The miscellaneous provisions include:

8.1 The Law Relating to Provisional Applications

The 1999 changes amended the law relating to provisional applications to allow filing of a non-provisional application claiming priority from them on the next business day if the twelve month pendency period ends on a Saturday, Sunday or Federal Holiday in the District of Columbia and to allow them to be converted into regular applications at any time during their twelve month pendency. [37]

As an alternative to filing a non-provisional application claiming priority from a provisional, the 1999 reforms added the possibility of converting the provisional application into a "regular" application even if the provisional did not contain claims. [38] These will be able to be added by way of amendment at the time of conversion of the application from a provisional one to a non-provisional one. [39] This amendment was apparently made to address concerns that had been raised as to whether U.S. provisional applications complied with the requirements of the Paris Convention for applications from which priority could be based since under the original provision it was impossible for a provisional application ever to mature into a patent. Additionally, it is also possible to convert an original non-provisional application into a provisional application. [40] Under rules made in connection with meeting the USPTO's business goals, a cover sheet, desirably in the form of an application data sheet of the type described in section 9.5 of this paper, must be included with the provisional application.[41]

The rules now make it clear that, if a provisional application is filed in a language other than English, it is not necessary to file an English translation during the pendency of the provisional. [42] However, if a claim to priority from such a provisional application is made in a subsequent non-provisional application, an English translation of the provisional must be filed within four months of the filing of the non-provisional application or sixteen months from the filing of the provisional, whichever is the later. [43]

8.2 Claiming Priority from Plant Variety Applications

The United States is one of a few countries where it is possible to obtain provision for new plants by way of a regular utility patent. In recognition of the fact that in many other countries protection for new types of plants is possible by way of plant variety certificates, the law has been amended to provide that convention priority can be claimed from a plant variety right application filed abroad. [44]

8.3. Provision is made for the filing of patent applications and publication of patent documents in an electronic medium

Filing can now be made and applications will be published in electronic form [45]. Heretofore present filings have been normally made on paper. [46] The USPTO introduced an Electronic Filing System for general use on October 27, 2000. [47] Users having a customer number and digital certificate are now able, by use of software that is to be made available by the USPTO (which render documents in Microsoft Word or WordPerfect into an XML format), to file patent applications via the Internet. The software promised by the USPTO will assemble all application components (including figures), calculate fee information, validate the application content, compress and encrypt the contents and transmit them to the USPTO. The USPTO’s website indicates that, if the document received is unreadable and cannot be recovered, it may be possible to petition for the original date of submission as being the filing date by submission of a paper copy and the USPTO’s electronic acknowledgment receipt of the electronic filing. [48] At present there is no obligation to use the Electronic Filing System nor is there are particular advantage to applications in using the system. Whatever cost saving the USPTO enjoys by users using this system is not passed back the user in the form, for example, of a lower filing fee.

8.4 Obviousness as Applied to Patent Applications in Common Ownership - Amendment to 35 USC 103(c)

A basic premise of U.S. patent law is that, unless a statutory bar exists, an inventor is entitled to a patent for his or her invention unless what he or she has invented is the same as or obvious over an invention made by "others". The law has wrestled with what is meant by "others". In 1984 the law was amended to make it clear that prior work by coworkers for which no patent application was filed prior to the date of the later invention would not count as work by "others" so as to deny patentability to the later invention as being obvious over the earlier as long as both inventions were commonly owned or subject to assignment to the same person at the time the later invention was made. However, no change was made at that time to the provision that any patent application by "another" that resulted in the grant of a U.S. patent was citable as prior art against a patent application that was filed for an invention made after the filing of the application for the first invention. The 1999 Amendments now make it clear that, even when the inventors are different, a U.S. patent in common ownership with a later filed application at the time of making the later invention ceases to be prior art against it for obviousness purposes, thereby bringing 102(e) art into the same category as 102(f) and 102(g) art in common ownership. [49]

8.5 Prior Invention Abroad as Ground of Invalidity of Patent for Later Invention - Amendment to 35 USC 102(g)

When the Uruguay Round Amendments were passed to implement the GATT-TRIPs Agreement, the amendment made to U.S. law to recognize dates of invention based on evidence outside the United States was worded in such a way that, although one could rely on such a foreign date to support one's own claim to patentability over some act which occurred after that date, only acts occurring in the United States could be relied upon to attack someone else's patent. The 1999 Act made amendments to 35 USC 102 (g) to clean up the problem left by the earlier amendment so that, between two parties involved in an interference in the USPTO or in an action between two interfering patents, an invention made abroad in a WTO country has prior art effect against a later invention (i.e., in that case a foreign made invention date now becomes a sword as well as a shield). [50] However, it still remains the case that, in the absence of a contest between interfering patent applications or patents, only evidence of prior invention within the United States may be used to challenge the validity of another party's patent on the ground of prior invention.