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AIA Highlights

New York, NY (September 28, 2012)

Our final roadshow in New York City seemed to be a hotter ticket that the Book of Mormon musical!  Over 200 attendees joined us at the historic New York City Public Library in Bryant Park.  In fact, due to fire code restrictions, we unfortunately had to turn away a few late arrivers and sincerely apologize.  We are making a video of the roadshow available on the micro-site, and hope that those who could not attend will view it to learn about the various newly-effective statutory provisions and final rules discussed during the roadshow program.

Our stop in the Big Apple also marked the largest turn out of independent inventors with over 40 audience members from the Manhatthan Independent Inventors Association.  We offered one-on-one appointments for these inventors with Elizabeth Dougherty and Cathie Kirik, two representatives from the USPTO Independent Inventor Assistance Center.  Several inventors took advantage of these appointments to discuss non-AIA patent questions.

Lastly, with such a lively gathering, we received many questions with the following highlights:

  • Preissuance Submissions: Can a third party still file a submission of patents or publications relevant to a published application under 37 C.F.R. 1.99?

    No, as of September 16, 2012, § 1.99 is eliminated.  Submissions under § 1.99 should not be filed and will not be accepted on or after September 16, 2012.  A third party who wishes to submit patents or publications into an application should file under 27 C.F.R. 1.290, which is the rule for preissuance submissions.
  • Preissuance Submissions:  Is there a limit on the number of publications that can be listed in a preissuance submission?

    No, there is no limit on the number of publications that can be listed in a preissuance submission.  However, when filing a preissuance submission electronically, a maximum of 10 publications may be listed per electronic submission due to restrictions on the number of attachments that can be uploaded via EFS-Web.  If you are filing electronically and need to list more than 10 publications, please make a subsequent submission to add the additional items.
  • Administrative trials:  What process will the Board follow in determining whether a patent can be subject to a covered business method review?

    A petitioner carries the burden of establishing that a patent is eligible for a covered business method review.  The petitioner must show that the patent is directed to a covered business method and not to a technological invention.  The AIA generally defines a covered business method as a method or corresponding apparatus for performing data processing or other operations for financial products or services.  The AIA did not define a technological invention, however, directing the USPTO to do so by rule.  The USPTO has defined a technological invention for the limited purpose of a covered business method review as whether the claimed subject matter as a whole (i) recites a technological feature that is novel and unobvious over the prior art; and (ii) solves a technical problem using a technical solution.   

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Houston, TX (September 26, 2012)

Houston offered another great roadshow.  We began our visit to the Lone Star State with a stop at NASA, a sister agency.  We enjoyed an informative meeting with Associate Center Director Melanie Saunders and NASA Patent Attorneys Edward Fein and Kurt Hammerle, who shared an update on the various initiatives, scientific experiments, and inventions under development at Johnson Space Center by NASA scientists.  We then toured the International Space Station mock-up, Neutral Buoyancy Laboratory (no swimming in the pool), International Space Station Flight Control Room, and Apollo Era Mission Operations Control Room.  Here are some photos from our NASA visit:

 Houston Roadshow Team Visits NASA 

Additionally, we enjoyed a packed house of roughly 130 stakeholders at Rice University's Fondren Library for our AIA program.  The crowd held steady throughout the day and posed many thoughtful questions with a few highlights below.  Lastly, the library staff treated the audience to breakfast and a reception, which allowed for many informal conversations and networking for the PTO team and Texas IP community.  We extend very special thanks to the Fondren Librarian Esther Crawford for her hospitality.

  • Preissuance Submission:  If one of the documents included with a preissuance submission is non-complaint, will the entire submission be disregarded or just the document?

    If any document included in a preissuance submission is not compliant with the statutory or regulatory requirements, then the entire submission will be discarded and not entered into the patent application or considered by the examiner.  If a third party provides an electronic mailing address with the submission, then the Office will notify the third party of the non-compliance.  The third party may file a corrected submission if the statutory time window for a preissuance submission is open.  The third party, however, may not simply file an amendment to correct the defect.  Nor will the Office refund the fee for the non-compliant submission.
  • Supplemental Examination:  If the Office determines that a supplemental examination request is not compliant, will the Office include the non-compliant request in the patent file?

    No, if the Office determines that a supplemental examination request is non-compliant, the Office will not make it available to the public.  Instead, the Office will notify the patent owner and give the patent owner an opportunity to cure within a specified period of time.  If the patent owner cures the defect, the the Office will accord the supplemental examination request with a filing date and then make it available to the public via Public PAIR.  But if the patent owner does not submit a corrected request within the specified time, then the Office will terminate any processing of the request and refund the fee to ex parte reexamination.  The Office will make only a compliant request for supplemental examination available to the public via Public PAIR.
  • Covered Business Method Review:  If a patent includes claims to a covered business method as well as claims to other subject matter, will the Board adjudicate the patentability of all of the claims in the patent during a covered business method review?

    In a covered business method review, the Board will adjudicate the patentability of claims that meet the definition of a covered business method only; the Board will not review claims draw to other subject matter even if those claims appear in the same patent with covered business method type claims.

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Atlanta, GA (September 24, 2012)

The Atlanta roadshow marked three "firsts" for our roadshow series--(i) the largest live audience to date--nearly 200 stakeholders; (ii) the most questions during the Q&A sessions; and (iii) the inaugural podcast of our event by the Atlanta Bar IP Section. 

Photo of AIA Roadshow Event in Rice University Fondren Library in Atlanta, GA

  • Inventor's Oath or Declaration:  If a non-inventor submits a substitute statement, is the non-inventor required to file a petition and provide evidence that the inventor is not available?

    If a non-inventor filing a substitute statement is an assignee or an obligated assignee, then the non-inventor is not required to submit a petition.  But if the non-inventor filing a substitute statement is person with sufficient proprietary interest, then the non-inventor still must submit a petition.   In either case, a non-inventor is not required to submit proof that the inventor refuses to execute an oath or declaration or that the inventor cannot be located after diligent effort.
  • Inventor's Oath or Declaration:  Who is permitted to sign and file an application data sheet?

    An applicant or a registered patent practitioner representing the applicant may sign an application data sheet.  If an application data sheet is filed in an unsigned form, it will be treated as a transmittal letter.
  • Inventor's Oath or Declaration:  Are supplemental application data sheets required to correct or update information?

    No, the Office no longer requires a supplemental application data sheet to correct or update information.  Instead, an applicant or a registered patent practitioner representing the applicant should file a new application data sheet.  The most recent application data sheet in an application controls.
  • Preissuance Submissions:  What is  required for a concise statement of relevance for a submitted document?

    To comply with the concise statement of relevance for a preissuance submission, a third party should explain how the submitted document bears upon the patentability of the claimed invention, pointing out the specific pages, paragraphs, columns, lines, figures, etc., where the relevant information is located.  A statement that the document might be relevant to a particular claim would not be considered to be compliant, nor would a statement that the document may disclose/teach the claimed invention.  Additionally, the third party should not propose a rejection premised on the submitted document or use the concise statement requirement as an opportunity to contradict an examiner's rejection already of record or criticize an applicant's response to a rejection.
  • Administrative Trials:  What should a party do to challenge the admission of evidence if a trial is instituted?

    A party who wishes to challenge the admissibility of testimonial evidence from a deposition must object to introduction of the evidence at the deposition.  A party who wishes to challenge the admissibility of non-testimonial evidence must object to the evidence within 10 business days from the service date of the evidence if it is contained in the petition or within 5 business days if the evidence is introduced otherwise.  The party submitting the evidence then has 10 business days after service of the objection to cure any defect in the evidence.  The Board normally will not address objections to evidence, unless an objecting party files a motion to exclude the evidence.  The reason is because the objection may be cured or the evidence may prove unimportant.

    If the objecting party moves to exclude the evidence, the objecting party should explain why the evidence is not admissible (e.g., hearsay).  An objecting party should not use a motion to exclude evidence to challenge the sufficiency of the evidence in proving a particular fact.

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Detroit, MI (September 20, 2012)

The Detroit roadshow kicked off with an update from Deputy Director Theresa Stanek Rea, who is a Detroit native.  She reported on recents statistics for filings associated with provisions of law effective on September 16, 2012.  Specifically, she shared that the Office to date received 16 petitions for administrative trials, 24 preissuance submissions, and no requests for supplemental examination. 

Additionally, similar to our stop in Denver, the USPTO roadshow team visited the recently-opened Detroit satellite office, located at 300 River Place.   The new Detroit Director, Robin Evans, and TC Director, Dave Talbott, guided us around the facility, which mirrors the design of the USPTO headquarters in Alexandria down to the configuration of the examiner offices. 

The Detroit office includes a training facility for new examiners, examiner offices, administrative patent judge offices, a two-computer terminal public search facility with access to the EAST and WEST search platforms, and an interview room that the public may use to participate in interviews with examiners located at the Alexandria headquarters or hoteling from other locations.  Throughout, the facility is connected to the USPTO headquarters via the use of Tamborg technology, allowing groups in the two offices to see and hear each other for training and meetings. 

Further, the Detroit office features trademarks and patent drawings for inventions borne in the Detroit region, for example, the Red Wing hockey logo, forklifts used in the Stroh's brewery, and cars from the various Detroit-based automobile companies.  These touches give the Detroit office a true regional flavor and pay tribute to the innovative spirit of the city and region.  Here are some views of the new Detroit office:

Detroit office photos; photo of the Detroit AIA team from the outside, Examiner's Office, Virtual Interview Room, Examiners Training Academy

Lastly, we enjoyed another great series of questions and answers with the 106 member audience, including these highlights:

  • Inventor's Oath or Declaration:  If an application is filed before September 16, 2012, without an inventor's oath or declaration and the Office issues a Notice of Missing Parts after September 16, 2012, do pre-AIA or AIA legal requirements apply to the inventor's oath or declaration?

    An inventor is required to satisfy pre-AIA requirements for an inventor's oath or declaration for an application filed before September 16, 2012, even though the oath or declaration itself is filed after September 16, 2012.  To determine whether pre-AIA law or AIA law governs the requirements for an inventor's oath or declaration, the filing date of the application controls.  If an application is filed before September 16, 2012, then pre-AIA requirements  apply for an inventor's oath or declaration.  But if the application is filed after September 16, 2012, then AIA requirements apply for the oath or declaration.
  • Preissuance Submission:  If an application is subject to a non-publication request, is it possible for a third party to file a preissuance submission in that application?

    Yes, a third party may file a pre-issuance submission in an application subject to a non-publication request if the statutory timing requirement is met.   The timing requirement may be, however, a bit more difficult for a third party to ascertain. Ordinarily, a preissuance submission must be made: (i) before the Office issues a Notice of Allowance; and (ii) before the later of the date of a first rejection or the date that is 6 months after the application publishes.  In the situation where the application is subject to a non-publication request, the second time period (ii) is governed by the date of a first rejection only.  Thus, a third party who wishes to make a preissuance submission in an application subject to a non-publication request should, as a best practice, make the submission as early as possible to avoid missing the statutory timing window.
  • Administrative Trials:  Will the Board stay an adminstrative trial, if instituted, to allow the parties time to explore settlement options?

    No, the Board is unlikely to stay an administrative trial to permit the parties to explore settlement options.  Under the AIA, the Board is required to complete an administrative trial within 12 months from the date that the trial is instituted with a single, 6-month good cause extension possible.  The parties may pursue settlement concurrent with the trial proceedings.  If the parties reach a settlement, the Board likely will accept the settlement as to the parties.  And if a case is settled, the estoppel provisions will not apply to either party.  Nevertheless, depending on the timing of the settlement, for example, if settlement is reached after the parties participate in oral argument, the Board still may reach the patentability of the claimed invention in the interests of the patent system.

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Denver, CO (September 17, 2012)

Senator Michael Bennet paid a wonderful visit to our roadshow, sharing welcoming remarks with our audience of just over 100 attendees.  He addressed the importance of innovation to the State of Colorado and the United States.  He also expressed enthusiasm for the new Denver satellite office.  In addition to Senator Bennet, Mr. Carl Oppedahl of the Oppedahl Law Firm welcomed the agency on behalf of the Denver IP community. 

Next, some members of the USPTO roadshow team visited the the site of the future Denver satellite office.  It is will be house in the Rogers Building, located at 1961 Stout Street in downtown Denver.  The building is currently under construction with a projected opening in November 2013.

Further, Vice Chief Judge Jay Moore updated the audience on the number of petitions for an administrative patent trial filed on September 16, 2012, the one year anniversary of the AIA and the first day that a third party could pursue a trial.  He explained that the re-named Patent Trial and Appeal Board received a total of 10 petitions, split equally between inter partes review and covered business method review.  Vice Chief Judge Moore also indicated that the new electronic filing system for petitions, called PRPS, was fully operational.

Lastly, as with our three earlier roadshows, the audience question and answer sessions were lively, with the following highlights:

  • Inventor's Oath or Declaration:  If an application data sheet is filed with a patent application identifying the inventors and their mailing addresses and residences, will a surcharge be required?

    Yes, unless a patent application is filed with the inventor's oath or declaration, a surcharge will be required, even if an application data sheet is filed with the application.  Submission of an application data sheet with an application enables an applicant to postpone filing the inventor's oath or declaration until the time period for responding to a Notice of Allowability expires.
  • Supplemental Examination:  When is a supplemental examination concluded?

    A supplemental examination concludes when the Office issues a certificate of supplemental examination indicating whether any of the items of information identified in the request for supplemental examination raises a substantial new question of patentability.  The certificate of supplemental examination will be electronically issued in the IFW and PAIR systems and viewed by the public in Public PAIR.

    If the certificate indicates that none of the items of information raises a substantial new question of patentability, then the electronically-issued certificate will be issued as part of the patent file.  By contrast, if the certificate indicates that an item of information raises a substantial new question of patentability, then the Director will order an ex parte reexamination of the patent premised on that item of information.   Upon conclusion of the resulting ex parte reexamination, an ex parte reexamination certificate will be issued noting that the reexamination followed from a supplemental examination.  The reexamination certificate will be issued as part of the patent file, and the earlier-issued supplemental examination certificate will remain in the patent file.

  • Patent Owner Claim Scope Statements:  Is a patent owner required to submit  into a particular patent file statements about the scope of the claims for that patent made during a district court litigation or another USPTO proceeding?

    No, a patent owner is not required to submit a claim scope statement into a patent file.  If a patent owner opts to do so, the patent owner may explain how his or her claims are patentable over the  claim scope statement.

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Los Angeles, CA (September 14, 2012)

Chief of Staff Peter Pappas joined the roadshow circuit in Los Angeles and delivered opening remarks together with Deputy Director Rea.  Mr. Pappas explained initiatives that the USPTO is taking to improve the quality and speed of patentability determinations, apart from implementing the AIA.  We also enjoyed another great  audience in the City of Angels made up of 177 in-person and webinar members, and we received many more helpful questions:

  • Inventor's Oath or Declaration:  Has the USPTO made fillable inventor's oath or declaration and substitute statement forms that comply with the requirements of the inventor's oath or declaration provision of the AIA available?

    Yes, the agency has made fillable forms for an inventor's oath or declaration and a substitute statement available on its forms microsite:  www.uspto.gov/forms.   These forms include the statements required by the inventor's oath or declaration provision of the AIA and may be used for applications filed on or after September 16, 2012.
  • Inventor's Oath or Declaration:  If there are multiple inventors for a claimed invention, must all inventors submit oaths or declarations at the same time, or may the inventors submit their oaths or declarations in a piecemeal fashion?

    The inventors of an invention claimed in an application are not required to submit their respective oaths or declarations at the same time.  But all of the inventors must submit their oaths or declaration when the time period for responding to the Notice of Allowability closes.  Thus, some inventors may file their oaths or declarations with the application; others may submit them during prosecution of the application; and others may wait until the Office issues a Notice of Allowability.  If all of the necessary oaths or declarations are not submitted with the application, however, an Application Data Sheet listing all of the inventors with their mailing addresses and residences must be filed, and a surcharge will be required.
  • Administrative Patent Trials:  Does patent owner estoppel  as set forth in the AIA and the final rules for the new administrative trials of post grant review and inter partes review apply only to the claims for which a decision is issued, or does it apply to all of the claims challenged in the petition?

    Patent owner estoppel per the AIA and final rules applies only to the claims addressed in a decision issued by the Patent Trial and Appeal Board at the conclusion of the trial.  It does not apply to the claims challenged by a petitioner and not subject to a trial.

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Alexandria, VA (September 12, 2012)

Deputy Director Teresa Stanek Rea kicked off the Alexandria roadshow with opening remarks, explaining how the AIA contributes to developing the world's first and only 21st century patent system.  She also noted that the roadshows are staffed by teams of USPTO experts, and in turn, she encouraged the audience to engage and ask questions throughout the day.  Following that encouragement, the Alexandria roadshow with 266 attendees was quite lively, including the following Q&As:

  • Inventor's Oath/Declaration:  Can an applicant submit the oath or declaration from a parent application that was filed before September 16, 2012, in a child application filed after September 16, 2012?

    An applicant can file the oath or declaration submitted in a pre-September 16 parent application (i.e., old declaration) in a post-September 16 child application so long as the statements required under the AIA for the oath/declaration are added to the old declaration with the inventor's approval.  Specifically, the declaration filed in the child application must state that (i) the inventor is an original inventor of the subject matter claimed in the child application; and Iii) the inventor authorized the child application to be filed.  The old declaration will not be found non-compliant because it contains additional information residual from pre-AIA law (e.g., citizenship of the inventor, statement that the inventor is the "first" inventor of the claimed subject matter, statement acknowledging the duty of disclosure).
  • Preissuance Submissions:  Is there any restriction in the rules to prevent multiple third parties from getting together, identifying a group of printed publications that may be relevant to a claimed invention, and then each third party individually submitting three publications to take advantage of the "three for free" rule?

    Each third party may submit a single submission of three or fewer documents without paying the submission fee.  Nothing in the final rules prevents multiple third parties from collaborating to identify the relevant printed publications and then each making a "three for free" submission.  A third party who has taken advantage of a "three for free" submission and wants to make a subsequent submission, however, will be required to show that the need for the subsequent submission was not known at the time of the earlier submission.
  • Administrative Patent Trials:  How is the Board going to manage concurrently filed requests for post grant review or concurrently filed requests for inter partes review for the same patent?  Will the Board consolidate the reviews into a single proceeding? 

    The Board will handle all cases on its facts to determine the most efficient and effective way to proceed.  In certain instances, the Board may consolidate cases, but in other cases, it may not.  The AIA requires the Board to conduct post grant and inter partes reviews keeping in mind (i) the efficient operation of the Office; (ii) the ability to timely complete proceedings; (iii) the integrity of the patent system; and Iiv) the economy.

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Minneapolis, MN (September 10, 2012)

The USPTO kicked off its cross-country roadshow tour on Monday, September 10, 2012, in Minneapolis, Minnesota.  We enjoyed a combined live and webinar audience of more than 225 people.  We thank all attendees for spending the day with us to learn about the new statutory provisions and implementing USPTO rules going into effect on the anniversary date of the AIA. 

Here are three highlights resulting from our Q&A sessions:

  • Inventor's Oath/Declaration Provision:  If an inventor files an oath/declaration after September 16, 2012, when the inventor's oath/declaration provision becomes effective, should the inventor still include the statement that he/she is the first inventor since the United States is under the first-to-invent system until March 16, 2013?

No, starting on September 16, 2012, an inventor is no longer required per the AIA to state that he/she is a first inventor, despite the fact that the United States remains under the first-to-invent system until March 16, 2013.  Instead, under the AIA, the inventor must state that he/she is an original inventor of the subject matter claimed in the application.

  • Inventor's Oath/Declaration:  Can an applicant continue to make a foreign priority claim via an inventor's oath/declaration after September 16, 2012?

No, after September 16, 2012, an applicant must include foreign priority and domestic benefit claims in an Application Data Sheet instead of in the inventor's oath/declaration.  The USPTO is centralizing the location of foreign priority and domestic benefit claims to a single location.  Thus, for applications filed on or after September 16, 2012, the USPTO will not recognize any foreign priority claims made exclusively in the inventor's oath/declaration (or any domestic benefit claims made exclusively in the specification).

  • Administrative Trials:  Can a non-business method patent that was filed under the first-to-invent system and issued after September 16, 2012, be subject to an immediate challenge via one of the new administrative trials? 

No, a patent that was filed under the first-to-invent system and issued after September 16, 2012, cannot be subject to challenge until 9 months after patent grant.  The reason is because a post-grant review, which is available during the nine month window after patent grant, only applies to patents issued under the first-inventor-to-file system.  By contrast, an inter partes review applies to patent granted under the first-to-invent system, but it does not become available until 9 months after patent grant.

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PTAB AIA Trial Roundtables

Alexandria, VA* April 15
New York City, NY April 17
Chicago, IL  April 22
Detroit, MI April 24
Silicon Valley, CA April 29
Seattle, WA May 1
Dallas, TX May 6
Denver, CO* May 8

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Last Modified: 10/2/2012 4:51:01 PM