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New Rules Resulting from the Patent Law Treaty

December 18, 2013 – As a result of the recent Patent Law Treaty Implementation Act (PLTIA), Final Rules (78 FR 62368) have been implemented to modify USPTO practice in the following respects. The new rules apply only to applications filed on or after December 18, 2013.

a) Two Month Grace Period to Make Filing based on Priority Claim

The Treaty provides for a two month grace period for claiming the right of priority to a prior-filed foreign application or provisional application after the expiration of the twelve month period (6 months in Design applications). The fee for the petition requesting the right of priority within the grace period is $1,700.

b) Applications Can Be Filed Without Claims or By Reference to a Previously Filed Application

The Office will now allow nonprovisional applications to be filed without a claim. Also nonprovisional applications can be filed by reference to a previously filed application in lieu of filing the specification and drawings. By filing an application in such a matter, the applicant will receive a filing date and be given a period of time to submit the missing pieces of the application.

c) Elimination of Unavoidable Delay Excuse for non-payment of Maintenance Fee

The Patent Law Treaty also eliminates “unavoidable delay” as a reason for delay in the payment of a maintenance fee. Henceforth, only “unintentional delay” is an acceptable reason for delay in the payment of a maintenance fee. Petitions based on unintentional delay must be filed within 2 years of the final date when payment was due. The fee needed with a petition based on unintentional delay is $1,700.

d) Patent Term Adjustment (PTA)

A new basis for PTA reduction is added for failing to place an application in "condition for examination" within eight months of its filing date or national stage commencement in an international PCT application. Nonprovisional applications filed without a claim or an application filed “by reference” to a previously filed application, must provide all of the required materials within eight months of the filing date or the date of the commencement of the national stage in order to avoid a reduction in patent term adjustment. The patent term will be reduced by the number of days beginning on the day after the date that is eight months from its filing date under 35 U.S.C. 111(a) or national stage commencement in an international application and ending on the date the application is in condition for examination.

Section 1.704(f) defines when an application is in condition for examination:

An application filed under 35 U.S.C. 111(a) is in condition for examination when the application:

includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, any English translation required by § 1.52(d) or § 1.57(a), a sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet containing the information specified in § 1.63(b), the basic filing fee (§ 1.16(a) or § 1.16(c)), the examination fee (§ 1.16(o) or § 1.16(q)), any certified copy of the previously filed application required by § 1.57(a), and any application size fee required by the Office under § 1.16(s).

An international application is in condition for examination when:

the application has entered the national stage as defined in § 1.491(b), and includes a specification, including at least one claim and an abstract (§ 1.72(b)), and has papers in compliance with § 1.52, drawings (if any) in compliance with § 1.84, sequence listing in compliance with § 1.821 through § 1.825 (if applicable), the inventor’s oath or declaration or an application data sheet containing the information specified in § 1.63(b), the search fee (§ 1.492(b)), the examination fee (§ 1.492(c)), and any application size fee required by the Office under § 1.492(j).

If required during examination, corrective papers (e.g. drawings or sequence listing) which are filed after the first Office Action will not generate a PTA reduction.

We wish to bring to your attention additional procedural changes brought about by the recent Patent Law Treaty.

The time for reply to Office actions (OA) and other Notices has, in some cases, been increased. As you know, most OAs already have a reply period of at least 3 months but some of those with shorter reply periods have been increased.

Please see chart below.



In addition to the OAs shown above, the OA response period for Accelerated Examination has also increased to two months.

We will, of course, continue to remind you of all relevant time periods for response in each of your specific applications in our regular reporting letters.

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