The Patent Treaty Implementation Act amends the Patent Statute such that non-provisional applications no longer need a claim in order to be accorded a filing date.
Required parts of the application to be accorded a filing date include a specification, a fee, and enough information to identify the application. However, the fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period, including payment of a surcharge, as may be prescribed by the Patent Office. If any of the fee, the oath, the declaration, or 1 or more claims are not submitted within that prescribed period, the application will be regarded as abandoned.
Filing date – the filing date of an application will be the date on which a specification, with or without claims, is received in the United States Patent Office. Interestingly, the amendments are such that no drawing is needed in order to be accorded a filing date, even if a drawing is ultimately required. The law does provide that a drawing may be required where necessary for the understanding of the subject matter sought to be patented. But, from a practical perspective, absence of a necessary drawing may ultimately defeat the application such that no patent can be granted. Namely, where a drawing is required, and if a drawing is not included in the original packet of papers submitted as part of the application, it may be impossible to add the drawing later without raising an issue of “new matter”. It will be interesting to see how this plays out in actual applications. Thus, the prospect of not including a drawing until after the application is filed may not be an acceptable option where a drawing is ultimately required.
The US Patent Office plans to implement the changes to by expanding its “Missing Parts” practice to include situations where a non-provisional application is filed without a claim. Under the proposed rules, the applicant would have the usual 2-month Missing Parts period to file a claim or, if the applicant did not provide a correspondence address, the applicant will have three months, from the date the original application documents were filed, to submit a claim.
The new patent law also provides for filing a continuing application without including a copy of the parent application. Namely the Patent Office may prescribe conditions, including payment of a surcharge, under which a reference made, upon the filing of an application, to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, can constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application must be submitted within such period as may be prescribed by the Patent Office. Failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period will result in the application being regarded as abandoned, and treated as having never been filed, although the application can potentially be later revived.
The US Patent Office also plans to revise the Rules to be consistent with the changes to the AIA Technical Corrections Act, which provides that the only time requirement for submission of the oath or declaration is that such document must be filed by the time the Issue Fee is paid.
The new Patent Law Treaty Implementation Act adds a provision for revival based on “unintentional” delay, including payment of a fee, to revive an unintentionally abandoned application for patent, accept an unintentionally delayed payment of the fee for issuing a patent, or accept an unintentionally delayed response by the patent owner in a re-examination proceeding, upon petition by the applicant for patent or patent owner.
As to reviving abandoned applications, the US Patent Office plans to revise the rules to eliminate reference to requirements for showing “unavoidable” delay, and to provide that the only basis for revival of an otherwise-abandoned application is statement of unintentional delay and payment of the prescribed fee.