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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.

Monday Sep 10, 2012

USPTO Releases Roadshow Presentation Materials

From Janet Gongola, Patent Reform Coordinator:

Today, on September 10, 2012, the USPTO starts its roadshow tour in Minneapolis, Minnesota to discuss new legal provisions and our implementing final rules that go into effect on September 16, 2012.  We are pleased to be visiting seven additional cities across the United States as well, including Alexandria, VA., Atlanta, Denver, Detroit, Houston, Los Angeles, and New York City.  To help you make the most of the roadshows, the USPTO is releasing is roadshow presentation materials.  Additionally, we are releasing a reference guide that provides further details about the new provisions of law and final rules.  Both documents are available here:

More information about the roadshows, such as venues and an agenda, is available at the link below.  Also, we will be webcasting live from Minneapolis; Alexandria, Va.; and Los Angeles.  Webcast access info is available at the link below.  Don’t miss these opportunities to learn how to navigate the new patent law from agency experts; there will be multiple opportunities to interact with them throughout the day for our live and webinar audiences.  

Roadshow page

USPTO Releases Roadshow Presentation Materials

From Janet Gongola, Patent Reform Coordinator:

Today, on September 10, 2012, the USPTO starts its roadshow tour in Minneapolis, Minnesota to discuss new legal provisions and our implementing final rules that go into effect on September 16, 2012.  We are pleased to be visiting seven additional cities across the United States as well, including Alexandria, Va., Atlanta, Denver, Detroit, Houston, Los Angeles, and New York City.  To help you make the most of the roadshows, the USPTO is releasing is roadshow presentation materials.  Additionally, we are releasing a reference guide that provides further details about the new provisions of law and final rules.  Both documents are available here:

More information about the roadshows, such as venues and an agenda, is available at the link below.  Also, we will be webcasting live from Minneapolis; Alexandria, Va.; and Los Angeles.  Webcast access info is available at the link below.  Don’t miss these opportunities to learn how to navigate the new patent law from agency experts; there will be multiple opportunities to interact with them throughout the day for our live and webinar audiences.  

Roadshow page

USPTO to Publish Final Rules for Derivation Provision

From Janet Gongola, Patent Reform Coordinator:

The USPTO announces that on Tuesday, September 11, 2012, it will publish final rules implementing the derivation provision in the Federal Register.  Today, on Monday, September 10, 2012, these final rules are available in the Federal Register Reading Room and here.  The derivation provision is not effective until March 16, 2013.

Changes to Implement Derivation Proceedings

Derivation proceedings will be conducted by the Board of Patent Appeals and Interferences, to be renamed the Patent Trial and Appeal Board as of September 16, 2012.  Previously, the USPTO published General Administrative Trial Final Rules and a Trial Practice Guide in the Federal Register, which also address derivation proceedings.  I recommend consulting these two documents for a more complete understanding of how the Board will conduct derivation proceedings:

Additionally, the USPTO is hosting roadshows in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City to discuss these final rules in September 2012.  The first roadshow will be held on Monday, September 10, from Minneapolis; it will be webcast and recorded for later viewing.  The second and third roadshows from Alexandria on Wednesday, September 12 and from Los Angeles on Friday, September 14 also will be webcast and recorded for later viewing.  More information about the roadshows, including webcast instructions, venue locations, and an agenda, can be found here:

Roadshow Page

USPTO Establishes Patent Ombudsman Program for Small Business Concerns

From Janet Gongola, Patent Reform Coordinator:

The America Invents Act requires the USPTO to establish and maintain a Patent Ombudsman Program for Small Business Concerns using its existing resources.  The AIA specifies that the program provide support and services relating to patent filings for small business concerns and independent inventors and be available by September 16, 2012.  In accordance with the AIA, the USPTO has established such a program to be known as the Program for Small Business Concerns: 

Program for Small Business Concerns

In forming the new Program for Small Business Concerns, the USPTO has combined the efforts of the existing Office of Innovation Development and the existing Patents Ombudsman Program.  This new Small Business Concerns program will provide through the two offices a full range of services at all stages of the patent process, including before an application is filed, while an application is pending at the USPTO, and after a patent has issued.  Here is more information about the Office of Innovation Development and the Patents Ombudsman Program:

Thursday Sep 06, 2012

USPTO Publishes Proposed Patent Fee Rules in the Federal Register and Releases Companion Fee Related Documents

From Janet Gongola, Patent Reform Coordinator:

On September 6, 2012, the USPTO published proposed rules in the Federal Register setting or adjusting fees for patent related services.  In proposing patent fees through this rulemaking, the agency is exercising its fee setting authority established under Section 10 of the AIA.  The proposed patent fee rules as seen in the Federal Register are available here:

Patent Fees Proposed Rule (77 Fed. Reg. 55028, September 6, 2012)

Additionally, the USPTO announces the release of several fee related documents to assist with understanding the process and analysis that went into developing the proposed patent fee rules set forth in the Federal Register publication.  These fee related documents include: (i) an “At A Glance” summary of proposed patent fees; (ii) a Regulatory Impact Analysis; (iii) a table of patent fee changes; (iv) costing methodologies; (v) elasticity estimates; (vi) Initial Regulatory Flexibility Act tables; and (vii) ten aggregate revenue tables with instructions. 

At A Glance Summary:   This document summarizes the proposed patent fees for services offered by the agency, which are set forth in detail in the Federal Register notice.

Regulatory Impact Analysis:  The Office prepared a Regulatory Impact Analysis (RIA) to analyze the costs and benefits of the agency’s proposed patent fees over a five-year period, as required by the Office of Management and Budget.  This analysis includes a comparison of the proposed fee schedule to the current fee schedule (baseline) and to three other alternatives.  The Office considered both monetized and qualitative costs and benefits.

Table of Patent Fee Changes:  The Office prepared this table to summarize the changes from the current patent fee schedule as compared to the proposed patent fees.  This table includes all current large and small entity fee amounts; all proposed large, small, and micro entity fee amounts; and the percent change between the current and proposed large entity fees.  The table also displays the historical unit costs for fees for FY 2009 - FY 2011.

Costing Methodologies:  This document provides additional detail on the costing methodologies used to derive the historical costs of certain activities, which was used to inform the fee setting and is also outlined in the Table of Patent Fee Changes.

Elasticity Estimates:  When developing fee forecasts, the Office estimates the elasticity of price changes, i.e., how applicant behavior might change with different price changes for the various patent services.  The Office prepared this document to describe the statistical examination of the elasticity.  The document summarizes the results of this analysis and provides detail on how elasticity was determined for certain user fees.

Initial Regulatory Flexibility Act Tables:  The Office created fee tables that show all current large and small entity fee amounts; all proposed large, small, and micro entity fee amounts; and the percent change between current and proposed fee amounts for each alternative discussed in the Initial Regulatory Flexibility Act analysis.  These tables are also referenced for each alternative in the RIA.

Aggregate Revenue Tables: The Office developed out year revenue estimates for the proposed patent fees and each alternative presented in the RIA.  These tables show both fee amounts and workloads for every USPTO fee included in the proposed fee structure and each alternative.  The fee amounts and workloads are multiplied to determine an estimated revenue amount for each USPTO fee.  The table is summarized to show the estimated aggregate revenue through FY 2017.  These tables are provided in both .pdf and Excel formats for ease of use, and step-by-step instructions for reading the tables are provided.

Lastly, the USPTO will discuss the proposed patent fee rules at AIA roadshows to be held in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City throughout September 2012.  More information about the roadshows, including venue locations and an agenda, can be found here:

Roadshow Page

Tuesday Sep 04, 2012

USPTO Publishes Proposed Patent Fee Rules

Message From Janet Gongola, Patent Reform Coordinator:

The USPTO announces that on Thursday, September 6, 2012, it will publish proposed rules setting or adjusting fees for patent related services in the Federal Register.  Today, on Monday, September 4, 2012, these proposed patent fee rules are available in the Federal Register Reading Room and here:

Proposed Rules Setting and Adjust Patent Fees

In proposing patent fees through this rulemaking, the agency is exercising its fee setting authority established under Section 10 of the AIA.  Section 10 granted the Office fee setting authority so that the agency may set or adjust patent fees to reflect the costs of the patent related services it provides, while ensuring that the Office has the financial resources needed to reduce the backlog of patent applications, reduce patent pendency, and perform its core missions efficiently.  Section 10 requires the proposed patent fee schedule to generate sufficient revenue to recover the aggregate cost to operate the agency.  In exercising its fee setting authority, the agency also proposes to expand the existing 50% fee discount for small entities and provide a new 75% fee discount for micro entities.

Publication of the proposed patent fees in the Federal Register opens a 60-day comment period.  During this time, the agency welcomes your feedback.  Additionally, the USPTO will discuss and answer questions about its proposed patent fees at eight, upcoming cross-country roadshows set as follows: 9/10, Minneapolis; 9/12, USPTO headquarters in Alexandria; 9/14 in L.A.; 9/17 in Denver; 9/20 in Detroit; 9/24 in Atlanta; 9/26 in Houston; 9/28 in New York City.  The first three roadshows will be webcast.  More information about the roadshows is available here:

AIA Roadshow

Friday Aug 31, 2012

USPTO to Host Webinar on Final and Proposed Rules for Many AIA Provisions

From Janet Gongola, Patent Reform Coordinator:

On Friday, September 7, 2012, at 12:30 to 1:30 pm, the USPTO is hosting a webinar to discuss provisions of the AIA that become effective on September 16, 2012, and the USPTO final rules implementing those provisions.  The provisions include inventor’s oath/declaration, supplemental examination, preissuance submissions, and the new administrative trials of post grant review, inter partes review, and covered business method review.  The USPTO also will discuss proposed rules and examination guidelines for the first-inventor-to-file provision.  The agency published the first-inventor-to-file proposed rules and examination guidelines in late July and presently is in the middle of the public comment period.

USPTO webinar participants will include USPTO Director David Kappos, Commissioner for Patents Peggy Focarino, General Counsel Bernard Knight, Chief Judge James Smith, and Lead Judge Michael Tierney.  Chief Communications Officer Todd Elmer will moderate.  We welcome you to send in your questions in advance to webinar@uspto.gov.

WebEx Webinar Access Information

Event number: 990 842 706

Event password: 123456

Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=990842706&t=a

Teleconference (US/Canada): +1-408-600-3600
Access code: 990 842 706

Saturday Aug 25, 2012

USPTO Announces Agenda for First-Inventor-to-File Roundtable

From Janet Gongola, Patent Reform Coordinator:

The USPTO is gearing up for it First-Inventor-to-File Roundtable on Thursday, September 6, 2012, from 1:30 to 4:30 pm Eastern Daylight Time in the Madison Auditorium at its Alexandria campus.  The roundtable will be webcast on the AIA micro-site as well.  The USPTO will discuss its proposed rules and proposed examination guidelines to implement the first-inventor-to-file provision and is eager for public feedback. 

Here is the event agenda along with instructions for viewing the webcast.  Thank you to those in the patent community who have pre-scheduled to give commentary; there also will be an opportunity for unscheduled commentary.

First-Inventor-to-File Roundtable Agenda

WebEx Webinar Access Information

Event number: 997 151 983
Event password: 123456
Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=997151983&t=a

Separate from the roundtable, the USPTO is accepting written comments about the proposed rules and proposed examination guidelines until October 5, 2012.  Written comments about the proposed rules may be emailed to fitf_rules@uspto.gov and about the proposed examination guidelines to fitf_guidance@uspto.gov.

USPTO to Host Preview of New Electronic Filing System for New Administrative Trials

From Janet Gongola, Patent Reform Coordinator:

The USPTO will preview its new electronic filing system, called the Patent Review Processing System (PRPS), to be used for making filings in connection with the new administrative trials of inter partes review, post grant review, and covered business method review that become available on September 16, 2012.  The preview will take place on Thursday, September 6, 2012, from 10 am to noon Eastern Daylight Time at the Alexandria campus in the Madison North Auditorium.  The preview also will be webcast.

WebEx Access Information:

Event number: 991 880 392
Event password: 123456
Event address for attendees: https://uspto-events.webex.com/uspto-events/onstage/g.php?d=991880392&t=a

At the preview, representatives from the Patent Trial and Appeal Board will demonstrate the system, including how to register to use the system, to file a petition seeking a trial, to pay petition fees, to join the proceeding as a patent owner, and to file motions and other documents.  The preview will be helpful for any practitioners or administrative personnel who anticipate filing documents in the new proceedings.  There will also be an opportunity to ask questions for in-person and webcast participants. WebEx participants will be able to submit questions through the WebEx chat session.

Saturday Aug 18, 2012

USPTO to Host First-Inventor-to-File Roundtable to Receive Public Input on Proposed Rules and Proposed Examination Guidelines

Message From Janet Gongola, Patent Reform Coordinator:

I am pleased to announce that the USPTO is hosting a public roundtable on Thursday, September 6, 2012, to discuss the proposed rules and proposed examination guidelines implementing the first-inventor-to-file provision.  The roundtable will be held in the Madison Auditorium on the USPTO’s Alexandria campus and will run from 1:30 to 4:30 pm Eastern Daylight Time.  The roundtable will be webcast on the AIA micro-site; instructions for viewing the webcast are forthcoming.  The first-inventor-to-file provision is effective on March 16, 2012.

All members of the public are invited to attend the roundtable and offer commentary.  If you are interested in providing commentary, please contact me.  There also will be an opportunity for unscheduled commentary.  Here is a tentative agenda:

1:30 to 1:40 pm:  Welcoming Remarks

1:40 to 2:10 pm:  USPTO Overview of Proposed Rules and Proposed Examination Guidelines

2:10 to 4:30 pm:  Participant Commentary

Details about the roundtable and USPTO proposed rules and proposed examination guidelines are available in the respective Federal Register Notices:

The USPTO is accepting written comments about the proposed rules and proposed examination guidelines until October 5, 2012.  Written comments about the proposed rules may be emailed to fitf_rules@uspto.gov and about the proposed examination guidelines to fitf_guidance@uspto.gov. I encourage you to attend the roundtable in person or join via webcast, submit written comments, and continue to be part of the agency’s ongoing AIA implementation.

Top 10 Differences Identified Between Proposed and Final Rules for Provisions Effective on September 16, 2012

Message From Janet Gongola, Patent Reform Coordinator:

The agency has released final rules for all of the new provisions of law going into effect on September 16, 2012.  There are seven provisions in total, and they include inventor’s oath/declaration, preissuance submissions, citation of patent owner claim scope statements, supplemental examination, inter partes review, post grant review, and covered business method review. 

Several months ago, the agency released proposed rules for these provisions and solicited public comments on its proposals.  The agency received much helpful input and appreciates the public’s participation in the rulemaking process.  The agency made many modifications to its proposed rules in developing the final rules based on the public feedback.

To expedite your review of the final rules as compared to the proposed rules, we have assembled the key differences between the two.  The first table below captures the top ten differences for the new administrative trials while the second table shows the top ten differences for the remaining provisions.  The differences reflected in these tables are not exhaustive; there are additional ones between the proposed and final rules of smaller scope not captured in the tables.  But the differences featured in the tables are intended to give you a start for comparison.

TABLE 1: Proposed Versus Final Rules for the New Administrative Trials

  Proposed Final
1

Fees for claims challenged in excess of 20 based on increments of 10 claims

IPR fee:

  • 1 to 20 claims - $27,200.00
  • 21 to 30 claims $34,000.00
  • 31 to 40 claims - $40,800.00
  • 41 to 50 claims - $54,400.00
  • 51 to 60 claims - $68,000.00
  • Additional fee for each additional 10 claims or portion thereof - $27,200.00

PGR fee:

  • 1 to 20 claims - $35,800.00
  • 21 to 30 claims - $44,750.00
  • 31 to 40 claims - $53,700.00
  • 41 to 50 claims - $71,600.00
  • 51 to 60 claims - $89,500.00
  • Additional fee for each additional 10 claims or portion thereof - $35,800.00

Fees for claims challenged in excess of 20 based on flat per claim fee

IPR fee:

  • 1 to 20 claims - $27, 200.00
  • For each claim in excess of 20 claims - $600.00

PGR fee:

  • 1 to 20 claims - $35,800.00
  • For each claim in excess of 20 claims - $800.00
2

Page limits more restricted, and statement of material facts included in page count

Petition requesting IPR review and opposition: 50 pages

Petition requesting PGR review and opposition: 70 pages

Petition requesting CBM review and opposition: 70 pages

Claim charts must be double-spaced

Page limits increased, and statement of material facts eliminated from page count

Petition requesting IPR review and opposition: 60 pages

Petition requesting PGR review and opposition: 80 pages

Petition requesting CBM review and opposition: 80 pages

Claim charts may be single-spaced

3 Board may recognize counsel pro hac vice during a proceeding upon a showing of good cause, subject to conditions as the Board may impose Same as proposed with the additional specification that lead counsel be a registered practitioner
4

Party may move for additional discovery

Parties may agree to additional discovery between themselves

Parties may agree to mandatory discovery requiring initial disclosures

5 Non-cumulative information that is inconsistent with a position advanced by the patent owner or petitioner must be filed as soon as practicable.  Party submitting the information must specify the relevance of the information Eliminate the non-cumulative requirement as well as requirement to explain the relevance of the information that is inconsistent with a position advanced by the party
6

Due date for patent owner response to petition is two months from the date the IPR/PGR review was instituted

Default date for filing a patent owner response is three months from the date the IPR/PGR review was instituted
7 Patent owner preliminary response may not include testimonial evidence but instead only documentary evidence Patent owner preliminary response may include new testimonial evidence where a party demonstrates that such evidence is in the interests of justice
8 Petitioner may request to file a motion identifying supplemental information relevant to a ground for which the trial has been instituted and that the request must be made within one month of the date the trial is instituted

Party may file a motion to submit supplemental information if the request for authorization to file the motion is made within one month of the date the trial is instituted and the supplemental information must be relevant to a claim for which the trial has been instituted

Party seeking to file supplemental information one month after the date the trial is instituted must request authorization to file the motion.  Motion must show why the supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests of justice  

9 Patent owner may file one motion to amend the patent claims but only after conferring with the Board

Patent owner may file an initial amendment without Board authorization but must discuss the amendment in a conference call with the Board prior to filing

Additional motion to amend may be authorized when there is a good cause showing (i.e., where supplemental information is belatedly submitted) or a joint request to materially advance settlement

10

Patent owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent:

(i) A claim to substantially the same invention as the finally refused or cancelled claim;

(ii) A claim that could have been filed in response to any properly raised ground of unpatentability for a finally refused or cancelled claim; or

(iii) An amendment of a specification or of a drawing that was denied during the trial proceeding.

Modification of  (i) to preclude patent owner from obtaining patentably indistinct claims, and elimination of (ii)

TABLE 2: Proposed Versus Final Rules for Other Provisions

  Proposed Final
Inventor’s Oath/Declaration
1 Only the inventor may file an application for patent as the applicant Inventor, assignee, or obligated assignee may file an application for patent as the applicant
2 Inventor’s oath/declaration must identify the entire inventive entity Inventor’s oath/declaration need not identify the entire inventive entity, if a signed Application Data Sheet (ADS) is filed that includes identification of each inventor
3 Inventor’s oath/declaration must be filed with application or shortly thereafter Filing of an inventor’s oath/declaration may be postponed until a time period set forth in a Notice of Allowability expires, if a signed ADS is filed that includes identification of each inventor
Preissuance Submissions
4 No notification provided to applicant upon entry of a compliant submission in an application file Notification to applicant upon entry of a compliant submission in an application file
5 No notification to a third party if the submission is deemed non-compliant Notification to a third party if the submission is deemed non-compliant
6 Submissions permitted in reissue applications Submissions are not permitted in reissue applications
Citation of Patent Owner Claim Scope Statements
7 Patent owner statement may have been filed in the court or Office proceeding by any person Patent owner statement must have been filed in the court or Office proceeding by patent owner
8 Statement must have originated in a court or Office proceeding Statement may have originated outside of the court or Office proceeding in which it was filed
Supplemental Examination
9 Items of information increased to 10 Items of information limited to 12
10 Content requirements have been streamlined and are comparable to requirements for a request for ex parte reexamination Content requirements more detailed

Volunteers Needed to Test Electronic Filing System for Use in New Administrative Trials

Message From Judge Michael Tierney, Board Of Patent Appeals And Interferences:

The USPTO has developed an electronic filing system called Patent Review Processing System (PRPS) to receive filings for the new administrative trials of inter partes review, post grant review, and the transitional program for covered business methods.  The PRPS electronic filing system will become functional on September 16, 2012, which is the effective date for the new administrative trial provisions. 

The USPTO is seeking volunteers to “beta test” the new PRPS electronic filing system.  Specifically, the Office is hosting four separate 2-hour testing sessions on Tuesday, August 21 and Wednesday, August 22, 2012 in the Madison Auditorium at the Alexandria campus for volunteers to participate in prototype trials and a focus group discussion.  Volunteers are asked to attend one of these sessions: 

August 21, 2012

  • 10:00 am to noon Eastern Daylight Time (EDT)
  • 2:00 pm to 4:00 pm EDT

August 22, 2012

  • 10:00 am to noon EDT
  • 2:00 pm to 4:00 pm EDT

If you are interested in volunteering, please complete the volunteer form below and return it via email to ptab@uspto.gov.  Your help is much appreciated as the USPTO is striving to make the PRPS electronic filing system as user friendly and simple as possible.

Volunteer Form

 

Tuesday Aug 14, 2012

USPTO Publishes Final Rules for the Inventor’s Oath/Declaration, Supplemental Examination, and Administrative Trial Final Rules in the Federal Register

From Janet Gongola, Patent Reform Coordinator:

On August 14, 2012, the USPTO published final rules in the Federal Register implementing the inventor’s oath or declaration, supplemental examination, inter partes review, post grant review, and covered business method review provisions.  These final rules as seen in the Federal Register are available here:

Publication of final rules for the inventor’s oath or declaration, supplemental examination, and administrative trials concludes the agency’s rulemaking for AIA provisions effective on September 16, 2012, the one-year anniversary of the AIA.  The agency previously published final rules for preissuance submissions and citation of patent owner statements in July and August 2012.  Thus, in total, the agency has released final rules for 7 provisions going into effect on September 16, 2012. 

The USPTO will host roadshows in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City to discuss these final rules in September 2012.  More information about the roadshows, including venue locations and an agenda, can be found here:

Roadshow Page

Monday Aug 13, 2012

USPTO To Publish Final Rules For The Inventor’s Oath/Declaration, Supplemental Examination, And New Administrative Trials Provisions

From Janet Gongola, Patent Reform Coordinator:

The USPTO announces that on Tuesday, August 14, 2012, it will publish final rules implementing the inventor’s oath/declaration, supplemental examination, post grant review, inter partes review, and covered business method review provisions in the Federal Register.  Today, on Monday, August 13, 2012, these final rules are available in the Federal Register Reading Room and here.  Publication of these final rules concludes the agency’s rulemaking for AIA provisions effective on September 16, 2012, the one-year anniversary of the AIA.  At the end of July and earlier in August 2012, the agency published final rules implementing the preissuance submission and citation of patent owner statements provisions.

The inventor’s oath or declaration final rules reduce the statements of information that an inventor must include with an oath or declaration.  They also permit a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make an application for patent and allow for a substitute statement in lieu of an oath/declaration in certain circumstances.  Lastly, the inventor’s oath or declaration final rules enable applicants to postpone filing the oath/declaration until the application is otherwise in condition for allowance and to provide for assignments containing oath or declaration statements.

The supplemental examination final rules permit a patent owner to present information believed to be relevant to the patent for the Office to consider, reconsider, or correct.  A patent owner may use supplemental examination to forestall a subsequent inequitable conduct challenge to the enforceability of the patent during litigation.

The finals rules for the post grant review, inter partes review, and covered business method review set forth the general procedures common to these three new administrative trials (e.g., briefing page limits, discovery standards, and motions practice) as well as the specifics unique to each (e.g., the standards for showing sufficient grounds to institute the particular review and the procedures for conducting the particular review).  The administrative trial final rules also provide a definition for “covered business method” and “technological invention.”  In addition to the administrative trial final rules, the Office is publishing a practice guide for conducting an administrative trial before the Board of Patent Appeals and Interferences, soon to be renamed the Patent Trial and Appeal Board on September 16, 2012.       

In September 2012, the USPTO will host eight roadshows in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City to discuss all of these final rules.  I encourage you to attend one of the roadshows and stay current with the AIA implementation activities.  More information about the roadshows can be found here:

Roadshow Page

Monday Aug 06, 2012

USPTO Publishes Final Rules for the Citation of Prior Art and Written Statements Provision in the Federal Register

From Janet Gongola, Patent Reform Coordinator:

On August 6, 2012, the USPTO published final rules in the Federal Register implementing the citation of prior art and written statements provision.  These final rules as seen in the Federal Register are available here:

Citation of Prior Art in a Patent File (77 Fed. Reg. 46615, August 6, 2012)

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