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Patent Law Treaty

Patent Law Treaty

In December 2012, Congress passed the Patent Law Treaties Implementation Act of 2012 to implement the provisions of the Patent Law Treaty.  The provisions focused on harmonizing and streamlining many of the formal procedures for filing and processing a patent application. Some of the most notable changes concern: (i) the filing date requirements for a patent application; (ii) the restoration of the right of priority to a foreign or provisional application in a patent application filed after the expiration of the priority period; (iii) the restoration of patent rights via the revival of abandoned applications, acceptance of delayed maintenance fee payments, and acceptance of delayed patent owner response in reexamination; and (iv) the time period for responding to certain office communication and amounts due for issue and publication fees.  The Patent Law Treaties Implementation Act and ensuing changes became effective on December 18, 2013.

Frequently Asked Questions

Effective Date

Question PLT0100:  What is the effective date of the PLT and PLTIA provisions? 

               The effective date of the PLT and PLTIA provisions is December 18, 2013.

Question PLT0200:   If an applicant files a utility patent application under 35 USC 111(a) prior to December 18, 2013, without including a claim, will the application be entitled to a filing date

No, the changes regarding filing date requirements are not applicable to patent applications filed prior to December 18, 2013. 

Question PLT0300:   Can an applicant file a petition to restore the benefit of a provisional application under 37 CFR 1.78(b) for an application filed after the expiration of the twelve-month period in 35 U.S.C. 119(a) but prior to December 18, 2013? 

Yes, the changes regarding restoration of priority apply to applications filed before, on, or after December 18, 2013.  


Filing Date Requirements

Question PLT1020:  Does the PLT apply to PCT applications?  Is a claim still required for a PCT application to be entitled to a filing date?

The PLT does not apply to PCT applications.  The filing date changes in the PLT and PLTIA apply to applications, other than for a design patent, filed under 35 USC 111 (i.e., non-PCT applications).  PCT applications must continue to comply with the application content requirements of PCT Article 11(1) to be entitled to a filing date, and PCT Article 11(1)(iii)(e) requires that a PCT application contain a claim or claims.

Question PLT1050:  Will the ADS be updated to include a section where applicants can include the reference to a previously filed application?  Is it good practice to include this reference even when the applicant is filing the specification and drawings?

The ADS has been revised to include a section where applicants can include the reference to a previously filed application.  The revised ADS is now available on the USPTO’s Internet Web site.

An applicant should not use the reference filing section of the ADS unless the applicant is relying upon the reference filing provisions of the PLT and PLTIA.  Otherwise, the applicant will be sent a notice requiring the applicant to provide a copy of the specification and drawings of the previously filed application and to pay the surcharge set forth in 37 CFR 1.16(f).  Applicants are reminded that the specification and drawings of the application specified on the application data sheet are the specification and drawings of the application being filed by reference even if an applicant mistypes an application number, filing date, or intellectual property authority or country.  Accordingly, to avoid the risk of incorrect filings and the required surcharge, applicants should simply file a copy of the specification and drawings of the previously filed application, if available, instead of relying upon the reference filing provisions. 

Question PLT1055:  What is the purpose of the PLT Model Request Form when the ADS will have a section to file an application "by reference"?  Where can you find the PLT Model Request Form?

The PLT and PLTIA Regulations provide for the establishment of model forms by the World Intellectual Property Organization (WIPO).  Applicants may use the application data sheet (ADS) for national applications under 35 USC 111 filed in the USPTO.  Applicants may use the PLT Model Request form for national applications under 35 USC 111 filed in the USPTO or national applications filed in other PLT countries.  However, as provided in 37 CFR 1.76(d)(2), information in an ADS will govern when inconsistent with the information supplied at any time in PLT Model forms.  Furthermore, if applicants want to postpone submission of the inventor’s oath or declaration until the application is in condition for allowance, an ADS that provides the inventor information is required.   Accordingly, the use of an ADS to supply application information is encouraged.  The PLT Model forms may be found on WIPO’s Internet Web site at http://www.wipo.int/treaties/en/ip/plt/forms.html  

Question PLT1100:  Is a design application required to contain a claim to be entitled to a filing date?

Yes.  The filing date of a design application is the date on which the specification as prescribed by 35 U.S.C. 112 and any required drawings are filed.  See 35 U.S.C. 171(c).  35 U.S.C. 112(b) requires the specification to conclude with one or more claims.  Thus, a design application must contain a claim to be entitled to a filing date.    

Question PLT1200:  When a reference to a previously filed application was relied upon in obtaining a filing date for the instant application, is that reference sufficient to establish a priority or benefit claim in the instant application to that previously filed application?

No.  Reference filing information is provided in a section of the ADS (or PLT Model International Request Form) that is separate from the foreign priority information section and the domestic benefit claim information section.      

Question PLT1300:  Is a certified copy required for an application filed by reference to a previously filed foreign application?  If so, what is the time period within which the certified copy must be submitted?

For an application filed by reference under 37 CFR 1.57(a), a certified copy of the previously filed application must also be filed, unless the previously filed application is an application filed under 35 U.S.C. 111 (a U.S. provisional or nonprovisional application) or under 35 U.S.C. 363 (a PCT application), or the previously filed application is a foreign priority application and the conditions set forth in 37 CFR 1.55(h) (the priority document exchange program requirements) are satisfied with respect to such foreign priority application.  If a certified copy is required, it must be filed within the later of four months from the filing date of the application or sixteen months from the filing date of the previously filed application.  If the certified copy is not filed within this time period, the certified copy must be accompanied by a petition including a showing of good and sufficient cause for the delay and the petition fee set forth in 37 CFR 1.17(g).

Question PLT1400:  If I file an application to obtain a filing date by including a reference in an application data sheet (ADS) to a previously filed application as provided for in 37 CFR 1.57(a), do I still have to submit a copy of the specification and drawings from the prior application?

Yes.  The copy of the specification and any drawings, along with the surcharge under 37 CFR 1.16(f), would be required to be filed in response to a Notice to File Missing Parts.   If the previously filed application is not in English, an English language translation and a processing fee will also be required to be filed in response to the Notice to File Missing Parts.

Question PLT1400:   How will the office process an application filed to obtain a filing date which includes both a reference in an application data sheet (ADS) to a previously filed application as provided for in 37 CFR 1.57(a) and application papers including a specification and drawings?

The application will be processed as a reference filing and applicant will be charged the surcharge under 37 CFR 1.16(f) even though a specification and drawings were submitted with the reference filing.  The ADS form indicates that “the description and any drawings of the present application are replaced by this reference to the previously filed application.”  Accordingly, the Office will send out a Notice to File Missing Parts requiring the surcharge and a copy of the specification and any drawings.  Applicants must respond to the Notice to File Missing Parts by filing a copy of the specification and any drawings of the referenced application or by stating that the specification and drawings submitted on filing is a copy of the specification and drawings of the referenced application.  Reference filing is intended for situations when a copy of the previously filed application is not available at the time the current application is being filed.  If a copy of the previously filed application is available, applicant should file the copy of the specification and drawings and not complete the section of the ADS for filing by reference.  If the reference filing section of the ADS is completed, applicants will be required to pay the surcharge under 37 CFR 1.16(f), even if a copy of the previously filed application is present on filing the application. 

Question PLT1450:  If I file an application without claims or file by reference, would there be additional applicant delay for patent term adjustment purposes?

Filing an application without any claims or filing an application by reference would not, by itself, result in a reduction of any patent term adjustment.  A reduction of any patent term adjustment  would result if the applicant either (1) failed to place the application in condition for examination within eight months of the filing date of the application (37 CFR 1.704(c)(11)), or (2) failed to respond to a notice from the USPTO (e.g., a notice requiring at least one claim or a notice requiring a copy of the specification and any drawings from the previously filed application) within three months from the mail date of the notice (37 CFR 1.704(b)).

Question PLT1500:  Can applicants file an interim copy of a foreign previously filed application in order to delay submission of the certified copy required for an application filed by reference to a prior foreign application? 

No.  The interim copy provision of 37 CFR 1.55(i) is not applicable to the requirement for a certified copy of a foreign previously field application in an application filed by reference under 35 USC 111(c) and 37 CFR 1.57(a). 


Minimum Two-Month Time Period for Reply

Question PLT1800:  The PLT provides for a time period of at least two months for replies to most office actions and other notices.  Does this mean that the response times for office actions containing only a requirement for restriction or an election of species that were previously one month are now two months?

Yes.  This change in time periods for replies primarily impacts

  • Office actions containing only a requirement for restriction or an election of species,
  • Office notices treating a reply by the applicant as non-responsive or noncompliant, and
  • Office notices requiring compliance with the sequence regulations (37 CFR 1.821 et seq.).

However, the USPTO has certain pilot programs that are not encompassed by this requirement of the PLT (e.g., the pre-appeal brief conference program and the pre-first Office action on the merits interview program) that will continue to set a time period of less than two months for reply.

Question PLT1820:   Does the reply time period of at least two months provided for by the PLT impact the First Full Action Interview program?

Yes.  The office revised the Full First Action Interview program to provide that the First Action Interview Office Action Summary will provide a period for reply of two months (extendable by two months).  However, the Notice of Non-Compliant First Action Interview Request will continue to set a non-extendable time period of one month or thirty days, whichever is longer, for applicant to correct the deficiencies to avoid the application being removed from the Full First Office Action Interview Pilot Program.  Similarly, the First Action Interview Pilot Program Pre-Interview Communication will continue to set a time period of one month or thirty days, whichever is longer (extendable by only one month) for an applicant to schedule an interview and submit a proposed amendment or arguments to avoid the application being removed from the Full First Office Action Interview Pilot Program.

Question PLT1840: If I receive an office action or notice that provides a period for reply of one month and my understanding is that the PLT provides a period for reply at least two months, can I assume that the period for reply is two months?

No.  The period for reply is that provided in the office action or notice, unless applicant is notified in writing (e.g., an interview summary form or a remailed office action) that the period for reply has been changed to two months.   If applicant is not so notified and does not reply to the office action or notice within the one month period for reply, the application may become abandoned for failure to reply within the reply period.   If applicant receives an office action or notice providing a period for reply of one month and applicant believes that the period for reply should be two months, applicant should contact the appropriate Technology Center (TC) Patent Law Treaty representative and request that the time period for reply to the Office action or notice be set for two months.  The TC Patent Law Treaty representatives are identified below:  

TC Name Phone
1600 Bennett Celsa 571-272-0807
1700 Bill Krynski 571-272-1024
2100 Don Wong      571-272-1834
2400 Jeff Pwu 571-272-6798
2600 Rafael Perez-Gutierrez 571-272-7915
2800 Hien Phan       571-272-1606
2900 Joel Sincavage 571-272-2610
3600 Richard Ridley 571-272-6917
3700 Steve McAllister 571-272-6785
4100 - Academy Kat Gorgos 571-272-1012

 

Question PLT1860: Does the reply time period of at least two months provided by the PLT impact international applications in which the national stage was commenced under 35 U.S.C. 371? 

Yes.  Office actions containing only a lack of unity of invention requirement in a national stage application under 35 U.S.C. 371 will provide a reply time period of at least two months.

Question PLT1880:    Is the reply time period of at least two months provided by the PLT only applicable to applications that were filed on or after December 18, 2013

No.  The changes regarding the minimum two-month time period for reply apply to Office actions/notices mailed on or after December 18, 2013 regardless of whether the application was filed before, on, or after December 18, 2013.   


Restoration of Priority

Question PLT2100:  I plan to file a petition to restore the benefit of the provisional application under 37 CFR 1.78(b) since the nonprovisional application was filed within fourteen months of the provisional application and the delay in filing the nonprovisional application within the twelve-month period was unintentional.  The nonprovisional application is still pending, but it is now more than four months from the filing date of the nonprovisional application and more than sixteen months from the filing date of the prior provisional application and I did not previously make a benefit claim to the provisional application.  Do I also need to file a petition to accept an unintentionally delayed claim under 37 CFR 1.78(c)?

Yes, both a petition to restore the benefit of the provisional application under 37 CFR 1.78(b) and a petition to accept an unintentionally delayed claim under 37 CFR 1.78(c) are required in this situation.

Question PLT2200:  Can a PCT application be filed within two months of the expiration of the priority period and have the right of priority restored?

The right of priority may be restored in a PCT application under the provisions of PCT Rule 26. The right of priority may be restored in a PCT application under the provisions of PCT Rule 26bis.3 which provides for restoration in international applications filed within two months of the expiration of the priority period.  Where the right of priority is restored under PCT Rule 26bis.3 in an international application which designated the United States, the right of priority will carry over into any resulting U.S. national phase application filed under 35 U.S.C. 371.  However, the right of priority may not carry over to a national or regional phase application in other PCT member States (see PCT Rule 49ter and the Web site of the World Intellectual Property Organization for more information:   http://www.wipo.int/pct/en/texts/restoration.html ).  It should be noted that the United States receiving office only considers requests for restoration under the unintentional standard. Therefore, if applicant desires consideration under the “due care” (i.e., unavoidable) standard, applicant should file the international application directly with the International Bureau.


Restoration of Patent Rights via Revival of Abandoned Applications and Acceptance of Delayed Maintenance Fee Payments

Question PLT3100:  If an application becomes abandoned for failure to pay the issue fee, what is the issue fee due with the petition to revive the application under the unintentional standard?

The issue fee due with the petition to revive is the issue fee specified in the notice of allowance.  If the notice of allowance also specified a publication fee, then the publication fee must also be paid in the amount specified on the notice of allowance.  An applicant may change the entity status with the filing of the petition to revive, if appropriate, and pay the petition fee in the new entity status amount, but the issue fee (and any publication fee) must be paid in the amount specified in the notice of allowance.

Question PLT3200:  How will the Office of Petitions treat a petition under the unavoidable standard to revive an abandoned application or reinstate a patent that expired for failure to pay a maintenance fee that was filed before December 18, 2013?

The Office of Petitions will treat petitions under the unavoidable standard filed before December 18, 2013 on their merits, regardless of whether the decision will be issued before, on, or after December 18, 2013.  Any decision dismissing a petition under the unavoidable standard filed before December 18, 2013 should explain that the applicant or patentee has the option of filing a petition under the unintentional standard.

Question PLT3300:  How will the Office of Petitions treat any petition under the unavoidable standard filed on or after December 18, 2013?

The petition will be dismissed, as there is no provision for filing a petition or renewed petition under the unavoidable standard on or after December 18, 2013.  However, where there is a request for reconsideration filed on or after December 18, 2013 of a decision dismissing or denying a petition under the unavoidable standard that was filed before December 18, 2013, and the request for reconsideration is convincing that the petition under the unavoidable standard that was filed before December 18, 2013 should have been granted (e.g., the request for reconsideration does not contain additional evidence of unavoidable delay, but rather establishes that the petition under the unavoidable standard filed before December 18, 2013 contained an adequate showing of unavoidable delay), the request for reconsideration and petition under the unavoidable standard that was filed before December 18, 2013 can be granted.

Question PLT3400:  My patent expired more than two years prior to December 18, 2013.  Do I need to provide any explanation as to the extended delay in filing a petition under the unintentional standard for reinstatement of the expired patent?

The rule requires a statement that the delay in payment of the maintenance fee was unintentional.  The Director may require more information where there is a question as to whether the delay was unintentional. 

Question PLT3500:  If multiple maintenance fees due on a single patent have not been paid, can a single petition under the unintentional standard be filed on or after December 18, 2013 to pay all the previously due maintenance fees?

A separate petition fee is required for each delayed maintenance fee payment.  A statement that the delay in payment of the maintenance fee was unintentional is also required with respect to each delayed maintenance fee payment.  While the patentee can include the statements of unintentional delay in a single petition (if desired), a separate petition fee is required for each delayed maintenance fee payment.


Miscellaneous

Question PLT9100:  37 CFR 1.33(b) requires a patent practitioner to sign all correspondence submitted on behalf of a juristic entity unless otherwise provided.  Are there any changes to the correspondence that a juristic entity may sign under the PLTIA rules?

Yes.  A juristic entity may sign the following correspondence without the signature of a patent practitioner:  

  • a fee transmittal letter (37 CFR 1.23),
  • an application transmittal letter limited to the transmittal of the document and fees comprising a patent application (37 CFR 1.51),
  • a letter limited to a request for a filing receipt (37 CFR 1.54), an application transmittal letter limited to the transmittal of a copy of the specification and drawings from a previously filed application submitted under 37 CFR 1.57(a) or (b) (37 CFR 1.57(i)), and
  • a maintenance fee transmittal letter (37 CFR 1.366).

Question PLT9300: Is it true that any Notices of Allowances mailed between 12/18/2013 and 1/1/2014 will require payment of the fees on the Notice of Allowance, even if waiting until after fee changes are implemented on 1/1/2014?

Any notice of allowance mailed between October 1, 2013 and December 31, 2013 indicates that the issue fee and publication fee due is the lower of: (1) the issue fee and publication fee in effect on the date the notice of allowance is mailed; or (2) the issue fee and publication fee in effect on the date the issue fee and publication fee is paid.  Thus, the sum specified in a notice of allowance mailed between October 1, 2013, and December 31, 2013, is the issue fee in effect on January 1, 2014, for applicants who receive a notice of allowance before January 1, 2014, but who timely pay the issue fee after January 1, 2014.

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Robert Bahr
Senior Legal Advisor
571-272-8800

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Last Modified: 2/11/2014 5:02:46 PM