Section-by-Section Analysis

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## SECTION 1. SHORT TITLE. This Act may be cited as the "Patent Law Treaty Implementation Act."

## SEC. 2. PROVISIONS TO IMPLEMENT THE PATENT LAW TREATY.

This section amends the relevant provisions of title 35, United States
Code, to comply with the requirements of the Patent Law Treaty (PLT).
The amended provisions are divided into three subsections in section 2
of the bill: (a) those provisions of title 35, United States Code,
relevant to patent application filing date; (b) those provisions of
title 35, United States Code, relevant to relief in respect of time
limits and reinstatement of rights; and (c) those provisions of title
35, United States Code, relevant to restoration of the priority right.
Each subsection is addressed separately.

\(a\) Application Filing Date

This subsection amends sections 111(a)(3) and (4) and sections 111(b)(3)
and (4) of title 35, United States Code, and adds a new section 111(c)
to title 35, United States Code. The amendments to sections 111(a)(3)
and (4) and sections 111(b)(3) and (4) eliminate claims as a filing date
requirement for applications filed under section 111(a), more closely
align the corresponding provisions of sections 111(a) and 111(b) and
more clearly distinguish the filing date requirements in those sections
from the more substantive requirements of sections 112 and 113 of title
35, United States Code.

Section 111(a)(3) is amended by changing the heading to include the
phrase "AND CLAIMS" and by providing that not only the fee and oath, but
also one or more claims, may be submitted after the filing date of the
application, within such period and under such conditions, including the
payment of a surcharge, as may be prescribed by the Director of the
United States Patent and Trademark Office. Additionally, the section is
amended to provide that upon failure to submit the fee, oath, and one or
more claims within such prescribed period, the application shall be
regarded as abandoned.

Section 111(a)(4) is amended by changing the heading to "FILING DATE"
and by deleting the first sentence and amending the second sentence to
provide that the filing date of an application shall be the date on
which a description is received in the Patent and Trademark Office. The
provision in Article 5(1)(b) of the PLT is noteworthy in the context of
a filing date requirement as it permits a Contracting Party to accept a
drawing as a description. This ability is considered to be consistent
with current decisional law in the United States and no change in that
regard is intended. *See* [Vas-Cath Inc. v. Mahurkar]{.underline}, 935
F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991).

Section 111(b)(3) is amended to provide that the application must be
accompanied by the fee required by law, that the fee may be submitted
after the filing date of the application, within such period and under
such conditions, including the payment of a surcharge, as may be
prescribed by the Director and that upon failure to submit the fee
within such prescribed period, the application shall be regarded as
abandoned. The section is also amended to delete the last clause; with
the subject matter therein addressed in new section 27, discussed below.

Section 111(b)(4) is amended by providing that the filing date of a
provisional application shall be the date on which a description is
received in the Patent and Trademark Office.

Section 111 is further amended by providing a new subsection (c) that
provides that a reference made upon the filing of an application to a
previously filed application shall, as prescribed by the Director,
constitute the description of the subsequent application for purposes of
a filing date. New subsection (c) further explains that a copy of the
specification and any drawings of the previously filed application may
be submitted after the filing date of the application, within such
period and under such conditions as may be prescribed by the Director,
and that upon failure to submit the copy of the specification and any
drawings of the previously filed application within such prescribed
period, the application shall be regarded as abandoned.

\(b\) Relief in Respect of Time Limits and Reinstatement of Rights

This subsection amends section 21(b) of title 35, United States Code,
and adds a new section 27 to Chapter 2 of title 35, United States Code.

Section 21(b) of title 35, United States Code, is amended to provide
that if the day, or the last day, for taking any action or paying any
fee in the United States Patent and Trademark Office, or of any of the
periods fixed in sections 102, 119, 122, 135, 156, 172, and 251 of this
title, falls on Saturday, Sunday, or a federal holiday within the
District of Columbia, the action may be taken, or fee paid on, and the
period shall be extended to, the next succeeding secular or business
day. As amended, the carry-over provision of section 21(b) will apply to
all of the filing period requirements in those enumerated sections of
title 35, thereby codifying and extending [Ex parte Olah]{.underline},
131 USPQ 41 (Bd. App. 1960). These amendments are consistent with the
PLT requirements that operate to avoid loss of rights due to the
unavailability of relief in respect of time limits.

Chapter 2 of title 35, United States Code, is amended by providing a new
section 27, with the heading "Revival of applications; reinstatement of
reexamination proceedings," which provides that the Director may
establish procedures to revive an unintentionally abandoned application
for patent, accept an unintentionally delayed payment of the fee for
issuing each patent, or accept an unintentionally delayed response by
the patent owner in a reexamination proceeding, upon petition by the
applicant for patent or patent owner. This new section is intended to
provide a basis for the establishment of a consistent unintentional
standard for relief, referred to in the discussion of subsequent
amendments and conforming amendments.

\(c\) Restoration of Priority Right

This subsection amends sections 119(a), 119(e)(1), and 365(b), as well
as 102(b) and 102(d) of title 35, United States Code.

Section 119(a) is amended by providing a consistent twelve-month time
period throughout and vis-à-vis the amendments made in sections 102(a)
and 102(d), discussed below. Additionally, section 119(a) is amended by
providing that the Director may prescribe regulations, including the
requirement for payment of a surcharge, under which the twelve-month
periods set forth in this subsection may be extended by an additional
two months if the delay in filing the application in this country within
the twelve-month period was unintentional.

Section 119(e)(1) is likewise amended to provide that the Director may
prescribe regulations, including the requirement for payment of a
surcharge, under which the twelve-month period set forth in this
subsection may be extended by an additional two months if the delay in
filing the application under section 111(a) within the twelve-month

period was unintentional.

Section 365(b) is similarly amended to provide that the Director may
establish procedures, including the payment of a surcharge, to accept an
unintentionally delayed claim for priority based on the treaty and the
Regulations, and to accept a priority claim where such priority claim
pertains to an application that was not filed within the priority period
specified in the treaty and Regulations but was filed within the period
specified under section 119(a).

Section 102(b) of title 35 is amended to conform the one-year period to
a twelve-month period and to accommodate delayed filings under amended
sections 119(a) - (d). The accommodation for delayed filings is
necessary to avoid the time bar that would otherwise operate when an
application is filed in the United States more than twelve months after
the filing of the priority application and, for example, a reference
arises in that interval between the filing of the priority application
and the delayed filing date in the United States. The same rationale
applies to the amendment made to section 102(d), addressed below. As
such, amended section 102(b) provides a basis for a lack of novelty if
the invention was patented or described in a printed publication in this
or a foreign country or in public use or on sale in this country, before
the earlier of (1) twelve months prior to the date of the application
for patent in the United States, or (2) the filing date of the earliest
priority application to which the application is entitled and claims
priority under sections 119(a) - (d). Delayed filings under section
119(e) are accommodated in section 102(b)(1), as amended.

Section 102(d) of title 35 is also amended to accommodate delayed
filings under amended sections 119(a) - (d). To that end, amended
section 102(d) provides a basis for a loss of right if the invention was
first patented or caused to be patented, or was the subject of an
inventor's certificate, by the applicant or his legal representatives or
assigns in a foreign country prior to the date of the application for
patent in this country or on an application for patent or inventor's
certificate filed before the earlier of (1) twelve months before the
filing of the application in the United States or (2) the filing date of
the earliest priority application to which the application is entitled
and claims priority under sections 119(a) - (d).

## SEC. 3. CONFORMING AMENDMENTS.

This section makes conforming amendments to various provisions of title
35, United States Code.

Section 171 of title 35 is amended, in light of the changes to section
111, discussed above, to provide that the filing date of an application
for design patent shall be the date on which the specification as
prescribed by section 112 of this title and any required drawings are
filed.

Section 41(a)(7) of title 35, United States Code, is amended by deleting
at the end thereof the following: "unless the petition is filed under
section 133 or 151 of this title, in which case the fee shall be \$110".

Section 41(a)(7) of title 35, United States Code, as that section is to
be administered pursuant to section 801(a) of Division B of Public Law
108-447, is amended by deleting at the end thereof the following: ",
unless the petition is filed under section 133 or 151 of this title, in
which case the fee shall be \$500".

Section 41(a)(8) of title 35 is amended to delete the reference to "in
an application" to apply the extension of time provisions to proceedings
in patents, as well as in applications.

Section 41(c)(1) of title 35, United States Code, is amended to conform
procedures for the late payment of maintenance fees to those provided
for revivals of applications and reinstatement of reexamination
proceedings by newly established section 27 of title 35, as discussed
above. To that end, the twenty-four month time limit for unintentional
delays has been deleted and the provision is limited to relief for
unintentional delays, consistent with the unintentional standard set in
newly established section 27 of title 35.

Section 133 of title 35, United States Code, is amended to provide for a
one-month time period, as opposed to a thirty-day time period,
consistent with other amendments to set affected time periods in terms
of months, and to conform the standard of relief for delays to the
unintentional standard set in newly established section 27 of title 35.

Section 151 of title 35, United States Code, is amended to provide for a
six-month period for the payment of the issue fee, which may be
shortened as fixed by the Director to not less than two months.
Additionally, the second paragraph is amended by changing "shall" to
"may," and the third and fourth paragraphs are deleted. The lapsed
patent practice in the now deleted, last two paragraphs of section 151
would not have been consistent with PLT Article 10(1).

Section 364(b) of title 35, United States Code, is amended to provide
that an applicant\'s failure to act within prescribed time limits in
connection with requirements pertaining to an international application
may be excused as provided in the Patent Cooperation Treaty and the
Regulations. The reference to an unavoidable standard for relief has
also been deleted.

Section 371(d) of title 35, United States Code, is amended to delete the
reference to an unavoidable standard for relief.

## SECTION 4. EFFECTIVE DATE

## The amendments made by the Act shall be effective on the date that is one year after the date of enactment of the Act, and shall apply to all patents, whenever granted, and to all applications for patent pending on or filed after the date that is one year after the date of enactment of this Act. The amendments made by this Act, however, shall have no effect with respect to any patent that is the subject of litigation in an action commenced before the date that is one year after the date of enactment of this Act.