IP Alerts

IP Alert
IP Alert: U.S. Patent Law Changes Taking Effect as of December 18, 2013

January 2, 2014

A number of changes went into effect on December 18, 2013, relating to the Patent Law Treaty and Patent Law Treaties Implementation Act 2013 (collectively the “PLT”): 

  • Nonprovisional patent applications (other than design applications) will be accorded a filing date even if filed without claims and/or drawings, or if filed with a reference to a previously filed application. Any such application will be deemed incomplete and will not be assigned to an examiner until amended to include a specification and at least one claim and any necessary drawings. As before, new drawings and claims cannot introduce new matter. The filing requirements for design applications remain unchanged.
    • If an application is filed by reference to a previously filed application, the U.S. Patent and Trademark Office (USPTO) will issue a notice giving the applicant a time period within which to submit an English language copy of the specification and drawings from the previously filed application in order to avoid abandonment. 
  • A late claim to priority to a foreign application may now be made in a U.S. application within a 2-month grace period, provided the failure to file the application within the 12-month priority period was unintentional. Thus, applicants who inadvertently miss the filing deadline now have 14 months to make such claims in utility applications and 8 months to make such claims in design applications, provided a petition to restore the right of priority is filed by the applicant and granted by the USPTO.
  • Many USPTO actions issued on or after December 18, 2013, now have a two-month minimum response deadline. For example, although it was routine for restriction requirements to have a one-month deadline for response, these now have a two-month deadline. Listed below are the USPTO actions that formerly had one-month response deadlines, along with the currently imposed deadlines:
PLT Time Period Impact on
Current One-Month Response Times
Action Type Currently with One-Month Response Response Time Period After 12/18/13
Mail Restriction Requirement
(w/o rejections)
Increased to two months
Mail Notice of Informal or
Non-Responsive Amendment
Increased to two months
Mail Notice of Informal or
Non-Responsive RCE Amendment
Increased to two months
Mail Notice of Required Fees Due Increased to two months
Mail Letter Requiring Computer Readable Format (CRF) Sequence Listing Increased to two months
Mail PCT Chapter I Form 206 No change
(remains one month)
Mail Pre-Interview Communication No change
(remains one month)
Mail First Action Interview
(FAI) Office Action in FAI Pilot Program
No change
(remains one month)
Mail First Action without Interview
(FAI Pilot Program)
No change
(remains one month)
Mail Noncompliant FAI
(FAI Pilot Program)
No change
(remains one month)
Mail Pre-Interview First Office Action
(FAI Pilot Program)

No change
(remains one month)


On December 13, the USPTO leadership issued a memorandum that summarizes the above changes. For more information, please contact Fitch Even partner Edward E. Clair, or review these other Fitch Even IP Alerts regarding the PLT:

IP Alert: USPTO Announces Proposed Rules to Implement Title I of the PLTIA 

IP Alert: Patent Law Treaties Implementation Act of 2012 Signed into Law


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