By Donald Zuhn —

In April, the U.S. Patent
and Trademark Office published a notice in the Federal Register (78 Fed. Reg.
21788) proposing
changes to the rules of practice for consistency with the Patent Law Treaty
(PLT) and title II of the Patent Law Treaties Implementation Act of 2012
(PLTIA), which amends the Title 35 to implement the provisions of the PLT.  The
PLT, which harmonizes and streamlines formal procedures pertaining to the filing and
processing of patent applications, only applies to applications that can be filed as international
applications under the Patent Cooperation Treaty (PCT), and therefore, does not
apply to design, plant, provisional, or reissue applications.

Although the PLT entered
into force on April 28, 2005, and was ratified by the Senate on December 7,
2007, because the PLT is not a self-executing treaty it did not enter into
force in the U.S. until the PLTIA was enacted on December 18, 2012 — the
PLTIA, however, does not take effect until December 18, 2013, or one year after the date
of enactment.  The PLTIA will apply to any
patent issued before, on, or after December 18, 2013, and to any application pending
on or filed after December 18, 2013.  The
PLTIA, however, will have no effect with respect to any patent that is the
subject of litigation in an action commenced before December 18, 2013.

According to the notice,
there are three notable changes resulting from the PLT and PLTIA, which
involve:

(1) The filing date requirements for a patent
application; (2) the restoration of patent rights via the revival of abandoned applications
and acceptance of delayed maintenance fee payments; and (3) the restoration of
the right of priority to a foreign application or the benefit of a provisional
application via the permitting of a claim to 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 twelve-month period . . . for filing
such a subsequent application.

With respect to the filing date
requirements, the Office is proposing changes to the rules to provide (a) that
a claim is not required for a nonprovisional application to be entitled to a filing date, and (b) to allow for the filing
of a nonprovisional application "by reference" to a previously filed application
in lieu of filing the specification and drawings.  Under the revised rules, when a
nonprovisional application is filed without at least one claim or without
referencing a previously filed application in lieu of submitting the
specification and drawings, the applicant will be given a period of time to
provide one or more claims or a copy of the specification and drawings of a previously
filed application.

To prevent an applicant
from taking advantage of the opportunities to delay the examination process
provided by the PLT and PLTIA (i.e.,
by filing an application without at least one claim or without referencing a previously
filed application), the Office is also proposing changes to the rules to provide
for a reduction of patent term adjustment (PTA) if an application is not in
condition for examination within eight months of its filing date (or date of
commencement of national stage in an international application).

With respect to the first change resulting from the PLT and PLTIA, the notice indicates that:

An application
whose disclosure satisfies only the requirements of 35 U.S.C. 111(a) to be entitled
to a filing date may nonetheless not meet the requirements of 35 U.S.C. 112 and 113 necessary for
the applicant to be entitled to a patent for any claimed invention presented in
the application, or even for the application to effectively serve as a priority
or benefit application for an application subsequently filed in the United
States or abroad.  Therefore, the ability
to file an application without a claim or drawing should be viewed as a
safeguard against the loss of a filing date due to a technicality and not as a best
practice.

With regard to the second
change resulting from the PLT and PLTIA, the Office is proposing changes to the rules to provide for the revival
of abandoned applications and acceptance of delayed maintenance fee payments
solely on the basis of "unintentional" delay.  The notice indicates that the PLTIA
eliminates patent law provisions relating to the revival of abandoned
applications or acceptance of delayed maintenance fee payments on the basis of
a showing of "unavoidable" delay. 
In particular, the PLTIA amends 35 U.S.C. §§ 122(b)(2)(B)(iii), 133, 151,
364(b), and 371(d) to delete the reference to an unavoidable standard.

As for the third notable
change, the Office is proposing changes to the
rules to allow an applicant to restore the right to priority to a prior-filed
foreign application or a provisional application if a subsequent application
(nonprovisional or international application) is filed after the
expiration of the twelve-month period set forth in 35 U.S.C. § 119(a) or (e),
but within two months from the expiration of the twelve-month period,
provided that the delay in filing the subsequent application was unintentional.

The Office's notice
provides a detailed discussion of the specific rules changes at pages
21792-800, and a listing of the revised rules at pages 21803-09.  For additional information regarding the
proposed rules changes, readers are encouraged to consult the 22-page Federal
Register notice.

Written comments regarding
the proposed rules changes can be submitted until June 10, 2013 by e-mail to AC85.comments@uspto.gov;
by regular mail addressed to:  Mail Stop
Comments — Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
22313–1450, marked to the attention of Robert W. Bahr, Senior Patent Counsel,
Office of Patent Examination Policy; or via the Federal eRulemaking Portal.