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AIA Blog

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.

Friday Mar 15, 2013

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. 

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

Monday Mar 04, 2013

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

 

Monday Feb 25, 2013

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. 

 

IPR

PGR

CBM

When is a Petition Ripe?

Cannot be filed until after the later of:

  1. 9 months after the grant of a patent or issuance of a reissue of a patent; or
  2. i.          The date of termination of any post-grant review of the patent. 
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:

  • Upon issuance

 

Patents under First-Inventor-to-File Provisions:

  • 9 months after the issuance of a patent that is subject to the 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:

  • Limited prior art shall apply

 

Patents under First-Inventor-to-File Provisions:

  • Any ground
Statutory & Regulatory Requirements?

Statutory:

  1. identify all real parties in interest;
  2. i.          identify all claims challenged & all grounds on which the challenge to each claim is based;
  3. ii.          provide copies of evidence relied upon; and
  4. v.          payment of required fee

Regulatory:

  1. identify the grounds for standing;
  2. i.          provide a claim construction for each challenged claim;
  3. ii.          specifically explain the grounds for unpatentability; and
  4. v.          specifically explain the relevance of evidence relied upon.
Can a Patent Owner File a Preliminary Response to a Petition?

Yes – within three months

 

Petition Page Limit?

60 double-spaced pages 
(single spacing for Claim Charts)

80 double-spaced pages
(single spacing for Claim Charts)

 

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.

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.

First-Inventor-to-File, Micro Entity, and Patent Fee Public Forum Agenda

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.

Thursday Feb 14, 2013

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.

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.  

Monday Jan 07, 2013

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

Content

Demonstrate compliance with oath or declaration requirements in
37 CFR 1.63(a) per 37 CFR 1.64(b)(1)

  • Identify the inventor or joint inventor;
  • Identify the application;
  • Contain a statement relating to the inventor being an original inventor; and
  • Contain a statement that the application was made or authorized to be made by the person executing the substitute statement.

Identify who is executing the substitute statement per
37 CFR 1.64(b)(2)

  • Identify the person executing the substitute statement;
  • Identify the relationship (e.g., assignee) that the executing person has with the inventor or joint inventor; and
  • Provide the residence and mailing address (where mail is customarily received) of the person signing the substitute statement UNLESS such information is supplied in an Application Data Sheet (ADS) complying with 37 CFR 1.76.

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)

  • Supply an ADS complying with 37 CFR 1.76;

    - OR-
  • Identify each inventor by their legal name; and
  • For each inventor who is not deceased or under a legal incapacity, identify the last known mailing address where the inventor customarily receives mail, and the last known residence, if an inventor lives at a location which is different from where the inventor customarily receives mail.

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:

Document type

Type of Correction or Change

 

Required Documents for Submission to USPTO

Applicable Fee

Non-provisional patent application

 

Adding or deleting inventor(s)

 

  • A request under 37 CFR 1.48(a) to correct or change the inventorship;
  • A signed ADS including inventor information for all actual inventors as required by 37 CFR 1.76(b)(1); and
  • An executed inventor’s oath/declaration under 37 CFR 1.63 for any added inventors (37 CFR 1.48(b)).

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. 

$130 per
37 CFR  1.17(i)

 

Correcting or updating the name of any inventor

 

 

  • A request under 37 CFR 1.48(f) to correct or update the name of an inventor; and
  • A signed ADS including the corrected or updated inventor information as required by 37 CFR 1.76(b)(1).

Changing the order of the names of joint inventor

  • A request under 37 CFR 1.48(f) to change the order of names of joint inventors; and
  • A signed ADS including the new desired order of inventors as required by 37 CFR 1.76(b)(1).

Provisional patent application

Adding or deleting inventor(s)

 

AND

 

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.

$50 per
37 CFR  1.17(q)

Patent

Correcting inventorship

  • A request to correct inventorship under 37 CFR 1.324;
  • A statement from each person being added as an inventor AND each person currently named an inventor  – each statement either (i) agreeing to the change of inventorship; or (ii) stating that the person has no disagreement regarding the requested change; and
  • A statement from all assignees (of persons who are submitting a statement of agreement) agreeing to the change of inventorship in the patent – each assignee statement complying with 37 CFR  3.73(c).

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.

$130 per
37 CFR  1.20(b)

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]

Wednesday Dec 19, 2012

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.

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:

Micro Entity Final Rule (77 Fed. Reg. 75019, December 19, 2012)

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.

Thursday Nov 29, 2012

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:

77 Fed. Reg. 71170, November 29, 2012

Tuesday Nov 13, 2012

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?
U.S. Application
(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.

Monday Oct 22, 2012

Tips for Filing a Compliant Preissuance Submission

From Janet Gongola, Patent Reform Coordinator:

Since September 16, 2012, the agency has received a steady stream of preissuance submissions.  Specifically, over ninety preissuance submissions have been filed under new rule 37 CFR 1.290 in the first month.  We thought you may be interested in more details about these submissions, especially in case you are thinking about filing one in the future.

Nearly all preissuance submissions received to date were filed electronically via the USPTO’s new dedicated interface in EFS-Web system.  The Office encourages the use of EFS-Web for filing a preissuance submission because the system walks a user through the various items of information required for a preissuance submission.  Additionally, the system makes a timeliness calculation to determine whether the submission is made within the statutorily permitted filing window.  Thus, a third party is less likely to file a non-compliant preissuance submission when using EFS-Web over postal mail.

Upon receipt of a preissuance submission, the agency screened the submissions received to date for compliance with 35 U.S.C. 122(c) and 37 CFR 1.290 before making them of record in the designated application files.  While the majority of submissions were found to be compliant, a few were rejected as non-compliant.  The most common reason for non-compliance was an improper concise description of relevance.  For this reason, we wanted to review the requirements for a concise description of relevance.

A concise description of relevance should set forth facts explaining how a particular printed publication is of potential relevance to the examination of the application in which the submission has been filed.  This is done, most effectively, by (i) pointing out relevant pages or lines of the respective printed publication where the relevant issues raised by the text are located; and (ii) providing a focused description of the import of the cited text to draw the examiner’s attention to the issues.  Also, a concise description may be presented in narrative or claim chart form.  A compliant concise description in narrative form may state the following:

Publication X and Publication Y both disclose machines that perform the same function as the machine recited in claim 1.  The machine set forth in Publication X includes many of the same parts discussed in the specification of this application.  In the first embodiment depicted in Figure 2 and discussed on page 5, Publication X expressly teaches a machine that includes element A of claim 1.  See lines 7-14 on page 5 of Publication X.  Publication Y teaches a machine having element B of claim 1.  See lines 1-3 on page 6 of Publication Y.  Publication Y further teaches the benefits of using element B in this type of a machine.

Alternatively, a concise description in claim chart form may map various portions of a submitted document to different claim elements.

 Claim 1  Publication X
 Element A  As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1.  See lines 7-14 on page 5 of publication X.
 Element B  The first embodiment also includes element B of claim 1.  See lines 1-3 on page 6 of publication X.

A concise description of relevance does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable.  A concise description of relevance likewise is not an invitation for a third party to propose rejections of the claims or set forth arguments relating to an Office action in the application or to an applicant’s reply to an Office action in the application.  Further, merely annotating or highlighting the copy of a particular printed publication will not be deemed a proper concise description of relevance.  Additional information on the concise description of relevance requirement can be found in the listing of Frequently Asked Questions available at: http://www.uspto.gov/aia_implementation/faq.jsp#heading-12.

Lastly, for a preissuance submission filed electronically via the EFS-Web system, a concise description of relevance may be entered as text in the provided text box on the “Application Data” screen.  Alternatively, the concise description of relevance may be uploaded as a separate document on the “Attach Documents” screen.  When entering a concise description of relevance in the provided text box, up to 250 characters may be entered.  A concise description of relevance that exceeds 250 characters must be uploaded as a separate document on the “Attach Documents” screen.  When filed as a separate paper, the concise description of relevance should clearly identify the printed publication to which it pertains.  While a concise description of relevance is not required to be provided as a separate paper, the Office highly recommends this practice to ensure that the screener and the examiner may readily identify and consider it.

Friday Oct 19, 2012

USPTO Releases Guide for Electronic Filing of Preissuance Submissions

From Janet Gongola, Patent Reform Coordinator:

As of September 16, 2012, the USPTO is accepting submissions of printed publications by a third party of potential relevance to the patentability of another's claimed invention under the preissuance submission provision.  Targeted preissuance submissions by third parties can place the most relevant art into the record of a patent application.  In turn, an examiner will be positioned to make the most informed and efficient patentability determination possible, thereby either advancing an application to grant or issuing a rejection to prevent a low quality patent from issuing. 

A third party may file a preissuance submission by paper or electronically; submission by fasimile is not permitted.  The USPTO encourages the use of electronic submissions via EFS Web for several reasons.  First, EFS Web guides a third party through the content requirements for a preissuance submission to ensure that the third party makes a compliant submission.  Second, the EFS Web system calculates the timeliness of the submission to determine whether the submission is being made during permitted statutory time window.  Lastly, the Office will consider an electronic preissuance submission filed through EFS Web faster because a paper submission must be processed into electronic form before it is provided to the examiner.

To facilitate electronically filing a preissuance submission using EFS Web, the Office has created an EFS Web Quick Start Guide.  This guide outlines the steps that a third party must follow to make an electronic submission.  Check out the guide to simplify your preissuance submissions:

EFS Web Quick Start Guide

Friday Oct 05, 2012

USPTO Reopens the First-Inventor-to-File Comment Period

From Janet Gongola, Patent Reform Coordinator:

On July 26, 2012, the USPTO published a notice of proposed rulemaking and a notice of proposed examination guidelines to implement the first-inventor-to-file (FITF) provisions of the AIA.  The notices set a comment deadline date of October 5, 2012.  The USPTO has received several requests for additional time to submit comments.  Therefore, the USPTO is reopening the comment period to provide interested members of the public with an additional opportunity to submit comments to the USPTO.

The new deadline for receipt of written comments in response to both the notice of proposed rulemaking and the notice of proposed examination guidelines to implement the first-inventor-to-file provisions of the AIA is November 5, 2012.

Thursday Oct 04, 2012

USPTO Concludes Roadshows and Releases Roadshow Videos

From Janet Gongola, Patent Reform Coordinator:

The USPTO has concluded its AIA roadshows for September 2012.  Thanks to all who attended and supported our outreach during the one-year anniversary month!

We enjoyed stops  in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City.  A total of more than 1000 stakeholders from the independent inventor, private practitioner, and in-house counsel communities joined us for good dialogue and questions about the provisions and final rules that became effective on September 16, 2012.   Highlights of our activities in each city are available here:

For stakeholders who were not able to attend a roadshow in-person or via webinar, we are releasing a video of the program with segments recorded in Alexandria, Minneapolis, and Los Angeles.    You may view the full day or access individual topics:

 In addition to these video links, the agency has published the roadshow slides as well as a very detailed reference guide to provide even more information about the newly-effective AIA provisions and final rules:

Lastly, don't forget to use the AIA telephone hotline and email for future AIA-related questions:

Monday Sep 17, 2012

USPTO Releases Fillable Forms and Quick Reference Guide for How to File an Inventor's Oath or Declaration Post-AIA

From Janet Gongola, Patent Reform Coordinator:

The inventor's oath or declaration provision of the AIA is effective on September 16, 2012, and introduces changes that offer flexibility for filing an inventor's oath or declaration.  To help inventors and patent applicants navigate the changes, the USPTO has developed an Inventor's Oath or Declaration Quick Reference Guide.  The guide identifies when an application data sheet must be filed, when a substitute statement can be used, and how an assignment may be used as the inventor's oath or declaration. 

Inventor's Oath or Declaration Quick Reference Guide

Besides the Inventor's Oath or Declaration Quick Reference Guide, the USPTO also has created fillable forms for oaths and declarations, substitute statements, and application data sheets.  These forms are available on the USPTO Forms micro-site.

USPTO Forms

I encourage you to consult the guide and fillable forms when submitting an oath or declaration for applications filed on or after September 16, 2012.  Also, if you have questions regarding the inventor's oath or declaration provision or USPTO implementing rules, USPTO help is available at 1-855-HELPAIA or HelpAIA@uspto.gov.

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