AIA Blog

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.

Posted at 12:00AM May 18, 2012 in Implementation Activities/Roadshows  | 

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.

Posted at 12:00AM Apr 23, 2012 in Rulemaking  | 

Progress Report on Fee Setting Under the AIA

From: Michelle Picard, Fee Setting Team Leader

In accordance with Section 10 of the America Invents Act, the agency released a preliminary proposed fee schedule on its AIA micro-site on February 7, 2012.  The Patent Public Advisory Committee (PPAC) held two hearings on the USPTO's preliminary proposed fees on February 15 and 23 and collected written comments.   In total, 12 witnesses testified at the hearings, and 24 members of the public submitted written comments. 

Posted at 12:00AM Apr 23, 2012 in Rulemaking  | 

USPTO Establishes Method to Study Applicant Diversity Per AIA

From: Director David Kappos

The America Invents Act requires the USPTO to establish methods for studying the diversity of patent applicants, such as race, gender, veteran status, age, economic status, education, and geography (for individuals) as well as revenue, number of employees, and geography (for companies).  The AIA mandates that the USPTO have the methods in place by March 16, 2012.  To meet our statutory mandate, on March 16, 2012, the Agency released its method for studying applicant diversity:

Diversity of Applicant Methodology

In short, the Agency will follow a two-fold approach.  First, we are partnering with the U.S. Census Bureau to match diversity information for U.S. patent applicants.  The Census Bureau will produce aggregate information by group, for example, percentage of U.S. patent applicants who are female, as opposed to information on an individual U.S. patent applicant.  Second, the Agency will publish a Request for Information in the Federal Register inviting public comment on how the Agency might extend its methods to capture diversity information for foreign patent applicants, along with several other pertinent questions.  Once the Agency has completed its two-fold approach, we will then decide what further steps may be needed as we are committed to better understanding and reporting diversity information through this project.

Posted at 12:00AM Apr 06, 2012 in Programs  | 

USPTO Discusses Key Aspects of New Administrative Patent Trials

From: Chief Judge James Donald Smith, Board of Patent Appeals and Interferences

Thank you to the intellectual property community for your feedback thus far about our new administrative trial proposed rules for the inter partes review (IPR), post grant review (PGR), covered business method review, and derivation provisions of the America Invents Act.  From the comments we have received, a few issues have surfaced with some regularity.  For example, we have received questions and input regarding (i) the standards to trigger inter partes and post grant reviews, (ii) the real party in interest requirement for an IPR/PGR petitioner, (iii) timing for completion of the new trials, (iv) the pro hac vice admission of non-registered practitioners, and (v) the definition of the term “technological invention.”  I thought it would be helpful to explain more about the Agency’s rationale for the structure of the proposed rules on these topics, and hence, we have prepared a “blog extravaganza” for your consideration:

• Standards to Trigger an Inter Partes Review and Post Grant Review
• Real Party in Interest
• Timing to Complete an Inter Partes Review, Post Grant Review, and Covered Business Method Review
• Pro Hac Vice Admission to Practice before the Board for New Administrative Patent Trial
• Technological Invention Definition

Lastly, please note that the comment period for the new administrative trial proposed rules closes on April 9 and 10, 2012.  I encourage you to submit your positive feedback and constructive suggestions to the Agency by then; we are eager to hear from you.

Posted at 12:00AM Apr 06, 2012 in Rulemaking  | 

USPTO Completes AIA Roadshows

From: Janet Gongola, Patent Reform Coordinator

The USPTO AIA Implementation Team just returned from a series of cross-country roadshows to dialogue with you about various proposed rules that the agency recently released for public comment.  We visited six cities--Boston, Chicago, Dallas, Ft. Lauderdale, Salt Lake City, and Sunnyvale, California--with a team of USPTO representatives including two from the Patent Business Unit, two administrative patent judges from the Board of Appeals and Interferences, one from Governmental Affairs, and either Director David Kappos or Deputy Director Teresa Stanek Rea.  We discussed our proposed rules for provisions like inventor's oath/declaration, preissuance submissions, supplemental examination, inter partes review, post grant review, covered business method review, and derivation.

Posted at 12:00AM Mar 15, 2012 in Implementation Activities/Roadshows  | 

AIA Roadshow Schedule 2012

The USPTO announces its complete AIA event schedule for February and March 2012.  Events include seven AIA roadshows, two hearings for the Genetic Testing Study, and two PPAC fee setting hearings. 

At the AIA roadshows, the USPTO will explain its proposed rules for various new provisions required under the AIA including supplemental examination, inter partes review, and post grant review.  At the Genetic Testing Hearings, the USPTO will collect information from the public about ways to offer a second, confirmatory genetic test in situations where there is a gene patent and the patent is licensed to an entity that offers a first genetic test.  At the Fee Setting Hearings, the PPAC will gather public feedback about the USPTO's proposed fee structure for patent services.  The USPTO released its proposed patent fee schedule on Tuesday, February 7th, and it is available here or on the PPAC website. 

Posted at 12:00AM Feb 07, 2012 in Implementation Activities/Roadshows  | 

USPTO Releases its Proposed Patent Fee Schedule and its Proposed Contested Case Rules

From: Director David Kappos

The USPTO presents our proposed patent fee schedule in advance of the PPAC Fee Setting Hearings.  Specifically, the agency has assembled five documents about our proposed patent fees: (i) a transmittal letter from the USPTO to PPAC explaining our fee setting philosophy; (ii) an executive summary of our proposed fee schedule; (iii) detailed information about our proposed fee schedule; (iv) a table of proposed fee changes; and (v) aggregate revenue calculations:

• USPTO Transmittal Letter to PPAC for Patent Fee Proposal
• Executive Summary: Patent Fee Proposal
• Detailed Appendices: Patent Fee Proposal
• Table of Patent Fee Changes
• Aggregate Revenue Calculations
• Aggregate Revenue Calculations (Excel version)
• USPTO Fee Setting Opinion (February 12, 2012)

Posted at 12:00AM Feb 07, 2012 in Rulemaking  | 

USPTO Issues Proposed Rules for Supplemental Examination and Announces Hearings and Written Comment Collection for Genetic Testing Study

From: Director David Kappos

I have two new items of information to share regarding our implementation of the America Invents Act.  The first concerns a new set of proposed rules and the second relates to one of the Congressionally-mandated studies.

Today, the agency published in the Federal Register proposed rules for supplemental examination and for revisions to reexamination fees.  This publication begins a sixty-day public comment period for these rules.  The agency will explain the scope of our supplemental examination and reexamination fee revision proposed rules at the upcoming AIA roadshows.  Likewise, I encourage you to provide feedback to the agency about our proposals during the public comment period and at the roadshows:

Supplemental Examination Proposed Rule (77 Fed. Reg. 3666, January 25, 2012)

Posted at 12:00AM Jan 25, 2012 in Rulemaking  | 

USPTO Issues Reports for the Prior User Rights Defense and the International Patent Protection for Small Business Studies

From: Director David Kappos

I am happy to share that the USPTO delivered to Congress reports for the Prior User Rights Defense Study and the International Patent Protection for Small Business Study on January 13, 2012.  The agency prepared these reports in collaboration with the Department of State, Department of Justice, United States Trade Representative, and Small Business Administration, respectively.  They were due to Congress per the terms of the America Invents Act on January 14^th and 16^th.  Our reports are available through the links below: 

Posted at 12:00AM Jan 17, 2012 in Studies and Reports  | 

USPTO Publishes Proposed Rules Implementing Four AIA Provisions

From: Director David Kappos

I am pleased to announce that the USPTO has published this week the first in a series of Notices of Proposed Rulemaking in the Federal Register related to proposed rules implementing various provisions of the America Invents Act.  Specifically, we published proposed rules for the following AIA provisions, which are accessible through the links below:

Posted at 12:00AM Jan 06, 2012 in Rulemaking  | 

Public Comments on Proposed Rules Welcomed and Appreciated

From: Director David Kappos

The USPTO is working intensively on preparing and internally clearing our various proposed rules for provisions of the America Invents Act that go into effect twelve months from the date of enactment on September 16, 2012 (what the agency refers to as "Group 2" provisions).  We are on schedule in assembling our Notices of Proposed Rulemaking, which we intend to release to the public in mid- to late January 2012. 

The US innovation community has been of tremendous help to us in this process, submitting much thoughtful input since enactment of AIA.  I'd like to tell you a bit about the input we have received and explain, by way of a few examples, how that input has made a difference in the direction of our proposed rules.

Posted at 12:00AM Dec 02, 2011 in Rulemaking  | 

Status Update on Prior User Rights and International Patent Protection Studies

From: Janet Gongola, Patent Reform Coordinator

The agency is in the process of preparing reports for Congress for the Prior User Rights and International Patent Protection Studies.  Thank you all for participating in these studies by attending and/or giving testimony at our respective public hearings as well as by submitting written comments to the agency.  Your input is invaluable to our ability to address the issues that Congress posed to us and prepare comprehensive reports.

For the Prior User Rights Study, we held our public hearing on October 25, 2011, at the USPTO, and six witnesses gave testimony.  Additionally, we have received 33 written comments during our comment period, which closed on November 8, 2011.  You can view a webcast of the hearing and read all of the written comments here on our micro-site on the Studies page.

Posted at 12:00AM Nov 25, 2011 in Studies and Reports  | 

Final Provision in Group 1 Becomes Effective

From: Janet Gongola, Patent Reform Coordinator

On November 15, 2011, the agency implemented the last provision required to go into effective within the first 60 days after enactment—the electronic filing incentive.  This provision imposes an additional $400 fee on original (non-reissue) patent applications filed in paper form, thereby incentivizing the electronic filing of these applications.  The $400 fee is reduced by 50% for small entities.  The fee does not apply to provisional, design, and plant patent applications. 

Posted at 12:00AM Nov 18, 2011 in Rulemaking  | 

USPTO Unveils Senator Patrick Leahy Photo Exhibit from America Invents Act Signing Ceremony

From: Director David Kappos

As the USPTO is in the midst of implementing the Leahy-Smith America Invents Act, I am pleased to announce an exhibit featuring photographs from the Signing Ceremony taken by none other than—Senator Patrick Leahy. 

As shown in the picture above, Senator Leahy photographed the Signing Ceremony from a unique vantage not captured by any other photographer that day—directly behind President Obama as he inked his name onto the bill.  The unique images Senator Leahy took from that vantage crystallize the significance of the Act for the global intellectual property system.  In addition to Senator Leahy’s photos, the exhibit also features a red line of the Act along with one of the pens that President Obama used at the Signing Ceremony. The exhibit is located in the lobby of the USPTO’s Madison Building. 

Senator Leahy is a life-long photographer whose work has been published in a variety of newspapers and magazines.  After displaying at the USPTO, Senator Leahy’s photographs will join a larger exhibit of his work entitled, “World Leaders.”  We have a special opportunity to view images of the commencement of the first major patent reform in decades, taken by one of the Act’s lead authors, and I encourage you to visit the exhibit and be part of history.

Posted at 12:00AM Nov 04, 2011 in Miscellaneous  |