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Patents Examination

The Patents Examination area features information about AIA provisions that impact patent examination and supplemental examination, including guidance documents, Notices of Proposed Rulemakings (NPRMs), Final Rulemakings (FRs), and links to Public Comments received in response to NPRMs.

Tax Strategies deemed within the Prior Art

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Prioritized Examination

Prioritized examination is being implemented for utility and plant patent applications.  When an applicant opts in to prioritized examination, the application will be accorded special status during prosecution before the patent examiner.  The goal is to provide a final disposition within twelve months, on average, of prioritized status being granted.  A maximum of 10,000 requests will be granted per fiscal year, although the USPTO may choose to revise that cap in the future.  Prioritized examination is available at the time of filing an original utility or plant application (Track One) under 35 U.S.C. 111(a). Also, a single request for prioritized examination may be granted for a request for continued examination (RCE) in a plant or utility application.

The Track One prioritized examination procedure for new application filings substantially tracks the procedure proposed by the USPTO in a notice of proposed rulemaking in February 2011, which received strong public support.  Details of the procedure, including information about required fees, are available in the final rule published in the Federal Register on September 23, 2011, at 76 Fed. Reg. 59050.  This prioritized examination procedure is part of an effort by the USPTO to provide patent applicants with greater control over the timing of examination of their applications.  Requests for prioritized examination may be filed beginning on September 26, 2011.  

On December 19, 2011, the USPTO extended the prioritized examination procedure to apply to a request for continued examination in an existing plant or utility application. Details of the procedure, including information about required fees, are available in the final rule published in the Federal Register on December 19, 2011, at 76 Fed. Reg. 78566.

For more information about prioritized examination, consult the Track One web page.

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Inventor’s Oath/Declaration

35 U.S.C. 118 provides for the making of an application by a person to whom the inventor has assigned, or is under an obligation to assign, the invention.  A person who otherwise shows sufficient proprietary interest may also make an application, but on behalf of and as agent for the inventor.  Any patent granted on an application filed by a person other than the inventor shall be granted to the real party in interest.  35 U.S.C. 115 authorizes an individual who is under an obligation of assignment to include certain required statements in an executed assignment in lieu of filing these statements in a separate oath or declaration.  Identification of each applicant’s citizenship is no longer required by statute.  35 U.S.C. 115(h)(2) provides that the Director may not require any additional (supplemental) or other inventor statements if they would be equivalent to one already provided.  The requirement of without deceptive intention has been deleted from related sections 35 U.S.C. 116, 251, 253, and 256.  These provisions shall apply to any patent application that is filed on or after September 16, 2012.

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Preissuance Submissions

35 U.S.C. 122(e) provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application with a concise description of the asserted relevance of each document submitted.  Under 35 U.S.C. 122(e), such submissions may be made before (1) the later of (i) 6 months after the date of publication or (ii) the date of a first Office action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier.  Section 122(e) also provides for such fees as the Director may prescribe.  This new provision is effective September 16, 2012, and will apply to any patent application.

Additional information is forthcoming.

For more information about Preissuance Submissions, please read this page.

 

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Supplemental Examinination

35 U.S.C. 257 provides for supplemental examination of an issued patent.  A request for supplemental examination must be filed by the patent owner, and must request that the Office “consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish”.  The “information” that forms the basis of the request is not limited to patents and printed publications, and may include other issues, e.g., issues under 35 U.S.C. 112.  The standard for granting the request is whether one or more items of information raises a substantial new question of patentability (SNQ), which requires a showing that a reasonable examiner would consider the item of information important in determining the patentability of the claims.  Within 3 months after the receipt of a request meeting Office requirements, the Office will conduct the supplemental examination and will conclude the examination by issuing a certificate indicating whether the information presented in the request raises an SNQ.  If an SNQ is raised by one or more items of information in the request, reexamination will be ordered, and will be conducted according to ex parte reexamination procedures (except patent owner will not have the right to file a statement pursuant to 35 U.S.C. 304).  This provision is effective September 16, 2012, and will apply to any patent issued before, on, or after the effective date (retrospective effect).

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First-Inventor-to-File

The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system.  The FITF provision includes a 1-year grace period.  Specifically, prior art disclosures made publicly available one year or less before the effective filing date can be overcome by applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), see 102(b)(1)(A), or (2) the applicant or a deriver publicly disclosed the subject matter before the date of the prior art disclosure, see 102(b)(1)(B).  The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period will be measured from the foreign priority date claimed.  A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar.  Prior public use or sale is no longer limited to the U.S.  For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application.  Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102.  In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents.  The FITF provisions take effect on March 16, 2013.  35 U.S.C. 102 and 103 in effect before March 16, 2013 will apply to applications filed before March 16, 2013, and continuations and divisionals of such applications.  35 U.S.C. 102 and 103 in effect on March 16, 2013, will apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013.  35 U.S.C. 102(g) in effect before March 16, 2013, will apply if the application ever contains a claim that has an effective filing date before March 16, 2013. 

FITF Public Forum, April 1, 2014

Examiner Training

Please email Janet.Gongola@uspto.gov with any comments or questions about the first-inventor-to-file training or materials provided to USPTO examiners.

Final Rules and Guidance

Proposed Rules and Guidance

Frequently Asked Questions

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Repeal of Statutory Invention Registration

Information forthcoming.

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United States Patent and Trademark Office
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Last Modified: 4/7/2014 2:05:40 PM