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Hot Off the Press: Updates to USPTO Practice

By Stephen B. Schott sbschott@schottpc.com
imgres_med_hrLike ebony and ivory living together side by side on my piano keyboard, the US Patent and Trademark Office’s goal is harmony. The PTO’s current harmonic goals bring it into compliance with the Patent Law Treaties Implementation Act of 2012. That act became law on December 18, 2013 and further aligns United States patent practice with that of other countries.

The USPTO issued a memo summarizing the changes for its examiners. The highlights for applicants include:

(1)   Patent applications no longer require a claim at the time of filing. Failure to file an application with a claim will result in the USPTO issuing a notice requiring a claim to be filed at a date specified in the notice.

(2)   Many office actions that previously set one month to respond, including those for restriction requirements and non-compliance, now allow for two months to respond. This is especially welcome for firms that work with international clients where correspondence and translations to and from the client may be delayed for weeks.

(3)   An application may now validly claim priority to, or the benefit of, a foreign or provisional application filed up to fourteen months earlier (eight months for designs to validly claim foreign priority). Any application that claims priority to a foreign application or the benefit of a provisional application filed more than twelve months earlier (except as a continuing application of another non provisional application) must include a petition to restore the right of priority to the foreign application.

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Thanks to Donald Zuhn at McDonnell Boehnen Hulbert & Berghoff LLP for bringing the memo to my attention in his blog.

If you have questions, contact me.

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