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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 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

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]

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)

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Monday Apr 23, 2012

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. 

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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]

Friday Apr 06, 2012

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:

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.

Tuesday Feb 07, 2012

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:

[Read More]

Wednesday Jan 25, 2012

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)

[Read More]

Friday Jan 06, 2012

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:

[Read More]

Friday Dec 02, 2011

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.

[Read More]

Friday Nov 18, 2011

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. 

[Read More]

Friday Oct 28, 2011

Public Comments Urged for Group 2 Proposed Rule Makings by November 15, 2011

From: Janet Gongola, Patent Reform Coordinator

The USPTO is progressing in its internal development of the provisions of the AIA that become effective 12 months from the date of enactment on September 16, 2012 (a.k.a., Group 2 rulemakings).  In particular, we are deciding on the architecture for the Group 2 provisions now and are drafting proposed rules.   The table below shows the number and subject matter of our immediate rule makings. 

[Read More]

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