IP Alert: U.S. Patent Law Changes Taking Effect as of December 18, 2013
January 2, 2014
A number of changes went into effect on December 18, 2013, relating to the Patent Law Treaty and Patent Law Treaties Implementation Act 2013 (collectively the “PLT”):
- Nonprovisional patent applications (other than design applications) will be accorded a filing date even if filed without claims and/or drawings, or if filed with a reference to a previously filed application. Any such application will be deemed incomplete and will not be assigned to an examiner until amended to include a specification and at least one claim and any necessary drawings. As before, new drawings and claims cannot introduce new matter. The filing requirements for design applications remain unchanged.
- If an application is filed by reference to a previously filed application, the U.S. Patent and Trademark Office (USPTO) will issue a notice giving the applicant a time period within which to submit an English language copy of the specification and drawings from the previously filed application in order to avoid abandonment.
- A late claim to priority to a foreign application may now be made in a U.S. application within a 2-month grace period, provided the failure to file the application within the 12-month priority period was unintentional. Thus, applicants who inadvertently miss the filing deadline now have 14 months to make such claims in utility applications and 8 months to make such claims in design applications, provided a petition to restore the right of priority is filed by the applicant and granted by the USPTO.
- Many USPTO actions issued on or after December 18, 2013, now have a two-month minimum response deadline. For example, although it was routine for restriction requirements to have a one-month deadline for response, these now have a two-month deadline. Listed below are the USPTO actions that formerly had one-month response deadlines, along with the currently imposed deadlines:
PLT Time Period Impact on
Current One-Month Response Times
Action Type Currently with One-Month Response |
Response Time Period After 12/18/13 |
Mail Restriction Requirement
(w/o rejections) |
Increased to two months |
Mail Notice of Informal or
Non-Responsive Amendment |
Increased to two months |
Mail Notice of Informal or
Non-Responsive RCE Amendment |
Increased to two months |
Mail Notice of Required Fees Due |
Increased to two months |
Mail Letter Requiring Computer Readable Format (CRF) Sequence Listing |
Increased to two months |
Mail PCT Chapter I Form 206 |
No change
(remains one month) |
Mail Pre-Interview Communication |
No change
(remains one month) |
Mail First Action Interview
(FAI) Office Action in FAI Pilot Program |
No change
(remains one month) |
Mail First Action without Interview
(FAI Pilot Program) |
No change
(remains one month) |
Mail Noncompliant FAI
(FAI Pilot Program) |
No change
(remains one month) |
Mail Pre-Interview First Office Action
(FAI Pilot Program) |
No change
(remains one month)
|
On December 13, the USPTO leadership issued a memorandum that summarizes the above changes. For more information, please contact Fitch Even partner Edward E. Clair, or review these other Fitch Even IP Alerts regarding the PLT:
IP Alert: USPTO Announces Proposed Rules to Implement Title I of the PLTIA
IP Alert: Patent Law Treaties Implementation Act of 2012 Signed into Law
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