Masterclass:
US Patent Formalities Update
April 2015
Tamara Elmore
• Patent law updates
• Formalities
• Questions and discussion
28/4/15 | 2
Maze of formalities
PCT application
RCE
Provisional
Appeal
371
Continuation
national entry
“bypass”
Allowance Advisory Abandoned
Action
Final
Non-final
Regular “utility” Restriction
application Requirement Office Action(s) Office Action
3m +3m
2m +4m
3m +3m
EP priority
NOA
Issued
patent
Certificate of Correction
Reissue
(Broadening) Reissue
Ex parte Reexamination
Supplemental re-examination
Post-grant review
Inter parte review
28/4/15 | 3
Changes to USC (“articles”) and CFR (“rules”)
• MPEP not always up to date
• AIA (Leahy–Smith America Invents Act 2011)
• AIA Technical Corrections Act- January 2013
• Patent Law Treaty (PLT) and Patent Law Treaties
Implementation Act (PLTIA) (December 18, 2013)
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PTA revisions (May 2014, January 2015)
• Patent term adjustment can extend 20y patent term
• Delays by the USPTO
• Applicant delays can shorten PTA
• USPTO indicates calculation in PAIR (request consideration)
• Federal Circuit Novartis decision (RCEs)- new rules
• Implementation of AIA/PTL- new rules
• “Late submissions” can reduce PTA
28/4/15 | 5
• AIA (Leahy–Smith America Invents Act 2011)
• First inventor to file (March 16 2013)
• EP application has same benefits as US provisional
• Formalities (Sept 16 2012)
• Assignee filing
• Oath/Declaration
28/4/15 | 6
Who can file an application as applicant?
• Inventor(s)
• File in the name of “entitled person” on behalf of inventor
• Assignee
• Person to whom inventor is obligated to assign
• Evidence must be recorded before payment of issue fee
• Person who shows proprietary interest
• Petition, evidence
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Inventor oath
• Inventorship is still important concept in U.S. law
• Before payment of issue fee
• Can now use oath/assignment combination form
• Possible to file substitute statement- (form instead of petition)
• Inventor deceased
• Inventor cannot be found
• Inventor refuses to sign oath
• Signed by other inventors or “entitled party”
• Evidence not required (keep for your records)
28/4/15 | 8
Which oath to file?
• USPTO refusing inventor oaths?
• Pre- vs. Post-AIA oath: different required statements
• USPTO model forms
• Applications filed before 16 Sept 2012 (including PCT
applications) use pre-AIA oath
• Applications filed after16 Sept 2012 (continuation) use post-AIA
oath
• For same family, inventor may need to file 2 different oaths
28/4/15 | 9
Patent Law Treaties Implementation Act (PLTIA)
(December 18, 2013)
• Harmonize filing requirements and formal processing
• Sets a “maximum” for a number of requirements
• Implemented in EPC2000; differences with PCT
• Each country needs to implement treaty in their own law
28/4/15 | 10
Patent Law Treaties Implementation Act (PLTIA)
(December 18, 2013)
•
PLT Model forms (Request form)
•
Maximum requirements for filing date
• Claims no longer needed for application filing date
•
Application may be filed “by reference” to a previously filed application
•
PTA reduction if application not “in condition for examination” by 8m from filing
date of national entry date
•
Minimum time limits (2m for restriction requirement)
•
Representation: required for “juristic applicant”
• Transmittal letter for paying fees and filing application may be signed by
juristic applicant or patent owner
28/4/15 | 11
Restoration of rights
• Pre-PTL:
• Unintentional: “woops”
• Unavoidable: “all due care”
• Post-PTL:
• Only unintentional
• Refund possible for extreme circumstances
(e.g., earthquake)
• Simple form
• Difficult to challenge in court
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• Restoration of rights: only unintentional
• Revival of an abandoned application
• Delayed payment of the fee for issuing each patent
• Delayed submission of a priority or benefit claim
• Delayed filing of an application claiming priority
(within 2m from 12m deadline)
• Delayed maintenance fee payment (time limit removed)
• Petition showing “good and sufficient cause for delay”
• Late filing of certified copy of priority document
• Late filing of previously filed application (file by reference)
28/4/15 | 13
Provisional
Regular “utility”
application
EP priority
Priority
- Paris convention priority: external priority
- Obtain early filing date (prior art)
- Delay costs / gain time
- Patent term
- EP: 20y from “date of filing”
- “date of filing” does not include priority filing
Provisional
Regular “utility”
application
EP priority
- Patent term
- EP: 20y from “date of filing”
Provisional
- “date of filing” does not include priority filing
- US (pre-GATT): 17y from grant
Regular “utility”
application
- No rush for early date (different prior art rules)
- “Global protection”: need early date
- Inventions made in US require US first filing/foreign filing
license
EP priority
- US (post-GATT): 20y from filing date of earliest US application
(US utility or PCT)
- Patent term
Provisional
EP applicant files EP today, PCT in 1y (2016)
20y US patent term is 2036
US applicant files US utility today, PCT in 1y
20y US patent term is 2035
Regular “utility”
application
EP priority
- US: provisional not taken into account for patent term
US applicant files US provisional on today, PCT in 1y
20y US patent term is 2036
Provisional
Regular “utility”
application
EP priority
US provisional
- Provisional: not examined, abd at 12m, never granted
- Priority based on “earlier application”:
- Any filing equivalent to a regular national filing
- Art 66 EPC: EP application is “equivalent to a regular
national filing”
- Conversion of provisional possible (w/in 12m)
- Effect: patent term calculated from provisional date
Provisional
PCT application
Regular “utility”
application
Restriction
Requirement
2m +4m
Non-final
Office Action(s)
3m +3m
Final
Office Action
3m +3m
NOA
EP priority
Continuation-in-part
Corrections, data
Pre-GATT patents
Post-GATT: loose patent term
Continuation
Divisional
Normally after RR
Issued
patent
35 USC 371
- PCT national entry (30m)
- Same PCT application No.
- PCT “rules”
35 U.S.C. 365(c)
- Continuation/CIP application
- New application number
- US “rules”
PCT application
371
national entry
Continuation
“bypass”
Restriction
Requirement
2m +4m
Non-final
Office Action(s)
3m +3m
35 USC 371
- PCT national entry (30m)
- Same PCT application No.
- PCT “rules”
35 U.S.C. 365(c)
- Continuation/CIP application
- US “rules”
- Do not need to resubmit
priority document
- Submit priority document
PCT application
371
national entry
Continuation
“bypass”
Restriction
Requirement
2m +4m
Non-final
Office Action(s)
3m +3m
35 USC 371
- PCT national entry (30m)
- Same PCT application No.
- PCT “rules”
35 U.S.C. 365(c)
- Continuation/CIP application
- US “rules”
- Do not need to resubmit
priority document
- PCT filed 15 Sept 2012
- Pre-AIA oath
- Submit priority document
- PCT filed 15 Sept 2012, CON
- Post-AIA oath
PCT application
371
national entry
Continuation
“bypass”
Restriction
Requirement
2m +4m
Non-final
Office Action(s)
3m +3m
35 USC 371
- PCT national entry (30m)
- Same PCT application No.
- PCT “rules”
35 U.S.C. 365(c)
- Continuation/CIP application
- US “rules”
- Do not need to resubmit
priority document
- PCT filed 15 Sept 2012
- Pre-AIA oath
- Lack of unity
- Submit priority document
- PCT filed 15 Sept 2012, CON
- Post-AIA oath
- US “restriction” practice
PCT application
- Paperwork
371
national entry
Continuation
“bypass”
Restriction
Requirement
2m +4m
Non-final
Office Action(s)
3m +3m
Provisional
Regular “utility”
application
Restriction
Requirement
2m +4m
Can amend claims
File IDS
EP priority
Non-final
Office Action(s)
3m +3m
Final
Office Action
3m +3m
NOA
Issued
patent
Final Office Action
3m +3m
No reply
File CON
Appeal
RCE
File response/Amendment
Allowance
Abandoned
“Stops the clock”
No reply
File CON
Abandoned
Advisory Abandoned
Action
RCE
Appeal
File response/
Amendment
Final Office Action
3m +3m
A shortened statutory period for reply to this final action is set to expire
THREE MONTHS from the mailing date of this action.
In the event a first reply is filed within TWO MONTHS of the mailing date of
this final action and the advisory action is not mailed until after the end of
the THREE-MONTH shortened statutory period, then the shortened statutory
period will expire on the date the advisory action is mailed, and any extension
fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
the advisory action.
In no event, however, will the statutory period for reply expire later than SIX
MONTHS from the mailing date of this final action.
Final Office Action
3m +3m
3 months
File response/Amendment
Advisory
Action
RCE
Appeal
File response/
Amendment
6 months
(pay 3 m)
Final Office Action
1 month
(less than 2m)
Advisory
Action
2.5 m
(before 3m)
3m +3m
3 months
File response/Amendment
Advisory
Action
6 months
(pay 3 m)
RCE
Appeal
File response/
Amendment
6 months
(pay 3 m)
Final Office Action
1 month
(Less than 2m)
1 month
3m +3m
3 months
Advisory
Action
2.5 m
File response/Amendment
Advisory
Action
5m
(more than 3m)
6 months
(pay 1 m)
Large entity
1m: 200 USD
3m: 1400 USD
Advisory
Action
6 months
(pay 3 m)
RCE
Appeal
File response/
Amendment
6 months
(pay 3 m)
Provisional
Regular “utility”
application
EP priority
Restriction
Requirement
2m +4m
Non-final
Office Action(s)
3m +3m
Final
Office Action
3m +3m
NOA
Certificate of Correction
Reissue
(Broadening) Reissue
Ex parte Reexamination
Supplemental re-examination
Post-grant review
Inter parte review
Issued
patent
Post-grant proceedings- patentee
Certificate of
Correction
Who can file
When to file
Why file?
Patentee
Anytime
Correct mistakes of a clerical/typographical error
Correct inventorship (parties in agreement)
No new matter, no re-examination required
Reissue
Patentee
Anytime
before expiry
Correct “error”
Priority claim, inventorship
Narrow claims (EP limitation proceedings)
(Broadening)
Reissue
Patentee
2y from grant
until expiry
Broaden/change claim scope
Ex parte
Reexamination
Anyone
(Patentee)
Anytime
Have examiner review prior art
Supplemental
re-examination
Patentee
Anytime
Have examiner review prior art
Avoid inequitable conduct
Post-grant proceedings- patentee
Certificate of
Correction
Who can file
When to file
Why file?
Patentee
Anytime
Correct mistakes of a clerical/typographical error
Correct inventorship (parties in agreement)
(100 USD)
No new matter, no re-examination required
Reissue
(large: 4000 USD)
Patentee
Anytime
before expiry
Correct “error”
Priority claim, inventorship
Narrow claims (EP limitation proceedings)
(Broadening)
Reissue
(large: 4000 USD)
Patentee
2y from grant
until expiry
Broaden/change claim scope
Ex parte
Reexamination
(large:
12,000 USD)
Anyone
(Patentee)
Anytime
Have examiner review prior art
Supplemental
re-examination
(large: 4,400
+ 12,100 USD)
Patentee
Anytime
Have examiner review prior art
Avoid inequitable conduct
Post-grant proceedings- third party
Who can
file
When to file
Why file?
Ex parte
Reexamination
Anyone
Anytime after
grant
Similar to opposition
Anonymous
Post-grant review
Anyone
9m from grant
Similar to opposition
Inter parte review
Anyone
After 9m from
grant
Similar to opposition
(more limited grounds for revocation)
Post-grant proceedings- third party
Who can
file
When to file
Why file?
Ex parte
Reexamination
(large:
12,000 USD)
Anyone
Anytime after
grant
Similar to opposition
Anonymous
Post-grant review
(12,000 +
18,000 USD)
Anyone
9m from grant
Similar to opposition
Inter parte review
(9,000 +
14,000 USD)
Anyone
After 9m from
grant
Similar to opposition
(more limited grounds for revocation)
Thank you!
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