Recent Patent Changes from the Patent Law Treaty

1. Kenneth Horton
Kirton|McConkie
60 East South Temple
Suite 1800
P.O. Box 45120
Salt Lake City, UT 84145-0120
Main: (801) 328-3600
Direct: (801) 321-4897
Fax: (801) 212-2056
Cell: (801) 809-0310
khorton@kmclaw.com
http://www.linkedin.com/in/HortonIP
THE IP LEGAL MINUTE
OCTOBER 2013: PATENT LAW TREATY FINAL RULES
On October 21, 2013, the PTO issued the final rules for implementing the Patent Law Treaty (PLT). See 78 Federal
Register 62367-62409 (Oct 21, 2013). While there are many changes in the final rules, several are worth highlighting in
this edition of the newsletter.
1. Filing Date. The PTO changed the requirements to obtain a filing date for a patent application. A claim is no longer
required for a nonprovisional patent application to be entitled to a filing date. This change obviously does not apply to
design applications. The PTO also now allows a nonprovisional application to be filed “by reference” to a previously
filed application instead of filing the specification and drawings. An application filed either without a claim or “by
reference” to a previously filed application will be given a brief period of time in which to supply a claim(s) or a copy of
the specification and drawings of the previously filed application. Meeting these new standards does not satisfy other
statutory requirements to receive a patent, including the written description and enablement requirements. So while an
application may technically satisfy the requirements to obtain a filing date, it can still fall short of the requirements to
function as a priority document for a later application. Thus, the best practice is still to file a “complete” patent
application at the time of filing.
2. Unavoidable Delay.
The PTO also changed the rules about revival of abandoned applications and delayed
maintenance fee payments. These may proceed only on the basis of “unintentional” delay. The PTO eliminated the basis
(and lower cost) of “unavoidable” delay.
3. Late Filing of Priority Application. The PTO now allows the right of priority to a foreign application or a provisional
application to be restored if the 1 year filing deadline is missed. This right of priority can be restored if the application is
still filed within 2 months after the expiration of the twelve-month period (or 6 months for design applications). A
petition and payment of the applicable unintentional delay fee is required. While no one wants to pay a fee for the
unintentional delay in such instances, the ability to recapture the priority claim is an extremely important safeguard for our
clients.
4. Patent Term Adjustment. Finally, the PTO revised the patent term adjustment provisions to reduce any patent term
adjustment if a patent application is not in condition for examination within eight months of its filing date (or
commencement of national stage proceedings).
This change prevents an Applicant from taking advantage of the
additional opportunities to delay the examination process described in (1) above while not sacrificing patent term. Again,
another reason to continue filing “complete” patent applications at the time of filing.