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Monday Aug 13, 2012

USPTO To Publish Final Rules For The Inventor’s Oath/Declaration, Supplemental Examination, And New Administrative Trials Provisions

From Janet Gongola, Patent Reform Coordinator:

The USPTO announces that on Tuesday, August 14, 2012, it will publish final rules implementing the inventor’s oath/declaration, supplemental examination, post grant review, inter partes review, and covered business method review provisions in the Federal Register.  Today, on Monday, August 13, 2012, these final rules are available in the Federal Register Reading Room and here.  Publication of these final rules concludes the agency’s rulemaking for AIA provisions effective on September 16, 2012, the one-year anniversary of the AIA.  At the end of July and earlier in August 2012, the agency published final rules implementing the preissuance submission and citation of patent owner statements provisions.

The inventor’s oath or declaration final rules reduce the statements of information that an inventor must include with an oath or declaration.  They also permit a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make an application for patent and allow for a substitute statement in lieu of an oath/declaration in certain circumstances.  Lastly, the inventor’s oath or declaration final rules enable applicants to postpone filing the oath/declaration until the application is otherwise in condition for allowance and to provide for assignments containing oath or declaration statements.

The supplemental examination final rules permit a patent owner to present information believed to be relevant to the patent for the Office to consider, reconsider, or correct.  A patent owner may use supplemental examination to forestall a subsequent inequitable conduct challenge to the enforceability of the patent during litigation.

The finals rules for the post grant review, inter partes review, and covered business method review set forth the general procedures common to these three new administrative trials (e.g., briefing page limits, discovery standards, and motions practice) as well as the specifics unique to each (e.g., the standards for showing sufficient grounds to institute the particular review and the procedures for conducting the particular review).  The administrative trial final rules also provide a definition for “covered business method” and “technological invention.”  In addition to the administrative trial final rules, the Office is publishing a practice guide for conducting an administrative trial before the Board of Patent Appeals and Interferences, soon to be renamed the Patent Trial and Appeal Board on September 16, 2012.       

In September 2012, the USPTO will host eight roadshows in Atlanta, Alexandria, Va., Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City to discuss all of these final rules.  I encourage you to attend one of the roadshows and stay current with the AIA implementation activities.  More information about the roadshows can be found here:

Roadshow Page

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