IP Update, Vol. 11, No. 5

by Marc S. Weiner and Aslan Ettehadieh | BSKB

Editor: Marc S. Weiner, Esq.

Final Rule on Patent Law Treaty Implementation Released by USPTO

On October 21, 2013, the United States Patent and Trademark Office (USPTO) published its final rule regarding the changes to the agency’s rules of patent practice consistent with implementation of the Patent Law Treaty (PLT).

The notable changes in the PLT include simplifying and minimizing the patent application requirements to obtain a filing date; the restoration of patent rights via the revival of abandoned applications and acceptance of delayed maintenance fee payments; and the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application.

This final rule also revises the patent term adjustment provisions to provide for a reduction of any patent term adjustment if an application is not in condition for examination within eight months of its filing date or date of commencement of national stage in an international application, and contains miscellaneous changes pertaining to the supplemental examination, inventor’s oath or declaration, and first inventor to file provisions of the Leahy-Smith America Invents Act (AIA).

For more information on the USPTO’s issuance of the Final Rule on Patent Law Treaty Implementation, visit this link.

Summary provided by Aslan Ettehadieh.

USPTO Fee Changes (Decrease in Issue Fees and Publication Fees)

On January 1, 2014, certain USPTO fees are set to change.  For example, the United States Patent and Trademark Office (USPTO) is set to decrease its issue fees and publication fees for utility applications.  More specifically, utility issue fees will be reduced from $1,780/$890/$445 to $960/$480/$240 (Large Entity/Small Entity/Micro Entity) and publication fees for early, voluntary, or normal publication will be reduced from $300 to $0 (hence, eliminating the publication fees).

Therefore, for any patent applicants receiving a Notice of Allowance mailed after October 1, 2013, the upcoming USPTO fee reductions should be taken into consideration.  However, before taking advantage of such decreases in utility issue fees and publication fees, there may be risks to be taken into consideration.  For example, the delay in the issuance of the patent could potentially result in reduced damages from an infringer.

Unless otherwise instructed, BSKB will wait until after January 1, 2014 to pay issue fees for Notice of Allowances in applications mailed after October 1, 2013.

For more information on the USPTO’s Fee Changes, visit this link.

Summary provided by Aslan Ettehadieh.

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