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Issue 7| January 9, 2002
New Rules for U.S. Patent Practice


Effective December 28, 2001, the U.S. Patent and Trademark Office has changed its Rules of Practice in Patent Cases with regard to claiming the benefit of prior-filed applications. The changes were made in order to implement provisions of the American Inventors Protection Act of 1999 for eighteen-month publication of patent applications. Here is a brief analysis of these changes announced in the Federal Register Notice of December 28, 2001.

In summary, the Patent Office is

  1. revising the time period for claiming the benefit of a prior-filed application in an application filed under the Patent Cooperation Treaty,
  2. revising the time period for filing an English language translation of a non-English language provisional application, and
  3. making other technical corrections related to eighteen-month publication.
The first change clarifies 37 C.F.R. Sections 1.78(a)(2)(ii) and (5)(ii) so that priority claims in international applications under the Patent Cooperation Treaty that have entered the national stage in the U.S. must be submitted within the later of 4 months from the date on which the national stage commenced or 16 months from the filing date of the prior application. As with other nonprovisional applications (except for continued prosecution and design applications), these "4/16 deadlines" for making U.S. and foreign priority claims are not extendable and failure to claim the benefit is considered a waiver. However, a petition may still be filed to accept an "unintentionally" delayed claim for the benefit of a prior-filed application under 35 U.S.C. Sections 119, 120, 121, or 365 may be filed.

For continued prosecution applications, the request under 37 C.F.R. Sec. 1.53(d) is now the specific reference to the prior-filed application. That is to say, a continued prosecution application does not require any additional identification of, or reference to, the prior application other than the identification of the prior application in the request.

The second change applies to 37 C.F.R. Section 1.78(a)(5)(iv) regarding references to prior provisional applications. An English-language translation of a provisional application need not be filed within the 4/16 months deadline in order to perfect the claim for benefit. Rather, the Patent Office send a notice to file the such a translation when it was not previously filed in the provisional application or the later-filed nonprovisional application. In a pending nonprovisional application, failure to timely reply to such a notice will result in abandonment of the application.

Finally, with regard to the technical corrections, 37 C.F.R. Section 1.311 regarding Notice of Allowance has been amended to recite that, in addition to the issue fee, the sum specified in the notice of allowance may also include the publication fee, in which case the issue fee and publication fee must both be paid within the non-extendable three-month deadline from the date of mailing of the notice of allowance.

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this e-mail is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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