Masterclass: US Patent Formalities Updatecms.formalitiesofficers.nl/.../US_Patent_Formalities_Update.pdf · April 2015 Masterclass: ... Certificate of Correction Reissue (Broadening)

Tamara Elmore

April 2015

Masterclass:

US Patent Formalities Update

• Patent law updates

• Formalities

• Questions and discussion

28/4/15 | 2

28/4/15 | 3

Regular “utility”application

Provisional

RestrictionRequirement

2m +4m

EP priority

FinalOffice Action

3m +3m

Non-finalOffice Action(s)

3m +3m

NOA Issued patent

AdvisoryAction

AbandonedAllowance

RCEAppeal

PCT application

371national entry

Continuation“bypass”

Certificate of CorrectionReissue(Broadening) ReissueEx parte ReexaminationSupplemental re-examinationPost-grant reviewInter parte review

Maze of formalities

• 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)

Changes to USC (“articles”) and CFR (“rules”)

28/4/15 | 4

• 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

PTA revisions (May 2014, January 2015)

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

• 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

Who can file an application as applicant?

28/4/15 | 7

• 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)

Inventor oath

28/4/15 | 8

• 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

Which oath to file?

28/4/15 | 9

• 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

Patent Law Treaties Implementation Act (PLTIA) (December 18, 2013)

28/4/15 | 10

• 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 filingdate 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

Patent Law Treaties Implementation Act (PLTIA) (December 18, 2013)

28/4/15 | 11

• 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

Restoration of rights

28/4/15 | 12

• 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

Priority- Paris convention priority: external priority- Obtain early filing date (prior art)- Delay costs / gain time

EP priority


Provisional

- Patent term- EP: 20y from “date of filing”- “date of filing” does not include priority filing

EP priority


Provisional

- Patent term

- EP: 20y from “date of filing”

- “date of filing” does not include priority filing

- US (pre-GATT): 17y from grant

- 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

- US (post-GATT): 20y from filing date of earliest US application

(US utility or PCT)EP priority


Provisional

- Patent term

EP applicant files EP today, PCT in 1y (2016)20y US patent term is 2036

US applicant files US utility today, PCT in 1y20y US patent term is 2035

- US: provisional not taken into account for patent term

US applicant files US provisional on today, PCT in 1y20y US patent term is 2036

EP priority


ProvisionalUS 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

EP priority


Provisional


2m +4m

EP priority

FinalOffice Action

3m +3m


3m +3m

NOA Issued patent

DivisionalContinuationContinuation-in-part

PCT application

Corrections, dataPre-GATT patentsPost-GATT: loose patent term

Normally after RR


2m +4m


3m +3m

PCT application

371national entry


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”


2m +4m


3m +3m

PCT application

371national entry



- Do not need to resubmit priority document

35 U.S.C. 365(c)- Continuation/CIP application- US “rules”

- Submit priority document


2m +4m


3m +3m

PCT application

371national entry




- PCT filed 15 Sept 2012- Pre-AIA oath


- Submit priority document- PCT filed 15 Sept 2012, CON

- Post-AIA oath


2m +4m


3m +3m

PCT application

371national entry




- PCT filed 15 Sept 2012- Pre-AIA oath

- Lack of unity

- Paperwork


- Submit priority document- PCT filed 15 Sept 2012, CON

- Post-AIA oath

- US “restriction” practice


Provisional


2m +4m

Can amend claimsFile IDS

EP priority

FinalOffice Action

3m +3m


3m +3m

NOA Issued patent

AdvisoryAction

Final Office Action3m +3m

Abandoned

AppealRCE

Abandoned

No replyFile CON

“Stops the clock”

Allowance

File response/Amendment

No replyFile CON

Abandoned

RCEAppeal


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.


AdvisoryAction



RCEAppeal


3 months

6 months(pay 3 m)

AdvisoryAction



RCEAppeal


3 months

6 months(pay 3 m)

1 month(less than 2m)

6 months(pay 3 m)

AdvisoryAction2.5 m

(before 3m)

AdvisoryAction



RCEAppeal


3 months

6 months(pay 3 m)

1 month

6 months(pay 3 m)

AdvisoryAction2.5 m

1 month(Less than 2m)

6 months(pay 1 m)

AdvisoryAction

5 m(more than 3m)

Large entity1m: 200 USD3m: 1400 USD


Provisional


2m +4m

EP priority

FinalOffice Action

3m +3m


3m +3m

NOA Issued patent

Certificate of CorrectionReissue(Broadening) ReissueEx parte ReexaminationSupplemental re-examinationPost-grant reviewInter parte review

Who can file When to file Why file?

Certificate of Correction

Patentee Anytime Correct mistakes of a clerical/typographical errorCorrect inventorship (parties in agreement)

No new matter, no re-examination required

Reissue Patentee Anytime before expiry

Correct “error”Priority claim, inventorshipNarrow claims (EP limitation proceedings)

(Broadening) Reissue

Patentee 2y from grant until expiry

Broaden/change claim scope

Ex parteReexamination

Anyone (Patentee)

Anytime Have examiner review prior art

Supplementalre-examination

Patentee Anytime Have examiner review prior artAvoid inequitable conduct

Post-grant proceedings- patentee

Who can file When to file Why file?

Certificate of Correction

(100 USD)

Patentee Anytime Correct mistakes of a clerical/typographical errorCorrect inventorship (parties in agreement)

No new matter, no re-examination required

Reissue(large: 4000 USD)

Patentee Anytime before expiry

Correct “error”Priority claim, inventorshipNarrow claims (EP limitation proceedings)

(Broadening) Reissue(large: 4000 USD)

Patentee 2y from grant until expiry

Broaden/change claim scope

Ex parteReexamination(large: 12,000 USD)

Anyone (Patentee)

Anytime Have examiner review prior art

Supplementalre-examination(large: 4,400 + 12,100 USD)

Patentee Anytime Have examiner review prior artAvoid inequitable conduct

Post-grant proceedings- patentee

Who can file

When to file Why file?

Ex parteReexamination

Anyone Anytime after grant

Similar to oppositionAnonymous

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 parteReexamination(large:12,000 USD)

Anyone Anytime after grant

Similar to oppositionAnonymous

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)

Post-grant proceedings- third party

Thank you!

28/4/15 | 35

Documents

Masterclass: US Patent Formalities Updatecms.formalitiesofficers.nl/.../US_Patent_Formalities_Update.pdf · April 2015 Masterclass: ... Certificate of Correction Reissue (Broadening)