New International Patent Law Treaty

Just as we are getting used to the changes brought by the new America Invents Act, which became fully implemented March 16, 2013, we find that more change is coming. Yes, Congress strikes again, once again in the name of harmonizing and streamlining patent application procedures. While some of these changes may actually be beneficial, the amount of change being implemented concurrently raises many challenges to patent law procedures, and thus opens the way for errors to be made.

What is the latest change? It relates to an international treaty called the Patent Law Treaty of 2000. The Patent Law Treaty Implementation Act of 2012 was passed by Congress on December 18, 2012, and goes into effect on December 18, 2013.

In general, the new law relaxes the requirements for securing an application filing date, provides additional flexibility in claiming priority, and eliminates the “unavoidable” basis for reviving an abandoned application and obtaining acceptance of certain delayed fee payments.

The Patent Law Treaty, itself, was signed on June 1, 2000, and became effective on April 28, 2005. In general, the Patent Law Treaty sets maximum form and content requirements for non-provisional utility patent applications. The U.S. ratified the Treaty on December 7, 2007.

However, the Treaty would not go into effect in the US until the US Congress passed implementing legislation. That implementing legislation was enacted on December 18, 2012, and the changes take effect December 18, 2013.

The US Patent Office has divided the treaty provisions into three categories:

a. Changes related to the filing date requirements.

b. Changes related to reviving an abandoned application, and obtaining acceptance of delayed fee payments.

c. Changes related to claiming priority to an earlier-filed application.

The US Patent Office’s proposed rules purportedly implement these changes. At the same time the US Patent Office also proposes to change the Patent Term Adjustment (PTA) rules to provide for a reduction in PTA if an application is not in condition for examination 8 months after its filing date.

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