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The times, they are a-changin’

BananaIP Counsels > Intellectual Property  > The times, they are a-changin’

The times, they are a-changin’

In a previous post, we informed our readers about the new, draft patent rules that have been proposed by the Department of Industrial Policy and Promotion (DIPP), Government of India. The preceding post by Ms. Nisha Kurian presented an analysis of the proposed rules and sought to answer the question, if all measures to accelerate the patent registration process had been explored by the DIPP through these rules.

While the proposed draft patent rules are likely to become effective from the 26th of November, 2015 in India, the USPTO also seems to have introduced some new rules that have become effective since yesterday (5th November, 2015). The USPTO had published a notice in the Federal Register earlier in October this year titled, Change in Practice Regarding Correction of Foreign Priority Claims.

The America Invents Act (AIA) changed a number of things relating to patent law in the US, one of the most noteworthy examples being the shift from the ‘first to invent’ to the ‘first to file’ system. Another example is that, prior to the AIA, the date of an earlier foreign filed patent application was not considered a prior art date. However, after the AIA the filing date of an earlier foreign patent application can be considered the effective prior art date for a subject matter disclosed in a U.S. patent or a U.S. patent application publication.

The USPTO thus sees it as a need that, the U.S. patent application publications reflect accurate foreign priority information so as to minimize the burden on examiners and members of the public in assessing the effective prior art date for subject matter disclosed in such U.S. patent application publications.

In order to ensure that the U.S. patent application publications reflect accurate foreign priority information, the USPTO will now require that any correction of the identification of the foreign application (by application number, country (or intellectual property authority), and filing date) in a foreign priority claim after the time period for filing a priority or benefit claim be made through a petition to accept an unintentionally delayed priority claim. Once the petition is granted in the pending application, the USPTO would publish a corrected patent application publication reflecting the accurate foreign priority claim information.

A U.S. patent application publication which claims priority to a foreign application that identifies the correct foreign application number, country (or intellectual property authority), and date of filing will help ensure the proper examination of patent applications being examined under the first inventor to file provisions of the AIA. Further, identification of the correct foreign priority information on U.S. patent application publications is likely to minimize the burden on examiners and members of the public, especially in obtaining a copy of the correct foreign priority document in the event that a copy is not available in the application file of the reference.

Although the rule intends to ease the burden of examiners and applicants looking for relevant prior art, it makes it more difficult for an applicant to correct errors in foreign priority claims. Starting November 5th, 2015, the correction of a foreign priority claim made outside of the one-year deadline will require a petition to accept an unintentionally delayed benefit claim. Any corrections to the foreign application number in a foreign priority claim that were previously accepted are not affected by this change in practice.

The USPTO has also issued a final rule notice with respect to Changes to Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices. The notice was published on 27th October, 2015, in the U.S Federal Register. The rule seeks to allow the USPTO to share pending-unpublished US applications with foreign patent offices.

According to the notice, the electronic sharing of information and documents between intellectual property (IP) offices is crucial for increasing the efficiency and quality of patent examination worldwide. In support of electronic file sharing, the United States Patent and Trademark Office (‘Office’ for brevity) would be revising its rules of practice to include a specific provision by which an applicant can authorize the Office to give a foreign IP office, that is a party to an agreement, the Office access to all or part of the file contents of an unpublished U.S. patent application. This would be done in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign IP office.

The Office is also said to be revising the rules of practice to indicate that there is no fee for providing a foreign IP office with an electronic copy of an application-as-filed or an electronic copy of file contents pursuant to a bilateral or multilateral agreement.

Finally, in addition to the final rule changes, the Office is also contemplating the revision of the application data sheet (ADS) form, PTO/AIA/14 (‘‘the revised ADS form’’). In contrast to the previous version of the ADS form, the revised ADS form will include an ‘‘opt-out’’ check box for each access authorization and not an ‘‘opt-in’’ check box. Therefore, when an ‘‘opt-out’’ check box for a specific authorization is selected, the Office would not provide access to the contents of the application identified in the authorization.

The rules will become effective from the 30th of November, 2015.

Authored by Gaurav Mishra.

Contributed by Portfolio team of BananaIP, India

For further information on Patent filing and filing strategies, write to [email protected]

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