By Dennis Crouch
NOTE: See final paragraph for Nov. 5 pending rule change for correcting foreign priority claims.
The USPTO has published a new Final Rule notice titled: Changes To Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices. This is a follow-up to the proposed rules from 2014. As its name suggests, the proposal would allow the USPTO to share otherwise secret information regarding pending-unpublished US applications with foreign patent offices, such as the EPO. A major caveat here though is that the sharing of information requires applicant authorization. The change is part of the general major shift toward worksharing and international procedural harmonization. The following comes from the notice:
[The USPTO] is revising its rules of practice to include a specific provision by which an applicant can authorize the Office … all or part of the file contents of an unpublished U.S. patent application in order to satisfy a requirement for information imposed on a counterpart application filed with the foreign IP office. … The final rule changes consolidate the specific provisions of the regulations by which applicants give the Office authority to provide a foreign IP office with access to an application in order to satisfy a requirement for information of the foreign IP office. The Office is also revising the rules of practice to indicate 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. Additionally, along with changes to the application data sheet (ADS) form [to facilitate authorization], the final rule changes simplify the process for how applicants provide the Office with the required authorization, thereby reducing the resources applicants must expend to comply with these foreign IP office requirements, and enhance the quality of patent examination.
The change has a November 30, 2015 effective date.
In this process, the PTO is setting up a major roadblock to more complete worksharing by only sharing documents when authorized by applicants. One comment to the proposed rules focused on this issue:
Comment 4: One comment asserted that the proposed rule change is based upon the assumption that a specific authority is required from an applicant in order to send out pre-publication information to a foreign IP office where applicant has filed an application and that the Office should reconsider this assumption. The comment further asserted that once an applicant files an application in a foreign IP office, applicant inherently agrees to the rules and requirements of that foreign IP office. Accordingly, the comment suggests that the Office does not need a separate authorization to either send a priority document or pre-publication information to that foreign IP office. Therefore, the comment requested that the Office reconsider the need for any authorization for access in this circumstance. The comment stated that if the Office adopts this position, then the entire authorization section from the ADS can be removed and a filing of an application in a foreign IP office by an applicant can serve as authorization for access to send priority documents and/or pre-publication information to that foreign IP office(s).
Response: After due consideration of the comment, the Office has decided to not adopt the position expressed in the comment. The written authority requirement is in accord with 35 U.S.C. 122(a), and consistent with current Office policy, practice, and procedure regarding access. Therefore, the Office is retaining the requirement for written authority from an applicant for access to the file contents of an unpublished application.
Here, the statute properly quoted by the Patent office does require that these non-published “applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.”
The USPTO has also announced “Change in Practice Regarding Correction of Foreign Priority Claims.” The changes – becoming effective on November 5, 2015, will make it more difficult to correct errors in foreign priority claims. Starting this week, a correction of a foreign priority claim made outside of the one-year deadline will require a petition to accept an unintentionally delayed benefit claim.
The Leahy-Smith America Invents Act (AIA) … provides that the filing date of an earlier foreign patent application may now be the effective prior art date for subject matter disclosed in a U.S. patent or a U.S. patent application publication. Therefore, U.S. patent application publications should reflect accurate foreign priority information 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. The USPTO will thus 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 via a petition to accept an unintentionally delayed priority claim, and once the petition is granted in a pending application, will now publish a corrected patent application publication reflecting the accurate foreign priority claim information.
So, if you have a correction to make regarding foreign priority, it is probably best to get it done in the next two days. In general, the “unintentional” standard is fairly easy to overcome, but does require sworn statements that may later open-the-door to charges of inequitable conduct if it turns out that the error was known for some time. I’ll also note here that the parallel correction of US priority already requires the petition.