uspto.gov www.uspto.gov www.doc.gov
Skip over navigation

Navigation

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.

Tuesday Sep 30, 2014

Message From Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden: Routine and Additional Discovery in AIA Trial Proceedings: What Is the Difference?

The Leahy-Smith America Invents Act (“AIA”) created administrative trial proceedings to be conducted by the Patent Trial and Appeal Board (“PTAB” or “Board”) as a cost-effective alternative to litigation. Consistent with statutory provisions and legislative intent of the AIA, strong public policy exists to limit discovery in AIA proceedings. Thus, the scope of discovery in AIA trials before the Board differs significantly from the scope of discovery generally available under the Federal Rules of Civil Procedure in district court litigation.

AIA proceedings potentially involve three categories of limited discovery: (1) mandatory initial disclosures; (2) routine discovery; and (3) additional discovery. 37 C.F.R. § 42.51. To provide flexibility, the Board’s rules allow parties to agree regarding (1) and (3). In fact, beyond certain routine discovery that parties must provide to each other, the Board encourages parties to agree on discovery whenever possible.

This article focuses on routine and additional discovery, the two most common of the three categories. Stay tuned for an upcoming article on mandatory initial disclosures, an option used less often so far, but one that allows parties to agree about the automatic discovery of certain information upon institution of a trial.

Routine Discovery

Routine discovery in AIA trials corresponds to evidence and information that a party must provide to the other side. Routine discovery is self-executing. BlackBerry Corp. et al. v. Wi-Lan USA Inc., IPR2013-00126, Paper 15, 2. Thus, there is no need for a party to file a motion for “routine discovery” with the Board, or serve a request for routine discovery on a party—parties have the burden to come forward and provide such material. Id.; 37 C.F.R. § 42.51(b)(1); Nichia Corp. v. Emcore Corp., IPR2012-00005, Paper 19, 2.

Routine discovery includes: (i) any exhibit cited in a paper or in testimony in the case; (ii) cross examination of affidavit testimony; and (iii) relevant information that is inconsistent with a position advanced by a party, which must be served concurrently with the filing of documents or things that contain the inconsistency. 37 C.F.R. § 42.51(b)(1).

In relation to (i), a party must serve such exhibits at the same time it serves a paper or testimony citing them, unless the exhibits were previously submitted, both parties agree, or the Board orders otherwise. Id. The rule regarding (i) does not require, however, that a party create materials or provide materials not cited. See Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (“Trial Rules”), 77 Fed. Reg. 48,612, 48,622 (Aug. 14, 2012). In addition, (i) relates to evidence actually cited in a paper or testimony, not the materials that a party or witness relies upon when preparing the paper or testimony. BlackBerry, IPR2013-00126, Paper 15, 2; see also Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27, 3 (stating routine discovery requirements do not require that “all the underlying data and lab notebooks be produced” with a paper that references an experiment).

In relation to (ii), cross-examination of a declarant or affiant is permitted as routine discovery. 37 C.F.R. § 42.51(b)(1)(ii). As noted in the Office Patent Trial Practice Guide, a party relying on a witness’s testimony by declaration or affidavit should arrange to make that witness available for cross-examination. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012). Normally, the burden and expense of producing a witness for cross-examination falls on the party presenting the witness. Id.

In relation to (iii), the requirement for information inconsistent with a position advanced does not include discovery of material protected by attorney-client privilege or attorney work product immunity. 37 C.F.R. § 42.51(b)(1)(iii). Moreover, routine discovery under (iii) “is narrowly directed to specific information known to the responding party to be inconsistent with a position advanced . . . , and not broadly directed to any subject area in general within which the requesting party hopes to discover such inconsistent information.” Garmin Int'l Inc. et al. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26, 3-4.    

Additional Discovery and Five Garmin Factors

Beyond routine discovery, parties may agree to provide additional discovery. Otherwise, a party must request additional discovery. 37 C.F.R. § 42.51(b)(2)(i). The AIA legislative history makes clear that requested additional discovery should be confined to “particular limited situations, such as minor discovery that PTO finds to be routinely useful, or to discovery that is justified by the special circumstances of the case.” 154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl). In light of this history and statutory deadlines, the Board must be conservative in authorizing additional discovery. See id. at S9989.

The Board applies an “interests of justice” standard when deciding whether to grant additional discovery in inter partes reviews (IPRs), and a “good cause” standard in post-grant reviews (PGRs), including covered business method patent reviews (CBMs). 35 U.S.C. § 316(a)(5); § 326(a)(5); 37 C.F.R. § 42.51(b)(2); § 42.224(a). On balance, the interests of justice standard is slightly higher than the good cause standard. This difference reflects the more limited scope of issues raised in IPR petitions, i.e., grounds that could be raised under §§ 102 or 103 based on patents or printed publications, as compared with PGR petitions. 35 U.S.C. § 311(b). Notwithstanding the two standards, however, the same principles caution against overly broad discovery.

As outlined in the Garmin case, the Board typically weighs five factors when considering whether additional discovery in an IPR is “necessary in the interest of justice.”

  1. More Than A Possibility And Mere Allegation. The mere possibility of finding something useful, and mere allegation that something useful will be found, are insufficient. Thus, the party requesting discovery already should be in possession of a threshold amount of evidence or reasoning tending to show beyond speculation that something useful will be uncovered. “Useful” does not mean merely “relevant” or “admissible,” but rather means favorable in substantive value to a contention of the party moving for discovery.
  2. Litigation Positions And Underlying Basis. Asking for the other party’s litigation positions and the underlying basis for those positions is not necessarily in the interest of justice.
  3. Ability To Generate Equivalent Information By Other Means. Information a party can reasonably figure out, generate, obtain, or assemble without a discovery request would not be in the interest of justice.
  4. Easily Understandable Instructions. The requests themselves should be easily understandable. For example, ten pages of complex instructions is prima facie unclear.
  5. Requests Not Overly Burdensome To Answer. The Board considers financial burden, burden on human resources, and burden on meeting the time schedule of the review. Requests should be sensible and responsibly tailored according to a genuine need.

Garmin, IPR2012-00001, Paper 26, 6-7; see also id. at Paper 20.

Other Board cases have addressed those five factors when considering whether to grant additional discovery in IPRs in relation to issues such as secondary considerations in an obviousness analysis, prior art disclosures, expert testimony, and real party-in-interest or privity. Board decisions providing guidance on these issues include the following:

  • Corning Inc. v. DSM IP Assets B.V., IPR2013-00043, Paper 27
    • granting a request for laboratory notebooks, stating that details of procedures were per se useful when a petitioner cited expert testimony that relied upon those details to demonstrate unpatentability (first Garmin factor weighed in favor of discovery, and other factors did not disfavor discovery)
    • denying a request for samples because party did not show that request was not overly burdensome (fifth Garmin factor) or could not get information through documents otherwise produced (third Garmin factor)
  • Apple Inc. v. Achates Reference Publ'g, Inc., IPR2013-00080, Paper 66 (granting additional discovery regarding e-mail communications between expert witnesses relied upon by those witnesses as a basis for their opinions)
  • RPX Corp. v. Virnetx Inc., IPR2014-00171, Paper 25 (granting additional discovery regarding real party-in-interest and privity issues)
  • Arris Group, Inc. v. C-Cation Techs., LLC, IPR2014-00746, Paper 15 (granting additional discovery regarding an indemnification agreement as it relates to privity)
  • Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 32 (denying additional discovery relevant to commercial success)
    • stating that while “a conclusive showing of nexus is not necessary at this stage, some showing of relevance is necessary,” especially where the claimed feature “is itself not a product but one feature of a complex [] product”) (first Garmin factor)
    • stating that certain requested information seemed “publicly available on the Internet or elsewhere” (third Garmin factor)
    • noting that certain requests were not time-limited, and were imprecise, unfocused, and unduly burdensome (fifth Garmin factor)
  • Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 36 (denying additional discovery relating to copying, discussing nexus in relation to first Garmin factor, and that request appeared “not focused, overly broad, and unduly burdensome” under fifth Garmin factor)
  • Schott Gemtron Corp. v. SSW Holding Co., Inc., IPR2013-00358, Paper 43 (denying motion for additional discovery regarding commercial success)
    • request did not provide a threshold amount of evidence of (1) sales allegedly amounting to commercial success, or (2) alleged nexus between the claimed invention and commercial success (first Garmin factor)
    • denying requests as overly burdensome (fifth Garmin factor) because some were “not limited to” specific requested information, some requested documents “sufficient to show” something, without explaining “sufficient,” and some requested documents related to “forecasted” sales, not just actual sales, without explaining relevance to commercial success
    • delay of request weighed against granting motion

Notwithstanding the slightly lower standard in PGRs and CBMs, the Board considers the same five Garmin factors used for IPRs when addressing whether additional discovery is necessary for “good cause,” and “limited to evidence directly related to factual assertions” advanced by a party. 37 C.F.R. § 42.224; Bloomberg Inc. et al. v. Markets-Alert Pty Ltd, CBM2013-00005, Paper 32.

For example, as in an IPR, in showing the first Garmin factor, a moving party must provide a specific factual reason for expecting reasonably that the discovery will be “useful,” where “useful” means favorable in substantive value to a contention. Bloomberg, CBM2013-00005, Paper 32, 5; see also Schott Gemtron, IPR2013-00358, Paper 43, 4.

Board decisions providing guidance on the application of the five Garmin factors in a CBM include:

  • Bloomberg Inc. et al. v. Markets-Alert Pty Ltd, CBM2013-00005, Paper 32
    • granting a request for documents and things “specific and tailored narrowly, seeking information from one individual that is related to a single declaration on the issues raised . . . in [the] Petition”
    • denying other requests because arguments were speculative and did not provide sufficient factual reason to demonstrate that something “useful” would be uncovered (first Garmin factor), requestor could generate information by other means (third Garmin factor), requests were unduly broad and burdensome (fifth Garmin factor)
  • SAP America, Inc. v. Versata Dev. Group, Inc., CBM2012-00001, Paper 24 (granting a request for five specific documents that were not burdensome to produce (fifth Garmin factor), where producing party did not identify prejudice other than alleged lack of relevance)

Benefits of limited discovery include lowering costs, minimizing complexity, and shortening periods required for dispute resolution. The PTAB also must address these considerations in light of the one-year statutory deadline (absent limited exceptions) for completing AIA trials. Notwithstanding necessary limits, however, the parties may achieve additional flexibility by agreeing to discovery, bypassing the need for the Board to intervene and address such considerations.

Monday May 05, 2014

Message from Scott Boalick, Acting Vice Chief Judge: PTAB AIA Trial Roundtables Are in Full Swing and There is Still Time to Attend One in a City Near You

The PTAB AIA Trial Roundtables are going strong with six down and two to go. The Board started the roundtables in mid-April at the USPTO headquarters in Alexandria and since has visited New York City, Chicago, Detroit, Silicon Valley, and Seattle. This week, the Board winds down with the last two roundtables in Dallas on May 6 and Denver on May 8.

The Board is conducting the roundtables for two purposes. First, the Board aims to educate stakeholders about the AIA trials. The Board has reviewed all trial filings made in the 18 months since the proceedings started and has many helpful lessons learned to share. For example, during each roundtable event, the Board conducts a mock conference call focused on motions for a claim amendment and for additional discovery to showcase how to succeed on these types of motions.

Second, the Board is eager to collect your feedback about the AIA trials. In particular, the Board is interested in your suggestions for how to improve the trial proceedings to solidify them as a faster and less expensive alternative to district court litigation for challenging patent validity. Stakeholders in Alexandria, New York City, Chicago, Detroit, Silicon Valley, and Seattle offered many thoughtful comments, and consistent themes are emerging on areas where changes may be necessary. The Board is compiling these suggestions and aims to carefully consider each one after the roundtables conclude.

The PTAB Roundtables likewise feature a panel discussion with top-notch AIA trial practitioners who have made many AIA trial filings. Panelists have included Peter Thurlow, Andrew Sommer, Erin Dunston, and Scott McKeown in Alexandria; Erika Arner, Rob Sterne, Vin McGreary, and Sharon Israel in New York City; Herb Hart, Kevin Noonan, Dorothy Whealan, and Tim Baumann in Chicago; Jon Beaupre, Brad Pedersen, Kara Stoll, and Karl Renner in Detroit; Kevin Greenleaf, Matt Smith, Dianna Devore, Michael Rosato, and Wayne Sobon in Silicon Valley; and John Vandenberg, Don Coulman, Brandon Stallman, and Rich Black in Seattle. These practitioners have shared their experiences and strategies for navigating the AIA trial waters. They also have fielded many probing questions about each stage of the trial process from petition filing to briefing to oral hearing tips to estoppel following the final written decision.

The PTAB is pleased to have received a strong stakeholder turn-out so far, and thanks the patent community for supporting the Roundtables. More than 600 stakeholders have joined in person, and more than 200 viewed the live webcast. If you want to learn and/or share feedback about the AIA trials or engage with the talented practitioner panelists, the PTAB encourages you to attend one of the two remaining roundtables in Dallas or Denver. The schedule with venue locations and directions is available on the PTAB Roundtable micro-site. Also, the last roundtable on May 8 will be webcast live from Denver; viewing instruction and access information can be found on the PTAB Roundtable micro-site.

Saturday Mar 22, 2014

USPTO to Host First-Inventor-to-File Forum on April 1, 2014 (rescheduled from Monday, March 17, 2014)

The United States Patent and Trademark Office (USPTO) will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA) on the first anniversary of the FITF implementation. The forum will be held on Tuesday, April 1, 2014, at the USPTO headquarters, Madison Auditorium, in Alexandria, Virginia from 12:30 to 5 pm ET. Members of the public are invited to attend in person or via webcast (access information below).

The forum is intended to bring stakeholders together with USPTO subject matter experts to discuss the FITF provisions. It will begin with a thirty-minute informal meet-and-greet session, allowing participants to chat with the experts, followed by an informational program.

Time Topic
1:00 PM to 1:15 PM Welcome
Janet Gongola, Senior Advisor to the Deputy Director
  Opening Remarks
Michelle K. Lee, Deputy Under Secretary and Deputy Director
1:15 PM to 2:15 PM Will My Application Be Examined Under AIA (FITF) Or Not?
Cassandra Spyrou, QAS in TC 2800
2:15 PM to 3:00 PM FITF -- A Year in Review
Tom Hughes, SPE in TC 3700
3:00 PM to 3:15 PM BREAK
3:15 PM to 4:20 PM FITF Overview and Tips on Responding to Prior Art Rejections
Kathleen Fonda, Senior Legal Advisor
Office of Patent Legal Administration
4:20 PM to 4:30 PM Tour of the AIA (FITF) Website
Kathleen Bragdon, QAS in TC 1600
4:30 PM to 5:00 PM Q&A Panel Discussion (Hughes, Spyrou, Fonda, Bragdon)
Christopher Grant, QAS in TC 2400 (Moderator)

Pre-registration is not required; seating is first-come, first-served.  CLE is not available. 
Webcast access instructions:

Topic: First Inventor to File First Anniversary Public Forum
Host: USPTO WebEx
Date and Time:
Tuesday, April 1, 2014 12:30 pm, Eastern Daylight Time (New York, GMT-04:00)
Event number: 992 988 777
Event password: 12345

Event address for attendees:  https://uspto-events.webex.com/uspto-events/onstage/g.php?t=a&d=992988777

Thursday Feb 27, 2014

USPTO to Host First-Inventor-to-File Forum on Monday, March 17, 2014

The United States Patent and Trademark Office (USPTO) will host a public forum to discuss the first-inventor-to-file (FITF) provisions of the America Invents Act (AIA) on the first anniversary of the FITF implementation. The forum will be held on Monday, March 17, 2014, at the USPTO headquarters, Madison Auditorium, in Alexandria, Virginia from 12:30 to 5 pm ET.  Members of the public are invited to attend in person or via webcast (access information below).

The forum is intended to bring stakeholders together with USPTO subject matter experts to discuss the FITF provisions.  It will begin with a thirty-minute informal meet-and-greet session, allowing participants to chat with the experts, followed by an informational program covering the following topics:

  • Review of FITF filings made to date
  • Explanation of whether/when an application will be examined under the FITF statutory framework
  • Overview of the FITF statutory framework and tips on responding to prior art rejections
  • Tour of the AIA (FITF) website
  • Q&A panel discussion

Pre-registration is not required; seating is first-come, first-served.  CLE is not available. 

Webcast access instructions:

Thursday Oct 17, 2013

Message From Janet Gongola, Patent Reform Coordinator: USPTO Releases Video Recording of Second Anniversary AIA Forum

The USPTO is pleased to release a video recording and slide presentations from the Second Anniversary AIA forum held on September 16, 2013. At the forum, USPTO subject matter experts from the Patent Business Unit and administrative patent judges from the Patent Trial and Appeal Board discussed prioritized examination (aka Track One), preissuance submissions, inventor's oath/declaration, supplemental examination, micro-entity discount, first-inventor-to-file, and the administrative trials.  Please check out the video and slides for tips for compliance and how to avoid pitfalls when making these various new AIA filings.

Friday Jun 28, 2013

Message from Janet Gongola, Patent Reform Coordinator: USPTO Examination of an Application Under Pre-AIA (First-To-Invent) Or AIA (First-Inventor-To-File) Law and Submission of Compliant 1.55/1.78 Statements for Transition Applications

Since the March 16, 2013 effective date of the first-inventor-to-file provision, the USPTO and patent applicants are prosecuting patent applications under two legal frameworks for prior art—first-to-invent provisions and first-inventor-to-file provisions.  There are three possible scenarios that may arise in terms of which framework to apply to an application.  These three scenarios are depicted in the graphic below. 

  • First, as shown in the far left green circle, if an application was filed before March 16, 2013 and all domestic benefit or foreign priority claims made in the application are to applications filed before March 16, 2013, then the application is subject to examination under the pre-AIA law (first-to-invent).
  • Second, as shown in the far right blue circle, if an application is filed after March 16, 2013 and all domestic benefit or foreign priority claims made in the application are to applications filed on or after March 16, 2013, then the application is subject to examination under the AIA law (first-inventor-to-file).
  • Third, as shown in the middle red circle, if an application is filed after March 16, 2013 but all domestic benefit or foreign priority claims made in the application are to applications filed before March 16, 2013, then the applicant must file a statement under 37 CFR 1.55 or 1.78 (1.55/1.78 Statement) with the Office if the application contains claims to subject matter not supported by the domestic benefit or foreign priority filing and therefore should be examined under the AIA law (first-inventor-to-file).  The USPTO has designated an application that falls into this third scenario as a "transition" application, and they are the focus here.

Chart to determine if AIA applies based on filing and priority/benefit claim dates

SCOPE OF 1.55/1.78 STATEMENT IN TRANSITION APPLICATION

In filing a 1.55/1.78 Statement, an applicant simply needs to state that the application contains at least one claims that does not find support in one of the applications to which benefit or priority is sought.  Here are example statements that an applicant could file:

  • This application filed on or after March 16, 2013 which claims benefit or priority to an application filed before March 16, 2013, contains one or more claims NOT entitled to a filing date before March 16, 2013.
  • This application  claims benefit or priority to an application filed before March 16, 2013,  and contains one or more claims  NOT entitled to a filing date before March 16, 2013.
  • This application contains one or more claims  NOT entitled to a filing date before March 16, 2013.
  • This application contains a claim having an effective filing date on or after March 16, 2013.

Notably, the applicant is not required to identify the subject matter lacking support in the pre-March 16 domestic benefit or foreign priority filings.  Nor is the applicant required to identify the specific claims drawn to the newly-added subject matter.  To make it easy for an applicant to provide a 1.55/1.78 Statement to the Office, the USPTO has included a 1.55/1.78 Statement on the Application Data Sheet (ADS) with a check box that an applicant can use and thereby meet the statement requirement.  More information about the use of the 1.55/1.78 Statement on an ADS is discussed below.

RATIONALE FOR 1.55/1.78 STATEMENT IN TRANSITION CASE

The Office is requiring applicants to file 1.55/1.78 Statements for transition applications when there are newly-added claims that lack support in an application to which benefit or priority is sought that is filed before March 16, 2013, so that examiners apply the correct legal framework (i.e., first-to-invent or first-inventor-to-file) from the outset of examination.  On the face of a transition application, it appears by virtue of the pre- March 16, 2013 domestic benefit or foreign priority claims that the application is subject to examination under pre-AIA law (first-to-invent).  However, because the application was filed after March 16, 2013, it could be subject to examination under the  AIA (first-inventor-to-file) if any newly-claimed subject matter is not supported by the domestic benefit or foreign priority filings.  Because USPTO cannot readily ascertain whether the application contains claims to such newly-added subject matter, an applicant must specify to the Office whether the AIA (first-inventor-to-file) applies via a 1.55/1.78 Statement.  Absent a 1.55/1.78 Statement from an applicant, the Office will examine the application under the pre-AIA law (first-to-invent).

USE OF CHECK BOX ON ADS TO MAKE 1.55/1.78 STATEMENT

By marking the check box on an Application Data Sheet (ADS) for a 1.55/1.78 Statement, an applicant is designating that the application should be examined under the AIA (first-inventor-to-file) by virtue of the inclusion of claimed subject matter which is not supported in an earlier filed application to which priority or benefit has been made.  Indeed, as shown in the excerpt from an ADS below, there is a notation accompanying the 1.55/1.78 Statement emphasizing that the application will be examined under the first-inventor-to-file provisions of the AIA if the check box is marked.

FITF checkbox

Applicants may want to carefully review application filings made since the March 16, 2013 effective date of the first-inventor-to-file provision to ensure that they correctly used the 1.55/1.78 Statement check box on the ADS.  The USPTO advises applicants who filed applications after March 16, 2013, to conduct this review because some applicants appear to have erroneously marked the 1.55/1.78 Statement check box on the ADS.  Specifically, some applicants have filed applications as continuations or divisionals of parent applications that were filed before March 16, 2013, and at the same time, marked the 1.55/1.78 Statement check box on the ADS.  These two actions appear to be in conflict.  Identification of an application as a continuation or divisional of a parent application filed before March 16, 2013 makes the application subject to pre-AIA law (first-to-invent).   By contrast, selection of the 1.55/1.78 Statement check box makes the application subject to the AIA (first-inventor-to-file).  In such conflict situations, the USPTO is contacting the applicant to ascertain the propriety of the statement made via the checkbox.  Additionally, applicants must correct the error—be it the identification of the application as a continuation-in-part or the de-selection of the 1.55/1.78 Statement check box.

WHAT TO DO IF A 1.55/1.78 STATEMENT WAS FILED IN ERROR

In the situation where an applicant erroneously identified a transition application as claiming subject matter not supported by the earlier filed domestic benefit or foreign priority application filing which was before March 16, 2013, the applicant can correct the error by filing a separate paper to rescind the statement.  If the applicant files the rescission electronically, the applicant should select the document description “Make/Rescind AIA (First Inventor to File) 1.55/1.78 Stmnt” to properly index the paper.  The USPTO does not have a specific rescission form; an applicant merely needs to state that all the claims in the application find support before March 16, 2013 and therefore that the 1.55/1.78 Statement previously submitted to the Office was filed in error.  

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 Feb 25, 2013

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 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.

Sunday Sep 16, 2012

Happy Anniversary to the AIA

From Janet Gongola, Patent Reform Coordinator:

Happy Anniversary to the America Invents Act!!!  One year ago, on September 16, 2011, President Obama signed the AIA into law to bring the patent system into the 21st century.  Seven provisions of the AIA go into effect at the one-year anniversary:

  • Inventor's oath or declaration;
  • Preissuance submissions;
  • Supplemental examination;
  • Citation of patent owner claim scope statements;
  • Post grant review;
  • Inter partes review; and
  • Covered business method review

The USPTO busily has implemented these provisions through a series of final rules, which the agency has released to the public over the past couple months. An explanation of the provisions and the final rules themselves are available here on the micro-site:

Also, to help stakeholders learn about the provisions and USPTO implementing final rules taking effect on September 16, 2012, the agency is conducting roadshows across the country.  Thus far, the agency has visited Minneapolis and Los Angeles along with its headquarters in Alexandria, Va.  It will make stops throughout the remainder of September in Denver, Detroit, Atlanta, Houston, and New York City.  The roadshows are free and open to the public.  The agenda, specific venue locations, presentation materials, videos, and highlights of each roadshow stop are available on the micro-site:

Roadshow Page

Lastly, the USPTO has established two special ways for the public to engage with the agency for questions and clarifcations about the AIA: (i) an AIA help telephone line; and (ii) an AIA help email.   Please use either one to get your AIA questions answered.

USPTO responses are provided for informational purposes only and should not be construed as providing legal advice or legal opinions.

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

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.

Friday May 18, 2012

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.

United States Patent and Trademark Office
This page is owned by Patents.