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.
USPTO to Host First-Inventor-to-File Forum on Monday, March 17, 2014
The United States Patent and Trademark Office (USPTO) will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA) on the first anniversary of the FITF implementation. The forum will be held on Monday, March 17, 2014, at the USPTO headquarters, Madison Auditorium, in Alexandria, Virginia from 12:30 to 5 pm ET. Members of the public are invited to attend in person or via webcast (access information below).
The forum is intended to bring stakeholders together with USPTO subject matter experts to discuss the FITF provisions. It will begin with a thirty-minute informal meet-and-greet session, allowing participants to chat with the experts, followed by an informational program covering the following topics:
- Review of FITF filings made to date
- Explanation of whether/when an application will be examined under the FITF statutory framework
- Overview of the FITF statutory framework and tips on responding to prior art rejections
- Tour of the AIA (FITF) website
- Q&A panel discussion
Pre-registration is not required; seating is first-come, first-served. CLE is not available.
Webcast access instructions:
- Event number: 996 792 614
- Event password: 12345
- Event address: https://uspto-events.webex.com/uspto-events/onstage/g.php?t=a&d=996792614
Posted at 04:08PM Feb 27, 2014 in Implementation Activities/Roadshows |
Message From Administrative Patent Judges Sheridan Snedden And Jacqueline Bonilla: Deep Dive Into A Patent Owner Preliminary Response In An Inter Partes Review Proceeding Before The Patent Trial And Appeal Board
Inter partes review (IPR) proceeding provides an opportunity to challenge the patentability of claims in an issued patent for anticipation or obviousness under 35 U.S.C. §§ 102 and 103, respectively, based on prior art patents or printed publications. An IPR proceeding is conducted before the Patent Trial and Appeal Board and is divided into two stages: (i) a preliminary stage; and (ii) a trial stage. The preliminary stage begins with the filing of a petition to institute a trial. To proceed to the trial stage, a petition must demonstrate that there is a reasonable likelihood that the petitioner would prevail as to at least one of the challenged claims. A patent owner has a waivable right to file a preliminary response to the petition setting forth reasons why trial should not be instituted. The preliminary stage ends with a decision from the Board on whether to institute a trial.
A preliminary response provides a patent owner with an opportunity to be heard before the Board decides whether to institute trial. If the petition does not meet the standard set for instituting a trial, the petition will be denied, regardless of a preliminary response. That said, a preliminary response may help the Board when deciding whether to institute a trial. To provide the most benefit, a preliminary response should identify clear procedural and substantive reasons why the petition should be denied. To follow is a discussion of potential arguments that a patent owner might raise in a preliminary response, if appropriate, to help the Board’s consideration.
Petitioner Is Statutorily Barred from Pursuing an IPR
A preliminary response may challenge the standing of a petitioner under 35 U.S.C. 315.
Under 35 U.S.C. 315(a)(1), a patent owner may provide evidence that the petitioner filed a civil action challenging the validity of a claim of the patent, e.g., in a declaratory judgment action in district court, prior to filing the petition. Such action by the petitioner bars the institution of an IPR under 35 U.S.C. § 315(a)(1). Board decisions providing guidance on the application of § 315(a)(1) include the following:
- Anova Food, LLC v. Sandau, IPR2013-00114, Paper No. 17 (PTAB) (a civil action for a declaratory judgment dismissed with prejudice filed by a predecessor-in-interest to the petitioner bars an IPR under § 315(a)(1)).
- Cyanotech Corporation v. The Board Of Trustees of the University of Illinois, IPR2013-00401, Paper No. 30 (PTAB) (a civil action involuntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
- Clio v. The Procter and Gamble Co., IPR2013-00438, Paper No. 9 (PTAB) (a civil action voluntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
- Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper No. 24 (PTAB) (a civil action for a declaratory judgment of non-infringement is not a civil action challenging the validity of a patent barring an IPR under § 315(a)(1)).
Alternatively, a patent owner may provide evidence that the petitioner is barred from challenging the patent owner’s claims under 35 U.S.C. § 315(b). As outlined in § 315(b), the Board may not institute an IPR if the petition was filed more than one year after the petitioner, real party in interest, or a privy, was served with an infringement complaint. Board decisions providing guidance on the application of § 315(b) include the following:
- Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 (PTAB) (a dismissal without prejudice nullifies the effect of service for purposes of § 315(b)).
- St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper No. 29 (PTAB) (a counterclaim is a “complaint alleging infringement of the patent” within the meaning of § 315(b)).
- Accord Healthcare v. Eli Lilly and Co., IPR2013-00356, Paper No. 13 (PTAB) (service of a second complaint does not nullify the effect of a first served complaint for purposes of § 315(b)).
- BioDelivery Sciences Int’l, Inc. v. MonoSol RX, LLC, IPR2013-00315, Paper No. 31 (PTAB) (challenged claims amended by a reexamination certificate issued after service of the complaint does not affect the “date on which the petitioner . . . is served with a complaint alleging infringement of the patent” under § 315(b)).
Highlight Weaknesses in Petitioner’s Case of Unpatentability
The Board may not authorize a trial where the information presented in the petition fails to meet the requisite standard for instituting a trial—that is, fails to establish a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claim. 35 U.S.C. § 314(a). Thus, it is helpful to the Board if a preliminary response explains carefully the weakest parts of petitioner’s unpatentability positions. For example, the preliminary response may include a detailed discussion or technical analysis relating to:
- How any asserted references are not, in fact, prior art;
- How asserted references lack at least one material limitation in one or more challenged claims; or
- How an asserted reference teaches away from a combination of elements, as advocated by petitioner. See, e.g., Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper No. 9 (PTAB).
Petitioner’s Claim Construction is Improper
In an IPR proceeding, the Board construes claim terms according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012). Using this standard, a preliminary response may help the Board by carefully explaining claim construction positions. The patent owner may wish to point to the specification, dictionary definitions, as well as logic in relation to the claims as a whole, to support a conclusion that petitioner’s claim construction is, for example, unreasonably broad. In interpreting claims, however, one must take care to note the fine line between interpreting claims in light of the specification and improperly reading limitations into the claims from the specification. Absent claim language carrying a clear narrow meaning, the Board will not limit a claim based on the specification unless it expressly disclaims the broader definition. See, e.g., Ariosa Diagnostics, Inc. v. Verinata Health, Inc., IPR2013-00277, Paper No. 10 (PTAB).
Petition Contains Prior Art or Arguments Were Previously Presented to the Office.
Under 35 U.S.C. § 325(d), a preliminary response may wish to address whether the same or substantially the same prior art and arguments were previously presented to the Office. Board decisions providing guidance on the application of § 325(d) include the following:
- SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00581, Paper No. 15 (PTAB) (denying a petition as to grounds based upon substantially the same prior art and arguments as set forth in a prior IPR petition).
- Oracle Corporation v. Clouding IP, LLC, IPR2013-00100, Paper No. 8 (PTAB) (granting a petition where new arguments and supporting evidence were presented that shed a different light on references previously considered during prosecution).
Petition Fails To Identify All Real Parties-in-Interest
Under 35 U.S.C. § 312(a)(2) and 37 CFR § 42.8, an IPR petition must identify all real parties-in-interest or privies. A preliminary response may help the Board by pointing out how the petition fails to identify all real parties-in-interest. The Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party-in-interest. Whether a non-party is a “real party-in-interest” or “privy” is a “highly fact-dependent question” that takes into account how courts have used the phrases generally to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.” Trial Practice Guide, 77 Fed. Reg. at 48759. One consideration is whether a non-party exercises, or could have exercised, control over a petitioner’s participation in an IPR proceeding. Id. at 48759-60, 48695. Other considerations may include whether a non-party, in conjunction with control, funds and directs the proceeding. Id. at 48760. Board decisions providing guidance on real party-in-interest or privy include the following:
- Butamax™ Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00214, Paper No. 11 (PTAB)(“‘common interest among litigation defendants seeking to invalidate or defend against enforcement of a patent . . . does not translate ipso facto into each defendant being a real party in interest where a request for reexamination is filed by only one of the defendants in the litigation’”) (citations omitted).
- Chimei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00068, Paper No. 7 (PTAB) (patent owner failed to provide persuasive evidence that each co-defendant in a related litigation exercised control and provided funding of the IPR petition).
Supporting Evidence for the Preliminary Response
The preliminary response may cite evidence supporting the patent owner’s contentions. Such evidence may include previously existing declarations, trial testimony, deposition testimony, and expert reports. A preliminary response may not, however, present new testimonial evidence (i.e., testimonial evidence prepared specifically for the purpose of the IPR proceeding) without authorization from the Board. Additionally, flooding the Board with evidence in a preliminary response is not helpful. Rather, a preliminary response should aid the Board in navigating evidence of record cleanly and quickly.
Posted at 11:39AM Feb 24, 2014 in Congressional Testimony |
Message From Janet Gongola, Patent Reform Coordinator: Update On The Frequency, Compliance, And Content Of Preissuance Submissions
Since the preissuance submission provision of the AIA went into effect seventeen months ago, members of the public have been able to submit prior art into another’s pending patent application if certain minimal requirements are satisfied. The Office has received a total of 1,414 preissuance submissions (also referred as “third-party submissions”) as of January 17, 2014. The submissions have arrived in all technology centers with the largest number in TC1700, which includes areas related to mechanical engineering, and the fewest in TC 2400, which includes areas related to electrical engineering. Figure 1 below shows the distribution of submissions across technology centers.
Proper Preissuance Submissions
Most third-party submissions received as of January 17, 2014, have met the eligibility requirements and been categorized by the Office as proper. Figure 2 below shows the percentage of proper and improper submissions, and Figure 3 below shows the proper submissions categorized by technology areas. The most common reasons for non-compliance relate to a failure to meet the timing, concise description of relevance, and signature requirements. Statistics show, however, that the number of improper submissions is leveling off, and in turn, that the number of proper submissions is rapidly increasing.
Distribution of Documents in Proper Preissuance Submissions
In the total number of proper preissuance submissions received as of January 17, 2014, the public presented 3,339 documents for consideration by the Office. Figure 4 below shows the submitted documents categorized by type.
Third-Party Submission Usage by Examiners
When the Office receives a compliant preissuance submission in a particular application, the examiner must consider the submission as a matter of course. For the submissions made as of January 17, 2014, examiners have relied upon the prior art contained in them to make a rejection in 12.50% of the impacted applications. Figure 5 below depicts all the applications where a rejection issued after a proper submission was received. Additionally, in the applications where rejections were made based upon the art contained in a preissuance submission, the examiner rejected 50% of the time for obviousness under 35 U.S.C. 103; 18% of the time for anticipation under 35 U.S.C. 102; and the remainder of the time for both obviousness and anticipation. Figure 6 below features the applications having rejections using third-party submissions broken down by the type of rejection under the statute. Lastly, with respect to the type of rejection made after receipt of a proper third-party submission, most were First Actions on the Merits followed by Final Rejections.
The public has shown interest in locating potential prior art for submission to the Office by utilizing crowdsourcing Web sites, such as Ask Patents by Stack Exchange. Indeed, members of the public have been posting requests for prior art in published applications on these sites. The Office feels confident that the number of proper third-party submissions will continue to increase as users become more familiar with the ability to make such submissions as well as the resources available to locate prior art such as crowdsourcing. The Office will continue to monitor the number third-party submissions and periodically update statistics on these filings.
Posted at 11:34AM Feb 24, 2014 in Studies and Reports |
Message From Janet Gongola, Patent Reform Coordinator: Request for Public Comments on Methods to Study Diversity of Patent Applicants
The America Invents Act requires the USPTO to establish methods for studying the diversity of patent applicants. In March 2012, the USPTO mapped out an step-wise approach for doing so. As a first step, we shared our public USPTO patent data with the Census Bureau to obtain demographic information for patent applicants who previously filed applications with the Office during a select time period.
Now, as a second step, the agency is seeking public feedback about how effective different approaches would be for collecting diversity information from patent applicants in the future and what information would be appropriate to collect. Written comments are due by January 31, 2014. To read the USPTO’s full request for information, including how to provide comments, click here.
Once the agency has reviewed all input collected from the first match with Census data and the request for information, we will decide what further steps to take to be able to accurately describe patent applicant diversity information consist with the AIA.;
Posted at 06:05PM Dec 05, 2013 in Congressional Testimony |
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 |