Leahy-Smith America Invents Act Implementation
MESSAGE FROM JANET GONGOLA, PATENT REFORM COORDINATOR: Analysis of Comments Filed in Response to Patent Related and Administrative Trial Notices of Proposed Rulemaking
Thank you to everyone who submitted comments in response to the various recently released Notices of Proposed (NPRMs) for new patent related provisions and administrative trials during the 60-day public comment periods. The NPRMs covered inventor’s oath/declaration, preissuance submissions, third party citation of a patent owner statement, supplemental examination, the OED statute of limitations, post grant review, inter partes review, covered business method review, the definition of technological invention, derivation, the umbrella rules for the new administrative trials, and the trial practice guide. In total, we received 374 comments from a range of commenters including IP bar organizations, law firms, and individuals. To follow is a more detailed breakdown on these public comments.
In the patent area, we received 123 comments submitted for five different AIA provisions as shown in the table below along with the distribution of commenters in the pie chart. An average of 26 comments was submitted per provision. Also, as shown in the pie chart, the majority of comments were filed by individuals trailed by comments from IP organizations.
| AIA Provision | Comment Period End |
Comments Received |
|---|---|---|
| Preissuance Submissions | March 5, 2012 | 36 |
|
Citation of Patent Owner Statement in a Patent File |
March 5, 2012 | 17 |
| OED Statute of Limitations | March 5, 2012 | 5 |
| Inventor's Oath/Declaration | March 6, 2012 | 30 |
| Supplemental Examination | March 25, 2012 | 35 |
| Total | --- | 123 |
In the administrative trial area, we received 251 comments as featured in the table below along with a distribution of commenters in the pie chart. An average of 42 comments was filed per provision, excluding those for the proposed umbrella rules and trial practice guide. And the majority of those comments came from companies followed closely by individuals, as shown in the pie chart.
| AIA Provision | Comment Period End |
Comments Received |
|---|---|---|
| Inter Partes Review | April 10, 2012 | 49 |
|
Post-grant Review |
April 10, 2012 | 48 |
| Derivation | April 10, 2012 | 19 |
| Covered Business Method Review | April 10, 2012 | 19 |
| Technological Invention Definition | April 10, 2012 | 28 |
| Umbrella Rules | April 9, 2012 | 66 |
| Trial Practice Guide | April 9, 2012 | |
| Total | --- | 251 |
The agency has been, and will continue to, review each of the submitted comments to identify aspects of our proposed rules that the public supports, aspects for change, and suggested modifications. The agency will respond to the comments in the aggregate in the Notices of Final Rules to issue by August 16, 2012. Publication of the final rules for these provisions by August 16, 2012, will give a 30-day period before the rules must be in effect during which time the agency will teach examiners and the public what the final rule require and how to abide by them. As the agency develops the final rules, it is positioned to build a 21st century patent office because of the valuable input the public has given to us.
MESSAGE FROM MICHELLE PICARD, FEE SETTING TEAM LEADER: Progress Report on Fee Setting Under the AIA
In accordance with Section 10 of the America Invents Act, the agency released a preliminary proposed fee schedule on its AIA micro-site on February 7, 2012. The Patent Public Advisory Committee (PPAC) held two hearings on the USPTO's preliminary proposed fees on February 15 and 23 and collected written comments. In total, 12 witnesses testified at the hearings, and 24 members of the public submitted written comments.
More specifically, the hearing witnesses included 4 IP organizations and 8 individuals. Also, as shown in the table below, written comments were received from IP organizations, academic and research institutions, and individuals. Written comments are available for viewing on both the AIA micro-site and PPAC micro-site.
The agency attended PPAC's Fee Setting Hearings to hear the witnesses testimony and presently is reviewing the written comments. In response thereto, PPAC is preparing a report for the agency. PPAC is hopeful of delivering its report no later than July 2012, though statutorily is not obligated to produce that report until just before the agency releases it final fee rules.
Also in response to the PPAC Hearing public input and preliminary PPAC feedback, the agency is preparing a Notice of Proposed Rulemaking (NPRM) containing the agency's official proposed fee schedule. Based upon the helpful feedback from witness testimony and written comments, the agency is modifying select fees from its February 7th preliminary proposal for inclusion in its NPRM. The agency plans to issue its NPRM in the Federal Register in June-July 2012, which will open a 60-day comment period for the public to give additional feedback to the agency.
Like PPAC, the agency appreciates the public's participation in the PPAC Fee Setting hearings. This dialogue helps the agency to better understand what goals stakeholders believe that the agency should strive to achieve in exercising its fee setting authority under the AIA. Additionally, it will enable the agency to produce an NPRM better aligned with the public's fee expectations.
