Recent Changes by PLT Implementation Act

Stanley KangLowe Hauptman & Ham LLP

Suite 1400 2318 Mill Road

Alexandria VA 22314 Tel. (703) 684-1111 Fax. (703) 518-5499

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©2014—Lowe Hauptman & Ham , LLP - All Rights Reserved

2/19

1. Procedures for Filing Patent Applications

2. Restoration of Right of Priority

3. Time Period for Responding to Office Actions

Contents

Effective Dates• Filing Guidelines for Non-Provisional Applications

filed on or after December 18, 2013• Restoration of Priority effective December 18,

2013• Response Time for Office Actions

– Office Action posted on or after December 13, 2013– Office Actions issued on or after December 18, 2013

3/19

Procedures for Filing Applications• A non-provisional patent application may be

filed without claims or drawings or by reference to a previously filed application– Exception: Does not apply to design applications

• The non-provisional application will NOT be placed on an Examiner’s docket until the application includes:– A specification– At least one claim

4/19

What is the Filing Date?

• Filing date of a provisional or non-provisional application is the date on which the USPTO receives a specification with or without claims

• If a non-provisional is filed without a claim, Office of Patent Application Processing (OPAP) issues a notice to Applicant providing a time period to submit at least one claim to avoid abandonment– Likely at least two-months

5/19

Drawing Requirement

• No drawing is required to receive the filing date

• A drawing can still be required during prosecution– Guidelines for including claimed subject matter in

drawings has not changed– Cannot enter new matter

6/19

No Change to Design Applications

• The Patent Law Treaty Implementation Act does not change the requirements for filing a design application.

7/19

Reference Filing

• A reference filing is a filing of a non-provisional application by referencing a previously filed application– Reference to previous application in Application

Data Sheet (ADS)– Indicate that the specification and drawings are

replaced by the previous application– Previous application can be Non-provisional,

Provisional, PCT, Non-US application

8/19

Reference Filing

• If previous application is not in English– OPAP will issue notice to file an English language

copy

• Will NOT be placed on Examiner’s docket until at least one claim is filed– Delayed Examination

9/19

Strategies

• File application without claims to get the filing date, but wait to determine what scope should be covered– Experiments– Market testing– Prior art search

• Still recommend filing drawings with first filing to avoid new matter rejections

• Reference filing can be used to quickly file a last minute U.S. application

10/19

Restoration of Priority Rights

• Applicant may claim priority to a non-US application or a provisional application filed up to fourteen (14) months earlier– Two month increase in time– Incorporation by reference would still be new

matter

• Petition to restore the priority must be granted by Office of Petitions– No guidance regarding level of proof needed

11/19

Petition To Be Filed

• Petition to restore right of priority to a foreign application– 37 C.F.R. 1.55(c)

• Petition to restore benefit of priority to a provisional application– 37 C.F.R. 1.78(b)

12/19

Petition to Restore Rights

• Petition must be filed within two months of expiration of time period to file non-provisional application– 14 months for provisional or non-US applications– 8 months for non-US design applications

• Petition must indicate failure to file timely was unintentional

13/19

Strategies

• Still strongly recommend claiming priority when the non-provisional (or provisional) application is originally filed

• Safety net in case of unintentional error

14/19

Time Period for Responding to Office Actions

• Time Period for Responding Must be At least two (2) months– Exceptions

• Limited number of pilot programs (First Action Interview)

• Effect on Accelerated Examination– Response Period at least 2 months– Still removed from Accelerated Examination if a

petition for extension of time is filed

• Several PTO forms are slightly altered15/19

What Office Actions are Affected?

16/19

Strategies

• Notable Office Actions– Restrictions/Election of Species– Notice of Non-Responsive– Notice of Non-Compliant

• Extra time to consider RR/ER

17/19

After Final Consideration Pilot 2.0 Program

Stanley KangLowe Hauptman & Ham LLP

Suite 1400 2318 Mill Road

Alexandria VA 22314 Tel. (703) 684-1111 Fax. (703) 518-5499

www.ipfirm.com

©2014—Lowe Hauptman & Ham , LLP - All Rights Reserved

23/04/121919

After Final Consideration Pilot 2.0 (AFCP 2.0)

Gives More Opportunity to Amend After Final -> for reducing cases along without the need to file an RCE when the

case was very near to completion

Requirements 1. Request(Form PTO/SB/434) to participate in AFCP 2.0 with submitting a Response after final rejection 2. The Response must include an amendment to at least one independent claim

23/04/122020

After Final Consideration Pilot 2.0 (AFCP 2.0)

Procedures 1. The examiner will be allotted a set amount of time (3 Hours for patent application) under AFCP 2.0 to consider the response. 2. The examiner will request an interview with the applicant to discuss a response, if the response did not result in a determination that all pending claims are in condition for allowance.

No additional fee required to request consideration of an amendment after final rejection under AFCP 2.0 1. Request to participate in AFCP 2.0

23/04/122121

After Final Consideration Pilot 2.0 (AFCP 2.0)

Benefits - The Examiner will enter an amendment if the amendment can

be considered within 3 Hours whether it can be allowed or not (in the case of utility application).

- If the amendment does not place the instant application in condition of allowance, the Examiner should conduct an interview with the Applicant to discuss about a reason of the sustained rejection. Thus, we can get a chance to learn the reason of the sustained rejection, which is very useful to decide next step.

23/04/122222

After Final Consideration Pilot 2.0 (AFCP 2.0) - Example

Under AFCP 2.0 rule, the Examiner called us to discuss

about the 101 rejection

Under AFCP 2.0 rule, the Examiner called us to discuss

about the 101 rejection

During the interview, We argued to overcome

the 101 rejection

During the interview, We argued to overcome

the 101 rejection

The Examiner persuaded by our outstanding argument, and ALLOWED the application

The Examiner persuaded by our outstanding argument, and ALLOWED the application

Without AFCP2.0 request, the Examiner would have issued an Advisory Action for sustaining the 101 Rejection

Q&A

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