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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.

As of November 30, 2011, we have received a total of 163 comments through our AIA micro-site, all of which are available for review on the Comments page of our micro-site.  The first pie chart below tallies the comments in terms of the identity of the submitter.  The second pie chart surveys the general subject matter addressed in the comments, while the third breaks the comments down into specific provisions of the AIA addressed.  Because some comments address multiple provisions, the totals in these charts add up to more than 163.

Chart 1: AIA Comments by Organization; Individuals 47%; IP Organizations 8%; Academic & Research Institutions 1%; Law firms 4%; Companies 9%

Chart 2: Comments by Subject Area; Patent Procedures 29%; Contested Cases 37%; Fee & Finance 14%; Other 20%

Chart 3: Comments by Subject; Third party art submission 5%; FITF-Prior art (102, 103) 6%; First-Inventor-to-File (FITF) 7%; Transitional business method 7%; Post grant review 14%; Inter partes review 11%; Micro-entity 5%; Fee Setting Authority 6%

As you can see, we’ve had great participation across a wide range of issues.  The majority of the comments come from individuals, including patent practitioners, scientists, engineers, solo inventors, and other citizens interested in the patent system.  This reaffirms that our inclusive approach is reaching the public, helping us craft rules and regulations that benefit all.  The data also show that input is spread pretty evenly across the major provisions of AIA.  People are engaging with us on all the major topics that we need to address.  We’re thrilled to achieve this level of public participation and urge everyone to continue sending in their comments.

Next, PTO has carefully managed the comments, maintaining a database to track and distribute them internally to our various working teams on a routine basis.  To that end, I have reviewed the comments, as has our Patent Reform Coordinator Janet Gongola and various USPTO members of the AIA Task Force and the AIA Working Groups, and we have held numerous internal meetings to discuss the ideas contained therein. 

We have identified many excellent suggestions that we believe will help us implement a 21st century patent system and patent office, and we are incorporating those suggestions into our proposed rules.  As one example, comments suggested particular ways to handle confidential information during inter partes and post-grant reviews, which we had not considered and are building into our proposed rules.  As a second example, comments suggested that the patent owner have the opportunity to dedicate subject matter to the public in its preliminary response during an inter partes or post-grant review.  We had not considered this idea either and are incorporating it into our proposed rules too.

Finally, to be clear on the opportunities and timing for submitting additional comments to the agency for the Group 2 provisions, a 60-day comment window will open after we publish our proposed rules in the Federal Register in mid- to late January 2012.  We will use comments received during this time period to develop our final rules, which we will publish in the Federal Register in August 2012 with a delayed effective date until September 16, 2012.  Soon after the final rules are in effect, the agency will open another comment window to receive input on any changes that may need to be made to the final rules.  So in the coming months, there will be two additional windows to give input to PTO on the rules for Group 2 provisions.  We encourage you to share your input during these windows and be part of making AIA a success in its implementation.

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