The U. S. Patent and Trademark Office (PTO) issued new rules to implement the Patent Law Treaty. The new rules take effect December 18, 2013.
The major provisions of the rule changes pertain to filing date requirements for a patent application, restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments, and restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the 12-month period.
According to the new rules, a claim is not required for a non-provisional utility application to receive a filing date. In addition, drawings that are not necessary to describe the invention are not required at the time of filing the application. Design applications, on the other hand, still require a claim and a drawing in order to receive a filing date. Furthermore, a specification is not even required if a new application is filed by reference to a previously filed application.
Under the new rules, the filing date of an application is the date the specification and any required drawings or the reference to a previously filed application are received by the PTO. However, although an application receives a filing date it does not mean the application meets the requirements of 35 U.S.C. §§ 112 and 113.
The new rules further provide that the PTO can accept maintenance fee and issue fee payments after the expiration of the payment due dates and can accept a late response by the patent owner in a reexamination if the delay in payment or responding is unintentional. Applicants are no longer limited to a two-year window to revive unintentionally expired patents, and unavoidable delay is no longer an option for revival.
In addition, with respect to an application claiming priority to a prior-filed provisional application or foreign application, if a subsequent application is filed after the expiration of the 12-month period (six-months for a design application), the right of priority may be restored upon petition if the delay in filing the subsequent application was unintentional.
The petition fee for requesting acceptance of a late issue fee, maintenance fee, reexamination response or restoration of priority will be $1,700 ($850 small entity).
Practice Note: Applicants should timely file all documents and fees, as using the additional time periods in the new rules as “an extension of time” will be considered an abuse of the provisions.