DISCLAIMER: This blog provides updates and information about various AIA related issues. However, for complete information on the requirements for a particular type of AIA filing, please consult the relevant statute and rules for the respective AIA provision.
Message From Janet Gongola, Patent Reform Coordinator: Various Aspects Of Inventor's Oath/Declaration Provision Explained Including Updates To Certain USPTO Forms, Tips For Using An Application Data Sheet, And Reminders About Correcting Inventorship, etc
Various Aspects Of Inventor's Oath/Declaration Provision Explained Including Updates To Certain USPTO Forms, Tips For Using An Application Data Sheet, And Reminders About Correcting Inventorship, Juristic Entities, And Real Parties In Interest
In January 2013, we provided guidance regarding the use of a substitute statement, addressed the process for correcting inventorship and correcting/updating inventor names, and provided instructions for completing USPTO inventor’s oath or declaration forms. This current post provides information about new versions of some of the USPTO forms and tips for using an application data sheet. Additionally, we provide an alert about the fee for corrections of inventorship that took effect in March 2013. Finally, we provide a reminder about the need for juristic entities to be represented as well as the need to update the real party in interest at the time of issue fee payment.
New Versions of Forms
The Office has updated the Application Data Sheet, Substitute Statement, and Power of Attorney by Applicant forms for use in patent applications filed on or after September 16, 2012. Each of these three updates will be addressed in turn. The updated forms are available at www.uspto.gov/forms.
First, the Application Data Sheet (ADS) form, PTO/AIA/14, has been updated to permit an assignee-applicant to be identified as an assignee on the patent application publication, in addition to being identified as the applicant. See the “Assignee Information including Non-Applicant Assignee Information” section of the PTO/AIA/14. This change to the ADS form was made in response to public feedback. Some customers want to be identified as both an applicant and an assignee, and this change to the form permits such dual identification.
Second, the Substitute Statement forms, PTO/AIA/02, PTO/AIA/04, and PTO/AIA/07, have been updated to provide for identification of the applicant (e.g., assignee) who is signing the statement on behalf of an inventor. Additionally, the forms have been updated to contain “authorization to act” language for use by an individual who may not have a title that carries apparent authority but who is authorized to act on behalf of a juristic entity applicant. A patent practitioner cannot sign a substitute statement on behalf of the applicant merely on the basis of having power of attorney in the application. In order to sign as the applicant, a patent practitioner must have binding authority (e.g., given by corporate resolution from a Board of Directors). See MPEP Section 324, V. for more information.
Third, the Power of Attorney by Applicant form, PTO/AIA/82, has been updated to provide a box where a juristic entity applicant may be identified and contains “authorization to act” language for use by an individual who may not have a title that carries apparent authority but who is authorized to act on behalf of a juristic entity applicant. For patent applications filed on or after September 16, 2012, only the applicant may grant a power of attorney. Thus, where the inventors are named as the applicant, an assignee would need to become the applicant by filing a request under 37 CFR 1.46(c) and include a corrected ADS per 37 CFR 1.76(c) and a statement under 37 CFR 3.73(c).
Tips for Using an Application Data Sheet
An ADS must identify with markings any changes in information from what was provided in a prior ADS or otherwise of record. New information must be underlined, and deleted information must be shown using strikethrough or brackets. The ADS can, however, be limited to showing only the section(s) of the ADS that contains the changed information. The requirement for identification of the information being changed applies to all application data sheets, regardless of the filing date of the application or proceeding under both versions of 37 CFR 1.76. Applicants do not have to use USPTO form PTO/AIA/14 to submit a corrected ADS and may instead create a corrected ADS in word processing software. Please note that, for an application filed before September 16, 2012, applicants must still file a Supplemental ADS with markings and include all of the sections, rather than a corrected ADS, to change the information. See MPEP 601.05 for more information.
New Additional Fee for Correction or Change of Inventorship
Where a request to correct or change the inventorship is filed under 37 CFR 1.48(a) after an Office action on the merits has been given or mailed, there is a fee that is due as of March 19, 2013, in addition to the processing fee, unless the request is accompanied by a statement that the request is due solely to the cancellation of claims in the application. See 37 CFR 1.48(c). The additional fee is set forth in 37 CFR 1.17(d). As a reminder, the changes to the correction of inventorship rule, 37 CFR 1.48, were effective on September 16, 2012, and apply to any request to correct inventorship filed on or after September 16, 2012, regardless of the application filing date. Where, however, a new inventor declaration is required due to an added inventor, the filing date of the application governs which version of 37 CFR 1.63 the declaration must comply with (e.g., for an application filed before September 16, 2012, the declaration would need to comply with pre-AIA 37 CFR 1.63, and USPTO Form PTO/SB/01 could be used).
Reminder for Juristic Entities
Juristic entities (this includes corporations and other non-human entities created by law and given certain legal rights) who seek to prosecute an application must do so via a registered patent practitioner, even if the juristic entity is the applicant. See 37 CFR 1.31. All papers submitted on behalf of a juristic entity must be signed by a patent practitioner unless otherwise specified, in accordance with 37 CFR 1.33(b)(3). Only a limited number of documents may be signed by a juristic entity such as a terminal disclaimer, statement under 37 CFR 3.73(c), power of attorney, or substitute statement. This change in practice was effective September 16, 2012, and applies to any paper filed on behalf of a juristic entity on or after September 16, 2012, regardless of the filing date of the application or proceeding.
Reminder to Update the Real Party in Interest at Time of Payment of the Issue Fee
For applicants other than the inventor(s), e.g., assignee-applicants, the Office is statutorily required to issue any patent to the real party in interest. Accordingly, 37 CFR 1.46(e) requires that the Office be notified if there has been any change in real party in interest, e.g., the assignee-applicant is no longer the real party in interest. The notification requirement applies no matter whether the non-inventor applicant was the applicant on initial filing or later became the applicant under 37 CFR 1.46(c).
Posted at 10:50AM Nov 05, 2013 in Miscellaneous |
Message From Janet Gongola, Patent Reform Coordinator: USPTO Releases Video Recording of Second Anniversary AIA Forum
The USPTO is pleased to release a video recording and slide presentations from the Second Anniversary AIA forum held on September 16, 2013. At the forum, USPTO subject matter experts from the Patent Business Unit and administrative patent judges from the Patent Trial and Appeal Board discussed prioritized examination (aka Track One), preissuance submissions, inventor's oath/declaration, supplemental examination, micro-entity discount, first-inventor-to-file, and the administrative trials. Please check out the video and slides for tips for compliance and how to avoid pitfalls when making these various new AIA filings.
Second Anniversary Forum Slides [PDF-4 mb]
Posted at 11:11AM Oct 17, 2013 in Implementation Activities/Roadshows |
Message From Janet Gongola, Patent Reform Coordinator: Options for Expedited Patent Application Examination, Including Prioritized Examination Under The AIA
The USPTO currently offers three alternative programs that provide applicants with the opportunity to expedite examination of their patent applications. These three programs are: (i) Prioritized Examination (also known as “Track One”), which was introduced by the AIA; (ii) Accelerated Examination (AE); and (iii) the Patent Prosecution Highway (PPH). By taking advantage of these expedited examination processes, applicants may capitalize on their exclusive patent rights sooner than through conventional examination, especially in areas where the technology is rapidly evolving.
More specifically, in the Prioritized Examination and the AE programs, applicants receive a first action on the merits in less than 5 months and a final decision from the examiner within 12 months from the grant of the request. In the PPH program, applicants receive a first action on the merits within 2 to 3 months from the grant of the request. The chart below illustrates the first action pendency data of the three programs as compared with conventional examination for fiscal year 2013.
To enter into one of the agency’s expedited examination programs, patent applicants must satisfy certain requirements largely focused on the size of the application as well as payment of an additional fee.
In the case of Prioritized Examination, applicants can submit no more than 4 independent claims and no more than 30 total claims. Applicants also must pay a $4000 fee, which is reduced to $2000 for small entities and to $1000 for micro entities. Applicants further must electronically file their applications, and the applications must be complete on filing.
In the case of AE, applicants can submit no more than 3 independent claims and no more than 20 total claims. Applicants also must pay a $140 fee, which is reduced to $70 for small entities and to $35 for micro entities. Applicants further must submit pre-examination search documents and an “examination support document.” The requirement for pre-examination search documents and an “examination support document” is a key distinction between AE and Prioritized Examination.
In the case of PPH, there are no petition fees or limits on the number of claims, unlike for Prioritized Examination and AE. However, a foreign patent office that participates in the PPH must have found at least one claim to be allowable for the application to receive expedited examination in the USPTO. Currently, there are more than two dozen participating foreign patent offices.
Here is a quick reference table summarizing the features and requirements of the three expedited examination programs available at the USPTO. For more information about any individual programs, the Office has created specialized micro-site.
Fast Examination Table: http://www.uspto.gov/aia_implementation/fast_exam_table20130912v1017.pdf
Prioritized Examination: http://www.uspto.gov/patents/init_events/Track_One.jsp.
ccelerated Examination: http://www.uspto.gov/patents/process/file/accelerated/index.jsp
Patent Prosecution Highway: http://www.uspto.gov/patents/init_events/pph/index.jsp.
Posted at 10:58AM Oct 17, 2013 in Miscellaneous |
Message from Janet Gongola, Patent Reform Coordinator: USPTO to Host Second Anniversary AIA Forum on September 16, 2013
The USPTO is pleased to announce that there will be an AIA forum on September 16, 2013 to commemorate the second anniversary of the new patent law. The forum will be held on the USPTO's Alexandria campus in the Madison North Auditorium from 1 to 5 pm The forum also will be webcast (access information below).
USPTO subject matter experts from the Patent Business Unit and administrative patent judges from the Patent Trial and Appeal Board will discuss various provisions of the new patent law, focusing on filings made over the past several months with tips for compliance and how to avoid pitfalls. In particular, the agency will address prioritized examination (aka Track One), preissuance submissions, inventor's oath/declaration, supplemental examination, micro-entity discount, first-inventor-to-file, and the administrative trials. The agency likewise will field questions from the audience about each of these topics.
Please mark the date on your calendar, and join us for the most current recent updates on the new patent law. The forum is free with seating on a first-come, first-served basis.
- >> Agenda [PDF]
- Document 1: Second Anniversary Forum Slides [PDF - 4 mb] UPDATED 9/16/2013
- Document 2: Fast Examination Options [PDF]
- Document 3: First-Inventor-to-File Workshop Materials [PDF]
Webcast Access Information:
Event number: 991 788 621
Event password: 123456
Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=991788621&t=a
Call-in toll number (US/Canada): 1-650-479-3208
Access code: 991 788 621
Posted at 03:48PM Sep 03, 2013 in Miscellaneous |
Message from Janet Gongola, Patent Reform Coordinator: USPTO Examination of an Application Under Pre-AIA (First-To-Invent) Or AIA (First-Inventor-To-File) Law and Submission of Compliant 1.55/1.78 Statements for Transition Applications
Since the March 16, 2013 effective date of the first-inventor-to-file provision, the USPTO and patent applicants are prosecuting patent applications under two legal frameworks for prior art—first-to-invent provisions and first-inventor-to-file provisions. There are three possible scenarios that may arise in terms of which framework to apply to an application. These three scenarios are depicted in the graphic below.
- First, as shown in the far left green circle, if an application was filed before March 16, 2013 and all domestic benefit or foreign priority claims made in the application are to applications filed before March 16, 2013, then the application is subject to examination under the pre-AIA law (first-to-invent).
- Second, as shown in the far right blue circle, if an application is filed after March 16, 2013 and all domestic benefit or foreign priority claims made in the application are to applications filed on or after March 16, 2013, then the application is subject to examination under the AIA law (first-inventor-to-file).
- Third, as shown in the middle red circle, if an application is filed after March 16, 2013 but all domestic benefit or foreign priority claims made in the application are to applications filed before March 16, 2013, then the applicant must file a statement under 37 CFR 1.55 or 1.78 (1.55/1.78 Statement) with the Office if the application contains claims to subject matter not supported by the domestic benefit or foreign priority filing and therefore should be examined under the AIA law (first-inventor-to-file). The USPTO has designated an application that falls into this third scenario as a "transition" application, and they are the focus here.
SCOPE OF 1.55/1.78 STATEMENT IN TRANSITION APPLICATION
In filing a 1.55/1.78 Statement, an applicant simply needs to state that the application contains at least one claim
s that does not find support in one of the applications to which benefit or priority is sought. Here are example statements that an applicant could file:
- This application filed on or after March 16, 2013 which claims benefit or priority to an application filed before March 16, 2013, contains one or more claims NOT entitled to a filing date before March 16, 2013.
- This application claims benefit or priority to an application filed before March 16, 2013, and contains one or more claims NOT entitled to a filing date before March 16, 2013.
- This application contains one or more claims NOT entitled to a filing date before March 16, 2013.
- This application contains a claim having an effective filing date on or after March 16, 2013.
Notably, the applicant is not required to identify the subject matter lacking support in the pre-March 16 domestic benefit or foreign priority filings. Nor is the applicant required to identify the specific claims drawn to the newly-added subject matter. To make it easy for an applicant to provide a 1.55/1.78 Statement to the Office, the USPTO has included a 1.55/1.78 Statement on the Application Data Sheet (ADS) with a check box that an applicant can use and thereby meet the statement requirement. More information about the use of the 1.55/1.78 Statement on an ADS is discussed below.
RATIONALE FOR 1.55/1.78 STATEMENT IN TRANSITION CASE
The Office is requiring applicants to file 1.55/1.78 Statements for transition applications when there are newly-added claims that lack support in an application to which benefit or priority is sought that is filed before March 16, 2013, so that examiners apply the correct legal framework (i.e., first-to-invent or first-inventor-to-file) from the outset of examination. On the face of a transition application, it appears by virtue of the pre- March 16, 2013 domestic benefit or foreign priority claim
s that the application is subject to examination under pre-AIA law (first-to-invent). However, because the application was filed after March 16, 2013, it could be subject to examination under the AIA (first-inventor-to-file) if any newly-claimed subject matter is not supported by the domestic benefit or foreign priority filings. Because USPTO cannot readily ascertain whether the application contains claims to such newly-added subject matter, an applicant must specify to the Office whether the AIA (first-inventor-to-file) applies via a 1.55/1.78 Statement. Absent a 1.55/1.78 Statement from an applicant, the Office will examine the application under the pre-AIA law (first-to-invent).
USE OF CHECK BOX ON ADS TO MAKE 1.55/1.78 STATEMENT
By marking the check box on an Application Data Sheet (ADS) for a 1.55/1.78 Statement, an applicant is designating that the application should be examined under the AIA (first-inventor-to-file) by virtue of the inclusion of claimed subject matter which is not supported in an earlier filed application to which priority or benefit has been made. Indeed, as shown in the excerpt from an ADS below, there is a notation accompanying the 1.55/1.78 Statement emphasizing that the application will be examined under the first-inventor-to-file provisions of the AIA if the check box is marked.
Applicants may want to carefully review application filings made since the March 16, 2013 effective date of the first-inventor-to-file provision to ensure that they correctly used the 1.55/1.78 Statement check box on the ADS. The USPTO advises applicants who filed applications after March 16, 2013, to conduct this review because some applicants appear to have erroneously marked the 1.55/1.78 Statement check box on the ADS. Specifically, some applicants have filed applications as continuations or divisionals of parent applications that were filed before March 16, 2013, and at the same time, marked the 1.55/1.78 Statement check box on the ADS. These two actions appear to be in conflict. Identification of an application as a continuation or divisional of a parent application filed before March 16, 2013 makes the application subject to pre-AIA law (first-to-invent). By contrast, selection of the 1.55/1.78 Statement check box makes the application subject to the AIA (first-inventor-to-file). In such conflict situations, the USPTO is contacting the applicant to ascertain the propriety of the statement made via the checkbox. Additionally, applicants must correct the error—be it the identification of the application as a continuation-in-part or the de-selection of the 1.55/1.78 Statement check box.
WHAT TO DO IF A 1.55/1.78 STATEMENT WAS FILED IN ERROR
In the situation where an applicant erroneously identified a transition application as claiming subject matter not supported by the earlier filed domestic benefit or foreign priority application filing which was before March 16, 2013, the applicant can correct the error by filing a separate paper to rescind the statement. If the applicant files the rescission electronically, the applicant should select the document description “Make/Rescind AIA (First Inventor to File) 1.55/1.78 Stmnt” to properly index the paper. The USPTO does not have a specific rescission form; an applicant merely needs to state that all the claims in the application find support before March 16, 2013 and therefore that the 1.55/1.78 Statement previously submitted to the Office was filed in error.
Posted at 06:10PM Jun 28, 2013 in Implementation Activities/Roadshows |
Message From Janet Gongola, Patent Reform Coordinator: USPTO Releases First-Inventor-to-File Training Materials, Including Videos
As you all know, the America Invents Act became law eighteen months ago on September 16, 2011, to modernize the U.S. patent system. One of the provisions in the AIA converted the United States to a first-inventor-to-file system from a first-to-invent system. The first-inventor-to-file provisions become effective on March 16, 2013—the eighteen month anniversary of the AIA.
The USPTO has implemented the first-inventor-to-file provisions through a series of rules as well as a guidance document. We presently are conducting first-inventor-to-file training for our examiners, and I’d like to share a bit about that training with you.
During the months of March and April 2013, we are educating our examiners on the new statutory framework for prior art found in AIA 35 U.S.C. 102 as well as explaining to them how to identify whether an application is subject to examination under the first-inventor-to-file provisions of the AIA or the first-to-invent provisions of pre-AIA law. We have created two videos and a one-hour live lecture to share this information.
This summer, we will delve deeper into the first-inventor-to-file provisions with more comprehensive training conducted with smaller groups of examiners. In particular, we will detail our first-inventor-to-file final rules along with numerous practical applications, among other topics. And between March and the summer, we will offer “just-in-time” training for those examiners who have applications on their dockets to be examined under the first-inventor-to-file provisions. In case you are interested, we are posting all of our examiner training materials on the AIA micro-site on the “Patents Examination” page under the “First-Inventor-to-File” category:
The agency has selected this staged training process for distinct reasons. First, most examiners will not have an application to examine under the first-inventor-to-file provisions for several months. Second, we aim to solidify the first-inventor-to-file subject matter for examiners by using an iterative approach. That way, examiners will have multiple opportunities to master the subject matter and obtain answers to their questions.
In addition to training our examiners on the first-inventor-to-file provisions, we want to help all of you understand the new prior art framework. To do so, we have prepared a series of four videos. Each video explains a particular aspect of the new prior art regime. More specifically, the first two videos address what constitutes prior art under the AIA, and the second two videos cover exceptions that remove prior art from being available to apply against a claimed invention. Each video is less than 5 minutes and distills the new prior art framework into its basic components for easy understanding.
- Prior Art Under AIA 35 U.S.C. 102(a)(1)
- Exceptions to Prior Art Under AIA 35 U.S.C. 102(b)(1)
- Prior Art Under AIA 35 U.S.C. 102(a)(2)
- Exceptions to Prior Art Under AIA 35 U.S.C. 102(b)(2)
Lastly, remember that the agency has a special AIA Help Center to answer your first-inventor-to-file questions. You can either call 1-855-HELP-AIA (1-855-435-7242) or email the Help Center at HELPAIA@uspto.gov.
Posted at 07:18PM Mar 15, 2013 in Implementation Activities/Roadshows |
From Janet Gongola, Patent Reform Coordinator: USPTO Releases Statistics on Filings for New Proceedings That Became Available in September 2012
Over the past five months, the USPTO has received various filings for the provisions that became effective on September 16, 2012. These filings include preissuance submissions, requests for supplemental examination, and petitions for both inter partes review and covered business method review. To enable you to track these filings, we have added a new page on the AIA micro-site called “Statistics.” This page features information about the number of raw filings for each new procedure. As you will see from the data shown on the Statistics page, stakeholders are incorporating all of the new procedures into their practices as the number of filings generally are on the rise. Here is a link to the Statistics page for you to check out: http://www.uspto.gov/aia_implementation/statistics.jsp
Posted at 04:02PM Mar 04, 2013 in Miscellaneous |
Message from Michael Tierney, Lead Judge: Tips for Filing Petitions and Making Successful Arguments Before the Patent Trial and Appeal Board
As of September 16, 2012, three new proceedings became available before the Patent Trial and Appeal Board (Board) for challenging the patentability of an issued patent. These proceedings are called an Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Patent Review (CBM). Patents issuing from applications subject to the first-inventor-to-file AIA provisions (on or after March 16, 2013) may be challenged in an IPR, PGR, or CBM. However, generally patents issuing from applications subject to the first-to-invent provisions may be challenged only in IPR or CBM. This post seeks to clarify the formalities for filing a successful petition and explain how to make persuasive arguments in a petition.
Comparison of IPR, PGR, and CBM Petitions
It is important to understand the parameters when filing a petition for an IPR, PGR, or CBM proceeding.
|When is a Petition Ripe?||
Cannot be filed until after the later of:
|On or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent.||
Patents under First-to-Invent Provisions:
Patents under First-Inventor-to-File Provisions:
|Who Files a Petition?||A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition.||Only a person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent.|
|Grounds for Filing Challenge to Patent?||May request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 35 U.S.C. §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publications||May request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b) relating to invalidity (i.e., §101, novelty, obviousness, written description, enablement, indefiniteness, but not best mode).||
Patents under First-to-Invent Provisions:
Patents under First-Inventor-to-File Provisions:
|Statutory & Regulatory Requirements?||
|Can a Patent Owner File a Preliminary Response to a Petition?||
Yes – within three months
|Petition Page Limit?||
60 double-spaced pages
80 double-spaced pages
Page Limits for Petitions, Motions, Patent Owner Responses, and Oppositions
Page limits assist the Board in effectively and timely managing proceedings. The page limit for a petition is either sixty or eighty pages, depending on the type; the page limit for a motion is fifteen pages. For both petitions and motions, the page limit does not include a table of contents, a table of authorities, a certificate of service, or appendix of exhibits. However, it does include any statement of material facts to be admitted or denied in support of the petition or motion. Patent owner responses have page limits that match the petition or motion they address, but the page limits do not include admissions of denials of a petitioner’s statement of material facts. If a party would like more pages, they must file a motion requesting waiver of the page limits.
Requests for Waiving Page Limits
Irrespective of the type of proceeding, parties involved in an IPR, PGR, or CBM proceeding must comply with the stated page limits; however, a filing party may accompany their submission with a motion to waive the page limits. The party requesting a waiver must clearly demonstrate that waiving the page limits is in the “interests of justice,” which is a higher standard than merely showing “good cause.” Each motion should identify how the particular case facts demonstrate a need to waive the page limit, and specifically how that need is in the interest of justice.
This higher standard means that exceptions to the page limits will not be commonly granted for broad or generic reasons (e.g., additional pages being used on the primary target claims because the patent is being challenged on multiple grounds and thus it is in the interest of justice to respond or explain all grounds). Similar to all other legal writing, a quality submission (i.e., a petition, patent owner’s response, or patent owner’s preliminary response) should be concise, articulate, and supported by facts. If the motion seeking to waive the page limits is denied, the proposed petition exceeding the page limit may be expunged or returned.
Making Written Arguments Before the Patent Trial and Appeal Board
A petitioner may challenge a patent on multiple grounds. However, the petitioner must expressly identify the differences between a challenged claim and the prior art, especially when making assertions of obviousness. Additionally, for obviousness, a petitioner should address the scope and content of the prior art, and the level of ordinary skill in the pertinent art.
A petitioner may rely upon multiple prior art references in challenging a claim, provided each reference is specifically explained and applied to claim limitations for which a claim construction is to be provided by the petitioner. Where a plurality of prior art references exist, it is essential for a petitioner to avoid redundancy when applying the prior art to the claims at issue. A petitioner avoids redundancy by explaining why one reference more closely satisfies the claim limitation at issue in some respects than another reference, and vice versa. Furthermore, a petition should specify whether the grounds of unpatentability differ due to alternative claim constructions or alternative findings of fact. Thus, a successful argument carefully applies prior art references by avoiding redundancy through complete explanations. Additionally, where references are to be combined, a successful argument explicitly explains the reasons supporting the proposed combination.
For the Representative Order discussing redundancy grounds, please see CBM2012-00003, Order (Redundant Grounds), Paper 7, Oct. 25, 2012, available at http://www.uspto.gov/ip/boards/bpai/representative_order_cbm2012-00003_order_(redundant_grounds)_paper_7_(10-25-12).pdf.
For an explanation of the grounds available for post-grant review challenges, please see Director David Kappos’ Public Blog, PTAB and Patentability Challenges (Sep. 24, 2012 04:44 PM), available at http://www.uspto.gov/blog/director/entry/ptab_and_patentability_challenges.
Posted at 02:50PM Feb 25, 2013 in Miscellaneous |
From Janet Gongola, Patent Reform Coordinator: Date Change for Public Forum to Discuss First-Inventor-to-File, Micro Entity, and Patent Fee Final Rules
The USPTO is hosting a public forum on Friday, March 15th in the Madison Auditorium on the USPTO’s Alexandria campus from 1:00 to 4 PM Eastern Daylight Time to share information about its final rules for the first-inventor-to-file, micro entity, and patent fee final rules. The forum will be webcast on the AIA micro-site. Originally, the USPTO planned this forum to occur on Friday, March 8th from 10:00 AM to 12:30 PM Eastern Daylight Time. The agency is changing the date/time of the forum to enable webcast participation by West coast stakeholders.
Here is the event agenda along with instructions for viewing the webcast.
WebEx Webinar Access Information
Event number: 996 254 133
Event password: 123456
Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=996254133&t=a
I encourage you to attend the public forum so that you will understand the final rules and guidance for the first-inventor-to-file, micro entity, and patent fee provisions. You also will have the opportunity to ask questions and interact with agency experts on these topics.
Posted at 02:44PM Feb 25, 2013 in Implementation Activities/Roadshows |
From Janet Gongola, Patent Reform Coordinator: USPTO Publishes Final Rules and Guidance to Implement First-Inventor-to-File Provision
On February 14, 2013, the USPTO published final rules and guidance in the Federal Register implementing the first-inventor-to-file provision. This provision becomes effective on March 16, 2013.
- First-Inventor-to-File Final Rules (78 Fed. Reg. 11024, February 14, 2013)
- First-Inventor-to-File Final Guidance (78 Fed. Reg. 11059, February 14, 2013)
Publication of the first-inventor-to-file final rules and guidance concludes the agency’s rulemaking for provisions that become effective in March 2013. It likewise concludes the agency’s rulemaking for the America Invents Act.
To discuss the first-inventor-to-file final rules and guidance, the agency is hosting a public forum on Friday, March 8, 2013 in the Madison Auditorium on the USPTO’s Alexandria campus. The forum will run from 10:00 AM to 12:30 PM Eastern Daylight Time and will be webcast on the AIA micro-site. Instructions for viewing the webcast are forthcoming. In addition to the first-inventor-to-file final rules and guidance, the agency will address its new patent service fees and the micro entity discount, both of which go into effect on March 19, 2013. I encourage you to attend this forum, learn about the last provisions of the America Invents to be implemented, and have the opportunity to ask questions.
Posted at 10:47AM Feb 14, 2013 in Rulemaking |
From Janet Gongola, Patent Reform Coordinator: Tips for Using a Substitute Statement, Correcting Inventorship, Changing/Updating Inventor Names or Their Order, and Filing USPTO Inventor’s Oath or Declaration Forms
The inventor’s oath or declaration provision, which became effective on September 16, 2012, streamlined many aspects of filing an inventor’s oath or declaration. In an earlier post from November 2012, we discussed the simplified content required to be included in an inventor's oath or declaration and delayed submission of an inventor’s oath or declaration, among other topics. Here, we offer additional guidance regarding the use of a substitute statement, which can be filed in lieu of an oath or declaration. Additionally, we address the process for correcting inventorship and changing/updating inventor names or the order of the names of joint inventors. Lastly, we provide instructions for completing select USPTO inventor oath or declaration forms as well as five example fact patterns with an explanation of how to determine what inventor’s oath or declaration related documents must be filed with the USPTO for each.
Use of a Substitute Statement
Section 4(a) of the AIA amends 35 U.S.C. § 115 to allow a non-inventor applicant to file a substitute statement in place of an inventor’s oath or declaration under permitted circumstances in applications filed on or after September 16, 2012. The permitted circumstances include where an inventor is deceased, legally incapacitated, cannot be located after diligent effort, or refuses to sign an oath or declaration. A non-inventor applicant who may file a substitute statement includes: (i) the legal representative (e.g., executor, administrator, heirs) of a deceased or legally incapacitated inventor pursuant to 37 C.F.R. § 1.43; (ii) a joint inventor(s) under 37 C.F.R. § 1.45 on behalf of an inventor who refuses to join in a patent application or cannot be found or reached after diligent effort under 37 C.F.R. § 1.45; (iii) an assignee or obligated assignee under 37 C.F.R. § 1.46; or (iv) a person who otherwise shows sufficient proprietary interest in the matter after the USPTO grants an applicant’s petition under 37 C.F.R. § 1.46.
The table below summarizes the requirements that a non-inventor applicant must satisfy for a substitute statement:
Requirements for a Substitute Statement
Demonstrate compliance with oath or declaration requirements in
Identify who is executing the substitute statement per
Identify why the executing person may submit a substitute statement per 37 CFR 1.64(b)(3)
Identify the permitted circumstances under which the executing person is filing the substitute statement (i.e., whether the inventor is deceased, is under a legal incapacity, cannot be found or reached after a diligent effort was made, or has refused to execute the oath or declaration)
Identify information about each inventor per 37 CFR 1.64(b)(4)
Acknowledge penalties and punishment per 37 CFR 1.64(e)
Contain an acknowledgement that any willful false statement made in a substitute statement is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both.
Notably, there is certain information that a non-inventor applicant need not include with a substitute statement. First, a non-inventor applicant need not submit proof of the permitted circumstance to file a substitute statement (e.g., inventor’s death certificate to establish that a named inventor is deceased). Additionally, a non-inventor applicant is not required to state in the substitute statement that he/she has reviewed and understands the contents of the application, including the claims. Nevertheless, the non-inventor applicant should indicate review and understanding given that he/she is under a duty to disclose to the USPTO all known information that is material to the patentability of the claimed invention as defined in 37 C.F.R. 1.56.
Finally, a non-inventor applicant may postpone filing a substitute statement until the application is otherwise in condition for allowance (except for reissue applications).
Process for Correcting Inventorship and Changing/Updating an Inventor’s Name or the Order of Joint Inventors’ Names
The USPTO rules enable an applicant to correct inventorship where an application or patent sets forth improper inventorship and where the prosecution of an application results in the need to add or delete one or more inventors, for instance, due to the addition or deletion of claims or an amendment to the claims. The USPTO rules likewise permit an applicant to change or update a particular inventor’s name if his/her legal name has changed (e.g., due to marriage), or an inventor’s name contains an error (e.g., typographical or transliteration mistake or the reversal of family or given names). Finally, the USPTO rules allow an applicant to adjust the order of the names of joint inventors (e.g., to control the order of names on a printed patent). An applicant may effect a correction of inventorship or change/update to an inventor’s name or the order of joint inventors’ names regardless of the filing date of the application.
The table below details the requirements to make a correction of inventorship or change/update an inventor’s name or the order of joint inventors’ names:
Type of Correction or Change
Required Documents for Submission to USPTO
Non-provisional patent application
Adding or deleting inventor(s)
Note: For applications filed prior to 9/16/12, where a 37 CFR 1.48(a) request is filed after 9/16/12, the inventor’s oath/declaration must be compliant with the prior version of 37 CFR 1.63, including the requirement to identify the entire inventive entity. However, only the added inventor needs to execute the oath/declaration identifying the entire inventive entity.
Correcting or updating the name of any inventor
Changing the order of the names of joint inventor
Provisional patent application
Adding or deleting inventor(s)
Correcting or updating the name of any inventor
Note: The change in order of the names of inventors in a provisional application is not provided for since provisional applications do not become application publications or patents.
A request under 37 CFR 1.48(d) to correct the inventorship, or to correct or update the name of an inventor, that identifies each inventor by their legal name.
Note: The request must be signed by either:
(i) a patent practitioner who is of record or acting in a representative capacity; or
(ii) the applicant (where the applicant is a juristic entity, the request must be signed by a patent practitioner).
Also note: An ADS is not required.
Note: 35 U.S.C. 256 does not permit waiver of any of these requirements. Where compliance is not possible, any correction of inventorship would need to be done via a reissue application or through court order.
Also note: For applications filed before 9/16/12, the prior version of 37 CFR 3.73(b) applies.
Instructions Available for USPTO Inventor Oath or Declaration Forms
The USPTO developed a series of inventor oath or declaration forms that may be used by inventors to fulfill the inventor’s oath or declaration requirement of the AIA; the agency previously released these forms in September 2012. The forms are located at www.uspto.gov/forms. We recently added instructions for how to complete the most commonly used inventor’s oath or declaration forms. For example, instructions are available for Form AIA/01, which is a declaration for a utility or design application when an application data sheet is filed in the application, and Form AIA/02, which is a substitute statement filed in lieu of an inventor’s oath or declaration for a utility or design application. We encourage you to consult these instructions for questions about the content of the forms.
Inventor’s Oath or Declaration Examples
The Office is providing four examples to aid applicants in determining which inventor’s oath or declaration forms must be submitted to the agency for an application filed on or after September 16, 2012. Each example sets forth a hypothetical fact pattern followed by the Office’s recommendation of the inventor’s oath or declaration and other related forms to be filed and those forms properly completed. The examples are intended to be illustrative of commonly encountered fact patterns.
>> Download Inventor’s Oath or Declaration Examples [PDF – 8.8 MB]
Posted at 05:04PM Jan 07, 2013 in Miscellaneous |
From Janet Gongola, Patent Reform Coordinator: Tips for Filing a Compliant Supplemental Examination Request
Since September 16, 2012, the agency has received six requests for supplemental examination. (Please note that the first several control numbers (96/000,001 to 96/000,003) were used by the Office to test the filing system.) We thought you may be interested in more details about these filings, especially in case you are thinking about filing one in the future.
Upon receipt of a request for supplemental examination, the request is reviewed in the Central Reexamination Unit (CRU) for compliance with filing date requirements (e.g., 37 CFR 1.610). If a request is not compliant with filing date requirements, it is not made public; rather, the patent owner is alerted about the non-compliance and has an opportunity to correct the defect. If a request is compliant, then it is assigned a filing date and is available to the public. At the same time, the request is sent to an examiner who performs the supplemental examination and decides if reexamination should be ordered.
In reviewing the supplemental examination requests received so far, the Office has found that some were non-compliant with the filing date requirements. The most common reason for non-compliance was the failure to provide a separate, detailed explanation of the relevance and manner of applying each item of information to each claim identified in the request (37 CFR 1.610(b)(5)). For this reason, we wanted to provide additional guidance to assist patent owners in meeting the requirement for a separate, detailed explanation requirement.
A separate, detailed explanation required by 37 CFR 1.610(b)(5) must state how each item of information is applicable to each claim limitation. A general statement of relevance that is not tied to any particular claim limitation is not sufficient to meet the requirement. The explanation, however, does not need to positively state that an item of information “teaches” a limitation, but instead that it has teachings that a reasonable examiner might view as important to that limitation. The explanation should include citations to particular portions or figures in the item of information in which the relevant teachings are located. Patent owners are encouraged to be as comprehensive as possible in the explanation. This allows for the patent owner to frame the issues and assists the examiner in focusing on the pertinent issues to better determine whether a substantial new question of patentability (SNQ) is raised. Generally, the guidance provided in MPEP 2214 for the content of a request for ex parte reexamination is a good resource.
The Office will assume that each item of information is applied to each claim requested, unless otherwise specified. For instance, a request, which asks for supplemental examination of claims 1-10 and cites to 5 items of information, must provide separate, detailed explanations of how each of the five items of information applies to claims 1-10. If, on the other hand, the patent owner wishes supplemental examination for claims 1-5 based on the first two items of information and supplemental examination for claims 1-10 based on the next three items of information, the patent owner must clearly indicate which items of information are to be applied to which claims. The patent owner can provide such an indication through use of (i) headings, as discussed below; (ii) the listing provided in fulfillment of the requirements of 37 CFR 1.610(b)(4); or (iii) a table of contents.
Additionally, a separate, detailed explanation is required for each dependent claim for which supplemental examination is requested, unless the request explicitly states that the application of the item of information to the independent claim is being relied upon as the explanation for the dependent claim(s). For example, the request may state: “Patent owner relies upon the explanation for claim 1 as the explanation for dependent claims 2-5.” If the patent owner relies on a proper, detailed explanation of an independent claim as the detailed explanation for the dependent claims, then the Office may limit its review of the dependent claims to the detailed explanation of the independent claim provided by the patent owner. If the request does not make an explicit statement incorporating the explanation for the independent claim or fails to provide separate explanations for the dependent claims, the Office will mail a filing date notice to inform patent owner of the deficiency.
Further, the Office recommends that a patent owner consider using headings and subheadings in the explanation section of the supplemental examination request. Headings that identify each item of information and what claims are being discussed are excellent tools to ensure clarity in the explanations. In addition, under each heading, the Office recommends using separate subheadings for each independent claim and its associated dependent claims, if applicable.
The detailed explanation should NOT state what the item of information does NOT teach. Although the rules provide for the patent owner to make such statements, the Office recommends that this optional discussion be made under a separate subheading (e.g., “Explanation under 37 CFR 1.610(c)(3)”). The review process has revealed that combining a detailed explanation with an optional discussion typically results in a lengthy discussion on why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). In other words, by combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, which will result in receiving a filing date notice of non-compliance.
Finally, the explanation requirement is NOT met by incorporating by reference a paper in another proceeding or relying on a third party’s paper submitted with the request. The explanation must be presented as the patent owner’s position. The detailed explanation in the request must stand on its own, and must reflect the opinion of the patent owner, and not that of a third party.
To assist patent owners in filing requests for supplemental examination in compliant form, the Office has compiled a “best practices” guide:
Best Practices to Meet Certain Supplemental Examination Filing Requirements (December 19, 2012)
The guide walks through the various requirements to be included in a supplemental examination request and offers tips for how to meet them. Besides this guide, information on supplemental examination requests can be found in the listing of Frequently Asked Questions.
Posted at 05:18PM Dec 19, 2012 in Miscellaneous |
USPTO Publishes Final Rule to Implement Micro Entity Provision in Federal Register
From Janet Gongola, Patent Reform Coordinator:
On Wednesday, December 19, 2012, the agency published final rules in the Federal Register to implement the micro entity provision of the America Invents Act. The final rules set forth the procedures for an applicant to claim micro entity status and to pay reduced patents fees as a micro entity. The final rules also cover procedures for an applicant to notify the Office of the loss of micro entity status and to correct payments of patent fees erroneously paid in the micro entity amount. The final rules will be effective on March 19, 2013. Here is a link to the micro entity final rules in the Federal Register:
An applicant who qualifies as a micro entity under the procedures outlined in the final rules will be eligible to pay reduced patent fees once the Office completes its fee setting rulemaking. The fee setting rulemaking is currently ongoing and is projected to be complete in the Spring 2013.
Posted at 10:18AM Dec 19, 2012 in Studies and Reports |
USPTO to Host Roundtable on Genetic Diagnostic Testing
From Janet Gongola, Patent Reform Coordinator:
The USPTO is hosting a public roundtable in connection with the Genetic Testing Study on Thursday, January 10, 2013, from 1:00 to 4:00 pm Eastern Daylight Time in the Madison Auditorium at its Alexandria campus. The public is invited to participate and share remarks. The roundtable will be webcast; details for web access are forthcoming.
Section 27 of the AIA requires the USPTO to study and make recommendations regarding effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist. In completing this study, the agency reviewed the academic and scientific literature, held two public hearings, and received twenty-seven sets of written comments. The agency determined that further discussion and analysis was needed before the agency could submit a report to Congress after reviewing the collected information, given the complexity and diversity of opinions, comments, and suggestions provided by interested parties and the important policy considerations involved. Consequently, this roundtable is designed to enable the agency to obtain additional information and fulfill its report obligations to Congress.
Additional details about the genetic testing roundtable and requirements to share commentary are available here:
Posted at 11:03AM Nov 29, 2012 in Studies and Reports |
Tips for Navigating the Inventor’s Oath or Declaration Provision
From Janet Gongola, Patent Reform Coordinator:
Beginning on September 16, 2012, the inventor's oath or declaration provision became effective. This provision simplifies several of the requirements for filing an inventor’s oath or declaration. We have summarized the changes relating to the content required to be included in an inventor's oath or declaration, the situations when an AIA-compliant inventor's oath or declaration is required, the use of an Application Data Sheet (ADS), delayed submission of an inventor’s oath or declaration, and the process for taking advantage of a combination assignment-statement document. Stayed tune for more guidance regarding other aspects of the inventor's oath or declaration provision in the coming weeks concerning the use of various USPTO forms for the inventor’s oath or declaration provision, correction of inventorship, and substitute statements.
Content for an AIA Compliant Inventor's Oath or Declaration
Section 115 of Title 35, as amended by the AIA, coupled with new USPTO rules, requires an applicant to provide less information in an inventor's oath or declaration than required by pre-AIA law. Specifically, the AIA eliminated the need for identification of the inventor’s country citizenship and a statement that the inventor is the first inventor. The list below identifies the current requirements for an inventor's oath or declaration based on the AIA:
Inventor’s name (in the case of joint inventorship, each inventor may sign his/her own oath or declaration provided that an ADS is filed with the application naming the complete inventive entity), residence, and mailing address;
Identification of the relevant application to which the oath or declaration relates;
Statement that the application was made or was authorized to be made by the declarant;
Statement that such individual believes himself/herself to be an original inventor/joint inventor of a claimed invention in the application; and
An acknowledgement of penalties that any willful false statement made in such oath or declaration is punishable under 18 U.S.C. 1001 by fine or imprisonment of not more than 5 years, or both
When to File an AIA-Compliant Inventor’s Oath or Declaration
An AIA-compliant inventor's oath or declaration is required for any application filed on or after September 16, 2012. This covers non-provisional applications, including continuing applications (i.e., continuation, continuation-in-part, divisional, and “bypass” applications) and reissue applications. A “bypass” application refers to an international (PCT) application filed as a continuing application under 35 U.S.C. 111(a) and 37 C.F.R. 1.53(b) and thus “bypassing” national stage entry under 35 U.S.C. 371. For an international (PCT) application filed before September 16, 2012, and entering the national stage on or after September 16, 2012, an AIA-compliant inventor's oath or declaration is not required. But for an international (PCT) application filed after September 16, 2012, and entering the national stage after September 16, 2012, an AIA-compliant inventor’s oath or declaration is required. The table below summarizes the situations when an AIA-compliant inventor's oath or declaration is needed.
|Type of Application||Filing Date||AIA-Compliant Inventor’s Oath or Declaration Required?|
(non-provisional applications, including continuing and reissue applications)
|U.S. filing on or after 9/16/2012||Yes|
|International “Bypass” Applications
(filed under 35 U.S.C. 111(a))
|U.S. filing on or after 9/16/2012|
|International PCT Applications
(entering National Stage under 35 U.S.C. 371)
|PCT filing on or after 9/16/2012|
Use of an Application Data Sheet (ADS)
An ADS is a document containing bibliographic information regarding an application, such as the identity of the named inventors, the identity of the applicant if different from the inventors, and any foreign priority or domestic benefit information.
An ADS must be filed with an application where: (i) submission of the inventor’s oath or declaration is to be postponed; (ii) each inventor’s oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors; (iii) there is a claim for domestic benefit (37 C.F.R. 1.78), or foreign priority claim (37 C.F.R. 1.55)(except foreign priority for national stage applications); or (iv) there is an identification of applicants other than the inventors under 37 C.F.R. 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).
As to situations (i) and (ii), the Office must know the names of all of the inventors before examination begins in order to apply the correct prior art and to make a proper double patenting determination.
As to situation (iii), the Office has centralized the location of foreign priority and domestic benefit claims to the ADS. This benefits applicants, the public, and the Office by making it easier to find this information. Further, the Office will recognize such claims only if they appear in the ADS.
As to situation (iv), the Office needs to know who the applicant is, particularly where a power of attorney is being submitted by other than the inventors.
Finally, even when an ADS is not required, it is a best practice to use an ADS to aid in the correct identification of bibliographic information on the filing receipt. An ADS must be signed by the applicant or the applicant’s representative.
Postponed Submission of an Inventor’s Oath or Declaration
Where an inventor’s oath or declaration or a signed ADS is not submitted on filing of the application, the Office will mail a notice to file missing parts requiring either an oath or declaration, or an ADS. Surcharge practice has not changed. Submission of an inventor’s oath or declaration later than the filing date of the application will cause the Office to mail a notice to file missing parts requiring a surcharge if not already paid, even where an ADS is submitted with the application on filing. Where an ADS has been submitted, the Office will not mail a missing parts notice requiring submission of the inventor’s oath or declaration. The Office may, however, mail an informational notice to notify the applicant that an inventor’s oath or declaration has not been submitted for each named inventor or that the submitted oath or declaration is non-compliant. Where the application is otherwise in condition for allowance, the Office will mail a Notice of Allowability with a 3 month non-extendable period to submit the required inventor’s oath or declaration.
Combination Assignment and Inventor’s Oath or Declaration
An assignment document may contain the statements required to be included in an inventor’s oath or declaration and thereby serve as the inventor’s oath or declaration. The Office reference to such a dual purpose document as an “assignment-statement.” If an applicant chooses to file an assignment-statement and reduce the number of documents to be submitted to the USPTO for a particular application, the applicant must record the assignment-statement in the USPTO Assignment Database.
To record an assignment-statement in the Office’s Assignment Database, the assignment recordation cover sheet must set forth the application number. Additionally, the assignment-statement must identify the application to which it relates, such as by name of the inventors, title of the invention, and the attorney docket number on the specification as filed. See MPEP 602 VI.The best practice is to file an assignment-statement electronically per the following steps. First, the applicant should file the application via EFS-Web and immediately obtain the application number. Second, on the same day that the applicant files the application, the applicant should submit the assignment-statement for recording via the Electronic Patent Assignment System (EPAS). In EPAS, the applicant should check the box on the assignment recordation cover sheet to indicate that the document is intended to have a dual purpose (i.e., as both an assignment and the inventor’s oath or declaration). Checking the box on the assignment recordation cover sheet will trigger the Office to place a copy of the assignment-statement into the application file as well as record it in the assignment database. If the assignment-statement is recorded on the same day that the application is filed, the applicant can avoid paying the surcharge for the delayed filing of the inventor’s oath or declaration.
Posted at 12:00AM Nov 13, 2012 in Miscellaneous |