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New Rule Change May Save Your Patent Application Filing Date or Priority Claim

November 13, 2013

By: Deirdre E. Sanders

Hamilton Brook Smith Reynolds Alert

A new PTO rule makes important changes providing for:

  • greater ease of filing utility applications;
  • a single standard that applicants may use to revive abandoned applications or expired patents; and
  • a grace period to save potentially lost priority claims. 

On October 21, 2013, the U.S. Patent and Trademark Office (PTO) published a final rule which conforms aspects of U.S. patent practice to the U.S.'s obligations under the Patent Law Treaty (PLT).  The PLT harmonizes and streamlines patent application filing and examination procedures among the contracting parties, including Australia, Canada, the European Patent Organization, and the United States, among others.  The new rule, which takes effect on December 18, 2013, provides for consistency with amendments provided in Title II of the U.S. Patent Law Treaties Implementation Act of 2012 (PLTIA), which implemented the PLT.
Easing of Patent Filing Date Requirements

Under the new rule, an applicant who files a nonprovisional application on or after December 18, 2013 will no longer be required to include a claim with the application to be awarded a filing date.  Currently, such an application must include at least one claim to satisfy the regulatory requirements to earn a filing date.  Under the new rule, the filing date of the application will be the date on which the specification, with or without claims, is received in the PTO.
Likewise, under the new rule, an applicant who files a nonprovisional application "by reference" to a previously-filed application will not be required to include a specification and drawings at the time of filing to be awarded a filing date, as long as all necessary procedural requirements (including proper reference to the previously-filed application in an application data sheet) are met. 
If an application is filed without claims, or with reference to a previously-filed application in lieu of a specification and drawings, the PTO will issue a Notice (similar to current Notice to File Missing Parts practices), giving the applicant a period of time to remedy the deficiency before the application is abandoned. 
Using these new provisions may come with consequences, however, if the applicant does not file the remaining elements of the application in a timely fashion.  For example, if a nonprovisional application is not yet ready for examination within eight months of filing, or of the date of commencement of the national stage in an international application, the patent term adjustment time will be reduced.  Further, of course, the specification, drawings and claims, once submitted, must still be sufficient to meet all other applicable requirements.

Providing a Single Standard for Reviving Abandoned Applications and Reinstating Expired Patents

The new rule provides an applicant with a single standard to revive an abandoned application or restore an expired patent.  A patent application may become abandoned if an applicant fails to respond to an office action or notice from the Patent Office within a specified period of time.  Further, after a patent issues, the patent holder must pay three sets of maintenance fees (3.5 years, 7.5 years, and 11.5 years after the date of issue) to keep the patent in force, and a failure to pay these fees will result in the patent expiring before the end of its term.
Traditionally, an applicant or patent holder may attempt to revive an abandoned patent application or reinstate an expired patent by arguing that the delay in responding to an office action or paying the maintenance fee was either "unavoidable" or "unintentional."  The "unavoidable" standard typically requires the applicant or patent holder to argue that she encountered circumstances so difficult that she has no choice but to allow the application to become abandoned or fail to pay the maintenance fees. 
The new rule eliminates the "unavoidable" standard for both revival of abandoned applications and reinstatement of expired patents.  Instead, the rule creates a singular standard -applicants or patent holders must encounter an "unintentional" delay.  The "unintentional" standard will not change from its current form - it is a fact-specific inquiry in which the PTO has discretion in whether to accept that the delay was truly "unintentional."  This change affects all patents and applications filed before, on, or after December 18, 2013.
Under the new rule, to revive an abandoned application, the rule requires that the applicant file a petition explaining her unintentional delay and pay the petition fee.  As before, the petition must accompany the reply to the outstanding office action or notice, unless the reply was previously filed, and must provide a statement explaining why the delay, from the due date until the filing of the petition, was unintentional.
Similarly, to reinstate an expired patent, a patent holder must file a petition explaining her unintentional delay and pay the requisite fee.  Additionally, the rule removes the 24-month time limit to reinstate an expired patent, allowing a patent holder to reinstate her patent any time after the expiration.

Restoring the Right of Priority to a Foreign or Provisional Application

The rule also provides a method of restoring the right of priority to a foreign or provisional application if an applicant misses the deadline to file.  Under the present rule, the applicant must file a nonprovisional application in the United States within 12 months of filing a foreign application or provisional application, in order to claim the benefit of the filing date of the previously-filed application.  If the applicant does not file within that window, she loses the right to claim priority.
The new rule will provide a two-month grace period beyond the original 12-month window to restore a priority claim to a previously-filed application, as long as all other priority claim requirements are met.  Similar to the new standard for reviving abandoned applications or reinstating expired patents, to take advantage of this grace period, the applicant must file a petition explaining to the PTO that the delay was "unintentional," and pay the requisite fee.  These provisions affect all patent applications filed before, on, or after December 18, 2013.

Although the new rule is not intended to replace proper docketing procedures, best practices, and careful record keeping, it will provide an important mechanism that could potentially save invaluable patent rights.

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