24, 2013) . The court has addressed the issue on fact-specific bases otherwise, and the confines of the standard are generally left to the PTO's discretion.
• Opportunity for delayed restoration of priority in a previously filed foreign application or the right to benefit from a provisional application, with changes to Rules 1.55 and 1.78, respectively. The subsequent application must be filed within two months of the prior application's expiration--at 12 months from filing--but again, only when the delay is unintentional.
In its final rule, the PTO also made miscellaneous changes to its rules “pertaining to the supplemental examination, inventor's oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA).”
The office also noted that it intends to continue with two pilot programs that do not conform with specific timing requirements under the PLT--its pre-appeal brief conference program and the pre-first office action on the merits interview program .
Finally, the agency addressed a comment submitted by several stakeholders that, in assessing patent application restrictions, examiners should change from the current “independent and distinct” inventions standard of 35 U.S.C. §121 to the “unity of invention” standard for analyzing applications filed under the Patent Cooperation Treaty.
The PTO responded that “the Office is in the process of studying the changes to the patent statute, regulations, examination practices, and filing fees that would be necessary” to conform with PCT Rule 13 “in a practical manner.”
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Text is available at http://pub.bna.com/ptcj/78FR62368.pdf.
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