New rules following ratification of Patent Law Treaty in United States
The Patent Law Treaty (“PLT”) harmonises and streamlines patent formalities internationally, providing, among other things, procedures and mechanisms to prevent loss of rights.
Following ratification of the PLT by the United States on 18 September 2013, the United States Patent and Trademark Office (USPTO) has published a final rule which becomes effective on 18 December 2013 and brings aspects of the US patent system into conformity with the PLT.
The new rule (among other things):
- relaxes requirements for non-provisional utility and plant patent applications to be awarded a filing date;
- provides a single standard as a basis for restoration of an abandoned patent application or patent; and
- provides a grace period for the filing of priority-claiming patent applications.
1. Relaxed requirements for awarding of a filing date
At present, a non-provisional utility or plant patent application, to be awarded a filing date, must have at least one claim and must include a specification and, if appropriate, at least one drawing.
The new rule provides that a non-provisional utility or plant patent application filed on or after 18 December 2013 can be awarded a filing date even if:
- it does not include any claims; or
- it is filed by reference to a previously filed application, without a specification and drawings.
Under the new rule, where the application is filed without any claims or is by reference to an earlier application, the USPTO will set a time period within which at least one claim or a specification together with any drawings, respectively, must be submitted.
In the event of a delay in submitting the missing parts sufficient that the application is not in a “condition for examination” within eight months of filing, limitations will be placed on any patent term adjustment (PTA) ultimately available, PTA being additional patent term awardable to a patent owner to compensate for excessive delays in progression of the application to grant.
There will remain, following implementation of the new rule, a requirement that a design patent application include a claim and design representations, as appropriate, in order to be awarded a filing date.
2. Single standard for restoring abandoned patents and patent applications
Presently, a patent applicant or owner may seek to restore an abandoned patent application or patent by arguing that the delay in taking the action necessary to keep the application or patent alive (typically, responding to an office action or paying maintenance fees, respectively) was either unavoidable or unintentional. The “unavoidable” standard generally requires the applicant or owner to show that it had no choice but to allow the application or patent to become abandoned.
Under the new rule, which applies to all patent applications filed on or after 18 December 2013 and patents granted on such applications, the “unavoidable” standard is eliminated, leaving only the more lenient “unintentional” standard.
Also, a current 24-month time limit to restore an abandoned patent is removed under the new rule, whereby it may be possible to restore a patent regardless of how much time has elapsed since abandonment.
3. Grace period for filing priority-claiming patent applications
Under the new rule, there will be provided a two-month grace period for filing a non-provisional application (including, notably, a design application despite the PLT being inapplicable to industrial designs) claiming priority from a foreign or US provisional application, provided it can be shown the failure to file the non-provisional application by the deadline (which, in the case of a utility patent application, is 12 months from the filing date of the foreign or US provisional application and, in the case of a design patent application, is 6 months from the filing date of the foreign application) was “unintentional”. The new rule, when it takes effect on 18 December 2013, will apply to all non-provisional patent applications.
For further details on the new rules contact: