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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 Aug 03, 2012

USPTO to Publish Final Rules for the Citation of Prior Art and Written Statements Provision

From Janet Gongola, Patent Reform Coordinator:

The USPTO announces that on Monday, August 6, 2012, it will publish final rules for the citation of prior art and written statements provision in the Federal Register.  Today, on Friday, August 3, 2012, these final rules are available in the Federal Register Reading Room and here:

Changes to Implement Miscellaneous Post Patent Provisions

The citation of prior art and written statements provision expands the information that a patent owner or third party may submit to the Office in a patent file.  Prior to the AIA, a party could submit only prior art into a patent file.  Under the AIA, starting on September 16, 2012, a party also may submit statements that the patent owner made about the scope of the patent claims either during a federal court proceeding or another USPTO proceeding.  As a result of this provision, the Office as well as the courts will both be informed as to how a patent owner represents claim scope.  Additionally, the AIA provides for how the Office may use patent owner claim scope statements during an ex parte or inter partes reexamination or during one of the new administrative trials of inter partes review, post grant review, or covered business method review.      

In the next few days, the USPTO will be publishing additional final rules for the inventor’s oath/declaration, supplemental examination, and administrative trial provisions that also become effective on September 16, 2012.  The USPTO will host eight roadshows in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City during September 2012 to discuss all of these final rules.  I encourage you to attend one of these roadshows to learn how the final rules will operate and have the opportunity to ask questions about them.

USPTO to Publish All Other Final Rules for AIA Provisions that Go Into Effect on September 16, 2012 Soon

From Janet Gongola, Patent Reform Coordinator:

On Friday, August 3, 2012, the USPTO announces that it will publish in the Federal Register final rules implementing the inventor’s oath/declaration, supplemental examination, post-grant review, inter partes review, and covered business method review provisions on Tuesday, August 14, 2012.  The final rules will be available for public inspection in the Federal Register Reading Room on Monday, August 13, 2012.  The inventor’s oath/declaration, supplemental examination, post-grant review, inter partes review, and covered business method review provisions become effective on September 16, 2012.

Tuesday Jul 31, 2012

USPTO Publishes Final Rules for the Statute of Limitations Provision for Office Disciplinary Actions in the Federal Register

From Janet Gongola, Patent Reform Coordinator:

On July 31, 2012, the USPTO published final rules in the Federal Register implementing the statute of limitations provision for Office disciplinary actions.  These final rules as seen in the Federal Register are available here:

OED Statute of Limitations Final Rules (77 Fed. Reg. 45247, July 31, 2012)

Monday Jul 30, 2012

USPTO to Publish Final Rules for the Statute of Limitations Provision for Office Disciplinary Actions

From Janet Gongola, Patent Reform Coordinator:

The USPTO announces that tomorrow, July 31, 2012, it will publish final rules in the Federal Register related to the statute of limitations provision for Office disciplinary actions.  These final rules are available today, July 30, 2012, in the Federal Register Reading Room.  The statute of limitations final rules for Office disciplinary actions also are available here:

Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings

The AIA requires that disciplinary proceedings be commenced not later than the earlier of: (i) ten years after the date on which the misconduct occurred; or (ii) one year from the date on which the misconduct was made known to the USPTO.  Regarding (ii), the final rule specifies the timing for commencing the one-year time period is the date on which the Director of the Office of Enrollment and Discipline receives a grievance forming the basis of the complaint. 

In the next few days, the USPTO will be publishing more final rules for provisions that become effective on September 16, 2012, such as the inventor's oath/declaration, supplemental examination, citation of a patent owner statement in a patent file, inter partes review, post grant review, and covered business method review provisions.  Stayed tuned here for these additional AIA developments.

Thursday Jul 26, 2012

USPTO Publishes Proposed Rules and Proposed Examination Guidelines for the First-Inventor-to-File Provision

From Janet Gongola, Patent Reform Coordinator:

On Thursday, July 26, 2012, the USPTO announces publication in the Federal Register of proposed rules and proposed examination guidelines for the first-inventor-to-file provision.   The proposed rules and proposed examination guidelines implement the conversion from a "first-to-invent" to a "first-inventor-to-file" system.  The proposed rules and proposed examination guidelines also address the Office's interpretation of the prior art available under 35 U.S.C. 102 and 103.  Here are the links to access both proposals:

Publication in the Federal Register of the first-inventor-to-file proposed rules and proposed examination guidelines opens a public comment period running until October 5, 2012.  I encourage you to submit your feedback to the agency about both proposals.  The agency values your input in helping to properly implement the first-inventor-to-file provision and build a 21st century patent system.

The USPTO will discuss its first-inventor-to-file proposed rules and proposed examination guidelines at a series of upcoming cross-country roadshows to be held in September 2012.   The USPTO will visit Alexandria, Va.; Atlanta; Denver; Detroit; Houston; Los Angeles; Minneapolis; and New York City.  I invite you to attend a roadshow and have the opportunity to give direct feedback to agency officials about the first-inventor-to-file proposals.  More information about those roadshows, such as specific dates, venues, and program agenda, is available here:

AIA Roadshow page

Friday Jul 20, 2012

USPTO to Publish First-Inventor-to-File Rulemaking and Guidance Document in Same Federal Register Volume Soon

From Janet Gongola, Patent Reform Coordinator:

On Friday, July 20, 2012, the Federal Register posted the first-inventor-to-file notice of proposed rulemaking in its electronic Reading Room in advance of Federal Register publication on Monday, July 23, 2012.  The USPTO withdrew the first-inventor-to-file notice to enable the Federal Register to publish the first-inventor-to-file rulemaking at the same time as the first-inventor-to-file guidance document.  Both documents will be released in the Federal Register soon.

Tuesday Jul 17, 2012

USPTO Publishes Final Rules for Preissuance Submission Provision

From Janet Gongola, Patent Reform Coordinator:

On Tuesday, July 17, 2012, the USPTO announces publication of final rules for the preissuance submission provision of the AIA in the Federal Register.  The preissuance submission provision is effective on September 16, 2012.  The preissuance submission final rules address the requirements that a third party must meet to submit a patent, patent application publication, or other printed document into the patent application owned by another.  The preissuance submission final rules are available here:

Preissuance Submission Final Rules (77 Fed. Reg. 42150, July 17, 2012)

Publication of the preissuance submission final rules is the first in a series of final rules to be released in the Federal Register for AIA provisions effective on September 16, 2012.  Over the next couple weeks, the agency will publish additional final rules for other AIA provisions also effective on September 16, 2012, including inventor's oath/declaration, supplemental examination, citation of a patent owner statement in a patent file, inter partes review, post grant review, and covered business method review.  The agency will discuss all of these final rules at a series of upcoming cross-country roadshows.  More information about those roadshows is available here:

Roadshows

Friday Jun 29, 2012

New Search Feature Added to Micro-Site to Locate Information Faster and Easier

From Camilo Reyes, Aia Micro-Site Designer:

I am excited to share a new feature that I think you will find helpful in navigating the AIA micro-site.  As of June 28, 2012, the micro-site now includes a search box on every page in the left hand navigation tool bar that can be used to search for a particular topic within the micro-site.  The search feature looks like this:

AIA search box

For example, if you would like to identify all places and documents within the micro-site where inter partes review is mentioned, you can type the words "inter partes review" into the search box.  You will receive a search report with links to every occurrence of these words within the micro-site. You can then click on each link for information about inter partes review.

With an average of 1,000 users accessing the micro-site per day, I hope this new feature streamlines and simplifies how you locate information on the micro-site.  If there are additional features you think would be useful, please let me know by emailing:  aia_implementation@uspto.gov.

Rules Delivered to OMB for Interagency Clearance

From Janet Gongola, Patent Reform Coordinator:

The USPTO is progressing well in its preparation and clearance of various final rules for provisions that become effective on September 16, 2012.  These provisions include inventor's oath/declaration, preissuance submissions, citation of patent owner statements, supplemental examination, inter partes review, post grant review, and covered business method review. 

Specifically, as of mid-June 2012, the USPTO submitted all of these final rules to the Office of Management and Budget (OMB) for interagency clearance.  As soon as this process concludes, the agency will publish the final rules in the Federal Register, which will occur no later than August 16, 2012--one month before the provisions are effective.  In comparison with the proposed rules, the agency made numerous changes based upon the feedback we received from the public, and we are eager to share our final rules with you.

[Read More]

USPTO Testifies Before Senate Judiciary Committee on AIA Implementation

From Director David Kappos:

On Wednesday, June 20, 2012, I testified before the Senate Judiciary Committee about the agency's implementation of the AIA.  This was the second Congressional oversight hearing directed to AIA implementation since the new legislation was signed into law.  Previously, on May 16, 2012, I testified before the House Judiciary Committee about our AIA implementation activities.

In brief, I informed the Senate Judiciary Committee that the agency remains on track to issue final rules for various new provisions that go into effect on September 16, 2012, and is actively preparing proposed fees rule following two fee setting hearings held in February 2012.  I also informed the Committee that the agency has successfully implemented other provisions including (i) prioritized examination for which over 4000 applications have been received, over 2300 first Office actions have been issued, and 200 patents have granted; (ii)  the pro bono program, which started in Minneapolis/St. Paul and is now operational in Denver with plans to expand to 4 additional areas by the end of the calendar year; and (iii) the satellite office program with the first office opening in Detroit in July and additional office locations to be announced later this summer.  All of the agency's implementation activities energize international harmonization efforts, as I discussed at the end of my testimony.

A copy of my testimony along with a webcast of the hearing before the Senate Judiciary Committee is available via the links below.  I invite you to review them for even more information about our AIA implementation activities and international harmonization.

Saturday Jun 16, 2012

Status Update on the Genetic Testing Study

From: Janet Gongola, Patent Reform Coordinator

Under Section 27 of the America Invents Act, the USPTO is required to study effective ways to provide independent, confirming genetic diagnostic test activity where gene patents and exclusive licensing for primary genetic diagnostic tests exist.  To complete this study, the agency held two hearings and received a number of written comments from the public. As of Friday, June 15, 2012, the USPTO is in the process of finalizing its Genetic Testing report through an intra-agency clearance process. Because of this, the agency has alerted Congress that it will not be able to deliver the report on June 16, 2012, the due date required by the AIA.  The agency will deliver its report as soon as possible once this process is complete.

Thursday May 31, 2012

USPTO Issues Proposed Rules to Implement the Micro Entity Provision for Paying Discounted Patent Fees

From: Janet Gongola, Patent Reform Coordinator

On Wednesday, May 30, 2012 the agency published proposed rules in the Federal Register to implement the micro entity provision of the America Invents Act.  The proposed rules cover procedures for an applicant to claim micro entity status and to pay patents fees as a micro entity.  They 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.  For more details about the proposed rules, here is a link to the Federal Register Notice of Proposed Rulemaking:

Changes to Implement Micro Entity Status for Paying Patent Fees (77 Fed. Reg. 31806, May 30, 2012)

[Read More]

Friday May 18, 2012

USPTO Testifies Before Congress About AIA Implementation

From: Director David Kappos

On Wednesday, May 16, 2012, the House Committee on the Judiciary held a hearing on the USPTO’s implementation of the AIA, the first oversight hearing on this historic legislation.  I testified along with six others representing various companies and intellectual property law associations.  You can view a webcast of the complete hearing along with my testimony here:

Hearing Webcast
AIA Testimony

I am pleased to share a brief synopsis of my testimony.  The agency has completed implementation of 7 provisions in the AIA and currently is working to implement 9 additional provisions.  To that end, we are reviewing more than 350 public comments, making modifications to the proposed rules in response thereto, and preparing to issue final rules no later than August 16, 2012.  Additionally, the agency has completed 2 studies—an analysis of the prior user rights defense and a report on international patent protection for small businesses—and will soon be delivering a report about genetic testing to Congress in mid-June 2012.  Lastly, the pro bono program has been launched in Minneapolis/St. Paul and Denver, and our first satellite office will open this summer in Detroit.  I look forward to continuing opportunities to share the progress of our AIA implementation activities with Congress and our stakeholders in the coming months.

Mark Your Calendars for Several AIA Implementation Activities This Summer

From: Janet Gongola, Patent Reform Coordinator

With summer around the corner, the agency is planning for several AIA implementation activities.  To help you keep track of these activities, here is a ready reference list:

  • June 15, 2012:  Submission of the Genetic Testing Study Report to Congress
  • June-July 2012:  Federal Register publication noticing that the Patent Ombudsman Program will be made permanent
  • June-July 2012:  Federal Register publication of 3 Notices of Proposed Rulemaking for First-Inventor-to-File, Fee Setting, and Micro-entity provisions and 1 guidance document also for the First-Inventor-to-File provision
  • July 13, 2012:  Opening of the first USPTO satellite office in Detroit, Michigan
  • By August 16, 2012:  Federal Register publication of 7 Final Rules for the Inventor’s Oath/Declaration, Supplemental Examination, Preissuance Submissions, Citation of Patent Owner Statements, Post Grant Review, Inter Partes Review, and Covered Business Method Review provisions, the Technological Invention Definition, the Umbrella Administrative Trial Rules and 1 trial practice guide for the administrative trials

Currently, the agency is in the process of preparing and clearing the various documents mentioned in the list above.  As soon as these steps are complete, we will post the documents on the micro-site and alert our AIA subscription center members via email.  Also, the agency is planning for a roundtable discussion about our First-Inventor-to-File proposal in the late summer and another series of cross-country roadshows in the early fall to teach you about the final rules.  Details about the roundtable and roadshows will be available soon, so please stay tuned to the micro-site for more information.

Monday Apr 23, 2012

Analysis of Comments Filed in Response to Patent Related and Administrative Trial Notices of Proposed Rulemaking

From: Janet Gongola, Patent Reform Coordinator

Thank you to everyone who submitted comments in response to the various recently released Notices of Proposed (NPRMs) for new patent related provisions and administrative trials during the 60-day public comment periods.  The NPRMs covered inventor’s oath/declaration, preissuance submissions, third party citation of a patent owner statement, supplemental examination, the OED statute of limitations, post grant review, inter partes review, covered business method review, the definition of technological invention, derivation, the umbrella rules for the new administrative trials, and the trial practice guide. In total, we received 374 comments from a range of commenters including IP bar organizations, law firms, and individuals.  To follow is a more detailed breakdown on these public comments.

[Read More]

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