In April 2013, the U.S. Patent and Trademark Office (USPTO) proposed changes to the rules of practice for consistency with the changes in the Patent Law Treaty (PLT) and title II of the Patent Law Treaties Implementation Act of 2012.  The goal of the PLT is to harmonize and streamline formal procedures pertaining to the filing and processing of patent applications.  The most noteworthy changes of these proposed rules are (1) the filing date requirements for applications; (2) the restoration of patent rights for abandoned applications and acceptance of delayed fee payments solely on an “unintentional” basis; and (3) the restoration of the right of priority to a foreign application or the benefit of a provisional application by allowing a two-month grace period after the statutory period has expired.

Filing Date Requirements for Nonprovisional Applications
Under the proposed rules, nonprovisional utility and plant applications will no longer require a claim to secure a filing date.  The filing date of an application will be the date the USPTO receives a specification.  Note that the PLT does not apply to design applications.  Design applications are still required to have a claim and any required drawings in order to receive a filing date.  Any applications that take advantage of this provision and have been filed without any claims must be amended to include at least one claim within three months from the filing date, unless the applicant has provided a correspondence address, in which case the USPTO will notify the applicant of the time period the applicant has to file at least one claim.  Even where a correspondence address is provided, however, to avoid any problems, it may be best to provide the claims within three months of the filing date.

Also, under the proposed rules, a nonprovisional application can be filed “by reference” to a previously filed application instead of by resubmitting the specification and drawings of the prior application.  In this case, the reference to the previously filed application will constitute the specification and any drawings of the subsequent application for the purposes of receiving a filing date.  A copy of any referenced specification and drawings must be filed within three months, or if a correspondence address was filed, within the time period the USPTO gave the applicant.

Although the proposed rules will allow applicants to file applications without a single claim or by reference to a previously filed application, there are important considerations when using such methods of filing.  Notably, the proposed rules call for “the reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date.”  In particular, for each day beyond eight months that the application is not in a condition for examination, any patent-term adjustment will be reduced an equal number of days.  Moreover, compliance with the filing-date requirements ensures only entitlement to a filing date, and in the USPTO’s words, is not necessarily a “best practice.”  Given the requirements of 35 U.S.C. §§ 112 and 113, filing an application without any claims or drawings runs the risk of receiving written-description and enablement rejections if there is insufficient information in the specification as filed to support the later-filed claims.  Perhaps for this reason, the USPTO recommends viewing the ability to file an application without a claim or drawing merely as a “safeguard against the loss of a filing date due to a technicality.”  Where there is likely sufficient information in the specification to support later claims, however, filing an application that just meets the minimum requirements to receive a filing date could allow applicants to get an earlier filing date in competitive circumstances where being the first to file is paramount.

Restoration of Patent Rights
Under the proposed rules, petitions for revival of abandoned applications and for acceptance of delayed payment of fees, including maintenance fees, will be accepted solely on the basis of “unintentional delay.”  The alternative “unavoidable” delay standard will be eliminated.  The “unavoidable” delay standard is considered more burdensome on the USPTO because the “unavoidable” delay standard requires applicants to submit evidence that the delay was “unavoidable,” whereas the “unintentional” delay standard requires only a statement that the application was abandoned because of an “unintentional” error.  Of note, the filing fee for a petition to revive an unavoidably abandoned application is lower than the filing fee for a petition to revive an unintentionally abandoned application.  Thus, under the proposed rules, applicants filing a petition to revive an abandoned application will be required to pay the higher fee under the “unintentional” delay standard.

Restoration of the Right of Priority
The right of priority to an earlier-filed application will receive an additional two-month grace period if the delay in subsequent filing was “unintentional.”  With respect to the right of priority to a foreign application, if the subsequent application is filed within two months of the expiration of the twelve-month statutory period (or six-month statutory period for design applications), “the right of priority in the subsequent application may be restored under PCT Rule 26bis.3 for an international application or upon petition” and payment of the applicable fee if the delay was unintentional.  Similarly, with respect to the benefit of a provisional application, if the subsequent application is filed within two months of the expiration of the twelve-month statutory period, “the benefit of the provisional application may be restored upon petition and payment of the applicable fee if the delay in filing the subsequent application within the twelve-month period was unintentional.”

Even if this proposal is adopted, however, whenever possible, subsequent applications should be filed within the appropriate statutory period to ensure the right of priority to a foreign application or benefit of a provisional application is received.  This will help avoid not only extra filing fees, but also the risk of the delay being found deliberate, leading to denial of a claim for priority.  The USPTO considered comments until June 10, 2013.

The Federal Register Notice can be found here:
http://www.gpo.gov/fdsys/pkg/FR-2013-04-11/pdf/2013-07955.pdf.