New U.S. Patent Rules Effective in December – Will They Affect My Practice?

On December 18, 2013, a series of new U.S. patent rules will become effective. The rule changes update the U.S. patent rules in view of a 2012 U.S. law passed to harmonize certain U.S. laws with an international agreement and international treaty to which the United States is a party. The four most significant changes are:

(1) a reduction in the requirements for obtaining a filing date;

(2) elimination of “unavoidable” delay such that delays for responding to the USPTO can only be “unintentional;”

(3) an additional two months to claim priority benefits from a foreign or provisional application; and

(4) Patent Term Adjustment (PTA) reductions if an application is not in order within 8 months of its filing.

The first change allows a non-provisional, utility application to receive a filing date even if it does not include a claim, and further allows it to “incorporate by reference” a previously filed application, rather than requiring resubmission of a specification and drawings. Applicants that do not initially submit a claim, specification, or drawings, however, will subsequently be required to submit the portions not initially included in response to a Notice to File Missing Application Parts. Thus, except in the rare circumstance where it is not feasible to supply the previous specification and/or drawings, and/or draft claims, we recommend continuing to file applications without “taking advantage” of these reduced requirements. The potential added attorney expense for responding to the Notice to File Missing Application Parts, the potential loss of support for desired subject matter by not including claims in an initial application, and the potential loss of PTA if the Notice is not responded to in eight months are typically not worth the “convenience” of the quicker filing. The second change will be relevant only to those needing to explain why a deadline was missed, and the third change affords applicants an extra two months to make and double-check priority claims. Overall, we do not anticipate these changes will have a significant impact on practitioners, but practitioners should at least be aware of these changes in the event they need to rely on them.

To review the new rules in the Federal Register, click here.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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